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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTOROLA MOBILITY LLC
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`IPR2020-00038
`
`PATENT 6,868,079
`
`PATENT OWNER RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .................................................................................................. 1
`
`II. OVERVIEW OF THE ’079 PATENT ................................................................... 2
`
`A. PROSECUTION HISTORY OF THE ’079 PATENT .................................... 4
`
`III. RELATED PROCEEDINGS ................................................................................. 7
`
`IV. PETITIONER FAILS to PROVE Claim 17 is UNPatentable ............................... 9
`
`A. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`
`B. CLAIM CONSTRUCTION ........................................................................... 10
`
`1. Claim Construction Standard ..................................................................... 10
`
`C. Petitioner fails at least to prove the proposed incorporation of
`Kay into Merakos discloses “wherein the at least one of the plurality
`of respective secondary stations retransmits the same respective
`request in consecutive allocated time slots without waiting for an
`acknowledgement until said acknowledgement is received from the
`primary station” (Grounds 1 and 2) ........................................................................ 12
`
`D. Petitioner further fails to prove obviousness of the second
`“wherein” clause recited in claim 17 (Grounds 1 and 2) ....................................... 21
`
`1. The Petition fails to establish that a POSA would have likely
`combined Merakos and Kay with Alamouti in the manner proposed
`(Ground 1) .......................................................................................................... 22
`
`2. Petitioner fails to prove that Borth discloses the second
`“wherein” clause (Ground 2) .............................................................................. 26
`
`V. CONCLUSION .................................................................................................... 29
`
`CERTIFICATE OF COMPLIANCE ............................................................................ i
`
`CERTIFICATE OF SERVICE ..................................................................................... ii
`
`
`
`ii
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Response to
`
`Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No.
`
`6,868,079 (“the ’079 patent” or “Ex. 1001”) filed by Motorola Mobility LLC
`
`(“Petitioner”) in IPR2020-00038.
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety, as Petitioner has failed to meet its burden of showing that any challenged
`
`claim is unpatentable. 35 U.S.C. § 316(e). While the Board instituted trial here, as
`
`the Court of Appeals has stated:
`
`[T]here is a significant difference between a petitioner’s burden to
`
`establish a “reasonable likelihood of success” at institution, and actually
`
`proving invalidity by a preponderance of the evidence at trial. Compare 35
`
`U.S.C. § 314(a) (standard for institution of inter partes review), with 35
`
`U.S.C. § 316(e) (burden of proving invalidity during inter partes review).
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). Petitioner has
`
`failed to meet its burden of proving any proposition of invalidity, as to any claim, by
`
`a preponderance of the evidence. 35 U.S.C. §316 (e).
`
`The sole claim challenged here, claim 17, reflects teachings in the ’079 patent
`
`directed to technical improvements involving requests from secondary stations for
`
`allocation of additional slots to communicate with a base station. In the method of
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`claim 17, a secondary station, after sending to the base station a request for an
`
`allocation of additional time slots, re-transmits the request for the allocation in
`
`consecutive allocated time slots without waiting for an acknowledgement.
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`1
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`The Petitioner relies, as to both Ground 1 and Ground 2, on the Kay reference
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`for this teaching. Among other deficiencies, Petitioner at least fails to establish, by a
`
`preponderance of evidence, that Kay renders obvious limitation direction to
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`re-transmission in consecutive allocated slots; and Petitioner also fails to prove
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`sufficient motivation to modify Merakos to re-transmit in consecutive allocated slots.
`
`For at least these reasons, and for the other reasons set forth below, the Petitioner
`
`should be denied as failing to prove obvious for each and every claim element.
`
`II. OVERVIEW OF THE ’079 PATENT
`
`The ’079 patent is titled “Radio communication system with request re-
`
`transmission until acknowledged.” The ʼ079 patent issued March 15, 2005, from
`
`U.S. Patent Application No. 09/455,124 filed December 6, 1999, which claims
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`priority to United Kingdom Patent Application No. GB9827182, filed December 10,
`
`1998.
`
`The inventors of the ’079 patent observed that in radio communication systems
`
`at the time, it was generally required to be able to exchange signaling messages
`
`between a Mobile Station (MS) and a Base Station (BS). Downlink signaling (from
`
`BS to MS) was usually realized by using a physical broadcast channel of the BS to
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`address any MS in its coverage area. Since only one transmitter (the BS) uses this
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`broadcast channel there is no access problem. Ex. 1001, 1:17‒23.
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`However, uplink signaling (from MS to BS) required more detailed
`
`considerations. If the MS already had an uplink channel assigned to it, for voice or
`
`data services, this signaling could be achieved by piggybacking, in which the
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`2
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`signaling messages are attached to data packets being sent from the MS to the BS.
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`But if there was no uplink channel assigned to the MS, piggybacking is not possible.
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`In this case it would be desirable to have a fast uplink signaling mechanism available
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`for the establishment, or re-establishment, of a new uplink channel. Id., 1:24‒33.
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`In conventional systems at the time, for example those operating in accordance
`
`with the Global System for Mobile communication (GSM) standard, fast uplink
`
`signaling was enabled by the provision of a random-access channel using a slotted
`
`ALOHA or similar protocol. However, such a scheme works satisfactorily only with a
`
`low traffic load and was not believed to be capable of handling the requirements
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`imposed by third-generation telecommunications standards such as UMTS. Id.,
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`1:34‒41.
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`According to certain embodiments, a system and method is provided to
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`improve the efficiency of the method by which a MS requests resources from a BS.
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`A method implementation, for example, involves operating a radio communication
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`system, comprising a secondary station transmitting a request for resources to a
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`primary station in a time slot allocated to the secondary station. The method is
`
`characterized, at least in part, by the secondary station re-transmitting the same
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`request in consecutive allocated time slots, without waiting for an acknowledgment,
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`until an acknowledgement is received from the primary station. Id., 1:60‒67.
`
`Certain disclosed schemes may improve the typical time for a response by the
`
`primary station to a request by a secondary station. Because there is no possibility of
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`requests from different secondary stations colliding, a secondary station can
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`3
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`retransmit requests in each allocated time slot. The ’079 patent contrasts its teachings
`
`from conventional techniques, such as where a secondary station had to wait at least
`
`long enough for the primary station to have received, processed, and acknowledged
`
`a request, all before it is able to retransmit. Id., 1:56‒2:8. Conventional schemes at
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`the time provided no guarantee that a request could be received and processed by the
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`base station sufficiently rapidly for an acknowledgment to be scheduled for the
`
`immediately following frame. Id., 4:12‒16. Applying certain teachings of the ’079
`
`Patent, certain requests may be repeated without waiting for an acknowledgment,
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`thereby providing certain technical improvements. Id., 4:8‒18. In addition, the
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`primary station can improve the accuracy with which it determines whether a request
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`was sent by a particular secondary station, if the received signal strength is close to
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`the detection threshold, by examining the received signals in multiple time slots
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`allocated to the secondary station in question. Id., 1:56‒2:14.
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`A.
`
`PROSECUTION HISTORY OF THE ’079 PATENT
`
`The prosecution history of the ’079 Patent includes substantive examination,
`
`including citation by the Examiner at the USPTO of six references in three different
`
`combinations to support rejections of the independent claims, all of which were
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`successfully overcome by argument and amendment, resulting in the present claims.
`
`In a first Office Action, the Examiner cited Van Driel (U.S. Patent No. 6,320,869)
`
`and Mansfield (U.S. Patent No. 6,301,249), and the combination of Van Driel,
`
`Mansfield and Tiedermann (U.S. Patent No. 6,256,301), to reject the then-pending
`
`4
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`claims under 35 U.S.C. 103. Ex. 1002, 188‒194. In a response, applicant pointed out
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`that the Examiner had mischaracterized Mansfield, stating that:
`
`[T]he same data is not retransmitted until acknowledgment is received.
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`Rather, as specifically stated in the Abstract, re-transmission of the same
`
`frame occurs only when a responsive message does not indicate
`
`successful reception.
`
`Ex. 1002, 183. In a Non-Final Office Action, the Examiner agreed with these
`
`arguments and, rather than assert Van Driel or Mansfield again, cited new art, namely
`
`Willey (U.S. Patent No. 5,84,785) and the textbook Schwartz, Telecommunications
`
`Networks (November 1988) to reject certain claims under 35 U.S.C. 103. Id.,
`
`164‒171. In response, applicant pointed out that the prior art reference Schwartz
`
`taught “retransmitting different data in each frame,” and that Willey taught that “the
`
`access channel message that is continuously transmitted contains different data each
`
`time.” Id., 161. The Examiner repeated the rejection in a Final Office Action. Id.,
`
`144‒151. After a Request for Continued Examination and Amendment, a further
`
`round of rejections based primarily on Willey and Schwartz, and further amendments
`
`and arguments (id., 97‒130), the Examiner was again persuaded that applicant had
`
`overcome the rejections (id., 75). The Examiner again changed the basis for the
`
`rejection of the independent claims, relying on Walton (U.S. Patent No. 6,542,488)
`
`and Sorensen (U.S. Patent No. 6,463,298). Id., 76‒87. The applicant amended to take
`
`allowable subject matter, and a Notice of Allowance issued. Id., 48-71.
`
`The text of challenged independent claim 17 is reproduced here:
`
`5
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`17. A method of operating a radio communication system, comprising:
`
`allocating respective time slots in an uplink channel to a plurality
`
`of respective secondary stations; and
`
`transmitting a respective request for services to establish required
`
`services from at least one of the plurality of respective secondary
`
`stations to a primary station in the respective time slots;
`
`wherein the at least one of the plurality of respective secondary
`
`stations re-transmits the same respective request in consecutive
`
`allocated time slots without waiting for an acknowledgement until said
`
`acknowledgement is received from the primary station,
`
`wherein the primary station determines whether a request for
`
`services has been transmitted by the at least one of the plurality of
`
`respective secondary stations by determining whether a signal strength
`
`of the respective transmitted request of the at least one of the plurality
`
`of respective secondary stations exceeds a threshold value.
`
`While the burden lies with Petitioner to prove obviousness of each and every
`
`claim element, certain example deficiencies identified herein focus on the first
`
`“wherein” clause recited in claim 17 and containing limitations directed to
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`retransmission. Specifically, the first “wherein” clause includes at least the following
`
`specific and distinguishable requirements:
`
`(1) the retransmissions must each be of the “same respective request” for services;
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`(2) each must be retransmitted “in consecutive allocated time slots”;
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`(3) each must be retransmitted “without waiting for an acknowledgement”; and
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`(4) each must be re-transmitted in this manner “until said acknowledgment is
`
`received from the primary station[.]”
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`
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`6
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`To further underscore these explicit requirements, the first “wherein” clause is
`
`reproduced again below with annotations to emphasize respective limitations
`
`identified above:
`
`wherein the at least one of the plurality of respective secondary
`
`stations re-transmits [1] the same respective request [2] in consecutive
`
`allocated time slots [3] without waiting for an acknowledgement
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`[4] until said acknowledgement is received from the primary station[.]
`
`As explained further below, this combination of requirements gives rise to several
`
`fatal deficiencies in the Petition. Additional example deficiencies of the Petition arise
`
`at least with respect to the “second” wherein clause, as explained further below.
`
`
`
`To be clear, Patent Owner contests the showings of the Petition with respect to
`
`all claim elements, including those recited in the “allocating” and “transmitting”
`
`steps. Indeed, certain example deficiencies identified herein with respect to the two
`
`“wherein” clauses arise, at least in part, from the informative contexts provided in the
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`“allocating” and “transmitting” steps.
`
`III. RELATED PROCEEDINGS
`
`The ’079 patent is or was involved in the following proceedings:
`
`Case Name
`
`Case
`Filing
`Date
`06/26/2019 Uniloc USA, Inc. v. Samsung
`Electronics America
`
`02/22/2018 Uniloc USA, Inc. et al v. Apple Inc.
`02/23/2018 Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc. et al
`
`Case Number Court
`
`19-2072
`
`CAFC
`
`1-18-cv-00158 WDTX
`2-18-cv-00042 EDTX
`
`7
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`

`

`Case Name
`
`Case
`Filing
`Date
`03/9/2018 Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`
`03/13/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`
`07/23/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`07/23/2018 Uniloc USA, Inc. et al v. BlackBerry
`Corporation
`
`07/23/2018 Uniloc USA Inc et al v. Blackberry
`Corporation
`
`10/24/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`
`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`Case Number Court
`
`3-18-cv-00557 NDTX
`
`2-18-cv-00075 EDTX
`
`2-18-cv-00304 EDTX
`
`2-18-cv-00305 EDTX
`
`3-18-cv-01883 NDTX
`
`3-18-cv-02835 NDTX
`
`11/6/2018 Uniloc USA Inc et al v. LG Electronics
`USA Inc et al
`
`4-18-cv-06737 NDCA
`
`11/17/2018 Uniloc 2017 LLC v. ZTE Inc et al
`
`3-18-cv-03064 NDTX
`
`11/17/2018 Uniloc 2017 LLC v. Blackberry
`Corporation
`
`3-18-cv-03065 NDTX
`
`11/20/2018 Uniloc 2017 LLC v. Motorola Mobility,
`LLC
`
`1-18-cv-01841 DDE
`
`11/30/2018 Uniloc 2017 LLC v. HTC America, Inc. 2-18-cv-01728 WDWA
`
`01/10/2019 Apple Inc. et al v. Uniloc 2017 LLC
`
`IPR2019-00510 PTAB
`
`03/26/2019 Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`
`2-19-cv-00102 EDTX
`
`04/02/2019 Uniloc USA, Inc. et al v. Apple Inc.
`
`4-19-cv-01691 NDCA
`
`01/17/2020 Ericsson Inv. v. Uniloc 2017 LLC
`
`IPR2020-00420 PTAB
`
`Filed herewith as Exhibit 2001 is a Claim Construction Memorandum and
`
`Orders entered in Uniloc USA, Inc. v. Samsung Electronics America Inc., Case No.
`
`2:18-cv-0042-JRG-RSP, D.I. 93 (E.D. Tex. Apr. 18, 2019) and Uniloc USA, Inc. v.
`
`8
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`Huawei Device USA, Inc., Case No. 2:18-cv-0075-JRG-RSP, D.I. 57 (E.D. Tex. Apr.
`
`18, 2019). Notably, the district court construed certain terms recited in claim 17
`
`under the same standard applicable here.
`
`IV. PETITIONER FAILS TO PROVE CLAIM 17 IS UNPATENTABLE
`
`“In an inter partes review . . ., the petitioner shall have the burden of proving a
`
`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §
`
`316(e). Petitioner has not met this burden.
`
`The Petition raises two grounds of obviousness against 17 only, both grounds
`
`primarily relying on the same Merkos reference, as shown in the table below:
`
`
`
`Reference(s)
`Ground
`1 Merakos (U.S. Patent No. 5,521,925) (Ex. 1003) “via incorporation-by
`reference of” Kay (U.S. Patent No. 5,299,198) (EX. 1004); Alamouti
`(U.S. Patent No. 5,933,421 (Ex. 1006).
`
`2 Merakos (U.S. Patent No. 5,521,925) (Ex. 1003) “via incorporation-by
`reference of” Kay (U.S. Patent No. 5,299,198) (Ex. 1004); Borth (U.S.
`Patent No. 4,829,543 (Ex. 1005).
`
`A. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner proposes that a person of ordinary skill would have had at least a
`
`Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer
`
`Science, plus two to three years of work experience in communications systems or
`
`networking. Pet. 25. Petitioner alternatively proposes that a person of ordinary skill
`
`would have received a graduate degree such as Master’s or PhD degree with at least
`
`one year of work experience related to communications systems or networking. Id.
`
`9
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
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`Petitioner further proposes that a person of ordinary skill in the art would have been
`
`aware of specific resource allocation and multiple access technologies used in
`
`wireless communications systems. Id. at 25‒26.
`
`Petitioner’s proposed definition of person of ordinary skill is improper as
`
`lacking an upper bound on the work experience of a hypothetical person of ordinary
`
`skill having a graduate degree. Petitioner’s proposed definition of a person of
`
`ordinary skill is further improper, as improperly incorporating not only educational
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`attainment and professional experience, but specific knowledge of the person of
`
`ordinary skill in the art. In any event, Petitioner fails to prove obviousness by a
`
`preponderance of the evidence, even if the Board were to apply Petitioner’s improper
`
`and incomplete definition for a person of ordinary skill in the art.
`
`B. CLAIM CONSTRUCTION
`
`1.
`
`Claim Construction Standard
`
`As of the filing date of the Petition, the standard for claim construction in inter
`
`partes review is the standard of “ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history pertaining
`
`to the patent.” 37 C.F.R. §42.100(b) (effective November 13, 2018); 83 Fed. Reg.
`
`No. 197, 51340 (Oct. 11, 2018). This is the same standard applied by Article III
`
`courts. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The proper standard
`
`primarily focuses on intrinsic evidence, such as the patent specification and
`
`prosecution history, to interpret the claim terms. Id. at 1317; see also 37 C.F.R. §
`
`42.100(b).
`
`10
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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`Patent Owner submits that the Board need not expressly construe any claim
`
`term in a particular manner in order to arrive at the conclusion that the Petition is
`
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`
`controversy”).
`
`While the Petition offers erroneous obviousness theories that at least tacitly
`
`misinterpret the claim language in several respects, as explained further below, the
`
`only
`
`construction
`
`expressly proposed
`
`in
`
`the Petition
`
`concerns
`
`the
`
`“acknowledgement” term. Citing the Claim Construction and Memorandum Order
`
`in a related litigation (filed by Petition as Ex. 1021), Petitioner proposes adopting the
`
`construction
`
`for “acknowledgement” set
`
`forth
`
`in
`
`that order—i.e.,
`
`that
`
`“acknowledgement” means “a message sent from the primary station to the secondary
`
`station indicating the primary station’s receipt of the secondary station’s request.”
`
`Ex. 1021, p. 17; see also Pet. 26 (citing the same).
`
`Because 37 C.F.R. § 42.100(b) provides that the Board must at least “consider”
`
`the prior claim construction rulings issued in the related district court litigation and
`
`made of record, and for the convenience of the Board, what follows is an overview
`
`of the analysis of the court concerning the “acknowledgement” term. Citing both
`
`intrinsic and extrinsic evidence, the court found that the “acknowledgement” term (as
`
`recited in the fuller context “without waiting for an acknowledgement until said
`
`acknowledgement is received from the primary station”) is expressly distinct from
`
`the “services” requested in the “request for services.” Ex. 1021, p. 16. The court
`
`11
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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`clarified its finding by stating “an acknowledgement by the primary station indicating
`
`receipt of a request is not merely providing the services requested by the request.”
`
`Id., 17. Rather, according to the court, the “acknowledgement” by the primary station
`
`“is a message indicating receipt of the request, not merely providing the requested
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`services.” Id.
`
`The above discussion is largely academic here because, even if the Board were
`
`to adopt the same construction and the court’s reasoning for this term in its entirety,
`
`the Petition would nevertheless still fail to prove obviousness of claim 17 under either
`
`ground set forth therein.
`
`C.
`
`Petitioner fails at least to prove the proposed incorporation of Kay
`into Merakos discloses “wherein the at least one of the plurality of
`respective secondary stations retransmits the same respective
`request in consecutive allocated time slots without waiting for an
`acknowledgement until said acknowledgement is received from the
`primary station” (Grounds 1 and 2)
`
`The Petition relies on the Kay reference as allegedly teaching limitations
`
`recited within the phrase, “wherein the at least one of the plurality of respective
`
`secondary stations retransmits the same respective request in consecutive allocated
`
`time slots without waiting for an acknowledgement until said acknowledgement is
`
`received from the primary station,” with the proviso that Merakos expressly
`
`incorporates Kay by reference. Pet. 34, 50‒59.1 The theory set forth in the Petition,
`
`
`1 While Grounds 1 and 2 of the Petition cite to the Alamouti and Borth references,
`
`respectively, the Petition does not purport to rely upon either Alamouti or Borth in
`
`addressing the first-recited “wherein” clause of claim 17.
`
`12
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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`however, fails at least to prove that Kay discloses its mobile station retransmit the
`
`same reverse allocation request message in multiple consecutively assigned sub-slots,
`
`without waiting for an acknowledgement, and until the acknowledgment is received.
`
`The Petition focuses on Figure 20 of Kay, reproduced below.
`
`
`
`Kay (Ex. 1004), Fig. 20; see also Pet. 33 (reproducing the same with annotation).
`
`While the Petition points to Figure 20 of Kay, it provides no explanation for how the
`
`figure itself or its corresponding description allegedly disclose that “the same
`
`respective request” is retransmitted in “consecutive allocated time slots” in the
`
`manner claimed. See Pet. 33, 51. There is a simple explanation—Kay contains no
`
`such disclosure. In fact, the cited disclosure teaches away from the claim language.
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`13
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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`The teach-away in Kay is manifest, for example, in the following descriptive
`
`statements overlooked in the Petition:
`
`FIG. 20 shows a situation wherein the BSC, on receipt of the
`
`allocation request, initially cannot allocate a channel, and
`
`therefore sends the reverse allocation acknowledgement. Receipt
`
`of the reverse allocation acknowledgement precepts a repeat of
`
`the mobile’s reverse allocation request.
`
`Kay (Ex. 1004), 15:33‒38 (emphasis added). As shown by the block-quotation
`
`above, Kay expressly states that a repeat transmission of the mobile’s reverse
`
`allocation request occurs only responsive to, and under “precept” (i.e., control) of,
`
`the mobile device first having received the reverse allocation acknowledgment from
`
`the baste station controller (“BSC”). Id. Thus, contrary to the claim language, Kay
`
`states its mobile station (“MS”) waits for an acknowledgement and does not
`
`retransmit until reception of an acknowledgement
`
`that precepts a repeat
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`retransmission. This fails to disclose, and rather teaches away from, at least the
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`recitation, “. . . secondary stations re-transmits the same respective request in
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`consecutive allocated time slots without waiting for an acknowledgement until said
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`acknowledgement is received from the primary station.”
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`Tellingly, the Petition and its attached declaration of Dr. Ding both offer an
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`identical citation to Kay’s description of Figure 20 that selectively omits the
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`informative, teach-away statement emphasized above. Compare Pet. 35 (citing only
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`Kay, 15:33–36) with Ex. 1007 ¶ 81 (citing only Kay, 15:33–36). The Petition and
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`the testimony upon which it relies, therefore, both fail to address the fuller
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`explanation provided in Kay’s description of Figure 20, including statements that
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`would teach away from at least the claim language in question. See In re Hedges, 783
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`F.2d 1038, (Fed. Cir. 1986) (holding that the totality of the prior art must be
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`considered, and proceeding contrary to accepted wisdom in the art is evidence of non-
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`obviousness); see also MPEP § 2141.02 (prior art must be considered in its entirety,
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`including disclosures that teach away from the claims).
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`Further undermining the Petition, and the flawed declaration testimony upon
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`which it relies, is the unexplained and false assertion that Kay’s description expressly
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`directed to Figure 19 somehow pertains, instead, to the distinct embodiment described
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`with reference to Figure 20. Specifically, Petitioner and its declarant both purport to
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`defend their colored annotations to Figure 20 of Kay by offering citations that
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`expressly pertain, instead, to Kay’s Figure 19. Compare, e.g., Pet. 33 (citing Kay
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`(Ex. 1004), 15:13–14 and 15:16–17 as allegedly describing Figure 20) with Dr. Ding
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`Decl. (Ex. 1007) ¶ 80 (copying the same citations as allegedly describing Figure 20).
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`As shown by the block quotation from Kay reproduced below, it was
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`misleading for the Petition and its attached declaration to both suggest that the cited
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`portion of Kay pertains to Figure 20, instead of Figure 19.
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`This message exchange is illustrated in FIG. 19 where the time
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`axis extends vertically downward. The mobile is identified by
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`MS, the base station is identified as BSC. As shown in FIG. 19,
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`the reverse allocation request message is sent on a RA channel
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`using triple diversity for example.
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`Kay (Ex. 1004), 15:13–17 (emphasis added). Moreover, Kay explicitly states, in its
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`brief description of the drawings, that the embodiment illustrated in Figure 20 is
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`“different” from the distinct embodiment illustrated in Figure 19:
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`FIG. 19 illustrates a reverse allocation request and reverse
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`assignment exchange;
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`FIG. 20 illustrates a different reverse allocation request/reverse
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`allocation acknowledgment/reverse assignment/reverse assignment
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`acknowledgment exchange;
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`Id., 5:57‒52 (emphasis added). Petitioner and its declarant cannot reasonably
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`conflate together, without any rational underpinning set forth in either the Petition or
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`its attached declaration, the respective descriptions of two distinct embodiments,
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`which Kay expressly differentiates. Given that the theory of the Petition purports to
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`focus on Kay’s distinct embodiment of Figure 20 alone, this theory fails to prove
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`obviousness for at least the reasons identified above.
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`In its Institution Decision, the Board offers a quotation from Kay that does not
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`appear in the Petition. Specifically, the Board offers the sua sponte assertion, on
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`behalf of Petitioner, that “Kay describes mitigating ‘the effects of Rayleigh fading
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`and collisions on the RA channel’ by sending allocation requests ‘K times by
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`randomly choosing an appropriate set of sub-slots,’ such as ‘sub-slots in the
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`succeeding three pairs of available slots.’” Paper No. 9, 24 (partially quoting Kay
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`(Ex. 1004), 14:55–63). The Board’s citation to the Petition cannot realistically be
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`considered the source for this new argument made on behalf of Petitioner. Id. (citing
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`Pet. 57‒58). The cited portion of the Petition contains discussion directed only to
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`Figure 3 of Merakos. While Petitioner’s discussion of Merakos includes a string cite
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`containing an unexplained citation to Kay at col. 14, lines 64–66, this unexplained
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`citation falls outside of what the Board quoted; and it certainly does not express the
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`same argument. See Paper No. 9, 24 (partially quoting Ex. 1004, 14:55–63).
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`It is well established that the Board is not free to adopt a new argument on
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`behalf of a petitioner that was not raised in the petition itself. In re Magnum Oil Tools
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`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Patent Owner is prejudiced in its
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`ability to respond to the Board’s sua sponte argument because the Board does not
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`identify any corresponding argument or explanation in the Petition itself. Id. There
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`Board could not because there is none. Indeed, the Petition itself provides no
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`argument even allegedly directed to any so-called “random” choosing of sub-slots in
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`the context of Kay’s allocation request.
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`Setting aside the fact that the Petition itself does not quote the same passage of
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`Kay for the same proposition set forth in the Board’s Institution Decision, this new
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`argument would still fail to prove obviousness of the claim language in question. The
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`portion of Kay newly quoted by the Board does not clarify what is meant by
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`“randomly choosing an appropriate set of sub-slots,” apart from expressly affirming
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`that it must be the mobile that randomly selects. Kay (Ex. 1004), 14:59‒61. The
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`Board does not explain, in raising its sua sponte argument on behalf of Petitioner,
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`how a random selection of sub-slots unilaterally made by a mobile station constitutes
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`consecutive time slots allocated to a secondary station. In the absence of any
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`explanation by the Board, much less an explanation set forth in the four corners of
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`the Petition, Patent Owner is prejudiced in its ability to respond here.
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`The ’079 patent itself underscores there is a meaningful and patentable
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`distinction between allocating consecutive time slots to a secondary station for
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`retransmission, as claimed, and a mobile station randomly and unilaterally selecting
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`its own slots for transmission. For example, in disclosure reflecting the claim
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`language at issue, the ’079 patent states that “[b]ecause there is no possibility of
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`requests from different secondary stations colliding, a secondary station can
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`retransmit requests in each allocated time slot.” Ex. 1001 (’079 patent), 2:3‒5. This
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`is readily distinguishable from the disclosure in Kay directed to the acknowledged
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`“effects of . . . collisions” that will occur under its distinct scheme, which involves a
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`mobile station randomly selecting its own slots. Kay (Ex. 1004), 14:57‒58.
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` Further scrutiny of Kay reveals additional deficiencies that arise under the new
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`theory expressed in the Board’s Institution Decision. While the passage from Kay
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`newly quoted by the Board contains little to no detail, the concept of a mobile station
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`randomly choosing slots is further expressly addressed in Kay’s description of Figure
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`21. Figure 21 is reproduced below for the convenience of the Board.
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`As shown above, Figure