`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC.
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`IPR2020-00420
`
`PATENT 6,868,079
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`
`

`

`IPR2020-00420
`Patent No. 6,868,079
`
`TABLE OF CONTENTS
`INTRODUCTION ....................................................................................... 1
`
`I.
`
`II.
`
`THE ’079 PATENT ..................................................................................... 2
`
`A.
`
`PROSECUTION HISTORY OF THE ‘079 PATENT ..................... 4
`
`III. RELATED PROCEEDINGS ...................................................................... 7
`
`IV. CLAIM 17 OF THE ‘079 PATENT IS ALREADY THE
`SUBJECT OF TWO INTER PARTES REVIEWS, AND THIS
`ADDITIONAL PETITION SHOULD BE DENIED
`INSTITUTION UNDER 35 U.S.C. 314 OR 35 U.S.C. § 325(D) .............. 8
`
`V.
`
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 14
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART ............................ 15
`
`B.
`
`CLAIM CONSTRUCTION ............................................................ 16
`
`1.
`
`2.
`
`Claim Construction Standard ................................................ 16
`
`“acknowledgment” ................................................................ 16
`
`C. Merakos in view of Kay Does Not Render Obvious
`“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”
`(Ground 1, Claims 1, 5, 7, and 17) .................................................. 17
`
`D.
`
`
`
`The Petition Fails to Render Obvious “wherein the
`primary station determines whether a request has been
`transmitted by the at least one respective secondary
`station from a combination of the received signals in a
`plurality of successive time slots allocated to the at least
`one respective secondary station.” (Grounds 1 and 2-
`Claim 1) ........................................................................................... 22
`
`1.
`
`The Petition fails to establish that a POSA Would
`
`ii
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`IPR2020-00420
`Patent No. 6,868,079
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`Be Likely to Combine Merakos and Kay with
`Alamouti (Ground 1) ............................................................. 22
`
`E.
`
`The Petition Fails to Render Obvious “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.” (Claim 17 - Grounds
`1 and 2) ............................................................................................ 24
`
`1.
`
`The Petition fails to establish that a POSA Would
`Be Likely to Combine Merakos and Kay with
`Alamouti (Ground 1) ............................................................. 24
`
`F.
`
`No Prima Facie Obviousness for Dependent Claims 3, 4
`(Ground 2) ....................................................................................... 27
`
`G. No Prima Facie Obviousness for Dependent Claim 2
`(Ground 3) ....................................................................................... 27
`
`VI. CONCLUSION .......................................................................................... 28
`
`CERTIFICATE OF COMPLIANCE ................................................................... 29
`
`CERTIFICATE OF SERVICE ............................................................................ 30
`
`
`
`
`
`iii
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`

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`IPR2020-00420
`Patent No. 6,868,079
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Preliminary
`
`Response to Petition IPR2020-00420 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 6,868,079 (“the ’079 patent” or “EX1001”) filed by
`
`Ericsson Inc. (“Petitioner”). The instant Petition is procedurally and substantively
`
`defective for at least the reasons set forth herein.
`
`As discussed in detail below in Section V.A-C, the challenged claims provide
`
`for an improvement in wireless communication between a base station and secondary
`
`stations, and in particular in connection with requests from secondary stations for
`
`allocation of slots to send data to the base station. In the method of claims 1 and 17,
`
`a secondary station, after sending to the base station a request for service, rather than
`
`waiting for an acknowledgment, re-transmits the same request in consecutive
`
`allocated time slots without waiting for an acknowledgement and continues the re-
`
`transmitting in consecutive allocated time slots until the acknowledgement is
`
`received. The Petitioner relies, as to all of Grounds 1, 2, and 3, on the Kay reference
`
`for this teaching, while omitting Kay’s explicit teaching of only repeating the request
`
`after “a suitable time out,” if an acknowledgment or assignment is not received. Thus,
`
`the prior art relied upon by the Petitioner, rather than repeating the requests in
`
`consecutive allocated time slots without waiting for an acknowledgment, as recited
`
`in claims 1 and 17, waits for a suitable time out period to determine if an
`
`acknowledgment has been received. Accordingly, the prior art cited by the Petitioner
`
`fails to provide a basis for institution of Inter Partes Review here, and for this reason,
`
`as well as the other reasons set forth below, institution should be denied.
`
`1
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`

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`IPR2020-00420
`Patent No. 6,868,079
`
`II. 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
`
`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
`
`address any MS in its coverage area. Since only one transmitter (the BS) uses this
`
`broadcast channel, there is no access problem. EX1001, 1:17-23.
`
`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
`
`signaling messages are attached to data packets being sent from the MS to the BS.
`
`But if there was no uplink channel assigned to the MS, piggybacking is not possible.
`
`In this case it would be desirable to have a fast uplink signaling mechanism be
`
`available for the establishment, or re-establishment, of a new uplink channel.
`
`EX1001, 1: 24-33.
`
`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
`
`2
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`IPR2020-00420
`Patent No. 6,868,079
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`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
`
`imposed by third-generation telecommunications standards such as UMTS. EX1001,
`
`1:34-41.
`
`According to the invention of the ’079 Patent, a system and method is provided
`
`to improve the efficiency of the method by which a MS requests resources from a BS.
`
`According to one aspect of the invention there is provided a method of operating a
`
`radio communication system, comprising a secondary station transmitting a request
`
`for resources to a primary station in a time slot allocated to the secondary station,
`
`characterized by the secondary station re-transmitting the same request in consecutive
`
`allocated
`
`time slots, without waiting
`
`for an acknowledgment, until an
`
`acknowledgement is received from the primary station. EX 1001; 1:60-67. This
`
`scheme improves the typical time for a response by the primary station to a request
`
`by a secondary station. Because there is no possibility of requests from different
`
`secondary stations colliding, a secondary station can retransmit requests in each
`
`allocated time slot. In contrast, in prior art systems a secondary station has to wait at
`
`least long enough for the primary station to have received, processed, and
`
`acknowledged a request before it is able to retransmit. EX1001, 1:56-2:8. In prior art
`
`schemes, there is no guarantee that a request could be received and processed by the
`
`base station sufficiently rapidly for an acknowledgment to be scheduled for the
`
`immediately following frame. EX1001, 4:12-16. Using the scheme of the ‘079 Patent,
`
`the request is repeated without waiting for an acknowledgment, making the time until
`
`the request is repeated shorter than in prior art schemes. See EX1001, 4:8-18.
`
`3
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`IPR2020-00420
`Patent No. 6,868,079
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`Further, the primary station can improve the accuracy with which it determines
`
`whether a request was sent by a particular secondary station if the received signal
`
`strength is close to the detection threshold by examining the received signals in
`
`multiple time slots allocated to the secondary station in question. EX1001, 1:56-2:14.
`
`Further still, the primary station can improve the accuracy with which it
`
`determines whether a request was sent by a particular secondary station by combining
`
`requests. EX1001, 4:18-21.
`
`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
`
`successfully overcome by argument and amendment to result 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
`
`claims under 35 U.S.C. 103. EX1002, 188-194. In a response, applicant pointed out
`
`that the Examiner had mischaracterized Mansfield, stating that:
`
`[T]he same data is not retransmitted until acknowledgment is
`
`received. Rather, as specifically stated in the Abstract, re-transmission
`
`of the same frame occurs only when a responsive message does not
`
`indicate successful reception.
`
`EX1002, 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
`
`4
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`IPR2020-00420
`Patent No. 6,868,079
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`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. EX1002,
`
`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.” EX1002, 161. The Examiner repeated the rejection in a Final Office Action,
`
`EX1002, 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, EX1002, 97-130, the Examiner was again persuaded
`
`that applicant had overcome the rejections. EX1002, 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). EX1002, 76-87. The
`
`applicant amended to take allowable subject matter, and a Notice of Allowance
`
`issued. EX1002, 48-71.
`
`For the convenience of the Board, the text of the challenged claims is
`
`reproduced here:
`
`1. 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 respective secondary stations to a primary
`
`station in the respective time slots;
`
`wherein the at least one respective secondary station retransmits the
`
`same respective request in consecutive allocated time slots without waiting
`
`5
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`IPR2020-00420
`Patent No. 6,868,079
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`for an acknowledgement until said acknowledgement is received from the
`
`primary station,
`
`wherein the primary station determines whether a request has been
`
`transmitted by the at least one respective secondary station from a
`
`combination of the received signals in a plurality of successive time slots
`
`allocated to the at least one respective secondary station.
`
`2. The method of claim 1, wherein the primary station determines whether
`
`said request has been transmitted only if the level of a received request
`
`is between lower and upper thresholds.
`
`3. The method of claim 1, wherein the at least one respective secondary
`
`station modifies the power of the re-transmitted requests in response to
`
`a lack of acknowledgment from the primary station.
`
`5. The method of claim 1, wherein:
`
`the allocating of the respective time slots comprises allocating the
`
`respective time slots in frames in the uplink channel;
`
`each frame has a plurality of time slots; and
`
`the at least one respective secondary station re-transmits the respective
`
`request in the consecutive allocated time slots in a consecutive frames until
`
`the acknowledgement is received from the primary station.
`
`7. The method of claim 1, wherein:
`
`the requests for services comprise requests for establishing a new uplink
`
`channel for voice or data services.
`
`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
`
`6
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`IPR2020-00420
`Patent No. 6,868,079
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`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.
`
`
`
`III. RELATED PROCEEDINGS
`
`The ’079 patent is or was involved in the following proceedings:
`
`Case Name
`
`Case
`Filing
`Date
`6/26/2019 Uniloc USA, Inc. v. Samsung
`Electronics America
`2/22/2018 Uniloc USA, Inc. et al v. Apple Inc.
`
`3/9/2018
`
`2/23/2018 Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`3/13/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. BlackBerry
`Corporation
`7/23/2018 Uniloc USA Inc. et al v. Blackberry
`Corporation
`
`Case Number Court
`
`19-2072
`
`CAFC
`
`1-18-cv-00158 WDTX
`
`2-18-cv-00042 EDTX
`
`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
`
`7
`
`

`

`Case Name
`
`Case
`Filing
`Date
`10/24/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`11/6/2018 Uniloc USA Inc. et al v. LG Electronics
`USA Inc. et al
`11/17/2018 Uniloc 2017 LLC v. ZTE Inc. et al
`
`IPR2020-00420
`Patent No. 6,868,079
`Case Number Court
`
`3-18-cv-02835 NDTX
`
`4-18-cv-06737 NDCA
`
`3-18-cv-03064 NDTX
`
`11/17/2018 Uniloc 2017 LLC v. Blackberry
`Corporation
`11/20/2018 Uniloc 2017 LLC v. Motorola Mobility,
`LLC
`11/30/2018 Uniloc 2017 LLC v. HTC America, Inc. 2-18-cv-01728 WDWA
`
`3-18-cv-03065 NDTX
`
`1-18-cv-01841 DDE
`
`1/10/2019 Apple Inc. et al v. Uniloc 2017 LLC
`
`IPR2019-00510 PTAB
`
`3/26/2019 Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`Uniloc USA, Inc. et al v. Apple Inc.
`
`4/2/2019
`
`2-19-cv-00102 EDTX
`
`4-19-cv-01691 NDCA
`
`10/11/2019 Motorola Mobility LLC v. Uniloc 2017
`LLC
`
`IPR2020-00038 PTAB
`
`IV. CLAIM 17 OF THE ‘079 PATENT IS ALREADY THE SUBJECT OF
`TWO INTER PARTES REVIEWS, AND THIS ADDITIONAL
`PETITION SHOULD BE DENIED INSTITUTION UNDER 35 U.S.C.
`314 OR 35 U.S.C. § 325(D)
`
`The present Petition and the Petitions in IPR 2020-00038 and IPR2019-00510,
`
`both of which have already been instituted, both challenge Claim 17 of the ‘079
`
`Patent, and IPR2020-00038 challenges Claim 17 on the very same art asserted in the
`
`present Petition. This redundant challenge to the ‘079 Patent should be denied
`
`institution.
`
`The Board’s precedential decision in General Plastic Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential)
`
`8
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`IPR2020-00420
`Patent No. 6,868,079
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`provides a set of non-exclusive factors to determine whether a petitioner’s filing of
`
`follow-on petitions has caused “undue equities and prejudices to Patent Owner.” Slip.
`
`op at 16-17. The Board directs parties to those factors in the Consolidated Office
`
`Patent Trial Practice Guide (November 2019) (“Practice Guide”) Here, those factors
`
`militate in favor of the Board exercising its discretion under 35 U.S.C. 314(a) and 37
`
`C.F.R. 42.108(a) to deny institution.
`
`The non-exclusive factors are:
`
`1. whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent;
`
`2. whether at the time of filing of the first petition the petitioner knew of the
`
`prior art asserted in the second petition or should have known of it;
`
`3. whether at the time of filing of the second petition the petitioner already
`
`received the patent owner’s preliminary response to the first petition or received the
`
`Board’s decision on whether to institute review in the first petition;
`
`4. the length of time that elapsed between the time the petitioner learned of the
`
`prior art asserted in the second petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation for the time elapsed
`
`between the filings of multiple petitions directed to the same claims of the same
`
`patent;
`
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. 316(a) (11) to issue a final determination
`
`not later than 1 year after the date on which the Director notices institution of review.
`
`Here, the Petitioner already had the benefit of two prior Petitions, as well as
`
`9
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`IPR2020-00420
`Patent No. 6,868,079
`
`prior Patent Owner Responses, in preparing its Petition. Indeed, the Petitioner admits
`
`that it did not discover the Kay and Alamouti references relied on herein by its own
`
`diligence, but merely based its challenge here on the Petition in IPR2020-00038. Pet.
`
`72. As discussed below, the Petitioner improperly seeks the benefit of a redundant
`
`Petition. Further, the Petitioner’s articulation as to the timing of its awareness that
`
`its products were accused of infringement of the ‘079 Patent in district court
`
`proceedings, or the timing of its awareness of the Kay reference, are wanting and
`
`represent additional reasons for denial of institution.
`
`As to the first factor, the Board considers not only whether the prior Petition
`
`was filed by the same Petitioner, but whether there is a relationship between the
`
`present Petitioner and the Petitioner that filed the prior Petitions. Valve Corp. v. Elec.
`
`Scripting Prods., Inc., IPR 2019-00062, slip op at 9 (PTAB April 2, 2019) (Paper 11)
`
`(precedential). As the Board has determined previously, such a relationship is
`
`established here by the Petitioner’s reliance on the prior petitioner’s work.
`
`We determine, however, that Petitioner implicitly created such a
`
`relationship by using the prior petitioners’ work as a menu and picking
`
`and choosing from their work product. The instant Petitioner’s decision
`
`to use the prior petitions as a roadmap for its own petition ties the
`
`interests of all of the petitioners together. See General Plastic, Per 19 at
`
`11, 17 (“[m]ultiple, staggered petitions challenging the same patent and
`
`same claims raise the potential for abuse.”)
`
`Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper No. 8, slip op. at 12
`
`(PTAB March 17, 2020). Thus, given this third, staggered institution challenging the
`
`10
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`IPR2020-00420
`Patent No. 6,868,079
`
`same patent, and all challenging Independent Claim 17, the first General Plastic
`
`factor weighs in favor of denial of institution.
`
`The second factor, whether, at the time of filing of the earlier petitions, the
`
`petitioner knew or should have known of the prior art asserted in the later filed
`
`petition, also weighs against institution. The Petitioner admits that, at the time of
`
`filing of the IPR2020-00038 petition, it was already aware of the Merakos and Dent
`
`references. Pet. 71. The Petitioner alleges that it only learned of the Kay and Alamouti
`
`references by reviewing the Petition in IPR2020-00038. Pet. 72. However, the Kay
`
`reference is specifically incorporated by reference in the very first paragraph of
`
`Merakos, which states:
`
`
`
`11
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`IPR2020-00420
`Patent No. 6,868,079
`
`Ex. 1003, 1:1-15. Thus, the Petitioner seeks to mislead the Board, as it is self-evident
`
`that the Petitioner, by its awareness of the Merakos reference, was necessarily aware
`
`of the Kay reference. Thus, two of the three references relied upon by the Petitioner
`
`in its challenges to Independent Claims 1 and 17 were already known to Petitioner
`
`prior to the filing of the Petition in IPR2020-00038. While the Petitioner alleges that
`
`the Ling reference was not known as of the time of filing of the Petition in IPR2020-
`
`00038, the Ling reference is only cited as to dependent Claim 2, and the challenge to
`
`Claim 2 also relies on Merakos, Kay and Alamouti, i.e., the references relied on in
`
`IPR2020-00038, in addition to Ling. Thus, this factor weighs against institution.
`
`The third factor addresses whether the Petitioner had the benefit of receiving
`
`the Patent Owner’s Preliminary Response or the Board’s Institution Decision. In fact,
`
`the Petitioner already had the benefit of the Patent Owner’s Preliminary Response,
`
`the Institution Decision and the Patent Owner Response in IPR2019-00510, which
`
`also challenges Claim 17. The Petitioner has thus been able to assess the strengths
`
`and weaknesses of the prior art at issue in IPR2019-00510, and to identify art and
`
`prepare arguments with the benefit not only of the Board’s Institution Decision as to
`
`Claim 17, but both the Petitioner’s Preliminary Response and the Patent Owner
`
`Response. Thus, the third factor weights against institution.
`
`The fourth factor relates to the length of time that the Petitioner took to file the
`
`present Petition after becoming aware of the references. Patent Owner submits that,
`
`with reasonable diligence, the Petitioner would have become aware of the references
`
`at the same time as the Petitioner in IPR2020-00038. The Petitioner has represented
`
`that it supplies products that were accused of infringement in Uniloc 2017 LLC v.
`
`12
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`IPR2020-00420
`Patent No. 6,868,079
`
`AT&T Services, Inc. et al, 2-19-cv-00102 (EDTX), which was filed on March 26,
`
`2019. Ex. 1028. While the Petitioner admits that four months elapsed between the
`
`time that Petitioner became a party to that case and the filing of the present Petition,
`
`the Petitioner does not divulge how much time it permitted to elapse between
`
`becoming aware that its products were accused of infringement and the filing of the
`
`present Petition. It is reasonable to conclude that the Petitioner became aware of the
`
`accusation of infringement promptly after March 26, 2019, meaning that it waited
`
`nearly ten months to file the present Petition. Indeed, with the exercise of reasonable
`
`diligence, the Petitioner would have become aware of the prior art asserted in
`
`IPR2020-00038 in the over six months between March 2019 and the October 2019
`
`filing of IPR2020-00038. Moreover, the combination of delaying until nearly ten
`
`months after becoming aware of the infringement accusation, and waiting until well
`
`after the filing of the IPR2020-00038 Petition, demonstrates that Petitioner is engaged
`
`in gamesmanship, delaying commencement of Board proceedings to take advantage
`
`of multiple earlier proceedings. Still further, the Petitioner has exhibited a lack of
`
`candor with the Board here, as the Petitioner affirmatively mentioned the time elapsed
`
`after it became a party to district court litigation (Pet. 73), but failed to disclose when
`
`it became aware that its products were accused of infringement of the ‘079 Patent in
`
`district court litigation. The combination of the Petitioner’s delay after becoming
`
`aware of the accusations of infringement as to its products, and its lack of candor with
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`the Board, demonstrate that the fourth and fifth General Plastic factors weight
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`strongly against institution.
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`IPR2020-00420
`Patent No. 6,868,079
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`As to the finite resources of the Board, institution here would require the Board
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`to engage in a needless duplication of effort, in considering a challenge to Claim 17
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`based on precisely the same prior art asserted in IPR2020-00038, and thus this factor
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`weighs against institution.
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` In short, the General Plastic factors weight against institution. The Board is
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`respectfully requested to exercise its discretion under 35 U.S.C. 314(a) and 37 C.F.R.
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`42.108(a) to deny institution.
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`Alternatively, as the Petition relies, as to the challenged independent claims,
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`on precisely the same prior art asserted in IPR2020-00038, the present Petition is
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`cumulative of the grounds presented in the earlier Petition, and should thus be denied
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`under 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding
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`under this chapter . . ., the Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or arguments
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`previously were presented to the Office.”).
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`Ground
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`Claim(s)
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`Basis
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`IPR2020-00420
`Patent No. 6,868,079
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`Ground 1
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`1, 5, 7, 17
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`Ground 2
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`3, 4
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`Ground 3
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`2
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`
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`35 U.S.C. § 103 over U.S. Patent No. 5,521,925
`to Merakos et al. (“Merakos”), Ex. 1003 in
`view of U.S. Patent No. 5,299,198 to Kay et al.
`(“Kay”), Ex. 1004 and U.S. Patent No.
`5,933,421 to Alamouti et al. (“Alamouti”), Ex.
`1006.
`
`35 U.S.C. § 103 over Merakos in view of Kay,
`Alamouti, and U.S. Patent No. 5,430,760 Dent
`(“Dent”), Ex. 1005
`
`35 U.S.C. § 103 over Merakos in view of Kay,
`Alamouti, and U.S. Patent No. 6,172,970 Ling
`et al. (“Ling”), Ex. 1009
`
`A. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petitioner proposes that a person of ordinary skill would have had at least
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`a Bachelor’s degree in in Electrical Engineering, Computer Engineering, Computer
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`Science, or a similar field, and at least three years of experience in wireless
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`communications systems and networks or equivalent. Pet. 8. The Petitioner
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`alternatively proposes that a person of ordinary skill would have more technical
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`education but less experience, and that Petitioner’s declarant was at least a POSITA
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`at the time of filing. Id.
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`The Petitioner’s proposed definition of person of ordinary skill is improper as
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`lacking an upper bound on the work experience of a hypothetical person of ordinary
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`skill having a Bachelor’s degree. The Petitioner’s proposed definition of a person of
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`IPR2020-00420
`Patent No. 6,868,079
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`ordinary skill is further improper as ambiguous as to the relative boundaries of the
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`assertion of “more technical education” but “less experience”.
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`Patent Owner does not offer a competing definition for POSA at this
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`preliminary stage, as, even if the Board adopted the Petitioner’s proposed, and
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`improper, definition, the Petitioner fails to demonstrate a reasonable likelihood that
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`the challenged claims are unpatentable. Patent Owner reserves the right to propose
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`its own definition of POSA if trial is instituted.
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`B. CLAIM CONSTRUCTION
`
`1.
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`Claim Construction Standard
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`As of the filing date of the Petition, the standard for claim construction in Inter
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`Partes Review is the standard of “ordinary and customary meaning of such claim as
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`understood by one of ordinary skill in the art and the prosecution history pertaining
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`to the patent.” 37 C.F.R. §42.100(b) (effective November 13, 2018). For all claim
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`terms, Uniloc requests that the Board adopt the ordinary and customary meaning of
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`the claim terms as understood by one of ordinary skill in the art. Here, the Petitioner
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`proposes an overly broad construction of the claim term “acknowledgment” that
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`conflicts with the specification and the ordinary meaning of the term to one of
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`ordinary skill.
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`2.
`
` “acknowledgment”
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`Petitioner cites district court case 2-18-cv-00075 EDTX construing the term
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`“acknowledgement” as “a message sent from the primary station to the secondary
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`station indicating the primary station’s receipt of the secondary station’s request.”
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`Petitioner further asserts a construction of the term “acknowledgement” in two ways:
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`IPR2020-00420
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`(1) consistent with ordinary and customary meaning as would be understood by a
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`POSITA in light of the specification, Phillips, 415 F.3d at 1314-17, and (2) under the
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`previous district court construction of the term. Pet. 9.
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` At this preliminary stage, Patent Owner does not offer a competing definition,
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`because as will be shown below, the Petition is deficient even under Petitioner’s own
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`proposed construction. If trial is instituted, however, Patent Owner reserves the right
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`to object to Petitioner’s proposed construction and provide Patent Owner’s proposed
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`constructions.
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`C. Merakos in view of Kay Does Not Render Obvious “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” (Ground
`1, Claims 1, 5, 7, and 17)
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`The Petition alternately relies on Merakos and Kay as allegedly teaching the
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`above recitations of claim 1 and claim 17. Such reliance is misplaced, as Petitioner
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`fails to meet its burden of showing either Merakos, Kay, or some combination of
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`Merakos and Kay, teach the above recitations.
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`In the first instance, Petition mistakenly relies on Merakos as allegedly
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`teaching the above limitation. Pet. 38. Merakos discloses data stations transmitting
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`reverse allocation requests/RARs in control slots to a base station in order to request
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`data slots for sending data packets. Pet. 36. Merakos implements a round-robin
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`(RROB) mechanism to enable a data station to send an ALLOCREQ to the base
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`station with a delay that does not exceed one RROB cycle. Ex. 1003; 3:25-27.
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`Declarant’s characterization that “Merakos teaches a round-robin (RROB) cycle in
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`IPR2020-00420
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`complete generality”, with the RROB cycle consisting of “C consecutive reverse
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`frames”, wherein “C is a design parameter.” (Ex. 1007, para. 74) (empha