UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., AND THALES DIS AIS DEUTSCHLAND GMBH,
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`Petitioner,
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`v.
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`SISVEL S.P.A.,
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`Patent Owner.
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`Patent No. 7,869,396
`Issue Date: January 11, 2011
`Title: DATA TRANSMISSION METHOD AND
`DATA RE-TRANSMISSION METHOD
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`Inter Partes Review No. IPR2021-00580
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`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.23
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., AND THALES DIS AIS DEUTSCHLAND GMBH,
`
`Petitioner,
`
`v.
`
`SISVEL S.P.A.,
`
`Patent Owner.
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`Patent No. 7,869,396
`Issue Date: January 11, 2011
`Title: DATA TRANSMISSION METHOD AND
`DATA RE-TRANSMISSION METHOD
`
`
`
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`
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`Inter Partes Review No. IPR2021-00580
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`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.23
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`
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`TABLE OF CONTENTS
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`EXHIBIT LIST ..................................................................................................... iii
`TABLE OF ABBREVIATIONS AND CONVENTIONS .................................. vi
`I.
`INTRODUCTION ............................................................................................... 1
`II. A POSITA WAS KNOWLEDGEABLE ABOUT DESIGNING WIRELESS
`RADIO TRANSMISSION/RETRANSMISSION SYSTEMS ..................................... 2
`III. SACHS ANTICIPATES OR AT LEAST RENDERS OBVIOUS EVERY
`CLAIM OF THE ’396 PATENT ......................................................................... 3
`A.
`Petitioner Need Only Show Sachs Discloses Conditional
`Limitations 1[c] Or 1[d], Not Both, To Invalidate Claim 1 ................. 3
`Sachs’ “Reordering” Is Not A Separate Step ....................................... 5
`Sachs Discloses “Stopping The Timer … In Order To Prevent
`A Triggering Of A Status Report” In The Same Way As The
`’396 Patent ............................................................................................ 8
`D. A POSITA Would Understand Sachs Figures 4 And 5 Describe
`Examples Of The Same RLC Entity Receiving Different PDU
`Sequences ........................................................................................... 11
`Sachs Also Anticipates, Or At Least Renders Obvious, The
`Dependent Claims .............................................................................. 12
`1.
`Sachs Discloses Each Method For Detecting A Missed
`Data Block (Dependent Claims 2 & 3) .................................... 13
`Sachs Discloses “A Last In-Sequence Received Data
`Block,” Too (Dependent Claims 4 & 9) .................................. 15
`Sachs Discloses Stopping A Timer When The Missing
`Data Block Is Received (Dependent Claims 5 & 10) .............. 16
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`B.
`C.
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`E.
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`2.
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`3.
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`-i-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`IV. GROUNDS II AND IV: PETITIONER PROVIDED SECTION 103
`EVIDENCE FOR SACHS AND WEI ................................................................. 17
`V. GROUNDS III, IV & V: WEI ALSO RENDERS ALL CLAIMS INVALID ......... 19
`A. Wei Discloses A Status Report Consistent With The ’396
`Patent Claims ...................................................................................... 19
`1.
`The ’396 Patent Did Not Narrow “Status Report” ................. 19
`2. Wei Discloses A “Status Report” Consistent With The
`Plain And Ordinary Meaning Of The Term ............................. 22
`A POSITA Would Have Been Motivated To Apply Wei’s
`Method For Using A Timer To The Then-Prevailing TS 25.322
`RLC Protocol Standard ...................................................................... 24
`VI. CONCLUSION ................................................................................................ 25
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`B.
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`-ii-
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`Exhibit
`Ex. 1001
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`Ex. 1002
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`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
`Ex. 1011
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,869,396 to Sung Duck Chun et al.
`(“the ’396 patent”)
`Declaration of Apostolos (Paul) Kakaes, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,869,396
`(“Kakaes”)
`World Intellectual Property Organization (“WIPO”) Patent
`Application No. PCT/EP02/04621, filed Apr. 26, 2002,
`International Publication No. WO 02/091659 A2, published
`Nov. 14, 2002 to Joachim Sachs et al. (“Sachs”)
`U.S. Patent No. 6,987,780 to Yongbin Wei et al., filed June 10,
`2002, issued Jan. 17, 2006 (“Wei”)
`3rd Generation Partnership Project (“3GPP”), Technical
`Specification Group Radio Access Network; Radio Link
`Control (RLC) protocol specification (Release 5)”; Technical
`Specification (“TS”) 25.322 V5.9.0 (2004-12), published Dec.
`23, 2004 (“TS 25.322”)
`Certified File History of U.S. Patent No. 7,869,396 (copies of
`prior art references and certified copies of foreign priority
`applications omitted)
`Declaration of Craig Bishop in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,869,396
`3GPP, “About 3GPP,” available at
`https://www.3gpp.org/about-3gpp (accessed Mar. 3, 2021)
`3rd Generation Partnership Project (“3GPP”), Technical
`Specification Group Radio Access Network; Radio Interface
`Protocol Architecture (Release 6)”; Technical Specification
`(“TS”) 25.301 V6.1.0 (2004-12), published Dec. 23, 2004 (“TS
`25.301”)
`European Patent No. 2,315,383 B1 to Sung-Duck Chun et al.
`Notice of Opposition to European Patent No. 2,315,383 from
`Samsung Electronics GmbH (June 1, 2017)
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`-iii-
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`Exhibit
`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019
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`Ex. 1020
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`Ex. 1021
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`Description
`3GPP2 Press Release, “3GPP2 Decides on 1xEV-DV
`Technology & Prepares for Joint Meeting with 3GPP on
`Harmonization” (Oct. 26, 2001), available at
`https://www.3gpp2.org/
`Public_html/News/20011126_PressRelease.cfm (accessed Mar.
`3, 2021)
`Clifton J. Barber, “Summary of 3GPP/3GPP2 Harmonization
`Meeting” (Nov. 13-14, 2001), available at
`https://www.3gpp2.org/Public_html/Summaries/3GPP-
`3GPP2_Harmonization_MtgSum-0111.pdf (accessed Mar. 3,
`2021)
`Asok Chatterjee, “The 3GPP vision” (May 2002), available at
`https://www.itu.int/osg/imt-project/docs/2.2_Chatterjee.pdf
`(accessed Mar. 3, 2021)
`Pro Hac Vice Ineligibility Order Pursuant to Rule 1:28-2,
`Supreme Court of New Jersey, dated July 12, 2021
`Pro Hac Vice Ineligibility Order Pursuant to Rule 1:28-2,
`Supreme Court of New Jersey, dated Sept. 29, 2020
`Pro Hac Vice Ineligibility Order Pursuant to Rule 1:28-2,
`Supreme Court of New Jersey, dated Sept. 24, 2014
`Declaration of Neil A. Benchell in Support of Pro Hac Vice
`Admission of Counsel, Doc. 28-3, NASA Machine Tools, Inc. v.
`Fama Tech. Inc. et al., Case No. 2:18-cv-02872 (D. N.J.) (filed
`June 7, 2018)
`Declaration of Neil A. Benchell, Esq. in Support of Application
`for Admission Pro Hac Vice, Doc. 53-1, Bristol Myers Squibb
`Co. v. Apotex, Inc. et al., Case No. 3:10-cv-05810 (D. N.J.)
`(filed Apr. 5, 2012)
`Order, Doc. 34, NASA Machine Tools, Inc. v. Fama Tech. Inc. et
`al., Case No. 2:18-cv-02872 (D. N.J.) (filed June 27, 2018)
`Order for Pro Hac Vice Admission of Neil A. Benchell, Esq.,
`Doc. 56, Bristol Myers Squibb Co. v. Apotex, Inc. et al., Case
`No. 3:10-cv-05810 (D. N.J.) (filed Apr. 19, 2012)
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`-iv-
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`Exhibit
`Ex. 1022
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`Ex. 1023
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`Ex. 1024
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`Ex. 1025
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`Ex. 1026
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`Ex. 1027
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`Ex. 1028
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`Ex. 1029
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`Ex. 1030
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`Ex. 1031
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`Ex. 1032
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Description
`Plaintiff’s Brief in Opposition to Defendants’ Motion for Pro
`Hac Vice Admission of Counsel, Doc. 29, NASA Machine
`Tools, Inc. v. Fama Tech. Inc. et al., Case No. 2:18-cv-02872
`(D. N.J.) (filed June 18, 2018)
`E-mail correspondence between E. Halverson and S. Berger,
`Dec. 14, 2021 - Jan. 3, 2022
`Affidavit of Mr. Neil Benchell in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission, Ex. 2007, IPR2021-00640
`(P.T.A.B.) (filed Jan. 24, 2022)
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`00540, taken Dec. 3, 2021
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`00584, taken Dec. 3, 2021
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`01099, taken Apr. 6, 2021
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`01099, taken Aug. 10, 2021
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`IPR2020-01099, taken Aug. 10, 2021
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`IPR2021-00584, taken Dec. 3, 2021
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`IPR2021-00584, taken Dec. 3, 2021
`Deposition Transcript for Regis J. Bates, Jr., IPR2021-00580,
`taken February 17, 2022
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`-v-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`TABLE OF ABBREVIATIONS AND CONVENTIONS
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`Other Abbreviations and Conventions
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`Third Generation Partnership Project
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`Acknowledgement message
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`Automatic Repeat reQuest
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`Code Division Multiple Access
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`Enhanced GPRS
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`Forward Error Correction
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`General Packet Radio Service
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`Global System for Mobile Communications
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`Hybrid ARQ (automatic repeat request)
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`High Speed Packet Access
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`Long Term Evolution
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`Medium Access Control
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`3GPP
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`ACK
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`ARQ
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`CDMA
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`EGPRS
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`FEC
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`GPRS
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`GSM
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`HARQ
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`HSPA
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`LTE
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`MAC
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`NACK
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`Negative Acknowledgement message
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`PDU
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`RLC
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`RLP
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`SN
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`UMTS
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`Protocol Data Unit
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`Radio Link Control
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`Radio Link Protocol
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`Sequence Number
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`Universal Mobile Telecommunications System, also referred to
`as Universal Mobile Telecommunication Services
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`WCDMA Wideband CDMA (Code Division Multiple Access)
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`-vi-
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`I.
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`INTRODUCTION
`The ’396 patent broadly claims use of a timer to delay or prevent a status
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`report, but these claims are found in the prior art. Sachs disclosed every limitation
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`of each challenged claim of the ’396 patent more than a decade before the earliest
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`5
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`date to which the ’396 patent claims priority. Sachs teaches using a timer to prevent
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`the transmission of a status report in the same way as the ’396 patent: a status report
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`is sent if the timer expires, but no status report is sent if the timer is stopped.
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`Rather than concede invalidity, Patent Owner contorts itself to argue that a
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`POSITA would somehow be unable to understand Sachs’ teachings because the
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`10
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`relevant points are made in a series of figures that build upon one another. This is
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`not plausible; to the contrary, Sachs goes above and beyond to ensure that its
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`disclosures clearly address how the Sachs system responds to delayed, missing, and
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`received data blocks across various reception scenarios.
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`Sachs is not the only prior art reference to disclose the use of a timer to
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`15
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`“prevent a triggering of a status report.” Wei also disclosed this same thing. Wei
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`described its timer through embodiments in a CDMA system, but instructed its use
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`in other wireless communication systems. Wei therefore also invalidates claims 1-
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`5 and 7, which extend to any “wireless communication system” performing
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`Automatic Repeat reQuest (ARQ), and renders obvious the remaining claims
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`-1-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`because a POSITA would have understood the benefits of applying Wei’s timer to
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`the world’s then-prevailing wireless industry standard.
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`Petitioner respectfully requests that the challenged claims be cancelled.
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`5
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`II. A POSITA WAS KNOWLEDGEABLE ABOUT DESIGNING WIRELESS RADIO
`TRANSMISSION/RETRANSMISSION SYSTEMS
`Petitioner’s and Patent Owner’s proposed credentials for a POSITA are
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`similar: a Bachelor’s degree in electrical engineering or a similar discipline (e.g.,
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`computer sciences or telecommunications) and at least three years of relevant
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`experience. Compare Petition, 35 with Response, 9 (“practical experience in the
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`10
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`field”).1 Patent Owner does not disagree that a POSITA would be familiar with
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`3GPP specifications, including UMTS and LTE, and that a POSITA must have
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`relevant experience “designing or implementing wireless radio systems for data
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`transmission and retransmission.” Response, 9 (describing Patent Owner’s proposal
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`as “similar”). The necessity of these credentials is supported by Dr. Kakaes’ factor-
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`15
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`by-factor analysis and corroborating evidence, which Patent Owner does not rebut.
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`Petition, 35; Ex. 1002, ¶¶40-53.
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`The parties disagree as to whether the education required can be reduced or
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`omitted. Response, 9. Patent Owner’s position is driven by the reality that its
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`declarant
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`lacks a
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`technical degree
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`in electrical engineering or other
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`1 All emphases added, unless otherwise indicated.
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`-2-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`engineering/science discipline. Ex. 2001, ¶7 (Bachelor’s degree in business
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`management, coursework towards MBA); Ex. 1032, 43:12-22. Mr. Bates testified
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`that he has experience laying out and installing networks, but he has never designed
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`the channels and methods for transmitting and retransmitting data in wireless
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`5
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`networks. Id., 45:18-46:16. Patent Owner’s declarant does not therefore meet
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`Petitioner’s definition for a POSITA and, indeed, may not even meet Patent Owner’s,
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`given that Mr. Bates’ experience is not relevant to the’396 patent’s subject matter.
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`This diminishes the weight that Mr. Bates’ testimony should receive, if any.
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`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008)
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`10
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`(“[A] witness not qualified in the pertinent art may not testify as an expert as to
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`anticipation, or any of [its] underlying questions ….”).
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`III. SACHS ANTICIPATES OR AT LEAST RENDERS OBVIOUS EVERY CLAIM OF
`THE ’396 PATENT
`Sachs discloses or renders obvious every limitation of each claim of the ’396
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`15
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`patent.
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`A.
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`Petitioner Need Only Show Sachs Discloses Conditional
`Limitations 1[c] Or 1[d], Not Both, To Invalidate Claim 1
`Patent Owner argues that limitations 1[c] and 1[d] are not conditional because
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`“[t]his argument is based on the incorrect premise that limitations 1[c] and 1[d]
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`20
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`cannot both be performed.” Response, 14. In particular, Patent Owner points out
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`-3-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`that these limitations “are connected with ‘and’” and that the word “when” only
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`appears once in 1[c]. Id., 14-15.
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`Patent Owner misses the point. A conditional limitation is a feature that
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`depends on a certain condition being present. Claim 1 is a method claim, and 1[b]
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`5
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`specifies “starting a timer when the at least one data block is detected as missed.”
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`Ex. 1001, 16:44-45; Ex. 1032, 151:14-18 (Patent Owner’s declarant admitting claim
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`1 describes a single timer). Limitation 1[c] describes “stopping the timer when the
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`at least one data block is received from the transmitter while the timer is running…”
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`Ex. 1001, 16:46-49. Limitation 1[d], on the other hand, describes an alternate
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`10
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`condition: “transmitting the status report to the transmitter after the timer expires….”
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`Id., 16:50-54. Both limitations refer back to the single timer described in 1[b].
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`Limitations 1[c] and 1[d] are mutually exclusive: the timer either stops or expires,
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`but it cannot do both while performing the method. Petition, 20n.5; Ex. 1002, ¶¶121,
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`169.
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`15
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`Patent Owner’s declarant agreed on cross-examination that a stopped timer
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`cannot expire. Ex. 1032, 160:11-22. Patent Owner’s declarant further admitted that
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`the method of claim 1 “sometimes” performs 1[c] (when the timer is stopped) and
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`“sometimes” performs 1[d] (when the timer expires). Id., 169:20-170:9. This is
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`because 1[c] and 1[d] are mutually exclusive; connecting the limitations with “and”
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`20
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`does not change that.
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`-4-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`Patent Owner’s reliance on Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-
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`01187, 2021 WL 189216, at *6 (PTAB Jan. 19, 2021), is misplaced. Response, 14-
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`15. There, the Board found that use of the word “when” may indicate a conditional
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`method step. Id. (collecting authority). Here, 1[c] uses the word “when” to similarly
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`5
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`indicate the necessary condition: “when the at least one data block is received from
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`the transmitter while the timer is running.” Ex. 1001, 16:46-47.
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`Where, as here, “a method’s conditional step does not need to be performed,
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`it does not need to be shown to invalidate the method claim.” Uniloc, 2021 WL
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`189216, at *8. Petitioner need therefore only demonstrate one of the mutually
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`10
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`exclusive limitations, 1[c] or 1[d], in the prior art. That said, Petitioner nonetheless
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`presents prior art that discloses both mutually-exclusive limitations in single
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`references. Petition, 20 n.5.
`
`B.
`Sachs’ “Reordering” Is Not A Separate Step
`Patent Owner attempts to distinguish Sachs (Ex. 1003) as “entirely different”
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`15
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`from the ’396 claims because Sachs also discloses reordering and use of a timer
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`called “T_reorder.” This does not hold water.
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`Sachs explains that a “timer is started for each PDU arriving out of sequence”
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`(Ex. 1003, 13:2-3), which is “stopped when all outstanding PDUs are received and
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`the sent sequence is reestablished” (id., 14:1-4). If the timer instead expires, a
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`20
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`“STATUS report is removed from the buffer and transmitted.” Id., 13:30-33.
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`-5-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`Patent Owner’s argument that the Sachs “T_reorder timer is directed to
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`delaying a reordering procedure,” not preventing a triggering of a status report,
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`misreads Sachs. Sachs first teaches that “it is advantageous to delay a request for a
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`retransmission of missing data packets by the timer.” Ex. 1003, 9:24-26. To do so,
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`5
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`“[i]n a preferred embodiment, the timer is stopped before the timer expiry when at
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`the reception of a data packet the sequence is established.” Id., 9:34-10:1. It is
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`receipt of the missing data packet, not an artificial and separate “reordering
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`procedure,” to which the timer is tied. Sachs shows this in Figure 5:
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`10
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`Ex. 1003, Figure 5 (annotated). Sachs’ timer is stopped when and because the
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`missing PDUs are received. Patent Owner suggests a fictional additional step, a
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`shuffling of PDUs in an RLC buffer, but that is not what Sachs teaches. Sachs’
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`-6-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`“reordering” merely refers to the RLC entity’s recognition that the missing data
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`block has been received so the sequence has been reestablished: “After receiving
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`the PDUs 3 and 4 the sequence 1,2,3,4,5,6,7,8 is re-established and therefore the T-
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`reorder timer is stopped.” Ex. 1003, 14:10-12 (describing Figure 5). Patent Owner’s
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`5
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`quibble may be that Sachs provides additional explanation for how the RLC entity
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`recognizes that “the at least one data block is received,” but that does not undercut
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`Sachs’ teaching that the RLC protocol detects that the missing data block has been
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`received and stops the timer.2 See Ex. 1002, ¶¶154, 167, 170 (explaining “reordering”
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`as understood by POSITA in the context of Sachs); ¶91 (explaining “reordering” in
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`10
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`the 3GPP standard TS25.322 and RLC sublayer: “[i]n-sequence delivery of upper
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`layer PDUs”).
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`Not only does Sachs disclose that the timer is stopped when the missing data
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`block is received, it visually depicts that step in the same way and with the same (if
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`not more than) level of detail as the ’396 patent. Figure 5 (above) shows that, upon
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`15
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`receipt of missing PDUs 3,4, the timer is stopped. There is no lag. There is no
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`intervening or conditional step. Receipt translates to stopping the timer, and no
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`status report is transmitted. Compare Ex. 1001, 14:46-47 & Fig. 12 (showing at step
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`2 The ’396 patent is silent as to how the RLC entity detects receipt of the missing
`PDU, presumably because this was already known to a POSITA.
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`-7-
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`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
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`2 that the RLC entity receives PDU2 before timer expiration, the timer stops, and no
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`status report appears) with Ex. 1003, 14:4-12 & Fig. 5 (showing that, upon receipt
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`of PDUs 3,4, before timer expiration, the timer stops, and no status report appears).
`
`5
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`C.
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`Sachs Discloses “Stopping The Timer … In Order To Prevent A
`Triggering Of A Status Report” In The Same Way As The ’396
`Patent
`The claimed use of a timer is the ’396 patent’s purported novelty.3
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`Petitioner appreciates APJ Moore articulating his concerns about the ’396
`
`patent’s inartful description of “stopping the timer … in order to prevent a triggering
`
`10
`
`of a status report before the timer expires.” Institution Decision (“ID”), 28.
`
`
`3 Patent Owner’s declarant testified:
`Q. And it is the use of the timers that you just described in
`your opinion that makes the claimed invention of the ’396
`patent novel?
`A. The use of that particular timer. There are many, many
`timers that would be involved in any one of our data
`communications network, but in the way this one was set
`up, using the timer, combining it with HARQ, a hybrid
`ARQ, that is the novelty of the patent. It’s also designed
`around a fourth-generation architecture for LTE.
`
` Ex. 1032, 15:7-16:6. Patent Owner’s declarant also referred to HARQ and LTE
`as potential points of novelty, but neither claim 1 nor 8 refers to HARQ, LTE, or
`any HARQ- or LTE-specific functions.
`
`-8-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Petitioner respectfully submits that the starting and running of the timer delays the
`
`transmission of the status report, which is either sent if the timer expires or stopped
`
`if the timer is stopped. Ex. 1001, 16:46-53. But even under an alternative
`
`interpretation in which the starting or running of the timer prevents transmission of
`
`5
`
`the status report, Sachs discloses the use of a timer in the same manner as the ’396
`
`claims and as depicted in Figures 12 and 13. Either way, Patent Owner’s declarant
`
`testified that a POSITA would have understood. Ex. 1032, 201:18-202:7.
`
`Petitioner first addresses a POSITA’s reasonable interpretation of this
`
`limitation in light of the ’396 patent and file history. As to the file history, issued
`
`10
`
`claims 1 and 8 were not included in the application filed June 20, 2008. Ex. 1006,
`
`27. The first version of this phrase was added in the applicant’s April 29, 2009
`
`amendment, and applicant then filed new claims on September 11, 2009, including
`
`the claim that would later issue as claim 1, now describing “starting a timer for
`
`triggering a status report when the at least one missed data block is detected.” Id.,
`
`15
`
`109, 130.
`
`
`
`This “triggering” only appears in claims 1 and 8, with no corresponding
`
`specification explanation. The ’396 specification describes several embodiments for
`
`a purported invention for reducing data loss in data transmission/retransmission. Ex.
`
`1001, 1:17-20. However, the use of a timer is only discussed in embodiments shown
`
`20
`
`in Figures 12 and 13. Id., 14:34-16:16, Figs. 12-13. The ’396 patent describes using
`
`-9-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`a timer to prevent transmission of a status report generated at the instant a gap in the
`
`data blocks is detected. Ex. 1001, 14:28-33 (“When a gap is generated in the
`
`buffer …, the timer is activated at once.”).
`
`
`
`Petitioner agrees, for purposes of this proceeding only, that “triggering” is a
`
`5
`
`term of art that would have been understood by a POSITA. Specifically, a POSITA
`
`would have understood that the RLC entity is constantly generating status reports,
`
`and that the “triggering” of a status report refers to the transmission of a status report
`
`that was created or updated when the missing data block was first detected as missed.
`
`Ex. 1002, ¶¶174-175 (“triggering of a status report” means transmitting a status
`
`10
`
`report); Ex. 1032, 19:18-20:2 (Patent Owner’s declarant: “Status reports might be
`
`generated all the time, but they’re not necessarily going to be sent.”). Patent Owner
`
`similarly characterized Figures 12 and 13: “Figures 12 and 13 demonstrate
`
`embodiments which include a jitter timer (“JT”) that starts when a PDU is detected
`
`as missed and triggers a status report on expiry.” Response, 8. Specifically, in
`
`15
`
`Figure 12: “In [step] (2), the RLC entity receives PDU2 before the HARQ jitter
`
`timer JT expires, and the HARQ jitter timer JT stops.” Ex. 1001, 14:46-47. Neither
`
`this description nor corresponding Figure 12 depict the prevented triggering of a
`
`status report. Nothing happens if the timer is stopped. The jitter timer in Figure 13
`
`expires but does not stop.
`
`-10-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`The status report to request retransmission of the missing data block is
`
`therefore already generated before it is prevented from being triggered. It is the
`
`timer that temporarily prevents this request from being transmitted (while running)
`
`or averts the transmission altogether (when stopped).
`
`5
`
`D. A POSITA Would Understand Sachs Figures 4 And 5 Describe
`Examples Of The Same RLC Entity Receiving Different PDU
`Sequences
`Patent Owner next argues that Sachs does not anticipate the challenged claims
`
`because there is “no single embodiment” in Sachs that discloses each limitation of
`
`10
`
`the claims. Response, 17-18. Specifically, Patent Owner argues that Figures 4 and
`
`5 are different “embodiments.” Id.
`
`As an initial matter, Patent Owner is wrong on the law. “An anticipating prior
`
`art reference may anticipate the claimed invention expressly or implicitly, and the
`
`full scope of the prior art reference’s disclosure is considered.” Hayward Indus.,
`
`15
`
`Inc. v. Pentair Water Pool & Spa, Inc., 814 F. App’x 592, 595–96 (Fed. Cir. 2020).
`
`“[P]rior art references should be considered for all that they teach, rather than being
`
`limited to a particular embodiment.” Id.
`
`Patent Owner’s argument also misreads or misunderstands Sachs, which
`
`explains the overlap between Figures 4 and 5:
`
`20
`
`The structure of the figure 5 is similar to the figure 4. The
`difference is that the PDUs 3 and 4 are transmitted over
`the link.
`
`-11-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Ex. 1003, 14:1-10. Patent Owner’s declarant agreed with this characterization:
`
`Figures 4 and 5 “are two different examples of how the [Sachs] system is going to
`
`operate as it receives its PDUs.” Ex. 1032, 133:21-135:1.
`
`In essence, Sachs therefore teaches a single “embodiment” in Figures 4 and 5,
`
`5
`
`with each figure depicting one of the mutually-exclusive conditions of limitations
`
`1[c] or 1[d]. Even if these were different “embodiments,” however, a POSITA,
`
`reading Sachs, would “at once envisage” the method described by the applicant.
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
`
`10
`
`E.
`
`Sachs Also Anticipates, Or At Least Renders Obvious, The
`Dependent Claims
`Sachs also addresses each of the limitations of dependent claims 2-7 and 9-10.
`
`Initially, there is no dispute that claims 2, 3, and 4 (and duplicative claim 9),
`
`each of which is directed to the manner that “the at least one data block is detected
`
`as missed,” do not contribute anything inventive to the claimed invention. Patent
`
`15
`
`Owner’s declarant testified:
`
`Q. Is there anything novel about the manner in which the
`applicant describes detecting a gap in Claims 2, 3, and 4?
`A. I don’t think I see anything novel there. The novelty is
`that we’re using the -- the entire patent is using the timer
`to determine if, in fact, the data -- the data block that’s
`missing, does it arrive before the timer expires or does it
`not arrive before the timer, which we've already discussed.
`
`20
`
`-12-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Ex. 1032, 195:8-16.4 So, as a starting point, these dependent claims add no novelty.
`
`1.
`
`Sachs Discloses Each Method For Detecting A Missed Data
`Block (Dependent Claims 2 & 3)
`Sachs teaches “detecting a data block as missed based on a gap in the sequence
`
`5
`
`number of the received data blocks” in Figures 4-5 and the corresponding
`
`specification discussion (Ex. 1003, 2:17-19, 7:25-27, 13:3-6), and does so with more
`
`examples and in greater detail than the ’396 patent (e.g., id., 22:1-7). Patent Owner
`
`does not address that point.
`
`Petitioner also pointed to Figure 6, and Patent Owner quibbles that Figure 6
`
`10
`
`is purportedly “different from and incompatible with Figures 4 and 5.” As explained,
`
`“prior art references should be considered for all that they teach, rather than being
`
`limited to a particular embodiment.” Hayward, 814 F. App’x. at 596; Victaulic Co.
`
`v. Iancu, 753 F. App’x 895, 900 (Fed. Cir. 2018) (distinguishing Patent Owner’s
`
`authority, Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008),
`
`15
`
`because the Net MoneyIN reference did not disclose all limitations in the same way
`
`as the challenged claim or teach that they could be combined).
`
`
`4 Patent Owner’s declarant also agreed that claim 2, which requires only that the
`“sequence number (SN) of a currently received data block is larger than a SN of
`a previously received data block,” does not necessarily describe a gap in the
`received data blocks, i.e., a missing data block. Ex. 1032, 190:1-191:2; also
`Petition, 49 n.14, Ex. 1002, ¶199.
`
`-13-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Patent Owner again ignores Sachs’ teachings. Sachs explains that Figure 6
`
`shows the same RLC receiver from Figures 4 and 5 working both in the
`
`acknowledged mode (AM) (at left) and unacknowledged mode (UM) (at right) with
`
`the additional improvement of “at least one additional state variable in the receiver.”
`
`5
`
`Ex. 1003, 14:14-35. Sachs therefore explains that Figure 6 is an extension of Figures
`
`4-5 with one additional feature. Even if it was somehow intended to be a different
`
`RLC receiver, which it is not, a POSITA reading Sachs would “at once envisage”
`
`the claimed arrangement. Kennametal, 780 F.3d at 1381.
`
`Patent Owner further complains that Figure 6 cannot be understood because
`
`10
`
`“status information is provided differently in Figure 6.” Response, 18. But this is
`
`not relevant; Petitioner only relies on Figure 6 to demonstrate teachings for
`
`“detecting whether at least one data block to be received from a transmitter is missed.”
`
`Regardless, Sachs’ Figure 6 does disclose transmitting an ACK. Figure 6 depicts
`
`transmitting a “STATUS up[]to 18 NACK 11.” Ex. 1003, Fig. 6. Sachs explains:
`
`15
`
`“The status variable can be for example used in acknowledged mode for a generation
`
`of a status report message to acknowledge the reception of the data packets up[]to
`
`the state variable.” Ex. 1003, 10:12-35. Figure 6’s status report therefore includes
`
`an ACK acknowledging receipt of the data packets “up[]to PDU 18.”
`
`Sachs’ Figure 6 thus teaches more than the ’396 patent, but that does not save
`
`20
`
`claims 2 or 3.
`
`-14-
`
`
`
`Petitioner’s Reply Under 37 C.F.R. § 42.23
`PTAB Case No. IPR2021-00580
`
`Sachs Discloses “A Last In-Sequence Received Data Block,”
`Too (Dependent Claims 4 & 9)
`Patent Owner repeats its complaint that Petitioner relied on Figure 6 to show
`
`2.
`
`the particular sequence of events for claims 4 and 9, which is addressed above. In
`
`5
`
`addition, Patent Owner claims that Petitioner points to SN4 as being greater than
`
`SN2 without explaining how it is “a last in-sequence received data block.” Response,
`
`20.
`
`But Petitioner did explain how, in this example, SN4 from PDU4 follows
`
`PDU1, which was the highest in-sequence number: a data block is missed when the
`
`10
`
`sequence number from the currently-received data block is larger than the sequence
`
`number that would follow the last in-sequence received data block, SN4 > SN2, i.e.,
`
`there is a gap in the sequence numbers. Petition, 55-56; Ex. 1002, ¶¶217-220.
`
`Petitioner also addressed an alternate interpretation in which the “sequence number
`
`(SN) following…” is instead interpreted to be SN5. Petition, 55n.16; Ex. 1002, ¶219.
`
`15
`
`In short, these dep
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