throbber
Trials@uspto.gov
`571-272-7822
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`Paper# 48
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` Date: September 7, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATIONTECHNOLOGY
`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.
`__________
`
`IPR2021-00580
`Patent 7,869,396 B2
`__________
`
`Record of Oral Hearing
`Held: June 15, 2022
`
`
`Before BARBARA A. PARVIS, MONICA S. ULLAGADDI, and
`AARON W. MOORE, Administrative Patent Judges.
`
`
`
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`

`

`IPR2021-00580
`Patent 7,869,396 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`KOURTNEY MUELLER MERRILL, ESQ.
`PERKINS COIE LLP
`merrill-ptab@perkinscoie.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`NEIL BENCHELL, ESQ.
`NADIA LOIZIDES, ESQ.
`DEVLIN LAW FIRM LLC
`nb-ptab@devlinlawfirm.com
`nl-ptab@devlinlawfirm.com
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`June 15, 2022, commencing at 1:00 p.m. EDT, via Video Teleconference.
`
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`IPR2021-00580
`Patent 7,869,396 B2
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`(1:00 p.m.)
`JUDGE ULLAGADDI: Thank you, Mr. Rogers. Can everyone
`
`
`
`hear me?
`
`MS. MERRILL: Coming in clear. Can you hear me as well?
`
`JUDGE ULLAGADDI: Yes.
`
`MS. MERRILL: Thank you.
`
`JUDGE ULLAGADDI: Good afternoon. We are here today for oral
`argument in inter partes review matter number 2021-00580, a case in which
`U.S. Patent number 7,869,396 is at issue.
`
`I am Judge Ullagaddi. Your panel includes myself, Judge Parvis and
`Judge Moore. I'd like to start by getting appearances of counsel. Who do we
`have on behalf of petitioner?
`
`MS. MERRILL: Good afternoon, Your Honors. My name is
`Kourtney Merrill with law firm Perkins Coie. I represent Sierra Wireless,
`which joined with Cradlepoint, Honeywell, TCL, TCT and Thales to file the
`petition.
`
`JUDGE ULLAGADDI: Thank you, Ms. Merrill. And who do we
`have on behalf of patent owner?
`
`MR. BENCHELL: On behalf of patent ow- -- owner, my name is
`Neil Benchell with the law firm of Devlin Law Firm. With me also watching
`is my colleague, Nadia Lo- -- Loizides.
`
`JUDGE ULLAGADDI: Thank you, Mr. Benchell. The judges have
`the parties' demonstratives. Please remember when referring to the
`demonstratives to identify what slide number you're on so that we can all
`follow along and to also make the record clear. And also, for the record,
`please identify yourself when speaking.
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`IPR2021-00580
`Patent 7,869,396 B2
`
`The parties will have 45 minutes to argue their respective cases.
`Petitioner who bears the burden to show unpatentability of the challenged
`claims by preponderance of the evidence will begin by presenting its case in
`chief.
`Patent owner will then respond to petitioner's arguments. Thereafter,
`
`petitioner may use any time that it has reserved for rebuttal to respond to
`patent owner's arguments.
`
`Petitioner's rebuttal may not be more than half of the allotted total
`time. Thereafter, patent owner may use any time that it has reserved for
`surrebuttal to respond to petitioner's rebuttal. Ms. Merrill, would you like to
`reserve any time for rebuttal today?
`
`MS. MERRILL: Yes, Your Honor. I'd like to tentatively reserve 15
`minutes of time.
`
`JUDGE ULLAGADDI: Okay. That leaves 30 minutes for your main
`case and when you are ready, you may begin.
`
`MS. MERRILL: May I ask, as a preliminary matter, if you're
`comfortable with me screensharing the demonstratives? Would that be
`helpful to Your Honors? Otherwise, if you already have separate copies, I'm
`more than happy to simply flag the slide numbers, which I'll do either way.
`
`JUDGE ULLAGADDI: We -- we have copies, we can rely on those.
`
`MS. MERRILL: Okay. Then I will not bring them up. All right.
`Well, today I would like to address, turning to demonstrative two, the level
`of ordinary skill in the art, which has implications in this proceeding for
`patent owner's declarant who does not qualify as a POSITA. Next, I'd like to
`briefly touch on the mutually exclusive and therefore, conditional limitations
`of method claim one of the challenge 396 patent.
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`IPR2021-00580
`Patent 7,869,396 B2
`
`And then next, turn to petitioner's evidence and arguments on
`grounds one and two, which are unpatentability of the challenge claims in
`view of Sachs. Now, I'll first focus the discussion on disputed limitations
`1C, 1D and their counterparts in claim 8, then turn to dependent claims 2, 3,
`4, 9 and then 5 and 10.
`
`I am not planning, however, to address dependent claims six and
`seven, which patent owner has not challenged unless the board has any
`questions. And then finally, as time allows, I'll address patent owner's
`arguments as to Wei in grounds three, four and five. So moving ahead to
`demonstrative four, we have listed the five instituted grounds for the board's
`convenience.
`
`At demonstrative five, there is no dispute as to priority date or
`publication or even the prior art status of each of the asserted prior art
`references. So for purposes of arguments today, however, moving to
`demonstrative six I'm going to largely try to consolidate the limitations that
`we're discussing.
`
`So as shown on demonstrative six, method claim one and receiver
`claim eight together are nearly identical other than the preambles which are
`emphasized here. So I'll address the preambles separately, but otherwise, not
`the other limitations, which only contain non-substantive changes in verb
`tenses.
`
`At demonstrative 7, there are 2 sets of identical dependent claims,
`claims 4 and 9 and claims 5 and 10, which I will also address together and
`then at demonstrative 8, the 4 remaining dependent claims are different,
`although, they contain some similarities that I'll discuss in just a few
`minutes.
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`IPR2021-00580
`Patent 7,869,396 B2
`
`So jumping now to the person of ordinary skill in the art and the fact
`that this -- this issue is relevant here today, because patent owner's declarant
`does not qualify under either party's definition. So at demonstrative 10, we
`set out the 2 competing proposed definitions for a POSITA and as the board
`already pointed out, there is similar -- similarities in these definitions.
`
`So of note, both parties agree that a POSITA would have a degree in
`electrical engineering or a similar discipline and the parties also agreed on at
`least three years of relevant experience, which petitioners then specified in
`our definition includes the designing or implementing of wireless radio
`systems for data transmission and retransmission.
`
`And we further explained that a POSITA would be familiar with the
`3GPP technical specifications, including UMTS and LTE. Now, the board,
`as shown at demonstrative 11, preliminarily adopted petitioner's proposed
`definition which was supported by pages of detailed testimony of underlying
`Sachs from petitioner's expert, Dr. Apostolos Kakaes on each of the relevant
`factors and those pages are -- are shown very briefly at demonstratives 12
`and the particular factors that Dr. Kakaes addressed on demonstrative 13.
`
`Patent owner did not disagree or rebut Dr. Kakaes' detailed
`testimony, but instead its own declarant, as shown at demonstrative 14,
`provided just a -- a conclusory claim to have considered the relevant factors
`but did not provide any of his analysis. So we would respectfully submit that
`petitioner's proposed definition remains the only definition fully supported
`by evidence and appropriate in this proceeding.
`
`But as I mentioned, the reason this matters is because the patent
`owner's declarant does not qualify as a POSITA. So at demonstrative 15,
`you see an excerpt of patent owner's declarant, Mr. Bates', testimony here
`which confirmed his CV in Appendix A to Exhibit 2001 that he does not
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`IPR2021-00580
`Patent 7,869,396 B2
`have a technical degree in electrical engineering or any other engineering
`discipline or scientific technology.
`
`Mr. Bates instead has a degree in business and completed
`coursework towards and MBA. Equally concerning, however, at
`demonstrative 16, is that Mr. Bates' experience is not relevant to the 396
`patent either. So his testimony revealed that he does not have experience
`designing the actual radio interface channels or protocols for transmitting
`data in a cellular network.
`
`Instead his experience has been in designing the layouts for the
`physical pieces of equipment used to set up a -- a network, such as how and
`where the network equipment is located and connected. Now, laying out the
`physical equipment is -- is obviously important work, but it isn't experience
`relevant to the claimed invention and the methods of transmitting and
`retransmitting data packets within that physical equipment that we're at --
`that's at issue here.
`
`So petitioner timely objected to Mr. Bates' testimony and
`respectfully submits that Mr. Bates' testimony, in Exhibits 2001 and 2006,
`should be given little to no weight in these proceedings. And with that, I'd
`like to jump ahead now to conditional claim limitations. I'd like to very
`briefly address this issue, because --
`
`JUDGE PARVIS: This is Judge Parvis.
`
`MS. MERRILL: Yes, Your Honor.
`
`JUDGE PARVIS: Does patent owner's expert meet the level of skill
`set forth in the proposed level by patent owner?
`
`MS. MERRILL: I would say, Your Honor, that no, it does not and
`the reason for that is two-fold. First, patent owner did anticipate a degree in
`electrical engineering or a similar discipline and while patent owner
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`IPR2021-00580
`Patent 7,869,396 B2
`included language giving some wiggle room that more education was
`substitute for less education, patent owner never said that no relevant
`education would qualify.
`
`Secondarily, patent owner's definition also referred to relevant
`experience for other reasons we just explained. Laying out the physical
`equipment is not relevant experience to the technology at issue in the 396.
`So I would submit, Your Honor, that under both petitioner and patent
`owner's proposed definitions, Mr. Bates does not qualify even with the
`intended wiggle room of less education in patent owner's proposed
`definition.
`
`JUDGE PARVIS: But patent owner's expert testifies that he has
`designed layouts and architecture; is that correct?
`
`MS. MERRILL: He was referring, Your Honor, to the physical
`equipment, not what's happening inside the equipment, the actual protocols
`by which data packets are being sent and retran- -- transmitted and
`retransmitted.
`
`JUDGE PARVIS: I understand petitioner's position. Thank you.
`
`MS. MERRILL: Thank you, Your Honor. So as I mentioned, I'll try
`to address this briefly, because this issue is not dispositive since petitioner's
`prior art addresses both of the conditional li- -- claim limitations of method
`claim one, but I want to just briefly address first, the precedent here on
`demonstrative number 18.
`
`The board has acknowledged conditional claim limitations in its
`precedential opinion and Ex parte Schulhauser and the board then applied Ex
`parte Schulhauser to an IPR proceeding just last year in Microsoft v. Uniloc
`2017 and explained that it's only necessary for the prior art to perform one of
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`IPR2021-00580
`Patent 7,869,396 B2
`the mutually exclusive steps in order to establish unpatentability for a
`method claim that includes conditional steps.
`
`Here is an annotated version of method claim 1 on demonstrative 19
`with petitioner's annotations and as petitioner explained at Page 20 of the
`petition, a single timer is started in limitation 1B. In limitations 1C and 1D
`provide that the timer either expires and a status report is transmitted, as set
`forth in limitation --
`
`Excuse me, that the timers either stopped and the -- excuse me, and
`the status report is transmitted or -- as supported in 1D or the timer is
`stopped in 1C and no status report is transmitted. Rather, the exact language
`used is to prevent a triggering if the status report, which we're going to talk
`about a little bit later.
`
`Now, patent owner has pointed at length to the use of the word and
`connecting limitations 1C and 1D to argue that both steps are actually
`performed and even argues in its surreply that there is "no reason both steps
`cannot be performed." The problem with that argument is that this would be
`inconsistent in that the system cannot both send a status report and withhold
`the status report from transmission.
`
`And that is exactly what is set forth in limitation 1C, if the timer has
`stopped, the status report triggering has been prevented. So petitioner's --
`
`JUDGE ULLAGADDI: Counsel, can I ask a question?
`
`MS. MERRILL: Please. Please.
`
`JUDGE ULLAGADDI: Isn't this claim just covering two different
`scenarios under a particular architecture embodiment?
`
`MS. MERRILL: So I -- I would actually agree, Your Honor, but
`under the precedent of in- -- ex- -- Ex parte Schulhauser, it's actually
`performing two different methods jammed together, which isn't permissible
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`IPR2021-00580
`Patent 7,869,396 B2
`in a method claim or it can be done in a method claim, but it means that
`those mutually exclusive limitations don't have to both be shown.
`
`
`So the method performed is either 1A, 1B, 1C or 1A, 1B, 1D and
`under Ex parte Schulhauser, that means that for purposes of just method
`claim 1 -- this doesn't apply to the receiver claim where the receiver can in
`fact address both different possibilities or outcomes, in this case where
`you've got 2 separate methods that are both combined under a single method
`claim, Ex Parte Schulhauser has said that you only need the prior art to
`demonstrate 1 of those limitations.
`
`JUDGE ULLAGADDI: Well --
`
`MS. MERRILL: I'm referring to 1C or 1D.
`
`JUDGE ULLAGADDI: -- I believe petitioner has shown or takes
`the position that they have shown in fact that both of those limitations are
`present. How is that possible if only one of them can occur?
`
`MS. MERRILL: How is it possible? So Sachs shows both of the
`different scenarios encompassed and both of the different methods shown in
`this one method claim. Does that answer your question, Your Honor?
`
`JUDGE ULLAGADDI: I think I understand, you can continue.
`Okay.
`MS. MERRILL: Well, I just wanted to quickly point out that Dr.
`
`Kakaes, petitioner's expert, has testified at paragraphs 121 and 169 of his
`declaration that either limitation 1C occurs or 1D occurs the timer is either
`stopped or it expires and that patent owner's own declarant agreed, at his
`deposition first, that a timer does not both stop and expire.
`
`And secondarily, as shown at demonstrative 20, he testified that
`sometimes limitation 1C is performed and sometimes limitation 1D is
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`IPR2021-00580
`Patent 7,869,396 B2
`performed, but again, not dispositive, because as we're about to show, Sachs
`teaches the same thing in the same way as the 396 patent.
`
`So with that, I'd like to jump immediately into the 396 patent's
`disclosure of the claimed invention just to provide a little bit more context
`for why Sach's disclosures do teach the same thing in the same manner. So
`at demonstrative 22, claims 1 and 8 are directed to the exemplary
`embodiment depicted in Figure 12, which is shown here on demonstrative
`22 with petitioner's annotations from the petition.
`
`So patent owner itself has described and agreed that Figure 12 is a
`"exemplary embodiment of the claimed invention" and its admission is at
`Page 8 of the surreply. So Figure 12 shows the 2 different scenarios that we
`just talked about, the 2 different methods in which the PDU is received out
`of order when the received mac MAC layer transmits the PDUs to the
`receiver.
`
`It shows them in two separate series. So first, when PDU3 arrives
`ahead of expected PDU2 at the first red X on the left-hand side of Figure 12,
`a jitter timer is started. Now, when PDU 2 arrives, the timer is stopped and
`nothing happens. Now, the status report is shown here in Figure 12 and there
`is no mention of a status report being transmitted in the corresponding
`discussion and the specification.
`
`The claim method is then performed a second time when another
`PDU arrives out of order and this time it's PDU7 that arrives when PDU6
`was expected, as shown by the red X on the right-hand side of the Figure 12
`and this is a -- an annotation from petitioners. Now, as the timer is started, it
`is shown here on the second blue arrow on the right-hand side of the figure,
`but this time it expires, because PDU6 be- -- before P- -- PDU6 arrives.
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`IPR2021-00580
`Patent 7,869,396 B2
`
`And so when this happens, it's not shown on Figure 12, but the
`accompanying explanation and the specification at column 14, lines 51 to 54
`explain the receiver judges that the reception of the PDU6 fails and transmits
`the status report information associated therewith to the transmitter.
`
`Now, turning to demonstrative 23 with claim 1, the point I want to
`emphasize is that Figure 12 discusses 2 separate scenarios that result in 2
`different performances of the claim method in the series and then first, the
`timer is started and then stopped when the missed PDU arrives.
`
`In the second scenario, the missing PDU does not arrive, the timer
`expires and then the status report information is transmitted and this is
`exactly what Sachs teaches in the same way as both in the general discussion
`of the claimed invention as well as in specifically Figures 4 and 5 and
`reiterated again in Figures 6 through 8 of Sachs.
`
`So turning to demonstrative 25, Sachs is directed to reordering
`procedures for data packets in a communication system and specifically, at
`demonstrative 26, the same ARQ mechanism.
`
`And the use of status reports to request retransmission of missing
`PDUs and Sachs' goal is almost identical to that stated in the 396 patent,
`which is shown here at demonstrative 27 as to present a solution for more
`efficient data transmission and to avoid what it calls spurious
`retransmissions, which means it's trying to prevent the receiver from
`submitting retransmission requests when the data packets were successfully
`received, they're just arriving at the RLC out of order.
`
`So to accomplish this, at demonstrative 28, Sachs teaches the use of
`a timer when a dat- -- data packet arrives out of sequence. Now, this timer
`delays transmission of the request for retransmission while it is running and
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`IPR2021-00580
`Patent 7,869,396 B2
`prevents that transmission of the retransmission request via a status report
`altogether if the timer is stopped.
`
`And at demonstrative 29, Sachs goes even further and explains in its
`summary, just as claimed by the 396 patent, that the retransmission request
`is sent if the timer expires, but if the missing packet does arrive while the
`timer is running, the timer is stopped and the status report that would have
`initiated the retransmission procedure is not sent.
`
`This avoids what Sachs called the "undesired effect" of requesting
`retransmission. When sometimes arrives successfully, it's just appearing at
`the RLC out of order.
`
`Now, we could stop right here, because Sachs has already disclosed
`the claim method and receiver of independent claims one and eight and all of
`this evidence was presented in the petition with respect to the limitations of
`claims one and eight, but Sachs goes a step further and actually shows the
`exact same scenarios depicted in Figure 12 and Figures 4 and 5 and then
`repeats with additional scenarios in Figures 6, 7 and 8.
`
`So before we jump to those particular figures in pet- -- patent
`owner's embodiment argument, I wanted to address patent owner's repeated
`argument that it reiterated from its preliminary response that Sachs' teaching
`should be ignored altogether, because Sachs refers to the reordering of the
`received PDUs and calls the timer a T_reorder timer.
`
`So as already mentioned, patent owner already presented this
`argument in the preliminary response and the board considered and rejected
`this argument in the institution decision at Page 18 noting that claim 1 does
`not exclude a reordering step or a timer related to a reordering step. And
`since that time, patent owner has failed to provide any new evidence on this
`argument.
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`Patent 7,869,396 B2
`
`Instead patent owner's declarant, Mr. Bates, who, as we already
`discussed, is -- petitioner's position is not a POSITA, only repeated a
`shortened version of his previous uncorroborated testimony from Exhibit
`2001 and even cites back to his own testimony in Exhibit 2001 to baldly
`claim, again, that Sachs' T_reorder timer is directed to delaying a reordering
`procedure and not the triggering of a status report, but this is wrong for
`several reasons.
`
`So first, Sachs clearly teaches that the timer delays the request for
`retransmission and I'm going to go ahead and jump ahead, Your Honors, to
`demonstrative 38. Excuse me, demonstrative 28 where you can see, at
`Exhibits 1003, Page 9, lines 24 to 26 as well as on demonstrative 29 at Page
`9, lines 34 through Page 10, line 1 the timer is stopped before the timer
`expired when at the reception of a data packet, the sequence is established.
`
`So the reordering isn't referring to some separate procedure or
`process that's occurring, it's referring to the reordering as establishing that all
`the PDUs, including that missed data packet, are present and accounted for.
`And this is shown, again, at Exhibit 1003, Page 14, lines 10 through 12
`where Sachs explains that after receiving PDUs 3 and 4, the sequence 1, 2,
`3, 4, 5, 6, 7, 8 is reestablished and therefore, the timer is stopped. So
`reordering --
`
`JUDGE ULLAGADDI: Counsel --
`
`MS. MERRILL: Yes, Your Honor.
`
`JUDGE ULLAGADDI: -- I think you're probably just about to
`answer my question, but I'll -- I'll put it out there anyway. So is it your
`position that reordering refers to receiving all of the packets not necessarily
`actually putting them in sequential order?
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`IPR2021-00580
`Patent 7,869,396 B2
`
`MS. MERRILL: That's exactly right, Your Honor and I believe
`that's set forth in petitioner's reply brief as well.
`
` But what the reordering does refer to is actually something
`petitioner's expert, Dr. Kakaes, had testified with detailed testimony in the
`Exhibit 1002 regarding what the function of the RLC is, because as Dr.
`Kakaes testified and corroborated through 3GPP technical specifications,
`including 25.32- -- 3- -- 25.322, one of the functions of the RLC layer is to
`provide the in-sequence delivery of these PDUs.
`
`And this isn't a separate step, it just means that before these RLCs
`are released from the buffer, the RLC makes sure they're all present and
`accounted for and this isn't inconsistent with the 396 patent.
`
` In fact, there is a brief mention at Exhibit 1001, column 14, lines 19
`to 21 where the 396 patent does in fact seem to contemplate that the RLC is
`responsible for this in-sequence delivery and refers to a rearrangement of the
`PDUs in the RLC buffer.
`
`Just to provide a little bit of a juxtaposition, however, patent owner's
`declarant, Mr. Bates, had testified in his first declaration at Exhibit 2001,
`paragraph 54 with no corroboration, that the 396 patent does not
`contemplate a reordering step and that it would actually occur at a later time
`at an unspecified higher level of the stack.
`
`This would not be conduc- -- or consistent with the 3GPP technical
`specifications, which Dr. Kakaes provided excerpts about and testified about
`in his declaration. So the overwhelming evidence and the only corroborated
`testimony in this proceeding demonstrates that the reordering is just
`referring to the RLC's required function of providing in-sequence delivery.
`
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`IPR2021-00580
`Patent 7,869,396 B2
`
`It's not actually referring to a piecemeal copying and pasting and
`rearranging of PDUs in the buffer. Does that answer your question, Your
`Honor?
`
`JUDGE ULLAGADDI: Yes. Thank you.
`
`MS. MERRILL: Okay. But setting all of these arguments aside, its
`pur- -- it should be sufficient for purposes of our discussion today that
`regardless of what reordering means, Sachs is showing the exact same thing
`in the exact same way as the exemplary embodiment of the 396 claims in
`Figure 12 of 396 patent.
`
`Sachs' reference to reordering simply puts into words what the 396
`patent skips over, which is the RLC's function to recognize, address and
`provide in-sequence delivery of the PDUs.
`
` But again, I'd also like to emphasize, once again, patent owner has
`not presented any new evidence that would be a basis for changing the
`board's preliminary findings or Dr. Kakaes' testimony on this issue.
`
`And with that, I'd like to turn to demonstrative 30 and patent owner's
`arguments that the embodiments in Sachs requires some sort of additional
`combination. So first, at demonstrative 30, patent owner focuses on the fact
`that Sachs refers to 2 embodiments to describe its disclosures depicted in
`Figures 4 and 5.
`
`Now, demonstrative 31 Sachs describes the first embodiment as
`using a reordered delay timer, which we already discussed, to delay the RLC
`receiver's reaction to the detected gap in the received PDUs and Sachs
`explains that this embodiment, as shown in Figure 4 as shown in the
`highlighted annotation on demonstrative 31, which in this particular scenario
`shows PDUs 3 and 4 as not transmitted correctly.
`
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`

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`IPR2021-00580
`Patent 7,869,396 B2
`
`And on demonstrative 32 is an annotated copy of that Figure 4 that
`shows that the RLC first receives PDU's 5 and 6 when it was expecting to
`receive PDU1. A gap is then detected. So the timer, which is highlighted
`blue, is started and the timer then expires without receipt of the missing
`PDUs.
`And so a status report is transmitted, as highlighted in purple. The
`
`so-called second embodiment is the same RLC receiver set up the same way
`responding to a different set of stimuli, a different set of received PDUs and
`here is how Sachs explicitly explains that on demonstrative 33 at Page 14,
`lines 1 through 12.
`
`Sachs explains that the delay timer is stopped when all the missing
`PDUs are received, which means that the se- -- sequent is reestablished and
`Sachs says, "this can be achieved by stopping the duration of the T-reorder
`timer when reordering is finished." This embodiment is shown in Figure 5.
`
`But in case it wasn't already clear, Sachs goes on and explains in the
`language highlighted orange, the structure of Figure 5 is similar to Figure 4,
`the difference is that the PDU's 3 and 4 are transmitted over the link. So this
`is the same RLC entity, it's just responding to a different set of stimuli.
`
`JUDGE MOORE: Counsel --
`
`MS. MERRILL: Yes, Your Honor.
`
`JUDGE MOORE: -- this is Judge Moore. I was kind of curious
`about this, so if this shows one RLC entity responding in different ways to
`different ordering blocks that are coming in, why -- why wouldn't you say
`the same thing with respect to what's described in the patent where, you
`know, you're telling us there are two methods, but in fact, it looks to me like
`you have one method for receiving the blocks that does one thing or another,
`depending on what blocks come in.
`
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`IPR2021-00580
`Patent 7,869,396 B2
`
`MS. MERRILL: You know, Your Honor, I think the -- the big
`difference there is when we're talking about the method claim of claim one
`versus the receiver claim of claim eight, because when we're talking about
`the receiver that is capable of doing these two different things, I agree with
`you, we're talking about the exact same receiver.
`
`But when we're talking about the method claim, the precedent
`explains that if you've got two mutually exclusive sets of methods that are
`contained within that one method claim where you either have one thing
`happening to that timer or the other thing happening to that timer, you have
`the situation of conditional limitations.
`
`Now, as I mentioned, it's not dispositive, we don't have to have it,
`because Sachs shows the same thing. The only difference is that instead of
`showing it in one figure in a series where here's the first method and here's
`the -- the second method, Sachs puts those two methods in two side-by-side
`embodiments showing how when the stimuli changed, this is what happens.
`Does that respond to Your Honor's question?
`
`JUDGE MOORE: I think so.
`
`MS. MERRILL: Okay. So Sachs explicitly explains that Figure 5 --
`the only difference is what that same RLC receiver is receiving. And so here
`is, at demonstrative 34, that Figure 5. The only difference is shown in the
`order in which the PDUs are received and notably, that the missing PDU's 3
`and 4 are received and the timer immediately stops and no status report is
`sent.
`
`
`But rather than -- and you'll see that we included a blue annotation
`note saying no status report triggered, but Sachs doesn't say that. Sachs
`doesn't even show a status report being sent, which is why I compare this to
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`IPR2021-00580
`Patent 7,869,396 B2
`Figure 12, it shows the exact same thing in the exact same way, when the
`timer stopped, there's no status report sent.
`
`It doesn't show that -- that negative event occurring. So that's -- that's
`why we have been -- petitioner has maintained its position that Sachs not
`only sh--- anticipates, but it anticipates by showing the exact same scenarios
`in the exact same way. And so petitioner also went ahead and presented
`testimony corroborating all of this in Dr. Kakaes' declaration in Exhibit
`1002.
`And in particular, I'd point to his testimony at paragraphs 171 to 173
`
`where he basically explains, at Figure 4 -- provides the baseline for Sachs'
`teachings if the missing PDUs do not arrive whereas Figure 5 depicts what
`happens when they do. And I apologize for my residual cough, I will do my
`best to keep it at bay.
`
`So Sachs has shown the same two scenarios and placed them side by
`side instead of jumbling them both together into a single Figure 12, like the
`396 patent.
`
`It is patent owner -- or excuse me, petitioner's position, therefore,
`that it is not necessary to combine these teachings, because this is simply
`Sachs is providing another example demonstrating its teachings of how the
`timer is used to delay and ultimately, in some scenarios, prevent
`transmission of a status report altogether, no motivation --
`
`JUDGE ULLAGADDI: You're at 28 minutes, for reference.
`
`MS. MERRILL: Thank you, Your Honor. I'll try to speed up, but I
`may go ahead and use just a couple of my rebuttal minutes now, if that's all
`right. So jumping ahead I'd like to go

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