`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CRADLEPOINT, INC., DELL, 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,
`
`Petitioners
`
`v.
`
`SISVEL S.P.A.,
`Patent Owner
`
`
`
`
`Case IPR2021-00580
`Patent No. 7,869,396
`
`
`
`PATENT OWNER’S RESPONSE
`
`Under 35 U.S.C. § 42.120
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................ 1
`
`II. APPLICABLE LEGAL PRINCIPLES ............................................................ 2
`
`III. THE ’396 PATENT .......................................................................................... 6
`
`A. Overview of the ’396 Patent ....................................................... 6
`
`B.
`
`C.
`
`Challenged Claims ...................................................................... 8
`
`Person of Ordinary Skill in the Art ............................................. 9
`
`IV. CLAIM CONSTRUCTION ............................................................................. 9
`
`V. OVERVIEW OF CITED PRIOR ART ..........................................................10
`
`A.
`
`Petitioner’s Cited References ....................................................10
`
`1. Sachs .........................................................................................10
`
`2. Wei ............................................................................................12
`
`3. TS 25.322 ..................................................................................13
`
`VI. THE PETITION GROUNDS SHOULD BE REJECTED .............................13
`
`A. Ground 1: Petitioners Have Failed to Show that Sachs
`Anticipates Claims 1-10 of the ʼ396 Patent Under 35 U.S.C. §
`102 (Claims 1-10) .....................................................................13
`
`1. Limitations 1[c], and 1[d] Are Not Conditional .......................14
`
`2. Sachs Does Not Disclose Limitations 1[c], 1[d], 8[c], or 8[d] .15
`
`3. Sachs Does Not Anticipate Claim 2 .........................................18
`
`4. Sachs Does Not Anticipate Claim 3 .........................................19
`
`5. Sachs Does Not Anticipate Claims 4 and 9 ..............................20
`
`6. Sachs Does Not Anticipate Claims 5 and 10 ............................21
`
`B. Ground 2: Sachs Does Not Render Claims 1-10 Obvious as a
`Single Reference .......................................................................22
`
`C. Ground 3: Petitioners Have Failed to Show that Wei
`Anticipates Claims 1-5, and 7 of the ʼ396 Patent Under 35
`U.S.C. § 102 (Claims 1-5, 7) ....................................................23
`
`D. Ground 4: Wei Does Not Render Claims 1-5, 7 Obvious as a
`Single Reference .......................................................................25
`
`
`
`ii
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`E.
`
`Grounds 5: Petitioners Have Failed Show that Wei in View of
`TS 25.322 Renders the Claims 6 and 8-10 of the ʼ396 Patent
`Obvious Under 35 U.S.C. § 103 (Claims 6, 8-10) ....................26
`
`VII. CONCLUSION ..............................................................................................27
`
`
`
`iii
`
`
`
`
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Page(s)
`
`Cases
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442, Paper 9 (PTAB July 13, 2015) ........................................... 4, 5, 6
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .............................................................................. 3
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ................................................ 3
`
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (PTAB, Sep. 9, 2015) ................................................... 3
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 4
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .............................................................................. 2
`
`In re Arkley,
`455 F.2d 586 (C.C.P.A. 1972) ................................................................................ 4
`
`In re Magnum Oil Tools Int’l.,
`829 F.3d 1364 (Fed. Cir. 2016) ..................................................................... 2, 4, 5
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 6
`
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 6
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .............................................................................. 5
`
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 6
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ............................................................................22
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................ 6
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................................4, 17
`
`
`
`iv
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) .............................................................................. 6
`
`P&G v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 6
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ............................................................................................ 2
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 5
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ................................................................................ 4
`
`Wasica Finance GMBH v. Continental Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) .............................................................................. 3
`
`
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 4
`
`35 U.S.C. § 282 ........................................................................................................10
`
`35 U.S.C. § 312 .......................................................................................................... 2
`
`37 C.F.R. § 42.100 ...................................................................................................10
`
`
`
`Regulations
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`37 C.F.R. § 42.65 ....................................................................................................... 3
`
`
`
`
`
`
`
`
`
`v
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`2001
`
`Expert Declaration of Regis Bates
`
`2002
`
`Settlement Agreement dated August 4, 2021
`
`2003
`
`2004
`
`2005
`
`Affidavit of Mr. Neil Benchell in Support of Patent Owner’s Motion
`for Pro Hac Vice Admission
`
`Affidavit of Ms. Stephanie Berger in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`
`Affidavit of Mr. Andrew DeMarco in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`
`2006
`
`Second Expert Declaration of Regis Bates
`
`vi
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Petitioners Cradlepoint, Inc., Honeywell International, Inc., TCL
`
`Communication Technology Holdings Limited, TCT Mobile International Limited,
`
`TCT Mobile, Inc., TCT Mobile (US) Inc., TCT Mobile (US) Holdings Inc., Thales
`
`DIS AIS Deutschland GmbH, Cradlepoint, Inc., Dell Inc., and Sierra Wireless,
`
`Inc., (collectively, “Petitioners”1) filed a Petition for Inter Partes Review of U.S.
`
`Patent No. 7,869,396 (“the ’396 patent”) on March 9, 2021. (IPR2021-00580,
`
`Paper No. 1 (“Petition”).) Through the undersigned Counsel, Patent Owner, Sisvel
`
`S.p.A. (“Sisvel”), submits the following Patent Owner Response pursuant to 37
`
`C.F.R. § 42.120.
`
`I.
`
`INTRODUCTION
`
`Petitioners failed to meet their burden to show that any of the challenged
`
`claims is unpatentable. Specifically, Petitioners have not demonstrated that any
`
`claims of the ’396 patent would be anticipated or obvious over the cited prior art:
`
`Sachs (Ex. 1001), Wei (Ex. 1004), and TS25.322 (Ex. 1005). The Sachs and Wei
`
`references do not anticipate the challenged claims of the ’396 patent, nor have
`
`Petitioners shown that a POSITA have been motivated to modify these references
`
`either alone or in combination to achieve the inventions of the ’396 patent.
`
`
`1 ZTE (USA) Inc., and ZTE Corporation were originally Petitioners but have been
`dismissed. (Paper 15.)
`
`
`
`1
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`The Sachs reference does not disclose or render obvious the limitations of
`
`independent claims 1 and 8. Petitioners rely on multiple figures of Sachs relating
`
`to different embodiments, but do not explain how these different figures allegedly
`
`can be combined to disclose every element of the challenged claims.
`
`The Board held in the Institution Decision that Petitioners did not
`
`sufficiently explain how Wei disclosed all elements of the independent claims.
`
`(Paper 16 at 25.) As discussed below, Wei does not disclose the required “status
`
`report” in independent claims 1 and 8. Petitioners’ citations to various parts of
`
`Wei do not overcome this deficiency.
`
`II. APPLICABLE LEGAL PRINCIPLES
`
`The petitioner has the burden to clearly set forth the basis for its challenges
`
`in the petition. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
`
`2016) (citing 35 U.S.C. § 312(a)(3) as “requiring IPR petitions to identify ‘with
`
`particularity . . . the evidence that supports the grounds for the challenge to each
`
`claim’”). A petitioner may not rely on the Board to substitute its own reasoning to
`
`remedy the deficiencies in a petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355
`
`(2018) (“Congress chose to structure a process in which it’s the petitioner, not the
`
`Director, who gets to define the contours of the proceeding.”); In re Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (rejecting the Board’s
`
`reliance on obviousness arguments that “could have been included” in the petition
`
`
`
`2
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`but were not, and holding that the Board may not “raise, address, and decide
`
`unpatentability theories never presented by the petitioner and not supported by the
`
`record evidence”); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
`
`1367 (Fed. Cir. 2015) (holding that “a challenge can fail even if different evidence
`
`and arguments might have led to success”); Wasica Finance GMBH v. Continental
`
`Auto. Sys., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (holding that new arguments in a
`
`reply brief are “foreclosed by statute, our precedent, and Board guidelines”).
`
`To the extent that the petition relies on an expert declaration, it must be more
`
`than conclusory and disclose the facts underlying the opinion. See 37 C.F.R. §
`
`42.65(a) (“Expert testimony that does not disclose the underlying facts or data on
`
`which the opinion is based is entitled to little or no weight.”); Edmund Optics, Inc.
`
`v. Semrock, Inc., IPR2014-00583, Paper 50 at 8 (PTAB, Sep. 9, 2015) (affording
`
`little or no weight to “experts’ testimony that does little more than repeat, without
`
`citation to additional evidence, the conclusory arguments of their respective
`
`counsel.”). Nor may the petition rely on the expert declaration to remedy any gaps
`
`in the petition itself. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated
`
`by reference from one document into another document”); see also Cisco Sys., Inc.
`
`v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (PTAB, Aug. 29, 2014)
`
`(“This practice of citing the Declaration to support conclusory statements that are
`
`
`
`3
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`not otherwise supported in the Petition also amounts to incorporation by
`
`reference.”).
`
`For rejections under 35 U.S.C. § 102, each and every claim element must be
`
`found in a single reference. Verdegaal Bros. v. Union Oil Co. of California, 814
`
`F.2d 628, 631 (Fed. Cir. 1987) “[U]nless a reference discloses within the four
`
`corners of the document not only all of the limitations claimed but also all of the
`
`limitations arranged or combined in the same way as recited in the claim, it cannot
`
`be said to prove prior invention . . . and, thus, cannot anticipate under 35 U.S.C. §
`
`102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
`Further, the prior art reference must disclose the claimed invention “or direct those
`
`skilled in the art to the [invention] without any need for picking, choosing, and
`
`combining various disclosures not directly related to each other by the teachings of
`
`the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972)).
`
`To make a prima facie showing of obviousness under 35 U.S.C. § 103, the
`
`Petition must fulfill the requirements set forth in Graham v. John Deere Co., 383
`
`U.S. 1 (1966), including demonstrating that the cited references disclose each
`
`element of a challenged claim. In re Magnum Oil Tools Int’l., 829 F.3d 1364,
`
`1376 (Fed. Cir. 2016); see also Apple Inc. v. Contentguard Holdings, Inc.,
`
`IPR2015-00442, Paper 9 at 12-13 (PTAB July 13, 2015).
`
`
`
`4
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Petitioner also has the burden to show there would have been some
`
`motivation to combine the asserted prior art, and that the proposed combinations
`
`would render the patented claims obvious. “Obviousness requires more than a
`
`mere showing that the prior art includes separate references covering each separate
`
`limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655
`
`F.3d 1352, 1360 (Fed. Cir. 2011) (internal citation omitted); see also In re
`
`Magnum Oil Tools Int’l., 829 F.3d at 1376. Even if individual modifications or
`
`choices were obvious, a petition must explain why making all of the changes at
`
`once would be obvious. Apple Inc. v. Contentguard, Paper 9 at 16-17 (“[T]he
`
`mere fact that individual changes might have been obvious does not make doing all
`
`of the changes at once obvious.”).
`
`The Federal Circuit has found that, even for an obviousness challenge based
`
`on a single reference in view of the knowledge and of a person of ordinary skill in
`
`the art, there must be a motivation to make the combination and a reasonable
`
`expectation that such a combination would be successful, otherwise a skilled
`
`artisan would not arrive at the claimed combination. In re Stepan Co., 868 F.3d
`
`1342, 1345-46 (Fed. Cir. 2017). In other words, when a gap in a single prior art
`
`reference requires filling with, for example, the knowledge of one of ordinary skill,
`
`there must be a further showing that the skilled artisan would have arrived at the
`
`claimed invention.
`
`
`
`5
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`The lack of a technological obstacle to combining references, in and of
`
`itself, does not justify a finding of obviousness. See In re Omeprazole Patent Litig.
`
`v. Apotex Corp., 536 F.3d 1361, 1380-81 (Fed. Cir. 2008). A reason for combining
`
`disparate prior art references is critical and should be made explicit. InTouch
`
`Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (internal
`
`citation omitted).
`
`Hindsight analysis is inappropriate. Obviousness must be measured “at the
`
`time the invention was made.” Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d
`
`1358, 1364 (Fed. Cir. 2008) (emphasis in original). A petition must demonstrate a
`
`rationale to combine prior art references without relying on the patent disclosure
`
`itself. Apple Inc. v. Contentguard, Paper 9 at 15, 17; see also P&G v. Teva
`
`Pharms. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009). In other words, the
`
`Petitioner must not use the patent as a roadmap. In re NTP, Inc., 654 F.3d 1279,
`
`1299 (Fed. Cir. 2011) (internal citation omitted); see also KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 421 (2007).
`
`III. THE ’396 PATENT
`
`A. Overview of the ’396 Patent
`
`The inventions of the ’396 patent generally relate to a data transmission
`
`method and a data retransmission method to reduce loss in data transmission in a
`
`
`
`6
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`4G/LTE network.2 (Ex. 1001 at Abstract; 1:17-20; 1:40-48; 3:30-31; Ex. 2001 at ¶
`
`40.) Specifically, the ’396 patent discloses the use of status report information on
`
`a data block received or not received by the Radio Link Control (“RLC”) entity of
`
`the receiver. (Ex. 1001 at 9:22-25; 9:34-36; Ex. 2001 at ¶ 40.)
`
`The ’396 patent discloses the use of Automatic Repeat Request (“ARQ”)
`
`and Hybrid ARQ (“HARQ”), which are known techniques to reduce data loss that
`
`would be understood by a POSITA. (Ex. 1001 at 1:58-64; Ex. 2001 at ¶ 41.) ARQ
`
`refers to a process for detecting that a specific RLC Protocol Data Unit (“PDU”) is
`
`not received. (Ex. 1001 at 14:8-15; Ex. 2001 at ¶ 41.) The PDU is a basic data
`
`unit used for data communication between layers of RLC entities. (Ex. 1001 at
`
`6:48-49; Ex. 2001 at ¶ 41.) When a gap is generated in the RLC buffer, indicating
`
`that a PDU has not been received, a timer is activated. (Ex. 1001 at 14:28-30; Ex.
`
`2001 at ¶ 41.) When data corresponding to the missing PDU is not received before
`
`the expiration of the timer, it is judged that the gap is generated due to reception
`
`failure and status report information is transmitted. (Ex. 1001 at 14:30-34; Ex.
`
`2001 at ¶ 41.)
`
`The RLC generates the status report at the RLC layer of the protocol stack
`
`shown in Figure 2. (Ex. 1001 at 2:26-33; Ex. 2001 at ¶ 42.) The protocol stack
`
`
`2 LTE is now referred to as 4G/LTE.
`
`
`
`7
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`shown in Figure 2 is referred to as the control plane of the radio interface protocol.
`
`(Ex. 1001 at 4:10-11; Ex. 2001 at ¶ 42.) The status report is transmitted using a
`
`HARQ in a physical layer using a channel other than the channel through which
`
`data is transmitted. (Ex. 1001 at 2:26-40; 9:14-19; Ex. 2001 at ¶ 42.) 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. (Ex. 1001
`
`at Figs. 12, 13; 14:38-54; 15:8-14; Ex. 2001 at ¶ 42.) The status report can contain
`
`information about numerous data blocks. (Ex. 1001 at 9:34-36 (“The status report
`
`information may be information on the data blocks not received by the receiver
`
`450.”); Ex. 2001 at ¶ 42.) Including the status report information in the
`
`ARQ/HARQ process allows for more rapid and efficient transmission and
`
`retransmission of lost data. (Ex. 1001 at 1:65-2:5; 2:17-20; 2:43-52; Ex. 2001 at ¶
`
`42.)
`
`B. Challenged Claims
`
`Petitioners challenge claims 1-10 of the ’396 patent. Claims 2-7 depend
`
`from independent claim 1. Claims 9-10 depend from independent claim 8.
`
`Claim 1 is exemplary:
`
`A method of performing automatic repeat request (ARQ) in a wireless
`communication system, the method performed by a receiver and comprising:
`
`detecting whether at least one data block to be received from a transmitter is
`missed;
`
`
`
`8
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`starting a timer when the at least one data block is detected as missed;
`
`stopping the timer when the at least one data block is received from the
`transmitter while the timer is running, in order to prevent a triggering of a
`status report before the timer expires; and
`
`transmitting the status report to the transmitter after the timer expires,
`wherein the status report comprises a positive acknowledgement indicating
`receipt of at least one received data block.
`
`(Ex. 1001 at 16:39-53.)
`
`C.
`
`Person of Ordinary Skill in the Art
`
`The Board preliminarily adopted Petitioners’ proposed level of skill in the
`
`art. (Paper 16 at 6.) Patent Owner proposes that a person having ordinary skill at
`
`the time of invention—January 5, 2006—in the relevant art would be one a
`
`bachelor’s degree in electrical engineering, computer sciences, or
`
`telecommunications, along with three to five or more years of practical experience
`
`in the field. A combination of more experience in the field and less education or
`
`more education and less experience in the field would also suffice. (Ex. 2001 at ¶
`
`27.)
`
`Although Patent Owner’s proposed level of skill in the art is similar to
`
`Petitioners’ proposal, Patent Owner includes the qualification that a combination of
`
`more experience in the field and less education, or more education and less
`
`experience in the field would also suffice.
`
`IV. CLAIM CONSTRUCTION
`
`
`
`9
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`In an inter partes review proceeding, “a claim of a patent . . . shall be
`
`construed using the same claim construction standard that would be used to
`
`construe the claim in a civil action under 35 U.S.C. § 282(b), including construing
`
`the claim in accordance with the ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history pertaining
`
`to the patent.” 37 C.F.R. § 42.100(b).
`
`Petitioners propose that all claim terms should be accorded their plain an
`
`ordinary meaning. (Petition at 34.) Patent Owner agrees that the claims terms
`
`should be given their plain and ordinary meaning. Patent Owner reserves the right
`
`to provide alternate constructions if any of the terms become material to the
`
`Board’s decision.
`
`V. OVERVIEW OF CITED PRIOR ART
`
`A.
`
`Petitioner’s Cited References
`
`1.
`
`Sachs
`
`The Sachs reference is International Patent Application Publication No. WO
`
`02/091659, published on November 14, 2002 and entitled “Reordering Procedure
`
`for Data Packets in a Communication System.” (Ex. 1003 at 1.) Sachs is directed
`
`to a procedure for the reordering of data packets in a UMTS (also referred to as
`
`WCDMA) 3G cellular network. (Ex. 1003 at 2:5-10; 3:7-9; 3:18-19; 4:24-26; 4:32-
`
`34; 9:4-9; 16:12-16; 22:9 (“The solution covered in this invention focuses on the
`
`
`
`10
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`WCDMA”); Ex. 2001 at ¶ 43.) The Sachs reference utilizes an entirely different
`
`process than the methods and actions performed by the receiver in the ’396 patent.
`
`(Ex. 2001 at ¶ 43.)
`
`Sachs relies on a timer called “T_reorder” that is used to delay the
`
`reordering and discarding of received data packets. (Ex. 1003 at Figs. 4, 5,
`
`Abstract (“the received entity . . . delays a triggering of a reordering procedure”);
`
`8:25-31 (“[t]he basic idea for the purpose of provisioning an efficient data
`
`transmission in a communication system . . . is to delay the triggering of a
`
`reordering procedure . . . by means of a delay parameter”); 9:11-15 (“the delay
`
`parameter is a timer that is started for every data packet[s] arriving out of
`
`sequence, and the triggering of the reordering procedure . . . is delayed by the
`
`duration of the timer”); 11:11-13 (“[w]hen in case of the unacknowledged mode
`
`the sequence order is not established during the duration of the delay timer the
`
`received data packets are discarded”); 11:19-21 (“[t]he receiving entity has a delay
`
`parameter for delaying the triggering of a reordering procedure”); 12:25-29, 12:34-
`
`13:2, 13:6-7 (“With starting the T_reorder the reaction of the RLC receiver is
`
`delayed until no more packets are reordered”); 13:12-14 (“The discarding of any
`
`missing PDUs with sequence numbers smaller than the received PDU is delayed
`
`until T_reorder is expired.”); 13:23-25; 13:25-27 (“While being buffered, the
`
`STATUS report is updated, when PDUs are received filling the gaps in the
`
`
`
`11
`
`

`

`sequence of the PDUs.”); 13:30-34; Ex. 2001 at ¶ 44.) Sachs discloses that the
`
`T_reorder timer is stopped when reordering is finished as shown in Figure 5. (Ex.
`
`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`1003 at 14:1-5; Ex. 2001 at ¶ 44.)
`
`2. Wei
`
`Wei is U.S. Patent No. 6,987,780 entitled “RLP Retransmission for CDMA
`
`Communication Systems” and issued on January 17, 2006. (Ex. 1004 at 1.) Wei is
`
`directed to retransmitting data via a Radio Link Protocol (“RLP”) in a CDMA (also
`
`referred to as a CDMA2000) cellular network. (Ex. 1004 at Abstract.)
`
`Wei discloses use of a dynamic timer with variable time durations for each
`
`RLP frame detected to be missing. (Ex. 1004 at Fig. 7; Abstract; 2:10-38; 12:10-
`
`13:25; 16:4-8; 16:17-21; Ex. 2001 at ¶ 48.) When each dynamic timer for a given
`
`missing RLP frame expires an “indication” is sent from the receiver HARQ-CF to
`
`the receiver RLP. (Ex. 1004 at Fig. 7; 12:55-67; Ex. 2001 at ¶ 48.) The purpose of
`
`the “indication” is to inform the receiver RLP that the missing RLP frames “are
`
`indeed lost.” (Ex. 1004 at 12:65-67; Ex. 2001 at ¶ 48.) The receiver RLP may
`
`then initiate a process to recover the missing RLP frames. (Ex. 1004 at 13:14-25;
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`Ex. 2001 at ¶ 48.)
`
`The receiver RLP does not send any indication or status report. The
`
`“indication” sent from the receiver HARQ-CF to the receiver RLP is not
`
`equivalent to the status report in the ’396 patent. (Ex. 2001 at ¶ 49.) As shown in
`
`
`
`12
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Figure 7 of Wei, the status report information is sent from the receiver HARQ to
`
`the receiver RLC. (Ex. 1004 at Fig. 7; Ex. 2001 at ¶ 49.) This is not equivalent to
`
`a status report that is sent to a “transmitter” as in claims 1-10 of the ’396 patent.
`
`(Ex. 2001 at ¶ 49.) In addition, the “indication” in Wei only indicates to that a
`
`dynamic timer for a given RLP frame has expired and includes no positive
`
`acknowledgement as required by independent claims 1 and 8 of the ’396 patent.
`
`(Id.) Similarly, the NAK message also does not include a positive
`
`acknowledgement. (Id.)
`
`3.
`
`TS 25.322
`
`TS25.322 is a 3GPP standard dated December 2004. (Ex. 1005 at 1.)
`
`TS25.322 is version 5.9.0 of the that “specifies the Radio Link Control protocol for
`
`the UE-UTRAN radio interface.” (Id. at 8; Ex. 2001 at ¶ 50.) TS25.322 does not
`
`disclose a timer to be used by the receiver when a data block is detected as missed.
`
`(Ex. 2001 at ¶ 5.)
`
`VI. THE PETITION GROUNDS SHOULD BE REJECTED
`
`A. Ground 1: Petitioners Have Failed to Show that Sachs
`Anticipates Claims 1-10 of the ʼ396 Patent Under 35 U.S.C. § 102
`(Claims 1-10)
`
`Sachs does not anticipate independent claims 1 or 8 of the ’396 patent
`
`because Sachs does not disclose the “T_reorder” timer as performing all elements
`
`of the claims. (Ex. 2006 at ¶ 25.) In particular, the T_reorder timer does not
`
`
`
`13
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`perform the steps of “stop[ping] the timer when the at least one data block is
`
`received from the transmitter while the timer is running, in order to prevent a
`
`triggering of a status report before the timer expires” and “transmit[ting] the status
`
`report to the transmitter after the timer expires, wherein the status report comprises
`
`a positive acknowledgement indicating receipt of at least one received data block.”
`
`(Ex. 1001 at 16:46-53; 18:1-8; Ex. 2006 at ¶ 25.) Judge Moore’s dissenting
`
`opinion in the Institution Decision agreed that neither Sachs nor Wei teach the
`
`“stopping the timer” limitation. (Paper 16 at 27-28.)
`
`1. Limitations 1[c], and 1[d] Are Not Conditional
`
`Petitioners incorrectly assert that limitation 1[c] directed to “stopping the
`
`timer . . .” is conditional. (Petition at 40 n.11.) Petitioners state that “[l]imitation
`
`1[c] would not be triggered if the at least one data block is not received . . . [i]n
`
`such a case, limitation 1[d] is triggered instead.” (Id.) This argument is based on
`
`the incorrect premise that limitations 1[c] and 1[d] cannot both be performed.
`
`The actual language of claim 1 demonstrates that limitations 1[c] and 1[d]
`
`are not conditional. First, the limitations are connected with “and” demonstrating
`
`that the claim comprises a single method. The cases cited by Petitioners confirm
`
`only that words such as “when” or “if” indicate conditional steps. See Microsoft
`
`Corp. v. Uniloc, 2017 LLC, IPR2019-01187, Final Written Decision (PTAB Jan.
`
`19, 2021), 13 (“t]he use of ‘when’ instead of ‘if’ does not change that the method
`
`
`
`14
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`steps are conditional.”). Indeed, the cases cited by Petitioners contain either
`
`“when” or “if” language in all of the conditional steps that do not appear in
`
`limitations 1[c] and 1[d] of the ’396 patent. Id.; Ex Parte Schulhauser, Appeal No.
`
`2013-007847 (Apr. 28, 2016), 2-3, 8.
`
`In contrast to Petitioner’s cited cases, the word “if” does not appear at all in
`
`claim 1, while the word “when” appears only in the context of limitation 1[c]
`
`where the claim states “stopping the timer when the at least one data block is
`
`detected as missed.” (Ex. 1001 at 16:46.) Neither “if” nor “when” appear
`
`anywhere in limitation 1[d]. Thus, Petitioners’ reliance on these cases and
`
`associated arguments are unavailing.
`
`In addition, there is no reason that both steps cannot be performed, nor do
`
`Petitioners provide any support to the contrary. Notably, the status report in
`
`element 1[d] contains a positive acknowledgement, indicating “receipt of at least
`
`one data block.” (Ex. 1001 at 16:52-53.) Sending such a status report is not
`
`inconsistent with also stopping the timer when a data block is received. (Ex. 2006
`
`at ¶ 26.) Petitioners provide no reason why limitations 1[c] and 1[d] cannot both
`
`occur other than stating that it is so. Thus, Petitioners’ entire analysis is
`
`fundamentally flawed, and they have not shown that limitations 1[c] and 1[d] are
`
`conditional. (Ex. 2006 at ¶ 26.)
`
`2. Sachs Does Not Disclose Limitations 1[c], 1[d], 8[c], or 8[d]
`
`
`
`15
`
`

`

`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`As acknowledged by the dissenting opinion in the Institution Decision,
`
`Sachs does not disclose “stop[ping] the timer when the at least one data block is
`
`received from the transmitter while the timer is running, in order to prevent a
`
`triggering of a status report before the timer expires” as required by limitations 1[c]
`
`and 8[c] of independent claims 1 and 8 respectively. (Paper 16 at 28.)
`
`Petitioners rely on both Figures 4 and 5 of Sachs for limitation 1[c] and 8[c].
`
`(Petition at 41-42, 46-47.) However, neither figure discloses this limitation. (Ex.
`
`2006 at ¶ 28.) Figure 4 does not disclose stopping a timer at all. (Ex. 1003 at Fig.
`
`4; Ex. 2006 at ¶ 28.) Figure 5 discloses stopping a timer, but only when reordering
`
`is finished. (Ex. 1003 at Fig. 5, 14:4-5 (“This is [sic] can be achieved by stopping
`
`the duration of the T_reorder timer, when reordering is finished.”); Ex. 2006 at ¶
`
`28.)
`
`In Figure 5, the T_reorder timer is directed to delaying a reordering
`
`procedure, not the triggering of a status report as in the ’396 patent. (Ex. 1003 at
`
`Figs. 4, 5, Abstract (“the received entity . . . delays a triggering of a reordering
`
`procedure”); 8:25-31 (“[t]he basic id