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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 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.
`
`3G LICENSING S.A.,
`
`Patent Owner.
`
`
`Case No. IPR2021-00584
`
`U.S. Patent No. 7,551,625
`
`
`
`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.23
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`V.
`
`
`PETITIONER’S EXHIBIT LIST ............................................................................ iii
`TABLE OF ABBREVIATIONS AND CONVENTIONS ...................................... vi
`I.
`INTRODUCTION ................................................................................................ 1
`II.
`PATENT OWNER REQUESTS REVIEW UNDER THE WRONG LEGAL
`STANDARD ....................................................................................................... 2
`III. A POSITA WAS KNOWLEDGEABLE ABOUT THE 3GPP WIRELESS
`COMMUNICATIONS STANDARDS ..................................................................... 3
`IV. PATENT OWNER HAS THE BURDEN TO SHOW THE ’625 PATENT IS
`ENTITLED TO AN EARLIER RIGHT OF PRIORITY ........................................... 4
`PATENT OWNER’S ATTEMPT TO CREATE PRIORITY THROUGH
`CLAIM CONSTRUCTION SHOULD BE REJECTED ............................................ 5
`A.
`E-AGCH Had No Meaning To A POSITA In April 2004 .................... 6
`B.
`But The 3GPP Had Defined The E-AGCH By The Filing Date
`Of The ’625 Patent ................................................................................ 6
`Patent Owner Did Not Act As A Lexicographer Or Disavow
`The Plain And Ordinary Meaning Of E-AGCH That Had
`Developed By March 2005 ................................................................... 9
`Patent Owner’s New Proposed Construction Does Not Fix Any
`Of The Problems With Its Last Proposed Construction ...................... 13
`1.
`The E-AGCH Must Include Absolute Grants ........................... 14
`2.
`The ’625 Patent Does Not Limit The E-AGCH To A
`Single Channel (Let Alone A Single Common Grant
`Channel) .................................................................................... 15
`
`C.
`
`D.
`
`
`
`- i -
`
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`

`

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`
`
`VI. THE ’625 PATENT IS NOT ENTITLED TO CLAIM PRIORITY TO THE
`EARLIER FILING DATE OF THE KOREAN APPLICATION ............................. 17
`VII. GROUNDS I-III: THE 3GPP REFERENCES RENDER THE
`CHALLENGED CLAIMS INVALID AS ANTICIPATED OR OBVIOUS ................ 21
`VIII. GROUNDS IV-V: IF THE ’625 PATENT IS ENTITLED TO AN APRIL 4,
`2004 PRIORITY DATE, CHEN ANTICIPATES OR RENDERS OBVIOUS
`THE CHALLENGED CLAIMS .......................................................................... 22
`A.
`If The ’625 Patent Claims Generic Scheduling Grants, Those
`Scheduling Grants Are Taught By Chen ............................................. 22
`Chen Discloses One Or More Channels, Just Like The ’625
`Patent ................................................................................................... 23
`Chen Teaches A UE That Is Assigned Multiple Identifiers................ 23
`C.
`IX. CONCLUSION ................................................................................................. 25
`
`
`
`B.
`
`
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`
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`
`
`
`
`
`
`
`
`
`- ii -
`
`

`

`
`
`
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 7,551,625
`
`Copy of Prosecution History of the ’625 patent
`
`Declaration of Dr. Apostolos Kakaes
`
`R2-042730, Inclusion of e.g. physical layer model, MAC
`architecture, detail Node B scheduler mechanism and QoS
`Control principles, 3GPP TSG-RAN2 Meeting #45, Shin
`Yokohama, Japan (uploaded Dec. 3, 2004) (“Meeting45”)
`
`R1-041512, Introduction of E-DCH, by Ericsson, 3GPP TSG-
`RAN WG1 Meeting #39, Yokohama, Japan (uploaded Nov. 21,
`2004) (“Meeting39”)
`
`U.S. Patent No. 7,155,236 (“Chen”)
`
`R2-050136, E-DCH Priority Based Scheduling, by Ericsson,
`3GPP TSG-RAN WG2 Meeting #45bis, Sophia Antipolis,
`France (uploaded Jan. 7, 2005) (“Meeting45bis”)
`
`Certified English Translation of Korean Application No. 10-
`2004-0022960
`
`Harri Holma and Antti Toskala, LTE for UMTS (2d ed. 2011)
`
`R1-041185, E-DCH Scheduling–UE Grant Procedures, by
`Ericsson, 3GPP TSG-RAN WG1 Meeting #38-bis, Seoul,
`Republic of Korea (uploaded Sept. 15, 2004)
`
`R1-041469, Approved Report of 3GPP TSG RAN WG1 #38,
`Prague, Czech Republic, Aug. 16-20, 2004 (uploaded Nov. 26,
`2004)
`
`R1-041423, Draft CR 25.211 – Introduction of E-DCH, by
`Ericsson, 3GPP TSG-RAN WG1 Meeting #39, Yokohama,
`Japan (uploaded Nov. 12, 2004)
`
`Ex. 1013
`
`R1-050180, Approved Report of 3GPP TSG RAN WG1 #39,
`Yokohama, Japan, Nov. 15-19, 2004 (uploaded Feb. 21, 2005)
`
`- iii -
`
`

`

`
`
`
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`RP-040046, TR25.896, Version 2.00, Feasibility Study for
`Enhanced Uplink for UTRA FDD, 3GPP TSG-RAN Meeting
`#23 (uploaded Mar. 4, 2004)
`
`3GPP/3GPP2 Harmonization Meeting Summary (Nov. 13-14,
`2001)
`
`The 3GPP Vision (May 2002)
`
`Exhibit 17 to Complaint filed May 15, 2020 in Sisvel Int’l S.A.
`v. Dell, Inc., Civil Action No. 1:20-cv-00651-UNA, D.I. 1-17
`(D. Del.)
`
`R1-050224, DL/UL timing asso[ci]ation of E-DCH operation,
`by Qualcomm Europe, 3GPP TSG-RAN WG1 Meeting #40,
`Scottsdale, AZ, USA, Feb. 14-18, 2005 (uploaded Mar. 2, 2005)
`
`3GPP TS 25.212 v6.3.0 (uploaded Jan. 5, 2005)
`
`R1-040392, 3GPP TR 25.896 v2.0.0 (uploaded Mar. 1, 2004)
`
`Declaration of Craig Bishop
`
`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)
`
`- iv -
`
`

`

`
`
`
`
`
`
`Ex. 1027
`Ex. 1027
`
`Ex. 1028
`Ex. 1028
`
`Order, Doc. 34, NASA Machine Tools, Inc. v. Fama Tech. Inc. et
`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)
`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.,
`Order for Pro Hac Vice Admission of Neil A. Benchell, Esq.,
`Doc. 56, Bristol Myers Squibb Co. v. Apotex, Inc. et al., Case
`Doc. 56, Bristol Myers Squibb Co. v. Apotex, Inc. et al., Case
`No. 3:10-cv-05810 (D. N.J.) (filed Apr. 19, 2012)
`No. 3:10-cv-05810 (D. N.J.) (filed Apr. 19, 2012)
`
`Ex. 1029
`Ex. 1029
`
`Plaintiff’s Brief in Opposition to Defendants’ Motion for Pro
`Plaintiff's Brief in Opposition to Defendants’ Motion for Pro
`Hac Vice Admission of Counsel, Doc. 29, NASA Machine
`Hac Vice Admission of Counsel, Doc. 29, NASA Machine
`Tools, Inc. v. Fama Tech. Inc. et al., Case No. 2:18-cv-02872
`Tools, Inc. v. Fama Tech. Inc. et al., Case No. 2:18-cv-02872
`(D. N.J.) (filed June 18, 2018)
`(D.N.J.) (filed June 18, 2018)
`Ex. 1030
`E-mail correspondence between E. Halverson and S. Berger,
`Ex. 1030
`E-mail correspondence between E. Halverson andS. Berger,
`Dec. 14, 2021 - Jan. 3, 2022
`Dec. 14, 2021 - Jan. 3, 2022
`
`Ex. 1031
`Ex. 1031
`
`Affidavit of Mr. Neil Benchell in Support of Patent Owner’s
`Affidavit of Mr. Neil Benchell in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission, Ex. 2007, IPR2021-00640
`Motion for Pro Hac Vice Admission, Ex. 2007, IPR2021-00640
`(PTAB) (filed Jan. 24, 2022)
`(PTAB)(filed Jan. 24, 2022)
`
`Ex. 1032
`Ex. 1032
`
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`00540, taken Dec. 3, 2021
`00540, taken Dec. 3, 2021
`
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`Ex. 1033
`Deposition Transcript for Apostolos K. Kakaes, IPR2021-
`Ex. 1033
`00584, taken Dec. 3, 2021
`00584, taken Dec. 3, 2021
`Ex. 1034
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`Ex. 1034
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`01099, taken Apr. 6, 2021
`01099, taken Apr. 6, 2021
`
`
`
`Ex. 1035
`Ex. 1035
`
`Ex. 1036
`Ex. 1036
`
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`Deposition Transcript for Apostolos K. Kakaes, IPR2020-
`01099, taken Aug. 10, 2021
`01099, taken Aug. 10, 2021
`
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`IPR2020-01099, taken Aug. 10, 2021
`IPR2020-01099, taken Aug. 10, 2021
`
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`Ex. 1037
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`Ex. 1037
`IPR2021-00584, taken Dec. 3, 2021
`IPR2021-00584, taken Dec. 3, 2021
`Ex. 1038
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`Ex. 1038
`Audio excerpt from Deposition of Apostolos K. Kakaes,
`IPR2021-00584, taken Dec. 3, 2021
`IPR2021-00584, taken Dec. 3, 2021
`
`Ex. 1039
`Ex. 1039
`
`Deposition Transcript for Stuart Lipoff, IPR2021-00584, taken
`Deposition Transcript for Stuart Lipoff, IPR2021-00584, taken
`February 9, 2022
`February 9, 2022
`
`- v -
`
`

`

`
`
`TABLE OF ABBREVIATIONS AND CONVENTIONS
`
`Abbreviation
`3G
`3GPP
`FDD
`POSITA
`TDoc
`UE
`UMTS
`UTRAN
`
`Meaning
`
`third generation
`3rd Generation Partnership Project
`Frequency Division Duplex
`person of ordinary skill in the art
`Temporary Document
`user equipment
`Universal Mobile Telecommunications Service
`UMTS Terrestrial Radio Access Network
`
`
`
`
`
`- vi -
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`

`

`
`
`I.
`
`INTRODUCTION
`
`Petitioner has demonstrated, and Patent Owner does not dispute, that each
`
`limitation of the challenged claims is taught by the 3GPP publications directed to
`
`establishing and defining the Enhanced Absolute Grant Channel (E-AGCH). The
`
`5
`
`only question is whether the challenged claims are entitled to claim priority to the
`
`Korean application’s April 2, 2004 filing date ahead of those 3GPP publications.
`
`The term “Enhanced Absolute Grant Channel (E-AGCH)” appears by that
`
`name in each independent claim of the ’625 patent. But neither the “Enhanced
`
`Absolute Grant Channel” nor its “E-AGCH” acronym appear anywhere in the
`
`10
`
`Korean application to which the ’625 patent claims priority. This is no surprise.
`
`This concept was developed, and the term was born and ascribed a meaning, through
`
`3GPP standard-setting activities that took place several months after the Korean
`
`application’s April 2, 2004 filing date.
`
`Patent Owner attempts to sidestep this problem by asking the Board to
`
`15
`
`construe “E-AGCH” in such a way that the Korean priority application will have
`
`disclosed it. Patent Owner’s proposed construction goes so far as to read the
`
`“absolute grant” out of the “Enhanced Absolute Grant Channel.” This makes no
`
`sense, and it is not how claim construction works. Patent Owner cannot demonstrate
`
`that it is entitled to an invention date for the claimed E-AGCH before the March 31,
`
`20
`
`2005 application in which this new subject matter was added.
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`- 1 -
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`

`

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`
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`Petitioner respectfully requests that the Board maintain its preliminary
`
`determination that “E-AGCH” be construed consistently with the use of that term in
`
`the 3GPP standards1 (i.e., specifying an “absolute grant,” as the “E-AGCH” on its
`
`face also requires) and that the claimed invention of the ’625 patent not be attributed
`
`5
`
`the priority date of the Korean application.
`
`Patent Owner has presented no credible evidence, and it is simply implausible,
`
`that a POSITA would have understood the ’625 patent to implicitly and ex post facto
`
`modify the definition of an industry term that was not known at the time of the 2004
`
`Korean application, but had been adopted and defined by the industry by the time of
`
`10
`
`the 2005 United States filing. Patent Owner’s after-the-fact reasoning cannot save
`
`the challenged claims of the ’625 patent.
`
`II.
`
`PATENT OWNER REQUESTS REVIEW UNDER THE WRONG LEGAL
`STANDARD
`
`Patent Owner erroneously asserts that “[t]he presumption of validity requires
`
`15
`
`those challenging validity to prove prior art status by clear and convincing
`
`evidence.” Response (Paper 32), 4 (citing Sandt Tech., Ltd. v. Resco Metal &
`
`Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001)). This is not the standard here.
`
`“In an inter partes review instituted under this chapter, the petitioner shall have the
`
`
`1 Patent Owner accuses 3GPP standard-compliant cellular products of
`infringement in its co-pending litigations.
`
`- 2 -
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`

`

`
`
`
`
`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence.” 35 U.S.C. § 316(e); see also, e.g., Oil States Energy Servs. v. Greene’s
`
`Energy Grp., 138 S.Ct. 1365, 1371 (2018); Cradlepoint, Inc. et al. v. Sisvel Int’l S.A.,
`
`IPR2020-01103, Paper 46, 12 (PTAB Jan. 18, 2022) (“[T]he burden of proof in this
`
`5
`
`proceeding is ‘preponderance of the evidence,’ not clear and convincing evidence.”).
`
`Petitioner needs
`
`therefore only demonstrate unpatentability by a
`
`preponderance of the evidence, although Petitioner presents proof that far exceeds
`
`this threshold.
`
`III. A POSITA WAS KNOWLEDGEABLE ABOUT THE 3GPP WIRELESS
`COMMUNICATIONS STANDARDS
`
`10
`
`Petitioner’s and Patent Owner’s proposed credentials for a POSITA
`
`substantially overlap: a bachelor’s degree in electrical engineering or similar
`
`discipline and at least three years of relevant experience. Compare Petition, 17 with
`
`Prelim. Response, 12. Petitioner’s definition further specifies, consistent with the
`
`15
`
`’625 patent’s specification and asserted art of record, that “[t]he relevant experience
`
`would include a working understanding of the development of new and then-existing
`
`wireless cellular communications standards.” Petition, 17 (citing Ex. 1003, ¶40).
`
`This is consistent with the ’625 patent’s explanation that the claimed invention was
`
`directed to 3GPP telecommunications standards. Ex. 1001, 3:11-13 (noting that “the
`
`20
`
`preferred embodiment of the present invention relates to an E-DCH”), 1:23-26
`
`(identifying “E-DCH (Enhanced uplink Dedicated Channel) of 3GPP WCDMA”).
`
`- 3 -
`
`

`

`
`
`
`
`Patent Owner does not challenge this definition. Response, 7 (agreeing that “there
`
`is no substantial difference between the parties’ definitions”).
`
`IV. PATENT OWNER HAS THE BURDEN TO SHOW THE ’625 PATENT IS
`ENTITLED TO AN EARLIER RIGHT OF PRIORITY
`
`5
`
`The “effective filing date” of the ’625 patent is the earlier of (a) the actual
`
`filing date of the patent (March 31, 2005) or (b) “the filing date of the earliest
`
`application for which the patent or application is entitled, as to such invention, to a
`
`right of priority….” 35 U.S.C. § 100(i). Importantly, the “effective filing date” is
`
`not the earliest date to which an applicant claimed priority, but instead the filing date
`
`10
`
`of the earliest application to which the invention is entitled. The right of priority to
`
`a foreign patent application is limited to “an application for a patent for the same
`
`invention” and must be “disclosed in the manner provided by the first paragraph of
`
`section 112.” 35 U.S.C. §§ 119(a), (e)(1).2 Here, the Korean application must
`
`therefore “reasonably convey[] to those skilled in the art that the inventor had
`
`15
`
`possession of the claimed subject matter [of the ’625 patent] as of the filing date.”
`
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`
`banc). This requires “describing the invention, with all its claimed limitations.”
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
`
`
`2 All emphasis added, unless otherwise indicated.
`
`- 4 -
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`

`

`
`
`
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`Petitioner had the initial “burden of going forward with evidence that there is
`
`[] anticipating prior art.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`
`1375, 1379 (Fed. Cir. 2015). Petitioner met that burden; there is no dispute that
`
`Meeting45 (Ex. 1004), Meeting39 (Ex. 1005), and Meeting45bis (Ex. 1007)
`
`5
`
`anticipate or render obvious the challenged claims. See Response, 13-17 (disputing
`
`only whether these references are prior art). Patent Owner now has the burden of
`
`production to show that Petitioner’s references are “not prior art because the asserted
`
`claim is entitled to the benefit of a filing date prior to the alleged prior art.” Dynamic
`
`Drinkware, 800 F.3d at 1379 (quotation omitted). This burden includes showing
`
`10
`
`“why the written description in the earlier application supports [each] claim.” Id.;
`
`see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir.
`
`2008) (patent owner has burden “to come forward with evidence to prove entitlement
`
`to claim priority to an earlier filing date” where Patent Office has not made a
`
`previous priority determination). Patent Owner has not and cannot meet this burden.
`
`15
`
`And, as discussed below, unless and until that burden is met, the Board must interpret
`
`all claim terms as understood by a POSITA as of the United States filing date of the
`
`’625 patent application—i.e., March 31, 2005.
`
`V.
`
`PATENT OWNER’S ATTEMPT TO CREATE PRIORITY THROUGH CLAIM
`CONSTRUCTION SHOULD BE REJECTED
`
`20
`
`The parties agree that E-AGCH was “not a term of art” in April 2004. See
`
`Response, 8 (emphasis in original). But Patent Owner’s underlying assumption that
`
`- 5 -
`
`

`

`
`
`
`
`April 2004, before the term in question was even coined, is the correct point in time
`
`for construing this term is wrong. Petitioner addresses each of Patent Owner’s
`
`arguments in turn.
`
`A. E-AGCH Had No Meaning To A POSITA In April 2004
`
`5
`
`“[T]he ordinary and customary meaning of a claim term is the meaning that
`
`the term would have to a person of ordinary skill in the art in question at the time of
`
`the invention, i.e., as of the effective filing date of the patent application.” Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The effective filing date of
`
`the ’625 patent is March 31, 2005, the date on which it was filed, until and unless
`
`10
`
`Patent Owner can meet its burden to show that the ’625 patent is entitled to an earlier
`
`priority date. See Dynamic Drinkware, 800 F.3d at 1379. And this makes sense; the
`
`Korean application (Ex. 1008) never mentions the term E-AGCH (because this term
`
`did not yet exist in April of 2004), so it is hard to understand how a POSITA would
`
`define that term in the context of that application. Notably, Petitioner is not aware
`
`15
`
`of, and Patent Owner has not presented, any evidence that the term was in the
`
`industry lexicon in April of 2004. Instead, it seems to have been coined months after
`
`the April 2004 Korean application.
`
`B.
`
`But The 3GPP Had Defined The E-AGCH By The Filing Date Of
`The ’625 Patent
`
`20
`
`The ’625 patent introduces E-AGCH in connection with “E-DCH (Enhanced
`
`uplink Dedicated Channel) of 3GPP WCDMA (3rd Generation Partnership Project,
`
`- 6 -
`
`

`

`
`
`
`
`Wideband Code Division Multiple Access).” Ex. 1001, 1:20-26, 3:11-20. By the
`
`time Patent Owner filed the ’625 patent application on March 31, 2005, the 3GPP
`
`working group responsible for establishing new channels had by then defined the E-
`
`AGCH, and “E-AGCH” had become a term of art in the cellular industry. Ex. 1003,
`
`5
`
`¶¶71-75; see also Exs. 1004, 1005, 1007.
`
`Patent Owner denies that “E-AGCH” had become a term of art by March 31,
`
`2005, when it filed the ’625 application, arguing that “there is no evidence that the
`
`[E-AGCH] terminology had been known or used by anyone outside of the
`
`[Meeting45] requester itself.” Response, 9. This is demonstrably false. In fact, the
`
`10
`
`term came of age before the ’625 application was filed on March 31, 2005 (although
`
`after the Korean priority application was filed on April 2, 2004). Meeting45,
`
`published by at least December 3, 2004, specifies in the “Reason for Change” on its
`
`face that it was authored by the RAN2 Working Group and documents the group’s
`
`(not the requestor’s) already-agreed changes to the standard discussed over two
`
`15
`
`meetings:
`
`20
`
`25.309 should be updated to reflect the decisions taken
`during RAN2#44 and RAN2#45. In particular the
`physical layer model, MAC architecture, detail on the
`Node B scheduler mechanism and the QoS control
`principles have to be included in the TS.
`
`- 7 -
`
`

`

`
`
`
`
`Ex. 1004, 1 (redlining “E-AGCH” into TS 25.309). Patent Owner’s declarant
`
`admitted on cross-examination that Meeting45 reflects the 3GPP RAN2 Working
`
`Group’s “consensus.” Ex. 1039, 79:5-18 (“… This change request is a 3GPP
`
`working document, which is summarizing -- a consensus was -- which was reached
`
`5
`
`during meeting 45 …”). 3GPP expert Craig Bishop also confirmed this through his
`
`unrebutted testimony and supporting evidence, which also demonstrates Meeting45
`
`was published on the 3GPP website by at least December 3, 2004. Ex. 1021, ¶54;
`
`see also id., ¶¶55-67.3
`
`The evidence uniformly demonstrates that the 3GPP, the preeminent standard-
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`10
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`setting organization for the technology to which the ’625 patent was directed, had
`
`met and agreed on a definition for E-AGCH and published this definition before
`
`March 31, 2005.4 The parties agree that a POSITA had “a working understanding
`
`
`3 There is no dispute that Meeting45, Meeting39, and Meeting45bis are
`publications. E.g., Ex. 1039, 39:4-18 (Patent Owner’s declarant testifying he has
`“no reason to dispute” Petitioner’s publication dates or the public availability of
`the references).
`
`4 Dr. Kakaes’ testimony about the 3GPP timeline for defining the E-AGCH is
`corroborated by Exs. 1004, 1010, and 1011, as well as by his discussion of
`additional 3GPP references: R1-041292, EUL-AH1: Summary of EUL e-mail
`discussion, 3GPP TSG-RAN WG1 Meeting #39, Yokohama, Japan (uploaded
`Nov. 12, 2004); RP-020658, Uplink Enhancements for Dedicated Transport
`(Cont’d on next page)
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`
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`of the development of new and then-existing wireless cellular communications
`
`standards.” See Petition, 17; Response, 7 (“no substantial difference” between
`
`definitions). This POSITA, with her working understanding of the new, most up-
`
`to-date wireless cellular communications standards, would have had knowledge of
`
`5
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`3GPP’s creation and addition of the E-AGCH to the 3GPP standards.
`
`C.
`
`Patent Owner Did Not Act As A Lexicographer Or Disavow The
`Plain And Ordinary Meaning Of E-AGCH That Had Developed
`By March 2005
`
`Patent Owner claims there is “ample evidence” that the applicant acted as their
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`10
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`own lexicographer to re-define the “Enhanced Absolute Grant Channel (E-AGCH)”
`
`to refer to something else entirely. Response, 9-10. Patent Owner’s “evidence”
`
`consists of the following arguments:
`
`First, Patent Owner claims the ’625 patent does not describe a “requirement”
`
`that the “Enhanced Absolute Grant Channel (E-AGCH)” transmit absolute grant
`
`15
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`scheduling assignments. Response, 9-10 (quoting Ex. 1001, 3:14-20). Patent Owner
`
`proposes to write the “absolute grant” out of the “Enhanced Absolute Grant
`
`Channel.” Patent Owner’s argument is akin to saying that an organization called the
`
`Patent Trial and Appeal Board is not “required” to adjudicate “patents”; trademarks
`
`
`Channels, TSG-RAN Meeting #17, Biarritz, France (uploaded Sep. 9, 2002); R1-
`040957, Downlink Control Signaling, TSG-RAN WG1 #38, Prague, Czech
`Republic (uploaded Aug. 12, 2004). Ex. 1003, ¶¶66, 71-75.
`
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`

`
`
`
`
`and copyrights are close enough. The inclusion of the specific words cannot be
`
`reconciled with ignoring those very same words. See Phillips v. AWH Corp., 415
`
`F.3d 1303, 1314 (Fed. Cir. 2005) (“[T]he use of a term within the claim provides a
`
`firm basis for construing the term.”).
`
`5
`
`Second, Patent Owner argues that “the plain language of the specification
`
`explicitly provides a definition for the term that is broader.” Response, 10 (citing
`
`Ex. 1001, 3:14-20) (emphasis in original). For support, Patent Owner points to this
`
`passage from the ’625 specification:
`
`10
`
`15
`
`An Enhanced Absolute Grant Channel (E-AGCH) is a
`downlink channel used by a base station (Node B) to send
`a scheduling command to an user equipment (UE). In
`other words, Node B transmits a command as to how much
`transmission power or a level of data rate transmission an
`UE is permitted to transmit. This is also known as uplink
`scheduling assignment or scheduling assignment.
`
`Ex. 1001, 3:14-20.
`
`
`
`Notably, this excerpt begins with the capitalized proper noun, indicating a
`
`reference to an existing term, rather than a definition for a new term. The applicant’s
`
`reference to this proper noun carries over to all of the independent claims, which
`
`20
`
`similarly refer to “an Enhanced Absolute Grant Channel (E-AGCH).” Ex. 1001,
`
`Claims 1, 16, 23, 39.
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`- 10 -
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`

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`
`
`
`
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`Moreover, this passage does not state that the inventor is redefining a known
`
`term. Instead, the applicant is seemingly discussing—without any suggestion that
`
`the discussion is complete—particular characteristics of the already-known E-
`
`AGCH. Indeed, all of the discussion (although not a complete description) is
`
`5
`
`consistent with the 3GPP’s E-AGCH. For instance, Patent Owner’s excerpt points
`
`out—correctly—that an E-AGCH is a downlink channel for sending a scheduling
`
`command. Ex. 1004, 20 (describing absolute grants as “a resource indication” “[i]n
`
`the downlink”). The tone and style of the entire discussion is consistent with an
`
`expectation that the POSITA is already familiar with the term, but no attempt is
`
`10
`
`made to fully describe all features of the E-AGCH. For instance, there is no
`
`discussion of necessary features like the channel rate and spreading factors.5 The
`
`reason that the applicant never specified the full scope of the E-AGCH’s features is
`
`manifest: they were already defined by the 3GPP and known to a POSITA.
`
`Third, Patent Owner claims that the 3GPP-defined E-AGCH is somehow
`
`15
`
`narrower than the ’625 patent’s E-AGCH because the 3GPP version does not
`
`“support[] issuing scheduling assignments to three identities: (1) an individual UE,
`
`(2) a group of UEs, or (3) all UEs on the channel.” Response, 10 (citing Ex. 1007,
`
`
`5 The 3GPP defined the E-AGCH channel as “a fixed rate (30 kbps, SF=256)
`downlink physical channel carrying the uplink E-DCH absolute grant.” Ex. 1005,
`46; compare generally Ex. 1001 (no mention of channel rate or spreading factor).
`
`- 11 -
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`
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`2). But this requirement of the ’625 specification (which is, relevantly, found
`
`nowhere in the Korean application) was taken almost verbatim from the 3GPP’s
`
`own December 3, 2004 description of the E-AGCH in Meeting45:
`
`
`
`5
`
`Ex. 1004, 21 (annotations in original).
`
`
`
`Patent Owner’s argument
`
`thus
`
`inadvertently highlights evidence
`
`corroborating that the applicant copied the 3GPP’s own description for the E-
`
`AGCH into the ’625 patent.
`
`The applicant invoked a known 3GPP-defined industry term through the use
`
`10
`
`of a proper noun for an alleged invention intended for use with the 3GPP WCDMA.
`
`The threshold for applicant to signal an intent to change the meaning of this term is
`
`therefore high:
`
`When a patentee acts as his own lexicographer in
`redefining the meaning of particular claim terms away
`from their ordinary meaning, he must clearly express that
`intent in the written description. We have repeatedly
`emphasized that the statement in the specification must
`have sufficient clarity to put one reasonably skilled in the
`art on notice that the inventor intended to redefine the
`claim term.
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`15
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`20
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`

`

`
`
`
`
`Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005).
`
`Here, there is no indication that the applicant intended to change the meaning of this
`
`3GPP-defined term, let alone a clear intent with sufficient clarity to put a POSITA
`
`on notice that the term had been redefined. See also Markman v. Westview
`
`5
`
`Instruments, Inc., 52 F.3d 967, 980, aff’d, 517 U.S. 370 (1996) (“[A]ny special
`
`definition given to a word must be clearly defined in the specification.”).
`
`In short, Patent Owner’s invitation to set aside the plain and ordinary meaning
`
`of this term of art absent a clearly expressed intention to do so should be rejected.6
`
`10
`
`D.
`
`Patent Owner’s New Proposed Construction Does Not Fix Any Of
`The Problems With Its Last Proposed Construction
`
`In the face of the Institution Decision, Patent Owner pivoted to another
`
`construction: “a single common grant channel that transmits scheduling grants to a
`
`single user equipment, groups of user equipment, or all user equipment on the
`
`channel, said channel supporting a single UE being assigned multiple identifiers.”
`
`
`6 Patent Owner also mischaracterizes Dr. Kakaes’ testimony and wrongly attacks
`Dr. Kakaes as “myopic” for refusing to agree with Patent Owner’s argument—
`i.e., by “refus[ing] to even acknowledge that the ’625 patent defined something
`different from the 3GPP Standard.” Response, 10-11. Here is what Dr. Kakaes
`testified: “The foundation of your question is wrong. [] Column 3, there is no
`definition of the E[-]AGCH, and you characterize it as a definition. I just don’t
`agree with that statement….” Ex. 1033, 233:24-234:15; see also id., 232:20-
`237:3. An expert is not “myopic” for disagreeing with a flawed premise.
`
`- 13 -
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`

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`
`
`Response, 11 (acknowledging “some ambiguity” in the previous proposed
`
`construction).7 This construction fares no better than its predecessor because it does
`
`not cure the deficiencies in its original definition. To the contrary, Patent Owner’s
`
`definition fails to address the very shortcomings identified by the Board. See
`
`5
`
`Institution Decision, 9-15.
`
`1.
`
`The E-AGCH Must Include Absolute Grants
`
`Patent Owner’s attempt to broaden “Enhanced Absolute Grant Channel” to
`
`make it a generic “common grant channel” that transmits any type of grant is not
`
`supported by the ’625 patent, which never refers to a “common grant,” and contains
`
`10
`
`no language that would support a new or different definition for this term of art. See
`
`Section V.C, supra. Patent Owner cannot use claim construction to rewrite its
`
`claims.
`
`
`7 Patent Owner’s declarant does not offer any testimony on this revised proposed
`construction and instead continues to rely on the original construction for his
`opinions. Ex. 1039, 103:1-9 (“Q. And is [Paragraph 54 of Exhibit 2001] the
`same proposed definition [for E-AGCH] on which you’re relying for purposes of
`your second declaration in Exhibit 2006? A. Yes, it is.”); see also Ex. 2001, ¶54;
`see generally Ex. 2006. Thus, Patent Owner offers nothing other than attorney
`argument in support of its revised construction.
`
`- 14 -
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`

`
`
`
`
`2.
`
`The ’625 Patent Does Not Limit The E-AGCH To A Single
`Channel (Let Alone A Single Common Grant Channel)
`
`Patent Owner persists in arguing that the E-AGCH should be limited to “a
`
`single common grant channel.” Response, 11. This proposed construction is at odds
`
`5
`
`with the ’625 patent, which repeatedly refers to one or more E-AGCH channels. For
`
`example:
`
`In E-AGCH, scheduling assignment(s) can be transmitted
`from Node B via shared channel(s) to an UE, group(s) of
`UEs, or all the UEs.
`
`10
`
`Ex. 1001, 3:42-43.
`
`An embodiment of the present invention will be further
`explained with respect to E-AGCH. Node B utilizes
`various transmission techniques such as code division,
`time division, and code-time division methods to transmit
`scheduling assignment to UEs via scheduling assignment
`channels (Ch-1-Ch-n).
`
`Id., 4:58-63.
`
`It is possible to transmit scheduling assignment to all the
`UEs using a separate or different channel than the
`channels used to transmit scheduling assignments to
`each UEs separately or to specific groups of UEs.
`
`15
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`20
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`
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`Id., 6:26-29; see also id., claim 15 (“a corresponding plurality o