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.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Case IPR2021-00584
`Patent No. 7,551,625
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`Under 37 C.F.R. § 42.107
`
`
`
`
`
`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
`
`
`
`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. APPLICABLE LEGAL PRINCIPLES ............................................................ 3
`
`A. Legal Standards ................................................................................................ 3
`
`B. Person of Ordinary Skill in the Art .................................................................. 7
`
`C. Claim Construction ........................................................................................... 7
`
`1. A Revised Proposed Construction ............................................................... 11
`
`III. PETITIONERS FAIL TO DEMONSTRATE THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ......................................................................... 13
`
`A. Grounds 1-3: Petitioners’ 3GPP References Are Not Prior Art ..................... 13
`
`B. Grounds 4 and 5: Petitioners Fail to Show that Chen Anticipates or Renders
`Obvious the Challenged Claims ........................................................................... 17
`
`IV. CONCLUSION .............................................................................................. 20
`
`
`
`
`
`
`
`i
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`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`Page(s)
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442, Paper 9 (PTAB July 13, 2015) ................................................7, 9
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .............................................................................. 4
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .............................................................................. 5
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 6
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016 ................................................................................ 3
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ................................................................................ 5
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 9
`
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 8
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .............................................................................. 8
`
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 9
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 10
`
`Lewmar marine, Inc. v. Barient, Inc.,
`827 F.2d 744 (Fed. Cir. 1987) ................................................................................ 6
`
`Microsoft Corp. v. Biscotti, Inc.,
`878 F.3d 1052 (Fed. Cir. 2017) ............................................................................ 22
`
`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) .............................................................................. 9
`
`ii
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`P&G v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 9
`
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (Fed. Cir. 2016) .............................................................................. 7
`
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,
`264 F.3d 1344 (Fed. Cir. 2000) .............................................................................. 5
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ctr. 1358 (2018) .......................................................................................... 4
`
`Schering Corp. v. Geneva Pharms., Inc.,
`339 F.3d 1373 (Fed. Cir. 2003) .............................................................................. 6
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 7
`
`Wasica Finance GMBH v. Continental Auto. Sys.
`853 F.3d 1272 (Fed. Cir. 2017) .............................................................................. 4
`
`Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 5
`
`35 U.S.C. § 103 .......................................................................................................... 6
`
`35 U.S.C. § 312 .......................................................................................................... 3
`
`Regulations
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`
`
`iii
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`
`TABLE OF EXHIBITS
`
`
`
`Description
`Exhibit
`2001 Declaration of Stuart Lipoff in Support of Patent Owner
`2002 Settlement Agreement dated August 4, 2021
`2003 Affidavit of Mr. Neil Benchell in Support of Patent Owner’s Motion for
`Pro Hac Vice Admission
`2004 Affidavit of Ms. Stephanie Berger in Support of Patent Owner’s Motion
`for Pro Hac Vice Admission
`2005 Affidavit of Mr. Andrew DeMarco in Support of Patent Owner’s Motion
`for Pro Hac Vice Admission
`Second Declaration of Stuart Lipoff in Support of Patent Owner
`2006
`2007 Rough Transcript for Deposition of Dr. Apostolo K. Kakaes
`
`iv
`
`

`

`
`
`Petitioners Cradlepoint, Inc., Dell Inc., Honeywell International, Inc., Sierra
`
`Wireless, Inc., TCL Communication Technology Holdings Limited, TCT Mobile
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`International Limited, TCT Mobile, Inc., TCT Mobile (US) Inc., TCT Mobile (US)
`
`Holdings, Inc., Thales DIS AIS Deutschland GmbH, ZTE Corporation, and ZTE
`
`(USA) Inc. (collectively, “Petitioners”) filed a Petition for Inter Partes Review of
`
`U.S. Patent No. 7,551,625 (“the ’625 patent”) on March 4, 2021. (IPR2021-00584,
`
`D.I. 1 (“Petition”).) The Petition was granted by the Board. (D.I. 20 at 37.)
`
`Through the undersigned Counsel, Patent Owner, 3G Licensing S.A. (“Sisvel”),
`
`submits the following Patent Owner’s Response pursuant to 37 C.F.R. § 42.107(a).
`
`(See also, 37 C.F.R. § 42.120.)
`
`I.
`
`INTRODUCTION
`
`The majority of Petitioners’ grounds for invalidity of the challenged claims
`
`of U.S. Patent No. 7,551,625 (“the ’625 patent”) are based on the Meeting45,
`
`Meeting39, and Meeting45bis references (collectively, the “3GPP references”),
`
`which post-date the April 2, 2004 priority date of the ’625 patent. (See D.I. 1 at 4,
`
`18-23.) The ’625 patent was filed on March 31, 2005, but claims priority to
`
`Korean patent application 10-2004-0022960 (the “Korean Application”) filed on
`
`April 2, 2004. (Ex. 1001 at cover; see Ex. 1008 at 1.)
`
`Contrary to Petitioners’ assertions, the Enhanced Absolute Grant Channel
`
`(“E-AGCH”) taught by the ’625 patent has sufficient written description support in
`
`1
`
`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`the underlying Korean Application. In contrast, the 3GPP did not adopt a channel
`
`bearing the same name in a standard until over a year later, and the naming of that
`
`channel bears zero relevance as to whether the earlier Korean priority application
`
`provides support for the invention recited in the claims. (Ex. 2001 at ¶¶ 55, 60-67;
`
`see D.I. 1 at 15-17; see also id at 4, 18-23.)
`
`Petitioners’ arguments are based on the premise that the E-AGCH of the
`
`3GPP references is the same E-AGCH taught by the ’625 patent. This is not so.
`
`The E-AGCH defined in the ’625 patent is derived from the Korean Application
`
`and is different from the definition set forth in the 3GPP references. (See Ex. 1001
`
`at Fig. 2, 3:14-20, 3:42-44, 3:61-62, 4:19-22; Ex. 1008 at Figs. 1 & 2, 7-8, claims 1
`
`& 2.)
`
`Patent Owner respectfully contests the Board’s preliminary determinations
`
`that: (1) the term E-AGCH was an established term of art with a plain and ordinary
`
`to meaning at the time of invention, (2) that this plain and ordinary meaning
`
`derives from the 3GPP references, and (3) that the patentee used that term in the
`
`’625 patent in accordance with the 3GPP’s definition. (See, D.I. 20 at 13-15.)
`
`Because the ’625 patent is entitled to the priority date it derives from the Korean
`
`Application, Grounds 1-3 must fail since the underlying references cannot
`
`qualifying as prior art under § 102.
`
`2
`
`

`

`
`
`Patent Owner’s arguments regarding the deficiencies of Grounds 4 and 5 of
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
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`the Petition remain intact and unimpacted by the Board’s Institution Decision. The
`
`Board appears to have preliminarily concluded that the Chen reference does not
`
`anticipate or render obvious the challenged claims because the Chen reference does
`
`not disclose an “absolute grant.” (See D.I. 20 at 36-37.) Patent Owner agrees with
`
`the Board’s conclusion, but for other reasons. Patent Owner does not assert that
`
`the E-AGCH of the ’625 patent must solely pertain to absolute grants. Rather,
`
`Patent Owner asserts that Chen fails to disclose key functionality of the ’625
`
`patent’s E-AGCH. (See D.I. 12 at 25-32.) It is on this basis that Patent Owner
`
`asserts that Grounds 4 and 5 fail.
`
`II.
`
`APPLICABLE LEGAL PRINCIPLES
`
`A.
`
`Legal Standards
`
`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 petitioners 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 the petitioner. SAS Inst. Inc. v. Iancu, 138 S. Ctr. 1358,
`
`1355 (2018) (“Congress chose to structure the process in which it’s the petitioner,
`
`not the Director, who gets to define the contours of the proceeding.”); In re
`
`3
`
`

`

`
`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
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`IPR2021-00584
`U.S. Patent No. 7,551,625
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`petition 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”).
`
`For a reference to be considered prior art under 35 U.S.C. § 102, it must be
`
`“patented, described in a printed publication, or in public use, on sale, or otherwise
`
`available to the public before the effective filing date of the claimed invention.”
`
`35 U.S.C. § 102(a)(1). This rule is “grounded on the principle that once an
`
`invention is in the public domain, it is no longer patentable by anyone.” Blue
`
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting
`
`In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986)). The presumption of validity
`
`requires those challenging validity to prove prior art status by clear and convincing
`
`evidence. Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350
`
`(Fed. Cir. 2000).
`
`4
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
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`
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`“A patent is invalid for anticipation if a single prior art reference discloses
`
`each and every limitation of the claimed invention.” Schering Corp. v. Geneva
`
`Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Lewmar Marine, Inc.
`
`v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987)). A prior art reference may
`
`anticipate without disclosing a feature of a claimed invention when that missing
`
`characteristic is necessarily present—or inherent—in the single reference. Id. at
`
`1377.
`
`To make a prima facie showing of obviousness under 35 U.S.C. § 103, the
`
`petition must, among others, 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); Realtime Data, LLC v. Iancu, 912 F.3d
`
`1368, 1372 (Fed. Cir. 2016).
`
`Petitioner also has the burden to show there would have been some
`
`motivation to combine the asserted prior art, and that the proposed combination
`
`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
`
`5
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
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`choices were obvious, a petition must explain why making all of the changes at
`
`once would be obvious. Apple Inc. v. Contentguard Holdings, Inc., IPR2015-
`
`00442, Paper 9 at 16-17 (PTAB July 13, 2015) (“[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 skill 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.
`
`The lack of a technological obstacles 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).
`
`6
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
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`
`
`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).
`
`B.
`
`Person of Ordinary Skill in the Art
`
`The Board has preliminarily adopted Petitioners’ proposed level of skill in
`
`the art. (D.I. 20 at 9.) As the Board noted in its institution decision, apart from the
`
`disagreement about the earliest priority date of the ’625 patent, there is no
`
`substantial difference between the parties’ definitions of the level of ordinary sill in
`
`the art. (Id. at 9.)
`
`C.
`
`Claim Construction
`
`The Board has preliminarily determined that the term Enhanced Absolute
`
`Grant Channel (or “E-AGCH”) should be accorded “the same definition as
`
`disclosed in the 3GPP standard documents discussed above and thus to also require
`
`an absolute grant.” (Id. at 15.) The Board based its determination on a finding that
`
`7
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`

`

`
`E-AGCH was an accepted term of art with a plain and ordinary meaning (D.I. 20 at
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`IPR2021-00584
`U.S. Patent No. 7,551,625
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`13; see also Id. at 14-15), and that the ’625 patent does not depart from the plain
`
`and ordinary meaning of the term. The Board came to this conclusion because it
`
`found no evidence of lexicography or disavowal. (Id. at 14-15.) Patent Owner
`
`contests both underlying bases for this preliminary determination.
`
`First, Patent Owner has provided sworn expert testimony that the term E-
`
`AGCH was not a term of art with an accepted meaning at the time of invention.
`
`(Ex. 2001 at ¶ 55.) Mr. Lipoff attests that in April of 2004, the field was in the
`
`process of determining what precisely an E-AGCH is and how it might function—
`
`it was not a term with a single agreed-upon meaning. (Id. at ¶ 55.) In its
`
`institution decision, the Board stated that “Patent Owner appears to acknowledge
`
`that E-AGCH was a term of art before March 31, 2005—it asserts it did not
`
`“merely adopt[] the E-AGCH of the prior art 3GPP references.” (D.I. 20 at 13.)
`
`Patent Owner respectfully disagrees with the Board’s finding, and notes that
`
`the finding either misunderstands or mis-states Patent Owner’s position. Instead,
`
`Patent Owner’s position is straightforward: term “E-AGCH” did not have any
`
`single accepted meaning at the time of the invention here, regardless of whether it
`
`should be labeled a “term of art.”
`
`The timeline of development confirms Patent’s Owner’s position.
`
`Petitioners’ expert, Dr. Apostolos Kakaes, explained that the term E-AGCH was
`
`8
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`

`

`
`first discussed as part of the 3GPP standard in the November 2004 as a “change
`
`request” to the standard during the Meeting45. (Ex. 2007 at 157:12-158:9.) He
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`IPR2021-00584
`U.S. Patent No. 7,551,625
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`explained that a person of ordinary skill in 2004 would need to (1) presume that the
`
`term E-AGCH was a term defined by the 3GPP standard, then (2) look up the
`
`definition from the standard. (Id. at 158:10-159:12.)
`
`But, as Dr. Kakaes admitted, the Meeting45 change request was not
`
`published in the standard for some time later. (Id. at 161:11-162:9.) Prior to its
`
`publication, a change request is simply that—merely a request to change the
`
`standard. At the time Meeting45 was submitted, there is no evidence that the
`
`terminology had been known or used by anyone outside of the requester itself. A
`
`single change request cannot establish the baseline knowledge and lexicology of a
`
`person of ordinary skill in the art, as Petitioner argues. Thus, Dr. Kakaes
`
`acknowledged in his deposition that the term E-AGCH was not a defined term until
`
`well after the filing date of the Korean application, to which the ’625 patent claims
`
`priority. (See id. at 161:11-162:9.)
`
`Second, there is ample evidence that the patentee here was acting as his own
`
`lexicographer. As Petitioners concede, the 3GPP’s E-AGCH is “entirely
`
`dedicated” to absolute grant scheduling assignments. (D.I. 15 at 1.) The ’625
`
`patent has no such requirement:
`
`An Enhanced Absolute Grant Channel (E-AGCH) is a downlink
`channel used by a base station (Node B) to send a scheduling
`
`9
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
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`
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`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 an uplink scheduling assignment or scheduling assignment.
`
`(Ex. 1001 at 3:14-20.)
`
`
`
`The only “evidence” Petitioners have provided that the ’625 patent’s term
`
`must be dedicated solely to absolute grants is that the that channel name includes
`
`the words “absolute grant.” (See D.I. 15 at 1-2.) However, there is no limitation
`
`in the ’625 patent that the channel must be dedicated solely to such grants. Instead,
`
`the plain language of the specification explicitly provides a definition for the term
`
`that is broader. (See Ex. 1001 at 3:14-20.)
`
`Indeed, the 3GPP’s conception of an E-AGCH contains additional functional
`
`differences from that disclosed in the ’625 patent. For example, the 3GPP E-
`
`AGCH supports issuing scheduling assignments to only two identities (a “group
`
`identity” and an “individual identity”), whereas the E-AGCH of the ’625 patent
`
`supports issuing scheduling assignments to three identities: (1) an individual UE,
`
`(2) a group of UEs, or (3) all UEs on the channel. (Ex. 1007 at 2; compare Ex.
`
`1001 at Fig. 2, 3:42-44, 3:61-62, 4:19-22; with Ex. 1008 at 7-8.)
`
`
`
`Despite the differences between the E-AGCH defined in the ’625 patent and
`
`the definition of an E-AGCH by the 3GPP standard, Petitioners’ expert Dr. Kakaes
`
`refused to even acknowledge that the ’625 patent defined something different from
`
`the 3GPP Standard. (Ex. 2007 at 211:13-215:11.) Dr. Kakaes’ myopic view
`
`10
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`

`

`
`cannot ignore that these the ’625 patent defined E-AGCH differently from the
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
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`3GPP standard.
`
`1.
`
`A Revised Proposed Construction
`
`Patent Owner acknowledges that the proposed claim construction for the
`
`term E-AGCH in its Preliminary Response included some ambiguity that could be
`
`construed to mean that the channel itself was capable of assigning multiple
`
`identifiers to a UE. (See, D.I. 12 at 15; D.I. 20 at 15; see also D.I. 15 at 6-7.)
`
`Patent Owner thus proposes a different wording for the construction of the term E-
`
`AGCH that makes clear that the channel supports the use of multiple identifiers for
`
`a single UE and that the channel itself does not do the assigning: “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.”
`
`This rewording is meant only to clarify that the channel supports a UE being
`
`assigned multiple identifiers for the purpose of issuing scheduling assignments to
`
`either (1) a single UE, (2) groups of individual UE that are not all UE on the
`
`channel, or (3) all of the UE on the channel. Patent Owner reiterates the support
`
`for its construction laid out above and reincorporates its support cited in its prior
`
`briefing by reference. (See D.I. 12 at 15-16; D.I. 16 at 2-6).
`
`11
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`

`

`
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`As a final matter, Patent Owner addresses the Board’s assertion that the ’625
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`IPR2021-00584
`U.S. Patent No. 7,551,625
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`patent specification “does not limit E-AGCH to a single channel[.]” (See D.I. 20 at
`
`15.) Patent Owner respectfully submits that this conclusion is incorrect. Patent
`
`Owner submitted two separate instances of the ’625 patent (as well as the Korean
`
`Application, in one instance) demonstrating the E-AGCH as a single channel.
`
`(D.I. 16 at 7 (citing Ex. 1001 at 3:14-16; Figs. 1 & 2; Ex. 1008 at Figs. 1 & 2).)
`
`Most critical, however is the direct definition of the term within the specification:
`
`“[a]n 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).” (Ex. 1001 at 3:14-16.) The specification itself is thus explicit that “[a]n
`
`Enhanced Absolute Grant Channel” is singular “channel,” not multiple channels.
`
`Petitioners’ citation to a single instance in the specification referring to
`
`“shared channel(s)” does not mean that the E-AGCH is itself multiple channels,
`
`but that multiple, parallel E-AGCH channels may be utilized. (See Ex. 1001 at
`
`6:26-29.) (“It is possible to transmit scheduling assignments to all 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.”)
`
`12
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`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`III. PETITIONERS FAIL TO DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A. Grounds 1-3: Petitioners’ 3GPP References Are Not Prior Art
`
`As stated in Patent Owner’s Preliminary Response, Petitioners base Grounds
`
`1-3 on 3GPP-related prior art that post-dates the April 2, 2004 priority date of the
`
`’625 patent. (See D.I. 12 at 20 (citing D.I. 1 at 43-44.)) Petitioners do so on the
`
`assertion that the ’625 patent is not entitled to its April 2, 2004 priority date, which
`
`it derives from the Korean Application. (D.I. 1 at 43-44.)
`
`In its Institution Decision, the Board preliminarily determined that the ’625
`
`patent was not entitled to its April 2, 2004 priority date on the grounds that the
`
`’625 patent’s use of the term E-AGCH was identical to that disclosed in the 3GPP
`
`documents, and thus the E-AGCH could only support the use of absolute grants.
`
`(D.I. 20 at 17-18.) The Board preliminarily determined that the Korean
`
`Application “does not sufficiently disclose the concept of absolute grants[,]” and
`
`thus determined that there was insufficient evidence to support a finding that
`
`POSITA would have understood the Korean application to have disclosed the ’625
`
`patent’s E-AGCH as of its April 2, 2004 filing date. (D.I. 20 at 17-18.) Under this
`
`analysis, March 31, 2005 becomes the applicable priority date for the ’625 patent,
`
`as that is its date of filing. (See Ex. 1001 at Filing Date (22).)
`
`13
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`

`
`
`On the specific matter of the channel supporting only absolute grants, the
`
`’625 patent’s specification is transparent; there is simply no requirement that an
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`E-AGCH pertain only to absolute grants:
`
`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.
`Under E-AGCH, each frame of the downlink transmission from Node
`B of scheduling assignment includes UE identifier (UE ID) and
`scheduling content. The UE ID is used to identify the receiving UE of
`the scheduling assignment for an uplink packet transmission.
`
`(Ex. 1001 at 3:14-25.) The Board preliminarily accepted Petitioners’ argument
`
`that the channel must—like the 3GPP version of the term—pertain only to absolute
`
`grants on the basis that the words “absolute grant” appear in the term “Enhanced
`
`Absolute Grant Channel.” (D.I. 20 at 12.)
`
`This argument ignores the explicit lexicography of the patentee and thus
`
`cannot be afforded any weight. Petitioners are asking the Board to read-in third-
`
`party unreferenced documents into the claims of the ’625 patent—a practice only
`
`undergone when intrinsic evidence is insufficient to resolve ambiguity in a claim
`
`term. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1583 (Fed. Cir. 1996); see
`
`also Microthin.com, Inc. v. SiliconeZone USA, LLC, 377 Fed. Appx. 8, 10 (Fed.
`
`Cir. 2010) (quoting Vitronics 90 F.3d at 1582) (“It is well-settled that, in
`
`interpreting an asserted claim, the court should look first to the intrinsic evidence
`
`14
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`

`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`of record, i.e., the patent itself, including the claims, the specification and, if in
`
`evidence, the prosecution history . . . . Such intrinsic evidence is the most
`
`significant source of the legally operative meaning of disputed claim language.”)
`
`No such ambiguity exists: there is no requirement in the ’625 patent that the E-
`
`AGCH pertain solely to absolute grants.
`
`
`
`Even if the Board were to nevertheless require that the E-AGCH pertain
`
`solely to absolute grants, thus requiring the Korean Application to disclose the
`
`concept of an absolute grant, Patent Owner has provided ample evidence of written
`
`description support for the concept of an absolute grant in the Korean Application.
`
`Patent Owner’s expert has testified that grants may be “absolute” or they may be
`
`“relative” but that both types would be recognized by a POSITA at the time of
`
`invention as subsets of the superset of “grants.” (Ex. 2001 at ¶ 40.) In his Second
`
`Declaration, Mr. Lipoff now provides additional citation and support for this
`
`opinion. (Ex. 2006 at ¶¶ 21-26; see id. at Exs. C & D.)
`
`A written description is sufficient if it “allows persons of ordinary skill in
`
`the art to recognize that the inventor invented what is claimed.” Nalproprion
`
`Pharms., Inc. v. Actavis Labs. FL, Inc., 934 F.3d 1344, 1350 (Fed. Cir. 2019)
`
`(quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`
`2010) (en banc)); see also In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989).
`
`Patent Owner has provided unrebutted expert testimony that a POSITA would
`
`15
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`

`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`
`recognize that absolute grants are a subset of scheduling grants—a concept that is
`
`referenced throughout the Korean Application and squarely disclosed by it. (Ex.
`
`2001 at ¶ 65; Ex. 2006 at ¶¶ 21-26.) As a result, the ’625 patent cannot be denied
`
`its April 2004 priority date on the grounds of not disclosing the concept of absolute
`
`grants alone.
`
`
`
`By stopping its analysis on the finding that the concept of an absolute grant
`
`was not disclosed by the Korean Application, the Board did not address Patent
`
`Owner’s other support for its assertion that the Korean Application provides
`
`sufficient written description for the other aspects of the E-AGCH such that the
`
`’625 patent is entitled to its April 2004 priority date. (See D.I. 20 at 17-18.)
`
`Rather than reiterate its support at length, Patent Owner notes that the
`
`characteristics of the E-AGCH as disclosed by the ’625 patent are supported as
`
`follows: (1) a single common grant channel (Ex. 1008 at Fig. 1); (2) support for a
`
`UE having multiple identifiers (Ex. 1008 at Fig. 2, claims 1 & 2); and (3) using the
`
`multiple identifiers assigned to a single UE to issue scheduling grants to individual
`
`UE, groups of UE, or all of the UE on the channel (id. at Fig. 2, claims 1 & 2).
`
`(See Ex. 2001 at ¶¶ 61-65.)
`
`As set forth above, however, the applicable priority date of the claims of the
`
`‘625 patent should be April 2, 2004. With that priority date, there is no dispute
`
`16
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`

`

`
`that the references on which Petitioner relies are not prior art to the ’625 patent.
`
`IPR2021-00584
`U.S. Patent No. 7,551,625
`
`Thus Grounds 1-3 fail.
`
`B. Grounds 4 and 5: Petitioners Fail to Show that Chen Anticipates
`or Renders Obvious the Challenged Claims
`
`The Board notes in its Institution Decision, that Petitioners do not explain
`
`how Chen’s “individual grant” would constitute an “absolute grant,” and appear to
`
`summarily dismiss the Chen reference because of the preliminary determination
`
`that the E-AGCH must pertain solely to absolute grants. (See D.I. 20 at 36-37.)
`
`Patent Owner wishes to note that it concurs that Chen fails to anticipate or render
`
`obvious the challenged claims, but on different grounds from those posed by the
`
`Board in its institution decision because of Patent Owner’s proposed construction
`
`of E-AGCH. (See D.I. 12 at 25-32.)
`
`Rather, Patent Owner contends that Chen fails to disclose two features of the
`
`E-AGCH as described in the specification of the ’625 patent: (1) the use of a single
`
`common channel that (2) supports a UE being assigned multiple identifiers so that
`
`UE may