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., THALES DIS
`AIS DEUTSCHLAND GMBH,
`
`Petitioner,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Case IPR2021–01141
`Patent No. 7,215,653
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`Under 37 C.F.R. § 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
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. APPLICABLE LEGAL PRINCIPLES ............................................................ 3
`
`III. THE ’653 PATENT .......................................................................................... 7
`
`A. Overview of the ’653 Patent ............................................................................. 7
`
`B. Challenged Claims ..........................................................................................10
`
`C. Person of Ordinary Skill in the Art ................................................................11
`
`IV. CLAIM CONSTRUCTION ...........................................................................12
`
`V. OVERVIEW OF CITED PRIOR ART .............................................................13
`
`A. Effective Reverse Link Data Rate Control for 1xEV–DV—r2 (“Samsung”) 13
`
`B. Per–User Reverse Rate Control for Shared Packet Data Channel in 1xEV–
`DV (“Airvana”) ....................................................................................................14
`
`C. Physical Layer Standard for cdma2000 Spread Spectrum Systems
`(“C.S0002–0”) ......................................................................................................15
`
`D. U.S. Patent No. 6,741,862 (“Chung”) ............................................................15
`
`VI. ARGUMENT ..................................................................................................15
`
`A. Korean App. No. 6839 Entitles the ’653 Patent to a Priority Date of February
`11, 2001 Pursuant to 35 U.S.C. § 119 ..................................................................16
`
`1. Limitation 1 [Claim 34[a] Claim 34[b]/Claim 37[a] Claim 37[b]]: receiving
`a data rate control command of a base station on a forward link common
`channel in a dedicated manner, the data rate control command being formed of
`a least one rate control bit that is signal point mapped to at least one symbol of
`+1, –1, and 0 to indicate whether the mobile station should increase, decrease,
`or maintain its current data transmission rate, and ...........................................19
`
`2. Limitation 2 [Claim 34[c]/Claim 37[c]]: controlling the data transmission
`rate based on the data rate control command rate .............................................26
`
`3. Limitation 3 [Claim 34[d]/Claim 37[d]]: wherein, a bit is sent on a reverse
`packet data control channel to indicate whether the mobile station has enough
`power and data to increase its data transmission rate on a reverse packet data
`channel ..............................................................................................................31
`
`B. Grounds 1 and 2 Fail to Render Obvious Independent Claims 34/37............46
`
`1. Claim 34[b]/37[b] Is Not Rendered Obvious by Samsung in Combination
`With C.S0002–0, or the Combination of Samsung, Airvana, and C.S0002–0 .46
`
`C. Ground 3 Fails to Render Obvious Independent Claim 34 and Dependent
`Claims 35 and 36 ..................................................................................................47
`
`i
`
`

`

`1. Claim 34[b] Is Not Rendered Obvious by the Combination of Samsung,
`Chung, and C.S0002–0 .....................................................................................47
`
`2. Claim 35 Is Not Rendered Obvious ............................................................47
`
`3. Claim 36 Is Not Rendered Obvious ............................................................48
`
`D. Ground 3 Fails to Render Obvious Independent Claim 37 and Dependent
`Claims 38, 39, and 40 ...........................................................................................48
`
`1. Claim 37[b] Is Not Rendered Obvious by the Combination of Samsung,
`Chung, and C.S0002–0 .....................................................................................48
`
`2. Claim 38 Is Not Rendered Obvious ............................................................48
`
`3. Claim 39 Is Not Rendered Obvious ............................................................49
`
`4. Claim 40 Is Not Rendered Obvious ............................................................49
`
`VII. CONCLUSION ..............................................................................................49
`
`
`
`
`
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442 (PTAB July 13, 2015) .................................................................. 7
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ..........................................................................5, 6
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .............................................................................. 3
`
`Bausch & Lomb, Inc. v. Barnes–Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1985) ..............................................................................11
`
`Bedra, Inc. v. Seong,
`IPR2018–00668, Paper 8 (PTAB Sept. 8, 2018) .................................................... 5
`
`CenTrak, Inc. v. Sonitor Techs.,
`915 F.3d 1360 (Fed. Cir. 2019) .............................................................................. 6
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) ................................................................ 4
`
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583 (PTAB, Sep. 9, 2015) ................................................................... 4
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ......................................................... 7
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .............................................................................. 3
`
`Hologic, Inc. v. Smith & Nephew, Inc.,
`884 F.3d 1357 (Fed. Cir. 2018) .............................................................................. 6
`
`In re Gosteli,
`872 F.2d 1008 (Fed. Cir. 1989) .............................................................................. 5
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ..........................................................................3, 7
`
`Loom Co. v. Higgins,
`105 U.S. 580 (1881) ............................................................................................... 6
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018)............................................................................................ 3
`
`ScriptPro LLC v. Innovation Associates, Inc.,
`833 F.3d 1336 (Fed. Cir. 2016) .............................................................................. 6
`
`iii
`
`

`

`Vasudevan Software v. MicroStrategy, Inc.,
`782 F.3d 671 (Fed. Cir. 2015) ................................................................................ 5
`
`Visual Memory LLC v. NVIDIA Corp.,
`867 F. 3d 1253 (Fed. Cir. 2017) ............................................................................. 6
`
`Wasica Finance GMBH v. Continental Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) ........................................................................3, 18
`
`
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 6
`
`35 U.S.C. § 112 .......................................................................................................... 5
`
`35 U.S.C. § 113 .......................................................................................................... 6
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 3
`
`
`
`Other Authorities
`
`Patent Trial & Appeal Board Consolidated Trial Practice Guide
`November 2019 ....................................................................................................... 4
`
`
`
`Regulations
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 4
`
`37 C.F.R. § 42.65(a) ................................................................................................... 4
`
`37 C.F.R. § 42.100 ...................................................................................................12
`
`
`
`
`
`
`iv
`
`

`

`TABLE OF EXHIBITS
`
`Description
`Exhibit
`Settlement Agreement dated August 4, 2021
`2001
`2002 Declaration of Dr. Todor Cooklev in Support of Patent Owner
`2003
`Joint Claim Construction and Prehearing Statement
`2004
`Settlement Agreement dated December 1, 2021
`2005 Email to Board dated January 4, 2022
`2006
`Petitioner’s Opposition to Patent Owner’s Motion for Pro Hac Vice
`2007
`Patent Owner’s Response to Petitioners’ Opposition to Patent Owner’s
`Motion for Pro Hac Vice Admission
`2008 Email to Board dated February 28, 2022
`2009 Affidavit of Mr. Neil Benchell in Support of Patent Owner’s Motion for
`Pro Hac Vice Admission
`2010 Affidavit of Ms. Stephanie Berger in Support of Patent Owner’s Motion
`for Pro Hac Vice Admission
`2011 Affidavit of Mr. Andrew DeMarco in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`2012 Declaration of Dr. Todor Cooklev in Support of Patent Owner
`2013 Deposition Transcript of Mr. James Proctor
`
`v
`
`

`

`Petitioners 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 (collectively, “Petitioners”)
`
`filed a Petition for Inter Partes Review of U.S. Patent No. 7,215,653 (“the ’653
`
`patent”) on June 17, 2021. (Paper No. 11 (“Petition”).)1
`
`Patent Owner, 3G Licensing S.A. (“Patent Owner”), submitted a Patent
`
`Owner Preliminary Response (Paper No. pursuant to 37 C.F.R. § 42.107(a) on
`
`October 15, 2021. (Paper No. 16.) Petitioner filed a Reply (Paper No. 17), and
`
`Patent Owner filed a Sur–Reply (Paper No. 18), before the Board reached its
`
`decision to institute IPR proceedings on January 13, 2022. (Paper No. 23
`
`(“Decision”).) Through the undersigned Counsel, Patent Owner, submits the
`
`following Patent Owner Response (“Response”) pursuant to 37 C.F.R. § 42.120.
`
`I.
`
`INTRODUCTION
`
`Petitioners placed all of their eggs in the Samsung basket. Now, Petitioners
`
`are bound by that flawed decision. The ’653 patent is entitled to a priority date of
`
`
`1 The Board ordered ZTE Corporation, ZTE (USA) Inc., and Dell Inc. terminated
`
`from the proceedings after settling with Patent Owner, 3G Licensing S.A. (Paper
`
`Nos. 14, 22.)
`
`1
`
`

`

`February 12, 2001. Petitioners failed to show that claims 34–40 of the ’653 patent
`
`(“Challenged Claims”) are unpatentable because each Ground raised by Petitioners
`
`incorrectly relies on a September 18, 2001 priority date for the ’653 patent instead
`
`of the earlier, correct date. The priority date of the ’653 patent is February 12,
`
`2001 under 35 U.S.C. § 119 based on LG Electronics Inc.’s first Korean
`
`Application No. 6839 (“Korean App. No. 6839”) because this application contains
`
`written description support pursuant to pre–AIA 35 U.S.C. § 112, paragraph 1, for
`
`every limitation of the Challenged Claims.
`
`Petitioners’ primary reference, “Effective Reverse Link Data Rate Control
`
`for 1xEV–DV—r2” (Samsung), only allegedly became publicly available on May
`
`7, 2001. Because Korean App. No. 6839 predates Samsung by nearly 3 months,
`
`none of Petitioners’ Grounds can show that the Challenged Claims of the ’653
`
`patent are obvious in view of Samsung, Per–User Reverse Rate Control for Shared
`
`Packet Data Channel in 1xEV–DV (Airvana), 3GPP2 Specification C.S0002–0
`
`v1.0 Physical Layer Standard for cdma2000 Spread Spectrum Systems (C.S0002–
`
`0), and U.S. Patent No. 6,741,862 (Chung). Patent Owner’s Korean App. No. 6839
`
`also predates Airvana, but it does not predate C.S0002–0 or Chung. As patent
`
`challengers, Petitioners cannot meet their burden in demonstrating that the ’653
`
`patent is not entitled to the priority date of February 12, 2001.
`
`2
`
`

`

`Even if the ’653 patent is not entitled to the February 12, 2001 priority date,
`
`Petitioners’ Grounds still fail because their cited combination of references fail to
`
`render the Challenged Claims obvious.
`
`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 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
`
`3
`
`

`

`arguments in a reply brief are “foreclosed by statute, our precedent, and Board
`
`guidelines”); see also Patent Trial & Appeal Board Consolidated Trial Practice
`
`Guide November 2019 at 73 (“Petitioner may not submit new evidence or
`
`argument in reply that it could have presented earlier, e.g. to make out a prima
`
`facie case of unpatentability.”)
`
`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 Sept. 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
`
`not otherwise supported in the Petition also amounts to incorporation by
`
`reference.”).
`
`4
`
`

`

`Under 35 U.S.C. § 119, “the claims set forth in a United States application
`
`are entitled to the benefit of a foreign priority date if the corresponding foreign
`
`application supports the claims in the manner required by section 112, para. 1.” In
`
`re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 119 mandates that a
`
`“foreign application ‘shall have the same effect’ as if it had been filed in the United
`
`States.” Id. at 1011. Consequently, a U.S. patent is entitled to the priority date of a
`
`foreign application if the foreign application contains “a written description of the
`
`invention . . . in such full, clear, concise, and exact terms” as to enable “any person
`
`skilled in the art to which it pertains, or with which it is most nearly connected, to
`
`make and use the same.” 35 U.S.C. § 112(a); Bedra, Inc. v. Seong, IPR2018–
`
`00668, Paper 8 at 12–13 (PTAB Sept. 8, 2018) (routine opinion) (denying
`
`institution of inter partes review).
`
`Written description is a question of fact that is highly context specific and
`
`thus should be dealt with on a case–by–case basis. Ariad Pharms., Inc. v. Eli Lilly
`
`& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test is whether the
`
`disclosure of the patent reasonably would have conveyed to a person of ordinary
`
`skill in the art (“POSITA”) that the inventor had possession of the claimed subject
`
`matter as of the filing date. Vasudevan Software v. MicroStrategy, Inc., 782 F.3d
`
`671, 682 (Fed. Cir. 2015). In other words, written description is about whether a
`
`POSITA “‘can recognize that what is claimed corresponds to what is described; it
`
`5
`
`

`

`is not about whether the patentee has proven to a POSITA that the invention
`
`works, or how to make it work2, which is an enablement question.’” CenTrak, Inc.
`
`v. Sonitor Techs., 915 F.3d 1360, 1366 (Fed. Cir. 2019) (quoting Alcon Research
`
`Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014)) ; Ariad Pharm., 598
`
`F.3d at 1351.
`
`Nor must a single embodiment disclose every claimed limitation. Indeed,
`
`“the specification’s focus on one particular embodiment or purpose cannot limit
`
`the described invention where that specification expressly contemplates other
`
`embodiments and purposes.” ScriptPro LLC v. Innovation Associates, Inc., 833
`
`F.3d 1336, 1341 (Fed. Cir. 2016). Likewise, a patent need not teach material that
`
`is common and well known. Visual Memory LLC v. NVIDIA Corp., 867 F. 3d
`
`1253, 1261 (Fed. Cir. 2017); see also Loom Co. v. Higgins, 105 U.S. 580, 586
`
`(1881). Consequently, “[t]he written description does not require that every
`
`claimed element be illustrated in the figures, particularly in predictable arts and
`
`where the element not depicted is conventional and not ‘necessary for the
`
`understanding of the subject matter sought to be patented.’” Hologic, Inc. v. Smith
`
`& Nephew, Inc., 884 F.3d 1357, 1362 (Fed. Cir. 2018) (quoting 35 U.S.C. § 113).
`
`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
`
`
`2 Unless otherwise noted, emphasis has been added.
`
`6
`
`

`

`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). Only § 102 prior art
`
`may be considered in an obviousness analysis. Graham, 383 U.S. at 15.
`
`III. THE ’653 PATENT
`
`A. Overview of the ’653 Patent
`
`The ’653 patent issued from U.S. Application No. 10/071,243, filed on
`
`February 11, 2002, which claims priority to three foreign applications, Korean
`
`Application No. 2001–0006839 filed on February 12, 2001, Korean Application
`
`No. 2001–0041363 filed on July 10, 2001, and Korean Application No. 2001–
`
`0057600. (Ex. 1001 at Abstract; Ex. 2002 at ¶ 32.) All three foreign applications
`
`were presented to the Examiner at the time of filing and incorporated by reference.
`
`(Ex. 1007 at 1; Ex. 2002 at ¶ 33.)
`
`The ’653 patent generally relates to “controlling data transmission (transfer)
`
`rates between a base station and mobile stations served by the base station so that
`
`data throughput is advantageously increased.” (Ex. 1001 at 1:9–12; Ex. 2002 at ¶
`
`34.) The ’653 patent teaches that data transmissions from the base station to a
`
`mobile station are referred to as the forward link, and data transmissions from the
`
`mobile station to the base station are referred to as the reverse link. (Ex. 1001 at
`
`7
`
`

`

`2:11–16; Ex. 2002 at ¶ 35.) The ’653 patent recognizes that conventional
`
`techniques for controlling data transmissions did not “effectively consider the
`
`particular data transmission circumstances and channel conditions of each mobile
`
`station.” (Ex. 1001 at 4:40–43; Ex. 2002 at ¶ 36.)
`
`For example, conventional techniques did not employ effective power
`
`control for a mobile station located further away from the base station which
`
`required higher power than a mobile station located near the base station requiring
`
`only lower power. (Ex. 1001 at 4:45–50; Ex. 2002 at ¶ 37.) The conventional
`
`techniques ignored situations where individual mobile stations “have different
`
`requirements and should be advantageously be controlled individually in a
`
`dedicated manner.” (Ex. 1001 at 4:57–60; Ex. 2002 at ¶ 38.)
`
`The ’653 patent’s solution teaches improving reverse link data transmission
`
`rates by utilizing “messages informing the mobile station to adjust (increase,
`
`decrease or maintain) its data transmission rate [] sent from the base station in
`
`accordance with reverse link load information.” (Ex. 1001 at 5:10–15; Ex. 2002 at
`
`¶ 39.) Then, the mobile station informs the base station of its intention to increase
`
`the data transmission rate. (Ex. 1001 at 9:58–61, 14:38–40; Ex. 2002 at ¶ 40.)
`
`Consequently, the mobile station can transmit “packet data on the reverse link in
`
`accordance with the adjusted data transmission rate.” (Ex. 1001 at 6:15–20, 9:61–
`
`63; Ex. 2002 at ¶ 41.)
`
`8
`
`

`

`In one embodiment of the invention, the ’653 patent discloses a mobile
`
`station’s transmission of a Reverse Rate Indicator (“RRI”) to inform the base
`
`station of an intended (i.e. future) data transmission rate. (Ex. 1001 at 9:55–65;
`
`Ex. 2002 at ¶ 42; Ex. 2012 at ¶ 5.) Specifically, the ’653 patent teaches that
`
`mobiles “[u]pon receiving the RCBs from the base station, the mobiles preferably
`
`adjust their transmission data rates in increments for gradual increasing or
`
`decreasing. Then, the mobiles may inform the base station of the adjusted
`
`transmission data rate which they intend to use by sending to the base station a
`
`reverse rate indicator (RRI). Thereafter, packet data are transmitted to the base
`
`station on the reverse link at the adjusted data rate.” (Ex. 1001 at 9:55–63; Ex.
`
`2002 at ¶ 43; Ex. 2012 at ¶ 6.) The ’653 patent’s earliest claim of priority is to
`
`Korean App. No. 6839 that discloses a mobile station’s transmission of an RRI to
`
`inform the base station of its intended data transmission rate. (Ex. 1011 at ¶¶ 7,
`
`22, 48; Ex. 2002 at ¶ 44; Ex. 2012 at ¶ 7.)
`
`In another embodiment of the invention, the ’653 patent discloses a mobile
`
`station’s transmission of a Mobile Station Rate Increase Available Bit
`
`(“MS_IAB”) to inform the base station. (Ex. 1001 at 14:4–10; Ex. 2002 at ¶ 45.)
`
`As the embodiments demonstrate, both the RRI bit and MS_IAB bit are indicators
`
`that inform the base station. (Ex. 1001 at 9:58–61, 14:38–40; Ex. 2002 at ¶ 46.)
`
`These indicators are embodiments of the bit “sent on the reverse packet data
`
`9
`
`

`

`control channel to indicate whether the mobile station has enough power and data
`
`to increase its data transmission rate.” (Ex. 1001 at 20:18–22; Ex. 2001 at ¶ 47.)
`
`B. Challenged Claims
`
`Petitioners challenge claims 34–40. Claims 35 and 36 depend from
`
`independent claim 34. Claims 38, 39, and 40 depend from independent claim 37.
`
`Independent claim 34 provides:
`
`A mobile station apparatus for use in a mobile communications
`system for controlling a data transmission rate on a reverse link, the
`apparatus comprising:
`
`
`receiving means adapted to receive a data rate control command
`of a base station on a forward link common channel in a
`dedicated manner, the data rate control command being
`formed of at least one rate control bit that is signal point
`mapped to at least one symbol of +1, –1, and 0 to
`indicate whether the mobile station should increase,
`decrease, or maintain its current data transmission rate;
`and
`
`control means connected with the receiving means adapted to
`control the data transmission rate based on the data rate
`control command, wherein a bit is sent on a reverse
`packet data control channel to indicate whether the
`mobile station has enough power and data to increase its
`data transmission rate on a reverse packet data channel.
`
`Independent claim 37 provides:
`
`
`A method of controlling a data transmission rate on a reverse link
`received by a mobile station apparatus for use in a mobile communications
`system, the method comprising:
`
`
`receiving a data rate control command of a base station on a
`
`10
`
`

`

`forward link common channel in a dedicated manner, the
`data rate control command being formed of a least one
`rate control bit that is signal point mapped to at least one
`symbol of +1, –1, and 0 to indicate whether the mobile
`station should increase, decrease, or maintain its current
`data transmission rate; and
`
`controlling the data transmission rate based on the data rate
`control command rate, wherein a bit is sent on a reverse
`packet data control channel to indicate whether the
`mobile station has enough power and data to increase its
`data transmission rate on a reverse packet data channel.
`
`Person of Ordinary Skill in the Art
`
`C.
`
`A person having ordinary skill in the art (“POSITA”) at the time of
`
`invention, February 12, 2001, in the relevant art would be one with a bachelor’s
`
`degree in electrical engineering, computer engineering, computer science, or
`
`telecommunications, along with a minimum of three to five 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.
`
`This hypothetical person having ordinary skill in the art is presumed to be aware of
`
`all the pertinent art. Bausch & Lomb, Inc. v. Barnes–Hind/Hydrocurve, Inc., 796
`
`F.2d 443, 448 (Fed. Cir. 1985). The pertinent art in this case includes, at least, all
`
`of the prior art mobile communication systems referenced by Korean App. No.
`
`6839 and the ’653 patent.
`
`
`
`
`
`11
`
`

`

`IV. CLAIM CONSTRUCTION
`
`In an IPR proceeding, “a claim of a patent . . . shall be construed using the
`
`same 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).
`
`In this IPR proceeding, Petitioners propose constructions of the terms
`
`“receiving means adapted to receive a data rate control command of a base station
`
`on a forward link common channel in a dedicated manner” and “control means
`
`connected with the receiving means adapted to control the data transmission rate
`
`based on the data rate control command.” (Petition at 36–37.) In applying Section
`
`112 ¶ 6, Petitioners admit that the ’653 patent includes structures to perform these
`
`functions. (Petition at 37–38.) For example, Petitioners identify structure such as
`
`“an antenna, reception processor, and demodulator” for the receiving means.
`
`(Petition at 37.) Petitioners also identify structure such as “transmission data rate
`
`controller and transmission processor” for the control means. (Petition at 38.)
`
`Petitioners admit that their proposed constructions “match the constructions
`
`advanced by Patent Owner during litigation[.]” (Petition at 38 n.7.)
`
`12
`
`

`

`Patent Owner agrees with Petitioners that the proposed terms for
`
`construction have corresponding structure in the ’653 patent. Patent Owner’s
`
`position on claim construction here is the same as the position that it has taken in
`
`district court litigation. (Ex. 2003 at 1, 2.)
`
`Plain and ordinary meaning of all claim terms should apply. Patent Owner
`
`reserves the right to provide alternate constructions.
`
`V. OVERVIEW OF CITED PRIOR ART
`
`A. Effective Reverse Link Data Rate Control for 1xEV–DV—r2
`(“Samsung”)
`
`The Samsung reference is a 3GPP working group presentation titled
`
`“Effective Reverse Link Data Rate Control for 1xEV–DV.” (Ex. 1003; Ex. 2002
`
`at ¶¶ 48, 50.) Petitioners assert that Samsung was publicly available by May 11,
`
`2001. (Ex. 1002 at ¶ 151; Ex. 2002 at ¶ 49.) The Samsung reference consists of
`
`fifteen slides. (Ex. 1003 at 1–15; Ex. 2002 at ¶ 51.) These slides generally
`
`describe a mobile communications system as it relates to reverse link data rate
`
`control, problems with the current system, a proposed solution that uses RRI, and
`
`experimentation results. (Ex. 1003 at 1–15; Ex. 2012, at ¶ 8.)
`
`Importantly, slide 8 is the only example slide with information regarding
`
`how the Increase Availability Bit (“IAB”) can be set using RRI symbols and
`
`actually used by the mobile station as an indicator. (Ex. 1003 at 5, 8; Ex. 2002 at ¶
`
`52.) Slide 8 is omitted from the Petition, even though it is the only slide that
`
`13
`
`

`

`provides an example for setting the IAB to transmit a 1 bit, and it does so using
`
`redefined four bit RRI symbols or adding a bit, shown below. (Ex. 1003 at 8; Ex.
`
`2002 at ¶ 53; Ex. 2012 at ¶ 9.)
`
`
`
`(Ex. 1003 at 8.)
`
`The remaining slides of Samsung numbered 9–15 describe a simulation and
`
`conclusions. (Ex. 1003 at 9–15; Ex. 2002 at ¶ 54.) None of these slides deviate
`
`from using the redefined RRI symbols for the proposed IAB operation. (Ex. 2002
`
`at ¶ 55.)
`
`B.
`
`Per–User Reverse Rate Control for Shared Packet Data Channel
`in 1xEV–DV (“Airvana”)
`
`Airvana is a 3GPP working group draft paper entitled “Per–User Reverse
`
`Rate Control for Shared Packet Data Channel in 1xEV–DV.” (Ex. 1004 at 1; Ex.
`
`14
`
`

`

`2002 at ¶ 56.) Petitioners assert that Airvana was publicly available by February
`
`16, 2001, (Ex. 1002 at ¶ 157; Ex. 2002 at ¶ 57), but not on or before February 12,
`
`2001, the priority date of the ’653 patent. (Ex. 1002 at ¶ 157; Ex. 2002 at ¶ 58.)
`
`C.
`
`Physical Layer Standard for cdma2000 Spread Spectrum Systems
`(“C.S0002–0”)
`
`C.S0002–0 is a 3GPP2 specification titled “Physical Layer Standard for
`
`cdma2000 Spread Spectrum Systems.” (Ex. 1006 at 1; Ex. 2002 at ¶¶ 63, 64.)
`
`C.S0002–0 is titled “Physical Layer Standard for cdma2000 Spread Spectrum
`
`Systems.” (Ex. 1006 at 1; Ex. 2002 at ¶ 64.) The contents of C.S0002–0 provide a
`
`general overview of Code Division Multiple Access (“CDMA”) operations for
`
`both mobile stations and base stations. (Ex. 1006 at 3–17; Ex. 2002 at ¶ 65.)
`
`D. U.S. Patent No. 6,741,862 (“Chung”)
`
`The Chung reference is U.S. Patent No. 6,741,862 titled “Enhanced
`
`Reverse–Link Rate Control in Wireless Communication.” (Ex. 1005 at 1; Ex.
`
`2002 at ¶¶ 60, 61.) The Chung reference was filed on February 7, 2001 and issued
`
`on May 25, 2004. (Ex. 1005 at 1.) Petitioners admit that Chung “was before the
`
`Examiner during prosecution.” (Petition at 2; Ex. 2002 at ¶ 62.)
`
`VI. ARGUMENT
`
`Patent Owner expressly incorporates by reference all of the arguments and
`
`evidence submitted in the Preliminary Response (Paper No. 16.) Patent Owner
`
`disagrees with the Board’s Decision (Paper No. 23) to institute IPR proceedings,
`
`15
`
`

`

`and submits the additional argument and evidence below to demonstrate why the
`
`Board should find that all of the Challenged Claims are patentable.
`
`A. Korean App. No. 6839 Entitles the ’653 Patent to a Priority Date of
`February 11, 2001 Pursuant to 35 U.S.C. § 119
`
`Korean App. No. 6839 provides written description support for every
`
`limitation of claims 34 and 37 and entitles the ’653 patent to a priority date of
`
`February 11, 2001. (Ex. 2012 at ¶ 10.) For a number of reasons, Patent Owner
`
`respectfully disagrees with the Board’s Decision that “Petitioner has made a
`
`sufficient showing for purposes of institution