UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM L.P.,
`Petitioner,
`
`v.
`
`GENERAL ACCESS SOLUTIONS, LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`____________
`
`Record of Oral Hearing
`Held: December 6, 2018
`____________
`
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and KALYAN K. DESHPANDE and DAVID M. KOHUT,
`Administrative Patent Judges.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM L.P.,
`Petitioner,
`
`v.
`
`GENERAL ACCESS SOLUTIONS, LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`____________
`
`Record of Oral Hearing
`Held: December 6, 2018
`____________
`
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and KALYAN K. DESHPANDE and DAVID M. KOHUT,
`Administrative Patent Judges.
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
`ROBERT C. HILTON, ESQUIRE
`JASON W. COOK, ESQUIRE
`McGuire Woods LLP
`2000 McKinney Avenue
`Suite 1400
`Dallas, Texas 75201
`ON BEHALF OF PATENT OWNER:
`RICHARD T. McCAULLEY, JR., ESQUIRE
`ANTHONY DOWELL, ESQUIRE
`McCaulley Dowell
`550 W. Washington Boulevard
`Suite 201
`Chicago, Illinois 60661
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`
`December 6, 2018, commencing at 10:29 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE DESHPANDE: Good morning, everybody. We're here
`for IPR2017-01885, -01887, -01889, Sprint Spectrum versus General Access
`Solutions. Could we have our appearances first? Who do we have for
`Petitioner?
`MR. HILTON: Your Honor, for Petitioner my name is Robert
`Hilton from McGuire Woods and this is my colleague, Jason Cook.
`JUDGE DESHPANDE: Great. And for Patent Owner?
`MR. DOWELL: For Patent Owner, Anthony Dowell and my
`partner, Rick McCaulley.
`JUDGE DESHPANDE: Okay. Great. We outlined in our Trial
`Hearing Order the procedure for today. Petitioner will present first, as
`Petitioner bears the burden of proof. The Petitioner may reserve half of its
`time for rebuttal, Patent Owner may present after Petitioner and whatever
`remaining time you may use for sur-rebuttal.
`Please just be sure that we do have a remote judge, so when you
`speak, if you don't speak into a microphone, he can't hear you. And for the
`same reasons if you're on a demonstrative slide, please identify what
`demonstrative slide you're on. If you're in the record, what paper and page
`number you're in the record. That will help us get a clear transcript for today
`and that will also help our remote judge for being able to follow us.
`If no one has any questions, Petitioner, you may present first.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 3
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`I think we set up that you have 90 minutes to present in any order
`you want, any of the three cases. Does that sound --
`MR. HILTON: That sounds great.
`JUDGE DESHPANDE: Is that everyone's understanding?
`MR. COOK: Yes, Your Honor.
`MR. HILTON: Good morning, Your Honor. Can I -- do I need to
`reserve time for the rebuttal or just whatever is left we'll deal with it.
`JUDGE DESHPANDE: You can do either.
`MR. HILTON: Okay. Probably I'd like to reserve --
`JUDGE DESHPANDE: If you reserve, I'll give a warning as to
`when you're approaching that point.
`MR. HILTON: So 30 minutes for rebuttal.
`So may it please the Board. So we're here today to discuss the
`IPRs for 1885, 1887 and 1889. I'd like to first turn to slide 3 of our
`demonstratives, and this slide actually illustrates the grounds for the 1885
`and 1887 IPRs. So there's many issues and moving parts with related -- or
`that are related to the disputes are the issues in dispute here.
`The Patent Owner has attempted to swear behind the Ahy
`reference and in doing so has submitted over 450 exhibits that purport to
`show prior conception and diligence. Patent Owner has also questioned the
`publication date of Klein and Sanders. We believe the 1885 and the 1887
`IPRs are easily and almost completely resolved for two reasons. There's no
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 4
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`proof of conception by Patent Owner and based on the public availability of
`Klein and Sanders in early 2000.
`So let's turn to slide 7. I'd first like to address the conception issue.
`So the Patent Owner can't prove an earlier date of conception in this case,
`because the finding would conflict with the inventorship of the two patents.
`Slide 7 shows a general timeline associated with the conception claim. Mr.
`Struhsaker was one of three inventors of the '916 and the '810 patents. The
`Patent Owner filed a declaration by Mr. Struhsaker in the IPRs testifying
`that every claim of the '916 and every claim of the '810 were conceived on
`May 24, 2000 in an investor presentation.
`The '916 and '810 patents each had two additional inventors
`named. One was Mr. Nelson and one was Mr. McKown. Neither of these
`other two inventors were asked to testify by the Patent Owner in this
`proceeding, only Mr. Struhsaker. One of the other inventors joined Raze,
`which is the predecessor company to General Access in September 2000,
`and the other joined in October 2000.
`JUDGE HAAPALA: Counsel, can I interrupt you for a second?
`MR. HILTON: Yes.
`JUDGE HAAPALA: An inventor of a patent doesn't have to be an
`inventor in all the claims, is that your understanding?
`MR. HILTON: That's correct.
`JUDGE HAAPALA: So why is it important that only one inventor
`has a declaration?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 5
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`MR. HILTON: Well, the burden of proof here is on the Patent
`Owner to show conception, and the Patent Owner has actually said in this
`case that conception was shown for every one of these claims back on May
`24, 2000, which was three to four months before the inventor, Mr.
`Struhsaker, even met the other two inventors. And at the time that -- at the
`time this patent application was filed, all of the inventors in the case made a
`contemporaneous filing of the declaration that said that they all reviewed the
`claims of the application and that they were all inventors of those claims.
`Now, it's true, as you point out, that they don't have to be an
`inventor on every one of the claims but only one, but this conflicting
`information between Mr. Struhsaker saying that he conceived of all of the
`claims back in May and the other inventors being involved in the application
`when it was actually filed later, this conflicting information can't be resolved
`here.
`
`JUDGE HAAPALA: But isn't the issue before us whether there
`was conception and not -- and asking whether we need to reach an issue of
`improper inventorship or even whether we could?
`MR. HILTON: Well, so our argument is actually that the Board
`cannot reach a finding of improper inventorship. And because of this issue
`that's unresolvable that they can't prove conception because there's
`conflicting data here. The Board can't reach a decision, one, because there
`have been other boards that have said that consideration and correction --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 6
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`actually correction of inventorship is outside the scope of an IPR
`proceeding.
`But, second, and I think even more importantly is that in order for
`inventorship to be corrected, there have to be facts that are presented by the
`inventors, all the inventors. In order to have the finding of -- that
`inventorship is wrong and that it needs to be corrected, a patentee has to
`actually submit statements from all the inventors with all of them agreeing to
`the new inventive entity, if you will, and who the inventors are. Patent
`Owner hasn't done that in this case. They only raised the inventorship
`possibly being a wrong issue in their Sur-Reply.
`JUDGE HAAPALA: So I agree with you that we can't reach the
`inventorship issue. And with that in mind, then, why isn't it sufficient for us
`to look for conception from at least one of the named inventors? I think I'm
`not understanding your argument as to why we would need to determine that
`the claims of -- had a conception date involving all of the inventors.
`MR. HILTON: Well, again, I just think there's an unresolvable
`issue there, and we are going to talk further about conception with respect to
`the purported proof that they've shown, so I am going to go into that, but we
`just think that this is kind of a threshold issue that we can't surpass because
`we think, one, that the Board, you know, is not in this proceeding able to
`correct the inventorship and we think, two, with this -- you know, these dual
`-- these dual facts, one of which says I invented all the claims on May 24,
`2000 by myself, and then we have the conflicting evidence that when the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 7
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`patent application was filed, all three inventors said we invented at least
`some of this together. We can't resolve it, so --
`JUDGE HAAPALA: Are you saying that it calls into question the
`conception evidence? Because I think there are two separate issues. You
`know, one issue we can't reach. Another issue is we're trying to decide
`whether there was conception as of the relevant date.
`MR. HILTON: Well, we are calling into the -- we are calling into
`question the conception evidence that they submitted and, again, I'm going
`to talk about that, but I think fundamentally they still cannot show that there
`was prior conception or prove it because of this conflicting evidence
`associated with the other two inventors being involved.
`JUDGE HAAPALA: You can continue.
`MR. HILTON: Okay. So let me go ahead and discuss the more
`detailed information about conception and why they still fail to prove
`conception on multiple claims.
`So if we turn to slide 8. The Patent Owner suggests that full
`corroboration of the claimed invention isn't necessary to show conception
`and that only enough evidence has to be present in order to determine that
`the inventor's story is truthful. But the REG Synthetics Fuels case that's
`actually cited by the Patent Owner in their Sur-Reply actually has a finding
`that conception must include every feature or limitation of the claimed
`invention, and I think that's a primary point of dispute here. Patent Owner
`believes that it has, you know, shown prior conception with the evidence
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 8
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`that it submitted for all of the claims, and we, on the other hand, have
`pointed out that there are certain elements or certain limitations of the claims
`that are not shown.
`So let me talk a little bit about the evidence. The Patent Owner
`presents Exhibit 2457 and Mr. Struhsaker's declaration to try and prove
`conception. So Exhibit 2457 is a presentation that they had presented to
`investors that shows information about a wireless access system that they
`call the Total Access System or TAS. The TAS, though, fails to disclose the
`modulation controller that's present in all the claims of the '916 and the '810
`patents. So every claim of those two patents includes this requirement, and
`that is a modulation controller determining an optimum modulation
`configuration for each of said plurality of wireless devices.
`So let's look at slide 9. Mr. Struhsaker identifies in this figure the
`RF modem cards as being responsible for the modulation index for each
`downlink transmission.
`If we go to slide 10. This is another figure from 2457 where Mr.
`Struhsaker points to this terminology that we've underlined, a modulation
`index graded by link distance. The system that's disclosed in Exhibit 2457 is
`a fixed wireless system.
`So if we turn to slide 11, that shows a little bit better what we're
`talking about when we say fixed. The fixed aspect of the TAS system is
`shown here where the end user terminals are represented by these buildings
`that have antennas on them. So those buildings are actually a fixed distance
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 9
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`from the network access terminal. So it's in contrast really to a mobile
`system where you might think about a cellphone that moves around.
`Exhibit 2457 does not expressly mention a modulation controller
`or that the modulation controller is responsible for determining a modulation
`configuration. Even though this exhibit mentions a modulation index, it's
`not necessarily the same as a modulation controller. So Petitioner's expert,
`Mr. Proctor, testified to the significance of the modulation index that's
`shown in Exhibit 2457.
`If we turn back to slide 10. The modulation index it says is graded
`by link distance and is also shown as being varied based on the frequency
`band of operations. However, as pointed out by Mr. Proctor, it would have
`been evident to a person of ordinary skill in the art in a fixed wireless system
`that the link distance would be computed when they were initially setting up
`the end user terminal, and the modulation index could then be configured
`manually based on the computed distance between the terminal and the base
`station.
`
`Mr. Proctor further testified that manual configuration of
`modulation index was an approach that was known at the time. Since there's
`no mention of an actual modulation controller and since it would have been
`reasonable to configure the modulation manually, the controller would not
`necessarily be a part of the TAS system. So it's our contention that the
`controller is not shown in this exhibit.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 10
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`If we turn to slide 13. So all the claims of the '916 and '810 also
`require that the modulation controller determines an optimum modulation
`configuration. This reference does not discuss or disclose an optimum
`metric for determining modulation configuration. It only discloses the index
`that's based on a link distance and frequency band.
`So, again, Mr. Proctor here talked a little bit about what
`optimization is like, and he said that a person of ordinary skill in the art
`would understand that link distance and frequency band are two fixed
`parameters and don't -- they don't relate to the optimization of a particular
`channel in a fixed wireless system. He said that only a course
`approximation could be made based on those parameters because there's
`other parameters outside of the distance and the frequency that would have
`to be taken into account to truly optimize the modulation.
`He mentioned some of these factors to include interference,
`atmospheric attenuation, multipath fading, shadow fading. It's these factors
`that would dictate how you are actually going to optimize a modulation.
`To illustrate this, even if there were two end terminals that were
`the same fixed distance from the base station, the optimum modulation
`configuration would likely be different for each one of those, even though
`they're the same distance away. You know, putting it in perspective here, if
`we had the base station sitting here in this conference room and we had a
`subscriber a mile to the east and a subscriber a mile to the west, you know,
`thus a fixed distance, we would have to do different things to actually
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 11
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`optimize the modulation between here and there, depending on which
`direction we're going because of the presence of buildings, maybe
`differences in the atmosphere and just generally how the signal would travel
`through space to get to that point.
`So to summarize on 2457, again, optimization is not shown, a
`modulation controller is not shown, certainly not a modulation controller
`that determines modulation configuration. So there is other evidence that
`gets cited by the Patent Owner that supports conception, and I just want to
`briefly talk about that.
`If we turn to slide 20. Their Sur-Reply points to Exhibits 2464 and
`2471 as also showing conception. I want to go ahead and address these
`because Petitioner was not permitted to file a response to a Sur-Reply, but
`2464 was actually cited by the Patent Owner because it adds this phrase
`higher power and modulation complexity.
`JUDGE HAAPALA: Can I interrupt you for a second?
`MR. HILTON: Yes, ma'am.
`JUDGE HAAPALA: Did you ask to file a response to the
`Sur-Reply after you saw it?
`MR. HILTON: No, we did not.
`JUDGE HAAPALA: Thank you.
`MR. HILTON: 2464 adds a phrase to one of the figures that was
`present in 2457. The phrase was added to slide 20 and it says higher power
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 12
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`and modulation complexity can be supported. Patent Owner suggests that
`this is additional evidence of the fact that there was a modulation controller.
`The thing we want to point out about 2464, though, is that the
`metadata associated with this that Patent Owner provided indicates that 2464
`was last modified on August 9, 2000, and that actually after the July 21,
`2000 filing date of Ahy. So this exhibit can't be used to bolster conception.
`Again, they also point to Exhibit 2471, which is an e-mail that
`includes mention of the modulation index. Here, though, this really adds
`nothing to Exhibit 2457 since it still fails to show that there was actually a
`modulation controller involved or that there were some consideration of
`these channel conditions in order to optimize.
`So let me turn to diligence because we also believe that Patent
`Owner has not proven diligence.
`JUDGE DESHPANDE: Just one question, with conception is it --
`your argument is that the only reason why conception is not showing is that
`there is no modulation controller, right, that's not -- it's not based on the type
`of modulation controller or whether there's an RF modem. It's just the
`modulation controller is not present.
`MR. HILTON: Well, so our argument -- I mean, first of all, we
`have more extensive briefing in the record, but our argument with respect to
`conception besides the inventorship issues that we raised are that all of those
`claims require at least a modulation controller and optimization, and neither
`one of those things is present.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 13
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`Now, I didn't plan on presenting this today, just because of the
`level of depth that we would be going into, but we also challenged whether
`or not they showed multiple limitations from the dependent claims in each
`one of those applications or patents. You know, so it's not just that, but
`those are common limitations to every claim in both of those patents.
`So if we turn to slide 7. Again, this is our timeline that shows the
`conception period, but it also shows the diligence period, and the diligence
`period here would have been over seven months between the filing date of
`Ahy and the priority date of the '810 and '916. So in an attempt to show
`diligence, the Patent Owner submitted 425 weekly reports that supposedly
`show various employees' work during the diligence period. They attempt to
`broadly explain the significance of these reports as demonstrating work on
`the TAS project by the employees of Raze.
`If we look at slide 22. However, the inventor, Mr. Struhsaker's
`own declaration indicates that the TAS was comprised of at least three major
`components and a multitude of minor components. So these components,
`again, are illustrated in this figure on slide 22, and this figure is from Exhibit
`2457.
`
`It was only the remote modem array that contained the RF modem
`modules that Mr. Struhsaker identified as embodying the claimed invention
`of the '916 and the '810. This is important. Patent Owner's weekly reports
`show work by the employees on the broader aspects of the TAS system, but
`the Patent Owner summarily concludes that this demonstrates diligence on
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 14
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`the narrower inventions that are claimed by the '916 and the '810, but this
`isn't correct.
`An analogous situation here would be if Chevrolet decided to
`design a new Corvette, and part of the new project included a new -- let's say
`a new heated side view mirror. It would be improper to suggest that the
`company's work on other parts of the corvette could be used to bolster proof
`of diligence with respect to that side view mirror. The Patent Owner hadn't
`made any attempts to distinguish or specify which aspects of the weekly
`reports represent work on the claimed inventions as opposed to other
`components associated with TAS.
`To further illustrate the gap here between the broader TAS system
`and the claimed inventions, the company -- and this is shown in slide 22.
`The company filed 17 patent applications on the same day as the application
`that eventually became the '916 patent, and each one of these applications
`dealt with some aspect of the TAS project.
`So I earlier stated that there were two findings that could resolve
`most of the issues in the 1885 and the 1887, the first being the lack of proof
`of conception, obviously diligence as well. The second issue, though,
`pertains to the public availability of Klein and Sanders. Both of these
`references have a publication date prior to the priority date of the '916 and
`the '810 patents.
`So what are Klein and Sanders? So both Klein and Sanders were
`submissions that were made to the 802.16 working group of IEEE, which
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 15
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`was formed to develop a wireless communication standard that ended up
`being called WiMAX.
`If we turn to slide 26. This shows a timeline with respect to the
`'916 and the '810 priority date, the alleged conception date, but it also shows
`the evidence proving an early 2000 publication of Klein and Sanders. Klein
`and Sanders both include an IEEE cover sheet that lists among other things
`the date that the references were submitted for consideration of the 802.16
`working group.
`The date on Klein is January 18 and the date listed as being
`submitted for -- I'm sorry, I misspoke. The Sanders publication indicates
`that it was submitted on 12/24/99 and the Klein submission was submitted
`on January 5, 2000. So that's kind of a starting point. We actually presented
`testimony from Dr. Hall-Ellis who's a librarian. She testified that both Klein
`and Sanders were available through the IEEE Standards Catalog and that the
`catalog was published in spring 2000.
`So after we submitted that and there was institution, the Patent
`Owner filed an objection as to the admissibility of the Hall-Ellis declaration.
`In response to that, we submitted supplemental evidence, which was a
`declaration and a web page from the Internet archive that shows an agenda
`for the Session 5 meeting of the 802.16 working group.
`This web page was actually captured by the Internet archive, which
`is also known as the Wayback machine, on February 29, 2000. It shows that
`Klein was to be presented on Wednesday and Sanders was to be presented
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 16
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`on Thursday of the week that involved the Session 5. The captured web
`page also included links to the submissions that were to be considered,
`including Klein and Sanders.
`Further support, though, for the public availability of Klein and
`Sanders comes from Mr. Struhsaker himself, though. Mr. Struhsaker's
`testimony indisputably proves that Klein and Sanders were available in early
`2000. So I want to talk a little bit about what Mr. Struhsaker said and how
`he was involved with the 802.16 working group.
`MR. McCAULLEY: Your Honors, I don't want to object, but this
`is all subject to our Motion to Strike and I don't want there to be any
`argument that I'm not objecting. I've waived all of our objections as to that
`and in our Motion to Strike all the evidence and all the things that Mr. Hilton
`is referring to and I'm very sorry for interrupting, I apologize.
`MR. HILTON: So Mr. Struhsaker was a vice chair of the 802.16
`working group at the time that Klein and Sanders were submitted to the
`group. In general, the people that attended the 802.16 working group were
`employees of various companies in the industry, and they'd get together and
`consider submissions and documents related to the proposed standard.
`These people were often leaders in the industry, and Mr.
`Struhsaker testified that submissions to this working group were made
`without any obligation or reservation of confidentiality. Before each
`meeting, working group members would distribute any submissions or
`proposals that they intended to discuss at the meeting. Mr. Struhsaker
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 17
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`further testified that all members of the working group, including himself,
`received copies of every submission that was submitted by working group
`members.
`During his deposition, Mr. Struhsaker testified that he attended the
`Session 5 meeting. He actually -- he remembered it. He attended it and it
`was January 10 through 14 of 2000, and he further testified that he
`remembered receiving and reviewing Klein as a working group submission
`in early 2000.
`Now, Mr. Struhsaker did not specifically recall the Sanders
`document, but he did acknowledge that Mr. Sanders was a part of the
`working group and, again, he confirmed that he and other members would
`have received a copy of any submissions that were submitted to the working
`group. One of the most important items, though, of Mr. Struhsaker's
`testimony is his affirmation, though, that 802.16 meetings were open to
`anyone and there was no obligation of confidentiality or restrictions about
`sharing submissions with others outside the group.
`So a final piece of evidence that we show on this timeline on slide
`26 is the declaration of Christina Boyce. Ms. Boyce is a director at IEEE,
`and she indicated that the earliest record IEEE has of uploading both Klein
`and Sanders to the working group website is November 21, 2000. While this
`is later in the year, it still predates the earliest priority date of the '916 and
`the '810.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 18
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`All of these pieces of evidence point to the same thing, and that is
`the public availability of Klein and Sanders through IEEE and the working
`group in early 2000 or at least as early as November 2000.
`JUDGE DESHPANDE: Counsel, your opposing counsel sort of
`raised concerns that this document was not included in the IEEE catalog.
`When you presented -- did you present any of your witnesses this
`information, was there any way to establish whether this document was --
`why it was not in the catalog?
`MR. HILTON: So she -- Dr. Hall-Ellis submitted her declaration.
`We did not provide rebuttal testimony as to what they submitted saying that
`it wasn't in the catalog. You know, we still stand behind the fact that she
`submitted this declaration and that she testified as to the availability of the
`Standards Catalog and that it would have been available through the catalog,
`but we did not provide any supplemental -- I'm sorry, we did -- what we
`provided was supplemental evidence with respect to the Wayback machine
`and the Internet archive data to further back up the claim that this was
`available in early 2000.
`JUDGE DESHPANDE: Well, was this evidence, I think Patent
`Owner has uploaded as Exhibit 2452? Was this presented to Struhsaker or
`Christina Boyce?
`MR. HILTON: Which, 2452 --
`JUDGE DESHPANDE: That's the 2000 IEEE catalog.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`
`
`
` 19
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`
`MR. HILTON: That was not presented to -- it was not presented to
`Ms. Boyce. I'm not sure about Mr. Struhsaker.
`JUDGE DESHPANDE: Okay.
`MR. HILTON: But, you know, again with respect to Mr.
`Struhsaker, our deposition with him was mainly meant to -- was meant to,
`you know, dig deeper into this issue that he was actually a part of the
`working group that both of these references were submitted to. And he was
`not only a part of it, he was vice chair of it and he specifically remembered
`one of the references from early 2000, which supports both the date that's on
`the reference itself, the date of submission, but it also supports the Wayback
`machine capture of the web page that says that those particular submissions
`were discussed at the Session 5 meeting.
`So everything that Mr. Struhsaker said really corroborated, you
`know, an early 2000 availability for both of these references. So this is even
`-- even if the declaration of Dr. Hall-Ellis is, you know, not taken to proof
`the publication dates here, this other evidence that we submitted as
`supplemental evidence clearly shows that it was available in early 2000.
`So since the Patent Owner never disputed the actual teachings of
`Klein and Sanders, their public availability results in Petitioner prevailing on
`the entirety of Ground 2 in the 1885 IPR and the entirety of Grounds 2
`through 4 in the 1887 IPR.
`Just to summarize before I turn to the next point of discussion, so
`with respect to conception and diligence not being shown and the Klein and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
`
`
` 20
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`IPR2017-01889 (Patent 7,230,931 B2)
`
`Sanders references being shown to be publicly available, in summary, the
`1887 IPR is completely resolved and would be resolved in favor of
`Petitioner prevailing with respect to all grounds since the Patent Owner is
`unable to swear behind Ahy and Klein and Sanders were available.
`The 1885 is almost completely resolved. There's two remaining
`issues in one of the grounds, and that is Claims 8 and 16 and the disclosure
`by Ahy, so I'd like to turn to that real quickly.
`JUDGE
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
