Trials@uspto.gov
`571.272.7822
`
` Paper No. 7
` Entered: November 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00973
`Patent 7,075,917 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2019-00973
`Patent 7,075,917 B2
`
`
`I. INTRODUCTION
`Microsoft Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–3, 9, and 10 of U.S. Patent No. 7,075,917 B2 (Ex. 1001,
`“the ’917 patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an
`inter partes review is authorized by statute when “the information presented
`in the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration
`of the Petition and Preliminary Response, we institute review of claims 1–3,
`9, and 10 of the ’917 patent.
`
`A. Related Matters
`The parties indicate that the ’917 patent is the subject of several court
`proceedings, including Uniloc 2017 LLC v. Microsoft Corporation, 8:18-cv-
`002053 (C.D. Cal.), filed November 17, 2018. Pet. vii; Paper 3, 2; Prelim.
`Resp. 14–15; see also Ex. 1011.1 The ’917 patent also was the subject of
`IPR2019-00259, where a decision to not institute inter partes review was
`rendered. Apple Inc. v. Uniloc 2017 LLC, IPR2019-00259 (“IPR259”),
`Paper 7 (PTAB June 27, 2019)(Decision Denying Institution)(“IPR259
`Dec.”). In IPR259, Apple Incorporated (“Apple”), filed a petition asserting
`that claims 1–3, 9, and 10 of the ’917 patent are unpatentable under
`
`
`1 Petitioner further lists case Uniloc 2017 LLC v. Microsoft Corporation,
`8:18-cv-001279 (C.D. Cal.), filed July 24, 2018, but Patent Owner does not.
`Pet. vii; Prelim. Resp. 14–15. We assume that case was dismissed. The
`parties are reminded that within 21 days of a change of information listed in
`mandatory notices, to update such information. 42 C.F.R. § 42.8.
`
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`IPR2019-00973
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`35 U.S.C. § 103(a) as obvious over Decker2 and Abrol.3 In the IPR259
`proceeding, we did not institute review because Apple failed to show that a
`claim limitation present in all of the challenged claims was met by Decker.
`Id. at 7–12.
`
`B. The ’917 Patent
`The Specification of the ’917 patent describes a wireless network
`comprising a radio network controller (RNC) and a plurality of assigned
`terminals, which are each provided for exchanging data and which form a
`receiving and/or transmitting side. Ex. 1001, 1:6–9. The ’917 patent
`describes data transmitted using the hybrid Automatic Repeat Request
`(ARQ) method. Id. at 1:10–15. The ’917 patent explains that an object of
`the invention is “to provide a wireless network in which error-affected data
`repeatedly to be transmitted . . . are buffered for a shorter period of time on
`average.” Ex. 1001, 1:64–67. This is done by storing abbreviated sequence
`numbers whose length depends on the maximum number of coded transport
`blocks to be stored, and transmitting coded transport blocks that include a
`packet data unit and an assigned abbreviated sequence number. Id. at 2:8–
`16. The use of abbreviated sequence numbers reduces the extent of
`information that is required to be additionally transmitted for managing
`transport blocks and packet data units and simplifies the assignment of the
`received acknowledge command to the stored transport blocks. Id. at 2:45–
`49. The ’917 patent further describes that a receiving physical layer checks
`whether a coded transport block has been transmitted correctly, and, if so, a
`positive acknowledge signal ACK is sent to the sending physical layer over
`
`
`2 US 5,946,320, issued Aug. 31, 1999 (“Decker”).
`3 US 6,507,582 B1, issued Jan. 14, 2003 (Ex. 1007, “Abrol”).
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`Patent 7,075,917 B2
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`a back channel. Id. at 6:9–13. If the coded transport block has not been
`received error-free, a negative acknowledge command NACK is sent to the
`sending physical layer. Id. at 6:13–15.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–3, 9, and 10 of the ’917 patent. Claims
`1, 9, and 10 are independent claims, and claims 2 and 3 depend directly from
`claim 1. Claim 1 is reproduced below, which includes changes made per a
`Certificate of Correction.
`1. A wireless network comprising a radio network
`controller and a plurality of assigned terminals, which are each
`provided for exchanging data according to the hybrid ARQ
`method and which form a receiving and/or transmitting side, in
`which a physical layer of a transmitting side is arranged for
`storing coded transport blocks in a memory, which blocks
`contain at least a packet data unit which is delivered by an
`assigned radio link control layer and can be identified by a packet
`data unit sequence number,
`storing abbreviated sequence numbers whose length
`depends on the maximum number of coded transport blocks to
`be stored and which can be shown unambiguously in a packet
`data unit sequence number, and for
`transmitting coded transport blocks having at least an
`assigned abbreviated sequence number and
`a physical layer of a receiving side is provided for testing
`the correct reception of the coded transport block and for sending
`a positive acknowledge command to the transmitting side over a
`back channel when there is correct reception and a negative
`acknowledge command when there is error-affected reception.
`Ex. 1001, 7:62–8:17, 10.
`
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`Patent 7,075,917 B2
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`D. Asserted Ground of Unpatentability
`Petitioner asserts that claims 1–3, 9, and 10 are unpatentable based on
`the following ground (Pet. 3):
`
`Claims Challenged
` 1–3, 9, and 10
`
`35 U.S.C. §
` 103(a)4
`
`References
` TR25.8255 and Abrol
`
`
`
`II. DISCUSSION
`
`A. 35 U.S.C. § 314(a) and 35 U.S.C. § 325(d) Contentions
`
`Patent Owner argues that the factors presented in General Plastic Co.
`v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6,
`2017) (precedential as to Section II.B.4.i), “militate in favor of the Board
`exercising its discretion under 35 U.S.C. 314(a) and 37 C.F.R. 42.108(a) to
`deny institution.” Prelim. Resp. 16. Patent Owner also argues that we
`should exercise discretion under 35 U.S.C. § 325(d) to deny institution “on
`the grounds that the cited prior art and the arguments overlap with the cited
`prior art and arguments already presented to the Board in IPR2019-00259.”
`Id. at 18.
`1. 35 U.S.C. § 314(a)
`Institution of an inter partes review may be denied as a matter of
`discretion. See 35 U.S.C. § 314(a). General Plastic sets forth seven factors
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’917
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`5 3G TR 25.835 V1.0.0 (2000-09) – 3rd Generation Partnership Project;
`Technical Specification Group Radio Access Network; Report on Hybrid
`ARQ Type II/III (Release 2000) (Ex. 1005, “TR25.835”).
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`for us to consider when determining whether to exercise that discretion.
`Under the first factor, we consider whether the same petitioner previously
`filed a petition directed to the same claims of the same patent. When
`different petitioners challenge the same claims of the same patent, we also
`consider the nature of any relationship between those petitioners when
`weighing the General Plastic factors.  Valve Corporation v. Electronic
`Scripting Products, Inc., Case IPR2019-00062, Paper 11, at 9 (PTAB
`Apr. 2, 2019) (Institution Decision) (precedential). In particular, in Valve,
`the first and second petitioners (HTC and Valve) were co-defendants in
`litigation and accused of infringing the same patent based on “HTC’s . . .
`devices that incorporate technology licensed from Valve.” Valve, Paper
`11, at 10.
`Patent Owner does not argue, nor do we find, there to be any
`relationship between Apple and Petitioner (Microsoft) insofar as this and the
`IPR259 proceedings are concerned. According to the record before us,
`Apple has not been sued for patent infringement of the involved patent,
`while Petitioner (Microsoft) has. Pet. vii; Paper 3, 2; Prelim. Resp. 14–15.
`Although the same claims 1–3, 9, and 10 are challenged here as were
`challenged in IPR259, factor one weighs against discretionary denial
`because the facts here are distinguishable from those set forth in Valve in
`that here there is no apparent relationship between Apple and Petitioner.
`Prelim. Resp. 17–18.
`The third factor of General Plastic is whether at the time of filing of
`the second petition the petitioner already received the patent owner’s
`preliminary response to the first petition or received the Board’s decision on
`whether to institute review in the first petition. Id. Here, as recognized by
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`Patent Owner, the Petition was filed prior to the due date of the preliminary
`response in IPR259. Prelim. Resp. 17. Petitioner gained no benefit from
`either the preliminary response or our decision in IPR259. Accordingly,
`factor three weighs against discretionary denial.
`Under General Plastic factor two, we consider whether at the time of
`filing of the first petition the petitioner knew of the prior art asserted in the
`second petition or should have known of it. Gen. Plastic, Paper 19, at 16.
`General Plastic factors four and five pertain to “the length of time that
`elapsed between the time the petitioner learned of the prior art asserted in the
`second petition and the filing of the second petition” and “whether the
`petitioner provides adequate explanation for the time elapsed between the
`filings of multiple petitions directed to the same claims of the same patent.”
`Id. Patent Owner argues that Petitioner provides no indication as to when
`the Petitioner became aware of TR25.835. Prelim. Resp. 17. Patent
`Owner also argues that Petitioner has provided no explanation for the five-
`month delay between the filing of the IPR259 petition and the filing of the
`present Petition. Id.
`Here, even if Petitioner knew about Abrol from IPR259, there is no
`indication in the record that Petitioner knew about the other prior art
`(TR25.835) or could have found it quickly. Moreover, there is nothing in
`the record before us that tends to show that Petitioner’s timing of the
`filing of its Petition provided Petitioner any advantage. Indeed, Apple’s
`petition, filed November 12, 2018, was filed before Patent Owner filed its
`patent infringement suit against Petitioner (Microsoft) on November 17,
`2018. Thus, it is reasonable that Petitioner waited until after the filing of the
`lawsuit against it, including waiting until amended complaints were due, and
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`to coordinate the district court case with the filing of Petitioner’s Petition.
`We find nothing suspicious, and Patent Owner has not explained otherwise,
`of Petitioner’s waiting approximately five months to file the Petition here.
`The facts here are distinguishable from those in Valve, where the
`petitioners there were co-defendants in the district court and were accused
`of infringement based on one petitioner’s device that incorporated
`technology licensed from the other petitioner. In Valve, the panel there
`determined there was no satisfactory explanation for the second petitioner
`having waited five months to file a petition due to the relationship
`between the parties and where Valve, the second petitioner, gained benefit
`of the preliminary response and decision on institution filed in the first
`case. Here, there is no relationship between Apple and Petitioner, and the
`timing of the filing of the Petition here has not been shown to provide any
`benefit to Petitioner. Accordingly, factors two, four, and five weigh against
`discretionary denial.
`Under the sixth and seventh General Plastic factors, we consider “the
`finite resources of the Board” and “the requirement under 35 U.S.C. §
`316(a)(11) to issue a final determination not later than 1 year after the date
`on which the Director notices institution of review.” General Plastic, slip
`op. at 16. Here, we determine that any burden on the Board of reviewing a
`second Petition challenging a patent previously challenged is outweighed by
`Petitioner’s desire to challenge Patent Owner’s patent, given that Patent
`Owner has filed a lawsuit against Petitioner for patent infringement. The
`facts here are distinguishable from Valve, because petitioner Valve waited
`until after institution of the earlier petition to file three additional petitions.
`Here, Petitioner gained no advantage by filing its petition when it did,
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`because the Petition was filed prior to the due date of the preliminary
`response. Lastly, there is no issue before us, or presented by either party,
`that would compromise our ability to issue a final determination not later
`than one year after notice of institution of review. Accordingly, factors six
`and seven weigh against discretionary denial.
`In summary, the record before us weighs against exercising our
`discretion under § 314(a) to deny institution.
`2. 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), “the Director may take into account
`whether . . . the same or substantially the same prior art or arguments were
`previously presented to the Office.” Petitioner argues that the Petition is not
`redundant to the one filed in IPR259. Pet. 4. In particular, Petitioner argues
`that although Abrol was relied on in IPR259, Petitioner presents Abrol in a
`different light and relies on other art, such as TR25.835, that was not cited in
`IPR259. Id. at 5. Petitioner further argues that although a different version
`of TR25.835 (Ex. 1006) was presented to the Office during prosecution of
`the application that matured into the ’917 patent, that earlier version “lacked
`the critical disclosures teaching use of the physical layer as a back-channel
`for sending ARQ messages.” Id. at 4.6
`Patent Owner argues that the Petition fails to explain how the newly
`cited reference TR25.835 differs from Decker relied upon in the IPR259
`petition, and how the present Petition differs in its analysis of Abrol. Prelim.
`Resp. 18. As such, Patent Owner argues, the Petitioner provides “no
`justification for a seemingly redundant petition based on one identical
`
`6 No prior art rejections were made. In the first Office action, the Examiner
`indicated that claims 1–3, 9 and 10 contained allowable subject matter. Ex.
`1002, 61.
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`reference, and a second reference having no identified differences from
`Decker.” Id.7
`We are not persuaded, based on the facts before us, to deny the
`Petition under 35 U.S.C. § 325(d). In making our determination, we have
`considered the factors set forth in Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017)
`(precedential as to Section III.C.5, first paragraph).8   
`In IPR259, Abrol was relied on as a secondary reference in
`combination with Decker as the main reference. We agree with Petitioner
`that it presents Abrol with different arguments, because Abrol is combined
`with a different primary reference, T25.835, along with a declaration from a
`different witness than in IPR259, explaining why it would have been
`obvious to a person having ordinary skill in the art to have combined Abrol
`with T25.835. Therefore, the combination of T25.835 and Abrol, having
`never been considered previously, presents Abrol in a new and different
`
`
`7 In support of its arguments, Patent Owner cites to Unified Patents, Inc. v.
`Personal Web Tech., LLC, IPR2014-00702, Paper 13 (July 24, 2014)
`(Institution Decision), where a Board panel determined to exercise discretion
`to deny a petition under 35 U.S.C. § 325(d). Unified Patents is a non-
`precedential Board decision, which we are not bound to follow. In any
`event, the facts in that case are different from those before us. In Unified
`Patents, there were three prior third party petitions, along with a
`reexamination. Denial was based on those proceedings not being denied,
`with one final decision being appealed to the United States Federal Circuit.
`Here, IPR259 resulted in a denial and was only one prior proceeding.
`8 Becton, Dickinson lists six factors to be considered when determining
`whether to exercise discretion to deny institute of inter partes review under
`35 U.S.C. § 325(d). Id. Our discussion focuses on factors (a), (b), and (d) as
`these are the only factors Petitioner and Patent Owner discuss. Accordingly,
`we weigh factors (c), (e), and (f) as neutral in determining whether to
`exercise our discretion to deny institution of inter partes review.
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`light as Petitioner contends. Pet. 5. Moreover, and as stated above, we did
`not institute review in IPR259, because Apple failed to show that a claim
`limitation present in all of the challenged claims was met by Decker.
`IPR259 Dec. 7–12. Based on the present record before us, and as explained
`below, Petitioner has shown how T25.835 meets that same limitation. Thus,
`Decker and T25.835 are distinguishable.
`For all of the above reasons, we decline to deny the Petition under
`35 U.S.C. § 325(d).
`
`B. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37
`C.F.R. § 42.100(b) (2019)). The claim construction standard includes
`construing claims in accordance with the ordinary and customary meaning
`of such claims as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`For purposes of this decision, we need not expressly construe any
`claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
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`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`Principles of Law
`C.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;9 and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol
`Petitioner contends claims 1–3, 9, and 10 are unpatentable under
`35 U.S.C. § 103(a) as obvious over TR25.825 and Abrol. Pet. 29–68. In
`
`
`9 Relying on the testimony of Dr. Harry V. Bims, Petitioner offers an
`assessment as to the level of skill in the art at the time of the ’917 patent.
`Pet. 27–28 (citing Ex. 1003 ¶ 27). Although Patent Owner faults Petitioner
`for “fail[ing] to link” Petitioner’s discussion of the background section of the
`’917 patent to Petitioner’s proposed assessment, Patent Owner does not
`propose an alternative assessment. Prelim. Resp. 15. To the extent
`necessary, and for purposes of this Decision, we accept the assessment
`offered by Petitioner as it is consistent with the ’917 patent and the asserted
`prior art.
`
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`support of its showing, Petitioner relies upon the declaration of Dr. Bims.
`Id. (citing Ex. 1003).
`
`1. TR25.835 as Prior Art and What TR25.835 Describes
`TR25.835 as Prior Art
`Patent Owner challenges Petitioner’s showing that TR25.835 is prior
`art. Prelim. Resp. 25–31. We consider that issue first.
`Whether a document qualifies as a printed publication under
`35 U.S.C. § 102 is a question of law based on underlying findings of fact. In
`re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014)
`(citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)). The Federal Circuit
`“has interpreted § 102 broadly, explaining that even relatively obscure
`documents qualify as prior art so long as the public has a means of accessing
`them.” Id. (citing Hall, 781 F.2d at 899).
`Our leading case on public accessibility is In re Hall, 781
`F.2d 897 (Fed. Cir. 1986). In Hall we concluded that “a single
`cataloged thesis in one university library” constitutes “sufficient
`accessibility to those interested in the art exercising reasonable
`diligence.” Id. at 900. Thereafter, in Constant v. Advanced
`Micro–Devices, Inc., we explained that “[a]ccessibility goes to
`the issue of whether interested members of the relevant public
`could obtain the information if they wanted to.” 848 F.2d 1560,
`1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved,
`there is no requirement to show that particular members of the
`public actually received the information.” Id.
`Enhanced Sec. Research, LLC, 739 F.3d at 1354 (alterations in
`original). The determination of whether a document is a “printed
`publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the
`facts and circumstances surrounding its disclosure to members of the public.
`In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
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`Petitioner contends that TR25.835 was “published by 3GPP in 2000
`and publicly available on the 3GPP file server no later than September 13,
`2000,” and, thus qualifies as prior art “under at least Sections 102(a) and
`(b).” Pet. 10 (citing Ex. 1004 ¶¶ 12–24; Ex. 1005) (footnote omitted).
`TR25.835 is a technical report bearing a copyright date of 2000.
`Ex. 1005, 2–3. The front cover of the document bears the indicia that “[t]he
`present document has been developed within the 3rd Generation Partnership
`Project (3 GPPTM).” Id. at 2. In support of Petitioner’s contention that
`TR25.835 is prior art, Petitioner relies on the testimony of Mr. Friedhelm
`Rodermund (Ex. 1004).
`According to Mr. Rodermund, he worked as a project manager at the
`European Telecommunications Standards Institute (“ETSI”) from June 1998
`to December 2004; worked for 3GPP as part of his work at ETSI; and has
`personal knowledge of 3GPP’s standard business and records keeping
`practices during the same timeframe. Ex. 1004 ¶¶ 2, 6, 13. Mr. Rodermund
`avers that 3GPP publishes technical specifications, proposals, reports, and
`other documents related to the development of cellular telecommunications
`standards, and that such things are published for the purpose of
`establishment of industry standards. Id. ¶ 14. Mr. Rodermund further avers
`that at least as early as December 1998, draft (“T-docs”) and final versions
`of 3GPP documents were, and continue to be, made publicly available by
`3GPP, from an FTP server associated with the 3GPP website. Id. ¶¶ 15, 17.
`According to Mr. Rodermund, at least by December 1998, 3GPP’s FTP
`server was freely accessible to the general public with no login, password, or
`membership requirement. Id. ¶ 18. He further avers that by 1999, at least
`100 companies were members of 3GPP (such as Samsung, Sony, Nokia, and
`Bosch), who regularly delegated individuals to participate in 3GPP
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`meetings. Id. ¶ 19. Mr. Rodermund testifies that pursuant to 3GPP’s
`standard business practices, 3GPP working groups “sent emails notifying
`these individuals as soon as new or additional documents had been uploaded
`to 3GPP’s ftp server.” Id. Based on his testimony, “[b]y June 1999, 3GPP’s
`ftp server was well-known to persons in the cellular telecommunications
`industry as a source of public information regarding industry standards and
`technological advances.” Id. ¶ 20.
`Mr. Rodermund testifies that “Ex. 1005” is a true and correct copy of
`version 1.0.0 of technical report 3GPP TR 25.835, “which was published
`and freely available on 3GPP’s ftp server by September 13, 2000.” Id. ¶ 25.
`He further testifies that “[t]he document was presented as T-doc RP-000416
`at the 3GPP TSG RAN#9 plenary meeting” held September 20–22, 2000 in
`Hawaii, “attended by 140 delegates from numerous companies.” Id.
`Mr. Rodermund’s testimony, at this juncture of the proceeding,
`weighs in support of Petitioner’s assertions that TR25.835 qualifies as prior
`under 35 U.S.C. § 102(a) and 35 U.S.C. § 102(b). Despite Patent Owner’s
`arguments, which we address below, we are persuaded, at this juncture of
`the proceeding, that Petitioner has demonstrated a reasonable likelihood it
`will prevail in showing that TR25.835 was publicly available by September
`13, 2000, such that a person having ordinary skill in the art at the time of the
`invention would have been able to retrieve TR25.835.
`Patent Owner argues that Petitioner fails to identify under which pre-
`AIA statutory provision (35 U.S.C. § 102(a) or 35 U.S.C. § 102(b))
`TR25.835 qualifies as prior art. Prelim. Resp. 26. We disagree, as the
`Petition indicates that TR25.835 qualifies as prior art under both 35 U.S.C.
`§ 102(a) and 35 U.S.C. § 102(b). Pet. 10. Patent Owner further argues that
`the Petition does not provide an analysis and explanation regarding why
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`IPR2019-00973
`Patent 7,075,917 B2
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`TR25.835 qualifies as prior art. Prelim. Resp. 26–29. We are not persuaded
`by Patent Owner’s argument. Rather, we determine that Mr. Rodermund’s
`declaration, along with the indicia on TR25.835 and the arguments provided
`in the Petition, Petitioner has shown a reasonable likelihood that it will
`prevail in demonstrating that TR25.835 qualifies as prior art.
`We disagree with Patent Owner that “Rodermund does not establish
`that TR25.835 was publicly accessible.” Id. at 30–31. Patent Owner argues
`that the file name of “RP-000416.pdf,” does not represent meaningful
`indexing that would be helpful for a person having ordinary skill in the art
`who had access to the 3GPP file server to identify the document. Id.
`Mr. Rodermund testifies that pursuant to 3GPP’s standard business
`practices, 3GPP working groups “sent emails notifying these individuals
`[members of 3GPP] as soon as new or additional documents had been
`uploaded to 3GPP’s ftp server.” Ex. 1004 ¶ 19. Mr. Rodermund identifies
`members of 3GPP as companies such as Samsung, Sony, Nokia, and Bosch
`and that “[b]y June 1999, 3GPP’s ftp server was well-known to persons in
`the cellular telecommunications industry as a source of public information
`regarding industry standards and technological advances.” Id. ¶ 20. At this
`juncture of the proceeding, Patent Owner does not address these averments.
`We determine that Petitioner has established a reasonable likelihood that
`interested persons and those skilled in the art would have been able to access
`TR25.835, at least because notification of such document was made by way
`of email to interested persons. Ex. 1004 ¶ 19.
`Accordingly, for all of these reasons and those discussed above, we
`are persuaded, at this stage of the proceeding, that Petitioner has
`demonstrated a reasonable likelihood that TR25.835 was publicly available
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`as prior art by September 13, 2000, and, therefore, qualifies as prior art
`under 35 U.S.C. § 102(a) or 35 U.S.C. § 102(b).
`What TR25.835 Describes
`TR25.835 is a technical report describing “the results of the work on
`the work item ‘Hybrid ARQ Type II/III’.” Ex. 1005, 7. TR25.835 describes
`two alternative approaches to realize hybrid ARQ. Id. at 9. The first option
`“uses hybrid ARQ type II/III retransmissions at RLC layer,” and the second
`option “uses hybrid ARQ type II/III retransmissions at Layer 1” that “adds
`fast hybrid ARQ type II/III functionality,” e.g., fast HARQ or FHARQ. Id.
`at 9, 25–26.
`TR25.835 describes that to perform the HARQ operation, the physical
`layer requires additional side information, e.g., sequence number and
`redundancy version. Id. at 26. “The selection of these parameters should be
`under the control of MAC but the actual parameter values are generated at
`L1.” Id. The physical layer can encode the data and side information
`separately, and map them on one, or possibly even different physical
`channels. The receiver buffers and recombines the data. Id.
`
`Figure 2 of TR25.835 is illustrated below.
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`Figure 2 of TR25.835 shows a physical channel. The dotted lines
`illustrate the transport of side information. Id. at 27.
`
`2. Abrol
`Abrol discloses a radio link protocol (RLP) that enables a
`transmission of a featureless byte stream. Ex. 1005, 3:24–26. According to
`Abrol, a shortened RLP sequence number is used, which is equal to the byte
`sequence number of the first data byte in the RLP frame divided by the page
`size. Id. at 6:52–55. In another embodiment, the most significant bits are
`omitted from the byte sequence number when such omission causes no
`ambiguity about which data is contained in the data portion of the RLP
`frame. Id. at 6:59–67.
`
`3. Discussion
`Claim 1 recites “[a] wireless network comprising a radio network
`controller and a plurality of assigned terminals, which are each provided for
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`exchanging data according to the hybrid ARQ method and which form a
`receiving and/or transmitting side, in which a physical layer of a transmitting
`side is arranged for.” Petitioner contends that the ’917 patent “admits that
`such a wireless network is disclosed in the earlier August 2000 version” of
`TR25.835. Pet. 30–31 (citing Ex. 1006; Ex. 1001, 1:5–14). Petitioner
`further contends that chapters 1–6, 8, and 9 of TR25.835 contain all material
`aspects of chapters 1–8 of the earlier version (Ex. 1006) “admitted by the
`patent to describe the network recited in the preamble.” Id. at 31 (citing
`portions from Ex. 1005 and Ex. 1006 (“the earlier version”); Ex. 1003 ¶ 60).
`Petitioner separately sets forth its contentions of how TR25.835 teaches a
`network controller, i.e., RNCs, along with transmitters and receivers that
`exchange data according to the hybrid ARQ method. Id. at 31–32 (citing
`Ex. 1005, 7, 8–11, 26–27, Tables 1–2, Figure 1; Ex. 1003 ¶ 61). Petitioner
`further contends that TR25.835 discloses a physical layer on both the
`transmitting/receiving sides depicted in Figure 1 as “L1.” Id. at 32 (citing
`Ex. 1005, 11, Figure 1).
`Claim 1 further recites “storing coded transport blocks in a memory,
`which blocks contain at least a packet data unit which is delivered by an
`assigned radio link control layer and can be identified by a packet data unit
`sequence number.” Peti