UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTOROLA MOBILITY LLC
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`IPR2020-00038
`
`PATENT 6,868,079
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`
`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................. 1
`
`I.
`
`II. THE ’079 PATENT ............................................................................................... 2
`
`A. PROSECUTION HISTORY OF THE ‘079 PATENT .................................... 4
`
`III. RELATED PROCEEDINGS ................................................................................. 6
`
`IV. THE PETITIONER HAS FAILED TO SHOW THAT THE ASSERTED ART IS
`NOT CUMULATIVE OF THE NUMEROUS REFERENCES RELIED ON BY
`THE EXAMINER DURING THE EXTENSIVE PROSECUTION ........................... 7
`
`V. CLAIM 17 OF THE ‘079 PATENT IS ALREADY THE SUBJECT OF INTER
`PARTES REVIEW, AND THIS ADDITIONAL PETITION SHOULD BE DENIED
`INSTITUTION UNDER 35 U.S.C. 314 OR 35 U.S.C. § 325(D) ............................. 10
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD OF
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM .................................. 14
`
`A. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 15
`
`B. CLAIM CONSTRUCTION ........................................................................... 16
`
`1. Claim Construction Standard ...................................................................... 16
`
`2.
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`“acknowledgment” ..................................................................................... 16
`
`C. Merakos (via Kay) Does Not Disclose “wherein the at least one of the
`plurality of respective secondary stations retransmits the same respective request
`in consecutive allocated time slots without waiting for an acknowledgement until
`said acknowledgement is received from the primary station” (Grounds 1 and 2) . 17
`
`D. The Petition Fails to Render Obvious “wherein the primary station
`determines whether a request for services has been transmitted by the at least one
`of the plurality of respective secondary stations by determining whether a signal
`strength of the respective transmitted request of the at least one of the plurality of
`respective secondary stations exceeds a threshold value.” (Grounds 1 and 2) ...... 19
`
`1. The Petition fails to establish that a POSA Would Be Likely to Combine
`Merakos and Kay with Alamouti (Ground 1) .................................................... 19
`
`2. Borth fails to disclose “wherein the primary station determines whether a
`request for services has been transmitted by the at least one of the plurality of
`respective secondary stations by determining whether a signal strength of the
`respective transmitted request of the at least one of the plurality of respective
`secondary stations exceeds a threshold value.” (Ground 2) ............................... 24
`
`VII. CONCLUSION .............................................................................................. 27
`
`ii
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`CERTIFICATE OF COMPLIANCE ............................................................................ i
`
`CERTIFICATE OF SERVICE ..................................................................................... 2
`
`
`
`iii
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Preliminary
`
`Response to Petition IPR2020-00038 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 6,868,079 (“the ’079 patent” or “EX1001”) filed by
`
`Motorola Mobility LLC (“Petitioner”). The instant Petition is procedurally and
`
`substantively defective for at least the reasons set forth herein.
`
`As discussed in detail below in Section VI.C, the sole claim challenged here,
`
`claim 17, provides for an improvement in wireless communication between a base
`
`station and secondary stations, and in particular in connection with requests from
`
`secondary stations for allocation of additional slots to send data to the base station.
`
`In the method of claim 17, a secondary station, after sending to the base station a
`
`request for an allocation of additional time slots, rather than waiting for an
`
`acknowledgment, re-transmits the request for the allocation in consecutive allocated
`
`time slots without waiting for an acknowledgement. The Petitioner relies, as to both
`
`Ground 1 and Ground 2, on the Kay reference for this teaching. Kay does not teach
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`re-transmission in consecutive allocated slots, however, and insufficient reason is
`
`given for modifying Merakos to re-transmit in consecutive allocated slots.
`
`Accordingly, the prior art cited by the Petitioner fails to provide a basis for institution
`
`of Inter Partes Review here, and for this reason, as well as the other reasons set forth
`
`below, institution should be denied.
`
`1
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`II. THE ’079 PATENT
`
`The ’079 patent is titled “Radio communication system with request re-
`
`transmission until acknowledged.” The ʼ079 patent issued March 15, 2005, from
`
`U.S. Patent Application No. 09/455,124 filed December 6, 1999, which claims
`
`priority to United Kingdom Patent Application No. GB9827182, filed December 10,
`
`1998.
`
`The inventors of the ’079 patent observed that in radio communication systems
`
`at the time, it was generally required to be able to exchange signaling messages
`
`between a Mobile Station (MS) and a Base Station (BS). Downlink signaling (from
`
`BS to MS) was usually realized by using a physical broadcast channel of the BS to
`
`address any MS in its coverage area. Since only one transmitter (the BS) uses this
`
`broadcast channel there is no access problem. EX1001, 1:17-23.
`
`However, uplink signaling (from MS to BS) required more detailed
`
`considerations. If the MS already had an uplink channel assigned to it, for voice or
`
`data services, this signaling could be achieved by piggybacking, in which the
`
`signaling messages are attached to data packets being sent from the MS to the BS.
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`But if there was no uplink channel assigned to the MS, piggybacking is not possible.
`
`In this case it would be desirable to have a fast uplink signaling mechanism be
`
`available for the establishment, or re-establishment, of a new uplink channel.
`
`EX1001, 1:24-33.
`
`2
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`In conventional systems at the time, for example those operating in accordance
`
`with the Global System for Mobile communication (GSM) standard, fast uplink
`
`signaling was enabled by the provision of a random-access channel using a slotted
`
`ALOHA or similar protocol. However, such a scheme works satisfactorily only with a
`
`low traffic load and was not believed to be capable of handling the requirements
`
`imposed by third-generation telecommunications standards such as UMTS. EX1001,
`
`1:34-41.
`
`According to the invention of the ’079 Patent, a system and method is provided
`
`to improve the efficiency of the method by which a MS requests resources from a BS.
`
`According to one aspect of the invention there is provided a method of operating a
`
`radio communication system, comprising a secondary station transmitting a request
`
`for resources to a primary station in a time slot allocated to the secondary station,
`
`characterized by the secondary station re-transmitting the same request in consecutive
`
`allocated
`
`time slots, without waiting for an acknowledgment, until an
`
`acknowledgement is received from the primary station. EX 1001; 1:60-67. This
`
`scheme improves the typical time for a response by the primary station to a request
`
`by a secondary station. Because there is no possibility of requests from different
`
`secondary stations colliding, a secondary station can retransmit requests in each
`
`allocated time slot. In contrast, in prior art systems a secondary station has to wait at
`
`least long enough for the primary station to have received, processed and
`
`3
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
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`acknowledged a request before it is able to retransmit. EX1001, 1:56-2:8. In prior art
`
`schemes, there is no guarantee that a request could be received and processed by the
`
`base station sufficiently rapidly for an acknowledgment to be scheduled for the
`
`immediately following frame. EX1001, 4:12-16. Using the scheme of the ‘079 Patent,
`
`the request is repeated without waiting for an acknowledgment, making the time until
`
`the request is repeated shorter than in prior art schemes. See EX1001, 4:8-18.
`
`Further, the primary station can improve the accuracy with which it determines
`
`whether a request was sent by a particular secondary station if the received signal
`
`strength is close to the detection threshold by examining the received signals in
`
`multiple time slots allocated to the secondary station in question. EX1001, 1:56-2:14.
`
`A.
`
`PROSECUTION HISTORY OF THE ‘079 PATENT
`
`The prosecution history of the ‘079 Patent includes substantive examination,
`
`including citation by the Examiner at the USPTO of six references in three different
`
`combinations to support rejections of the independent claims, all of which were
`
`successfully overcome by argument and amendment to result in the present claims.
`
`In a first Office Action, the Examiner cited Van Driel (U.S. Patent No. 6,320,869)
`
`and Mansfield (U.S. Patent No. 6,301,249), and the combination of Van Driel,
`
`Mansfield and Tiedermann (U.S. Patent No. 6,256,301), to reject the then-pending
`
`claims under 35 U.S.C. 103. EX1002, 188-194. In a response, applicant pointed out
`
`that the Examiner had mischaracterized Mansfield, stating that:
`
`4
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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`
`[T]he same data is not retransmitted until acknowledgment is received.
`
`Rather, as specifically stated in the Abstract, re-transmission of the same
`
`frame occurs only when a responsive message does not indicate
`
`successful reception.
`
`EX1002, 183. In a Non-Final Office Action, the Examiner agreed with these
`
`arguments and, rather than assert Van Driel or Mansfield again, cited new art, namely
`
`Willey (U.S. Patent No. 5,84,785) and the textbook Schwartz, Telecommunications
`
`Networks (November 1988) to reject certain claims under 35 U.S.C. 103. EX1002,
`
`164-171. In response, applicant pointed out that the prior art reference Schwartz
`
`taught “retransmitting different data in each frame,” and that Willey taught that “the
`
`access channel message that is continuously transmitted contains different data each
`
`time.” EX1002, 161. The Examiner repeated the rejection in a Final Office Action,
`
`EX1002, 144-151. After a Request for Continued Examination and Amendment, a
`
`further round of rejections based primarily on Willey and Schwartz, and further
`
`amendments and arguments, EX1002, 97-130, the Examiner was again persuaded
`
`that applicant had overcome the rejections. EX1002, 75. The Examiner again changed
`
`the basis for the rejection of the independent claims, relying on Walton (U.S. Patent
`
`No. 6,542,488) and Sorensen (U.S. Patent No. 6,463,298). EX1002, 76-87. The
`
`applicant amended to take allowable subject matter, and a Notice of Allowance
`
`issued. EX1002, 48-71.
`
`5
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`For the convenience of the Board, the text of challenged independent claim 17
`
`is reproduced here:
`
`17. A method of operating a radio communication system, comprising:
`
`allocating respective time slots in an uplink channel to a plurality
`
`of respective secondary stations; and
`
`transmitting a respective request for services to establish required
`
`services from at least one of the plurality of respective secondary
`
`stations to a primary station in the respective time slots;
`
`wherein the at least one of the plurality of respective secondary
`
`stations re-transmits the same respective request in consecutive
`
`allocated time slots without waiting for an acknowledgement until said
`
`acknowledgement is received from the primary station,
`
`wherein the primary station determines whether a request for
`
`services has been transmitted by the at least one of the plurality of
`
`respective secondary stations by determining whether a signal strength
`
`of the respective transmitted request of the at least one of the plurality
`
`of respective secondary stations exceeds a threshold value.
`
`III. RELATED PROCEEDINGS
`
`The ’079 patent is or was involved in the following proceedings:
`
`Case Name
`
`Case
`Filing
`Date
`6/26/2019 Uniloc USA, Inc. v. Samsung
`Electronics America
`2/22/2018 Uniloc USA, Inc. et al v. Apple Inc.
`
`2/23/2018 Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc. et al
`
`Case Number Court
`
`19-2072
`
`CAFC
`
`1-18-cv-00158 WDTX
`
`2-18-cv-00042 EDTX
`
`6
`
`

`

`Case Name
`
`Case
`Filing
`Date
`3/9/2018
`
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`3/13/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. BlackBerry
`Corporation
`7/23/2018 Uniloc USA Inc et al v. Blackberry
`Corporation
`10/24/2018 Uniloc USA, Inc. et al v. ZTE (USA),
`Inc. et al
`11/6/2018 Uniloc USA Inc et al v. LG Electronics
`USA Inc et al
`11/17/2018 Uniloc 2017 LLC v. ZTE Inc et al
`
`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`Case Number Court
`
`3-18-cv-00557 NDTX
`
`2-18-cv-00075 EDTX
`
`2-18-cv-00304 EDTX
`
`2-18-cv-00305 EDTX
`
`3-18-cv-01883 NDTX
`
`3-18-cv-02835 NDTX
`
`4-18-cv-06737 NDCA
`
`3-18-cv-03064 NDTX
`
`11/17/2018 Uniloc 2017 LLC v. Blackberry
`Corporation
`11/20/2018 Uniloc 2017 LLC v. Motorola Mobility,
`LLC
`11/30/2018 Uniloc 2017 LLC v. HTC America, Inc. 2-18-cv-01728 WDWA
`
`3-18-cv-03065 NDTX
`
`1-18-cv-01841 DDE
`
`1/10/2019 Apple Inc. et al v. Uniloc 2017 LLC
`
`IPR2019-00510 PTAB
`
`3/26/2019 Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`Uniloc USA, Inc. et al v. Apple Inc.
`
`4/2/2019
`
`2-19-cv-00102 EDTX
`
`4-19-cv-01691 NDCA
`
`
`
`IV. THE PETITIONER HAS FAILED TO SHOW THAT THE ASSERTED
`ART IS NOT CUMULATIVE OF THE NUMEROUS REFERENCES
`RELIED ON BY THE EXAMINER DURING THE EXTENSIVE
`PROSECUTION
`
`It is clear under the applicable standards of Becton, Dickinson and Co. v. B.
`
`7
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`Braun Melsungen AG, IPR2017-01586, Paper No. 8 (2017), that the Board should
`
`decline to exercise its discretion to institute Inter Partes Review based on the prior
`
`art relied upon in the Petition. The Board stated in Becton, Dickinson that:
`
`In evaluating whether to exercise our discretion when the same or
`
`substantially the same prior art or arguments previously were presented
`
`to the Office under section 325(d), we have weighed some common non-
`
`exclusive factors, such as: (a) the similarities and material differences
`
`between the asserted art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art evaluated
`
`during examination; (c) the extent to which the asserted art was
`
`evaluated during examination, including whether the prior art was the
`
`basis for rejection; (d) the extent of the overlap between the arguments
`
`made during examination and the manner in which Petitioner relies on
`
`the prior art or Patent Owner distinguishes the prior art; (e) whether
`
`Petitioner has pointed out sufficiently how the Examiner erred in its
`
`evaluation of the asserted prior art; and (f) the extent to which additional
`
`evidence and facts presented in the Petition warrant reconsideration of
`
`the prior art or arguments.”
`
`Id. at 17-18 (emphasis in original).
`
`The Petition provides no analysis as to why the prior art asserted is not
`
`cumulative of any of the at least six references relied on by the Examiner during
`
`prosecution in rejections of independent claims and overcome to obtain allowance of
`
`the ‘079 Patent. Indeed, the Petition is devoid of any analysis of any alleged
`
`8
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`differences between any of Van Driel, Mansfield, Willey, Schwartz, and Sorenson,
`
`Colvin and Larsson, on the one hand, and the Merakos, Kay, Alamouti and Borth
`
`references on the other.
`
`As to the first factor, the similarities and material differences between the
`
`asserted art and the prior art asserted during examination, Petitioner provides nothing
`
`but a conclusory statement that the prior art and arguments in the Petition are not
`
`cumulative of the prior art evaluation during examination, without specifically
`
`alleging that any of the four references asserted in the Petition include teachings not
`
`provided in any of the six references relied upon by the Examiner during prosecution.
`
`Indeed, the references from the prosecution, like the references asserted in the
`
`Petition, all relate to wireless communications systems. As to the second factor, the
`
`cumulative nature of the art cited during examination and the asserted art, the Petition
`
`provides no indication of any differences between Van Driel, Mansfield, Willey,
`
`Schwartz, and Sorenson, on the one hand, and the asserted art on the other. As to the
`
`third factor, the extent to which the asserted art was considered by the Examiner, in
`
`fact, the Van Driel, Mansfield, Willey, Schwartz, and Sorenson references were all
`
`substantively considered by the Examiner, as is evident from the Examiner’s reliance
`
`on these references for rejections, overcome during prosecution, of claims. Moreover,
`
`Petitioner has provided no basis for concluding that the newly-presented asserted art
`
`is not cumulative of the six references relied upon by the Examiner for 35 U.S.C. 103
`
`rejections of independent claims during prosecution. Given these numerous factors
`
`militating against institution, the Board should decline institution.
`
`
`9
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`

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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`V. CLAIM 17 OF THE ‘079 PATENT IS ALREADY THE SUBJECT OF
`INTER PARTES REVIEW, AND THIS ADDITIONAL PETITION
`SHOULD BE DENIED INSTITUTION UNDER 35 U.S.C. 314 OR 35
`U.S.C. § 325(D)
`
`The present Petition, and the Petition in IPR2019-00510, both challenge Claim
`
`17 of the ‘079 Patent. This follow-on challenge should be denied institution.
`
` The Board’s precedential decision in General Plastic Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential)
`
`provides a set of non-exclusive factors to determine whether a petitioner’s filing of
`
`follow-on petitions has caused “undue equities and prejudices to Patent Owner.” Slip.
`
`op at 16-17. The Board directs parties to those factors in the Consolidated Office
`
`Patent Trial Practice Guide (November 2019) (“Practice Guide”) Here, those factors
`
`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.
`
`The non-exclusive factors are:
`
`1. whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent;
`
`2. 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;
`
`3. 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
`
`10
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`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
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`Board’s decision on whether to institute review in the first petition;
`
`4. 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;
`
`5. 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;
`
`6. the finite resources of the Board; and
`
`7. 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.
`
`Here, the Petitioner already had the benefit of the Patent Owner’s Preliminary
`
`Responses and the Institution Decision in IPR2019-00510, finally filing the present
`
`Petition just days before the due date for the Patent Owner’s Response in IPR2019-
`
`00510.
`
`Petitioner argues that the Board’s Institution Decision in Hulu, LLC v. Sound
`
`Innovations, LLC, IPR2018-00366, Paper No. 11 (PTAB July 6, 2018) justifies its
`
`delay in filing the present Petition. While the Board’s decision in Hulu did
`
`acknowledge that the Petitioner there filed its Petition months before the one year
`
`time bar, the Board weighed the unexpired time period in the one year period together
`
`with the Petitioner’s conduct in not awaiting further filings by the Patent Owner,
`
`stating:
`
`Petitioner chose to file this Petition months before the one year time bar
`
`11
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`

`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`
`and weeks before Patent Owner filed its preliminary responses in
`
`IPR2018-00017 (Paper 11, filed Jan. 18, 2018) and IPR2018-00096
`
`(Paper 9, filed February 1, 2018).
`
`Id. at 14 (emphasis added). In contrast, Petitioner here waited for months after the
`
`Institution Decision in IPR2019-00510, and indeed up until days before the due date
`
`for Patent Owner’s Response in that case, before filing the present Petition. Thus, to
`
`the extent that Hulu v. Sound Innovations provides guidance, the third General
`
`Plastic factor weighs against institution.
`
`As to the fourth General Plastic factor, Petitioner’s justification for the time
`
`from the identification of prior art until filing is deficient. Petitioner says nothing
`
`about when it became aware of the Kay reference, but alleges that it became aware
`
`of the Merakos reference less than four months before filing of the Petition. However,
`
`the Kay reference is identified on the face of the Merakos reference, shares a common
`
`assignee with Merakos, and is incorporated by reference in the Merakos reference. In
`
`the exercise of reasonable diligence, upon becoming aware of Kay, Petitioner would
`
`have almost immediately become aware of Merakos. Further, the Borth reference is
`
`assigned on its face to Motorola, Inc. and thus was clearly known to Petitioner. Thus,
`
`the key time frame for identification of the prior art for assertion of at least Ground 2
`
`here was the timing of the identification of Kay, which Petitioner has withheld. While
`
`Petitioner alleges that the Board’s decision in Collective Minds Gaming Co. Ltd. v.
`
`12
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`

`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`IronBurg Inventions Ltd., IPR2018-00356, Paper No. 11 (PTAB June 7, 2018), at 14-
`
`15, supports its position, the Petitioner in Collective Minds Gaming did not withhold
`
`the timing of identification of key prior art, as Petitioner has done, at least with respect
`
`to the Kay reference here. Accordingly, the fourth General Plastic factor weights
`
`against institution.
`
`For similar reasons, the fifth General Plastic factor weighs against institution.
`
`The Petitioner has failed to disclose when it became aware of the Kay reference, as,
`
`with the exercise of reasonable diligence, Petitioner would have almost immediately
`
`become aware of the Merakos reference, which, inter alia incorporates Kay by
`
`reference. Further, as noted above, Borth was assigned at issue to Motorola, Inc., and
`
`so Motorola Mobility LLC cannot claim to have been unaware of Borth. Thus, at least
`
`as to Ground 2, Petitioner, by failing to identify when Kay was identified, has
`
`provided no indication of diligence in filing the present Petition.
`
`As to the finite resources of the Board, there is simply no reason why the
`
`Board’s resources should be applied with respect to an Inter Partes Review, where,
`
`as here, the Petitioner has not identified any manner in which the asserted references
`
`differ from the asserted references in a prior petition challenging the same claim, and
`
`where the Petitioner has not identified when it became aware of one of the key
`
`references.
`
`In short, the General Plastic factors weight against institution. The Board is
`
`13
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`IPR2020-00038
`U.S. Patent No. 6,868,079
`
`respectfully requested to exercise its discretion under 35 U.S.C. 314(a) and 37 C.F.R.
`
`42.108(a) to deny institution. Alternatively, the Petition is cumulative of the grounds
`
`presented in the earlier IPR, and should thus be denied under 35 U.S.C. § 325(d) (“In
`
`determining whether to institute or order a proceeding under this chapter . . ., the
`
`Director may take into account whether, and reject the petition or request because,
`
`the same or substantially the same prior art or arguments previously were presented
`
`to the Office.”).
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`
`unpatentable”). The Petition should be denied as failing to meet this burden.
`
`The Petition raises the following obviousness challenges:
`
`
`
`Ground
`1
`
`Basis
`35 U.S.C. 103
`
`Claim
`17
`
`Reference(s)
`Merakos (U.S. Patent No. 5,521,925)
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`(EX. 1003) “via incorporation-by
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`reference of” Kay (U.S. Patent No.
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`5,299,198) (EX. 1004); Alamouti (U.S.
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`Patent No. 5,933,421 (EX. 1006).
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`2
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`35 U.S.C. 103
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`17
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`Merakos (U.S. Patent No. 5,521,925)
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`14
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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`(EX. 1003) “via incorporation-by
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`reference of” Kay (U.S. Patent No.
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`5,299,198) (EX. 1004); Borth (U.S.
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`Patent No. 4,829,543 (EX. 1005).
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`
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`A. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petitioner proposes that a person of ordinary skill would have had at least
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`a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer
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`Science, plus two to three years of work experience in communications systems or
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`networking. Pet. 25. The Petitioner alternatively proposes that a person of ordinary
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`skill would have received a graduate degree such as Master’s or PhD degree with at
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`least one year of work experience related to communications systems or networking.
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`Id. The Petitioner further proposes that a person of ordinary skill in the art would
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`have been aware of specific resource allocation and multiple access technologies used
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`in wireless communications systems. Id. at 25-26.
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`The Petitioner’s proposed definition of person of ordinary skill is improper as
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`lacking an upper bound on the work experience of a hypothetical person of ordinary
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`skill having a graduate degree. The Petitioner’s proposed definition of a person of
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`ordinary skill is further improper, as improperly incorporating not only educational
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`attainment and professional experience, but specific knowledge of the person of
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`ordinary skill in the art.
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`U.S. Patent No. 6,868,079
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`Patent Owner does not offer a competing definition for POSA at this
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`preliminary stage, as, even if the Board adopted the Petitioner’s proposed, and
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`improper, definition, the Petitioner fails to demonstrate a reasonable likelihood that
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`the challenged claim is unpatentable. Patent Owner reserves the right to propose its
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`own definition of POSA in the event that trial is instituted.
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`B. CLAIM CONSTRUCTION
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`1.
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`Claim Construction Standard
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`As of the filing date of the Petition, the standard for claim construction in Inter
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`Partes Review is the standard of “ordinary and customary meaning of such claim as
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`understood by one of ordinary skill in the art and the prosecution history pertaining
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`to the patent.” 37 C.F.R. §42.100(b) (effective November 13, 2018). For all claim
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`terms, Uniloc requests that the Board adopt the ordinary and customary meaning of
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`the claim terms as understood by one of ordinary skill in the art. Here, the Petitioner
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`proposes an overly broad construction of the claim term “acknowledgment” that is in
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`conflict with the specification and the ordinary meaning of the term to one of ordinary
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`skill.
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`2.
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` “acknowledgment”
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`Petitioner proposes a construction of “acknowledgment” as recited in Claim
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`17. At this preliminary stage, Patent Owner does not offer a competing definition,
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`because as will be shown below, the Petition is deficient even under Petitioner’s own
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`U.S. Patent No. 6,868,079
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`proposed construction. In the event that trial is instituted, however, Patent Owner
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`reserves the right to object to Petitioner’s proposed construction and provide Patent
`
`Owner’s proposed constructions.
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`C. Merakos (via Kay) Does Not Disclose “wherein the at least one of
`the plurality of respective secondary stations retransmits the same
`respective request in consecutive allocated time slots without
`waiting for an acknowledgement until said acknowledgement is
`received from the primary station” (Grounds 1 and 2)
`
`The Petition explicitly relies on the Kay reference as allegedly teaching the
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`above recitations of claim 17, with the proviso that Merakos incorporates Kay. Pet.,
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`50-59. The Petition asserts that Kay teaches the mobile station re-transmitting “the
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`same reverse allocation request message in multiple consecutively assigned subslots
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`without waiting for the reverse allocation acknowledgement from the base station
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`until the acknowledgement is received.” Pet. 34 (emphasis added); Id. at 50.
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`Kay does not teach retransmitting the same reverse allocation request message
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`in multiple consecutively assigned subslots, without waiting, until
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`the
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`acknowledgment is received. There is no indication in Figure 20 of Kay that the
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`reverse allocation requests are sent in consecutive allocated time slots. See Pet. 33,
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`51. In fact, Figure 21 of Kay shows at least one request in slot 2 that is not consecutive
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`with any other request. Claim 17’s recitation that the station “re-transmits the same
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`respective request in consecutive allocated time slots” requires that the re-
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`transmission is done in consecutive allocated time slots.
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`U.S. Patent No. 6,868,079
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`The Petition then speculates as to a number of different ways in which Merakos
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`could schedule re-transmissions of access requests from remote data stations to the
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`base station. Pet. 52–59. There is no persuasive explanation as to why one of ordinary
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`skill in the art would have adopted a particular schedule in which consecutive
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`allocated time slots are used for retransmission. Still further, even if Merakos
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`incorporates by reference the Kay application, Merakos does not even once mention
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`time diversity. Furthermore, Merakos is directed to providing a protocol for remote
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`data terminals, EX1003, 2:49-51, which have lower priority than the voice traffic to
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`which Kay is directed. EX1003, 2:65-3:6; 1:41-50. Nowhere does the Petition or
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`Petitioner’s Expert’s Declaration explain why a POSA would employ the scheme of
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`Merakos, which provides for as few as one request per frame, as shown in Petitioner’s
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`modified Figures of Merakos, in contrast to the scheme of Kay, which provides a
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`voice system with a request in each available subslot of each slot, EX. 1004, 14:61-
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`63, Fig. 22.
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`For completeness, Patent Owner notes the Petition cites to other references as
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`allegedly teaching the concept of time diversity (Pet. 18-21), without identifying any
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`of those references other than by Exhibit number in the text of the Petition, and, more
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`importantly, without explaining how, if at all, those references support its arguments
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`alleging that Claim 17 is unpatentable. As the Petitioner has failed to explain the
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`pertinence of those other references to the issues under 35 U.S.C. 103, those
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`IPR2020-00038
`U.S. Patent No. 6,868,079
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`references should not be considered by the Board.
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`Thus, contrary to the Petition, Merakos (via Kay) does not disclose “wherein the
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`at least one of the plurality of respective secondary stations retransmits the same
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`respective request in consecutive allocated time slots without waiting for an
`
`acknowledgement until said acknowledgement is received from the primary station”
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`as recited in Claim 17.
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` As both Ground 1 and Ground 2 rely on Kay for this recitation, Pet. 50-52; 67,
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`the Petitioner has failed to show a reasonable likelihood that Claim 17 of the ‘079
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`Patent is obvious on any ground, and institution of Inter Partes Review shou