`571-272-7822
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` Paper 31
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` Entered: May 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01330
`Patent 8,310,993 B2
`____________
`
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
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`
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`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`
`The Board has reviewed Petitioner’s Request for Rehearing filed in
`the above-captioned proceeding, which includes assertions regarding the
`relationship between disclosed elements of U.S. Patent No. 8,572,250 B2 to
`Rinne et al. (Ex. 1011, “Rinne”) and claims 3 and 9 of U.S. Patent No.
`8,310,993 B2 (Ex. 1001, “the ’993 patent”). Req. 7–9. Specifically,
`Petitioner’s Request asserts that the sets of downlink and uplink
`transmission resources referenced in column 32, lines 40–43, of Rinne
`correspond to the claimed allocations of downlink and uplink resources in
`claims 3 and 9 of the ’993 patent.1 Id. at 9.
`We seek additional briefing from Patent Owner addressing
`Petitioner’s interpretation of these elements disclosed in Rinne, and its
`correspondence with the elements of claims 3 and 9 of the ’993 patent.
`37 C.F.R. § 42.20(d). Accordingly, Patent Owner is requested, but not
`required, to submit a brief addressing the factual assertions Petitioner makes
`at Section II.B. of the Request for Rehearing regarding the disclosure of
`Rinne.
`Patent Owner shall be limited to five (5) pages, not including the
`cover sheet or certificate of service, for the brief, which shall be limited
`strictly to the above issues. Patent Owner is not authorized to introduce any
`new evidence. Any statements, explanations, or arguments presented in the
`
`
`1 Both claims 3 and 9 of the ’993 patent end with the phrase “wherein the
`allocation of uplink resources is at a time interval delayed with respect to the
`allocation of downlink resources” (emphasis added). Petitioner identifies
`this limitation as part 3(b) of claim 3 and part 9(b) of claim 9. Req. 7. To
`avoid confusion, we, thus, refer to Petitioner’s nomenclature to identify
`features recited in claims 3 and 9.
`
`2
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`
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`IPR2014-01330
`Patent 8,310,993 B2
`
`brief should be supported by the current record.
`Petitioner is not authorized to file a response.
`Accordingly, it is hereby:
`ORDERED that Patent Owner is authorized to file a brief as described
`in this Order due on June 6, 2016.
`
`
`
`PETITIONER:
`J. Robert Brown, Jr.
`Charles J. Rogers
`CONLEY ROSE, P.C.
`rbrown@dfw.conleyrose.com
`crogers@conleyrose.com
`
`PATENT OWNER:
`Michael D. Specht
`Lori A. Gordon
`Ross G. Hicks
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`rhicks-PTAB@skgf.com
`
`James R. Hietala
`Tim R. Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`3