Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 26
`Entered: April 28, 2017
`
`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.
`
`Cases IPR2015-01664
`Patent 7,787,431 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, JUSTIN BUSCH, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`I.
`
`BACKGROUND
`
`A.
`
`Background
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`
`filed a Petition, Paper 2 (“Petition” or “Pet.”), requesting an inter partes
`
`review of U.S. Patent No. 7,787,431 B2, Ex. 1001 (“the ’431 patent”). On
`
`February 11, 2016, we instituted an inter partes review of claims 8–12 and
`
`18–22 (“the challenged claims”) of the ’431 patent. Paper 7 (“Institution
`
`
`Tel: 571-272-7822
`
`Paper 26
`Entered: April 28, 2017
`
`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.
`
`Cases IPR2015-01664
`Patent 7,787,431 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, JUSTIN BUSCH, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`I.
`
`BACKGROUND
`
`A.
`
`Background
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`
`filed a Petition, Paper 2 (“Petition” or “Pet.”), requesting an inter partes
`
`review of U.S. Patent No. 7,787,431 B2, Ex. 1001 (“the ’431 patent”). On
`
`February 11, 2016, we instituted an inter partes review of claims 8–12 and
`
`18–22 (“the challenged claims”) of the ’431 patent. Paper 7 (“Institution
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`Decision” or “Inst. Dec.”). Intellectual Ventures II LLC (“Patent Owner”)
`
`filed a Patent Owner Response (“PO Resp.”) on May 9, 2016. Paper 13.
`
`Petitioner filed a Reply. Paper 15 (“Reply”). The record includes a
`
`transcript of the oral hearing, held October 6, 2016. Paper 23 (“Tr.”).
`
`On February 8, 2017, we issued a Final Written Decision in this
`
`proceeding. Paper 25 (“Decision” or “Dec.”). In the Decision, we held
`
`Petitioner failed to demonstrate by a preponderance of the evidence that
`
`claims 8–12 and 18–22 of the ’431 patent were unpatentable. Dec. 2, 16–17.
`
`On March 10, 2017, Petitioner filed a Request for Rehearing (“Request” or
`
`“Req. Reh’g”).
`
`On rehearing, the burden of showing the Decision should be modified
`
`lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” Id. For the
`
`reasons that follow, Petitioner’s Request is denied.
`
`B.
`
`Illustrative Claim
`
`Of the challenged claims, claims 8 and 18 are independent. Claim 8 is
`
`illustrative and reproduced below, with the disputed limitation italicized:
`
`8.
`
`A cellular base station comprising:
`
`circuitry configured to transmit a broadcast channel in an
`orthogonal frequency division multiple access (OFDMA) core-
`band, wherein the core-band is substantially centered at an
`operating center frequency and the core-band includes a first
`plurality of subcarrier groups, wherein each subcarrier group
`includes a plurality of subcarriers, wherein the core-band is
`utilized to communicate a primary preamble sufficient to enable
`radio operations, the primary preamble being a direct sequence
`in the time domain with a frequency content confined within the
`
`2
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`core-band or being an OFDM symbol corresponding to a
`particular frequency pattern within the core-band,
`
`wherein properties of the primary preamble comprise:
`
`an autocorrelation having a large correlation peak1 with respect
`to sidelobes;
`
`a cross-correlation with other primary preambles having a small
`cross-correlation coefficient with respect to power of other
`primary preambles; and
`
`a small peak-to-average ratio; and
`
`wherein a large number of primary preamble sequences exhibit
`the properties; and
`
`circuitry configured to transmit control and data channels using a
`variable band including a second plurality of subcarrier groups,
`wherein the variable band includes at least the core-band.
`
`II. DISCUSSION
`
`Petitioner argues in its Request that we misapprehended or overlooked
`
`(1) “Petitioner’s agreement with the Board’s initial conclusion in the
`
`Institution Decision that the plain meaning of” the disputed limitation should
`
`apply; and (2) “a portion of the’431 patent’s specification,” which Petitioner
`
`alleges led us to adopt a construction that excludes a disclosed embodiment.
`
`Req. Reh’g 1–2. Petitioner contends these errors led us to adopt an improper
`
`construction.
`
`Petitioner’s Argument for a Plain Meaning Construction
`
`Petitioner asserts we misapprehended the record because “Petitioner
`
`both agreed with the Board’s preliminary statement, and disputed Patent
`
`Owner’s assertion that the Board’s preliminary statement was incorrect.”
`
`Req. Reh’g 9. However, Petitioner merely points to general statements in its
`
`
`1 A certificate of correction was issued on August 31, 2010, to replace the
`word “creak” with the word “peak.” Ex. 1001, 20.
`
`3
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`Reply that “Petitioner does not believe any explicit claim construction is
`
`necessary” for the disputed limitation and that the disputed limitation “has a
`
`plain and ordinary meaning that does not require any construction.” Id.
`
`(quoting Reply 2, 5). Petitioner asserts our alleged treatment of Patent
`
`Owner’s statement as unrebutted resulted in analysis that “improperly
`
`weighed the evidence in favor of Patent Owner without considering
`
`Petitioner’s arguments.” Id. at 9–10.
`
`We did not misapprehend or disregard Petitioner’s contentions that
`
`the plain and ordinary meaning of the disputed limitation should apply. On
`
`the contrary, in light of the fact that the parties’ disagreement centered on
`
`the disputed limitation, we carefully considered Petitioner’s argument that
`
`no construction was necessary along with all other evidence and argument
`
`presented during the trial.
`
`We considered Petitioner’s claim construction arguments and noted
`
`Petitioner argued that much of Patent Owner’s proposed construction
`
`provided no clarification and added confusion. Dec. 7 (citing Reply 3–5);
`
`see Reply 4. Petitioner further argued that a certain portion of Patent
`
`Owner’s proposed construction (i.e., “by multiplexing the broadcast channel
`
`information using OFDMA on to subcarriers”) was not relevant to making a
`
`determination in this proceeding. Reply 4. With respect to the portion of
`
`the disputed limitation regarding what it means for a broadcast channel to be
`
`transmitted in an OFDMA core-band, Petitioner merely stated:
`
`It appears from later arguments in the PO Response that the main
`point the PO is trying to make with its construction is that
`“transmitting a broadcast channel in an OFDMA core-band”
`would be understood by a POSITA to mean “transmitting a
`broadcast channel within the limits of an OFDMA core-band.”
`However, the PO’s attempt to define the term through the
`
`4
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`proposed construction only adds additional confusion. The
`Board should reject the proposed construction as adding undue
`limitations and generating more confusion than clarity.
`
`Id. at 4–5 (internal citations omitted).
`
`
`
`Petitioner provided no details in its Reply regarding how “within the
`
`limits of” adds additional confusion, or why a construction including such
`
`language would be inappropriate. The Patent Owner Response
`
`demonstrated Patent Owner’s clear disagreement with Petitioner’s position
`
`that the proposed prior art combination teaches transmitting the entirety of a
`
`broadcast channel in an OFDMA core-band. Nevertheless, in its Reply,
`
`Petitioner provided neither an explanation of its understanding of the alleged
`
`plain meaning of the disputed limitation nor an explicit statement that
`
`transmitting only a portion of a broadcast channel in an OFDMA core-band
`
`would be sufficient to meet the disputed limitation.
`
`Accordingly, we did not misapprehend or overlook Petitioner’s
`
`generic argument for adopting an unspecified “plain meaning” of the
`
`disputed limitation. We evaluated all arguments and evidence submitted by
`
`both parties, and we determined that the proper construction of the disputed
`
`limitation precluded transmitting any portion of the recited broadcast
`
`channel outside the OFDMA core-band.
`
`Moreover, although we stated in the Institution Decision that the plain
`
`meaning of the disputed limitation “does not exclude transmitting another
`
`part of the broadcast channel outside the core-band,” Inst. Dec. 11, we
`
`concluded the evidence presented during trial does not support that
`
`preliminary determination. Petitioner did not present evidence or argument
`
`sufficient to persuade us that a person having ordinary skill in the art would
`
`have understood the plain meaning of the disputed limitation to encompass
`
`5
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`transmitting a portion of the broadcast channel outside the OFDMA core
`
`band.
`
`Alleged Exclusion of Embodiment
`
`Petitioner argues the ’431 patent specification “discloses an
`
`embodiment of the invention which would be excluded from” our
`
`construction of the disputed limitation. Req. Reh’g 3. Specifically, in its
`
`Request, Petitioner points to the ’431 patent specification’s description of an
`
`embodiment of a full-bandwidth preamble, and asserts our construction of
`
`the disputed limitation would exclude the disclosed full-bandwidth
`
`preamble. Id. at 4 (citing Ex. 1001, 5:36–55).
`
`Petitioner did not identify this alternative embodiment during trial.
`
`As discussed in the Decision and above, we provided a preliminary
`
`construction of the plain meaning of the disputed term in our Institution
`
`Decision, Inst. Dec. 11, and Patent Owner contested that preliminary
`
`construction in its Patent Owner Response, see PO Resp. 14–16.
`
`Nevertheless, as explained above, Petitioner merely provided unsupported
`
`assertions that the plain and ordinary meaning of the disputed limitation
`
`should apply and argued Patent Owner’s proposed construction generated
`
`more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not
`
`identify evidence to demonstrate the preliminary construction was correct.
`
`We are unable to find—and Petitioner does not cite—any portion of the
`
`Petition or Reply identifying the full bandwidth preamble to which
`
`Petitioner now refers, much less discussing its relevance to any issue.
`
`The panel questioned the parties extensively at the hearing regarding
`
`what it means to “transmit a broadcast channel in an” OFDMA core-band.
`
`See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited
`
`6
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`disclosure in the specification, let alone argued that such a disclosure was
`
`relevant to the proper construction of the disputed limitation. Moreover, the
`
`technology is complex, and the record during trial lacks briefing from the
`
`parties or testimony from either party’s expert declarant on the portion of the
`
`specification now raised by Petitioner. We decline to consider Petitioner’s
`
`untimely argument presented for the first time in its Request for Rehearing.
`
`For the reasons discussed above, we did not misapprehend or
`
`overlook (1) Petitioner’s agreement with the Board’s preliminary claim
`
`construction of “transmit a broadcast channel in” an OFDMA core-band in
`
`the Institution Decision, or (2) any argument of Petitioner made during trial
`
`about the Specification of the ’431 patent.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine Petitioner has not met its
`
`burden of demonstrating that the Decision should be modified.
`
`For the reasons given, it is ORDERED that the request for rehearing is
`
`IV.
`
` ORDER
`
`DENIED.
`
`
`
`
`
`7
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`PETITIONER:
`
`J. Andrew Lowes
`David M. O’Dell
`John Russell Emerson
`Clint Wilkins
`HAYNES AND BOONE, LLP
`Andrew.lowes.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`
`
`PATENT OWNER:
`
`Sharon Hwang
`Peter McAndrews
`Herbert Hart III
`MCANDREWS, HELD & MALLOY, LTD.
`shwang@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`hhart@mcandrews-ip.com
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES MANAGEMENT
`jhietala@intven.com
`tim@intven.com
`
`8
`
`
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