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`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: September 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`T-MOBILE US, INC. AND T-MOBILE USA, INC.,
`
`Petitioners,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2017-01098 (Patent 8,559,369 B2)
`Case IPR2017-01099 (Patent 9,042,306 B2)1
`
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 The issues are the same in each of the proceedings listed above. We,
`therefore, issue one Order to be filed in each proceeding.
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`Certain claims of U.S. Patent No. 8,559,369 B2 and U.S. Patent
`
`No. 9,042,306 B2 recite the following limitation:
`[“a” or “at least one”] communication module adapted to: (1)
`wirelessly connect said computing device to an IP based network
`via a first wireless access point (AP) having a first AP
`Identification (APID); and (2) wirelessly communicate with
`other wireless enabled computing devices.
`See Ex. 10012, claim 1 (“the communication module limitation”).
`
`Both parties indicate that the communication module limitation is in
`means-plus-function format and should be construed according to 35 U.S.C.
`§ 112(6). See Paper 2 (“Pet.”) 16–17, Paper 7 (“Prelim. Resp.”) 8–10. The
`Federal Circuit recently explained that, “regardless of the context in which
`the interpretation of means-plus-function arises,”
`the construction of a means-plus-function limitation under § 112
`¶ 6 “must look to the specification and interpret that language in
`light of the corresponding structure, material, or acts described
`therein, and equivalents thereof, to the extent that the
`specification provides such disclosure.”
`IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1369 (Fed. Cir. 2017)
`(quoting In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en
`banc)); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349–50 (Fed.
`Cir. 2015) (en banc in relevant part).
`
`
`Petitioner identifies portions of the specifications that allegedly
`disclose “software in a computing device” that corresponds to the function
`of “wireless communication.”3 Pet. 16–17. After the Petition was filed, the
`
`
`2 For the purposes of this Order, IPR2017-01099 is representative and all
`citations are to papers in IPR2017-01099 unless otherwise noted.
`3 Petitioner also states that “[n]o construction is necessary.” Pet. 16. We
`find this statement confusing as it seems to suggest that Petitioner does not
`
`2
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`United States District Court for the Eastern District of Texas issued a Claim
`Construction Memorandum and Order in a related case determining that the
`communication module limitation is in means-plus-function format and that
`the corresponding structure is “a wireless network card, and equivalents
`thereof.” Ex. 2001, 33–35. Patent Owner points to this as the corresponding
`structure. Prelim. Resp. 9–10, 20.
`The parties, thus, point to different structure in the patents as the
`corresponding structure. For the purpose of determining whether to institute
`trial in these inter partes reviews, and in light of the Texas district court’s
`recent order, we now require additional briefing concerning the construction
`of the communication module limitation. The briefs should:
`(1) address whether the communication module limitation is in
`means-plus-function format requiring construction according to
`35 U.S.C. § 112(6), answering yes or no, and explaining why or why
`not; and
`(2) if the communication module limitation is governed by § 112(6),
`state the corresponding structure of the communication module
`limitation and explicitly provide citation to the corresponding
`description in the patents.
`Each party should file one brief addressing the construction of the
`
`communication module limitation in both patents. A copy of the brief
`should be filed in both IPR2017-01098 and IPR2017-01099.
`
`
`contend that the communication module limitation is in means-plus-function
`format.
`
`3
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`
`It is:
`ORDERED that the parties shall file additional briefing, no later than
`
`September 12, 2017, limited, for each party, to 800 words, and limited to
`addressing the construction of the communication module limitation as
`specified above.
`
`For PETITIONER:
`
`Chun Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`For PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`Spencer C. Patterson, P.C.
`spatterson@gchub.com
`
`4
`
`
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