Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 46
`Date: May 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`OPTIS WIRELESS TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`IPR2018-00655
`Patent 8,208,569 B2
`____________
`
`
`
`Before KEVIN F. TURNER, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`I. INTRODUCTION
`In a Final Written Decision, the Board held that Petitioner had shown,
`by a preponderance of the evidence, that claims 1–10, 21–30, 41, and 42 of
`U.S. Patent No. 8,208,569 B2 (“the ’569 patent”) are unpatentable. Paper 40
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`IPR2018-00655
`Patent 8,208,569 B2
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`(“Dec.”). Patent Owner requested rehearing of that Decision “only as to
`claims 7 and 27.” Paper 41 (“Req. Reh’g”). That request was held in
`administrative abeyance under the Board’s General Order in Cases Involving
`Requests for Rehearing Under Arthrex, Inc. v. Smith & Nephew, Inc., 941
`F.3d 1320 (Fed. Cir. 2019). Paper 42. Subsequent to the Board lifting that
`administrative abeyance, the parties jointly renewed an earlier request to file
`a joint motion to vacate the Final Written Decision and terminate the
`proceeding in light of the parties’ settlement. See Paper 43 (lifting
`administrative abeyance); Ex. 3002.
`The Board declined to authorize a motion to vacate, stating that the
`Final Written Decision “stands as the final agency action.” Paper 44. At the
`same time, the Board identified the following procedural options: (1) for the
`parties to file a joint motion to terminate due to settlement post-institution in
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, which would
`render Patent Owner’s Request for Rehearing moot; (2) for Patent Owner to
`file a motion to withdraw the pending Request for Rehearing, after which the
`case would close as there would be no issue pending; or (3) for Patent
`Owner to request Director review of the Final Written Decision. Id. at 3–4.
`The parties did not exercise any of the identified options within the time set
`by the Board, such that Patent Owner’s Request for Rehearing remains
`pending. See id. at 4.
`For the reasons discussed below, we deny Patent Owner’s Request for
`Rehearing.
`
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`IPR2018-00655
`Patent 8,208,569 B2
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`II. LEGAL STANDARD
`A request for rehearing “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.”
`37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
`on a request for rehearing lies with the party challenging the decision. Id.
`
`
`III. ANALYSIS
`Independent claim 1 recites a “transmission apparatus” that comprises
`a “coding section configured to encode . . . second data” and a “mapping
`section configured to map . . . the encoded second data to groups of symbols
`in a second part of [a] domain.” Ex. 1101, 12:37–43. Independent claim 21
`recites a method with corresponding limitations. Id. at 14:16–21. Claims 7
`and 27 depend respectively from independent claims 1 and 21, and recite
`that “at least a part of the encoded second data is not continuously mapped
`to each symbol within each of the groups of symbols aligned along [a]
`frequency index.” Id. at 13:7–10, 14:51–54. Petitioner challenged the
`patentability of claims 7 and 27 on a single ground, namely under 35 U.S.C.
`§ 103(a) for obviousness over U.S. Patent No. 6,473,467 B1 (“Wallace”)
`and U.S. Patent No. 5,646,935 (“Ishikawa”). Paper 2, 69–70, 80.
`Relevant to the limitation recited in claims 7 and 27 is Figure 2 of
`Wallace, reproduced below.
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`Figure 2 “is a diagram that graphically illustrates a specific example of a
`transmission from a transmit antenna at a transmitter unit.” Ex. 1006, 3:12–
`14. In its Petition, Petitioner contended that Figure 2 of Wallace meets the
`limitation recited in claim 7 because DATA 1, “which is ‘at least a part of
`the second data,’ is mapped to two groups of symbols in the second part of
`the domain, respectively in timeslots 2 and 7.” Paper 2, 67 (citing Ex. 1106,
`10:66–11:18). According to the Petition, “DATA 1 is not continuously
`mapped to ‘each symbol within each of the groups of symbols aligned along
`the frequency index’ because the mapping of DATA 1 symbols in timeslots
`3, 4, and 5, and the DATA 3 symbols in time slot 6, before the mapping of
`DATA 1 symbols resumes in timeslot 7.” Id. (citing Ex. 1108 ¶¶ 117–127,
`233–235).
`In the Final Written Decision, the Board agreed with Patent Owner
`that Petitioner’s argument was implicitly based on a broad construction of
`the phrase “not continuously mapped to each symbol within each of the
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`Patent 8,208,569 B2
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`groups of symbols,” and that such a broad construction “is not consistent
`with the plain and ordinary meaning of the limitation of claims 7 and 27.”
`Dec. 82–83. Accordingly, the Board agreed with Patent Owner that
`“Wallace does not disclose claims 7 and 27 ‘under Petitioner’s [broader]
`understanding of the claims.’” Id. at 83 (citing Paper 32, 20 n.1).
`Petitioner nevertheless presented an alternative argument in its Reply,
`based on a narrower construction originally advocated by Patent Owner,
`namely that claims 7 and 27 cover “discontinuous mapping data within a
`single group of symbols.” See Paper 24, 9; Paper 32, 13–14. That is,
`“[g]iving the claim language the plain and ordinary meaning, claims 7 and
`27 are directed to ‘data that has a discontinuity in at least one of the time or
`frequency indices within a single group of symbols.’” Dec. 83. Although
`Petitioner’s arguments were newly presented in its Reply, the Board found
`them properly responsive to Patent Owner’s claim-construction argument.
`Id. at 86. And the Board determined that “Wallace renders claims 7 and 27
`unpatentable under this construction.” Id. at 83.
`In its Request for Rehearing, Patent Owner faults Petitioner’s analysis
`of claims 7 and 27 for implicitly introducing potential inconsistencies with
`Petitioner’s analysis of underlying independent claims 1 and 21:
`“Petitioner’s new theory with respect to claims 7 and 27 undermines
`Petitioner’s analysis of a number of the limitations in claims 1 and 21
`presented in the Petition.” Req. Reh’g 6. Patent Owner thus grounds its
`rehearing request in its contention that “the Board overlooked that Petitioner
`failed to explain how that theory would also satisfy claims 1 and 21, the
`independent claims from which claims 7 and 27 depend.” Id. at 1.
`According to Patent Owner, “had the Board fully appreciated that Petitioner
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`Patent 8,208,569 B2
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`failed to apply its new theory to the independent claims, it would not have
`found claims 7 and 27 unpatentable.” Id.
`Notably, Patent Owner does not contend that the Board
`misapprehended or overlooked any matter that impacts Petitioner’s
`presented analysis of underlying independent claims 1 and 21. Indeed, the
`Board addressed that analysis at considerable length in the Final Written
`Decision. See Dec. 40–68. Nor does Patent Owner contend that claims 7
`and 27 are not unpatentable under the theory presented in the Reply. See
`Req. Reh’g 8 (“Whether Petitioner could articulate why viewing DATA 1 as
`appearing in one group of symbols still meets these claim limitations is
`beside the point. It has not done so. Petitioner accordingly has not shown
`that its new theory discloses all claim limitations of claims 1 and 21.”).
`Rather, Patent Owner relies entirely on the premise that Petitioner’s analysis
`of claims 7 and 27 is fatally flawed for failing to address consistency with
`limitations recited in underlying independent claims 1 and 21—even while
`not challenging the Board’s determination that Petitioner’s analysis of
`independent claims 1 and 21 was sufficient and persuasive.
`Even if Patent Owner’s premise is viable, Patent Owner fails
`adequately to show that it properly raised this issue during the trial. At best,
`Patent Owner contends that it raised the issue “indirectly.” See id. at 8–9.
`Specifically, Patent Owner draws our attention to the statement in its Sur-
`Reply, citing to claims 1 and 21, that “the claims require that the groups of
`symbols be ‘aligned along the frequency index.’” Id. at 9; Paper 32, 18.
`According to Patent Owner, such a statement “thus put the Board and
`Petitioner on notice of Patent Owner’s position that Petitioner’s new theory
`does not satisfy the limitations of claims 1 and 21.” Req. Reh’g 9.
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`We disagree that such an oblique reference to claims 1 and 21
`provides adequate presentation of the argument Patent Owner is now making
`in its Request for Rehearing such that the Board could have misapprehended
`or overlooked that argument. And we disagree with Patent Owner’s position
`that “regardless of whether the issue was explicitly raised, . . . it is
`appropriate to address the issue now.” See id. That is not the standard on
`rehearing, which requires identification of “the place where each matter [the
`Board misapprehended or overlooked] was previously addressed in a
`motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).1
`
`
`
`1 Patent Owner also draws our attention to a colloquy at the oral hearing
`during which Patent Owner contends the issue was raised because Patent
`Owner asserted that Petitioner’s Reply theory “affects their unpatentability
`analysis with respect to Claim 11,” which Patent Owner characterizes as
`substantially similar to claim 1. Req. Reh’g 9; Paper 38, 57:6–18. But the
`oral hearing is not “a motion, an opposition, or a reply” as required by 37
`C.F.R. § 42.71(d). See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369
`(Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37
`C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely
`argument given that the untimely argument in this case was raised for the
`first time during oral argument.”). In any event, Patent Owner had
`opportunity at oral argument to state its position for why the alignment in the
`frequency axis would not be met by Petitioner’s Reply contention and Patent
`Owner relied instead on Petitioner’s burden. Paper 38, 58:13−60:20.
`Substantively, however, Patent Owner’s argument has no merit because Dr.
`Wells testified that the frequency index limitation of claim 7 means simply
`that the symbols within each group are aligned along the frequency index.
`Ex. 1108 ¶ 118. And our Decision addresses the combination of Wallace
`and Ishikawa with respect to frequency indexing symbols. Dec. 63−65
`(noting that Patent Owner did not challenge the alleged combination).
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`IPR2018-00655
`Patent 8,208,569 B2
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`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Board
`misapprehended or overlooked any properly presented matter that warrants
`modification of the Final Written Decision.
`
`
`V. ORDER
`
`It is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
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`IPR2018-00655
`Patent 8,208,569 B2
`
`For PETITIONER:
`
`Peter P. Chen
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING LLP
`pchen@cov.com
`dgarr@cov.com
`gdischer@cov.com
`
`
`For PATENT OWNER:
`
`Brent N. Bumgardner
`Matthew C. Juren
`NELSON BUMGARDNER ALBRITTON P.C.
`bbumgardner@nbclaw.net
`matthew@nelbum.com
`
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