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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC.,
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner
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`v.
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`WI-LAN INC., WI-LAN USA, INC., WI-LAN LABS, INC.,
`Patent Owner
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`
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`
`
`Case IPR2018-00709
`U.S. Patent 8,867,351
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`PATENT OWNER PRELIMINARY RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Overview of the ’351 Patent ............................................................................ 2
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`III. Claim Construction .......................................................................................... 6
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`IV. Discussion of Applicable Law ......................................................................... 7
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`V.
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`The Burden of Persuasion Is on Petitioner to Show the ’351 Claims Are
`Unsupported by the Priority Application ...................................................... 10
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`VI. The ’351 Patent Is Entitled to Its Earliest Asserted Priority Date ................. 14
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`A.
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`B.
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`Petitioner Concedes that the Priority Application Discloses Use of
`Priority in Selecting Logical Channel Queues .................................... 14
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`The Priority Application Discloses Traffic Shaping Using an
`Associated Rate as a Limit on a Per Logical Channel Basis .............. 15
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` The Specification Discloses the Claimed Use of Traffic Shaping 1.
`
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`and Priority in Selecting Logical Channels for Transmission ....... 16
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` Petitioner Failed to Show a Reasonable Likelihood of Carrying Its 2.
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`Burden ............................................................................................ 28
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`VII. Petitioner Cannot Prevail Because Bauman Is Not Prior Art ........................ 32
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`A.
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`Bauman Is Not Prior Art to the ’351 Patent ........................................ 32
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` The Bauman Provisional Does Not Disclose the “Type Specific 1.
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`Queues” of Bauman Claim 1. ........................................................ 33
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` The Bauman Provisional Does Not Disclose Applying “Per-Type 2.
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`Rate Shaping Rules” to “Type Specific Queues,” as per Bauman
`Claim 1. .......................................................................................... 36
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`B. Without Bauman as Prior Art, Petitioner Cannot Prevail on any
`Ground ................................................................................................. 38
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`VIII. Petitioner’s Combination of References Fails To Disclose or Suggest Each
`Limitation of the Challenged Claims ............................................................ 38
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`i
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`A.
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`B.
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`“Thereafter Allocating a Remaining Portion, If Any, of the Data
`Transmission Capacity to One or More of the Logical Channel
`Queues Having Data For Transmission” ............................................. 38
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`“Wherein The Portion of Data Transmission Capacity Is All of the
`Data Transmission Capacity” .............................................................. 42
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`IX. Conclusion ..................................................................................................... 45
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`ii
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`Cases
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`TABLE OF AUTHORITIES
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`Ariad Pharms., Inc. v. Eli Lilly & Co.
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` 598 F.3d 1336 (Fed. Cir. 2010) ...................................................................... 7, 30
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`Benitec Biopharma Ltd. v. Cold Spring Harbor Lab.,
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`IPR2016-00014, Paper 7 (PTAB Mar. 23, 2016) ................................................ 32
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`Chemcast Corp. v. Arco Indus. Corp.
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` 913 F.2d 923 (Fed.Cir.1990) ................................................................................. 8
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.
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` 800 F.3d 1375 (Fed. Cir. 2015) ........................................................ 10, 11, 13, 32
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`Freebit AS v. Bose Corp.,
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`2017 WL 5202106 (P.T.A.B. Nov. 8, 2017) .......................................... 10, 11, 13
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`Genzyme Therapeutic Prods. Ltd. Partnership v. Biomarin Pharm. Inc.,
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`825 F.3d 1360 (Fed. Cir. 2016) ............................................................................ 44
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`Huawei Techs. Co., Ltd. v. Samsung Elecs. Co., Ltd.,
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`2018 WL 1364826 (P.T.A.B. Mar. 16, 2018) ...................................................... 44
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`In re Gosteli
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` 872 F.2d 1008 (Fed. Cir. 1989) ............................................................................. 7
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`In re Hayes Microprocessor Litigation
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` 982 F.2d 1527 (Fed. Cir. 1992) ............................................................................. 8
`iii
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`In re Skvorecz
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`IPR2018-00709
`U.S. Pat. 8,867,351
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` 580 F.3d 1262 (Fed. Cir. 2009) ............................................................ 8, 9, 29, 31
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`LizardTech, Inc. v. Earth Res. Mapping, Inc.
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` 424 F.3d 1335 (Fed. Cir. 2005) ............................................................................. 8
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`Martek Biosciences Corp. v. Nutrinova, Inc.
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` 579 F.3d 1363 (Fed. Cir. 2009) ............................................................................. 9
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`Pozen Inc. v. Par Pharm., Inc.
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` 696 F.3d 1151 (Fed. Cir. 2012) .................................................................... 10, 29
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`S3 Inc. v. NVIDIA Corp.
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` 259 F.3d 1364 (Fed. Cir. 2001) ........................................................................... 30
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`SAS Inst., Inc. v. Iancu,
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`138 S. Ct. 1348 (2018) ......................................................................................... 45
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`ScriptPro, LLC v. Innovation Assocs.
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` 762 F.3d 1355 (Fed. Cir. 2014) ............................................................................. 9
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`Space Systems/Loral, Inc. v. Lockheed Martin Corp.
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` 405 F.3d 985 (Fed. Cir. 2005) ............................................................................... 9
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`Statutes
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`35 U.S.C. § 112 ........................................................................................................ 11
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`35 U.S.C. § 311 ........................................................................................................ 11
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`35 U.S.C. § 314 .......................................................................................................... 1
`iv
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`35 U.S.C. § 316(e) ................................................................................................... 10
`35 U.S.C. § 316(6) ................................................................................................... 10
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`IPR2018-00709
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`IPR2018-00709
`U.S. Pat. 8,867,351
`US. Pat. 8,867,351
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`v
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit No.
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`IPR2018-00709
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`US. Pat. 8,867,351
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`Declaration of Dou_las Wilson
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`Markup of the Canadian Patent Application No. CA23 93373 to
`obtain US. Patent No. 8,867,351 S - ecification
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`Canadian Patent Application No. CA2393373 (“Priority
`A o o lication”
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`Jud_ n ent
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`Exce ts of COMPUTER NETWORKS 4th ed. 2003
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`LG’s Motion for Partial Summa
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`Jud_ ent
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`Jud n ent
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`Vi
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`INTRODUCTION
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`I.
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`Wi-LAN Inc., Wi-LAN USA, Inc. and Wi-LAN Labs, Inc., (collectively,
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`“Patent Owner”) respectfully submits this Preliminary Response to the Petition
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`seeking inter partes review (“IPR”) of U.S. Patent No. 8,867,351 (“the ’351
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`Patent”).
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`Pursuant to 35 U.S.C. § 314, Patent Owner respectfully requests that the
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`Board refuse to institute IPR because LG Electronics, Inc.; LG Electronics U.S.A.,
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`Inc.; and LG Electronics Mobilecomm U.S.A., Inc. (collectively, “Petitioner”)
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`have not shown a reasonable likelihood of proving that any of claims 1, 3-7 and 9-
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`12 of the ’351 Patent (“Challenged Claims”) would have been obvious in view of
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`any of Petitioner’s four grounds: (1) U.S. Patent No. 8,713,641 to Pagan et al.
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`(“Pagan”) in view of U.S. Patent No. 6,067,301 to Aatresh (“Aatresh”) and U.S.
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`Patent No. 7,474,668 to Bauman et al. (“Bauman”) (claims 1, 3); (2) Pagan in view
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`of Aatresh, Bauman, and U.S. Patent No. 5,608,606 to Blaney (“Blaney”) (claims
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`7, 9); (3) Pagan in view of Aatresh, Bauman and U.S. Patent No. 6,327,254 to
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`Chuah (“Chuah”) (claims 4-6); and (4) Pagan in view of Aatresh, Bauman, Blaney,
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`and Chuah (claims 10-12).
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`Each of Petitioners four grounds relies only on Bauman to teach a critical
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`limitation of every Challenged Claim. However, Bauman is not even prior art to
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`the ’351 Patent. The Challenged Claims are entitled to the asserted filing date of
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`1
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`July 15, 2002, and Petitioner has not carried its burden of proving they are not in
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`view of the evidence presented by Patent Owner below. And Petitioner has also
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`failed to carry its burden to show that Bauman is entitled to the priority date of its
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`provisional application. Consequently, Petitioner cannot prevail, and institution
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`should be denied.
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`Moreover, even if Petitioner carried its burden on the priority issues, which
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`it has not, Petitioner’s grounds do not teach or suggest every limitation of the
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`Challenged Claims. Petitioner’s references lack at least two important claim
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`limitations (the first is required by all independent claims): (1) once the initial
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`allocation of data transmission capacity has occurred, “thereafter allocating a
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`remaining portion, if any, of the data transmission capacity to one or more of the
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`logical channel queues having data for transmission, selected in priority order”
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`(independent claims 1 and 7); and (2) the “all of the data transmission capacity”
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`must be allocated to the selected highest priority logical channel queue (dependent
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`claims 3 and 9). For these reasons also, institution should be denied.
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`II. OVERVIEW OF THE ’351 PATENT
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`The ’351 Patent “relates to an apparatus, system and method for transmitting
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`data flows that have different quality of service (QoS) attributes over a network
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`link.” LGE-1001 (’351 Patent) at 1:30-47. The ’351 Patent teaches “packet data
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`networks” that simultaneously transfer diverse data, e.g., voice, video, and email
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`2
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`data packets. Id. at 1:30-47. Because of this diversity, such networks can become
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`overloaded with data packets at times but be relatively idle at other times. Id. at
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`1:49-64. To overcome these peaks and valleys in network traffic, “traffic shaping”
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`filters the outgoing data packets to reduce burstiness and smooth out the traffic
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`flow, while maintaining bandwidth requirements for the different data services.
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`Claims 1 and 7 are independent, and claim 1 recites a method while claim 7
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`recites a mobile device. Both claims 1 and 7 recite a similar process for handling
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`data flows as part of the method and mobile device, respectively. That process is
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`described below in method terms for ease of discussing the limitations of the two
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`claims together, but Patent Owner is not treating claim 7 as a method claim.
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`The ’351 claims recite a mobile device with multiple “logical channel
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`queues for transmitting data,” each of which may be “associated with a priority and
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`a traffic shaping rate.” Id. at 13:55-58, 14:31-37. Thus, one “logical channel
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`queue” may be for transmitting high priority voice data, while another “logical
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`channel queue” may be for transmitting lower priority email data. Rather than
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`transmitting the data in the logical channel queues haphazardly, the claims require
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`the mobile device to first “select … a highest priority logical channel queue” (e.g.,
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`the queue with voice data) and then “allocate a portion of the data transmission
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`capacity to the selected logical channel queue.” ’351 Patent at 13:59-65, 14:38-43.
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`The claims require limiting the allocated portion by three things: (1) “the traffic
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`3
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`shaping rate associated with the selected logical channel queue,” (2) “the data
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`available for transmission in the selected logical channel queue,” and (3) “the data
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`transmission capacity.” Id. at 13:65-14:3, 14:43-47.
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`Once a particular logical channel queue is permitted to use some portion of
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`the data transmission capacity, the claims next recite repeatedly considering a next
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`highest priority logical channel queue until “the data transmission capacity is
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`exhausted” or “each of the logical channel queues is exhausted.” Id. at 14:4-9,
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`14:48-52. Thus, the ’351 claims envision using the data transmission capacity to
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`send data from each of the logical channel queues unless the data transmission
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`capacity is first exhausted. Finally, the claims recite allocating any remaining
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`portion of the data transmission capacity to one or more of the logical channel
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`queues having data for transmission, selected in priority order. Id. at 14:10-13,
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`14:53-56.
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`Exhibit 20021 is a copy of the ’351 Patent showing all substantive changes to
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`the Priority Application to arrive at the ’351 written description (i.e., punctuation
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`and formatting changes and non-substantive changes (e.g., “Figure” to “FIG.” and
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`“LC1” to “LC.sub.1”) are omitted). Exhibit 2003 is a copy of the Priority
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`1 All Exhibits referenced in this Patent Owner Preliminary Response are
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`exhibits to the Declaration of Douglas Wilson (Ex. 2001) unless otherwise noted.
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`4
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`Application itself. As Exhibit 2002 demonstrates, the ’351 specification and the
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`Priority Application are substantively identical, except for the claims, which Patent
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`Owner addresses infra. The figures of the Priority Application are identical to the
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`’351 figures.
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`Claim 1 of the ’351 Patent is reproduced below for ease of reference. The
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`traffic shaping rate limitations challenged by Petitioner are included in bold:
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`A method of operating a mobile device, comprising:
`operating a plurality of logical channel queues, each of the logical
`channel queues associated with a priority and a traffic shaping
`rate;
`selecting, from the plurality of logical channel queues, a highest
`priority logical channel queue having data for transmission and
`whose traffic shaping rate is not reached;
`allocating a portion of a data transmission capacity available to the
`mobile device, to the selected logical channel queue, wherein the
`allocated portion is limited by:
`the traffic shaping rate associated with the selected logical
`channel queue,
`the data available for transmission in the selected logical channel
`queue, and
`the data transmission capacity;
`repeatedly considering a next highest priority logical channel queue
`for selecting and allocating, until at least one of:
`the data transmission capacity is exhausted, and
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`5
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`IPR2018-00709
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`US. Pat. 8,867,351
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`each of the plurality of logical channel queues is considered for
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`selecting; and thereafter
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`allocating a remaining portion,
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`if any, of the data transmission
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`capacity to one or more of the logical channel queues having data
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`for transmission, selected in priority order.
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`’35] Patent at 13:55-14:14.
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`III.
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`CLAIIVI CONSTRUCTION
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`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this
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`review, Patent Owner believes that no term requires construction at this time.
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`If
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`trial is instituted, or if Petitioner later presents any new theories or interpretations
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`of the references, Patent Owner expressly reserves the right to further argue
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`specific claim constructions.
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`For the sake of completeness, Patent Owner includes as exhibits the claim
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`construction briefing in the pending litigation between Patent Owner and
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`Petitioner. EX. 2013 (Wi-LAN Op. Br.); Ex. 2014 (LG Op. Br.); Ex. 2015 (Wi-
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`LAN Resp. Br.); Ex. 2016 (LG Resp. Br.).
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`In that litigation, Petitioner requested
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`constructions for these terms from the ’35] Patent:
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`u lain &
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`“associated with 3
`priority and a traffic
`shaping rate”
`claims 1, 7
`“priority”
`claims 1, Z
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`“having the [priority] and
`[traffic shaping rate] quality
`of service attributes of the
`held ackets”
`“the priority of a packet
`laced into a lo _ical channel
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`No construction
`necessary; plain &
`ordinary meaning applies.
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`No construction
`necess
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`“traffic shaping rate”
`[claims 1, 7]
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`“whose traffic shaping
`rate is not reached”
`[claims 1, 7]
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`queue compared to the
`priority of packets placed into
`other logical channel queues”
`Invalid under 35 U.S.C. §
`112, ¶¶ 1, 2, as indefinite,
`lacking written description
`support, and/or nonenabled.
`Invalid under 35 U.S.C. §
`112, ¶¶ 1, 2, as indefinite,
`lacking written description
`support, and/or nonenabled.
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`ordinary meaning applies.
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`Not invalid.
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`Not invalid.
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`Ex. 2014 (LG Op. Br.) at 17-20. But in this IPR, Petitioner alleges that “no claim
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`term requires express construction.” Pet. at 12.
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`Petitioner also filed a motion for summary
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`judgment for alleged
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`indefiniteness of the ’351 claims, which may also be relevant. Ex. 2006 (LG
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`MSJ); Ex. 2007 (Wi-LAN Response to MSJ); Ex. 2008 (LG Reply to MSJ).
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`IV. DISCUSSION OF APPLICABLE LAW
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`“Under section 119, the claims set forth in a United States application are
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`entitled to the benefit of a foreign priority date if the corresponding foreign
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`application supports the claims in the manner required by section 112, ¶ 1.” In re
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`Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). The test for adequacy of written
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`description is whether a patent’s disclosure reasonably conveys to a person of
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`ordinary skill “that the inventor had possession of the claimed subject matter as of
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`the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
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`Cir. 2010) (en banc). Compliance with the written description requirement is a
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`7
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`question of fact. Id. Because Petitioner has not asserted that the ’351 Patent itself
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`or the Priority Application lacks enablement with respect to the Challenged Claims
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`or presented any evidence to that effect, Patent Owner will not address enablement
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`at this time.
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`There are no specific disclosure requirements to satisfy the written
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`description requirement. Id. at 1352. In fact, the level of detail required in a
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`disclosure “varies depending on the nature and scope of the claims and on the
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`complexity and predictability of the relevant technology.” Id. at 1351. In a
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`predictable field, less disclosure may be necessary to satisfy the written description
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`requirement. See In re Skvorecz, 580 F.3d 1262, 1270 (Fed. Cir. 2009); see also
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`Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926 (Fed. Cir. 1990) (“Of
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`necessity, the disclosure required by section 112 is directed to those skilled in the
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`art.”).
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`There is “certainly no length requirement” for a disclosure because “an
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`inventor is not required to describe every detail of his invention.” In re Hayes
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`Microprocessor Litigation, 982 F.2d 1527, 1534 (Fed. Cir. 1992). There is also no
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`requirement that a specification disclose every embodiment covered by the claims.
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`See LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1335, 1345 (Fed. Cir.
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`2005) (“A claim will not be invalidated on section 112 grounds simply because the
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`embodiments of the specification do not contain examples explicitly covering the
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`8
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`full scope of the claim language.”). A patent can satisfy the written description
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`requirement even if the claims are “broader than the specific examples disclosed.”
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`Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1371 (Fed. Cir. 2009)
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`(reversing JMOL of lack of written description even though the specification did
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`not contain “working examples” of the claimed features). Nor does a specification
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`have to include “information that is already known and available to the
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`experienced public.” Space Systems/Loral, Inc. v. Lockheed Martin Corp., 405
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`F.3d 985, 987 (Fed. Cir. 2005).
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`All that is required is for the patent to convey to a person of ordinary skill in
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`the art that the inventor had possession of the claimed subject matter. See
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`ScriptPro, LLC v. Innovation Assocs., 762 F.3d 1355, 1359 (Fed. Cir. 2014)
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`(reversing summary judgment of invalidity for lack of written description and
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`noting that “the specification’s description of embodiments having [a certain
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`feature] does not necessarily mean that the only described invention [has that
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`feature]”). In Skvorecz, the Federal Circuit reversed a PTO rejection for lack of
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`written description because “a person skilled in the mechanical arts would
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`understand the specification” included support for a claim limitation the PTO
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`argued was not explicitly disclosed. 580 F.3d at 1270; see also Space
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`Systems/Loral, 405 F.3d at 987 (reversing judgment of invalidity for lack of
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`written description based on testimony from the patentee’s expert). Written
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`9
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`description demands no particular form of disclosure. In TurboCare v. General
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`Electric Co., the Federal Circuit reversed a grant of summary judgment on
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`invalidity for lack of written description even though the disclosure was “not a
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`model of clarity.” TurboCare Div. of Demag Delaval Turbomachinery Corp. v.
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`Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001).
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`Even in the limited circumstances where the sufficiency of written
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`description is properly raised in an IPR proceeding, it remains axiomatic that a
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`disclosure “does not have to provide in haec verba support for the claimed” term.
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`Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1167 (Fed. Cir. 2012).
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`V. THE BURDEN OF PERSUASION IS ON PETITIONER TO SHOW THE ’351
`CLAIMS ARE UNSUPPORTED BY THE PRIORITY APPLICATION
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`In an inter partes review proceeding, the burden of persuasion is (and
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`remains) on the Petitioner to prove unpatentability. 35 U.S.C. § 316(e). Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (“In
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`this case, Dynamic, as the petitioner, had the burden of persuasion to prove
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`unpatentability by a preponderance of the evidence, and this burden never
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`shifted.”); see also Freebit AS v. Bose Corp., IPR2017-01308, 2017 WL 5202106,
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`at *5 (P.T.A.B. Nov. 8, 2017) (“On the issue of entitlement of a patent claim to an
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`earlier effective filing date, the recent decision in Dynamic Drinkware LLC v.
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`10
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`National Graphics, Inc., 800 F.3d 1375, 1380-81 (Fed. Cir. 2015), is instructive
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`IPR2018-00709
`U.S. Pat. 8,867,351
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`regarding the parties’ respective burdens of persuasion and production.”).
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`Challenges made under 35 U.S.C. § 112, like written description, are not
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`permitted in inter partes review. See 35 U.S.C. § 311 (limiting challenges in inter
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`partes review to “a ground that could be raised under section 102 or 103 and only
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`on the basis of prior art consisting of patents or printed publications”). Even so,
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`petitioners sometimes try to circumvent this rule by raising the written description
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`issue in the context of an invalidity challenge based on an intervening reference.
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`Petitioner argues that a patent is not presumed to be entitled to the filing date
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`of its priority application, citing Dynamic Drinkware, LLC v. National Graphics,
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`Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). Pet. at 6. But Dynamic Drinkware held
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`that a petitioner in inter partes review bears the burden of persuasion to prove
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`unpatentability by a preponderance of the evidence, and that burden never shifts.
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`800 F.3d at 1379; Freebit AS, 2017 WL 5202106, at *6 (holding that “the burden
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`of persuasion to prove unpatentability always rests with the petitioner”). In fact,
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`Dynamic Drinkware held that the burden of persuasion on the petitioner extends
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`even to showing an asserted prior art patent is entitled to the filing date of a
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`provisional when that provisional date was needed for the asserted prior art patent
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`to be prior art. 800 F.3d at 1380 (“As the Board found, however, Dynamic [the
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`petitioner] failed to carry its burden of proving that Raymond’s [the asserted prior
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`art patent] effective date was earlier than the date that the invention claimed in the
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`’196 patent was reduced to practice.”).
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`Dynamic Drinkware also explained the burdens of production in inter partes
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`review:
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`In this case, Dynamic, as the petitioner, had the burden of
`persuasion to prove unpatentability by a preponderance of the
`evidence, and this burden never shifted. Dynamic also had the initial
`burden of production, and it satisfied that burden by arguing that
`Raymond anticipated the asserted claims of the ’196 patent under
`§ 102(e)(2).
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`The burden of production then shifted to National Graphics
`[patent owner] to argue or produce evidence that either Raymond does
`not actually anticipate, or, as was argued in this case, that Raymond is
`not prior art because the asserted claims in the ’196 patent are entitled
`to the benefit of a filing date (constructive or otherwise) prior to the
`filing date of Raymond. National Graphics produced evidence that the
`invention claimed in the ’196 patent was reduced to practice prior to
`the filing date of Raymond, and thus contended that the asserted
`claims were entitled to a date of invention prior to that of the
`Raymond patent.
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`As a result, the burden of production returned to Dynamic to
`prove that either the invention was not actually reduced to practice as
`argued, or that the Raymond prior art was entitled to the benefit of a
`filing date prior to the date of National Graphics’ reduction to
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`practice. As the Board found, however, Dynamic failed to carry its
`burden of proving that Raymond’s effective date was earlier than the
`date that the invention claimed in the ’196 patent was reduced to
`practice. The burden of production was on Dynamic to prove that,
`under § 119(e)(1), Raymond was entitled to the benefit of the filing
`date of its provisional application, and it failed to do that.
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`800 F.3d at 1379-80; see also Freebit AS, 2017 WL 5202106, at *5-*6 (reciting the
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`shifting burden of production). Dynamic Drinkware did not hold as Petitioner
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`suggests that a patent with a written description that is substantively identical to its
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`parent is not presumptively entitled to the filing date of that parent. Regardless, as
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`the Federal Circuit noted, the petitioner bore the burden of persuasion even for the
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`patentee’s earlier reduction to practice. The patent owner bore only a burden of
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`production on this issue, which it satisfied by producing evidence of an earlier
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`reduction to practice. The burden of persuasion always remained on the petitioner
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`even for the challenged claims’ entitlement to an earlier priority date. Thus,
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`Dynamic Drinkware holds that Petitioner bears the burden of persuasion as to
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`whether the ’351 claims are entitled to the filing date of the Priority Application
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`once Patent Owner comes forward with evidence to show they are so entitled,
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`which it does infra.
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`VI. THE ’351 PATENT IS ENTITLED TO ITS EARLIEST ASSERTED PRIORITY
`DATE
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`The ’351 specification, just like the Priority Application, discloses both the
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`use of priority in selecting logical channel queues for use of available data
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`transmission capacity, and the optional addition of traffic shaping to that selection
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`process. That is precisely what the ’351 claims recite. Persons of ordinary skill in
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`the art in 2002 understood these concepts, and detailed descriptions in the Priority
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`Application were unnecessary. That is precisely what the ’351 claims recite.
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`Petitioner is unlikely to prevail in showing that the Priority Application did not
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`disclose the use of these concepts in the selection of logical channel queues for use
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`of available data transmission capacity. And Petitioner is even more unlikely to
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`prevail in showing that a person of ordinary skill in the art would not have
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`understood that the Priority Application shows that the inventors had possession of
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`the subject matter recited in the ’351 claims as of July 15, 2002.
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`A.
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`Petitioner Concedes that the Priority Application Discloses Use of
`Priority in Selecting Logical Channel Queues
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`Petitioner concedes that the ’351 Patent (and thus the Priority Application)
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`discloses the use of priority in selecting logical channel queues for data
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`transmission. Petitioner asserts that “the ’351 Patent at Fig. 5 discloses a priority-
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`based algorithm [for] selecting a logical channel queue in order of priority for
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`transmitting queued data on an output link. LGE-1001, Fig. 5, 7:16-37, 10:20-48;
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`LGE-1003, ¶¶30-31.” Petition at 4. Thus, there is no dispute that the ’351 Patent,
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`and its Priority Application, disclose this subject matter.
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`B.
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`The Priority Application Discloses Traffic Shaping Using an
`Associated Rate as a Limit on a Per Logical Channel Basis
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`Petitioner goes even further and contends that the ’351 Patent discloses only
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`priority-based allocation. Petition at 5, 9. Petitioner focuses its argument on the
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`alleged lack of discussion about “traffic shaping” in the specification and
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`specifically in the process recited in the claims. Id. at 8-9. Petitioner’s arguments
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`contradict the disclosures of the ’351 specification and Priority Application. The
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`’351 specification and the Priority Application disclose the use of traffic shaping in
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`determining a limit on the particular logical channel queue selected for
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`transmission—precisely what is claimed. A person of ordinary skill in the art
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`would recognize that the inventors of the ’351 Patent possessed the subject matter
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`recited in the Challenged Claims as of July 15, 2002 as shown by the Priority
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`Application.
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`Petitioner has not challenged the continuity of disclosure from the Priority
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`Application to the ’351 Patent. Nevertheless, Patent Owner demonstrates that
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`continuity here to avoid any question. The ’351 Patent claims priority to the
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`Priority Application through a series of intervening applications: U.S. Patent
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`Application Serial Nos. 10/521,581 (Ex. 2009), 12/028,365 (Ex. 2010), 13/468,925
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`(Ex. 2011), and 14/102,120 (Ex. 2012). As shown in those exhibits, each of the
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`applications after 10/521,581 incorporates all of the previous applications in the
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`chain by reference in their entireties. Ex. 2010 at 1; Ex. 2011 at 1; Ex. 2012 at 1.
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`Moreover, the ’351 Patent written description (excluding title, abstract, and claims)
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`is identical to the written description portion of U.S. Patent Application Serial No.
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`10/521,581. Compare ’351 Patent (LGE-1001) to Ex. 2009. Patent Owner has
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`compared the electronic versions of these written descriptions from the U.S. Patent
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`and Trademark Office and found them identical. Thus, continuity of disclosure is
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`demonstrated from the Priority Application to the ’351 Patent for all common
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`subject matter as reflected in Exhibit 2002.
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` The Specification Discloses the Claimed Use of Traffic
`1.
`Shaping and Priority in Selecting Logical Channels for
`Transmission
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`Contrary to Petitioner’s assertion, the ’351 specification does not restrict the
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`QoS mechanism to only using a “priority.”2 The ’351 Patent discloses a “QoS
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`processor” containing a “radio link controller” (“RLC”) that performs the
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`2 Because the ’351 Patent specification and the Priority Application are
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`substantively identical, reference throughout this section to the ’351 Patent is,
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`unless otherwise noted, intended to refer to the Priority Application as well. Still,
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`Patent Owner provides citations for both.
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`“prioritization, segmentation and, if desired, traffic shaping of data packets for
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`transmission over the a