UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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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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`
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`Case IPR2018-00710
`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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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC.,
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner
`
`v.
`
`WI-LAN INC., WI-LAN USA, INC., WI-LAN LABS, INC.,
`Patent Owner
`
`
`
`
`
`Case IPR2018-00710
`U.S. Patent 8,867,351
`
`
`
`
`
`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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`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 Priority Date ............................................. 13
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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 .............. 14
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`1. The Specification Discloses the Claimed Use of Traffic Shaping
`and Priority in Selecting Logical Channels for Transmission ....... 16
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`2. Petitioner Failed to Show a Reasonable Likelihood of Carrying Its
`Burden ............................................................................................ 26
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`VII. Petitioner Cannot Show a Reasonable Likelihood of Prevailing on any
`Challenged Claim .......................................................................................... 30
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`VIII. Conclusion ..................................................................................................... 31
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`i
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`TABLE OF AUTHORITIES
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`IPR2018-00710
`U.S. Pat. 8,867,351
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`Ariad Pharms., Inc. v. Eli Lilly & Co.
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`CASES
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` 598 F.3d 1336 (Fed. Cir. 2010) ...................................................................... 7, 28
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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, 12, 13
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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, 12, 30
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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
`
`In re Skvorecz
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` 580 F.3d 1262 (Fed. Cir. 2009) ............................................................ 8, 9, 27, 29
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`LizardTech, Inc. v. Earth Res. Mapping, Inc.
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` 424 F.3d 1335 (Fed. Cir. 2005) ............................................................................. 8
`
`Martek Biosciences Corp. v. Nutrinova, Inc.
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` 579 F.3d 1363 (Fed. Cir. 2009) ............................................................................. 8
`ii
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`Pozen Inc. v. Par Pharm., Inc.
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`IPR2018-00710
`U.S. Pat. 8,867,351
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` 696 F.3d 1151 (Fed. Cir. 2012) .................................................................... 10, 27
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`S3 Inc. v. NVIDIA Corp.
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` 259 F.3d 1364 (Fed. Cir. 2001) ........................................................................... 28
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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 ........................................................................................................ 12
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`35 U.S.C. § 311 ........................................................................................................ 12
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`35 U.S.C. § 314 .......................................................................................................... 1
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`35 U.S.C. § 316(e) ................................................................................................... 11
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`iii
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`IPR2018-00710
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`U.S. Pat. 8,867,351
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit No.
`2001
`2002
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`2003
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`2004
`2005
`2006
`2007
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`2008
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`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
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`Description
`Declaration of Douglas Wilson
`Markup of the Canadian Patent Application No. CA2393373 to
`obtain U.S. Patent No. 8,867,351 Specification
`Canadian Patent Application No. CA2393373 (“Priority
`Application”)
`Lomp Declaration
`Excerpts of COMPUTER NETWORKS (4th ed. 2003)
`LG’s Motion for Partial Summary Judgment
`Wi-LAN’s Opposition to LG’s Motion for Partial Summary
`Judgment
`LG’s Reply in Support of Motion for Partial Summary
`Judgment
`U.S. Patent Application Serial No. 10/521,581
`U.S. Patent Application Serial No. 12/028,365
`U.S. Patent Application Serial No. 13/468,925
`U.S. Patent Application Serial No. 14/102,120
`Wi-LAN Opening Claim Construction Brief
`LG Opening Claim Construction Brief
`Wi-LAN Response Claim Construction Brief
`LG Response Claim Construction Brief
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`iv
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`I.
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`INTRODUCTION
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`Patent Owner Wi-LAN Inc., Wi-LAN USA, Inc. and Wi-LAN Labs, Inc.,
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`respectfully submit this Preliminary Response to the Petition seeking inter partes
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`review (“IPR”) of U.S. Patent No. 8,867,351 (“the ’351 Patent”) (LGE-1001).
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`Under 35 U.S.C. § 314, Patent Owner requests that the Board refuse to
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`institute IPR because Petitioner has not shown a reasonable likelihood of proving
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`that any of claims 1, 3-7, and 9-12 of the ’351 Patent (“Challenged Claims”) would
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`have been obvious in view of Petitioner’s five different combinations: (1) U.S.
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`Patent Application Publication No. 2009/0168793 to Fox et al. (“Fox”) (claim 1);
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`(2) Fox in view of U.S. Patent Application Publication No. 2009/0046605 to Gao
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`et al. (“Gao”) (claims 4, 6); (3) Fox in view of Gao and U.S. Patent No. 7,263,064
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`to Yoshimura et al. (“Yoshimura”) (claims 7, 10, 12); (4) Fox in view of Gao,
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`Yoshimura, and U.S. Patent No. 7,675,926 to Olsen et al. (“Olsen”) (claims 3, 9);
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`and (5) Fox in view of Gao, Yoshimura, and U.S. Patent No. 6,804,251 to Limb et
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`al. (“Limb”) (claims 5, 11).
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`Petitioner acknowledges that “the instant IPR relies upon evidence and the
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`contention that the ’351 Patent is not entitled to the earliest claimed priority date.”
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`Petition at 13. The sole issue raised by Petitioner with respect to priority is whether
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`Canadian Patent Application CA2393373, which has a priority date of July 15,
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`2002 (“Priority Application”), supports the ’351 Patent’s claims. Petitioner
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`1
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`IPR2018-00710
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`U.S. Pat. 8,867,351
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`challenges written description support for just one specific concept from the ’351
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`claims—the “traffic shaping rate.” Petitioner is wrong because the Priority
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`Application (which is substantively identical to the ’351 Patent’s written
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`description) supports the “traffic shaping rate” limitations.
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`Each reference cited by Petitioner is dated after the ’351 Patent’s foreign
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`priority date of July 15, 2002. Without depriving Patent Owner of its rightful
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`priority date, Petitioner concedes that it cannot prevail in showing a reasonable
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`likelihood of prevailing on its assertion of invalidity of any Challenged Claim.
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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.” ’351 Patent at 1:30-47. The ’351 Patent teaches “packet data networks” that
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`simultaneously transfer diverse data, e.g., voice, video, and email data packets. Id.
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`at 1:30-47. Because of this diversity, such networks can become overloaded with
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`data packets at times but be relatively idle at other times. Id. at 1:49-64. To
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`overcome these peaks and valleys in network traffic, “traffic shaping” filters the
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`outgoing data packets to reduce burstiness and smooth out the traffic flow, while
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`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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`2
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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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`shaping rate associated with the selected logical channel queue,” (2) “the data
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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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`3
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`U.S. Pat. 8,867,351
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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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`Application itself. As Exhibit 2002 demonstrates, the ’351 specification and the
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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:
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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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`U.S. Pat. 8,867,351
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`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
`each of the plurality of logical channel queues is considered for
`selecting; and 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, selected in priority order.
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`’351 Patent at 13:55-14:14.
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`5
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`III. CLAIM CONSTRUCTION
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`IPR2018-00710
`U.S. Pat. 8,867,351
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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. 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.). In that litigation, Petitioner requested
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`constructions for these terms from the ’351 Patent:
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`Claim Term
`“associated with a
`priority and a traffic
`shaping rate”
`[claims 1, 7]
`“priority”
`[claims 1, 7]
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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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`
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`LG’s Construction
`“having the [priority] and
`[traffic shaping rate] quality
`of service attributes of the
`held packets”
`“the priority of a packet
`placed into a logical channel
`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.
`6
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`Wi-LAN’s Construction
`No construction
`necessary; plain &
`ordinary meaning applies.
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`No construction
`necessary; plain &
`ordinary meaning applies.
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`Not invalid.
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`Not invalid.
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`IPR2018-00710
`U.S. Pat. 8,867,351
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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.” Petition at 11.
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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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`question of fact. Id. Because Petitioner has not asserted that the ’351 Patent itself
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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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`full scope of the claim language.”). A patent can satisfy the written description
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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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`8
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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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`description demands no particular form of disclosure. In TurboCare v. General
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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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`9
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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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`National Graphics, Inc., 800 F.3d 1375, 1380-81 (Fed. Cir. 2015), is instructive
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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). Petition at 5. But Dynamic Drinkware
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`held 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
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`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
`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 PRIORITY DATE
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`The ’351 specification, just like the Priority Application, discloses both the
`
`use of priority in selecting logical channel queues for use of available data
`
`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 of
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`implementation details in the Priority Application were unnecessary. Petitioner is
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`unlikely to prevail in showing that the Priority Application did not disclose the use
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`of these concepts to effectuate the selection of logical channel queues for use of
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`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
`
`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, ¶31.” Petition at 4. Thus, there is no dispute that the ’351 Patent, 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 4, 8. 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 7-8. 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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`applying a data rate 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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`1. The Specification Discloses the Claimed Use of Traffic
`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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`“prioritization, segmentation and, if desired, traffic shaping of data packets for
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`transmission over the available radio resources.” ’351 Patent at 9:11-13.
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`To enable the “prioritization, segmentation and, if desired, traffic shaping of
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`data packets,” the ’351 specification explains that “[l]ogical channel queues
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`LC.sub.i make their enqueued data available to a Radio Link Controller (RLC)
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`140.” ’351 Patent at 8:12-13; Ex. 2003 (Priority Application) at 10:5-6. The ’351
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`Patent references Figure 3 as part of this description, reproduced below:
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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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`The ‘351 specification continues, noting “RLC 140 includes a segmentation
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`cache 160 for each logical channel queue LC.sub.i in each PQE 108.sub.x.” ’351
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`Patent at 9:13-15; Ex. 2003 (Priority Application) at 11:18-19. The ’351
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`specification also states, “Pools 144 and 152 report the available capacity of each
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`of their respective channels assigned to a PQE 108.sub.x to RLC 140 which will
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`then select the contents of a segmentation cache 160.sub.x,1 for the next
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`transmission on a channel (DDCH or BDCH) assigned to that PQE 108.sub.x
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`channel.” ’351 Patent at 9:30-35; Ex. 2003 (Priority Application) at 11:28-31. The
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`’351 disclosure thus describes a Radio Link Controller (RLC) that obtains
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`information regarding the available data transmission capacity of radio links. Ex.
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`2004 (Lomp Dec.) at ¶ 38.
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`The RLC then performs the prioritization, segmentation, and optional traffic
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`shaping of the data taken from the segmentation caches associated with the logical
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`queues to fill that available data transmission capacity. Ex. 2004 (Lomp Dec.) at
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`¶ 38. In fact, the ’351 specification provides examples of this scenario at column
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`9, line 37 through column 10, line 3. ’351 Patent at 9:37-10:3; Ex. 2003 (Priority
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`Application) at 11:32-12:20.
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`In expounding on traffic shaping specifically, the ’351 Patent further
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`describes the use of traffic shaping in the context of the ’351 algorithm:
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`Further, traffic shapers can be implemented and configured on a per
`logical channel basis. This allows, for example, voice tele
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