Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 28
`Entered: May 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., BLACKBERRY CORP.,1
`LG ELECTRONICS INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-00222
`Patent 7,167,487 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ROBERT J. WEINSCHENK, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 BlackBerry Corp., who filed a petition in IPR2019-01282, has been joined
`as a petitioner to this proceeding.
`
`

`

`IPR2019-00222
`Patent 7,167,487 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Apple Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and
`
`Samsung Electronics America, Inc. (“Petitioner”)2,3 filed a Petition
`
`requesting inter partes review of claims 1–6 (“the challenged claims”) of
`
`U.S. Patent No. 7,167,487 B2 (Ex. 1001, “the ’487 patent”). Paper 5
`
`(“Pet.”), 1. Uniloc 2017 LLC (“Patent Owner”), filed a Preliminary
`
`Response. Paper 9. Upon consideration of the Petition and Preliminary
`
`Response, we instituted inter partes review of all challenged claims on all
`
`grounds raised. Paper 11 (“Dec. Inst.”).
`
`Patent Owner filed a Response to the Petition (Paper 14, “PO Resp.”),
`
`Petitioner filed a Reply (Paper 16, “Pet. Reply”), and Patent Owner filed a
`
`Sur-Reply (Paper 17, “PO Sur-Reply”). An oral hearing was held on March
`
`3, 2020, and the hearing transcript is included in the record. See Paper 26
`
`(“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`
`set forth below, we find Petitioner has shown by a preponderance of
`
`evidence that claims 1–6 of the ’487 patent are unpatentable.
`
`
`2 Petitioner identifies LG Electronics U.S.A., Inc. and LG Electronics
`Mobilecomm U.S.A. Inc. as real parties-in-interest. Pet. 76.
`
`3 BlackBerry Corp., which has been joined as a party to this proceeding, is
`also a Petitioner in this proceeding. See Paper 15.
`
`2
`
`

`

`IPR2019-00222
`Patent 7,167,487 B2
`
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner identify various matters between Uniloc
`
`USA, Inc. or Uniloc 2017 LLC, and Apple, Inc., Blackberry Corp., HTC
`
`America, Inc., Huawei Device USA, Inc., LG Electronics USA, Inc.,
`
`Microsoft Corp., Motorola Mobility, LLC, Samsung Electronics America,
`
`Inc., or ZTE (USA), in various Federal District Courts, including District
`
`Courts for the Eastern, Western, and Northern Districts of Texas, the Central
`
`and Northern Districts of California, the District of Delaware, and the
`
`Western District of Washington, as matters that can affect or be affected by
`
`this proceeding. See Pet. 76; Paper 7, 2.
`
`C. Evidence Relied Upon4
`
`References
`
`MAC protocol specification (Release 1999),
`3rd Generation Partnership Project, 3GPP
`TS 25.321 V3.6.0 (2000–12) (“TS 25.321”).
`Corrections to logical channel priorities in
`MAC protocol, 3rd Generation Partnership
`Project, 3GPP TSG-RAN WG2 Meeting #18
`(“R2-010182”).
`Services provided by the physical layer
`(Release 1999), 3rd Generation Partnership
`Project, 3GPP TS 25.302 V3.6.0 (2000–09)
`(“TS 25.302”).
`
`Effective Date5 Exhibit
`
`Dec. 10, 2000
`
`1007
`
`Jan. 23, 2001
`
`1008
`
`Oct. 16, 2000
`
`1009
`
`
`4 Petitioner also relies upon the Declarations of R. Michael Buehrer, Ph.D.,
`FIEEE (Exs. 1002, 1019) and Craig Bishop (Exs. 1006, 1018).
`
`5 Petitioner relies upon the Bishop Declarations to establish the public
`availability of TS 25.302, TS 25.321, and R2-010182, and their respective
`publication dates. See Pet. 9–10, 12, 15; Pet. Reply 1–16.
`
`3
`
`

`

`IPR2019-00222
`Patent 7,167,487 B2
`
`
`References
`
`Effective Date5 Exhibit
`
`Peisa
`
`US 6,850,540 B1
`
`Feb. 25, 20006
`
`1013
`
`
`
`D. Instituted Grounds of Unpatentability
`
`We instituted review on the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §
`
`Reference(s)/Basis
`
`1–6
`
`1, 2
`
`4–6
`
`103(a)
`
`103(a)
`
`103(a)
`
`TS 25.321, TS 25.302,
`R2-010182
`
`Peisa
`
`Peisa, TS 25.302
`
`II. ANALYSIS
`
`A. The ’487 Patent
`
`The ’487 patent “relates to a network with a first plurality of logic
`
`channels with which is associated a second plurality of transport channels
`
`. . . for the transmission of transport blocks formed from packet units of the
`
`logic channels.” Ex. 1001, 1:4–8. According to the ’487 patent, “[s]uch a
`
`network is known from the 3rd Generation Partnership Project (3GPP);
`
`Technical Specification Group (TSG) RAN; Working Group 2 (WG2);
`
`Radio Interface Protocol Architecture; TS 25.302 V3.6.0.” Id. at 1:9–12.
`
`The ’487 patent describes the 3GPP network architecture disclosed in
`
`TS 25.302 V3.6.0 as follows:
`
`A physical layer offers transport channels or transport links to
`the MAC [Media Access Control] layer. The MAC layer
`makes logic channels or logic links available to an RLC layer
`(RLC=Radio Link Control). The packet units formed in the
`
`
`6 Petitioner relies on the U.S. filing date of Peisa to establish its availability
`as prior art under 35 U.S.C. § 102(e). See Pet. 17.
`
`4
`
`

`

`IPR2019-00222
`Patent 7,167,487 B2
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`
`RLC layer are packed in transport blocks in the MAC layer,
`which blocks are transmitted from the physical layer through
`physical channels to a terminal, or the other way about, by the
`radio network control. Apart from such a multiplex or
`demultiplex function, the MAC layer also has the function of
`selecting suitable transport format combinations (TFC). A
`transport format combination represents a combination of
`transport formats for each transport channel. The transport
`format combination describes inter alia how the transport
`channels are multiplexed into a physical channel in the physical
`layer.
`
`Id. at 1:14–28. This architecture is illustrated in Figure 2 of the ’487 patent,
`
`which is reproduced below.
`
`Figure 2 is a “layer model” illustrating the various functions of a terminal or
`
`radio network controller in a 3GPP wireless network. Id. at 4:63–64, 6:9–
`
`16. The “layer model” includes a physical layer (PHY), a data connection
`
`
`
`5
`
`

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`IPR2019-00222
`Patent 7,167,487 B2
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`layer (MAC and RLC), and a radio resource control layer (RRC). Id. at
`
`6:16–19. The RRC layer is responsible for signaling between a wireless
`
`terminal and a base station’s radio network controller (RNC), and “controls
`
`the layers MAC and PHY via control lines 10 and 11.” Id. at 6:22–27. The
`
`RLC layer receives data in the form of packet units from application
`
`channels 14. Id. at 6:32–35. The MAC layer makes logic channels 13
`
`available to the RLC layer. Id. at 6:30–32. The PHY layer makes transport
`
`channels 12 available to the MAC layer. Id. at 6:29–30.
`
`The MAC layer packs RLC layer packet units into transport blocks
`
`that are transmitted from a base station’s radio network controller to a
`
`mobile terminal, or vice versa, through a radio channel. Id. at 6:34–37. It
`
`does so by selecting a suitable transport format combination from a set of
`
`transport format combinations. Id. at 6:37–40. Each transport format
`
`combination describes “how the transport channels are multiplexed into a
`
`physical channel in the physical layer (time multiplex).” Id. at 6:42–45.
`
`The MAC layer selection is performed by a selection algorithm that can be
`
`implemented in hardware or software, and in a mobile station or radio
`
`network controller. Id. at 7:43–47. The selection algorithm selects a
`
`transport format combination based on MAC logic channel priorities
`
`(MLPs), RLC layer data buffer occupancies (BOs), and transport channel
`
`transmission time intervals (TTIs). Id. at 7:15–22.
`
`The ’487 patent is directed toward “an optimized selection process for
`
`selecting a suitable transport format combination.” Id. at 1:29–31. The
`
`optimized selection process integrates into the MAC selection algorithm “the
`
`condition that a minimum bit rate can be guaranteed suitable for the
`
`respective logic channels.” Id. at 1:61–65.
`
`6
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`

`

`IPR2019-00222
`Patent 7,167,487 B2
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`B. Illustrative Claims
`
`Of the challenged claims, claim 1 of the ’487 patent is independent,
`
`and each of claims 2–6 depend from it, either directly or indirectly. Claim 1
`
`is reproduced below.
`
`1. A network with a first plurality of logic channels
`with which is associated a second plurality of
`transport channels, which transport channels arc
`provided for transmitting transport blocks formed
`from packet units of the logic channels, wherein a
`plurality of valid transport format combinations is
`allocated to the transport channels, which
`combinations indicate the transport blocks provided
`for transmission on each transport channel, wherein a
`selection algorithm is provided for selecting the
`transport format combinations, and wherein the
`selection algorithm uses a minimum bit rate criteria
`applicable to the respective logic channel.
`
`Ex. 1001, 14:40–50.
`
`C. Level of Ordinary Skill in the Art
`
`The Petition itself does not set forth the qualifications of a person of
`
`ordinary skill in the art, but instead cites to paragraphs 24 through 26 of the
`
`Buehrer Declaration. See Pet. 14 n.3 (citing Ex. 1002 ¶¶ 24–26). According
`
`to Dr. Buehrer, a person of ordinary skill in the art would have had “a
`
`Bachelor’s Degree (or higher degree) in an academic area emphasizing
`
`telecommunications systems with two or more years of work experience in
`
`telecommunications systems” or “at least a Master of Science Degree in an
`
`academic area emphasizing telecommunications systems, or an equivalent
`
`field (or a similar technical Master’s Degree, or higher degree) with a
`
`concentration in telecommunications systems.” Ex. 1002 ¶ 25. Patent
`
`Owner does not dispute this definition or offer an alternative. See PO Resp.
`
`7
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`

`

`IPR2019-00222
`Patent 7,167,487 B2
`
`
`12.
`
`We find Dr. Buehrer’s opinion regarding the qualifications of a person
`
`of ordinary skill in the art reasonably reflects the level of skill evidenced by
`
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001). Accordingly, we adopt it as our own.
`
`D. Claim Construction
`
`In an inter partes review filed before November 13, 2018, claim terms
`
`of an unexpired patent are given their broadest reasonable interpretation in
`
`light of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b) (2018); 83 Fed. Reg. 51,340. Under the broadest reasonable
`
`interpretation standard, claim terms are generally given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Only claim terms which are in
`
`controversy need to be construed and only to the extent necessary to resolve
`
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Neither Petitioner nor Patent Owner propose any construction for any
`
`claim term. See Pet. 20–21; PO Resp. 13. Rather, both parties agree that no
`
`claim term requires express construction, and that all terms should be
`
`understood to have their broadest reasonable interpretation in light of the
`
`specification. See Pet. 20–21; PO Resp. 13. We did not construe any claim
`
`term in our Institution Decision, and neither party disputes that decision.
`
`See Dec. Inst. 7; PO Resp. 13, Pet. Reply 1–26.
`
`Accordingly, we construe all claim terms to have their plain and
`
`ordinary meaning, and do not expressly construe any claim terms.
`
`8
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`

`

`IPR2019-00222
`Patent 7,167,487 B2
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`E. Public Availability of R2-010182
`
`R2-010182 is a 3GPP change request entitled “Corrections to logical
`
`channel priorities in MAC protocol,” and proposes a modification to
`
`TS 25.321 affecting both the UE and RAN. Ex. 1008, 1, 4. Petitioner
`
`argues R2-010182 is a printed publication that is prior art under 35 U.S.C.
`
`§ 102(a) because it was “discussed during meeting #18 of the 3GPP TSG
`
`RAN working group (WG2) in January 2001, and was publicly available on
`
`the 3GPP file server no later than January 23, 2001.” Pet. 12 (citing
`
`Ex. 1006 §§ IV, VII).
`
`According to Petitioner’s declarant, Mr. Bishop, R2-010182
`
`(Ex. 1008) is a true and correct copy of a Microsoft Word document dated
`
`January 16, 2001, that is contained in the compressed file R2-010182.zip
`
`that was uploaded to the 3GPP FTP (File Transfer Protocol) server on
`
`January 23, 2001. Ex. 1006 ¶ 35. Once the compressed file was uploaded,
`
`R2-010182 was available to any member of the public because “[n]o
`
`password is needed to access any information on the 3GPP Web site, all
`
`information is openly published.” Id. ¶ 24 (quoting Appx. B, 7) (emphasis
`
`omitted).7 Mr. Bishop further testifies that a version of R2-010182, differing
`
`in editorial but not technical content, was emailed to over 1000 subscribers
`
`of the 3GPP RAN WG2 email distribution list on January 11, 2001. Id.
`
`
`7 Mr. Bishop identifies Appendix B as the 3GPP FAQ (Frequently Asked
`Questions) web page. Ex. 1006 ¶ 23. Although Mr. Bishop cites page 8 of
`the web page, the quoted material appears at the bottom of page 7. We
`correct the citation here. We also note that Mr. Bishop alternates between
`citing the pages of the Appendices to his declaration, as he does here, and
`citing the pages of the declaration itself. For example, page 7 of Appendix
`B is page 59 of the Bishop Declaration.
`
`9
`
`

`

`IPR2019-00222
`Patent 7,167,487 B2
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`¶¶ 27–30, 39–40 (citing Appx. G).8 Once emailed, the technical content of
`
`R2-010182 was “effectively in the public domain, since membership of the
`
`exploder [i.e., email distribution list] is open to all and is (almost)
`
`unpoliced.” Id. ¶¶ 29, 40 (quoting Appx. B, 8). Finally, Mr. Bishop testifies
`
`that (a) meeting # 18 of 3GPP RAN WG2 was held in January 2001 and
`
`attended by 95 people, (b) R2-010182 was discussed at the meeting, and that
`
`as a result (c) R2-010182 was disseminated to “RAN2 # 18 meeting
`
`participants no later than the last day of the meeting which was January 19,
`
`2001.” Id. ¶ 41 (citing Appx. H, 94–95).9 Mr. Bishop further testifies that it
`
`was the customary practice of 3GPP to place no restrictions on how
`
`“meeting participants dispose of the documents” presented at a meeting. Id.
`
`¶ 40 (citing Appx. B, 56, 60).10
`
`Patent Owner argues Petitioner has failed to establish the public
`
`accessibility of R2-010182 for several reasons. PO Resp. 14–18. First,
`
`Patent Owner argues that Petitioner has failed to demonstrate “the 3GPP file
`
`server is indexed or searchable in any meaningful way.” Id. at 15. Second,
`
`Patent Owner argues that R2-010182 “could not have been disseminated at a
`
`
`8 Mr. Bishop identifies Appendix G as a true and correct copy of R2-0100xx,
`a Microsoft Word document having the same technical content as R2-
`010182 and contained in the compressed file R2-0100xx.zip that was
`attached to an email sent to the 3GPP RAN WG2 email distribution list on
`January 11, 2001. Ex. 1006 ¶ 39.
`
`9 Mr. Bishop identifies Appendix H as “[t]he approved meeting report from
`RAN WG2 [meeting] # 18,” and cites to the pages of his declaration rather
`than to the pages of Appendix H itself. Ex. 1006 ¶ 41.
`
`10 Mr. Bishop cites to the pages of his declaration, rather than to the pages of
`Appendix B itself.
`
`10
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`

`

`IPR2019-00222
`Patent 7,167,487 B2
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`meeting held from January 15th to 19th,” as Petitioner contends, because
`
`“[t]here is no evidence . . . that [R2-010182] was created prior to January 23,
`
`2001.” Id. at 16. Third, Patent Owner argues that any discussion of R2-
`
`010182 at the January 2001 meeting is evidence of “what was ‘known . . . by
`
`others . . . rather than what was described in a printed publication,” and
`
`cannot be used as prior art in an inter partes review. Id. at 16–17. Fourth,
`
`Patent Owner argues Mr. Bishop does not have personal knowledge that
`
`ninety-five people attended the January 2001 meeting and provides no
`
`testimony indicating how many people attended the session at which R2-
`
`010182 was discussed. Id. at 17. Fifth, Patent Owner argues that Petitioner
`
`has failed to produce any evidence that R2-010182 was actually “shown to
`
`anyone” at the meeting or that anyone “accessed the document.” Id. Sixth,
`
`and finally, Patent Owner argues that even if R2-010182 had been
`
`disseminated at the January 2001 meeting, there is no evidence that anyone
`
`other than 3GPP members accessed the document, and access by 3GPP
`
`members alone “does not show accessibility of the type of skilled artisans
`
`interested in the subject matter that qualify for public accessibility.” Id. at
`
`18 (citing Samsung Elecs. Co. v. Infobridge Pte, Ltd., 929 F.3d 1363, 1372
`
`(Fed. Cir. 2019)).
`
`Petitioner, in its Reply, addresses each of Patent Owner’s objections
`
`via some combination of Mr. Bishop’s original declaration (Ex. 1006), Mr.
`
`Bishop’s supplemental declaration (Ex. 1018), and citations to public
`
`accessibility case law. See Pet. Reply 1–16.11 For example, Petitioner
`
`
`11 Petitioner’s Reply is enumerated pages 1 through 4 followed by pages 1
`through 16. Unless indicated otherwise, all citations to pages 1 through 4 of
`Petitioner’s Reply are to the second set of enumerated pages.
`
`11
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`

`

`IPR2019-00222
`Patent 7,167,487 B2
`
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`reiterates that R2-010182 was made publicly accessible because it was
`
`discussed at the 3GPP TSG RAN WG2 meeting in January 2001. Id. at 1
`
`(citing Ex. 1006 ¶ 41). Petitioner adds that ninety-five people attended this
`
`meeting, including delegates from Mitsubishi, Qualcomm, Ericsson, and
`
`Philips, and Mitsubishi’s delegate presented R2-010182 for discussion at the
`
`meeting. Id. at 1–2 (citing Ex. 1006 ¶ 41; Ex. 1018 ¶¶ 15, 19, 20).
`
`Patent Owner, in its Sur-Reply, argues any public accessibility
`
`evidence or argument presented in Petitioner’s Reply should not be
`
`considered because Petitioner’s Reply amounts to “16 pages of entirely new
`
`arguments . . . and an additional over 100 pages of new Declaration and
`
`documents.” PO Sur-Reply 2–3. Patent Owner argues this evidence and
`
`arguments are new because “the terms ‘printed publication’ and ‘public
`
`accessibility’ do not appear in the Petition” and “none of the Court of
`
`Appeals case law relating to the standard of public accessibility . . . appears
`
`in the Petition.” Id. at 5.
`
`Whether a reference “qualifies as a ‘printed publication’ under § 102
`
`is a legal conclusion based on underlying factual determinations.” Kyocera
`
`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir.
`
`2008). Public accessibility is “the touchstone in determining whether a
`
`reference constitutes a ‘printed publication.’” In re Hall, 781 F.2d 897,
`
`898–99 (Fed. Cir. 1986). It “is determined on a case-by-case basis, and
`
`based on the ‘facts and circumstances surrounding the reference’s disclosure
`
`to members of the public.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
`
`2009) (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
`
`“[A] variety of factors may be useful in determining whether a reference was
`
`publicly accessible.” Id. One such factor is whether a party intended to
`
`12
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`

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`IPR2019-00222
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`make the reference public. See In re Wyer, 655 F.2d 221, 227 (CCPA 1981).
`
`Other factors include the length of time the reference was displayed, the
`
`expertise of the audience to which it was displayed, whether the displaying
`
`party had a reasonable expectation that the reference would not be copied,
`
`efforts made to prevent copying, and the ease or simplicity with which the
`
`reference could have been copied. Klopfenstein, 380 F.3d at 1350–51.
`
`“Evidence of routine business practice can be sufficient to prove that a
`
`reference was made [publicly] accessible.” Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1568–69 (Fed. Cir. 1988).
`
`Upon consideration of the evidence and arguments presented, we find
`
`Petitioner has demonstrated by a preponderance of evidence that R2-010182
`
`was publicly accessible. R2-010182 was presented at meeting #18 of 3GPP
`
`RAN WG2, which was attended by ninety-five people, and was discussed at
`
`that meeting. See Ex. 1006 ¶¶ 41–42 (citing App. H, 94–95). The
`
`customary practice of 3GPP was to place no restrictions on how “meeting
`
`participants dispose of the [meeting] documents,” and there is no evidence
`
`that 3GPP diverged from that practice with respect to R2-010182. Id. ¶ 40
`
`(citing Appx. B, 56, 60). Moreover, the 3GPP members who were present at
`
`meeting # 18 and participated in the discussion of R2-010182 were
`
`representatives of various commercial entities (e.g., Qualcomm, Ericsson,
`
`and Philips) interested in the development of mobile communications, and
`
`were skilled in the relevant art. Id. at 94–95 (Appx. H).12
`
`
`12 We cite to the underlying evidence in the Bishop declaration (i.e., to the
`documents attached as Appendices to the Bishop declaration) by citing to the
`pages of the Bishop declaration and parenthetically indicating the Appendix
`to which the pages belong.
`
`13
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`

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`IPR2019-00222
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`Together, these facts lead us to conclude that Mitsubishi Electric, the
`
`author of R2-010182, intended to and did distribute R2-010182 to skilled
`
`artisans who were interested in its technical content, with no restrictions on
`
`their ability to freely copy and distribute R2-010182.13 Thus, R2-010182
`
`was made publicly accessible by its disclosure at meeting # 18. See
`
`Klopfenstein, 360 F.3d at 1352 (finding a fourteen-slide presentation was
`
`made publicly accessible when presented at a meeting of the American
`
`Association of Cereal Chemists and printed onto poster boards that were
`
`displayed without restriction for 2.5 days); see also Massachusetts Inst. of
`
`Tech. v. AB Fortia, 774 F.2d 1104, 1108–09 (Fed. Cir. 1985) (“MIT”)
`
`(finding a paper was made publicly accessible when it was presented to 50–
`
`500 cell culturists at the First International Cell Culture Congress and
`
`distributed without restriction to as many as six cell culturists).
`
`We are not persuaded by Patent Owner’s numerous arguments that
`
`Petitioner has failed to demonstrate the public accessibility of R2-010182.14
`
`
`13 Indeed, just prior to meeting # 18, Mitsubishi emailed, without restriction,
`a draft document having the same technical content as R2-010182 to over
`1000 members of the 3GPP RAN WG2 distribution list, which was open to
`the public. Ex. 1006 ¶¶ 28–29, 39–40. This further evidences Mitsubishi’s
`intent to disseminate the technical content of R2-010182 to the public. See
`Wyer, 655 F.2d at 227 (finding “intent to make public” an aid in determining
`whether a document is a printed publication). To be clear, we do not rely on
`Mitsubishi’s email distribution as an independent basis for finding that R2-
`010182 was publicly accessible. Rather, we rely on the email distribution as
`further evidence of Mitsubishi’s intent to publicly disseminate R2-010182 at
`meeting # 18.
`
`14 We conclude that R2-010182 was made publicly accessible solely on the
`theories and evidence presented in the Petition and Mr. Bishop’s first
`declaration. Patent Owner acknowledged at the oral hearing that there is no
`prejudice to Patent Owner if we rely only on the evidence submitted with the
`
`14
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`

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`IPR2019-00222
`Patent 7,167,487 B2
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`First, the evidence shows that R2-010182 existed before meeting # 18 of
`
`3GPP RAN WG2, and was discussed at that meeting. See Ex. 1006 ¶ 35
`
`(Mr. Bishop’s testimony that the R2-010182.zip file “contain[s] a Microsoft
`
`Word document, ‘R2-010182.doc’, with a date stamp of ‘1/16/2001.’”); id.
`
`at 94–95 (Appx. H) (official minutes of 3GPP RAN WG2 meeting # 18
`
`indicating R2-010182 was discussed at that meeting). Second, the public
`
`accessibility of R2-010182 does not depend on whether it was actually
`
`distributed to or accessed by anyone at meeting # 18. Its presentation,
`
`without restriction, to persons skilled in the art at the meeting is sufficient to
`
`establish its public accessibility. See Klopfenstein, 380 F.3d at 1347 (finding
`
`a document presented at a meeting was publicly accessible even though “no
`
`copies of the presentation were disseminated.”); see also Constant, 848 F.2d
`
`at 1569 (“If accessibility is proved, there is no requirement to show that
`
`particular members of the public actually received the information.”). Third,
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`Mr. Bishop’s personal knowledge is not needed to prove R2-010182 was
`
`presented at meeting # 18. The documentary evidence cited by Petitioner
`
`and generated as part of 3GPP’s routine business practice is uncontested and
`
`demonstrates that R2-010182 was presented at the meeting. See Constant
`
`848 F.2d at 1568–69 (“Evidence of routine business practice can be
`
`sufficient to prove that a reference was made [publicly] accessible.”).
`
`Lastly, we are not persuaded by Patent Owner’s argument that
`
`Mitsubishi’s disclosure of R2-010182 to “other members of 3GPP who
`
`attended the meeting does not show accessibility by the type of skilled
`
`
`Petition. Tr. 55:24–56:16. Thus, we do not address the merits of Patent
`Owner’s argument regarding the propriety of Petitioner’s Reply and Mr.
`Bishop’s second declaration.
`
`15
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`IPR2019-00222
`Patent 7,167,487 B2
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`artisans interested in the subject matter that qualify for public accessibility.”
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`PO Resp. 18. As discussed above, Mitsubishi disclosed R2-010182, without
`
`restriction, to 3GPP members who were employees and representatives of
`
`various commercial entities that competed with Mitsubishi in the mobile
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`communications market, including representatives from Qualcomm,
`
`Ericsson, and Philips. See Ex. 1006, 94–95 (Appx. H). The disclosure of a
`
`document to interested members of the relevant public, without restriction
`
`on the subsequent dissemination of the document, is sufficient to establish
`
`the public accessibility of the document, even when the disclosure is made in
`
`a private setting. See, e.g., GoPro, Inc. v. Contour IP Holding LLC, 908
`
`F.3d 690, 695 (Fed. Cir, 2018) (finding dissemination of a document to trade
`
`show attendees who were interested in the art, without restriction, made the
`
`document publicly accessible even though the trade show was not open to
`
`the public); see also Klopfenstein, 360 F.3d at 1347, 1352 (finding the
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`unrestricted disclosure of a document at a meeting of the American
`
`Association of Cereal Chemists made the document publicly accessible); see
`
`also Garrett Corp. v. U.S., 422 F.2d 874, 865 (Ct. Cl. 1970) (finding that
`
`although distribution of a government report “to government agencies and
`
`personnel alone may not constitute publication . . . distribution to
`
`commercial companies without restriction on use clearly does.”) (emphasis
`
`added).15
`
`We disagree with Patent Owner’s argument that Infobridge stands for
`
`
`15 The Federal Circuit has adopted “the holdings of the Court of Claims and
`the Court of Customs and Patent Appeals announced before the close of
`business on September 30, 1982.” South Corp. v. U.S., 690 F.2d 1368, 1370
`(Fed. Cir. 1982) (en banc).
`
`16
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`IPR2019-00222
`Patent 7,167,487 B2
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`the opposite proposition, i.e., that the unrestricted disclosure of R2-010182
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`to members of 3GPP does not evidence a public disclosure. The facts
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`presented in Infobridge are readily distinguishable from the facts presented
`
`here. First, the Infobridge petitioner did not argue, and thus waived any
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`argument, that a contested “reference was publicly accessible because it was
`
`discussed at a [first] meeting or disseminated at [a second] meeting” of a
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`standardization body. Infobridge, 929 F.3d at 1370. By contrast, Petitioner
`
`argues that R2-010182 was made publicly accessible because it was
`
`discussed at a standardization body meeting, i.e., at meeting # 18 of 3GPP
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`RAN WG2. See Pet. 12. Second, the Infobridge petitioner could not have
`
`shown that presenting the contested document at a standardization group
`
`meeting made the document publicly accessible prior art because the
`
`evidence showed the contested document “was not created until after the
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`[first] meeting” and any disclosure at the second meeting “occurred after the
`
`relevant critical date.” Infobridge, 929 F.3d at 1370. By contrast, the
`
`evidence presented by Petitioner sufficiently demonstrates that R2-010182
`
`was created on January 16, 2001, which is before the January 17, 2001 start
`
`date of the portion of meeting # 18 dedicated to non-release 4 contributions,
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`and that R2-010182 was discussed at meeting #18 sometime between
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`January 17 and 19, 2001, which is before the critical date of May 21, 2001.16
`
`See Ex. 1006 ¶¶ 35, 41 (citing Appx. H, 94–95).
`
`
`16 Meeting # 18 of 3GPP TSG RAN WG2 was held between January 15 and
`19, 2001. Ex. 1006, 66 (Appx. D). However, “[d]uring the 15th and 16th
`January 2001 only Release 4 contributions” were discussed at the meeting.
`Id. R2-010182 is dated January 17–19, 2001, i.e., for discussion during the
`non-release 4 portion of meeting # 18. Ex. 1008, 1.
`
`17
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`IPR2019-00222
`Patent 7,167,487 B2
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`For the reasons discussed above, we find Petitioner has demonstrated
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`by a preponderance of evidence that R2-010182 is prior art under 35 U.S.C.
`
`§ 102(a) because it was disclosed without restriction at meeting # 18 of
`
`3GPP RAN WG2 in January 2001 and discussed at that meeting by
`
`interested representatives of competing commercial companies. Moreover,
`
`because we find this disclosure sufficiently demonstrates the public
`
`accessibility of R2-010182, we need not consider whether the subsequent
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`uploading of R2-010182 to the 3GPP FTP server on January 23, 2001, also
`
`made the document publicly accessible. See Beloit Corp. v. Valmet Oy, 742
`
`F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at
`
`liberty to reach a decision based on a single dispositive issue).
`
`F. The TS 25.321, R2-010182, and TS 25.302 Challenge
`
`
`
`Petitioner argues claims 1–6 are unpatentable as obvious over the
`
`combination of TS 25.321, R2-010182, and TS 25.302. Pet. 21–47; Pet.
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`Reply 16–21. Patent Owner disputes this. PO Resp. 19–21; PO Sur-Reply
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`11–16. For the reasons discussed below, Petitioner demonstrates by a
`
`preponderance of evidence that claims 1–6 are unpatentable over TS 25.321,
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`R2-010182, and TS 25.302.
`
`1. TS 25.321
`
`TS 25.321 is a specification of the UMTS (Universal Mobile
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`Telephone System) MAC layer protocol. Ex. 1007, 6. The specification
`
`describes, inter alia, the architecture, channel structure, functions, protocol
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`data units (PDUs), formats, and parameters of the MAC layer. Id. The
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`channel structure includes transport channels between the MAC layer and
`
`Layer 1 (e.g., Forward Access Channel or FACH), and logical channels
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`between the MAC layer and RLC layer (e.g., Broadcast Control Channel or
`
`18
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`IPR2019-00222
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`BCCH). Id. at 15–16. The MAC layer functions to map logical channels to
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`transport channels, select transport formats for each transport channel,
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`handle data flow priorities, and multiplex PDUs from higher protocol layers
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`into transport blocks delivered to physical layer transport channels (and
`
`vice-versa). Id. at 17–18.
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`A mobile terminal or user equipment (UE) MAC architecture is
`
`illustrated in Figure 4.2.3.1.1 of TS 25.321, which is reproduced below.
`
`
`
`Figure 4.2.3.1.1 of TS 25.321 is a schematic illustration of the MAC layer
`
`on the UE side of the network. Id. at 11. The figure illustrates the mapping
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`of logical ch