UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., LG ELECTRONICS INC., BLACKBERRY CORP., LG
`ELECTRONICS, INC., SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC,
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`Patent Owner.
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`IPR2019-00222
`U.S. PATENT NO. 7,167,487
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`PATENT OWNER SUR-REPLY
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`{00253564;v1}
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., LG ELECTRONICS INC., BLACKBERRY CORP., LG
`ELECTRONICS, INC., SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC,
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`Patent Owner.
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`IPR2019-00222
`U.S. PATENT NO. 7,167,487
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`PATENT OWNER SUR-REPLY
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`{00253564;v1}
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`I.
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`II.
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`IPR2019-00222
`U.S. Patent 7,167,487
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`Table of Contents
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`INTRODUCTION .................................................................................... 1
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`PETITIONERS’ REPLY AND ITS ACCOMPANYING
`BELATED EVIDENCE UNDERSCORE DEFICIENCIES OF
`THE PETITION ........................................................................................ 2
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`A.
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`Petitioners fail to demonstrate that R2-010182 constitutes
`prior art. .......................................................................................... 2
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`1.
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`2.
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`Petitioners’ belated new arguments and additional
`evidence constitute an improper attempt to
`completely reopen the record on the question of
`the availability of R2-010182 as prior art. ........................... 2
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`Petitioners’ additional evidence still fails to
`establish that R2-010182 constituted a printed
`publication as of the critical date. ........................................ 6
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`B.
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`C.
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`Petitioners’ new theory that R2-010182 teaches a
`variable minimum bit rate is inadmissible as a new
`theory that could have been presented in the Petition, and
`is contrary to R2-010182’s clear teaching of a global
`minimum bit rate applicable to all logical channels ..................... 11
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`Petitioners’ new evidence and argument as to how Peisa
`should be interpreted is inadmissible as a new theory that
`could have been presented in the Petition, and is contrary
`to Peisa’s clear teachings .............................................................. 16
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`III.
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`CONCLUSION ....................................................................................... 18
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`IPR2019-00222
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to
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`Petition IPR2019-00222 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 7,167,487 (“the ’487 Patent” or “EX1001”) filed by Apple Inc.,
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`LG Electronics Inc., Samsung Electronics Co., Ltd. and Samsung Electronics
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`America, Inc., to which Blackberry Corp. has been joined (“Petitioners”).
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`For the reasons given in Patent Owner’s Response (Paper 14, “POR”) and
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`herein, Petitioner fails to carry its burden of proving the challenged claims of the
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`’487 patent unpatentable on the challenged grounds.
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`Petitioners improperly and belatedly seek consideration of new evidence,
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`including over 100 pages of Declaration text and copies of documents, in an
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`effort to show that the R2-010182 reference (EX 1008) in fact constituted prior art.
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`Petitioner’s belated evidence on this point should be disregarded. Moreover, the
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`restricted dissemination of the R2-010182, and the inability to identify R2-010182
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`absent receipt of specific e-mails, demonstrate that the document was not publicly
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`accessible.
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`Petitioners fail to provide persuasive evidence or argument to rebut the
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`Patent Owner’s distinguishing of Peisa from the present claims.
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`1
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`II.
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`PETITIONERS’ REPLY AND ITS ACCOMPANYING BELATED
`EVIDENCE UNDERSCORE DEFICIENCIES OF THE PETITION
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`A.
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`Petitioners fail to demonstrate that R2-010182 constitutes prior
`art.
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`1.
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`Petitioners’ belated new arguments and additional evidence
`constitute an improper attempt to completely reopen the
`record on the question of the availability of R2-010182 as
`prior art.
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`The Board has again reinforced, in both the Consolidated Trial Practice
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`Guide issued in November 2019, and in a precedential opinion issued earlier in
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`December 2019, by a panel consisting of the Director, the Commissioner of
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`Patents, and the Chief Administrative Patent Judge, that petitioners have limited
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`opportunities to introduce evidence after the Petition, Hulu, LLC v. Sound View
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`Innovations, LLC, Case IPR2018-01039, Paper 20, p. 15-16 (Dec. 20, 2019)
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`(Precedential), and may not use their Reply to submit new evidence or arguments
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`that could have been submitted earlier. Petitioner may not submit new evidence or
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`argument in reply that it could have presented earlier. (Patent Trial and Appeal
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`Board Consolidated Trial Practice Guide November 2019, pp. 73-74).
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`The Petitioners here have run roughshod over these principles in seeking to
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`justify their reliance on R2-010182, submitting 16 pages of entirely new arguments
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`(Reply, pp 1-16) and an additional over 100 pages of new Declaration and
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`documents (Ex. 1018) in an effort to belatedly correct the deficient argument in the
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`Petition that R2-010182 allegedly qualifies as prior art. The Board should deny
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`consideration of these additional arguments and evidence, and hold, based on the
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`Petition, that Petitioner has failed to establish by a preponderance of the evidence
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`that R2-010182 is a printed publication. See Hulu, at 11.
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`The Petitioners impermissibly rely on conclusory statements that R2-010282
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`“is a discussion paper with an attached draft change requested for TS25.321, was
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`discussed during meeting #18 of the working group {WG2) of 3GPP TSG RAN,”
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`held on a certain date, and that the document was allegedly available on “the 3GPP
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`file server” no later than a certain date. Petition, p. 12. The Petition provided no
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`explanation as to the nature of the meeting, the working group, or the file server in
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`question, or even how R2-010182 allegedly qualified as prior art. Nor did the
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`Petition provide a legal standard for the document to qualify as prior art, or how
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`the document met that standard, other than that the document in some manner
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`qualified as prior art under 35 U.S.C. 102(a). Thus, Petitioners left to the Board the
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`task of determining the legal standard to apply, and then picking through the
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`supporting evidence to determine whether that legal standard was met.
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`The Board emphasizes in the Consolidated Trial Practice Guide that
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`Petitioners may not use their Reply to submit new evidence or arguments that
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`could have been submitted earlier. Petitioner may not submit new evidence or
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`argument in reply that it could have presented earlier. (Patent Trial and Appeal
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`Board Consolidated Trial Practice Guide November 2019, pp. 73-74). Petitioners
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`certainly had the opportunity to present legal argument, including an identification
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`of a legal standard that they believe to be applicable, and how the evidence
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`submitted with the Petition allegedly meets that legal standard, at the time of the
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`Petition. The Petitioners failed to provide such legal arguments in the Petition.
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`Petitioners have presented no reason why the evidence contained in Exhibit 1018
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`could not have been presented earlier. Thus, under the standard set forth in the
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`Consolidated Trial Practice Guide, Exhibit 1018 and the arguments set forth on
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`pages 1-16 of the Reply should not be considered.
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`As noted above, the Board has made clear in a precedential decision issued
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`earlier in December, as stated in a heading:
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`2. After filing a petition, a petitioner has limited opportunities to
`submit additional evidence
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`Hulu v. Sound View Innovations, at 14. The Board further explained that petitioner
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`may not use these limited opportunities to introduce new theories:
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`The opportunity to submit additional evidence does not allow a
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`petitioner to completely reopen the record, by, for example, changing
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`theories after filing a petition. See Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming
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`Board discretion to deny entry of petitioner’s reply brief that
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`contained an improper new unpatentability theory and evidence,
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`citing, among other things, § 312(a)(3)); see also CTPG at 74
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`(“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean
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`proceed in a new direction with a new approach as compared to the
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`positions taken in a prior filing.”).
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`Hulu v. Sound View Innovations, at 15-16.
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`Here, Petitioners argue for the first time in their Reply a theory that R2-
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`010182 met the standard for a printed publication based on alleged public
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`accessibility, with extensive citations to case law. (Reply, p. 3-4). This represents a
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`new theory under which R2-010182 allegedly qualifies as prior art, as is
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`demonstrated by the fact that the terms “printed publication” and “public
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`accessibility” do not appear in the Petition. Furthermore, none of the Court of
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`Appeals case law relating to the standard of public accessibility to establish a
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`document as a printed publication that is cited in the Reply appears in the Petition,
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`further reinforcing that this position represents a new theory by which to attempt to
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`justify the alleged prior art status of R2-010182. Here, Petitioners’ new legal
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`theory and new citations, set forth in 16 pages of argument, and Petitioners’ over
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`100 pages of new evidence, are not justified by the limited opportunities that the
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`Board permits for petitioners to enter new evidence and arguments after filing of a
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`petition.
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`As the Petitioners seek to disregard the limits on introduction of new
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`evidence and new legal theories after filing of the Petition, the Board should deny
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`5
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`consideration of Petitioners’ new arguments and evidence relating to the alleged
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`prior art status R2-010182, and the Board should rule that Petitioners have failed to
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`IPR2019-00222
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`establish that R2-010182 is prior art.
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`2.
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`Petitioners’ additional evidence still fails to establish that
`R2-010182 constituted a printed publication as of the critical
`date.
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`Even if Petitioners’ belated evidence and arguments are considered,
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`Petitioners have failed to meet their burden of establishing that R2-010182
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`constitutes a printed publication.
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`Petitioners admit that they have no evidence that R2-010182, on which
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`Petitioners’ Ground 1 relies, was in existence at the time of the 3GPP meeting that
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`allegedly established R2-010182 as prior art. Rather, Petitioners’ newly introduced
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`evidence indicates that a different document, referenced in Exhibit 1018 as “a draft
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`version of R2-010182…with the file name “R2-0100xx.zip” was disseminated
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`prior to the meeting. Ex. 1018, Para. 17. Quite simply, Petitioners have admitted
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`that they have no evidence that one of the documents on which they rely for
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`Ground 1 was in existence.
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`Petitioners allege a two-factor test in assessing whether material distributed
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`at a meeting or conference is a printed publication. (Reply, p. 4). In fact, the
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`inquiry into whether material constitutes a printed publication is not limited to a
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`two factor test, but depends on accessibility of the material to the public:
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`"Because there are many ways in which a reference may be
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`disseminated to the interested public, ‘public accessibility’ has been
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`called the touchstone in determining whether a reference constitutes a
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`‘printed publication’ ...." In re Hall , 781 F.2d 897, 898–99 (Fed. Cir.
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`1986). A reference is considered publicly accessible "upon a
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`satisfactory showing that such document has been disseminated or
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`otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art, exercising reasonable
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`diligence, can locate it." Wyer , 655 F.2d at 226.
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`Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1355-56 (Fed. Cir. Jul.
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`13, 2018). The factors are fact-specific, as emphasized by the Court. “As relevant
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`to this case, the size and nature of the meetings and whether they are open to
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`people interested in the subject matter of the material disclosed are important
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`considerations.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. Jun. 11,
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`2018) (emphasis added). Thus, the factors are specific to the particular case, and
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`not limited to a two-factor test.
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`Indeed, in addition to proposing a non-existent two factor test, Petitioners
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`misrepresent the Court’s decision in Medtronic, Inc. v. Barry, incorrectly alleging
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`that “the court held that the disputed references were printed publications.” Reply,
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`p. 7. In fact, the Court stated that, on remand, ““the Board shall determine,
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`consistent with this opinion, whether the Video and Slides are publicly-accessible
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`publications for prior art purposes.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1383
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`(Fed. Cir. Jun. 11, 2018).
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`Considering the Court’s recent decision in Jazz Pharms, it is clear that the
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`3GPP working group meetings fall short of the standard for meetings that make
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`documents publicly available. The breadth of dissemination in Jazz Pharms was far
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`beyond that here:
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`First, the breadth of the dissemination here to persons of ordinary skill
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`is significant. "[A] printed publication need not be easily searchable
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`after publication if it was sufficiently disseminated at the time of its
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`publication." Suffolk , 752 F.3d at 1365. Unlike meetings of at most
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`several hundred persons as in the cases above, the Notice in the
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`Federal Register widely disseminated the ACA materials through a
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`hyperlink to a public FDA website where the ACA materials could be
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`accessed. The Notice explained what materials were located on the
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`FDA website, approximately when they would be available, and how
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`to navigate to them.
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`Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1357-58 (Fed. Cir. Jul.
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`13, 2018). Here, notice of the meeting was not published in a publicly-available
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`document, such as the Federal Register. Rather, notice of the meeting was asserted
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`to be distributed by e-mail to those who subscribed to a group’s e-mail reflector,
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`the body of which e-mail merely states that the recipient may “find attached the
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`meeting invitation for the 18th 3GPP TSG-WG2 meeting to be held in Edinburgh,
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`Scotland hosted by Vodafone, British Telecom, Hutchison 3G, and Lucent.” Ex.
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`1018, Para. 9. The actual documents could only be accessed after receipt of another
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`e-mail, which advised that documents were uploaded to a meeting directory on the
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`3GPP document server. Id., Para. 10. This alleged distribution of e-mails falls far
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`short of the standard of publication in the Federal Register. Moreover, Petitioners
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`admit that there were only 934 subscribers to the relevant RAN2 e-mail list. Id.
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`Para. 7. The Court distinguished the publicly accessible notice of Jazz Pharms.
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`from smaller meetings “of at most several hundred persons,” which would far
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`exceed the size of the meeting at which R2-010182 was discussed.
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`Moreover, access to the meeting in question, merely one of many working
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`groups of 3GPP, was restricted to employees of member companies, which
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`companies in turn were required to be affiliated with certain organizational
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`partners before even being able to apply for membership. Ex. 1018, Para. 5. Thus,
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`there were multiple hurdles to being able to attend a 3GPP working group meeting.
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`In contrast, the meeting at issue in Jazz Pharms. was open to the public as a whole.
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`The documents here, while on a server, could not be located unless, as
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`admitted by Petitioners’ Declarant, one had become “Armed with
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`this
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`information,” i.e., knowledge of meeting minutes or a meeting report, one could
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`access R2-010182 “by navigating to the meeting folder on the 3GPP public file
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`server and scrolling through the list of contributions that were arranged according
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`to their numbered filenames.” Ex. 1018, Para. 21. Thus, one would have had to
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`have been subscribed to a particular e-mail distribution list, and then gone through
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`a cumbersome process of navigation and scrolling, guided by file names rather
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`than any content keywords. In contrast, the “materials were available on a public
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`FDA website for at least two months before the critical date of the patents in suit.”
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`Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1358 (Fed. Cir. Jul.
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`13, 2018).
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`Petitioners argue that, despite the admitted absence of indexing of R2-
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`010182, it would have been publicly available to the extent that persons interested
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`an ordinarily skilled in the subject matter, exercising reasonable diligence, could
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`locate it. Reply, p. 14. This contention is absurd. As admitted by Petitioners’
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`Declarant, the only individuals who could have had any clue as to the content of
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`R2-010182 were those who had received an e-mail of meeting minutes or a
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`meeting report. Ex. 1018, Para. 21. It is only individuals who received those e-
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`mails who could have been, as put by Petitioners’ Declarant, “[a]rmed with this
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`information,” who would have had any reason to go through the cumbersome
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`process of navigating to a server and scrolling, guided by file names rather than
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`any content keywords, to attempt to locate R2-010182. Id.
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`Indeed, the failure of Petitioners’ argument in favor of public accessibility is
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`demonstrated by the fact that they argue that Patent Owner has provided only
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`attorney argument to rebut the need to open manually each of the documents in the
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`zip files to determine if there was anything of interest. Reply, p. 15. However,
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`despite the fact that Petitioners submitted yet another Declaration, that Declaration
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`effectively admits the accuracy of Patent Owner’s argument by failing to provide
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`pertinent rebuttal evidence. Declarant effectively admits that there is no way to
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`search for R2-010182 from the 3GPP website, admitting that only through
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`information from another source as to the content of R2-010182, such as an e-mail
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`advising of meeting minutes, would one of skill in the art be aware of the content
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`of the document. Ex. 1018, Para. 21.
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`For the foregoing reasons, the Board is respectfully requested to find that
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`Petitioners have failed to demonstrate that claims 1-6 are unpatentable under
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`Ground 1.
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`B.
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`Petitioners’ new theory that R2-010182 teaches a variable
`minimum bit rate is inadmissible as a new theory that could have
`been presented in the Petition, and is contrary to R2-010182’s
`clear teaching of a global minimum bit rate applicable to all
`logical channels
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`Petitioners once again submit additional evidence, here as
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`to
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`the
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`interpretation of R2-010182, that could have been presented in the Petition. R2-
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`010182 is all of 6 pages in length, and has only a handful of references to
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`“MinGBr,” but Petitioners, without justification or explanation, provide a further
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`24 pages of Declaration (Ex. 1019, pp.2-25), in an effort to salvage their argument
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`that the global rate MinGBr, applicable to all logical channels, is somehow
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`variable.
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` Petitioner may not submit new evidence or argument in reply that it could
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`have presented earlier. (Patent Trial and Appeal Board Consolidated Trial Practice
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`Guide November 2019, pp. 73-74). Further, as emphasized above,
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`The opportunity to submit additional evidence does not allow a
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`petitioner to completely reopen the record, by, for example, changing
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`theories after filing a petition. See Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming
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`Board discretion to deny entry of petitioner’s reply brief that
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`contained an improper new unpatentability theory and evidence,
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`citing, among other things, § 312(a)(3)); see also CTPG at 74
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`(“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean
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`proceed in a new direction with a new approach as compared to the
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`positions taken in a prior filing.”).
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`Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 20, p.
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`15-16 (Dec. 20, 2019).
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`Here, Petitioners seek to introduce the entirely new theory that the value
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`MinGBr of R2-010182, is variable. Petitioners extensively discussed R2-010182 in
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`the Petition (Pet. pp. 12-16, 37-40) and not once stated that the value of MinGBr is
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`different for different logical channels. Notwithstanding the clear teaching of R2-
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`010182 that MinGBr is a global value, unrebutted in the Petition, Petitioners now
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`seek to reopen the record to introduce a new theory, reliant on nearly 25 pages of
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`new Declaration testimony, that MinGBr is a variable value. This belated and
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`unexcused introduction of a new theory is improper. Accordingly, the Board is
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`respectfully requested not to consider Petitioners’ arguments at pages 16-21 of the
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`Reply.
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`Moreover, even if the Board does consider Petitioners’ effort to reopen the
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`record to introduce a new theory, that effort is factually defective.
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`Buehrer alleges that R2-010182 teaches a “distinct parameter of each logical
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`channel,” Ex. 1019, Para. 7, but then fails to point to any statement in R2-010182
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`that makes that statement. The statement in R2-010182 that the value MinGBr
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`represents “the basic needs of the logical channel” provides no indication that this
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`is dependent on which logical channel it is assigned to.
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`Still further, the fact that MinGBr is a global parameter is reinforced by the
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`fact that R2-010182 introduces three new parameters, namely TW (time window),
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`MinGBr (minimum guaranteed bit rate) and MaxBr (maximum bit rate), and
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`expressly provides an example in which TW varies, but the other parameters do
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`not. Ex.1008, 2.
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`Significantly, R2-010182 provides no discussion of how MinGBr would be
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`determined for different logical channels. If this were a variable value, R2-010182
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`would be impossible to implement without guidance as to how to determine the
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`value of MinGBr for different applications. Buehrer’s Declaration is deficient as
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`failing to address this logical inconsistency in R2-010182.
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`Buehrer’s Declaration, rather than interpreting R2-010182 from the
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`perspective of one of ordinary skill in 2001, relies on a far later perspective.
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`Buehrer can find no statement in R2-010182 explicitly contradicting the
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`understanding that R2-010182 uses a global bit rate parameter. See Ex. 1019,
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`Para.7. Buehrer then states, with the benefit of years of hindsight, that a global bit
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`rate parameter would have disadvantages. Ex. 1019, Para. 8. Those disadvantages
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`include that a video application would typically need a much higher minimum bit
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`rate than a voice application; applying the same minimum bit rate for both video
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`and voice applications would either overly degrade the quality of service of the
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`video application (if the global minimum bit rate was consistent with the needs of
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`the voice application), or be wasteful of bandwidth for the voice application (if the
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`global minimum bit rate was consistent with the needs of the video application). Id.
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`Buehrer’s emphasis on video is not based on contemporaneous concerns from
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`around the year 2001, but on hindsight from years later. The Peisa patent makes
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`this clear, noting that “high-bandwidth data streams will eventually be demanded
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`by consumers to support features such as real-time audio-visual downloads and
`
`live audio-visual communication between two or more people. Ex. 1013; 1:47-51
`
`(emphasis added). While Buehrer alleges that the person of ordinary skill would
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`have been concerned with transmitting both video and voice in 2001, the Peisa
`
`patent constitutes contemporary documentation that makes clear that providing for
`
`video data streams was far off in the future. Thus, Buehrer’s conclusion that the
`
`person of ordinary skill would have been concerned with transmitting both video
`
`and voice in 2001 is contradicted by contemporaneous documentation, and Buehrer
`
`provides no contemporaneous documentation to support his position that one of
`
`ordinary skill would have been seeking to provide for both video and voice
`
`transmission in 2001. Buehrer, far from stepping into the shoes of a POSITA in
`
`2001, but instead using insights from far later, then concludes that a POSITA
`
`would have expected that the minimum bit rate parameter would have been defined
`
`independently for each logical channel based on the type of application. See Ex.
`
`1019, Para. 8.
`
`Dr. Buehrer’s Declaration here should be given no weight, in view of the
`
`self-evident hindsight from a perspective years after the alleged May 21, 2001,
`
`date. Here, the same can be said of Dr. Buehrer that the Court of Appeals
`
`expressed as to Petitioner’s expert in TQ Delta: “Dr. Tellado instead offers only
`
`unsupported and conclusory statements asserting that an ordinarily skilled artisan
`
`at the time of the invention would have been motivated to apply the randomization
`
`disclosed in Stopler as a means to reduce PAR in Shively. ” TQ Delta, LLC v.
`
`Cisco Sys., 2018-1766, at *16 (Fed. Cir. Nov. 22, 2019). Here, Dr. Buehrer offers
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`{00253564;v1}
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`15
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`only unsupported and conclusory statements asserting that an ordinary skilled
`
`artisan at the time of the invention would have interpreted the value MinGBr to be
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`IPR2019-00222
`U.S. Patent 7,167,487
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`a value dependent on the particular application.
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`For this additional reason, the Board is respectfully requested to find that
`
`Petitioners have failed to demonstrate that claims 1-6 are unpatentable under
`
`Ground 1.
`
`C.
`
`Petitioners’ new evidence and argument as to how Peisa should be
`interpreted is inadmissible as a new theory that could have been
`presented in the Petition, and is contrary to Peisa’s clear
`teachings
`
`Petitioners once again submit additional evidence, here as
`
`to
`
`the
`
`interpretation of Peisa, that could have been presented in the Petition. Petitioners,
`
`without justification or explanation, provide a further 8 pages of Declaration (Ex.
`
`1019, pp.25-33), notwithstanding the fact that Petitioners had the opportunity to
`
`provide evidence as to Peisa on filing the Petition.
`
` Petitioner may not submit new evidence or argument in reply that it could
`
`have presented earlier. (Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide November 2019, pp. 73-74). Further, as emphasized above,
`
`The opportunity to submit additional evidence does not allow a
`
`petitioner to completely reopen the record, by, for example, changing
`
`theories after filing a petition. See Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge, Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming
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`{00253564;v1}
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`Board discretion to deny entry of petitioner’s reply brief that
`
`contained an improper new unpatentability theory and evidence,
`
`citing, among other things, § 312(a)(3)); see also CTPG at 74
`
`(“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean
`
`proceed in a new direction with a new approach as compared to the
`
`positions taken in a prior filing.”).
`
`Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 20, p.
`
`15-16 (Dec. 20, 2019). Here, Petitioners seek to introduce evidence that Peisa
`
`would have used the terms “fairness” and “guaranteed rates” to mean a guaranteed
`
`bit rate as used in TS 23.107. Ex. 1019, Paras. 21-23. This information could
`
`readily have been presented in the Petition, and no explanation is provided as to
`
`why this evidence could not have been presented previously.
`
`Moreover, the Reply fails to rebut the clear explanation in the Patent
`
`Owner’s Response that “fairness” fails to, inter alia, teach a minimum bit rate.
`
`Indeed, the Declaration concedes that “fairness” is not a minimum bit rate but a
`
`rate determined over time, based on the use of the additional feature of a backlog
`
`counter. Ex. 1019, para. 25. The Reply and Declaration do not contend, and could
`
`not, that this fair rate over time is the same as, for example, the “guaranteed bit
`
`rate” noted in TS 23.107 and discussed in Paragraph 23 of the Declaration.
`
`Petitioners fail to provide a mapping of this fair rate to the recited minimum bit
`
`rate.
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`{00253564;v1}
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`17
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`As to Patent Owner’s clear explanation of Fig. 8, Petitioners and Declaration
`
`fail to provide a meaningful rebuttal. As the Declaration concedes, Peisa teaches
`
`maintaining a very general “minimum level of service to all flows.” Ex. 1019,
`
`Para. 29, quoting Peisa 20:27-28. However, such a minimum level of service to all
`
`flows does not map to the recited “minimum bit rate criteria applicable to the
`
`respective logic channel” as recited.
`
`
`III. CONCLUSION
`
`For at least the reasons set forth above, and for the reasons articulated in the
`
`Patent Owner’s Response, Uniloc respectfully requests that the Board deny all
`
`challenges in the instant Petition.1
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`
`
`Date: December 31, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
` 1
`
` Patent Owner does not concede, and specifically denies, that there is any
`
`legitimacy to any arguments in the instant Petition that are not specifically
`
`addressed herein.
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`{00253564;v1}
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the
`
`foregoing complies with the type-volume limitation of 37 C.F.R. § 42.24(c)(1)
`
`because it contains fewer than the limit of 5,600 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the
`
`brief exempted by 37 C.F.R. § 42.24(c).
`
`Date: December 31, 2019
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`{00253564;v1}
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`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`
`copy of the foregoing Sur Reply was served via email to Petitioners’ counsel at the
`
`following addresses identified in the Petition’s consent to electronic service:
`
`
`
`Lead Counsel
`
`W. Karl Renner
`
`41,265
`
`IPR39521-
`0061IP1@fr.com
`
`First Back Up
`Counsel
`
`Back Up Counsel
`
`
`
`Roberto Devoto
`
`55,108
`
`PTABInbound@fr.com
`
`Ayan Roy-
`Chowdhury
`
`72,483
`
`IPR39251-
`0061IP1@fr.com
`
`Date: December 31, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum;
`Attorney for Patent Owner
`Reg. No. 64,783
`
`
`{00253564;v1}
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`ii
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