UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00973
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER SUR REPLY TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00973
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER SUR REPLY TO PETITION
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`I.
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`II.
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`IPR2019-00973
`U.S. Patent No. 7,075,917
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`Table of Contents
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`INTRODUCTION ........................................................................................... 1
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`Petitioner fails to meet its burden to establish that TR25.835
`constitutes a prior art PRINTED PUBLICATION as to the ’917 Patent ........ 1
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Patent Owner has been prejudiced by Petitioner’s failure to
`specify the pre-AIA statutory subsection under which
`TR25.832 allegedly qualifies as a prior art printed publication
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`The undisputed cataloging and indexing factors weigh in favor
`of finding TR25.832 was not publicly accessible
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`Petitioner fails to prove that allegedly uploading the asserted
`reference to a website or disseminating it via email to a targeted
`list of recipients establishes public accessibility
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`Petitioner fails to prove that an alleged presentation at a
`meeting establishes public accessibility
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`Petitioner failed to explain in its Reply the alleged relevance, if
`any, for each one of the 20 exhibits attached thereto
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`Petitioner has not met its burden by pointing to extraneous
`statements that, if relevant at all, are helpful only to Uniloc
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`Petitioner’s Reply impermissibly relies on inadmissible hearsay
`and unauthenticated documents
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`2
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`3
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`4
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`7
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`9
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`10
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`12
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`III.
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`PETITIONER FAILS TO PROVE OBVIOUSNESS ................................... 13
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`A.
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`Petitioner fails to meet its burden to prove obviousness of
`“storing abbreviated sequence numbers whose length depends
`on the maximum number of coded transport blocks to be stored
`and which can be shown unambiguously in a packet data unit
`sequence number” (claim 1)
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`B.
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`Petitioner fails to meet its burden to prove obviousness based
`on its exclusive reliance on TR25.835 for limitations of claim 1
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`13
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`20
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`IV. CONCLUSION .............................................................................................. 23
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`ii
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (the “Patent Owner” or “Uniloc”) submits this Sur-Reply
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`to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent
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`No. 7,075,917 (“the ’917 patent” or “Ex. 1001”) filed by Microsoft Corporation
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`(“Petitioner”) in IPR2019-00973. For the reasons given in Uniloc’s Response (Paper
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`9, “POR”) and herein, Petitioner fails to carry its burden of proving unpatentability
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`of the challenged claims of the ’917 patent based on the grounds presented in the
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`Petition.
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`II.
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`PETITIONER FAILS TO MEET ITS BURDEN TO ESTABLISH
`THAT TR25.835 CONSTITUTES A PRIOR ART PRINTED
`PUBLICATION AS TO THE ’917 PATENT
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`As a threshold issue addressed in detail in Patent Owner’s Response,
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`Petitioner has failed to meet its burden to establish that TR25.835 (Ex. 1005)
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`constitutes prior art. As the sole Ground relies on TR25.835, the Board is
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`respectfully requested to hold Claims 1‒3 and 9‒10 not unpatentable.
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`Petitioner does not dispute in its Reply that the Petition itself “does not recite
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`any applicable standard that TR25.832 must meet to qualify as a printed publication
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`under pre-AIA 35 U.S.C. §102(a) or 102(b), or explain how the supporting evidence
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`allegedly demonstrates that the applicable standard is met, thus failing to meet the
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`minimum standards required to explain the significance of evidence, both under
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`applicable regulations and under applicable case law.” POR 17.
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`1
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`U.S. Patent No. 7,075,917
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`Petitioner tacitly acknowledges the Petition is itself deficient by purporting to
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`rely, instead, on new argument and evidence introduced in its Reply. Indeed, the
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`deficiency of the Petition is conceded by the fact that Petitioner filed with its Reply
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`no less than twenty additional exhibits made up of unauthenticated documents
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`containing inadmissible hearsay (as explained further below).
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`The Federal Circuit has instructed that “[u]nlike district court litigation—
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`where parties have greater freedom to revise and develop their arguments over time
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`and in response to newly discovered material—the expedited nature of IPRs bring
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`with it an obligation for petitioners to make their case in their petition to institute.”
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
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`2016) (emphasis added); see also see 37 C.F.R. § 42.23(b); Trial Practice Guide
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`Update 15 (August 2018).
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`Even if the Board were inclined to consider the new argument and evidence
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`Petitioner impermissibly attempts to introduce in its Reply, this still would not cure
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`the failure of the Petition to provide sufficient evidentiary support to prove, by a
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`preponderance of the evidence, that TR25.835 qualifies as prior art here.
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`A.
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`Patent Owner has been prejudiced by Petitioner’s failure to
`specify the pre-AIA statutory subsection under which TR25.832
`allegedly qualifies as a prior art printed publication
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`Patent Owner’s Response noted, and Petitioner does not contest in its Reply,
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`that the Petition fails to specify the pre-AIA which statutory subsection under which
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`2
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`U.S. Patent No. 7,075,917
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`TR25.832 allegedly qualifies as a prior art printed publication. POR 16. Under the
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`section heading “Critical Dates” (in the plural), Petitioner acknowledges in its Reply
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`that different dates would be relevant depending, for example, on whether TR25.832
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`is allegedly asserted under pre-AIA 35 U.S.C. §102(a) or 102(b). Rep. 4. Petitioner
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`has effectively admitted, therefore, that the failure in the Petition to assert a statutory
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`subsection under which TR25.835 allegedly qualifies as prior art has prejudiced
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`Patent Owner’s ability to respond.
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`B.
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`The undisputed cataloging and indexing factors weigh in favor of
`finding TR25.832 was not publicly accessible
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`In remains undisputed that TR25.832 “was not publicly accessible by virtue
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`of indexing or cataloging” and that “the document bore an arbitrary title that had no
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`information regarding its subject matter.” POR 16. Rather than contest these factual
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`observations, or point to any record evidence in rebuttal, Petitioner’s Reply merely
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`offers the Federal Circuit instruction that “neither cataloging nor indexing is a
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`necessary condition for a reference to be publicly accessible.” Rep. 3 (quoting In re
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`Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009)).
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`Petitioner tellingly ignores the remainder of that Federal Circuit instruction
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`that, while not a necessary condition, “cataloging and indexing have played a
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`significant role” and remain relevant factors bearing on public accessibility. Lister,
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`583 F.3d at 1312. Further underscoring the continued relevance of these factors
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`3
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`here, the Federal Circuit has since instructed that cataloging and indexing are “no
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`more or less important in evaluating the public accessibility of online references than
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`for those fixed in more traditional, tangible media.” Voter Verified, Inc. v. Premier
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`Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).
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`C.
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`Petitioner fails to prove that allegedly uploading the asserted
`reference to a website or disseminating it via email to a targeted
`list of recipients establishes public accessibility
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`As note in Patent Owner’s Response, the record evidence fails to establish that
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`TR25.835 was uploaded to a 3GPP server prior to the critical date and that persons
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`of ordinary skill in the art in general could readily access the reference online prior
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`to the critical date. POR 16‒31. Petitioner primarily argues in its Reply that “anyone
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`could easily subscribe to and access the 3GPP email listservs (aka ‘exploders’)
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`relating to the technology discussed in TR25.835” and a person of ordinary skill in
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`the art “would have known, through TR25.835 v0.0.2 or the ETSI/3GPP staff or
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`both, that the relevant 3GPP working group was TSG RAN Working Group 2.” Rep.
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`7. Petitioner leaves unaddressed controlling authority, addressed in Patent Owner’s
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`Response, and holding that while uploading a reference to a website may make “the
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`work technically accessible—someone could theoretically find it on the Internet—
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`. . . ‘public accessibility requires more than technical accessibility.’” Samsung
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`Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1369 (Fed. Cir. 2019).
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`4
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`Petitioner cannot meet its burden to establish public accessibility of TR25.835
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`before the critical date by ignoring such controlling authority. This standard is
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`simply not met by Petitioner’s two primary assertions—i.e., the alleged ease of
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`either (1) receiving the necessary group information from 3GPP staff that
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`purportedly would have been required to locate the reference, or (2) discovering in
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`advance which one of dozens if not hundreds of email lists might possibly receive
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`notice or dissemination via email. Petitioner’s rebuttal, untethered to any of the legal
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`authority Patent Owner had cited, is akin to arguing a library book located in a closet
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`at a library could possibly be found by knowing one has to join the correct janitor
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`email list in order to obtain the secret of where exactly to look.
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`Petitioner’s argument is also internally inconsistent. If, as Petitioner suggests,
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`consulting 3GPP staff was necessary or at least typical to determine “the relevant
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`3GPP working group” (id.) and this staff-provided knowledge was then necessary to
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`have any idea where to search on the 3GPP website for specific documents, this then
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`would only further undermine Petitioner’s argument concerning public accessibility.
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`See Samsung v. Infobridge, 929 F.3d at 1372 (“[A] work is not publicly accessible
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`if the only people who know how to find it are the ones who created it.”). To borrow
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`again from the library analogy, that a given library book may possibly be found by
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`asking a librarian where to look does not somehow make the book publicly
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`accessible.
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`5
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`Petitioner’s Reply also purports to offer new evidence allegedly supporting its
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`theory that TR25.835 was itself distributed via a specific email list. Rep. 8. Setting
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`aside the untimeliness of this new evidence, according to Petitioner, the emails in
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`question were sent only to select individuals who had the foresight to subscribed in
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`advance to one and only correct list of legions of possible lists. Id. In raising this
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`new evidence, Petitioner does not dispute, or even acknowledge, Patent Owner’s
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`observation that the original declaration of Mr. Rodermund “states that those
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`notification emails were provided to selected representatives of 3GPP member
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`companies, not the general public.” POR 17 (citing Ex. 1004 ¶ 19).
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`Even if the Board were to consider the evidence Petitioner attempts to
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`untimely introduce in its Reply, Petitioner fails to explain whether and how this
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`would impact the analysis previously cited from Samsung Elecs. Co. v. Infobridge.
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`See POR 28‒30 (discussing, inter alia, Samsung v. Infobridge, 929 F. 3d at 1374–
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`75). There, the Federal Circuit expressed reluctance “to assume that an email among
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`potential collaborators should be treated the same as a public disclosure.” Id. It is
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`telling that Petitioner’s Reply fails to mention the analysis in Samsung Elecs. Co. v.
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`Infobridge on this issue, even though Patent Owner had addressed relevant portions
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`of this opinion in detail in its Response. Id. Patent Owner’s legal argument and
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`observations set forth in its Response remain uncontested. As was the case in
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`Samsung Elecs. Co. v. Infobridge, the record evidence here concerning use of a
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`6
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`targeted email list of collaborators, who knew which one of multiple possible lists
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`to join in advance, simply does not establish that the asserted reference was publicly
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`accessible in general to persons of ordinary skill as of the critical date.
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`D.
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`Petitioner fails to prove that an alleged presentation at a meeting
`establishes public accessibility
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`Petitioner’s Reply also offers no basis dispute that “Petitioner has not shown
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`that TR25.835 became publicly accessible via [any alleged] distribution at a 3GPP
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`meeting” and that the Petition itself “makes no mention of distribution of TR25.835
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`at a meeting.” POR 30 (emphasis added); see also id. 17. At most, Petitioner’s reply
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`offers the conclusory and conciliatory statement, relegated to a footnote, that
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`Uniloc’s observations “fail” for reasons Petitioner neglects to identify—as if the
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`burden had somehow shifted to Uniloc on a point that Petitioner does not even
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`attempt to prove. Rep. 4 n.4. The same conclusory footnote tacitly concedes that
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`Petitioner does not rely on any distribution at a meeting. Id. (“but regardless
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`TR25.385 was publicly available independent of distribution at that conference.”).
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`It appears that Petitioner has come to recognize it failed to even mention the
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`word “meeting” in its Petition and thus it has waived any corresponding theory
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`concerning public accessibility allegedly arising from activity at a meeting. The
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`word “meeting” only appears in Petitioner’s briefing in the following single sentence
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`of its Reply: “TR25.385 [was] . . . presented at a September 2000 meeting attended
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`7
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`by 140 people.” Rep. 1 (citing Ex. 1004, ¶ 25). As alleged support, Petitioner cites
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`only to a single paragraph of the original declaration of Mr. Rodermund Ex. (1004,
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`¶ 25), without purporting to rely on any portion of the supplemental declaration of
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`Mr. Rodermund filed with the Reply (Ex. 1033). Accordingly, petitioner not only
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`has waived reliance on any distribution at a “meeting” by failing to even mention
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`this word in the Petition, Petitioner has also waived any reliance on testimony in the
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`supplemental declaration concerning any alleged activity occurring at a meeting.
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`Petitioner’s Reply also fails to even affirmatively state, with citation to
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`allegedly supportive evidence, that any distribution of the TR25.385 reference took
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`place at any meeting before the critical date. At most, Petitioner ambiguously
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`asserts, for the first time in its Reply, that the TR25.385 was allegedly “presented”
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`at the meeting. Rep. 1. Even if the Board were to consider this belated and hence
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`waived theory, introduced for the first time in a reply brief, it is unavailing. That a
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`reference was allegedly presented does not necessarily mean that printed
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`publications of the same were necessarily distributed to those in attendance.
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`Petitioner’s reluctance to elaborate further in its Reply, in the single and only passing
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`reference to an alleged “meeting” set forth in its briefing, should be taken as an
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`admission that no distribution of TR25.835 took place at that time.
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`8
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`IPR2019-00973
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`E.
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`Petitioner failed to explain in its Reply the alleged relevance, if
`any, for each one of the 20 exhibits attached thereto
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`While Petitioner’s Reply purports to newly rely on no less than 20 additional
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`exhibits, the Reply fails to address each one individually and explain its alleged
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`relevance. In several instances, for example, the Reply merely provides an
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`unexplained citation which ambiguously encompasses multiple exhibit numbers or
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`which purports to encompass nearly the entirety of Mr. Rodermund’s supplemental
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`declaration. See, e.g., Pet. 9
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`(citing “Exs. 1012-1019”);
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`id.,
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`(citing
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`“Rodermund_Reply, ¶¶ 5-27”).
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`Well-established authority proscribes Petitioner’s approach. As Patent Owner
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`noted in its Response, the Board has held it is improper for a petitioner to merely
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`offer general citations to exhibits in manner that “invites the opponent and the
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`decision-maker to sift through the evidence on their own initiative and to draw their
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`own conclusions based on their own manner of harnessing, interpreting, and
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`characterizing the evidence.” Spalding v. Hartsell, Interference No. 104,699, Paper
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`No. 92 at 5 (2002); Corning Incorp. v. Danjou’s DSM IP Assets B.V., IPR2013-
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`00043, Paper No. 95 at 13 (PTAB May 1, 2014) (citing the 7th Circuit’s statement
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`that “[a] brief must make all arguments accessible to the judges, rather than ask them
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`to play archaeologist with the record.”). In addition, it is impermissible to
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`incorporate arguments from one document into another, including by unexplained
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`9
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`IPR2019-00973
`U.S. Patent No. 7,075,917
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`citations to exhibits. 37 CFR § 42.6(3) (“Arguments must not be incorporated by
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`reference from one document into another document.”); PCT Int’l. Inc. v. Amphenol
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`Corp., IPR2013-00229, Paper No. 17 at 2 (PTAB Dec. 24, 2013) (“Arguments must
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`not be incorporated by reference from one document into another document. . .
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`Among other things, this rule prevents parties from avoiding page limitations.”).
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`F.
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`Petitioner has not met its burden by pointing to extraneous
`statements that, if relevant at all, are helpful only to Uniloc
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`Petitioner, evidently recognizing its failure to timely submit evidentiary
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`support for its contention of public accessibility, attempts to raise the new (and hence
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`waived) argument in its Reply that Patent Owner has somehow conceded the issue
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`by admission. Nothing could be further from the truth.
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`First, Petitioner newly points to the statement in the background section of the
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`’917 patent that mentions a document entitled “3G TR 25.835 V0.0.2.” Rep. 1‒2,
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`7. The referenced document is not, however, the TR25.385 reference relied upon in
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`the Petition. Rather, according to Petitioner, the document identified as “3G TR
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`25.835 V0.0.2” was “an outdated and superseded document.” Pet. 6. If the so-called
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`“superseding” TR25.385 reference (V1.0.0) had been publicly accessible and
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`generally known to persons of ordinary skill in the art prior to the filing date of the
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`’917 patent, particularly those who were aware of what Petitioner refers to as
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`“preceding version of the same document” (Rep. 2), surely the ’917 patent would
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`10
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`have referenced, instead, what Petitioner refers to as version “V1.0.0.”The fact that
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`the ’917 patent references only “3G TR 25.835 V0.0.2,” without mentioning
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`“TR25.385 V1.0.0,” if relevant at all to the issue of public accessibility, is helpful
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`only to Patent Owner. Indeed, under the circumstances, the cited statement in the
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`’917 patent refutes Petitioner’s unsubstantiated speculation, offered through its
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`declarant, that “for somebody interested in HARQ functionality and similar radio
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`layer technologies, TR 25.835 v1.0.0 (Ex. 1005) would have been easily locatable
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`and, in fact quite hard to miss, in September 2000.” Rep. 9 (citing Ex. 1033
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`(Rodermund_Reply), ¶ 31).
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`Second, Petitioner grossly mischaracterizes as party admissions certain
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`statements from an oral hearing in a different matter. Rep. 2 (citing Apple, Inc. et
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`al. v. Uniloc 2017 LLC, IPR2019-00222, Paper 26, TR at 41:10-25.). Setting aside
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`the fact that the cited statements address a completely different document in a
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`different matter, Petitioner overlooks the context in which those statements were
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`made. Patent Owner had argued there, consistent with its position here, that public
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`accessibility is not established by merely asserting a reference was made available
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`at a 3GPP server or distributed to those who had previously elected to participate in
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`an email list. See, e.g., Apple, Inc. et al. v. Uniloc 2017 LLC, IPR2019-00222, Paper
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`26, TR at 39:15-17 (“So first of all, in their Slide 11, they have three bases. R20
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`qualifies 16 as prior art: A, presented at the 3GPP meeting, B, distributed on email
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`11
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`17 reflector, C, published on 3GPP server.”). Clearly, Patent Owner did not concede
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`in that matter, nor does it concede here, that all documents 3GPP allegedly uploads
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`to a server or distributes to a select list of recipients via email, must be deemed
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`“publicly accessible” by those alleged acts.
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`G.
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`Petitioner’s Reply impermissibly relies on inadmissible hearsay
`and unauthenticated documents
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`As further evidence that the Petition is deficient on its face on the issue of
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`public accessibility of the asserted TR25.385 reference, Petitioner filed with its
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`Reply no less than twenty additional exhibits, without any explanation as to why
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`these exhibits could not have been included with the filing of the Petition. In
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`addition to the issue of waiver, addressed above, the untimely exhibits submitted
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`with the Reply should be afforded no weight because (1) they are replete with
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`impermissible hearsay, (2) they are not properly authenticated, and (3) the vast
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`majority are not even cited in the Reply.
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`Petitioner filed with its Reply, for example, a significant number of documents
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`purportedly downloaded from the Internet Archive’s Wayback Machine, without
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`accompanying those documents with any authentication testimony from a person
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`with knowledge at the Internet Archive concerning those documents, and without
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`even providing the URL allegedly used to access those documents. See, e.g., Ex.
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`1013‒1017. While Petitioner purports to rely upon the testimony of Mr.
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`12
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`Rodermund, Mr. Rodermund does not testify to having any personal knowledge
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`concerning any archiving performed by the Internet Archive’s Wayback Machine.
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`At most, Mr. Rodermund merely asserts a subset of these exhibits purportedly “from
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`the Wayback Machine appear to be an authentic archival copy.” Ex. 1033 ¶ 14.
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`Such a conclusory testimony fails to cure the authentication and hearsay issues
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`of the belated exhibits. In addressing this very issue, the Board has stated that
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`“[w]hen offering a printout of a webpage into evidence to prove the website’s
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`contents, the proponent of the evidence must authenticate the information from the
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`website itself, not merely the printout.” Neste Oil Oyj v. REG Synthetic Fuels, LLC,
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`IPR2013-00578 (Paper 53) (PTAB March 12, 2015). Petitioner offers no allegedly
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`authenticating testimony from someone with proper personal knowledge regarding
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`the alleged website source itself.
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`III. PETITIONER FAILS TO PROVE OBVIOUSNESS
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`While Petitioner has the burden of proof with respect to each element of every
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`challenged claim, and this burden never shifts to Patent Owner, Patent Owner had
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`nevertheless explained in its Response why the Petition is substantially deficient at
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`least with respect to certain example claim language. Petitioner’s Reply either
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`mischaracterizes or ignores the deficiencies Patent Owner had identified.
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`A.
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`Petitioner fails to meet its burden to prove obviousness of “storing
`abbreviated sequence numbers whose length depends on the
`maximum number of coded transport blocks to be stored and
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`13
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`which can be shown unambiguously in a packet data unit
`sequence number” (claim 1)
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`Among other deficiencies, Patent Owner explained why the theory set forth
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`in the Petition fails to prove a POSITA would have found it obvious to modify
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`TR25.835 using the teachings of Abrol, and that the proposed combination would
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`have rendered obviousness “storing abbreviated sequence numbers whose length
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`depends on the maximum number of coded transport blocks to be stored and which
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`can be shown unambiguously in a packet data unit sequence number,” as recited in
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`independent claim 1. POR 31‒38.
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`First, Petitioner does not deny that the “[t]he Petition and [Dr. Bims]
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`Declaration fail to consider whether a POSITA would apply Abrol to TR25.835 in
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`view of Abrol’s clear teaching that it is intended for situations where channel
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`capacity varies.” POR. 35. Petitioner also provides no rational basis to contest that
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`Abrol expressly requires a varying channel capacity as basic principle of operation.
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`At most, Petitioner offers the conclusory statement in its Reply that a person of
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`ordinary skill in the art would allegedly be mistaken if she “understood Abrol as
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`applying only to wireless networks of varying capacity.” Rep. 13. Such a conclusory
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`assertion does not rebut the detailed explanation to the contrary in Patent Owner’s
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`Response, nor does it explain how Abrol’s cited teachings could be implemented in
`
`the absence of a varying channel capacity. POR 32‒35.
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`14
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`While Petitioner cites in its Reply, without explanation, to the supplemental
`
`declaration of Dr. Bims, the cited testimony is unavailing. Rep. 13 (citing Ex. 1032
`
`(Bims_Reply), ¶¶ 19‒21). In the cited paragraphs, Dr. Bims merely points, without
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`further explanation, to the statement in Abrol that its system is “applicable to any
`
`communication system employing transmission of a byte stream over a wireless
`
`channel.” Ex. 1032 ¶ 19 (quoting Abrol, 3:32‒35). Dr. Bims conveniently
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`overlooks, however, that the quoted statement in Abrol appears immediately after
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`Abrol expressly identifies its “present invention” (i.e., its system) as specifically
`
`configured for “enable[ing] efficient transmission of a featureless byte Stream
`
`through a channel of varying capacity.” Abrol, 3:24‒26. It is axiomatic that Abrol’s
`
`consistent description of its system as requiring a varying channel capacity could not
`
`have been implemented on a channel that did not have such capacity. Dr. Bims
`
`undermines his own credibility in suggesting otherwise. Ericsson Inc. v. Intellectual
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`Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018) (“To contradict a reference,
`
`an unsupported opinion is not substantial evidence.”) (citing Homeland Housewares,
`
`LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“[W]e must
`
`disregard the testimony of an expert that is plainly inconsistent with the record, or
`
`based on an incorrect understanding of the claim[s].”)).
`
`Second, Petitioner impermissibly advances new argument and evidence which
`
`only further underscore the very deficiencies Patent Owner had identified as arising,
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`15
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`at least in part, from the unaddressed requirement in Abrol for varying channel
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`capacity. For example, Petitioner points to the statement in TR25.385 that “Fast
`
`HARQ is planned to be employed on DSCH.” Rep. 12 (citing TR25.835, 27 § 7.2)
`
`(emphasis altered). Petitioner then offers the conclusory assertion, without any
`
`accompanying explanation or documentation support, that DSCH allegedly had (as
`
`of an unspecified date) a variable bit rate. Id.
`
`Petitioner’s new and bald assertions in its Reply fail to carry its burden or even
`
`address the example deficiencies of the Petition Patent Owner had identified.
`
`Petitioner overlooks, for example, that the quoted statement in TR25.385 purports
`
`to describe only what is planned to be—i.e., it is not an assertion of what is expressly
`
`disclosed within the four corners of TR25.385. Moreover, neither Petitioner nor Dr.
`
`Bims point to anything in TR25.385 itself allegedly disclosing how the Fast HARQ
`
`mentioned in TR25.385 would be employed on DSCH as of the alleged publication
`
`date of that document, without further undisclosed modification, much less how it
`
`would or even could be employed using the varying channel capacity required by
`
`Abrol.
`
`Third, Petitioner’s Reply does not dispute that additional and unaddressed
`
`deficiencies arise at least to the extent “Abrol teaches modifying the RLP2 protocol
`
`by adding byte sequence numbers rather than frame sequence numbers” and further
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`“provides for adding sequence numbers to constituents of frames.” POR 34‒38.
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`16
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`Instead, Petitioner only attacks part of the underlying premise by newly asserting,
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`through the supplemental declaration of Dr. Bim, that Abrol discloses “use of frame
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`sequence numbers” rather than byte sequence numbers. Rep. 15‒16 (citing Ex. 1032
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`(Bims_Reply), ¶ 25). The reference speaks for itself on this point, however, and Dr.
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`Bim’s argument to the contrary only further undermines his credibility.
`
`In summarizing its claimed invention, Abrol states it achieves its efficiency
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`“by changing the interpretation of the sequence numbers carried in the RLP protocol
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`header.” Abrol, 3:40‒41 (emphasis added). This statement is immediately followed
`
`with reference to what interpretation must be changed—i.e., “[i]n RLP2, sequence
`
`numbers are used to denote frame numbers.” Id., 3:41‒42. After explaining “use of
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`a byte sequence number” accomplishes “more reliable data retransmission” than a
`
`frame sequence number, Abrol states “[t]he embodiments of the invention provide
`
`the benefits of large byte sequence numbers while transmitting a fraction of the
`
`sequence number bits in the majority of over-the-air frames.” Id., 4:12‒43
`
`(emphasis added).
`
`The phrase “byte sequence number” (in plural and singular form) appears
`
`approximately 40 times in Abrol and is consistent and recurring theme of each
`
`embodiment. See, e.g., id., 4:43‒44 (“a 20-bit byte sequence number is used”)
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`(emphasis added); id., 5:36‒46 (stating a possible disadvantage of “using sequence
`
`numbers corresponding to bytes instead of frames”—as required by all
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`17
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`embodiments—may be minimized “by sometimes omitting most significant and
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`least significant bits from the sequence number.”); id., 6:21‒23 (“each sequence
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`number corresponds to the first byte of the data in the RLP frame.”) (emphasis
`
`added); id., 6:28‒29 (“the sequence numbers are byte sequence numbers”)
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`(emphasis added).
`
`As shown at least by the above quotations, and by the more detailed
`
`explanation provided in Patent Owner’s Response, it cannot rationally be disputed
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`that Abrol teaches modifying the RLP2 protocol in a manner that uses byte sequence
`
`numbers rather than frame sequence numbers. POR 34‒38. Conversely, Abrol does
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`not expressly describe even a single embodiment as using frame sequence numbers
`
`as opposed to byte sequence numbers. Try is it might, Petitioner cannot rely on
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`conclusory testimony of its declarant for a proposition that is directly contradicted
`
`in the reference itself. While the burden lies with Petitioner, its untenable and
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`untethered technical attack fails to rebut, or even address, Patent Owner’s previously
`
`submitted explanation as to why this correct understanding of the express disclosure
`
`Abrol gives rise to deficiencies in the combination theory. Id.
`
`Fourth, Petitioner attacks its own fabricated strawman, and undermines the
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`alleged motivation to combine asserted in the Petition, in newly arguing in its Reply
`
`that Abrol “is not limited to [8-bit] sequence numbers.” Rep. 18. The issue is not
`
`whether Abrol is limited to 8-bit sequence numbers. Rather, Patent Owner had
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`18
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`contested the contention in the Petition that there would have been motivation to
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`modify TR25.835 to incorporate 8-bit sequence numbers as an alleged improvement
`
`over what TR25.835 discloses. It is well established that motivation to modify does
`
`not arise from an alleged deficiency that is not itself recognized in the reference
`
`being modified. See In re Omeprazole Patent Litigation, 536 F.3d 1361, 1380 (Fed.
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`Cir. 2008). Petitioner failed to comprehend, and leaves wholly unrebutted, the actual
`
`point Patent Owner had raised, responsive to the legal error presented in the Petition.
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`Fifth, Petitioner falls into the same legal error in purporting to address Patent
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`Owner’s observation that “neither the Petition nor the Declaration points to any
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`statement in TR25.835 that overhead is a concern in error control protocols.” POR
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`36; Rep. 18. Petitioner concedes the point in its Reply by, yet again, failing to point
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`to any statement in TR25.835 that overhead is a concern in error control protocols.
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`Instead, Petitioner alleges the flaw allegedly prompting the motivatio
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