`
`
`
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`
`
`
`
`IPR2019-00973
`
`U.S. PATENT NO. 7,075,917
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`1
`
`

`

`
`
`I.
`
`II.
`
`Table of Contents
`
`
`INTRODUCTION
`
`THE ‘917 PATENT
`
`A.
`
`B.
`
`C.
`
`Effective Filing Date of the ‘917 Patent
`
`Overview of the ‘917 Patent
`
`Prosecution History of the ‘917 Patent
`
`III. RELATED PROCEEDINGS
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`V.
`
`THE PETITION IMPROPERLY REDUDANTLY
`CHALLENGES THE CLAIMS AT ISSUE
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM
`
`Claim Construction Standard
`
`A.
`
`B.
`
`C.
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`4
`
`4
`
`4
`
`5
`
`13
`
`14
`
`15
`
`15
`
`19
`
`20
`
`No prima facie obviousness for “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”
`21
`
`1.
`
`Abrol is deficient, at least as failing to teach “abbreviated
`sequence numbers whose length depends on the maximum
`number of coded transport blocks to be stored”
`21
`
`The Petition does not establish that TR25.835 teaches or renders
`obvious either: “a physical layer of a receiving side…for testing the
`correct reception of the coded transport block”; or “a physical layer
`of a receiving side…for sending a positive acknowledgment command
`to the transmitting side over a back channel when there is correct
`reception and a negative acknowledge command when there is error-
`affected reception” of Claim 1.
`24
`
`1.
`
`2.
`
`The Petition fails to establish that TR25.835 is prior art as
`to the ‘917 Patent.
`25
`
`TR25.835 fails to teach “a physical layer of a receiving
`side…for sending a positive acknowledgment command to
`the transmitting side over a back channel when there is
`
`2
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`correct reception and a negative acknowledge command
`when there is error-affected reception” as recited in Claim
`1.
`31
`
`D. No prima facie obviousness for the recitation “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 a sequence number” of Claims 9
`and 10.
`33
`
`E.
`
`No prima facie obviousness for the recitations of either: “a physical
`layer of a receiving side…for testing the correct reception of the
`coded transport block”; or “a physical layer of a receiving side…for
`sending a positive acknowledgment command to the transmitting side
`over a back channel when there is correct reception and a negative
`acknowledge command when there is error-affected reception” of
`Claims 9 and 10.
`
`34
`
`VII. CONCLUSION
`
`35
`
`
`
`
`
`
`3
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc 2017 LLC (the
`
`“Patent Owner” or “Uniloc”) submits Uniloc’s Preliminary Response to the Petition
`
`for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 7,075,917
`
`(“the ‘917 patent” or “Ex. 1001”) filed by Microsoft Corporation (“Petitioner”) in
`
`IPR2019-00973.
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.
`
`Uniloc addresses each ground and provides specific examples of how
`
`Petitioner failed to establish that it is more likely than not that it would prevail with
`
`respect to at least one of the challenged ‘917 Patent claims. As a non-limiting
`
`example described in more detail below, the Petition fails the all-elements-rule in
`
`not addressing every feature of any of the challenged claims.
`
`Accordingly, Uniloc respectfully requests that the Board decline institution of
`
`trial on Claims 1-3 and 9-10 of the ‘917 Patent.
`
`II. THE ‘917 PATENT
`
`A. Effective Filing Date of the ‘917 Patent
`
`The ‘917 patent is titled “Wireless Network with a Data Exchange According
`
`to the ARQ Method.” The ‘917 Patent issued on July 11, 2006, from United States
`
`Patent Application No. 09/973,312, filed October 9, 2001, which claims priority to
`
`4
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`German Patent Application No. 100 50 117, filed October 11, 2000. The Petition
`
`does not dispute that the effective filing date of the ‘917 Patent is October 11, 2000.
`
`B. Overview of the ‘917 Patent
`
`The ‘917 Patent discloses various embodiments of a communication network
`
`intended for use in wireless communications. In general terms, the ‘917 Patent
`
`addresses challenges with wireless networks having a radio network controller, and
`
`terminals in communication with the radio network controller. (Ex. 1001; 1:5-7).
`
`Data transmitted between the radio network controller and the terminals is
`
`transmitted through channels predefined by the radio network controller. (Ex. 1001;
`
`3: 57-60). The radio link from the radio network controller to the terminals is referred
`
`to as the downlink; and, the radio link from the terminals to the radio network
`
`controller is referred to as the uplink. (Ex. 1001; 3:62-67).
`
`The network may be operated using a layer model, or protocol architecture, in
`
`accordance with a set of standards, known as the 3rd Generation Partnership Project
`
`(3GPP); Technical Specification Group (TSG) RAN; Working Group 2 (WG2):
`
`Radio Interface Protocol Architecture: TS25.301 V3.6.0). (Ex. 1001; 6:9-16).
`
`
`
`
`
`
`
`
`
`5
`
`

`

`
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`As explained with reference to Fig. 2 of the ‘917 Patent, the layer model has
`
`three protocol layers: the physical layer PHY, a data connection layer including sub-
`
`layers MAC, for Medium Access Control, and RLC, for Radio Link Control, and the
`
`layer RRC for radio resource control. (Ex. 1001, 4:43-48). The RRC layer is
`
`responsible for signaling between the radio network controller and the mobile
`
`6
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`terminals. (Ex. 1001, 4:49-51). The sub-layer RLC controls radio links between
`
`remote terminals and radio network controllers. (Ex. 1001; 4:51-53). The layer RRC
`
`controls layers MAC and PHY via control lines 10 and 11. The layer RRC can thus
`
`control the configuration of the MAC and PHY layers. (Ex. 1001, 4:53-56). The
`
`physical layer PHY makes transport links 12 available to the MAC layer (Ex. 1001,
`
`4:56-57). The MAC layer makes logic channels 13 available to the RLC layer. (Ex.
`
`1001, 4:57-58). The RLC layer is available to applications via access points 14. (Ex.
`
`1001, 4:58-59).
`
`Packet data units for transmission are formed in the RLC layer, and are packed
`
`in transport blocks in the MAC layer, and provided to the physical layer. The
`
`transport blocks are transmitted between the radio network controller and terminals
`
`by the physical layer. (Ex. 1001, 5:4-13).
`
`Identification of error-affected packets and retransmission of error-affected
`
`packet data units is accomplished in multiple manners. Using the hybrid Automatic
`
`Repeat Request (ARQ) method Type II or Type III, a received packet data unit
`
`affected by an error is buffered and, after additional incremental redundancy, is
`
`decoded together with the received packet data unit affected by error. In the ARQ
`
`method Type II, the incremental redundancy is useless without the buffered, and
`
`error-affected, packet. In the ARQ method Type II the incremental redundancy can
`
`be decoded without the buffered, error-affected, packet. A message as to error-free
`
`reception is sent by the receiving device only when the receiving RLC layer
`
`establishes on the basis of an RLC sequence number that packet data units are
`
`7
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`lacking. (Ex. 1001, 1:40-43). The RLC sequence number, or packet data unit
`
`sequence number, is transmitted in parallel with the coded transport block or the
`
`incremental redundancy required afterwards, as side information, thereby permitting
`
`the receiving side to detect which coded transport block is concerned or which
`
`buffered coded transport block the additionally transmitted redundance refers to
`
`when a coded transport block is retransmitted. (Ex. 1001; 5:19-36) As a result, the
`
`packet data unit must be buffered over a long time period until an incremental
`
`redundancy is requested, and then, after successful decoding, the reception may be
`
`acknowledged as correct. (Ex. 1001; 1:43-45). The period of time that the packet
`
`data unit must be buffered is particularly long on the network side, as the physical
`
`layer and the RLC layer are usually located on different hardware components on
`
`the network side. (Ex. 1001; 1:48-50).
`
`The ‘917 Patent addresses the challenge of buffering the error-affected data
`
`for a long period of time by having the receiving physical layer check whether the
`
`coded transport block has been transmitted correctly. (Ex. 1001; 6:9-11). The ‘917
`
`Patent further provides for transmission of an acknowledge command over a back
`
`channel between a physical layer of a transmitting device and the physical layer of
`
`a receiving device. (Ex. 1001; 2:30-33). This transmission of the acknowledge
`
`command provides that a correct or error-affected transmission of a transport block
`
`is provided to the transmitting side much more rapidly than previously known. (Ex.
`
`1001; 2:33-36). As a result, a repetition of transmission with incremental redundancy
`
`may be affected rapidly. This enables the receiving side to buffer the received coded
`
`8
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`transport block affected by error for a shorter time period. (Ex. 1001; 2:38-40). The
`
`memory capacity needed on average for buffering received coded transport blocks
`
`affected by error is reduced. (Ex. 1001; 2:42-44).
`
`Referring to Fig. 3 of the ‘917 Patent, an example is provided.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`Here, transport blocks TB0 to TB4, to be transmitted for a time period of two
`
`radio frames RF, each having a duration of one Transmission Time Interval (TTI)
`
`are shown. (Ex. 1001; 6:44-48). Multiple channels, including the physical channel
`
`PHC, which carries the transport blocks, the side information channel SI, which
`
`carries information about the redundancy version and the abbreviated sequence
`
`number of a transport block, and the back-channel BC are shown. (See Ex. 1001;
`
`6:27 – 7:16). As the ‘917 Patent explains, the correct or error-affected reception is
`
`checked in the physical layer in the radio frame RF which comes after the
`
`transmission time interval. (Ex. 1001; 6:56-58). Thus, for transport block TB1,
`
`which is transmitted during the first radio frame of Fig. 3, error-checking is
`
`performed during the second of the four radio frames shown in Fig. 3, and the
`
`positive acknowledge command ACK is transmitted via back channel BC during the
`
`third radio frame. (Ex. 1001; 6:60-61). The transmission of transport blocks TB2,
`
`TB3 and TB4 is completed during the second of the four radio frames, and error
`
`checking is performed during the third radio frame. During the fourth radio frame,
`
`the positive acknowledgment command ACK for the transport blocks TB4 and TB2,
`
`and the negative acknowledgment command NACK for transport block TB3, are
`
`transmitted via back channel BC (Ex. 1001; 6:62-65).
`
`Further, the ‘917 Patent teaches the use of abbreviated sequence numbers to
`
`reduce the extent of information that is required to be additionally transmitted for
`
`managing the transport blocks and packet data units. (Ex. 1001; 2:45-49). The ‘917
`
`Patent teaches that “abbreviated sequence number is determined by the number of
`
`10
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`M coded transport blocks which, on the receiving side, can at most be buffered
`
`simultaneously.” (Ex. 1001, 5:41-44). The ‘917 Patent goes on to state that the
`
`number of M coded transport blocks is the logarithm to the base of 2, rounded to the
`
`next higher natural number. (Ex. 1001, 5:44-44) Thus, the maximum number of
`
`coded transport blocks to be stored may be the same as the maximum number of
`
`coded transport blocks that can be buffered simultaneously.
`
`The ‘917 Patent issued with three independent claims, namely claims 1, 9 and
`
`10. The text of those three independent claims is copied herein for the convenience
`
`of the Board:
`
`
`1. A wireless network comprising a radio network controller and a
`plurality of assigned to signals, which are each provided for exchanging data
`according to the hybrid ARQ method an which form a receiving and/or
`transmitting side, in which a physical layer of a transmitting side is arranged
`for
`
`storing coded transport blocks in a memory, which blocks contain at
`least a packet data unit which is delivered by an assigned radio link control
`layer and can be identified by a packet data unit sequence number,
`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, and for
`transmitting coded transport blocks having at least an assigned
`abbreviated sequence number and
`a physical layer of a receiving side is provided for testing the correct
`reception of the coded transport block and for sending a positive acknowledge
`command to the transmitting side over a back channel when there is correct
`reception and a negative acknowledge command when there is error-affected
`reception.
`
`
`9. A radio network controller in a wireless network comprising a
`plurality of terminals, which radio network controller is provided for
`exchanging data with the terminals and which forms a receiving and/or
`
`11
`
`

`

`
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`transmitting side, in which a physical layer of the radio network controller
`arranged as a transmitting side for
`storing coded transport blocks in a memory, which blocks contain at
`least a packet data unit which is delivered by an assigned radio link control
`layer and can be identified by a packet data unit sequence number,
`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 a sequence number, and for
`transmitting coded transport blocks having at least an assigned
`abbreviated sequence number and
`a physical layer of the radio network controller is arranged as a
`receiving side for testing the correct reception of a coded transport block from
`a terminal and for sending a positive acknowledge command to a terminal
`over a back channel when there is correct reception and a negative knowledge
`command when there is error-affected reception.
`
`10. A terminal in a wireless network comprising further terminals
`and a radio network controller, which terminal is provided for exchanging
`data with the terminals and which forms a receiving and/or transmitting side,
`in which a physical layer of the terminal is arranged as a transmitting side for
`storing coded transport blocks in a memory, which blocks contain at
`least a packet data unit which is delivered by an assigned radio link control
`layer and can be identified by a packet data unit sequence number,
`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 a sequence number, and for
`transmitting coded transport blocks to the radio network controller
`having at least an assigned abbreviated sequence number and
`A physical layer of the terminal is arranged as a receiving side for
`testing the correct reception of a coded transport block from the radio network
`controller and for sending a positive acknowledge command to the radio
`network controller over a back channel when there is correct reception and a
`negative acknowledge command when there is error-affected reception.
`
`
`
`12
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`C.
`
`Prosecution History of the ‘917 Patent
`
`The ‘917 Patent issued from U.S. Patent Application Serial No. 09/973,312,
`
`filed October 9, 2001 (the ‘312 Application), which claims priority of German
`
`Application No. 10050117.6, filed October 11, 2000. The ‘312 Application was filed
`
`with 10 claims, including 3 independent claims (Ex. 1002, pp. 13-15). Information
`
`Disclosure Statements were filed in the ‘312 Application on January 8, 2002 and
`
`September 22, 2003, identifying: 3rd Generation Partnership Project, Technical
`
`Specification Group Radio Access Network, Report on Hybrid ARQ Type II/III
`
`(Release 2000), 3G TR 25.835 v0.0.0, TS-RAN Working Group 2 (Radio L2 and
`
`Radio L3, France, August 15-21, 2000).
`
`In a first Office Action, mailed September 21, 2005, independent claims 1 and
`
`9-10, were objected to for various informalities and dependent claims 4-8 were
`
`rejected under 35 U.S.C. 112, second paragraph. (Ex. 1002, p. 59-61). The Office
`
`Action confirmed that the Examiner considered the references cited in the
`
`Information Disclosure Statements. (Ex. 1002, pp. 63-64). The Office Action further
`
`included a list of prior art considered by the Examiner, namely U.S. Patent
`
`Publication No. 2001/0036169 (Ratzel), U.S. Patent Publication No. 2003/0157927
`
`(Yi, et al.) and U. S. Patent Publication No. 204/0246917 (Cheng, et al.). (Ex. 1002,
`
`p. 65). The Ratzel reference discloses, in a digital packet radio receiver network, an
`
`13
`
`

`

`
`automatic repeat request, or ARQ, in which a very short sequence number is utilized
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`for space efficiency. (Ex. 1002, p. 99).
`
`An Amendment and Response was filed on January 23, 2006. (Ex. 1002, pp.
`
`68-75). In the Amendment, independent claims 1, 9 and 10 were amended to correct
`
`minor informalities. (Ex. 1002, pp. 69-71). Dependent claims 4, 5, 7 and 8 were
`
`amended to clarify that the recited physical layer may be of the sending side or the
`
`transmitting side, and that an acknowledge command may be transmitted form either
`
`the sending side or the transmitting side. (Ex. 1002; p. 70).
`
`The USPTO issued a Notice of Allowance on February 27, 2006. (Ex. 1002,
`
`p. 78). The issue fee was paid on May 24, 2006. (Ex. 1002; p.85). The application
`
`issued as the ‘917 Patent on July 1, 2006.
`
`III. RELATED PROCEEDINGS
`
`Including the present case, the following proceedings are currently pending
`
`cases concerning U.S. Pat. No. 7,075,917 (EX1001).
`
`
`
`Case Caption
`
`Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`
`Uniloc 2017 LLC v. Microsoft
`Corporation
`
`Uniloc 2017 LLC v. AT&T
`Services, Inc. et al
`
`
`
`Number
`
`District
`
`Filed
`
`2-18-cv-00513
`
`EDTX
`
`Nov. 17, 2018
`
`8-18-cv-02053
`
`CDCA
`
`Nov. 17, 2018
`
`2-19-cv-00102
`
`EDTX
`
`Mar. 26, 2019
`
`14
`
`

`

`
`
`In addition to the above pending case, Apple filed IPR2019-00259 on Nov.
`
`12, 2018. That IPR was denied institution on June 27, 2019. See paper no. 7.
`
`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`The Petition proposes a level of ordinary skill in the art of a person having a
`
`bachelor’s degree in electrical engineering, computer science, or the equivalent and
`
`three years of experience working with wireless digital communication systems
`
`including the physical layer of such systems. (Petition, p. 27). The Petition
`
`alternatively proposes that the skilled person would have had a master’s degree in
`
`electrical engineering, computer science, or the equivalent with an emphasis on
`
`wireless digital communication systems. (Petition, pp. 27-28).
`
`At this time, Patent Owner also does not provide its own definition because,
`
`even applying the multiple and varying alternative definitions proposed by
`
`Petitioner, Petitioner has not met its burden. Moreover, the Petition cites to the
`
`hybrid ARQ methods described in the ‘917 Patent itself as support for the level of
`
`ordinary skill in the art, but completely fails to link these particularized subject
`
`matter areas to the identified levels of education and industry experience proposed
`
`by Petitioner.
`
`V. THE PETITION IMPROPERLY REDUDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
`
`The Petition herein redundantly challenges Claims 1-3 and 9-10 of the ’917
`
`Patent, without providing any persuasive justification for such inefficient and unfair
`
`redundancies.
`
`15
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`The Board has provided in General Plastic Co., Ltd. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential) a set of
`
`non-exclusive factors to determine whether a petitioner’s filing of follow-on
`
`petitions has caused “undue equities and prejudices to Patent Owner.” Slip. op at 16-
`
`17. Here, those factors militate in favor of the Board exercising its discretion under
`
`35 U.S.C. 314(a) and 37 C.F.R. 42.108(a) to deny institution.
`
`The non-exclusive factors here are:
`
`1. whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent;
`
`2. whether at the time of filing of the first petition the petitioner knew of the
`
`prior art asserted in the second petition or should have known of it;
`
`3. whether at the time of filing of the second petition the petitioner already
`
`received the patent owner’s preliminary response to the first petition or received the
`
`Board’s decision on whether to institute review in the first petition;
`
`4. the length of time that elapsed between the time the petitioner learned of
`
`the prior art asserted in the second petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation for the time elapsed
`
`between the filings of multiple petitions directed to the same claims of the same
`
`patent;
`
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. 316(a) (11) to issue a final determination
`
`not later than 1 year after the date on which the Director notices institution of review.
`
`16
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
` Here, as indicated above, a petition was filed by another party, in IPR2019-
`
`00259 (the ‘259 Petition), challenging the same claims of the ‘917 Patent. The ‘259
`
`Petition was filed on November 12, 2018, and the deadline for the Patent Owner to
`
`file its Preliminary Patent Owner Response was April 23, 2019. Institution was
`
`denied by the Board in IPR2019-00259 (Paper No. 7, June 27, 2019). Petitioner did
`
`not file the present Petition until April 19, 2019, only four days before the due date
`
`of the Preliminary Patent Owner Response to the ‘259 Petition, and over five months
`
`after filing of the ‘259 Petition.
`
`Here, the Petitioner has provided no explanation for the five-month delay
`
`between the filing of the ‘259 Petition and the filing of the present Petition. Thus,
`
`far from providing “adequate explanation for the time elapsed between the filings of
`
`multiple petitions directed to the same claims of the same patent,” the Petitioner has
`
`provided no explanation whatever for the five- month delay.
`
`The present Petition and the unsuccessful prior petition both rely on the Abrol
`
`reference, demonstrating redundancy of the two petitions. The Petition provides no
`
`substantive explanation of any differences in the reliance on Abrol in the two
`
`petitions, only stating that the Petition “presents that reference in a different light.”
`
`(Petition, p. 5).
`
`Still further, the Petitioner has newly cited here the TR25.835 (Ex. 1005)
`
`reference, but has provided no indication as to when the Petitioner became aware of
`
`the TR25.835 reference, or any reason for the delay in the explanation as to the
`
`reason for the five-month delay in assertion.
`
`17
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`Moreover, the Petitioner has not identified the differences between the newly
`
`cited TR25.835 reference and the Decker Patent relied upon in the prior Petition,
`
`thereby unnecessarily expending the resources of the Board on an entirely new
`
`review of the prior art, rather than an efficient examination focused on the alleged
`
`differences between TR25.835 and Decker.
`
`In view of the foregoing, as multiple General Plastic factors militate against
`
`institution, denial of institution is appropriate here.
`
`Further, the Board should exercise its discretion under 35 U.S.C. 325(d) to
`
`reject this petition on the grounds that the cited prior art and the arguments overlap
`
`with the cited prior art and arguments already presented to the Board in IPR2019-
`
`00259. The Board has already denied institution in IPR2019-00259. The Petitioner
`
`fails to explain how the newly cited TR25.385 reference differs from the Decker
`
`Patent relied upon in the prior Petition, and relies in part on the very same Abrol
`
`reference, with no explanation as to how, if at all, the present petition differs in its
`
`analysis of the Abrol patent. Thus, Petitioner has provided no justification for a
`
`seemingly redundant petition based on one identical reference, and a second
`
`reference having no identified differences from Decker.
`
`Moreover, the fact that the petition in IPR2019-00259 relying on overlapping
`
`grounds was filed by a different Petitioner, is no bar to the Board exercising its
`
`discretion to decline institution here. In Unified Patents, Inc. v. Personal Web Tech.,
`
`LLC, IPR2014-00702, Paper 13 (July 24, 2014) the Board denied institution, stating
`
`that although “we recognize that, as a result of our decision, Unified will not have
`
`18
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`an opportunity to submit arguments or evidence with respect to” certain claims,
`
`“there are sufficient reasons to exercise our discretion to deny the Petition in this
`
`proceeding.” Id. at 7. The Board noted that the Petition in IPR2014-00702
`
`challenged claims, each of which were being challenged in an Inter Partes Review
`
`filed by another, and that another Inter Partes Review as to certain of those claims
`
`was on appeal. Id. at 8. Thus, the efficient administration of the Office under 35
`
`U.S.C. 316(b) was held to provide grounds for the exercise of discretion to deny the
`
`Petition. Id. Here, similarly, the Board has already denied institution in IPR2019-
`
`00259, and the mere fact that Petitioner is not party to IPR2019-00259 does not
`
`outweigh the efficient administration of the Office, given the near identical nature
`
`of the grounds in the two proceedings.
`
`For the foregoing reasons, denial of institution is respectfully requested.
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Patent Owner demonstrates that Petitioner has failed to establish that it is more
`
`likely than not that it would prevail with respect to at least one of the challenged
`
`‘917 Patent claims. By not addressing additional arguments, Patent Owner in no way
`
`concedes that any argument by Petitioner is correct.
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
`
`must demonstrate a reasonable likelihood that at least one of the challenged patent
`
`claims would have been obvious in view of the references cited in the Petition.
`
`Petitioner “must specify where each element of the claim is found in the prior art
`
`19
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board
`
`should reject the Petition because Petitioner fails to meet this burden for any of the
`
`grounds.
`
`The Petition is stylized as presenting the following ground:
`
`Ground Claim(s)
`
`Statute Reference(s)
`
`1-3 and 9-10
`
`103
`
`3G TR25.835 (Ex. 1005) and U.S. Patent
`No.6,507,582 (Abrol) (Ex. 1007)
`
`1
`
`
`
`A. Claim Construction Standard
`
`As of the filing date of the Petition, the standard for claim construction in Inter
`
`Partes Review is the standard of “ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history pertaining
`
`to the patent.” 37 C.F.R. §42.100(b) (effective November 13, 2019). For all claim
`
`terms, Uniloc requests that the Board adopt the ordinary and customary meaning of
`
`the claim term as understood by one of ordinary skill in the art.
`
`The proposed construction of “back channel” on page 29 of the Petition as a
`
`“channel which is inserted directly between the receiving physical layer and the
`
`sending (or transmitting) physical layer (and not between the RLC layers) for
`
`informing the transmitting side (transmitting terminal or radio network controller)
`
`of the fact that a transport block has not been transmitted error-free” has not been
`
`shown to constitute the ordinary and customary meaning of the phrase as understood
`
`by one of ordinary skill in the art.
`
`
`
`20
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`B. No prima facie obviousness for “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”
`
`The Petition fails to establish prima facie obviousness of at least the following
`
`recitation: “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” as recited in Independent
`
`Claim 1.
`
`1. Abrol is deficient, at least as failing to teach “abbreviated
`sequence numbers whose length depends on the maximum
`number of coded transport blocks to be stored”
`
`The Petition asserts that Abrol teaches the Claim 1 recitation of “abbreviated
`
`sequence numbers whose length depends on the maximum number of coded
`
`transport blocks to be stored” obvious. (Petition, pp. 47-51).
`
`However, as is clear from Abrol, there is no disclosure that the selection of
`
`the two lengths of abbreviated sequence numbers depend on the maximum number
`
`of coded transport blocks to be stored.
`
`The Petitioner has failed to carry its burden of showing that the abbreviated
`
`sequence number scheme of Abrol is based on the maximum number of coded
`
`transport blocks to be stored. As demonstrated below, Abrol does not in fact teach
`
`this recitation at all, and indeed contemplates a maximum number of coded transport
`
`blocks to be stored that requires a sequence number that is not abbreviated.
`
`Abrol is concerned with adapting the RLP protocol to enable efficient
`
`transmission of a byte stream through a channel of varying capacity. (Ex. 1007; 3:23-
`
`21
`
`

`

`IPR2019-00973
`U.S. Patent No. 7,075,917
`
`
`
`25). Abrol observes that in the RLP2 protocol, sequence numbers are used to denote
`
`frame numbers. (Ex. 1007; 3:42-44). Abrol notes that, as a result of the use of
`
`sequence numbers to designate frames, a negative acknowledgment message would
`
`require retransmission of an entire frame, and that if a single frame contains 750
`
`bytes of data, the need to retransmit an entire frame would overwhelm the capacity
`
`of a low-capacity channel. (See Ex. 1007; 3:52 to 4:11).
`
`Abrol addresses this problem by providing sequence numbers assigned to
`
`individual bytes, instead of sequence numbers assigned to frames. (Ex. 1007; 4:12-
`
`24). Abrol acknowledges that a disadvantage of using a byte sequence number
`
`instead of a frame sequence number is the larger data requirement for transmitting a
`
`sequence number for each byte, as opposed to only transmitting a sequence number
`
`for each frame. (Ex. 1007; 4:25-27). Abrol provides a scheme in which sequence
`
`numbers have a 20-bit size, which may be shortened to 8-bits or 14-bits (Ex. 1007;
`
`9:18-21), to reduce the amount of sequence number data being transmitted, as
`
`discussed below.
`
`Abrol carefully selects portions of the sequence number space which will go
`
`unassigned to transmitted data bits. (Ex. 1007; 4:49-52). Abrol chooses the unused
`
`portion of the sequence number space such that the first byte of each