Trials@uspto.gov
`571.272.7822
`
`
`
` Paper 20
` Date: November 13, 2020
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`APPLE INC., and ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-009731
`Patent 7,075,917 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 Apple Inc., who filed a petition in IPR2020-00224, has been joined as a
`petitioner in this proceeding. Ericsson Inc., who filed a petition in IPR2020-
`00315, has been joined as a petitioner in this proceeding.
`
`
`
`
`571.272.7822
`
`
`
` Paper 20
` Date: November 13, 2020
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`APPLE INC., and ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-009731
`Patent 7,075,917 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 Apple Inc., who filed a petition in IPR2020-00224, has been joined as a
`petitioner in this proceeding. Ericsson Inc., who filed a petition in IPR2020-
`00315, has been joined as a petitioner in this proceeding.
`
`
`
`
`
`IPR2019-00973
`Patent 7,075,917 B2
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`I. INTRODUCTION
`Microsoft Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–3, 9, and 10 of U.S. Patent No. 7,075,917 B2 (Ex. 1001,
`“the ’917 patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review, pursuant to 35 U.S.C. § 314, as to claims 1–3, 9, and 10 based
`on the sole challenge set forth in the Petition. Paper 7 (“Decision to
`Institute” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 9, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 12, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 13, “Sur-reply”). On August 20, 2020, we held an oral hearing. A
`transcript of the hearing is of record. Paper 19 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`not raised in the [Patent Owner] response may be deemed waived.” See
`Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
`the involved claims that are believed to be patentable and state the basis for
`that belief.”). Patent Owner argues that it “does not concede, and
`specifically denies, that there is any legitimacy to any arguments in the
`instant Petition that are not specifically addressed” in its Patent Owner
`Response. PO Resp. 47 n.1; see also id. at 14–15. We decline to speculate
`as to what arguments Patent Owner considers illegitimate in the Petition.
`Any arguments for patentability not raised in the Patent Owner Response are
`deemed waived.
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`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–3, 9, and 10 of the ’917 patent
`are unpatentable.
`
`A. Related Matters
`The parties indicate that the ’917 patent is the subject of several court
`proceedings, including Uniloc 2017 LLC v. Microsoft Corporation, 8:18-cv-
`002053 (C.D. Cal.), filed November 17, 2018. Pet. vii; Paper 3, 2; Prelim.
`Resp. 14–15; see also Ex. 1011 (complaint). The ’917 patent also was the
`subject of IPR2019-00259, where a decision to not institute inter partes
`review was rendered. Apple Inc. v. Uniloc 2017 LLC, IPR2019-00259
`(“IPR259”), Paper 7 (PTAB June 27, 2019) (Decision Denying Institution)
`(“IPR259 Dec.”). In IPR2020-00224, Apple Inc. filed a motion to join this
`proceeding, which we granted. See Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00224, Paper 10 (PTAB Apr. 6, 2020). In IPR2020-00315,
`Ericsson Inc. filed a motion to join this proceeding, which we granted. See
`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00315, Paper 10 (PTAB Apr. 7,
`2020).
`
`B. The ’917 Patent
`The Specification of the ’917 patent describes a wireless network
`comprising a radio network controller (RNC) and a plurality of assigned
`terminals, which are each provided for exchanging data and which form a
`receiving and/or transmitting side. Ex. 1001, 1:6–9. The ’917 patent
`describes data transmitted using the hybrid Automatic Repeat Request
`(ARQ) method. Id. at 1:10–15. The ’917 patent explains that an object of
`the invention is “to provide a wireless network in which error-affected data
`repeatedly to be transmitted . . . are buffered for a shorter period of time on
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`average.” Id. at 1:64–67. This is done by storing abbreviated sequence
`numbers whose length depends on the maximum number of coded transport
`blocks to be stored, and transmitting coded transport blocks that include a
`packet data unit and an assigned abbreviated sequence number. Id. at 2:8–
`16. The use of abbreviated sequence numbers reduces the extent of
`information that is required to be additionally transmitted for managing
`transport blocks and packet data units and simplifies the assignment of the
`received acknowledge command to the stored transport blocks. Id. at 2:45–
`49. The ’917 patent further describes that a receiving physical layer checks
`whether a coded transport block has been transmitted correctly, and, if so, a
`positive acknowledge signal ACK is sent to the sending physical layer over
`a back channel. Id. at 6:9–13. If the coded transport block has not been
`received error-free, a negative acknowledge command NACK is sent to the
`sending physical layer. Id. at 6:13–15.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–3, 9, and 10 of the ’917 patent. Claims
`1, 9, and 10 are independent claims, and claims 2 and 3 depend directly from
`claim 1. Claim 1 is reproduced below, which includes changes made per a
`Certificate of Correction.
`1. A wireless network comprising a radio network
`controller and a plurality of assigned terminals, which are each
`provided for exchanging data according to the hybrid ARQ
`method and 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,
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`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.
`Ex. 1001, 7:62–8:17, p.10.
`
`D. Instituted Ground of Unpatentability
`We instituted trial based on the sole asserted ground of unpatentability
`under 35 U.S.C.2 as follows (Dec. 5, 28):
`
`
`Claim(s) Challenged
` 1–3, 9, and 10
`
`35 U.S.C. §
` 103(a)
`
`Reference(s)/Basis
` TR25.8253, Abrol4
`
`
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’917
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`3 3G TR 25.835 V1.0.0 (2000-09) – 3rd Generation Partnership Project;
`Technical Specification Group Radio Access Network; Report on Hybrid
`ARQ Type II/III (Release 2000) (Ex. 1005, “TR25.835”).
`4 US 6,507,582 B1, issued Jan. 14, 2003 (Ex. 1007, “Abrol”).
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`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018). A
`patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B.
`Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Harry Bims, who
`testifies that a person having ordinary skill in the art would have had “a
`bachelors’ degree in electrical engineering, computer science, or the
`
`
`5 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
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`equivalent and three years of experience working with wireless digital
`communication systems including physical layer of such systems.” Pet. 27–
`28 (citing Ex. 1003 ¶ 27). Dr. Bims further testifies that “[a]lternatively, 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.” Ex. 1003 ¶ 27. The Petition further states that a
`person having ordinary skill in the art “would have had working knowledge
`of the hybrid ARQ methods described in the ’917 patent and closely
`followed ARQ developments by 3GPP and other network standardization
`groups.” Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36).
`Patent Owner does not provide its own assessment of the level of
`ordinary skill in the art, but argues that the Petition fails to link the subject
`matter of hybrid ARQ methods to the identified levels of education and
`industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has
`failed to show that such a linkage is necessary. Rather, in determining the
`level of ordinary skill in the art, we consider several factors, such as the type
`of problems encountered in the art and prior art solutions to those problems,
`as well as education and industry experience. Here, we agree with Petitioner
`and find that a person having ordinary skill in the art would have known of
`the hybrid ARQ methods described in the ’917 patent and closely followed
`ARQ developments by 3GPP and other network standardization groups.
`Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s
`assessment of a person with ordinary skill in the art as it is consistent with
`the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note
`that the prior art of record in the instant proceeding reflects the appropriate
`level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350,
`1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as
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`to the level of ordinary skill in the art “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, “[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. § 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37
`C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d
`1303, 1312–14 (Fed. Cir. 2005).
`For purposes of this decision, we need not expressly construe any
`claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol
`Petitioner contends claims 1–3, 9, and 10 are unpatentable under
`35 U.S.C. § 103(a) as obvious over TR25.825 and Abrol. Pet. 29–68. In
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`support of its showing, Petitioner relies upon the declaration of Dr. Bims.
`Id. (citing Ex. 1003).
`
`1. TR25.835 as Prior Art and What TR25.835 Describes
`TR25.835 as Prior Art
`We first address whether Petitioner has shown that TR25.835 is a
`prior art printed publication under 35 U.S.C. § 102. See 35 U.S.C. § 311(b)
`(2018). Petitioner bears the burden to prove that it is. See 35 U.S.C.
`§ 316(e) (2018). Whether a document qualifies as a printed publication
`under 35 U.S.C. § 102 “is a question of law based on underlying findings of
`fact.” In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir.
`2014) (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)). The Federal
`Circuit “has interpreted § 102 broadly, explaining that even relatively
`obscure documents qualify as prior art so long as the public has a means of
`accessing them.” Id. (citing Hall, 781 F.2d at 899).
`Our leading case on public accessibility is In re Hall, 781
`F.2d 897 (Fed. Cir. 1986). In Hall we concluded that “a single
`cataloged thesis in one university library” constitutes “sufficient
`accessibility to those interested in the art exercising reasonable
`diligence.” Id. at 900. Thereafter, in Constant v. Advanced
`Micro–Devices, Inc., we explained that “[a]ccessibility goes to
`the issue of whether interested members of the relevant public
`could obtain the information if they wanted to.” 848 F.2d 1560,
`1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved,
`there is no requirement to show that particular members of the
`public actually received the information.” Id.
`
`Enhanced Sec. Research, LLC, 739 F.3d at 1354 (alterations in
`original). The determination of whether a document is a “printed
`publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the
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`facts and circumstances surrounding its disclosure to members of the public.
`In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`TR25.835 is a technical report. Ex. 1005. Petitioner asserts that
`TR25.835 was “published by 3GPP in 2000 and publicly available on the
`3GPP file server no later than September 13, 2000,” and, thus qualifies as
`prior art “under at least Sections 102(a) and (b).” Pet. 10 (citing Ex. 1004
`¶¶ 12–24; Ex. 1005) (footnote omitted). The Petition is accompanied by a
`declaration from Mr. Friedhelm Rodermund. Ex. 1004.
`TR25.835 bears a copyright date of 2000. Ex. 1005, 2–3. The front
`cover of the document includes the indicia that “[t]he present document has
`been developed within the 3rd Generation Partnership Project (3 GPPTM).”
`Id. at 2. Mr. Rodermund testifies that (1) he worked as a project manager at
`the European Telecommunications Standards Institute (“ETSI”) from June
`1998 to December 2004; (2) at ETSI he was a project manager for “various
`ETSI Special Mobile Group (‘SMG’) and 3GPP working groups;” and (3) he
`has personal knowledge of 3GPP’s standard business and records keeping
`practices during the same timeframe. Ex. 1004 ¶¶ 2, 6, 13.
`According to Mr. Rodermund, 3GPP “is in the business of developing
`and maintaining cellular telecommunications standards” and publishes
`technical specifications, proposals, reports, and other documents related to
`the development of cellular telecommunications standards. Id. ¶¶ 13–14.
`Mr. Rodermund further avers that at least as early as December 1998, draft
`(“T-docs”) and final versions of 3GPP documents were, and continue to be,
`made publicly available by 3GPP, from an FTP server, “which has always
`been easily accessible from [the 3GPP] website.” Id. ¶¶ 15, 17. According
`to Mr. Rodermund, at least by December 1998, 3GPP’s FTP server was
`freely accessible to the general public with no login, password, or
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`membership requirement. Id. ¶ 18. Based on Mr. Rodermund’s testimony,
`“[b]y June 1999, 3GPP’s ftp server was well-known to persons in the
`cellular telecommunications industry as a source of public information
`regarding industry standards and technological advances.” Id. ¶ 20.
`Mr. Rodermund further avers that by 1999, at least 100 companies
`were members of 3GPP (such as Samsung, Sony, Nokia, and Bosch), who
`regularly delegated multiple individuals to participate in 3GPP meetings. Id.
`¶ 19. Mr. Rodermund testifies that pursuant to 3GPP’s standard business
`practices, 3GPP working groups “sent emails notifying these individuals as
`soon as new or additional documents had been uploaded to 3GPP’s ftp
`server” such that “some of the most interested members of the public—those
`working to develop standards for cellular telecommunication or working to
`implement the standards—were personally informed of their availability by
`email.” Id.
`Mr. Rodermund testifies that “Ex. 1005” is a true and correct copy of
`version 1.0.0 of technical report 3GPP TR 25.835, “which was published
`and freely available on 3GPP’s ftp server by September 13, 2000.” Id. ¶ 25.
`He further testifies that “[t]he document was presented as T-doc RP-000416
`at the 3GPP TSG RAN#9 plenary meeting” held September 20–22, 2000 in
`Hawaii, “attended by 140 delegates from numerous companies.” Id.
`Patent Owner did not cross-examine Mr. Rodermund. His testimony
`stands unrebutted.
`We find that Mr. Rodermund’s testimony demonstrates his personal
`knowledge of the business practices of 3GPP for him to testify regarding
`such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. We give substantial weight to Mr.
`Rodermund’s testimony that (1) TR25.835 “was published and freely
`available on 3GPP’s ftp server by September 13, 2000;” (2) emails were sent
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`to delegated individuals of at least 100 companies as soon as new or
`additional documents had been uploaded to 3GPP’s ftp server; and (3)
`TR25.835 was presented at the 3GPP TSG RAN #9 plenary meeting, held
`September 20–22, 2000 in Hawaii and attended by 140 delegates from
`numerous companies. Id. ¶¶ 19, 25. We also give substantial weight to Mr.
`Rodermund’s testimony, that “[b]y June 1999, 3GPP’s ftp server was well-
`known to persons in the cellular telecommunications industry6 as a source of
`public information regarding industry standards and technological
`advances.” Id. ¶ 20. We find that a person having ordinary skill in the art at
`the time of the invention would have known of 3GPP’s website and ftp
`server and that such server contained relevant information pertaining to
`cellular telecommunications industry. Pet. 27 (citing Ex. 1003 ¶ 27); Ex.
`1004 ¶ 20. We further find that a person having ordinary skill in the art
`would have “closely followed ARQ developments by 3GPP and other
`network standardization groups.” Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–
`36).
`
`Patent Owner makes several procedural arguments. PO Resp. 16–23,
`30; Sur-reply 1–3. For example, Patent Owner argues that Petitioner fails to
`identify under which pre-AIA statutory provision (35 U.S.C. § 102(a) or 35
`U.S.C. § 102(b)) TR25.835 qualifies as prior art. PO Resp. 16; Sur-reply 2–
`3. We disagree, as the Petition indicates that TR25.835 qualifies as prior art
`under both 35 U.S.C. § 102(a) and 35 U.S.C. § 102(b). Pet. 10. Moreover,
`the Petition explains that the “[p]re-AIA Section 102(b) time bars are
`
`
`6 Patent Owner does not contest that persons in the cellular
`telecommunications industry are persons of ordinary skill in the art. See
`generally PO Resp. We find that persons in the cellular telecommunications
`industry are persons of ordinary skill in the art. Ex. 1003 ¶ 27.
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`triggered off ‘the date of the application for patent in the United States, not
`the date of the German application to which the ’917 Patent alleges
`[priority].” Id. at 10 n.1 (citing 35 U.S.C. § 102(b)). Patent Owner,
`however, does not dispute Petitioner’s representations or explain what more
`was needed by Petitioner. Accordingly, we disagree that “the Petition fails
`to specify the . . . statutory subsection under which TR25.835” qualifies as
`prior art or that the Petition “has prejudiced Patent Owner’s ability to
`respond.” Sur-reply 2–3.7 Patent Owner also argues that the Petition fails to
`provide an analysis and explanation regarding why TR25.835 qualifies as
`prior art. PO Resp. 16–23, 30; Sur-reply 1–3. We are not persuaded by
`Patent Owner’s arguments. Rather, we determine that Mr. Rodermund’s
`declaration, along with the indicia on TR25.835 and the arguments provided
`in the Petition are sufficient.
`Patent Owner argues that Mr. Rodermund does not establish that
`TR25.835 was publicly accessible based on meaningful indexing,
`cataloging, or other assistance, such that “an interested artisan, exercising
`reasonable diligence,” would have been able to find TR25.835 by searching
`the 3GPP file server. PO Resp. 25–27. In particular, Patent Owner argues
`that Petitioner fails to provide testimonial or documentary evidence that
`email notifications were provided of an upload of TR25.835 to the 3GPP
`server. Id. at 28.
`
`
`7 Here, the date of the application for patent in the United States of the ’917
`patent is October 9, 2001. Ex. 1001, code (22). Petitioner contends, and
`Patent Owner does not dispute, that the 35 U.S.C. § 102(b) bar date is
`October 9, 2000. Pet. Reply 4; Sur-reply 2–3. Petitioner further contends,
`and Patent Owner does not dispute, that the 35 U.S.C. § 102(a) date is
`October 9, 2001. Pet. Reply 4–5; Sur-reply 2–3.
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`We are not persuaded by Patent Owner’s argument that Mr.
`Rodermund’s testimony is insufficient because he did not testify, or provide
`documentary evidence, that email notifications were provided of the actual
`upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s
`testimony sufficiently demonstrates his personal knowledge of the business
`practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2,
`6, 7, 13. He explains the general practice of emailing persons having
`ordinary skill in the art as soon as new or additional documents are uploaded
`to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr.
`Rodermund’s testimony that persons having ordinary skill in the art were
`notified by email as soon as new documents, like TR25.835, were uploaded
`to 3GPP’s ftp server based on his personal knowledge of the business
`practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence
`regarding the general library procedure for cataloging as probative value of
`routine business practice to show the performance of the specific act of
`cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed.
`Cir. 2004) (“Evidence of routine business practice can be sufficient to prove
`that a reference was made [publicly] accessible.”).
`We also are not persuaded by Patent Owner’s argument that even if an
`email notification had been provided to member companies, such an email
`distribution does not establish that an ordinarily skilled artisan could have
`accessed TR25.835 by exercise of reasonable diligence. PO Resp. 29. In
`particular, Patent Owner argues that “the email notifications were [restrictive
`and] limited to individuals delegated by respective member companies to
`
`
`8 Mr. Rodermund further testifies that TR25.835 was published and freely
`available on 3GPP’s ftp server by September 13, 2000. Id. ¶ 25.
`
`14
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`regularly participate in 3GPP meetings.” Id. at 29–30. Patent Owner
`provides no evidence that the email notifications were restrictive or limited
`or even explain what Patent Owner means by such argument.
`Mr. Rodermund’s testimony that emails were sent to delegated individuals
`of at least 100 companies as soon as new or additional documents had been
`uploaded to 3GPP’s ftp server stands unrebutted. Ex. 1004 ¶ 19.
`Mr. Rodermund’s testimony that TR25.835 “was published and freely
`available on 3GPP’s ftp server by September 13, 2000” stands unrebutted.
`Id. ¶ 25. Patent Owner directs us to no evidence in support of its apparent
`argument that the persons that received emails about new documents, like
`TR25.835, were only those who created the document. PO Resp. 29. The
`unrefuted testimony of record indicates that several hundred representatives,
`that were persons having ordinary skill in the art, received email notification
`when new documents, like TR25.835, were uploaded to 3GPP’s ftp server.
`Ex. 1004 ¶ 19.
`Patent Owner further argues Petitioner fails to show that TR25.835
`became publicly accessible at a 3GPP meeting, because there is no evidence
`corroborating the occurrence, dates, location, or subject of the meeting, and
`because Mr. Rodermund does not state that he personally attended the
`meeting. PO Resp. 30–31. We are not persuaded by Patent Owner’s
`argument that Mr. Rodermund’s testimony is insufficient because he did not
`testify that he attended the 3GPP meeting. Id. Again, Mr. Rodermund’s
`testimony sufficiently demonstrates his personal knowledge of the business
`practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2,
`6, 7, 13, 22. In particular, we give substantial weight to Mr. Rodermund’s
`unrebutted testimony that documents are routinely uploaded to 3GPP’s ftp
`server and website before a meeting where they are to be discussed. Id.
`
`15
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`¶ 22. We further give substantial weight to Mr. Rodermund’s testimony that
`TR25.835 was publically available on 3GPP’s ftp server by September 13,
`2000 and that TR25.835 was presented at the 3GPP TSG RAN#9 meeting,
`held September 20–22, 2000 in Hawaii, attended by 140 delegates from
`numerous companies based on his personal knowledge of the business
`practices of 3GPP. Id. ¶ 25.
`In connection with its Reply, Petitioner introduces a supplemental
`declaration from Mr. Rodermund (Ex. 1033) along with several documents
`in support of Mr. Rodermund’s supplemental declaration. Pet. Reply 6.
`Patent Owner argues that we should not consider Petitioner’s improper new
`arguments and new evidence. Sur-reply 2, 6. We disagree that Petitioner’s
`arguments and supporting evidence in connection with its Reply are
`improper.
`Petitioners are not prohibited from relying on new evidence and
`arguments in a reply, if the evidence and arguments are responsive to
`arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent
`Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated
`Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations,
`LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential)
`(“For example, if the patent owner challenges a reference’s status as a
`printed publication, a petitioner may submit a supporting declaration with its
`reply to further support its argument that a reference qualifies as a printed
`publication”). Here, we determine that Petitioner’s arguments and new
`evidence in connection with the Petitioner Reply are responsive to Patent
`Owner’s challenges to TR25.835’s status as a printed publication.
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`16
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`For instance, Patent Owner argues that Mr. Rodermund’s testimony is
`not reliable because he failed to provide documentary evidence that email
`notifications were provided of the actual upload of TR25.835 to the 3GPP
`server. PO Resp. 28. In response, Petitioner provides a supplemental
`declaration from Mr. Rodermund who testifies that an email (Exhibit 1022)
`was sent on September 15, 2000 by the RAN WG2 secretary to around 1000
`persons subscribed to the 3GPP RAN2 email exploder list, announcing the
`upload of TR25.835 to the 3GPP ftp server. Ex. 1033 ¶ 22; Ex. 1022; see
`also Pet. Reply 8. We disagree with Patent Owner that the content of
`Mr. Rodermund’s supplemental declaration should have been presented in
`connection with the Petition, because, as we state above, it was not
`necessary for Mr. Rodermund to provide actual proof of an email alerting
`those of ordinary skill in the art that TR25.835 had been uploaded to the
`3GPP ftp server. Moreover, Patent Owner could have cross-examined Mr.
`Rodermund, but did not do so. Nor did Patent Owner request to submit new
`testimony in support of its Sur-reply.
`Next, Patent Owner makes several evidentiary objections to
`Petitioner’s Reply exhibits. Sur-reply 2, 12–13. A party wishing to
`challenge the admissibility of evidence “must file any objections within five
`business days of service of evidence to which the objection is directed.”
`Consolidated Practice Guide 78–79 (citing 37 C.F.R. § 42.64(b)(1)). Patent
`Owner, however, did not file any objections within five business days of
`service of the Reply evidence. Tr. 19:25–20:7. Rather, Patent Owner, for
`the first time, presents its evidentiary objections in connection with its Sur-
`reply. By disregarding the rules, Patent Owner prevented Petitioner from
`serving supplemental evidence, and filing an opposition to a motion to
`exclude as permitted. 37 C.F.R. §§ 42.64(b)(2), 42.64(c); Paper 8, 8–9.
`
`17
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`Patent Owner’s evidentiary objections, therefore, are not timely and we do
`not, nor need not, consider them.
`In its Reply, Petitioner contends that “anyone could easily subscribe
`to and access the 3GPP email listservs (aka ‘exploders’) relating to the
`technology discussed in TR25.835” and that the relevant working group
`connected to such technology was “TSG RAN Working Group 2.” Pet.
`Reply 7 (citing Ex. 1001, 1:10–15; Ex. 1006, 1; Ex. 1033 ¶¶ 6–12, 15–19).
`Petitioner further contends, and we agree, that a person having ordinary skill
`in the art would have known that the relevant listservs were “3GPP-
`_TSG_RAN_WG2 and 3GPP_TSG_RAN.” Id. (citing Ex. 1033 ¶¶ 11–13).
`We give substantial weight to Mr. Rodermund’s testimony that “the 3GPP-
`_TSG_RAN_WG2 email exploder had over 1000 subscribers, and the
`3GPP_TSG_RAN email exploder had over 800 subscribers who all received
`such emails.” Ex. 1033 ¶ 14 (citing Exs. 1015, 1016, showing ETSI’s email
`list archives from August 2000 and October 2000). Petitioner further
`contends, and we agree, that a person having ordinary skill in the art would
`have easily located TR25.835 because in September, 2000, 3GPP emailed
`interested individuals (1) an attached copy of TR25.835; (2) notice that
`TR25.835 had been placed on the 3GPP ftp server; and (3) notice that
`documents for the RAN#9 plenary meeting were located on the ftp server.
`Id. at 8 (citing Exs. 1020–1023, 1025; Ex. 1033 ¶¶ 21–22).
`Pat
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