Evolved Wireless LLC

Patent Trials and Appeals Board

Nov 29, 2021

IPR2021-00950 (P.T.A.B. Nov. 29, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: November 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

EVOLVED WIRELESS LLC,
Patent Owner.
____________

IPR2021-00950
Patent RE48,326 E
____________

Before PATRICK M. BOUCHER, TERRENCE W. McMILLIN, and
JASON M. REPKO, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

Samsung Electronics Co., Ltd., and Samsung Electronics America,
Inc. (collectively, “Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–319 to institute an inter partes review of claims 14–16 and 18–20 of
U.S. Patent No. RE48,326 E (Ex. 1001, “the ’326 patent”). Paper 2 (“Pet.”).
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Evolved Wireless LLC (“Patent Owner”) filed a Preliminary Response.
Paper 8 (“Prelim. Resp.”).
We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. For
the reasons set forth below, we exercise our discretion under 35 U.S.C.
§ 314(a) and decline to institute an inter partes review.1

I. BACKGROUND
A. The ’326 Patent
1. Overview
The ’326 patent relates “to a method of transmitting and receiving
radio connection information that allows a terminal to access a target base
station . . . in a faster and more efficient manner while performing a
handover for the terminal to a cell of the target base station.” Ex. 1001,
1:36–42. In particular, the ’326 patent describes a sequence of transmissions
among a mobile terminal (such as a cellular telephone, designated “UE”), a
source base station (designated “Source eNB”), and a target base station
(designated “Target eNB”) that avoids inefficient “collisions” that may
occur when two mobile terminals simultaneously attempt to use the same
random access channel to effect handovers. Id. at 5:18–27.

1 Petitioner did not request authorization to file a Reply to address Patent
Owner’s discretionary-denial arguments.
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Figure 9 of the ’326 patent is reproduced below.

Figure 9 illustrates communications used in effecting the handover of mobile
terminal UE from a cell of source base station eNB 12 to a cell of target base
station eNB 14. Id. at 6:26–28. Mobile terminal 10 transmits measurement
report S10 to source base station eNB 12, which determines at S11 whether
to perform a handover for the mobile terminal to a different cell. Id. at 6:29–
44. If a handover is to be performed, source base station eNB 12 transmits
handover request S12 to target base station eNB 14 and receives handover
confirmation S13. Id. at 6:60–63. The confirmation may include
information “necessary in the course of connecting” the mobile terminal to
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the target cell, such as information used in a random access channel
(“RACH”) for performing a radio-access procedure, which may include “a
preamble which is selected from signatures contained in” the mobile
terminal. Id. at 6:55–63.
Handover command S14 is accordingly transmitted from source base
station eNB 12 to mobile terminal 10, and “may include necessary
information which comes from the target eNB” as well as “information of
the signature and the preamble which is to be used in the access procedure to
the target eNB.” Id. at 7:20–28. Mobile terminal 10 uses the RACH to
establish radio communication with target base station eNB 14 with signal
S15. Id. at 7:29–50.
Because target eNB 14 already allocates a signature used in the
preamble to mobile terminal 10, the mobile terminal can be identified by the
preamble, and target base station eNB 14 may allocate uplink radio
resources to the mobile terminal as indicated by scheduling grant S16. Id. at
7:51–57. That is, to avoid channel collision with other mobile terminals,
mobile terminal 10 “should not transmit a preamble that is selected from the
signatures used in the RACH during the handover; but rather, the [mobile
terminal] may transmit a preamble of a previously defined signature through
the handover confirm message from the target [base station].” Id. 7:4–7:8.
Completion of the handover from source base station eNB 14 to target base
station eNB 16 based on the scheduling grant is confirmed with handover-
complete message S17. Id. 7:63–8:8.

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2. Prosecution History
The ’326 patent is a broadening reissue of U.S. Patent No. 8,412,201
B2 (“the ’201 patent”). Ex. 1001, code (64). In allowing the reissued
claims, the Examiner made the following statement of reasons for
allowance:
No art could be found such that disclosed the receiving of
terminal-specific preamble information from a source base
station that came from the target base station and would be used
for connecting with the target base station.

Ex. 1002, 41.

3. Illustrative Claim
Independent claim 18 is illustrative of the challenged claims and is
reproduced below, omitting italicization that identifies the claim as new on
reissue.
18. A mobile terminal to transmit uplink data in a wireless
communication system, the mobile terminal comprising:
a transceiver configured to transmit the uplink data;
a memory configured to store the uplink data; and
a processor cooperating with the transceiver and the
memory, the processor configured to:
receive a handover command message from a
source base station which has determined that a handover
should occur to a target base station;
wherein the handover command message includes
information related to a preamble for the terminal
previously defined in a handover confirm message sent
from the target base station to the source base station;
in response to the handover command message,
perform, by the terminal, a random access procedure with
the target base station to connect with the target base
station using the information related to the preamble; and
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transmit a handover complete message to the target
base station.

Ex. 1001, 12:16–36.
B. Evidence
Petitioner relies on the following references. Pet. 3.
(1) Intra-LTE Handover Operation, 3GPP draft R2-061135 (Ex. 1003;
“Nokia”)2; and
(2) Chinese Patent Publication CN 159602A, published March 16,
2005 (Ex. 1004, “Hu”)3.
In addition, Petitioner relies on a Declaration by Paul S. Min, Ph.D.
Ex. 1037.

C. Asserted Ground of Unpatentability
Petitioner challenges claims 14–16 and 18–20 on the following
ground. Pet. 3.
Claim(s)
Challenged
35 U.S.C. §4 References
14–16, 18–20 103 Nokia, Hu

2 Petitioner contends that Nokia was published on or before May 3, 2006.
Pet. 3, 25–26.
3 Hu includes an English translation, with a certification by the translator
that it is “accurate and complete.” See Ex. 1004, 14.
4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
the ’326 patent is a reissue of the ’201 patent, which was filed before March
16, 2013 (the effective date of the relevant amendment), the pre-AIA
versions of those provisions apply. See MPEP 1440.II. (“The claims in a
reissue application are treated as if they were presented in the patent being
reissued for purposes of evaluating patentability over prior art, i.e., as if they
had the same effective filing date as the original patent.”)
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D. Real Parties in Interest
The parties identify only themselves as real parties in interest. Pet. 1;
Paper 7, 2.

E. Related Matters
Both parties identify the following matters as involving the ’326
patent: (1) Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., No.
2:21-cv-00033 (E.D. Tex.) (“the related Texas litigation”); and (2) In the
Matter of Certain LTE-Compliant Cellular Communication Devices, Inv.
No. 337-TA-1253 (ITC) (“the related ITC Investigation”). Pet. 1; Paper 7,
2.
In addition, Petitioner identifies Evolved Wireless, LLC v. Samsung
Electronics Co. Ltd., No. 15-cv-545 (D. Del.), and Patent Owner identifies
Evolved Wireless, LLC v. Motorola Mobility LLC, No. 1:21-cv-00567 (N.D.
Ill.) as involving patents with related subject matter. Pet. 1–2; Paper 7, 2.
Related matters before the Board include IPR2016-01185,
IPR2016-01347, IPR2021-00943, and IPR2021-00949. See Pet. 2; Paper 7,
2.

II. DENIAL UNDER 35 U.S.C. § 314(a)
A. Background
As noted above, the ’326 patent is the subject of two parallel
proceedings, namely the related Texas litigation and the related ITC
Investigation. Supra, § I.F. Patent Owner asks that we exercise our
discretion to deny the Petition based on the state of the related ITC
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Investigation, but does not make a similar request based on the related Texas
litigation. Prelim. Resp. 2–3. In particular, Patent Owner maintains that
“[t]he ITC will benefit in its decision-making process from a trial with live
witnesses and extensive briefing on the issues overlapping with
[Petitioner]’s Petition, all of which will occur more than a month before []
Patent Owner[’s] Response is due.” Id. at 2. It is undisputed that, about ten
months ago, on February 1, 2021, Patent Owner filed its complaint before
the ITC against Petitioner (and Motorola), asserting infringement of the ’326
patent. See id. at 4; Ex. 1036.

B. Analysis
Institution of an inter partes review is discretionary. See 35 U.S.C.
§ 314(a) (2018) (stating “[t]he Director may not authorize an inter partes
review to be instituted unless the Director determines that the information
presented in the petition . . . shows that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition”) (emphasis added); Harmonic Inc. v. Avid Tech.,
Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
never compelled, to institute an IPR proceeding.”). The advanced state of
either a parallel district court action or a parallel ITC investigation may
warrant exercising discretion on behalf of the Director to deny a petition for
inter partes review. See NHK Spring Co. v. Intri-Plex Techs., Inc.,
IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential)
(“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6, 8
(PTAB March 20, 2020) (precedential) (“Fintiv”); Patent Trial and Appeal
Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at
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https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice
Guide”).
In evaluating whether to do so, we consider the following factors in
assessing “whether efficiency, fairness, and the merits support the exercise
of authority to deny institution in view of an earlier trial date in the parallel
proceeding”:
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the
parties;
4. overlap between issues raised in the petition and in the
parallel proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Fintiv at 5–6. In evaluating these factors, we “take[] a holistic view of
whether efficiency and integrity of the system are best served by denying or
instituting review.” Id. at 6.
Relevant to our consideration of these factors is a scheduling order
entered by the ITC on April 2, 2021, that sets forth the following deadlines:
(1) “Fact discovery cut-off and completion,” October 12, 2021; (2) “Expert
discovery cutoff and completion,” December 3, 2021; (3) “Hearing,”
January 31 – February 4, 2022; (4) “Initial Determination,” May 6, 2022; (5)
“Target date for completion of investigation,” September 8, 2022. Ex. 2002.
In light of this schedule, the Presidential Review period of the related ITC
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Investigation is expected to expire on November 7, 2022. 19 U.S.C.
§ 1337(j) (2018); see Pet. 63 (Petitioner agreeing with such date); Prelim.
Resp. 4 (Patent Owner agreeing with such date).

1. Possibility of Stay
A stay of a related proceeding pending resolution of the PTAB trial
“allays concerns about inefficiency and duplication of efforts.” Fintiv at 6.
Although the related Texas litigation has been stayed, Petitioner concedes
that “[w]ith respect to the [related ITC Investigation], as of this time, no stay
pending IPR has been requested.” Pet. 58. Petitioner represents that it
“intends to file a motion to stay pending IPR if the Petition is instituted,”
and Patent Owner represents that it “will not request a stay itself.” Id.;
Prelim. Resp. 7. Patent Owner supports its position that a stay of the related
ITC Investigation is unlikely by citing a number of cases to show that “the
ITC routinely denies such requests” and by noting that, at the estimated time
of this Decision, the related ITC Investigation will be at such an advanced
state that “the Parties will have filed motions for summary determination,
will be exchanging pretrial materials, and will be preparing for trial in the
Investigation.” Prelim. Resp. 7–8.
Petitioner nevertheless contends that “this factor is at least neutral,”
and points to “the lack of preclusive effect of an ITC determination” in other
forums. Pet. 58–59. That is, Petitioner “respectfully submits that the
[related ITC Investigation] should not be viewed as per se weighing in favor
of exercising § 314(a) discretion because the ITC lacks the authority to issue
a binding ruling on invalidity.” Id. at 58. Although Petitioner cites two
routine Board cases that considered this, id., Patent Owner correctly
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observes that both “were decided before the precedential Fintiv decisions”
that bind us. Prelim. Resp. 8. Indeed, Fintiv expressly addressed this issue
by emphasizing that “even though the Office and the district court would not
be bound by the ITC’s decision, an earlier ITC trial date may favor
exercising authority to deny institution under NHK if the ITC is going to
decide the same or substantially similar issues to those presented in the
petition.” Fintiv at 8.
In light of these considerations, we determine that this factor weighs
in favor of a denial of the Petition.

2. Schedules
According to Fintiv, “[i]f the court’s trial date is earlier than the
projected statutory deadline, the Board generally has weighed this fact in
favor of exercising authority to deny institution.” Fintiv at 9. In addressing
this factor, Patent Owner compares the September 8, 2022, anticipated date
for the ITC’s Final Determination with the statutory deadline for a final
written decision in this proceeding. Prelim. Resp. 9 (citing Ex. 1035); see
also Pet. 60 (citing same and agreeing with the anticipated date for the ITC’s
Final Determination). In contrast, Petitioner appears to compare the date for
the ITC’s Initial Determination with the date of our Institution Decision in
this proceeding. See Pet. 60 (“Notably, the Board has declined to exercise
its § 314(a) discretion even where the Board’s institution decision was due
nearly two months after the ITC’s [Initial Determination] in a parallel ITC
investigation”).
We agree with Patent Owner that Petitioner’s measure for assessing
this factor is inappropriate. Prelim. Resp. 10 (“Samsung then changes the
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relevant variables in the conversation, focusing not on (a) the trial date and
(b) the statutory deadline for Final Written Decision, but instead on (i) the
ITC’s Initial Determination date and completion of Investigation and (ii) the
Institution Decision date.”); see, e.g., Philip Morris Prods., S.A. v. RAI
Strategic Holdings, Inc., IPR2020-00919, Paper 9 at 9 (PTAB Nov. 16,
2020) (Fintiv factor 2 weighs in favor of exercising discretion to deny
institution where “the ITC is likely to reach a final determination ahead of
the date of our final written decision”); Canadian Solar Inc. v. The Solaria
Corp., IPR2021-00095, Paper 12 at 9–10 (PTAB May 26, 2021) (evaluating
Fintiv factor 2 by comparing anticipated date of ITC final determination
with anticipated date of Board’s final written decision).
Petitioner cites four cases to support its position that the Board should
not exercise its discretion under § 314(a) despite the relative schedules of the
two proceedings. Pet. 60–61 (citing Wirtgen Am., Inc. v. Caterpillar Paving
Prods. Inc., IPR2018-01201, Paper 13 at 10–12 (PTAB Jan. 8, 2019); Intel
Corp. v. Tela Innovations, Inc., IPR2019-01636, Paper 16 at 21–24 (PTAB
Mar. 31, 2020); Renesas Elecs. Corp. v. Broadcom Corp., IPR2019-01040,
Paper 9 at 7–8 (PTAB Nov. 13, 2019); MED-EL Elektromedizinische Geräte
GmbH v. Sonova AG, IPR2020-00176, Paper 13 at 15 (PTAB June 3,
2020)). We also agree with Patent Owner that Petitioner’s citation of these
cases is inapposite because “[t]hree of these cases—Wirtgen, Intel, and
Renesas—were decided before the precedential Fintiv v. Apple decisions
that set forth the proper inquiry under § 314(a)” and “[t]he fourth—
MED-EL—involved District Court litigation, not an ITC Investigation.” See
Prelim. Resp. 11–12 (citing Pet. 60–61).
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The projected target date for the Final Determination in the related
ITC Investigation is about two or three months ahead of the statutory
deadline for a final written decision in this proceeding.5 We accordingly
determine that this factor weighs in favor of exercising discretion to deny
institution of an inter partes review.

3. Investment in Parallel Proceeding
“[I]f, at the time of the institution decision, the district court has
issued substantive orders related to the patent at issue in the petition, this
fact favors denial” of the Petition. Fintiv at 9–10. The Petition’s assertion
that, in the related ITC Investigation, “fact discovery is just beginning, no
depositions have taken place, [and] the Markman hearing is not scheduled
until September 1, 2021,” was made about half a year ago, when the Petition
was filed on May 16, 2021. See Pet. 61 (citing Ex. 1034). Since then,
according to Patent Owner’s more recent statement, a “significant
investment in time and money [] has taken place and [] will take place in the
ITC by the time an Institution Decision is due.” Prelim. Resp. 13. Patent
Owner specifically represents that, as of the September 7, 2021, date of its
Preliminary Response, “the Parties have exchanged and/or answered 138
Interrogatories, 171 Requests for Production, 79 Requests for Admission,
served 30(b)(6) Deposition Notices comprising 64 topics, and exchanged
over 1.3 million pages of documents (not counting source code).” Id. at 5

5 A final written decision would be due one year after institution of an inter
partes review. 35 U.S.C. § 316(a)(11). Patent Owner’s last-possible-day
estimate of “December 7, 2022,” Prelim. Resp. 10, proves to be more
accurate than Petitioner’s optimistic estimate of “October 2022,” Pet. 60.
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(footnote omitted). Still further investment in the related ITC Investigation
has undoubtedly taken place since that time, particularly in light of the
deadlines for fact and expert discovery set forth in the ITC scheduling order,
discussed above. See Ex. 2002.
The investment in the related ITC Investigation by the parties is thus
clearly substantial. We accordingly determine that this factor weighs in
favor of exercising discretion to deny institution of an inter partes review.

4. Overlap of Issues
“[I]f the petition includes the same or substantially the same claims,
grounds, arguments, and evidence as presented in the parallel proceeding,
this fact has favored denial.” Fintiv at 12. Petitioner makes two points with
respect to this factor. First, “Petitioner stipulates that, if this IPR is
instituted, Petitioner will not assert in the ITC case any grounds of invalidity
based in any way upon the primary reference relied upon herein, Nokia
(including, but not limited to, any and all grounds advanced in this
petition).” Pet. 62. Second, Petitioner observes that, in addition to claims
18–20, which are asserted at the ITC, the Petition challenges claims 14–16,
which are not asserted at the ITC. Id. at 62–63.
With respect to Petitioner’s first point, Patent Owner counters that the
stipulation is “illusory.” Prelim. Resp. 14. This is so, Patent Owner
contends, because the related ITC Investigation also involves another
respondent, Motorola, who would not be subject to Petitioner’s stipulation.
Id. “In fact, Motorola and [Petitioner] jointly served their invalidity
contentions in the [related ITC] Investigation, identifying Nokia as an
alleged anticipation and obviousness reference.” Id. (citing Ex. 2003, 5, 9;
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Ex. 2004). Patent Owner observes that, if Petitioner withdrew its reliance on
the Nokia reference in the related ITC Investigation, Petitioner “would still
benefit from any findings made in Motorola’s favor related to that
reference.” Id. at 14–15. Although we recognize Patent Owner’s point, we
credit Petitioner’s proffered stipulation, which is somewhat broader than the
stipulation credited in the Board’s informative decision in Sand Revolution
II, LLC v. Continental Intermodal Grp. – Trucking LLC, IPR2019-01393,
Paper 24 at 11–12 (June 16, 2020) (informative) (petitioner stipulating not to
“pursue the same grounds in the district court litigation”).
With respect to Petitioner’s second point, although there are
differences in the claims at issue in this proceeding and the related ITC
Investigation, the overlap is nonetheless significant. Independent claim 14
of the ’326 patent is a method claim that substantially recites what is
implemented by the “processor” of independent claim 14. Compare
Ex. 1001, 11:37–12:2 with id. at 12:16–36. And, but for their dependence
from independent claim 14 instead of independent claim 18, claims 15 and
16 respectively recite substantially the same limitations as claims 19 and 20,
both of which are directly at issue in the related ITC Investigation. Compare
id. at 12:3–10 with id. at 12:40–49. Thus, there are no significant issues
presented by the Petition that are not also under consideration in the related
ITC Investigation. Fintiv acknowledges that “weighing the degree of
overlap is highly fact dependent” and that “it may still be inefficient to
proceed because the [other tribunal] may resolve validity of enough
overlapping claims to resolve key issues in the petition.” Fintiv at 13.
We accordingly determine that this factor weighs in favor of
exercising discretion to deny institution of an inter partes review.
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5. Overlap of Parties
All parties to this proceeding are included in the related ITC
Investigation. The Board determined in Sand Revolution that “[a]lthough it
is far from an unusual circumstance that a petitioner in inter partes review
and a defendant in a parallel district court proceeding are the same, or where
a district court is scheduled to go to trial before the Board’s final decision
would be due in a related inter partes review, this factor weighs in favor of
discretionary denial.” Sand Revolution, Paper 24 at 12–13; see also Fintiv at
13–14. In denying institution in the Fintiv proceeding, the Board determined
that “[b]ecause the petitioner and the defendant in the parallel proceeding are
the same party, this factor weighs in favor of discretionary denial.” Apple
Inc. v. Fintiv Inc., IPR2020-00019, Paper 15 at 15 (PTAB May 13, 2020).6
Accordingly, this factor weighs in favor of exercising our discretion to
deny institution.

6. Other Circumstances
The final factor takes into account any other relevant circumstances,
including the merits. “For example, if the merits of a ground raised in the
petition seem particularly strong on the preliminary record, this fact has
favored institution.” Fintiv at 14–15. This is not such a case. Rather, our

6 We acknowledge Petitioner’s observation that one APJ has questioned the
interpretation of this factor. Pet. 66 (citing Cisco Systems, Inc. v. Ramot at
Tel Aviv University Ltd., IPR2020-00122, Paper 15 at 10 (PTAB May 15,
2020) (Crumbley, APJ, dissenting)). Even were we to determine that this
factor is neutral under the alternative interpretation of this factor, we would
still reach the same ultimate conclusion to exercise discretion to deny the
Petition.
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assessment of the merits indicates that this case instead presents “a closer
call, [which] has favored denying institution when other factors favoring
denial are present.” Id. at 15.
For its sole challenge, Petitioner relies on Nokia (which Petitioner
concedes was cited to the Office during prosecution, Pet. 24) for “nearly all
the limitations of the ’326 patent claims.” Pet. 31. Figure 1 of Nokia is
reproduced below.

Figure 1 presents a “basic handover scenario.” Ex. 1003, 1. At step 1, the
UE is triggered to send a measurement report. Id. at 2. The source eNB
makes a decision based on the measurement report at step 2 and passes
relevant information to the target eNB at step 2. Id. The target eNB
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responds by providing the source eNB with updated information and other
parameters at step 3. Id. At step 4, the UE receives a handover command
with necessary parameters. Id. The UE synchronizes with the target eNB at
step 5 and acquires a timing advance either (1) by a “normal one or two
phase RACH procedure” or (2) “by sending access burst in a non-contention
based manner.” Id. The network responds with a UL allocation and timing
advance that the UE uses at step 6 to send a handover confirmation to the
target eNB. Id. at 3. The target eNB informs the source eNB at step 7 that
the handover was successful, with the UE location information being
updated at step 8. Id.
Petitioner contends that Nokia discloses, “in the context of the
disclosed handover operations, performing a contention free . . . RACH
procedure (step 5 [of Nokia’s Figure 1]), wherein the identifier information
necessary for the UE to communicate with the target base station during the
RACH procedure was previously transmitted in a message from the source
base station to the UE (e.g., Handover Command, Step 4).” Pet. 31 (citing
Ex. 1037 ¶ 92). Petitioner motivates its reasoning for effecting a
combination of Nokia with Hu by contending that a person of skill in the art
“would recognize that the specific implementation of such a conventional,
contention free RACH procedure as referenced in Nokia could be
implemented using” a variety of known methods. Id. at 33. Such a person
“would also have recognized,” Petitioner further contends, “that using
conventional RACH procedures wherein each UE is assigned and uses its
own different preamble would make the handover process quicker and more
efficient by reducing contention between the mobile station and the other
mobile stations on the RACH.” Id. Petitioner relies on such features to
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argue that “Hu discloses the full implementation level details of how such a
conventional, contention free RACH procedure using allocated resources in
the form of a dedicated code resource (i.e., a dedicated preamble) is
performed.” Id.
Patent Owner disputes Petitioner’s reading of Nokia, particularly that
it discloses a contention-free RACH procedure. See Prelim. Resp. 36–43.
Patent Owner correctly observes that the timing alignment in step 5 of
Nokia’s Figure 1 “involves one of two different procedures: a ‘one or two
step RACH procedure’ OR a ‘Non contention based access burst.’” Id.
at 37. Patent Owner elaborates that, although Nokia teaches that the “UE
receives allocation(s)” that can be used in an access burst in the second of
these procedures, Nokia “does not even teach what an ‘access burst’ is or
how it would be used in a non-contention-based manner—and certainly does
not teach or suggest that the non-contention-based manner would involve a
RACH procedure.” Id. at 38. Patent Owner further supports its position
with “[o]ther contemporaneous submissions by Nokia [that] confirm this and
explain what Nokia meant by a contention-free access burst procedure,” as
well as LTE standards documents. Id. at 38–43 (citing Ex. 2009, 1–2; Ex.
2010 § 10.1; Ex. 2011 § 10.1.2.1; Ex. 2012 § 10.1.2.1). We have reviewed
this evidence, and find on this record that it provides some support for Patent
Owner’s position.
The merits of this case thus present the “closer call” that favors
exercising discretion to deny institution of an inter partes review under
Fintiv.

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7. Conclusion
As noted in Fintiv, we consider the above factors as part of “a holistic
view of whether efficiency and integrity of the system are best served by
denying or instituting review.” Fintiv at 6. In this instance, most of the
factors we consider weigh in favor of exercising discretion to deny
institution of an inter partes review, with Fintiv factor 4 weighing only
somwhat against. We accordingly exercise that discretion and deny the
Petition.

III. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied and no trial is instituted.

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For PETITIONER:
Kevin Johnson
Todd Briggs
kevinjohnson@quinnemanuel.com
toddbriggs@quinnemanuel.com

For PATENT OWNER:

Andrew Wright
Brent Bumgardner
Barry Bumgardner
andrew@nbafirm.com
bbumgardner@nbclaw.net
barry@nelbum.com