Microsoft Corporationv.IPR LICENSING, INC.

Patent Trial and Appeal Board

Sep 14, 2015

12615098 (P.T.A.B. Sep. 14, 2015)

Trials@uspto.gov Paper 48
571-272-7822 Entered: September 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE CORPORATION and ZTE (USA) INC.,
and
MICROSOFT CORPORATION,
Petitioner,

v.

IPR LICENSING, INC.,
Patent Owner.
____________

Case IPR2014-00525
1

Patent 8,380,244 B2
____________

Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1
Case IPR2015-00074 has been joined with this proceeding.
IPR2014-00525
Patent 8,380,244 B2

2
I. INTRODUCTION
ZTE Corporation and ZTE (USA) Inc. (collectively, “Petitioner”)
filed a corrected Petition requesting inter partes review of claims 1–8, 14–
16, 19–29, 36–38, and 41–44 of U.S. Patent No. 8,380,244 B2 (Ex. 1001,
“the ’244 patent”). Paper 9 (“Pet.”). IPR Licensing, Inc. (“Patent Owner”)
filed a Patent Owner Preliminary Response (Paper 12 (“Prelim. Resp.”)).
Pursuant to 35 U.S.C. § 324, the Board instituted trial as to claims 1–8, 14–
16, 19–29, 36–38, and 41–44 on one ground of unpatentability, 35 U.S.C.
§ 103(a). Paper 19 (“Dec.”).
Subsequent to institution, we granted the Motion for Joinder filed by
Microsoft Corporation, joining Case IPR2015-00074 with the instant trial.
2

Paper 31. Patent Owner filed a Patent Owner Response (Paper 25 (“PO
Resp.”)) and Petitioner filed a Reply (Paper 38 (“Pet.Reply”)). Oral hearing
was held on May 21, 2015, and a transcript of the hearing is in the record.
Paper 47 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has proven, by a
preponderance of the evidence, that claims 1–8, 14–16, 19–29, 36–38, and
41–44 of the ’244 patent are unpatentable.

A. Related Proceedings
The parties represent that the ’244 patent is the subject of the
following judicial proceedings: (1) InterDigital Commc’ns Inc. v. ZTE

2
In this Decision, we refer to ZTE Corporation and ZTE (USA) (the original
Petitioner) and Microsoft Corporation (the joined Petitioner) collectively as
“Petitioner.”
IPR2014-00525
Patent 8,380,244 B2

3
Corp., Case No. 13-cv-00009-RGA (D. Del.), filed January 2, 2013; (2)
InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-cv-00010-RGA (D.
Del.), filed January 2, 2013; and (3) InterDigital Commc’ns Inc. v. Samsung
Elec. Co. Ltd., Case No. 13-cv-00011-RGA (D. Del.), filed January 2, 2013.
Pet. 2; Paper 6, 2.

B. The ’244 Patent (Ex. 1001)
The ’244 patent is directed to a system and method of short-range,
high-speed, and long-range, lower-speed, data communications using a dual-
mode unit. Ex. 1001, Abstract. The wireless communication path is
selected based on a request to establish a communication session between
first and second sites, by first determining whether the first wireless digital
communication path is available. Id. at 3:19–22. The first wireless
communication path is a wireless LAN connection, and the second wireless
communication path is a cellular connection. Id. at 3:23–28. The ’244
patent describes several embodiments for indicating availability of the first
wireless communication mode. Id. at 3:44–54. For example, if the first
wireless communication path is unavailable, the communication session is
established using the second wireless communication path, and “the local
wireless transceiver is controlled to make it appear to the second wireless
digital communication path as though the bandwidth were continuously
available during the communication session, irrespective of any actual need
to transport data communication signals between said first and second sites.”
Id. at 3:60–4:1.
In another example, the second wireless digital communication path
“is provided by establishing a logical connection using a higher layer
IPR2014-00525
Patent 8,380,244 B2

4
protocol, such as a network layer protocol” from a subscriber unit to an
intended peer node. Id. at 4:5–11. The network layer logical connection “is
made through a wireless channel that provides a physical layer connection
between the portable computer node, through a base station, and the
intended peer node.” Id. at 4:11–14. The physical layer channel is released,
“while maintaining the appearance of a network layer connection to the
higher level protocols.” Id. at 4:16–18. The ’244 patent contemplates that
the physical links “are preferably known wireless communication air
interfaces using digital modulation techniques such as [the] Code Division
Multiple Access (CDMA) standard . . . . [O]ther wireless communication
protocols and other types of links 30 may also be used to advantage with the
invention.” Id. at 5:31–37.
This embodiment is illustrated in Figure 6, reproduced below:

Figure 6 is a block diagram illustrating the subscriber unit.
Specifically, the subscriber unit 101 connects to a computer 110 via a
computer interface 120, to transmit data over the Internet via a first
IPR2014-00525
Patent 8,380,244 B2

5
communication route or second communication route. Id. at 9:27–57. The
interface establishes a connection over the first, faster wireless
communication path 213, e.g., wireless local area network (WLAN), if
available, using a protocol such as IEEE 802.1. Id. at 3:23–27, 8:46–59,
9:40–42. If the WLAN connection is not available, the interface
automatically switches to a second, slower, wireless digital long-range
communication path, e.g., CDMA. Id. at 3:29–50, 9:15–57. When data are
being transmitted over the second communication path, the CDMA protocol
converter initiates a spoofing function, so that it appears to the terminal
equipment that the subscriber unit is connected to the public network at all
times. Id. at 9:58–63. The bandwidth management function allocates and
deallocates CDMA radio channels, and is also responsible for dynamic
management of bandwidth allocated to a session by “dynamically allocating
sub-portions of the CDMA radio channels 160” using a wireless
communication protocol. Id. at 9:66–10:3. The ’244 patent explains how in
the long range, lower data rate mode:
wireless bandwidth is allocated only when there is actual data
present from the terminal equipment to the CDMA transceiver
. . . . [W]hen data is not being presented upon the terminal
equipment to the network equipment, the bandwidth
management function 134 deallocates initially assigned radio
channel bandwidth 160 and makes it available for another
transceiver and another subscriber unit 101.
Id. at 10:34–43.

C. Illustrative Claim
Of the challenged claims, claims 1 and 23 are independent. Claims 2–
8, 14–16, 19–22 depend directly or indirectly from claim 1; and claims 24–
IPR2014-00525
Patent 8,380,244 B2

6
29, 36–38, and 41–44 depend directly or indirectly from claim 23. Claim 1
follows:
1. A subscriber unit comprising:
a cellular transceiver configured to communicate with a
cellular wireless network via a plurality of assigned physical
channels;
an IEEE 802.11 transceiver configured to communicate
with an IEEE 802.11 wireless local area network; and
a processor configured to maintain a communication
session with the cellular wireless network in an absence of the
plurality of assigned physical channels while the IEEE 802.11
transceiver communicates packet data with the IEEE 802.11
wireless local area network.

Ex. 1001, 11:5–16.

D. Prior Art
Petitioner relies on the following prior art references (Pet. 4–6):
References Patents/Printed
Publications
Date Exhibit
Jawanda U.S. Patent No. 6,243,581 B1

June 5, 2001
(filed Dec. 11, 1998)
1003
GPRS
Standards
General Packet Radio Service
Standards
3

1005
GSM 02.60 v. 6.1.1 R97
GSM 03.02 v. 6.1.0 R97
GSM 03.60 v. 6.1.1 R97
GSM 04.07 v. 6.1.0 R97
GSM 04.08 v. 6.1.1 R97
GSM 04.60 v. 6.1.0 R97
GSM 04.64 v. 6.1.0 R97
Nov. 1998
July 1998
Aug. 1998
July 1998
Aug. 1998
Aug. 1998
July 1998
1005.01
1005.02
1005.03
1005.04
1005.05
1005.06
1005.07

3
GPRS Standards refer to ten technical specifications for the General Packet
Radio Service (“GPRS”) on Global System for Mobile Communications
(“GSM”) networks allegedly published by the European
Telecommunications Standards Institute on the dates indicated. Pet. 6.
IPR2014-00525
Patent 8,380,244 B2

7
GSM 04.65 v. 6.1.0 R97
GSM 05.01 v. 6.1.1 R97
GSM 03.64 v. 6.1.0 R97
July 1998
July 1998
Oct. 1998
1005.08
1005.09
1005.10
IEEE
802.11
Standard
Part 11: Wireless LAN
Medium Access Control
(MAC) and Physical Layer
(PHY) Specifications, IEEE
802.11 Standard, Institute of
Electrical and Electronics
Engineers.
Aug. 20, 1999 1019

E. Instituted Grounds
We instituted the instant trial based on the following ground of
unpatentability. Dec. 22.
References Basis Claims Challenged
Jawanda, the GPRS Standard
and IEEE 802.11 Standard
§ 103(a) 1–8, 14–16, 19–29, 36–38,
and 41–44

III. ANALYSIS
A. Level of Ordinary Skill in the Art
Citing the testimony of its declarant, Dr. Bims, Petitioner asserts that
the person of ordinary skill in the art “would have a master’s degree or the
equivalent in electrical engineering and three or more years of work
experience relating to data communications over wireless networks.”
Pet. 18–19 (citing Ex. 1002 ¶ 90). Notwithstanding Petitioner’s assertions
regarding the level of ordinary skill in the art, we find that the level of
ordinary skill in the art is reflected by the prior art of record. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57
IPR2014-00525
Patent 8,380,244 B2

8
F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
1978).
Based on the stated qualifications of Dr. Harry Bims (Ex. 1002 ¶¶ 10–
16) and his Curriculum Vitae (Id. at Appendix A), we find Petitioner’s
Declarant is qualified to testify in this case. Likewise, based on the stated
qualifications of Dr. Wayne E. Stark (Ex. 2005 ¶¶ 7–13) and his Curriculum
Vitae (Id. at Appendix 1), we find Patent Owner’s Declarant is qualified to
testify in this case.

B. Claim Interpretation
In an inter partes review, the Board interprets a claim term in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which it appears. 37 C.F.R.
§ 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
1278–79 (Fed. Cir. 2015). (“Congress implicitly approved the broadest
reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation.”).
Under the broadest reasonable interpretation standard, claim terms
generally are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An inventor may rebut that presumption by providing a
definition of the term in the specification with “reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). In the absence of such a definition, limitations are not to be
IPR2014-00525
Patent 8,380,244 B2

9
read from the specification into the claims. In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
Petitioner proposes the same constructions for the following claim
terms as in the related district court proceeding:
Claim Term Proposed Construction
plurality of assigned physical
channels
plurality of physical channels
available for the subscriber unit to
select for use
release make no longer assigned
allocate select for use
deallocate select to stop using
maintain a communication
session with the cellular
wireless network in an absence
of the plurality of assigned
physical channels
maintain a logical connection with
the cellular wireless network when
none of the plurality of physical
channels are in use by the
subscriber unit
Pet. 9–10.
Citing claims 1 and 15 by way of example, Petitioner contends that the terms
‘“allocate’ and ‘assign’ must have different meanings because the claims
require physical channels be both ‘assigned’ and ‘allocated.”’ Id. at 10.
Relying on the testimony of Dr. Bims, Petitioner asserts that “allocate” and
“deallocate” are opposite states that describe “whether or not the subscriber
unit has selected to use or to stop using an assigned channel” (id. (citing Ex.
1002 ¶¶ 97–99)), because the “subscriber unit cannot use (allocate) a
resource (physical channel) until it has been made available (assigned) to the
subscriber unit” (id. at 11 (citing Ex. 1002 ¶ 97)). Petitioner also points to
relevant passages from the Specification of the ’244 patent to support its
claim construction. Id. at 11–12 (citing Ex. 1001, 7:24–29; 10:34–43; Ex.
1002 ¶ 99).)
IPR2014-00525
Patent 8,380,244 B2

10
In its Preliminary Response, Patent Owner disagreed generally with
Petitioner’s proposed claim constructions for each of these limitations,
arguing that “there is no need to address claim construction at this stage.”
Prelim. Resp. 11. Based on the evidence of record at that time, we saw “no
need to construe expressly any of the terms in the challenged claims at this
time.” Dec. 10. With the record fully developed, we again consider the
parties’ arguments. Presently, Patent Owner agrees with Petitioner that the
terms “assigned physical channels” and “maintain a communication session
with the cellular network in an absence of the plurality of assigned physical
channels” require construction. PO Resp. 13.
We concur with the parties that the terms “assigned physical
channels” and “maintain a communication session with the cellular network
in an absence of the plurality of assigned physical channels” require
construction. As to all other claim terms, we give these claim terms their
broadest reasonable construction in light of the specification. See 37 C.F.R.
§ 42.100(b).
1. “plurality of assigned physical channels”
Claim 1 recites the term “plurality of assigned physical channels.”
The parties seemingly agree that we should adopt the relevant claim
construction from the pending district court proceeding of “physical
channels available for the subscriber unit to select for use.” Pet. 9–16; PO
Resp. 13–15. Where the parties diverge is in the meaning of this
construction.
Patent Owner argues that the district court correctly limited the
construction of “assigned physical channels” to the embodiment shown in
Figure 6, because as the ’244 patent explains, “it is the subscriber unit, not
IPR2014-00525
Patent 8,380,244 B2

11
the network or base station, that selects the physical channels that the
subscriber unit uses to transfer data.” PO Resp. 14 (citing Ex. 2005 ¶ 56).
In particular, Patent Owner contends that the subscriber unit, and not the
network or base station, selects the physical channels the subscriber unit
uses to transfer data, and after the physical channels are made available, “a
subset of those available channels are selected for use.” Id. at 15 (citing
(Ex. 2009, 15). To support its proposed construction, Patent Owner directs
our attention to passages in the Specification describing Figure 6 as
representative of the “present invention.” Id. at 14 (citing Ex. 1001, 4:59–
60, 9:28–28). In addition, Patent Owner highlights passages from the
Specification explaining how the wireless bandwidth function is responsible
for allocating and deallocating CDMA radio channels (id. (citing Ex. 1001,
9:64–66), and “wireless bandwidth is allocated only when there is actual
data present” (id. (citing Ex. 1001, 10:33–36)).
Petitioner notes that the parties agree that the claims recite a two-step
process “in which channels are first made available (assigned) and then they
are selected for use (allocated).” Reply 3 (citing Pet. 9–13; Ex. 1002 ¶¶ 97–
98; Ex. 2005 ¶ 70; Ex. 1025, 31:14–16). Petitioner argues that the language
of claim 1 does not indicate “which entity must choose, or ‘assign’ the
channels (e.g., base station or subscriber unit) or how many of those
channels must be used (e.g., all, some, or none),” and instead recites “what
must happen in their absence.” Id. (citing Pet 11–12; Ex. 1001, 11:12–16).
We note that Claim 1 recites “a cellular transceiver configured to
communicate with a cellular wireless network via a plurality of assigned
physical channels.” Ex. 1001, 11:7–9. Dependent claim 15 further recites
that “the processor is further configured to allocate and deallocate at least
IPR2014-00525
Patent 8,380,244 B2

12
one of the plurality of assigned physical channels.” Id. at 12:1–3. This
additional limitation in claim 15 does not change the meaning of the claim
term “assigned physical channels,” rather it recites an additional function
regarding the capability of the processor to allocate or deallocate at least one
of the plurality of assigned physical channels. Unlike Petitioner, Patent
Owner does not propose specifically a construction for the term “allocate.”
Patent Owner’s argument is instructive, however, in our construction of the
term “assigned.” According to Patent Owner, “[t]he term ‘allocate’
therefore does not refer to merely making the physical channels available –
they are already available and the cell selects them ‘in order to support the
GPRS traffic’ – that is, as needed to transfer data.” PO Resp. 21 (citing Ex.
1005.10 §6.1.1). Thus, to the extent Petitioner argues that the terms “assign”
and “allocate” have different meanings, we agree.
Petitioner argues persuasively that the language of claim 1 does not
dictate which entity actually chooses or assigns the physical channels, and
instead recites what happens in the absence of physical channels. Reply 3.
As noted by Petitioner, “[b]y reciting the past participle ‘assigned,’ claim 1
clearly indicates that the channels have already been assigned, and it does
not matter whether the base station or the subscriber unit assigned them.”
Id. Based on the context of claim 1, Patent Owner’s proposed
interpretation, particularly the language suggesting that the subscriber unit
selects the assigned channels as well as the language suggesting that the
assigned channels are selected from a subset of available channels, is not the
broadest reasonable interpretation. We must be careful not to read
limitations from a particular embodiment appearing in the specification into
IPR2014-00525
Patent 8,380,244 B2

13
the claim, if the claim language is broader than that embodiment. Van
Geuns, 988 F.2d at 1184.
Patent Owner’s reliance on the particular embodiment described in
Figure 6 does not persuade us to read into the claim term “assigned physical
channels” the requirement that the subscriber unit selects the assigned
channels. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed.
Cir. 2000) (as a general rule, patent claims are not limited to the preferred
embodiment).
4
Nor are we persuaded by the passage in the Specification
cited by Patent Owner, to read a requirement into the claim that the assigned
channels are selected from a subset of available channels. “[D]isavowal
requires that ‘the specification [or prosecution history] make[] clear that the
invention does not include a particular feature.’” GE Lighting Solutions,
LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed
Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded
that the Specification makes clear that claim 1 is limited to only the
subscriber unit assigning the physical channels from a subset of channels.
Therefore, for purposes of this Final Written Decision, we construe, in light
of the Specification, the claim term “assigned physical channels” as
“physical channels made available for use by the subscriber unit.”

4
In contrast, we note that the district court issued a supplemental claim
construction opinion that altered its original construction of “assigned
physical channels,” finding that “the subscriber unit must select a subset of
channels for use. . . .” Ex. 2022, 9–12. Unlike the district court, we apply
the broadest reasonable interpretation standard in construing the claims. See
Cuozzo, 793 F.3d at 1278–79.
IPR2014-00525
Patent 8,380,244 B2

14
2. maintain a communication session with the cellular wireless
network in an absence of the plurality of assigned physical
channels
Claim 1 includes the limitation “maintain a communication session
with the cellular wireless network in an absence of the plurality of assigned
physical channels.” Ex. 1001, 11:12–14. Claim 23 includes a similar
limitation. Id. at 12:41–43. In its Petition, Petitioner argues that Patent
Owner’s proposed construction from the related district court proceeding,
i.e., maintain a logical connection with the cellular wireless network when
none of the plurality of physical channels are in use by the subscriber unit,
should be adopted. Pet. 13–15. Patent Owner agrees. PO Resp. 14–16.
Upon considering the district court’s claim construction order, we determine
that it is consistent with the broadest reasonable interpretation of those terms
in light of the ’244 patent specification. Accordingly, we adopt the district
court’s construction set forth above. See Ex. 2009 at 12–14.

C. Principles of Law
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) objective evidence of
IPR2014-00525
Patent 8,380,244 B2

15
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic,
504 F.3d at 1259.
We analyze the asserted ground of unpatentability in accordance with
the above-stated principles.

D. Analysis
Petitioner asserts that claims 1–8, 14–16, 19–29, 36–38, and 41–44
are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
of Jawanda, the GPRS Standards, and IEEE 802.11 Standard. Pet. 19–28.
In its Petition, Petitioner explains how the combination of prior art technical
disclosures meets each claim limitation and articulates a rationale to
combine the teachings. Id. Petitioner further relies on the declaration of Dr.
Bims to support the analysis advocated in the Petition. Ex. 1002.
Patent Owner responds that the combination of Jawanda, the GPRS
Standards, and IEEE 802.11 Standard does not disclose every claim element.
PO Resp. 17– 40. Patent Owner also argues that there is insufficient reason
to combine the teachings of Jawanda, the GPRS Standards, and IEEE 802.11
Standard. Id. at 40–46. To support its contentions, Patent Owner proffers
the Declaration of Dr. Stark. Ex. 2005.
For the reasons given below, after consideration of the Petition, the
arguments in the Patent Owner Response, Petitioner’s Reply, and the
evidence of record, we conclude that Petitioner has demonstrated, by a
IPR2014-00525
Patent 8,380,244 B2

16
preponderance of the evidence, that each of claims 1–8, 14–16, 19–29, 36–
38, and 41–44 of the ’244 patent is unpatentable over Jawanda, the GPRS
Standards, and IEEE 802.11 Standard. We begin our discussion with a brief
summary of the cited references, and then we address the parties’
contentions in turn.
1. Overview of Jawanda (Ex. 1003)
Jawanda discloses a method and system for seamless roaming
between wireless data communication networks with a mobile terminal.
Ex. 1003, 1:10–13. Specifically, the system includes a plurality of wireless
interfaces that:
supports simultaneous wireless connections with first and
second wireless communication networks, and a network access
arbitrator that routes data communicated between the software
executed by the data processing resources and the first and
second wireless communication networks.
Id. at 1:64–2:1.
The system of wireless data communication between wireless data
networks is illustrated in Figure 3, which is reproduced below.

Fig. 3 is a schematic diagram of a wireless data communication
system for seamless roaming between wireless networks.

IPR2014-00525
Patent 8,380,244 B2

17
Jawanda discloses that the wireless signal can be transmitted
according to any currently available or future wireless data protocol such as
code division multiple access (CDMA), cellular digital packet data (CDPD),
or general packet radio service (GPRS). Id. at 3:6–8. One of the functions
of the network access arbitrator is to cause “the transfer of datagrams to be
seamlessly handed off from the wireless connection with wireless wide area
network (WWAN) 10 to the wireless connection with WLAN 12 while
maintaining the session between applications 90 and 91.” Id. at 5:35–39,
Fig. 4.
Figure 4, reproduced below, describes “a high level logical flowchart
of a method of wireless data communication in which a data communication
session is seamlessly handed off between wireless data communication
networks.” Ex. 1003, 4:20–23.

Figure 4 illustrates communications handoff between wireless networks.

IPR2014-00525
Patent 8,380,244 B2

18
The methodology begins with the assumption that a wireless data
connection between a mobile device and a WWAN 10 has been established
outside the service area of the WLAN 12, and the mobile device travels into
the service area of the WWAN 12, and then returns to the remote location.
Id. at 4:24–30. In block 120, after detecting the availability of a higher
bandwidth data connection, the mobile device establishes a second wireless
data connection with a WLAN. Id. at 5:20–32. The Specification notes that
“following block 120, the user has concurrent wireless data connections with
both WWAN 10 and WLAN 12.” Id. at 5:32–34. Next, in block 122, the
network arbitrator “causes the transfer of datagrams to be seamlessly handed
off from the wireless connection with WWAN 10 to the wireless connection
with WLAN 12 while maintaining the session between applications 90 and
91.” Id. at 5:34–39. Continuing to block 126, if for example, the mobile
device has moved out of the range of the WLAN 122, it is determined
whether the transfer of datagrams should be handed off to the connection
with WWAN 10, and the wireless connection is reestablished. Id. at 5:43–
67.
2. Overview of GPRS Standards (Ex. 1005)
The reference to “GPRS Standards” pertains to ten sections from the
Global System for Mobile Communication (GSM) standard, and defines
features relating to a General Packet Radio Service (“GPRS”). Pet. 6. In
particular, the GPRS Standards disclose the use of multiple physical data
channels by a mobile station to transmit data. Pet. 21–22 (citing Ex.
1005.09, 6; Ex. 1002 ¶ 184). To transmit packet data, the physical channels
may be grouped to form logical uplink channels (e.g., Packet Data Traffic
Channel (“PDTCH”) and Packet Associated Control Channel (“PACCH”)).
IPR2014-00525
Patent 8,380,244 B2

19
Id. at 22 (citing Ex. 1005.09, 6, 10; Ex. 1002 ¶ 184). A mobile station may
allocate one or more of the assigned uplink PDTCHs as needed for
transmission of data. Id. at 22 (citing Ex. 1005.09 § 2; Ex. 1002 ¶ 184).
Further, a Packet Data Protocol Context (PDP Context) feature preserves
information about the cellular communication session between the mobile
devise and base station. Ex. 1005.03, 79.
3. Overview of IEEE 802.11 Standard (Ex. 1019)
The IEEE 802.11 Standard is part of a family of networking standards
dealing with wireless local and metropolitan area networks. Ex. 1019,
00005. In particular, the IEEE 802.11 Standard describes a wireless data
protocol for Wireless LAN Medium Access Control (MAC) and a Physical
Layer (PHY) Specification for wireless connectivity of fixed, portable, and
moving stations within a local area. Id. at 00017.
4. Discussion
The parties’ dispute revolves around the challenged claims’ recitation
of “assigned physical channels” and “maintain a communication session
with the cellular wireless network in an absence of the plurality of assigned
physical channels.” As the record reflects, Patent Owner addresses claims 1
and 23 together because “claim 23 is essentially the same as claim 1, but in
method form.”
5
PO Resp. 17. Patent Owner provides an additional
argument for claim 8.
6
Id. at 39–40. As an initial matter, we address Patent

5
In this final decision we refer to claim 1 for convenience; however, our
analysis applies equally to the other challenged claims unless otherwise
noted.
6
Although Patent Owner presents arguments regarding the patentability of
claim 30 (P.O. Resp. 39–40), Petitioner did not challenge claim 30 in the
Petition (Pet. 1), nor did we institute trial as to claim 30 (Dec. 22). As such,
we do not consider arguments directed to claim 30 in this Final Decision.
IPR2014-00525
Patent 8,380,244 B2

20
Owner’s general argument that Petitioner’s positions and Dr. Bim’s opinions
“are inconsistent and not credible” depending on the issue and proceeding.
PO Resp. 46. The Board, however, considers all the evidence of record in
preparing the final written decision and is capable of evaluating the
credibility of any proffered evidence in weighing the party’s respective
arguments.
a. “a cellular transceiver configured to communicate with a
cellular wireless network via a plurality of assigned physical
channels”
As discussed above, we interpret the claim term “assigned physical
channels” as a “plurality of physical channels made available for use by the
subscriber unit.” Relying on the testimony of Dr. Stark and its interpretation
of “assigned physical channels,” which we find unavailing, Patent Owner
argues that Jawanda does not disclose physical channels, let alone which
entity selects the cellular physical channels. PO Resp. 17 (citing Ex. 2005,
¶¶ 66–67). On this record, we are persuaded by Petitioner’s argument that
Jawanda inherently teaches a plurality of physical channels because
“Jawanda expressly cites GPRS as one such available cellular network.”
Pet. 21. Specifically, we are persuaded by Petitioner’s contention that the
GPRS Standards describe eight basic physical data channels per mobile
station grouped to form logical uplink channels (e.g., Packet Data Traffic
Channel (“PDTCH”) and a Packet Associated Control Channel (“PACCH”))
to transmit data, and that “a mobile station may allocate one or more of the
assigned uplink PDTCHs as needed for transmission of data.” Id. at 22
(citing Ex. 1005.09 §§ 2, 5; Ex. 1002 ¶ 184). In fact, Patent Owner
acknowledges that “both parties’ experts agree, Jawanda teaches using a
IPR2014-00525
Patent 8,380,244 B2

21
cellular wireless ‘data connection’ defined by a cellular standard, such as
GPRS.” PO Resp. at 18 (citing Ex. 1003, 3:6–9; Ex. 2005 ¶ 67; Ex. 1002 ¶
166).
Next, we consider Patent Owner’s argument that Jawanda does not
disclose that the subscriber unit selects the assigned channels that will be
available for use. Id. We credit the testimony of Patent Owner’s Declarant,
Dr. Stark, as consistent with the understanding that the GPRS standards in
existence at the time of the invention required that the network, not the
subscriber unit, select the channels for use. Id. (citing Ex. 2005 ¶¶ 68).
Nonetheless, having construed the claim term “plurality of assigned physical
channels” to mean “plurality of physical channels made available for use by
the subscriber unit,” Patent Owner’s arguments are unavailing. We are
persuaded by Petitioner’s argument that “the broadest reasonable
interpretation of the claims does not limit them to a narrow type of ‘assigned
physical channel’ that must be assigned by a particular entity or require
selection of a subset.” Reply 9. Moreover, we agree that Claim 1 does not
specify which entity, e.g. the subscriber unit or the network, assigns (selects)
the physical channels for use, and nothing in the claim language precludes
the network from assigning the physical channels. Indeed, the limitation in
question only requires that the physical channel has been assigned, i.e.,
made available for use by the subscriber unit. As such, Patent Owner’s
arguments directed specifically to the subscriber unit itself making the
selection of the physical channels, are not persuasive because this contention
is not commensurate in scope with the language of claim 1.
Likewise, Patent Owner’s further argument, “when the subscriber unit
‘selects’ channels for use, the selected channels are a subset of a larger
IPR2014-00525
Patent 8,380,244 B2

22
group of channels,” is not persuasive because this contention is not
commensurate in scope with the language of claim 1. PO Resp. 26. Nothing
in the language of claim 1 requires that the channels be selected from a
subset of larger group of channels.
For the above reasons, Petitioner has established persuasively that
Jawanda discloses the claim element of “assigned physical channels.”
b. maintain a communication session with the cellular wireless
network in an absence of the plurality of assigned physical
channels
As discussed above, we construe “maintain a communication session
with the cellular wireless network” as “maintain a logical connection with
the cellular wireless network when none of the plurality of physical channels
are in use by the subscriber unit.” The parties agree that a physical
connection includes a logical connection, and that the converse is not true.
Tr. 16:22–24, 17:12–21, 38:23–39:2. The parties’ disagreement, however,
centers on the type of cellular connection Jawanda refers to in block 122 of
Figure 4 as “optionally maintained.”
Petitioner contends this optionally maintained connection is a logical
connection because Jawanda discloses that “after moving the session to
transfer datagrams using the WLAN instead of the WWAN, the cellular
connection can be maintained even when it is not used to transfer
datagrams.” Pet. 24 (citing Ex. 1003, 5:32–34, Ex. 1002 ¶ 195). Further,
Petitioner notes that Jawanda cites GPRS as one available cellular network
(Id. at 21), and relies on the GPRS documents to “disclose the ‘maintain
communication session’ limitations even more thoroughly” (Id. at 24). In
particular, Petitioner relies on the Packet Data Protocol Context (“PDP
Context”) feature that “can be used to preserve information about the
IPR2014-00525
Patent 8,380,244 B2

23
cellular communication session between a mobile device and a base station.”
Id. Also relying on the testimony of Dr. Bims, Petitioner explains that
“when the radio link connection between a user device and the cellular
network has been released, one or more active PDP Contexts are preserved”
to make it easier and faster “for the mobile device to resume cellular
communications the next time it needs to transmit data.” Id. at 25 (citing
Ex. 1002 ¶ 203).
Patent Owner counters that the optionally maintained connection in
Jawanda is a physical connection, i.e., “a standard, end-to-end connection
using physical channels.” PO Resp. 29 (citing Ex. 2005 ¶ 114).
Specifically, Patent Owner argues that the optionally maintained connection
is the same “wireless data connection with WWAN’ that is established in
Block 102, and used to transfer data in Block 104.” Id. at 30 (citing
Ex. 2005 ¶ 114). Relying on the testimony of Dr. Stark, Patent Owner
asserts that “optionally maintained” means that the end-to-end connection
“continues to exist, unchanged.” Id. (citing Ex. 2005 ¶ 114). To further
support its position, Patent Owner directs our attention to the dictionary
definition of maintain, i.e., “[t]o keep in an existing state; preserve or
retain,” as support for its position. Id. at 30 (citing Ex. 2014; Ex. 2006,
12:19–21, 138:9–12). Directing our attention to block 130 in Figure 4 of the
’244 patent, Patent Owner argues that “the cellular connection is used –
because it remains ‘active.’” Id. (citing Ex. 1003, Figure 4; Ex. 2005 ¶ 114).
The WWAN connection is only active and will not be reestablished, if it was
maintained in Block 122, according to Patent Owner. Id. at 31 (citing Ex.
2005 ¶ 38). Citing the testimony of Dr. Stark, Patent Owner concludes that
IPR2014-00525
Patent 8,380,244 B2

24
maintaining the cellular connection, in the context of Jawanda, means that it
is “active.” Id. (citing Ex. 2005 ¶ 114; Ex. 2006 99:5–100:8).
We are not persuaded by Petitioner’s argument that the reference to an
optionally maintained cellular connection in block 122 of Figure 4 is a
logical connection. As Patent Owner argues correctly, other than in block
122 of Figure 4, there is no discussion in Jawanda characterizing the
optionally maintained cellular connection as a logical connection if not used
to transfer datagrams. PO Resp. 29. At the same time, however, we are not
persuaded by Patent Owner’s arguments that the optionally maintained
connection referred to in block 122 of Figure 4 of Jawanda is strictly a
physical connection. Patent Owner, likewise, does not direct us to any
disclosure in Jawanda that would suggest such a narrow characterization of
the maintained WWAN connection. Our review of the Specification merely
reveals a description of how the mobile device establishes a second wireless
data connection with a WLAN (Id. at 5:20–32): there is a concurrent
physical connection with both the WWAN and WLAN (Id. at 5:32–34) until
the network arbitrator seamlessly hands off the connection with the WWAN
to the WLAN while maintaining the session. (Id. at 5:34–39). Further,
Jawanda notes that the wireless connection can be reestablished if the mobile
device moves out of range of the WLAN. Id. at 5:43–67.
Nonetheless, we are persuaded by Petitioner’s argument that the
GPRS Standards “disclose a logical connection that can be maintained when
physical channels are absent or not in use.” Reply 9. Patent Owner’s
arguments directed to the “GPRS Standards, Release 97” and related
argument that Jawanda teaches use of “the actual then-existing GPRS
Standards,” are unpersuasive because they do not address the specific
IPR2014-00525
Patent 8,380,244 B2

25
teachings of the GPRS Standards relied upon in the Petition. PO Resp. 34.
In fact, Jawanda expressly recognizes the dynamic nature of wireless data
protocols in describing “[f]or data connections, such wireless signals can be
transmitted according to any currently available or future wireless data
protocol such as code division multiple access (CDMA), CDPD, or GPRS.”
Ex. 1003, 3:6–9 (emphasis added).
Along this vein, we are not persuaded by Patent Owner’s similar
argument that “GSM 3.60 – the only reference ZTE and Dr. Bims have cited
as disclosing information about the physical radio link/resource being
present or absent – is not part of the then-existing GPRS Standard.” PO
Resp. 37. We determined in the Decision on Institution that the cited GPRS
specifications, including the draft GSM 3.60 specification, are a prior art
reference. Dec. 16. Yet, Patent Owner’s arguments do not address
specifically Petitioner’s contentions regarding the teachings of the GSM
3.60 specification. See Ex. 1005.03. Further, we note that Patent Owner’s
contentions concerning the position taken by Petitioner’s Declarant in other
proceedings involving other patents (id. at 38–39), are not persuasive in this
proceeding challenging the patentability of the ’244 patent.
c. Combination of Jawanda, GPRS, and IEEE 802.11 Standard
Patent Owner argues that Petitioner has failed to prove inherency. PO
Resp. 40. Specifically, Patent Owner argues that Petitioner’s contention that
“Jawanda, through its reference to GPRS, inherently disclose[s] ‘a plurality
of assigned physical channels,”’ is incorrect “as a matter of law.” Id. (citing
Pet. 21; Ex. 1002 ¶¶ 184, 199). According to Patent Owner, there is no
evidence that earlier releases of GPRS, or other cellular networks, “disclose
the elements that ZTE asserts are disclosed by Release 97 of GPRS.” Id.
IPR2014-00525
Patent 8,380,244 B2

26
Having determined above that Jawanda and the GPRS Standards disclose a
plurality of physical channels, we find Patent Owner’s arguments in this
regard unpersuasive.
Next, citing Kyocera Wireless Corp. v. International Trade
Commission, 545 F.3d 1340 (Fed. Cir. 2008), Patent Owner argues that as a
matter of law, the GPRS Standards Petitioner relies on cannot be considered
a single prior art reference because the individual specifications were written
at different times, have separate titles and page numbering, and some are
marked as drafts. Id. at 41. Analogizing the GSM standard, which was
determined not to be a single reference in Kyocera, to the GPRS Standards
cited in this proceeding, Patent Owner asserts that the GPRS Standards
“constitute ‘several prior art references with separate dates of creation, rather
than a single prior art reference.’” Id. at 42 (quoting Kyocera, 545 F.3d at
1351). Patent Owner’s attempt to analogize the present matter with Kyocera
is unpersuasive because Kyocera’s finding that disparate parts of a reference
did not constitute a single prior art reference was made in the context of
anticipation, which generally requires a single reference. Here, the issue is
obviousness, and thus whether a standard itself constitutes a single reference
is not dispositive. Instead, the inquiry turns on whether one of skill in the
art would have combined the standard (whether a single reference or several)
together with the other cited references, as discussed below.
Whether a document constitutes a printed publication is a question of
law based upon the underlying facts of each particular case. Cordis Corp. v.
Boston Sci. Corp., 561 F.3d 1319, 1332–33 (Fed. Cir. 2009); see also
Kyocera, 545 F.3d at 1350. Patent Owner has not provided credible
evidence demonstrating adequately that the draft standards were not
IPR2014-00525
Patent 8,380,244 B2

27
“sufficiently accessible to the public interested in the art” before the critical
date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655
F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’
upon a satisfactory showing that such document has been disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate
it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006) (quoting Wyer, 655 F.2d at 226). Here, we credit Dr. Bims’
testimony that the GPRS Standards were available to an interested member
of the public as of the date listed on the top of the specification. Ex. 1002
¶ 121. Based on the complete record, we see no reason to revisit our
determination that the GPRS Standards are a prior art printed publication,
and are available as prior art. Dec. 14–17.
Patent Owner challenges Petitioner’s reasoning to combine Jawanda
and the GPRS standards, i.e., to develop a standards-compliant cell phone,
arguing that “features described in a draft document are not, and may never
be, required in a standards-compliant phone.” PO Resp. 42 (citing Ex. 2005
¶¶ 131–32). Arguing further that there is “no motivation to combine”
Jawanda with the GPRS Standards, Patent Owner relies on the testimony of
Dr. Stark that “a person of ordinary skill in the art would have understood
that in order to build devices that are interoperable with cellular networks
you have to rely on the specifications that are in the actual approved final
standard” otherwise the device may not work. Id. at 43 (citing Ex. 2005
¶ 131).
Petitioner argues persuasively that Jawanda provides explicit
motivation “to use ‘any currently available or future wireless data protocol,’
IPR2014-00525
Patent 8,380,244 B2

28
such as GPRS.” Reply 11 (citing Ex. 1003 3:6–9). As Petitioner points out,
Dr. Stark confirmed that the GPRS standards are a draft wireless data
protocol. Id. (citing Ex. 1025, 91:1–16, 95:3–10. We credit the testimony of
Dr. Bims that “persons working in the field would not ignore the drafts of
cellular standards documents” because cell phone manufactures “need to be
aware of and keep up with the developing standards.” Ex. 2006, 24:9–27:2,
168:18–171:5. We also credit the testimony of Dr. Bims that “[a] person of
ordinary skill would understand that all portions of the standard associated
with the same release must be read together as a whole to understand, for
example, how to make a cell phone compliant with the standard.” Id. Patent
Owner’s arguments do not persuade us that using the GPRS Standards in the
method of Jawanda would have been outside the skill in the art, or yielded
an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
We have considered Patent Owner’s arguments and are persuaded that
Petitioner has provided articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. at 418
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Secondary Considerations of Nonobviousness
As part of our obviousness analysis, we also consider the evidence and
arguments submitted by Patent Owner regarding secondary considerations of
nonobviousness. PO Resp. 44–46. Factual inquiries for an obviousness
determination include secondary considerations based on evaluation and
IPR2014-00525
Patent 8,380,244 B2

29
crediting of objective evidence of nonobviousness. Graham, 383 U.S. at 17.
Notwithstanding what the teachings of the prior art would have suggested to
one with ordinary skill in the art at the time of the ’244 patent’s invention,
the totality of the evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the challenged claims would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unsolved needs, failure of others,
unexpected results, commercial success, copying, licensing, and praise. See
Graham, 383 U.S. at 17; Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
To be relevant, evidence of nonobviousness must be commensurate
in scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). In that regard, in order
to be accorded substantial weight, there must be a nexus between the merits
of the claimed invention and the evidence of secondary considerations. In
re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally
and factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of
showing that there is a nexus lies with the patent owner. Id.; see In re
Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Patent Owner urges that licensing, industry skepticism, unresolved
technical issues, commercial success, and unexpected results demonstrate
IPR2014-00525
Patent 8,380,244 B2

30
that the challenged claims would not have been obvious to a person of
ordinary skill in the art. PO Resp. 44–46. As discussed below, Patent
Owner proffers insufficient credible evidence to support its contentions.
With regards to licensing, Patent Owner relies on Dr. Stark’s
testimony that “many companies have licensed the ’244 patent family” (id.
at 45 (citing Ex. 2005 ¶ 135)) and that “the ’244 patent family often
features prominently during negotiations of these licenses demonstrating a
nexus between these licenses and the invention of the ’244 patent’s
invention” (id. (citing Ex. 2005 ¶¶ 134–135)). Petitioner counters that
Patent Owner has not established a sufficient nexus between the claimed
device and the alleged commercial success of the subscriber unit. Reply
14. Specifically, Dr. Stark has not evaluated or segregated the contribution
of any features of the ’244 patent, nor provided examples of license
agreements based on the ’244 patent. Reply 14–15 (citing Ex. 1025 9:2–
10:20, 11:3–12, 11:13–14:8). We agree with Petitioner. First, other than
the opinion of Dr. Stark, Patent Owner does not proffer evidence to
substantiate Dr. Stark’s testimony. As such, Dr. Stark’s testimony is
entitled to little weight. 37 C.F.R. § 42.65(a). Second, the fact that the
companies have entered into license agreements based on the ’244 patent
family is insufficient evidence of a connection between such success and
any claimed features of the ’244 patent itself. Instead, the Patent Owner
must show proof that the success is “the direct result of the unique
characteristics of the claimed invention.” In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996).
Patent Owner cites Dr. Stark’s testimony to demonstrate industry
skepticism regarding the ’244 patent’s claimed invention of centrally-
IPR2014-00525
Patent 8,380,244 B2

31
allocated channels, specifically, whether dual-mode devices could generate
revenue, and difficulties associated with providing coverage. PO Resp. 45
(citing Ex. 2005 ¶¶ 136–139). Nonetheless, Patent Owner does not proffer
sufficient evidence to support Dr. Stark’s testimony.
Patent Owner also cites Dr. Stark’s testimony in arguing that the
’244 patent solved unresolved technical problems, “allow[ing] the
subscriber unit to achieve higher data rates and increased network capacity,
leading to a better user experience.” Id. (citing Ex. 2005 ¶ 138). We are
not persuaded by Patent Owner’s arguments in this regard. Dr. Stark’s
testimony is unsupported by sufficient evidence, including persuasive facts,
data or analysis, to support the opinion stated.
To demonstrate the commercial success of the ’244 patent, Patent
Owner relies on Dr. Stark’s testimony regarding the commercial success of
Petitioner’s own allegedly infringing devices. Id. at 46 (citing Ex. 2005 ¶ ¶
140–143); Ex. 2015, 8806–11, 155:22–157.5). Patent Owner presents
insufficient evidence, including persuasive facts, data or analysis,
demonstrating that the commercial success of Petitioner’s devices was due
to the ’244 patent.
As to unexpected results, Patent Owner asserts that “a person of
ordinary skill at the time of invention would not have expected selection of
a plurality of physical channels by the subscriber unit to provide reliable
data communications.” Id. (citing Ex. 2005 ¶ 145). Patent Owner argues
that this key feature of the ’244 patent provides “a nexus between this
‘unexpected result’ and the ’244 Patent’s claims.” Id. Patent Owner
presents insufficient evidence, including persuasive facts, data or analysis,
IPR2014-00525
Patent 8,380,244 B2

32
demonstrating that the cited unexpected result was due to a specific feature
of the claimed invention.
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated by a preponderance of evidence that the
combination of Jawanda, the GPRS Standards, and IEEE 802.11 Standard
renders claims 1–7, 14–16, 19–29, 36–38, and 41–44 obvious.
d. Dependent Claim 8
Dependent claim 8 additionally recites that “the cellular wireless
network is a code division multiple access (CDMA) network.” Ex. 1001
11:39–41. Patent Owner asserts that it is undisputed that GPRS uses time
division multiple access (“TDMA”) and not CDMA as required by claim 8.
PO Resp. 39 (citing Ex. 2005 ¶ 127; Ex. 2006 32:22–33:12). Specifically,
Patent Owner argues that because Petitioner relies on the use of the GPRS
cellular network to disclose certain features of claim 1, it “cannot rely on a
completely different type of cellular network using different types of
physical channels” to disclose the CDMA element. Id. at 40 (citing Ex.
2005 ¶ 127). In reply, Petitioner asserts that Jawanda explicitly states that
“the wireless data connections could be provided by a ‘code division
multiple access (CDMA)’ network.” Reply 13 (citing Ex. 1003, 3:6–9). In
addition, Petitioner points to the testimony of Dr. Stark, admitting “that the
GPRS network layer protocols (such as the PDP context) were eventually
incorporated into CDMA air interface systems, such as WCDMA.” Id. at 14
(citing Ex. 1025, 92:4–20). Petitioner argues persuasively that “Patent
Owner has advanced no evidence to suggest that employing the cited GPRS
functionality in a CDMA-based system such as Jawanda discloses would
have been beyond the level of ordinary skill at the relevant time.” Id.; see
IPR2014-00525
Patent 8,380,244 B2

33
also KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated by a preponderance of evidence that the
combination of Jawanda, the GPRS Standards, and IEEE 802.11 Standard
renders claim 8 obvious.

IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence the unpatentability of
claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244 patent as obvious
over Jawanda, the GPRS Standards, and the IEEE 802.11 Standard.

V. ORDER
For the foregoing reasons, it is
ORDERED that claims 1–8, 14–16, 19–29, 36–38, and 41–44
of the ’244 patent have been shown to be unpatentable.
This is a final decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.
IPR2014-00525
Patent 8,380,244 B2

34
PETITIONER:

Charles M. McMahon
Brian A. Jones
BRINKS GILSON & LIONE
cmcmahon@brinksgilson.com
bjones@brinksgilson.com

PATENT OWNER:

Jonathan D. Link
Julie M. Holloway
LATHAM & WATKINS LLP
jonathan.link@lw.com
julie.holloway@lw.com