Wi-LAN, Inc.

Patent Trials and Appeals Board

Sep 21, 2020

IPR2020-00302 (P.T.A.B. Sep. 21, 2020)

Trials@uspto.gov Paper 10
571-272-7822 Entered: September 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., TCT MOBILE
(US) INC. and TCL MOBILE COMMUNICATION (HK) CO., LTD.,
Petitioner,
v.
WI-LAN INC,
Patent Owner.

IPR2020-00302
Patent 8,259,688 B2

Before DANIEL J. GALLIGAN, KAMRAN JIVANI, and SCOTT E. BAIN,
Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of Decision Denying Institution
37 C.F.R. § 42.71(d)

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Patent 8,259,688 B2
2
I. INTRODUCTION
On December 24, 2019, Huizhou TCL Mobile Communication Co.
Ltd., TCT Mobile (US) Inc., and TCL Mobile Communication (HK) Co.,
Ltd. (“Petitioner”) filed a Petition requesting inter partes review of
claims 1–16 of U.S. Patent No. 8,259,688 B2 (“the ’688 patent,” Ex. 1001).
Paper 1 (“Pet.”). The Petition asserted the following four grounds of
unpatentability:
Claims Challenged 35 U.S.C. §1 References/Basis
1–16 103(a) Hong,2 Zhuang3
1–5, 11, 12, 15 103(a) Etemad,4 Sung5
6–10, 13, 14, 16 103(a) Etemad, Sung, Pecen6
1–14 103(a) Laroia,7 Dahlby8

After considering the Petition and the Patent Owner Preliminary
Response (Paper 6), we determined that Petitioner had not shown a
reasonable likelihood of prevailing on any ground presented in the Petition,
and, therefore, we denied institution. Paper 8 (“Dec.”), 20.
On September 2, 2020, Petitioner filed a Request for Rehearing of our
Decision. Paper 9 (“Request” or “Req. Reh’g”). Petitioner requests
rehearing only with respect to the ground based on the combination of Hong

1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective after the filing of the application for
the ’688 patent. Therefore, we apply the pre-AIA version of this section.
2 Hong, US 2005/0192011 A1, published Sept. 1, 2005 (Ex. 1003).
3 Zhuang, US 2005/0286465 A1, published Dec. 29, 2005 (Ex. 1004).
4 Etemad, US 7,963,517 B2, issued Apr. 6, 2010 (Ex. 1005).
5 Sung, US 2005/0030931 A1, issued Feb. 10, 2005 (Ex. 1006).
6 Pecen, US 2005/0227691 A1, published Oct. 13, 2005 (Ex. 1009).
7 Laroia, US 2005/0124344 A1, published June 9, 2005 (Ex. 1007).
8 Dahlby, US 6,996,060 B1, issued Feb. 7, 2006 (Ex. 1008).
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and Zhuang. See Req. Reh’g 2–3 (“Petitioner respectfully requests the
Board grant rehearing to review the Petition with respect to Ground 1 . . . .”).
For the reasons that follow, we deny Patent Owner’s request for
rehearing.

II. ANALYSIS
A. Standard of Review
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” The party
requesting rehearing has the burden of showing that the decision from which
rehearing is sought should be modified, and “[t]he request must specifically
identify all matters the party believes the Board misapprehended or
overlooked.” 37 C.F.R. § 42.71(d).
B. Alleged Obviousness over Hong and Zhuang
Claim 1 of the ’688 patent recites “transmitting, by the mobile station,
the allocated random access identifier to the target base station over a
random access channel,” and claim 6 similarly recites “a transmitter
configured to transmit the allocated random access identifier to the target
base station over a random access channel.”
In the Decision, we explained that Petitioner had not shown that
Hong’s initial ranging procedure teaches transmission on a random access
channel, and we explained that, although Zhuang uses the terms “random
access” and “ranging” interchangeably (Ex. 1004 ¶ 2), “Petitioner fails to
explain how Hong’s initial ranging procedure is a ‘random access’ in the
sense described by Zhuang, and they appear to be significantly different.”
Dec. 10–12.
On rehearing, Petitioner argues that our Decision indicates that we
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Patent 8,259,688 B2
4
misunderstood Petitioner’s position to be “that the initial ranging channel
and the random access channel must always have exactly the same
meaning,” which Petitioner argues “was not the position presented.” Reg.
Reh’g 1. According to Petitioner, “the Petition states that a [person of
ordinary skill in the art] looking at Hong’s initial ranging channel would
have found a random access channel limitation obvious.” Req. Reh’g 5.
We disagree with Petitioner’s assertion on rehearing that we
misunderstood the contentions set forth in the Petition. For the relevant
limitation, Petitioner first set forth Hong’s disclosures of initial ranging.
Pet. 27–28. Petitioner then stated: “In this regard, it was well-known that
the terms ‘initial ranging channel’ and ‘random access channel’ were often
used interchangeably; and similarly, the terms ‘initial ranging process’ and
‘random access process’ were often used interchangeably.” Pet. 29.
Petitioner then stated that the ’688 patent uses the terms interchangeably.
Pet. 29; see Dec. 5 (discussing the ’688 patent’s use of these terms).
Petitioner then argued: “Therefore, Hong’s disclosure of transmission of the
temporary CID during initial ranging discloses the feature of transmitting the
random access identifier over a random access channel.” Pet. 29. The
assertion in the Petition, therefore, is that the disclosure of initial ranging
discloses a random access channel, not that the disclosure of initial ranging
renders obvious a random access channel, as Petitioner now asserts on
rehearing. See Req. Reh’g 5.
The Petition further states the following:
To further demonstrate that the equivalence between
“random access” and “initial ranging” was well-known before
the filing of the ’688 Patent, Petitioner cites to Zhuang, a
Motorola patent application in the related area of handoff in a
wireless communication, which explains that ranging, access and
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Patent 8,259,688 B2
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random access are synonymous terms in the context of the
technology under IEEE 802.16. See TCL-1004 [0002]-[0003];
[0013]. Zhuang further discloses that ranging includes
generating and transmitting random access signals. Id. [0023],
[0071].
Therefore, the combined teaching of Hong and Zhuang
renders obvious feature of Claim [1.C]. TCL-1010, [116]-[123].
Pet. 29.
We addressed this assertion in detail in the Decision denying
institution as follows:
Petitioner also relies on Zhuang’s disclosure of using the
terms “random access” and “ranging” “interchangeably.” Pet. 29
(citing Ex. 1004 ¶¶ 2–3, 13, 23, 71). Zhuang, however, discloses
that “an access signal is often transmitted in an unsolicited
manner” and, therefore, “is often referred to as a random access,”
which is “[u]nlike ordinary data traffic that is sent using
scheduled resources that are allocated by the [base station] to the
[subscriber station].” Ex. 1004 ¶ 2. Although Petitioner cites
Zhuang for the general proposition that “initial ranging” and
“random access” are equivalent, Petitioner fails to explain how
Hong’s initial ranging procedure is a “random access” in the
sense described by Zhuang, and they appear to be significantly
different. As an example, Hong discloses that a target base
station sends a fast ranging information element (step 761) to the
subscriber station, after which the subscriber station and the
target base station “exchange an RNG-REQ message and an
RNG-RSP message with each other in the method described in
connection with FIG. 6 (Steps 763 and 765), perform initial
ranging.” Ex. 1003 ¶ 86, cited in Pet. 27. The ranging request
(RNG-REQ) message 763 does not appear to be “transmitted in
an unsolicited manner,” as the “random access” signals are in
Zhuang. See Ex. 1004 ¶ 2.
Dec. 10–11. Petitioner’s arguments on rehearing about the alleged
interchangeability of the terms “initial ranging channel” and “random access
channel” fail to show that we misapprehended or overlooked any matter
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Patent 8,259,688 B2
6
presented in the Petition.
On rehearing, Petitioner also argues that “Zhuang was relied upon to
demonstrate that a [person of ordinary skill in the art] would have found the
random access channel limitation obvious in view of the description of the
initial ranging channel in Hong, based on the combined teaching of Hong
and Zhuang.” Req. Reh’g 8. We also addressed Petitioner’s reasons to
combine Hong and Zhuang in the Decision denying institution as follows:
Petitioner’s argument is based on Zhuang’s use of terms
as equivalents without sufficiently explaining how Zhuang’s
disclosures apply to Hong. Petitioner asserts that a person of
ordinary skill in the art “would have combined the teaching of
Zhuang that random access and ranging are equivalent terms
with Hong’s teaching of fast handover in order to achieve fast
handover in other wireless systems based on TDMA, FDMA or
CDMA.” Pet. 23 (citing Ex. 1004 ¶ 13; Ex. 1010 ¶¶ 101–106).
But Petitioner does not explain how the use of equivalent terms
in Zhuang creates a fast handover in Hong, and, as discussed
above, Petitioner does not explain how Hong’s ranging request
messages are random access signals in the sense taught in
Zhuang.
Dec. 11. Petitioner’s focus on the alleged interchangeability of, or
equivalence between, terms is not persuasive given the differences between
Hong and Zhuang, as discussed in the Decision. Dec. 10–11.
On rehearing, Petitioner also argues that we “relied on a single
discussion of [Hong’s] FIG. 3 to exclude Petitioner’s substantial evidence in
Hong’s FIG. 7, and did not review the prior art teaching of the embodiment
of FIG. 7 on its merits.” Req. Reh’g 12. This is incorrect. In the Decision,
we explained that Hong’s Figures 3 and 7, both of which Petitioner relies on,
conflict in that Hong describes a competition-based transmission technique
in Figure 3 and a non-competition-based transmission technique in Figure 7,
and we stated that “Petitioner fails to reconcile these two conflicting
IPR2020-00302
Patent 8,259,688 B2
7
positions.” Dec. 9–10. We, however, did not ignore the disclosure of
Figure 7. Rather, we explained in detail how Petitioner’s assertions based
on Hong’s Figure 7 in view of Zhuang fall short. Dec. 10–11.
Petitioner further argues that “the ’688 Patent provides the initial
ranging channel as written description support for the random access
channel limitation. Consequently, prior art that teaches an initial ranging
channel must necessarily, at a minimum, renders obvious the random access
channel limitation.” Req. Reh’g 10. The passage from the ’688 patent to
which Petitioner refers provides the following: “The subscriber station
transmits an initial ranging signal over a ranging channel defined by the base
station 200. The ranging channel can be, for example, the random access
channel.” Ex. 1001, 6:47–50, cited in Req. Reh’g 11. On rehearing,
Petitioner argues that this passage from the ’688 patent (Ex. 1001, 6:47–50)
“reflects how those terms were used ‘interchangeably’ to provide support for
obviousness,” and Petitioner further argues that, “no matter the interpretation
of the random access channel limitation, its scope must also include an
initial ranging channel due to the written description support for the random
access channel limitation given in the ’688 Patent.” Req. Reh’g 11.
We addressed this disclosure of the ’688 patent in the Decision
denying institution as follows:
This disclosure from the ’688 patent, however, does not equate a
ranging channel with a random access channel by saying, for
example, that a ranging channel is also called a random access
channel. Rather, it states that the ranging channel can be the
random access channel. The ranging channel could be some
other channel as well. Petitioner does not explain why channels
other than a random access channel would be excluded from
being used as a ranging channel in the ’688 patent. Thus, the
mere disclosure of a transmission on ranging channel does not
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Patent 8,259,688 B2
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necessarily teach the claimed transmission on a “random access
channel.”
Dec. 5.
Petitioner’s arguments on rehearing fail to show that we
misapprehended or overlooked any matter presented in the Petition. Indeed,
as discussed in the Decision, Hong’s initial ranging procedure does not
appear to involve transmission in an unsolicited manner, which is a hallmark
of Zhuang’s random access. Dec. 10–11; see Dec. 11 (“Petitioner fails to
explain how Hong’s initial ranging procedure is a ‘random access’ in the
sense described by Zhuang, and they appear to be significantly different.”).

III. CONCLUSION
Petitioner has not carried its burden of demonstrating we
misapprehended or overlooked any matters in denying institution. 37 C.F.R.
§ 42.71(d).
For the foregoing reasons, Petitioner’s Request for Rehearing is
denied.

IPR2020-00302
Patent 8,259,688 B2
9
FOR PETITIONER:
Bing Ai
Vinay Sathe
Yun Lu
John Schnurer
Kevin J. Patariu
Miguel Bombach
PERKINS COIE LLP
ai-ptab@perkinscoie.com
sathe-ptab@perkinscoie.com
lu-ptab@perkinscoie.com
schnurer-ptab@perkinscoie.com
patariu-ptab@perkinscoie.com
bombach-ptab@perkinscoie.com

FOR PATENT OWNER:
Barry J. Bumgardner
Matthew C. Juren
NELSON BUMGARDNER ALBRITTON P.C.
barry@nelbum.com
matthew@nelbum.com