Trials@uspto.gov
`571.272.7822
`
`Paper No. 27
`Filed: January 23, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, and ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-014801
`Patent 8,867,472 B2
`____________
`
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON,
`And JOHN A. HUDALLA, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) AND 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
`Inc. filed a petition in (now terminated) IPR2017-00982 (“’982 IPR”), and
`have been joined to the instant proceeding. Subsequently, Apple, Inc. was
`terminated from the proceeding. See infra Section I, n.3.
`
`
`571.272.7822
`
`Paper No. 27
`Filed: January 23, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, and ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-014801
`Patent 8,867,472 B2
`____________
`
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON,
`And JOHN A. HUDALLA, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) AND 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
`Inc. filed a petition in (now terminated) IPR2017-00982 (“’982 IPR”), and
`have been joined to the instant proceeding. Subsequently, Apple, Inc. was
`terminated from the proceeding. See infra Section I, n.3.
`
`
`
`IPR2016-01480
`Patent 8,867,472 B2
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`
`I. INTRODUCTION
`Apple Inc. (“Apple”) filed a Petition (Paper 1, “Pet.”) pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 10, 11,
`14, 28, 37, 38, and 41 (“the challenged claims”) of U.S. Patent No.
`8,867,472 B2 (“the ’472 patent,” Exhibit 1001), filed March 25, 2010. HTC
`Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA), Inc.
`(collectively “HTC et al.” or “Petitioner”) were joined in this proceeding.
`(See Paper 14, n.1; ’982 IPR, Paper 8).
`The Petition is supported by the Declaration of Zygmunt J. Haas,
`Ph.D. (“Haas Declaration,” Ex. 1003). Dr. Haas was deposed by Patent
`Owner (“Haas Deposition,” “Haas Dep.,” Ex. 2004). Cellular
`Communications Equipment LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”).2
`We instituted an inter partes review of the challenged claims (Paper 9,
`“Institution Decision” or “Inst. Dec.”). Patent Owner filed a Response (“PO
`Resp.,” Paper 12) and Petitioner filed a Reply (“Pet. Reply,” Paper 16).
`Patent Owner’s Response is supported by the Declaration of Jay P. Kesan,
`Ph.D. (“Kesan Declaration,” Ex. 2002). Dr. Kesan was deposed by
`Petitioner (“Kesan Deposition,” “Kesan Dep.,” Ex. 1013). The Board filed a
`transcription of a Final Hearing held on August 30, 2017 (“Tr.,” Paper 23).
`Subsequent to the hearing, Apple was terminated from this proceeding,
`
`
`2 In its Preliminary Response, Patent Owner argued Dr. Haas was not shown
`to be a “qualified as an expert by knowledge, skill, experience, training or
`education.” Prelim. Resp. 15–17. We found Dr. Haas was sufficiently
`qualified to provide testimony. Inst. Dec. 13–14. Patent Owner does not
`raise that issue again in its Response, so we deem the argument waived. See
`Scheduling Order, 3 (Paper 8).
`
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`reaching a settlement with Patent Owner. Paper 26, 3.3
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues 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 shown by a
`preponderance of the evidence that claims 1, 10, 11, 14, 28, 37, 38, and 41
`are unpatentable.
`A. Related Proceedings
`Petitioner advises us that the ’472 patent has been asserted in Cellular
`Communications Equipment LLC v. AT&T Inc., et al., 2:15-cv-00576 (E.D.
`Tex. 2015) (consolidated lead case) (the “District Court” or the “District
`Court Lawsuit”). Pet. 2. Including the lawsuit identified by Petitioner,
`Patent Owner advises us that there are four separate lawsuits filed by Patent
`Owner against various parties in the U.S. District Court for the Eastern
`District of Texas. Paper 3, 2–3. In addition, there are two inter partes
`review proceedings asserting unpatentability of claims of the ’472 patent:
`Telefonaktiebolaget LM Ericsson and Ericsson Inc. v. Cellular
`Communications Equipment LLC, Case IPR2016-01485 (“’1485 IPR”);4 and
`HTC Corporation and HTC America, Inc. v. Cellular Communications
`Equipment LLC, Case IPR2016-01504 (“’1504 IPR”).5 Id.
`
`
`3 As a result of the termination, from now forward, HTC et al. are authorized
`to take the active role with respect to this proceeding. See Paper 14, 7
`(restricting HTC et al. from an active role pending authorization of the
`Board).
`4 Terminated by settlement. ’1485 IPR, Paper 13.
`5 Institution denied. ’1504 IPR, Paper 7.
`
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`
`B. Technology and the ’472 Patent (Ex. 1001)
`The ’472 patent describes an apparatus and method for sending and
`receiving aperiodic channel state information (“CSI”) for a selected
`downlink component carrier of a plurality of component carriers (“CCs”).
`Ex. 1001, Abstract, 1:15, 1:19.
`1. LTE Wireless Communication Systems
`The ’472 patent relates generally to 3rd Generation Partnership
`Project (3GPP) LTE (“Long term evolution”) wireless communication
`systems.6 Ex. 1001, 1:26, 1:42–47; see Ex. 1003 ¶ 20. A base station sends
`user equipment (“UE”) a request to “force the UE to send an aperiodic CSI
`[(“Channel State information”)] report.” Ex. 1001, 1:19–20, 1:40, 3:4–11.
`The CSI can include channel quality indicators (“CQI”), precoding matrix
`indicators (“PMI”), rank indicators, channel frequency, impulse response,
`and/or channel covariance matrix. Id. at 2:1–10. CSI reports may also
`include identification information concerning the component carrier or sub-
`band to which the CSI report relates. Id.
`The UE of the ’472 patent provides feedback on CSI using carrier
`aggregation. Ex. 1001, 1:41–47. Generally, carrier aggregation groups are
`multiple component carriers used to increase the overall system bandwidth
`available to a UE. Id. at 1:54–61. Figure 3 from the ’472 patent is
`reproduced below.
`
`
`6 Petitioner provides a copy of one of the LTE standard documents as
`Exhibit 1011: 3GPP TS 36.201 V8.3.0 (2009-03) TECHNICAL
`SPECIFICATION-3RD GENERATION PARTNERSHIP PROJECT; TECHNICAL
`SPECIFICATION GROUP RADIO ACCESS NETWORK; EVOLVED UNIVERSAL
`TERRESTRIAL RADIO ACCESS (E-ULTRA); LTE PHYSICAL LAYER-
`GENERAL DESCRIPTION (Release 8) (3GPP Organizational Partners 2009).
`
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`Figure 3 shows an example of carrier aggregation. Id. at 2:57. Figure 3
`illustrates “component carrier aggregation (or channel bonding), where the
`total system bandwidth consists of [a] set of component carriers.” Id. at
`1:55–57. In the example of Figure 3, carrier aggregation occurs with non-
`contiguous bands, in which “the total system bandwidth contains a set of
`component carriers BW1, BW2, . . . , BWN , having carrier frequencies f1, f2,
`. . . , fN.” Id. at 1:58–61.
`2. The ’472 Patent
`The “ongoing standardization of LTE-Advanced in 3GPP” uses
`carrier aggregation to form bandwidths of up to 100MHz by aggregating up
`to five component carriers of 20 MHz each. Ex. 1001, 1:62–65. The
`problem with using multiple component carriers is the creation of large CSI
`reports, resulting in high overhead, which in turn limits uplink capacity. Id.
`at 2:20–22, 3:20–29.
`The ’472 patent describes a solution to the problem where a request is
`made for an aperiodic channel information (e.g., CSI) report for a specific
`downlink (“DL”) component carrier, which may include “some coarse
`wideband CSI for other CCs.” Id. at 3:35–40. The UE sends CSI reports to
`the eNode-B (“base station”) upon a request from the base station (“BS”) for
`a particular channel, thus, greatly reducing the costs of reporting within the
`UE and BS system. Id. at 1:24, 2:66–3:3, 3:30–40, Fig. 1.
`
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`
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 28 recite very similar subject
`matter in independent apparatus and method claims, respectively.
`Claims 10, 11, and 14 depend directly or indirectly from claim 1.
`Claims 37, 38, and 41 depend directly or indirectly from claim 28. The
`parties’ arguments focus on method claim 28 and its dependent claim 37
`(see, e.g., Tr. 5:19–6:7, 22:6–18), which are reproduced below:
`28. A method comprising:
`receiving a request for providing aperiodic channel
`information with
`respect
`to a selected downlink
`component carrier of a plurality of component carriers;
`determining the selected downlink component carrier based
`on which component carrier of the plurality of component
`carriers carried the request for providing the aperiodic
`channel information;
`establishing channel information with respect to the selected
`downlink component carrier; and
`sending the channel information with respect to the selected
`downlink component carrier.
`Ex. 1001, 15:1–12.
`37. The method according to claim 28, further comprising:
`providing channel information for at least one of the other
`component carriers of the plurality of component carriers
`other than the selected component carrier of the plurality
`of component carriers; and
`sending the channel information for the at least one of the
`other component carriers.
`Id. at 15:50–56.
`
`6
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`
`D. Asserted Ground of Unpatentability
`Petitioner challenges claims 1, 10, 11, 14, 28, 37, 38, and 41 of
`the ’472 patent as obvious over Seo7 under 35 U.S.C. § 103(a). Pet. 8,
`21–49. The ’472 patent has an effective filing date of March 25,
`2010, prior to the effective date of the Leahy-Smith America Invents
`Act (“AIA”). Thus, the grounds asserted are under the pre-AIA
`version of §§ 103 and 112 referenced below.
`
`
`II. ANALYSIS
`A. Principal Issue Presented
`The papers filed by the parties show that the construction of the “other
`than” limitation recited in dependent claims 10 and 37 is the principal issue
`in this proceeding.8 Patent Owner’s Summary of Argument argues only the
`“other than” limitation.9 PO Resp. 1–2. At the oral hearing, Patent Owner
`argued “what I want to get to today is particularly what Patent Owner means
`by saying exclusive of with respect to the ‘other than’ language.” Tr. 22:10–
`12. Petitioner’s Reply also asserts that that “this proceeding primarily
`revolves around a single issue: claim construction of the ‘other than’
`
`
`7 U.S. Patent No. 8,625,513 B2, to Dong Youn Seo, et al., PCT application
`filed Dec. 29, 2009 (“Seo,” Ex. 1005).
`8 Petitioner has the burden of showing unpatentability. 35 U.S.C. § 316(e).
`Accordingly, other aspects of the required showing are also addressed in this
`Decision.
`9 Patent Owner’s only other argument in the Patent Owner’s Response is that
`Petitioner’s expert admits that Seo does not disclose the
`“determining” step of independent claims 1 and 28. We address that
`argument below.
`
`7
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`limitation in dependent claims 10 and 37.” Pet. Reply 1. The “other than”
`limitation is construed in Section II.B.3 below.
`B. Claim Construction
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the specification in which they appear. See
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061–
`62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of
`the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history.”); In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth 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 special definition or
`other consideration, “limitations are not to be read into the claims from the
`specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.” See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999).
`1. “channel information” (claims 1, 10, 11, 14, 28, 37, 38, 41)
`In the Institution Decision, we found that Petitioner and Patent Owner
`both agreed that “channel information” was not disputed. Inst. Dec. 7 (citing
`Pet. 14 (citing Ex. 1003 ¶¶ 30–32; Vivid Techs. Inc., 200 F.3d at 80)). Patent
`
`8
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`Owner agreed the term did not require construction because at this stage of
`the proceeding it is not disputed. Prelim. Resp. 12–13. Neither party’s
`arguments after institution request construction of the term. We, therefore,
`maintain our determination from the Institution Decision that “channel
`information” is not disputed and construction is not required. Inst. Dec. 7.
`2. “processor [is] configured to” (claims 1 and 10)
`The question raised regarding the various “processor [is] configured
`to” terms (“processor terms”) is whether or not they require construction as
`means-plus-function terms under 35 U.S.C. § 112 ¶ 6. In the Institution
`Decision, we determined that the processor terms do not contain the word
`“means” and are not presumptively subject to section 112, paragraph 6. See
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc
`in relevant part). Inst. Dec. 8–9. The presumption against means-plus-
`function construction was not overcome and no further construction was
`required. Id. at 10.
`Patent Owner and Petitioner agree with the Institution Decision’s
`determination that construction of the “processor terms” is not required. PO
`Resp. 24; Pet. Reply 16. We, therefore, maintain our determination from the
`Institution Decision that the “processor terms” are not means-plus-function
`terms and construction is not required. Furthermore, the “processor terms”
`are not disputed and for that additional reason construction is not required.
`3.“other than” (claims 37 and 10)
`With respect to claim 37, the “other than” limitation in its entirety
`recites “providing channel information for at least one of the other
`component carriers of the plurality of component carriers other than the
`
`9
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`selected component carrier of the plurality of component carriers.”10 In the
`Institution Decision, we determined that “[t]he plain and ordinary meaning
`of the claim language does not preclude inclusion of channel information for
`the selected component carrier; rather, it requires channel information about
`another component carrier, but does not limit the claim to providing only
`that information.” Inst. Dec. 11. We rejected Patent Owner’s proposed
`construction that the “other than” limitation means “excluding the selected
`component carrier.” Id. (citing Prelim. Resp. at 18–19) (emphasis added).
`In its Response, Patent Owner again contends that we “should
`construe ‘other than’ as ‘exclusive of,’ which is the plain, ordinary, and
`reasonable meaning of this phrase.” PO Resp. 15–16 (citing Exhibit 2002
`¶ 29). Petitioner argues our preliminary construction is correct and is both
`supported by the plain and ordinary meaning of “other than” and consistent
`with the specification. Pet. Reply 3.
`Patent Owner argues that it “did not imply or assert that claims 37 and
`10, as a whole, would exclude any channel information concerning the
`selected downlink component carrier.” PO Resp. 16. Rather, it argues that
`the independent claims, 28 and 1, recite a first form of channel information
`directed to the “selected downlink component carrier,” and the dependent
`claims, 37 and 10, relate to “channel information with respect to one or more
`other component carriers, exclusive of the selected downlink component
`carrier.” Id. Patent Owner supports its position with the Kesan Declaration
`and a dictionary definition of “other than” as meaning “exclusive of.” Id. at
`
`
`10 Method claim 37’s language is reproduced here. Claim 10’s language is
`similar but written in the context of an apparatus claim. See supra
`Section I.C.
`
`10
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`17 (citing Merriam-Webster’s Collegiate Dictionary, 821 (“other than”)
`(10th ed. 2000) (Ex. 2003); Ex. 2002 ¶¶ 30–31). Patent Owner contends that
`the “second channel information” of the dependent claims “cannot include
`channel information about the selected component carrier because it is for
`‘at least one component carrier other than the selected component carrier.’”
`Id. at 18 (citing Ex. 2002 ¶ 34).
`Patent Owner argues its “exclusive of” construction for “other than” is
`supported by the ’472 patent Specification, which states the “‘common
`nominator for all the alternative [embodiments] is that they provide a way to
`indicate for which DL CC the detailed frequency selective CSI report is
`derived’ and in addition ‘wideband reports for other DL CC in the DL CC
`monitoring set can be reported simultaneously.’” PO Resp. 19 (citing
`Ex. 1001, 4:62–67; Ex. 2002 ¶ 35). Relying on the Kesan Declaration and
`Figure 3 of the ’472 patent, Patent Owner describes the method of
`independent claim 28 as including “a plurality of component carriers BW1,
`BW2, BW3, BW4, and BW5.” Id. at 19–20 (citing Ex. 1001, Fig. 3;
`Ex. 2002 ¶ 36). Patent Owner summarizes the claim 28 steps as “receiving,
`determining, establishing and sending channel information with respect to
`the selected downlink component carrier BW1.” Id. at 20 (citing Ex. 2002
`¶ 36). Patent Owner concludes that dependent claim 37 includes the steps of
`its independent claim but requires the “other than” limitation “in addition.”
`Id. at 20–22 (citing Ex. 2002 ¶¶ 39–40; Ex. 2004, 76:9–18). Patent Owner
`concludes that the “other than” limitation of dependent claims 37 and 10
`should be construed as “providing channel information for at least one of the
`other component carriers of the plurality of component carriers exclusive of
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`the selected component carrier of the plurality of component carriers.” Id. at
`23–24 (citing Ex. 2002 ¶ 41).
`We are not persuaded by Patent Owner’s arguments and maintain our
`preliminary construction of the “other than” limitation. Patent Owner’s
`proposed construction does not address our preliminary determination that
`the “other than” limitation in dependent claims 37 and 10 “requires channel
`information about another component carrier, but does not limit the claim to
`providing only that information.” Inst. Dec. 11 (emphasis added). In other
`words, dependent claims 37 and 10 can include the channel information
`about both the selected downlink component carrier and the other
`component carriers.
`The specification supports our construction. Patent Owner cites to the
`specification as supporting that dependent claim 37 includes the steps of its
`independent claim 28 but requires the “other than” limitation “in addition.”
`Prelim. Resp. 20–22; see also Pet. Reply 3–4 (arguing claim 37’s recited
`channel about the other component carriers is “in addition” to channel
`information about the selected component carrier). That channel
`information of the other component carriers is “in addition” to the channel
`information of the selected downlink component carrier does not exclude the
`latter and is contrary to Patent Owner’s “exclusive of” construction. For
`example, the specification states that
`The common nominator for all the alternatives is that they
`provide a way to indicate for which DL CC the detailed
`frequency selective CSI report is derived.
` Additionally
`wideband reports for other DL CC in the DL CC monitoring set
`can be reported simultaneously.
`Ex. 1001, 4:63–67 (emphasis added); see also Pet. Reply 6 (citing Ex. 1001,
`3:35–39 (“aperiodic channel information (e.g., CSI) report for some specific
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`DL CC (plus potentially some coarse wideband CSI for other CCs)
`(emphasis added)). We agree with Petitioner that “claims 10 and 37
`encompass providing channel information about all component carriers
`‘simultaneously’ or ‘together’ without excluding the selected component
`carrier.” See Pet. Reply 7–10.
`We find Patent Owner’s arguments to be circular. On the one hand,
`Patent Owner argues that its construction “would not exclude any channel
`information concerning the selected downlink component carrier” of
`claim 28. PO Resp. 16 (emphasis added); see also Tr. 22:1–5 (Patent
`Owner’s construction does not “exclude the selected component carrier”).
`On the other hand, Patent Owner’s construction states that the “other than”
`limitation means “exclusive of the selected component carrier of the plurality
`of component carriers.” PO Resp. 23–24 (emphasis added).
`Patent Owner tries to reconcile the inconsistency by arguing the
`channel information for the other component carriers of claim 37 is
`“distinct” from the selected downlink channel component carrier of
`claim 28. This argument merely restates the difference between claim 28
`and claim 37. That claims 28 and 37 recite distinct channel information
`does not mean that the claim 28 channel information is “excluded.” Nor
`does the argument explain why our preliminary construction of the “other
`than” limitation should change.
`At the Final Hearing, Patent Owner understood that the dependent
`claims 10 and 37 include all the limitations of claims 1 and 28 from which
`they depend. Tr. 29:9–25. Patent Owner contended the dependent claims
`recite “a subset of the plurality of component carriers ‘other than’ the
`selected component carrier.” Id. at 29:13–25. The contention does not
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`explain how Patent Owner’s construction “excludes” what is recited in
`independent claim 28. None of Patent Owner’s arguments establish that our
`preliminary construction is wrong or why the “other than” limitation
`requires us to exclude the selected downlink component carrier.
`Patent Owner’s dictionary evidence is neither relevant nor persuasive
`because, as here, “the ordinary meaning of claim language as understood by
`a person of skill in the art may be readily apparent even to lay judges, and
`claim construction in such cases involves little more than the application of
`the widely accepted meaning of commonly understood words.” Phillips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Further, unlike here, the
`usefulness of dictionaries, and especially technical dictionaries, is most
`beneficial where we “endeavor to collect the accepted meanings of terms
`used in various fields of science and technology.” Phillips, 415 F.3d at
`1318. Similarly, Patent Owner’s proffered expert testimony is of no
`assistance in discerning how to construe the “other than” limitation. None of
`the testimony from the expert declarations of either party is relevant to the
`construction issue because we rely on the plain and ordinary meaning of
`“other than.”
`We agree with Petitioner that claim 37, a claim that includes the
`transitional word “comprising,” is open ended. Pet. Reply 5 (citing
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). As
`Petitioner argues, “providing information for at least one component carrier
`‘other than’ the selected component carrier is essential, but a method that
`additionally provides other channel information still falls within the scope of
`the claim.” Id. We agree with Petitioner’s arguments and supporting
`evidence that the channel information provided for the “other” component
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`carriers compared to the selected downlink component carrier: (i) need not
`be a different type; (ii) does not require a different request; and (iii) does not
`have to be provided at a different time. Id. at 14; see also id. at 10–16
`(detailing the arguments and evidence).
`C. Obviousness Analysis
`Petitioner alleges claims 1, 10, 11, 14, 28, 37, 38, and 41 would have
`been obvious to a person of ordinary skill in the art over Seo. Pet. 15–46.
`Petitioner cites the Haas Declaration in support of its positions. See
`Ex. 1003 ¶¶ 34–46 (including claim chart).
`1. Law of Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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. See 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
`nonobviousness.11 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`2. Level of Ordinary Skill
`In the Institution Decision, we found that
`a person of ordinary skill in the art would include someone who
`had, at the priority date of the ’472 patent, a B.S. degree in
`
`11 Patent Owner has not presented any objective evidence of
`nonobviousness.
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`Electrical Engineering, Computer Engineering, or Computer
`Science, or equivalent training as well as at least three years of
`technical experience
`in
`the
`field of wireless cellular
`communication systems and networks.
`Inst. Dec. 11–12 (citing Ex. 1003 ¶ 14). Patent Owner does not contest this
`finding in its Response. We maintain our finding on the level of ordinary
`skill for purposes of this Decision.
`2. Seo (Exhibit 1005)
`Seo describes a “method for transmitting control information to
`request a Channel Quality Indicator (CQI) in a wireless communication
`system supporting a plurality of transmission bands.” Ex. 1005, Abstract.
`Seo describes “[h]ow to report . . . CQI in the multi-carrier system” without
`unnecessarily “increas[ing] overhead.” Id. at 5:36–37, 14:28–29.
`A Component Carrier (“CC”) is an element of the multi-carrier in that
`“a plurality of CCs form the multi-carrier by carrier aggregation.” Ex. 1005,
`5:18–20, 5:24–25. A “multi-carrier is called a whole band, a CC may be
`referred to as a subband.” Id. at 5:26–28.
`Figure 9, depicting Seo’s Embodiment 2, is reproduced below.
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`Figure 9 shows the “structure of control information fields including a CQI
`request field and a CQI transmission method.” Id. at 15:14–17. When the
`control information fields’ 1-bit CQI request field is set to 1, a CQI report is
`requested. Id. at 15:17–19. When the control information is received, “the
`UE transmits a CQI for a downlink CC, CC B in which it has received a
`PDCCH12 carrying the uplink grant in an uplink CC scheduled by the uplink
`grant.” Id. at 15:19–23. “This exemplary embodiment offers the benefits of
`still using a conventional signal format and reducing signaling overhead
`. . . .” Id. at 15:23–25.
`Figure 12 of Seo is reproduced below.
`
`
`Figure 12 illustrates Embodiment 5 where “control information fields may
`include [a] 1 bit field for indicating [a] CQI request of [an] individual CC
`which is indicated implicitly by the method of Embodiment 2” and a “1 bit
`field for requesting CQIs for whole CCs (i.e., CQI request for one shot
`whole CC in FIG. 12), respectively.” Ex. 1005, 16:33–38. Seo explains that
`a “one shot whole” is for the “whole CCs,” i.e., all of the component
`carriers. Id. at 16:6–14, Fig. 11.
`In Embodiment 2, the control information field 1-bit request field is
`set to 1 to request a CQI report for a downlink CC. Ex. 1005, 15:14–23,
`Fig. 9. Embodiment 2, therefore, implicitly represents a state where the
`1-bit request is for an individual CC. Id. at 16:39–44. A state for “no CQI
`
`12 This is an abbreviation for “Physical Downlink Control Channel.” See
`Ex. 1001, 1:32; Ex. 1011 ¶ 3.3.
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`request” and for “one-shot whole CC” also may be indicated. Id. The one
`shot whole configuration is shown in Figure 12 and Embodiment 5 where
`Embodiment 2 is “modified so that CQIs for entire CCs are requested on one
`PDCCH.” Id. at 16:25–27. In Embodiment 5, a separate 1-bit field is used
`for “requesting CQIs for whole CCs (i.e., CQI request for one shot whole
`CC in Fig. 12).” Id. at 16:36–38.
`3. Claims 1 and 28
`Petitioner’s arguments and evidence that the challenged claims are
`unpatentable over Seo are discussed below. Petitioner begins with method
`claim 28 and apparatus claim 1, which “recites additional structural elements
`not found in claim 28.” Pet. 21.13 Unless otherwise indicated, Patent Owner
`does not dispute Petitioner’s showing.
`Petitioner begins its analysis with method claim 28. Pet. 21–33.
`Limitation 28.0 states the claim is “[a] method comprising.” We do not find
`the preamble is limiting; nonetheless, Petitioner asserts it is disclosed by
`Seo’s teaching of a wireless communication system including a UE and a BS
`where CQI information is generated for one downlink control channel of a
`plurality of downlink transmission bands. Id. at 21 (citing Ex. 1005,
`Abstract, 6:38–49). Figure 9 is cited by Petitioner as showing “a CQI
`transmission method in the multi-carrier system.” Id. at 21–22 (citing
`Ex. 1005, 7:34–37, Fig. 9; Ex. 1003, 52–5314).
`
`
`13 The Petition’s format uses the claim number followed by a decimal,
`followed by a number indicating a claim limitation. For example, “28.0” is
`the preamble of claim 28, and “28.1” is the first claim limitation of claim 28.
`See Pet. 21–22. We follow Petitioner’s convention.
`14 Petitioner cites pages 52–53 of the Haas Declaration, which are portions
`of the claim charts that follow paragraph 46. Page citations to the Haas
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`Limitation 28.1 recites “receiving a request for providing aperiodic
`channel information with respect to a selected downlink component carrier
`of a plurality of component carriers.” Petitioner argues that limitation 28.1
`is disclosed by Seo. Pet. 25 (citing Ex. 1003, 53–57). First, Seo describes a
`“wireless communication system supporting a plurality of transmission
`bands,” which Petitioner argues constitute a “plurality of component
`carriers.” Id. at 22 (citing Ex. 1005, 6:38–40); see also id. at 23 (citing an
`annotation of Fig. 9 (“Plurality of downlink component carriers (CC)”)).
`As to “receiving a request,” Petitioner argues Seo’s UE “includes a
`receiver for receiving from a BS [base station] control information, which
`includes CQI request information requesting CQI reporting.” Pet. 23
`(citing Ex. 1005, 6:39–44). Petitioner argues “[t]he CQI request received by
`the UE is for a ‘specific downlink CC’ within the plurality of component
`carriers.” Id. (citing Ex. 1005, 15:25–28, 14:30–32). Relying on its
`annotation of Figure 9 at page 24 of the Petition, Petitioner concludes a
`person of ordinary skill in the art would understand that a CQI request for
`channel information about one component carrier is illustrated. Id. at 23–24
`(citing Ex. 1005, second annotated Fig. 9; Ex. 1003, 54).
`Petitioner argues Seo teaches the recited “aperiodic” or non-periodic
`reporting because the channel information is sent “at the request of the base
`station (i.e., the transmission of CQI is triggered by the base station)” and is
`therefore “aperiodic.” Pet. 24 (citing Ex. 1005, 14:22–27; Ex. 1003, 56–57).
`Petitioner cites to the ’472 patent for its disclosure that “in contrast to a
`periodic CSI report, an aperiodic CSI report is sent by the UE when it is
`
`
`Declaration are only for claim chart citations. Paragraphs of the Haas
`Declaration are cited by paragraph number.
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`triggered to do so.” Id. (citing Ex. 1001, 3:7–9). We agre
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