Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC.
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC
`Patent Owner.
`
`____________
`
`Case No. IPR2016-_____
`
`U.S. Patent No. 9,025,590
`
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,025,590
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
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`

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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`
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`INTRODUCTION ........................................................................................... 5
`I.
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(B)) .......................................... 5
`A.
`REAL PARTIES IN INTEREST (37 C.F.R. § 42.8(B)(1)) .................................... 5
`B.
`RELATED MATTERS (37 C.F.R. § 42.8(B)(2)) ................................................ 5
`C.
`LEAD AND BACK-UP COUNSEL (37 C.F.R. § 42.8(B)(3)) .............................. 5
`D.
`SERVICE INFORMATION (37 C.F.R. § 42.8(B)(4)) .......................................... 6
`FEE FOR INTER PARTES REVIEW ..................................................................... 6
`E.
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................ 6
`IV.
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B)) .................. 6
`A.
`IDENTIFICATION OF PRIOR ART ..................................................................... 6
`B.
`STATUTORY GROUNDS ON WHICH THE CHALLENGE IS BASED .................... 13
`V. OVERVIEW OF THE ’590 PATENT .......................................................... 14
`A.
`BACKGROUND ............................................................................................. 14
`B.
`THE ’590 PATENT ........................................................................................ 17
`C.
`THE PRIOR ART ........................................................................................... 18
`1.
`U.S. Patent No. 8,351,359 (“Heo”) ........................................................ 18
`2.
`U.S. Patent No. 8,537,767 (“Zhang”) ..................................................... 21
`D.
`PROSECUTION HISTORY OF THE ’590 PATENT .............................................. 22
`VI. RELATED PATENT U.S. 8,848,556 ........................................................... 23
`VII. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3)) .............................. 25
`A.
`“BITMAP” (CLAIMS 1-2, 5-6, AND 9-10) / “A BITMAP INDICATING POWER
`HEADROOM REPORTS BEING REPORTED” (CLAIMS 1, 5) / “A BITMAP THAT
`INDICATES POWER HEADROOM REPORTS BEING REPORTED” (CLAIM 9) ........ 26
`“TYPE 1 POWER HEADROOM REPORT” / “TYPE 2 POWER HEADROOM
`REPORT” (CLAIMS 3, 7, 11) .......................................................................... 28
`“CELL” (CLAIMS 1, 5, 9) / “SERVING CELLS” (CLAIMS 3, 7, 11) .................... 28
`C.
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 29
`
`B.
`
`
`
`

`
`1.
`2.
`3.
`4.
`
`B.
`
`C.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`IX. GROUNDS OF UNPATENTABILITY ........................................................ 30
`A. GROUND 1: CLAIMS 1-2, 5-6, AND 9-10 ARE RENDERED OBVIOUS BY
`HEO UNDER 35 U.S.C. § 103(A).................................................................. 30
`Independent claim 1 of the ’590 patent is rendered obvious by Heo ..... 31
`Independent claim 5 of the ’590 patent is rendered obvious by Heo ..... 37
`Independent claim 9 of the ’590 patent is rendered obvious by Heo ..... 39
`Dependent claims 2, 6, and 10 of the ’590 patent are rendered
`obvious by Heo ....................................................................................... 40
`GROUND 2: CLAIMS 3, 7, AND 11 ARE RENDERED OBVIOUS BY HEO
`ALONE OR IN COMBINATION WITH PELLETIER UNDER 35 U.S.C. §
`103(A) ......................................................................................................... 41
`GROUND 3: CLAIMS 1-3, 5-7, AND 9-11 RENDERED OBVIOUS BY ZHANG
`UNDER 35 U.S.C. § 103(A) ......................................................................... 47
`Independent claim 1 of the ’590 patent is rendered obvious by
`Zhang ...................................................................................................... 47
`Independent claim 5 of the ’590 patent is rendered obvious by
`Zhang ...................................................................................................... 57
`Independent claim 9 of the ’590 patent is rendered obvious by
`Zhang ...................................................................................................... 59
`Dependent claims 2, 6, and 10 of the ’590 patent are rendered
`obvious by Zhang .................................................................................... 61
`Dependent claims 3, 7, and 11 of the ’590 patent are rendered
`obvious by Zhang .................................................................................... 63
`D. GROUND 4: CLAIMS 5-7 AND 9-11 ARE RENDERED OBVIOUS BY ZHANG
`IN COMBINATION WITH HEO UNDER 35 U.S.C. § 103(A)............................. 67
`CONCLUSION .............................................................................................. 69
`X.
`CERTIFICATE OF SERVICE ................................................................................ 70
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24 .............................. 71
`
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`ii
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit No.
`
`Document
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
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`U.S. Patent No. 9,025,590 (“the ’590 patent”)
`
`Prosecution History of Application No. 14/500,398, which
`matured into the ’590 patent
`
`U.S. Patent No. 8,848,556 (“the ’556 patent”)
`
`Memorandum Opinion and Order regarding claim
`construction for the ’556 patent, D.I. 206, from Case No.
`6:14-cv-00982 (E.D. Tex.)
`
`U.S. Patent No. 8,351,359 (“Heo”)
`
`U.S. Provisional Patent Application No. 61/180,652
`(including file history) (“Heo Prov.-A”)
`
`U.S. Provisional Patent Application No. 61/303,920
`(including file history) (“Heo Prov.-B”)
`
`U.S. Provisional Patent Application No. 61/320,211
`(including file history) (“Heo Prov.-C”)
`
`U.S. Patent Application No. 2010/0111023 (“Pelletier”)
`
`U.S. Patent No. 8,537,767 (“Zhang”)
`
`U.S. Provisional Patent Application No. 61/282,813
`(including file history) (“Zhang Prov.-A”)
`
`U.S. Provisional Patent Application No. 61/344,237
`(including file history) (“Zhang Prov.-B”)
`
`U.S. Provisional Patent Application No. 61/410,655
`(including file history) (“Zhang Prov.-C”)
`
`
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`iii
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`Exhibit No.
`
`Document
`
`
`
`
`
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Declaration of Mark Lanning (“Lanning Decl.”)
`
`Plaintiff’s Reply Brief on Claim Construction regarding the
`’556 patent, D.I. 160, from Case No. 6:14-cv-00982 (E.D.
`Tex.)
`
`Patent Owner Response in Sony Mobile Commc’ns (USA)
`Inc. v. Cellular Commc’ns Equip. LLC, IPR2015-01716,
`Paper 8.
`
`Patent Owner Response in LG Elec., Inc. v. Cellular
`Commc’ns Equip. LLC, IPR2016-00197, Paper 6
`
`Portions of Dahlman, et al., 3G Evolution: HSPA and LTE
`for Mobile Broadband (2d Ed. 2008).
`
`3GPP TSG-RAN WG2 Meeting #67bis, R2-095888 (Oct.
`2009)
`
`3GPP TSG RAN WG2 #67bis, R2-095670 (Oct. 2009)
`
`3GPP TS 36.321, v8.7.0 (Sept. 2009)
`
`
`
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`
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`iv
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`I.
`
`INTRODUCTION
`
`
`
`
`Petitioners Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`
`(“Petitioners”) respectfully request inter partes review of claims 1-3, 5-7, and 9-11
`
`(the “challenged claims”) of U.S. Patent No. 9,025,590 (“the ’590 patent,”
`
`Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(b))
`A. Real Parties In Interest (37 C.F.R. § 42.8(b)(1))
`Telefonaktiebolaget LM Ericsson and Ericsson Inc. are the real parties-in-
`
`interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’590 patent is asserted in the following co-pending litigations, all in the
`
`District Court for the Eastern District of Texas.
`
`2:15-cv-00576-RWS-RSP
`
`Cellular Communications Equipment LLC v.
`AT&T Inc. et al.
`Cellular Communications Equipment LLC v.
`Sprint Corporation et al.
`Cellular Communications Equipment LLC v.
`T-Mobile USA, Inc. et al.
`Cellular Communications Equipment LLC v.
`Verizon Communications, Inc. et al.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`Lead counsel: Jacob K. Baron (Reg. No. 48,961; Jacob.Baron@hklaw.com).
`
`2:15-cv-00579-RWS-RSP
`
`2:15-cv-00580-RWS-RSP
`
`2:15-cv-00581-RWS-RSP
`
`Back-up counsel: Allison M. Lucier (Reg. No. 70,205;
`
`Allison.Lucier@hklaw.com).
`
`
`
`

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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`
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`The mailing address for all PTAB correspondence is Holland & Knight LLP,
`
`10 St. James Ave., 11th Floor, Boston, MA 02116.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Please address all correspondence to lead counsel at the address above.
`
`Petitioners consent to electronic service at: Jacob.Baron@hklaw.com and
`
`clientteam-cce-ericsson@hklaw.com.
`
`Fee for Inter Partes Review
`E.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 50-2324.
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ’590 patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
`
`from requesting inter partes review based on the grounds identified herein.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
`A.
`The ’590 patent claims priority to U.S. Provisional Application
`
`Identification of Prior Art
`
`No. 61/356,867, filed June 21, 2010. Petitioners do not concede that the
`
`challenged claims are entitled to the benefit of that provisional application.
`
`Nevertheless, the art identified by Petitioners antedates June 21, 2010.
`
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`Ex. 1005 – U.S. Patent 8,351,359 (“Heo”) was filed on May 21, 2010, and is
`
`prior art to the ’590 patent under 35 U.S.C. § 102(e) based on the filing date of its
`
`non-provisional application. As discussed below, the Board instituted IPR2015-
`
`01716, recognizing that Heo is prior art to related patent U.S. 8,848,556, which
`
`claims priority to the same provisional application as the ’590 Patent. See Sony
`
`Mobile Commc’ns (USA) Inc. v. Cellular Commc’ns Equip. LLC, IPR2015-01716,
`
`Paper 11.
`
`Heo also claims priority to three provisional applications (Ex. 1006, U.S.
`
`Provisional Patent Application No. 61/180,652, filed May 22, 2009; Ex. 1007, U.S.
`
`Provisional Patent Application No. 61/303,920, filed February 12, 2010; Ex. 1008,
`
`U.S. Provisional Patent Application No. 61/320,211, filed April 1, 2010). Though
`
`priority to these provisional applications is not necessary for Heo to be prior art to
`
`the ’590 patent, citations to the provisional applications are provided. As shown in
`
`the chart below (see also Ex. 1014, Lanning Decl. Appendix C), claims of Heo are
`
`fully supported by the Heo provisional applications. Should the Patent Owner seek
`
`to antedate the filing date of the non-provisional application of the Heo patent, Heo
`
`is also prior art to the ’590 patent under 35 U.S.C. § 102(e) based on the filing date
`
`of any of the Heo provisional applications. Dynamic Drinkware LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).
`
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`
`Claim 1 of Heo
`A method for reporting
`power headroom-related
`information for a plurality of
`aggregated carriers,
`comprising:
`
`reporting in a media access
`control (MAC) control
`element power headroom-
`related information for a
`number of the aggregated
`carriers that is less than or
`equal to the total number of
`aggregated carriers, wherein
`the power headroom-related
`information is one of a
`power headroom for at least
`one of the aggregated
`carriers and a path loss for at
`least one of the aggregated
`carriers; and
`
`reporting in the MAC control
`element a bitmap, each bit in
`the bitmap corresponding to
`one of the aggregated
`carriers, one value in the
`bitmap indicating that the
`power headroom-related
`information for a
`corresponding carrier is
`
`
`
`
`
`
`Disclosure in Heo Provisionals
`Ex. 1008 Fig. 12; [0018] (“Figure 12 is a
`diagram illustrating a method for reporting
`power headroom-related information for a
`plurality of aggregated carriers according to an
`embodiment of the disclosure.”).
`
`
`
`Ex. 1006 [0017]; Ex. 1007 [0018].
`
`Ex. 1008 [0033] (“the number of carriers for
`which the PH or PH-related information is
`reported is less than or equal to the total
`number of configured carriers.”); [0039] (“a
`UA could transmit a PH report to an access
`node via RRC signaling or via MAC control
`elements.”); [0047] (“a UA transmits the PH
`or the path loss of one reporting carrier.”).
`
`Ex. 1006 [0032]; [0034]; [0046]; Ex. 1007
`[0033]; [0035]; [0047].
`
`Ex. 1008 [0059] (“there are five reporting
`carriers, so the bitmap 910 includes five bits.
`The bit in the kth position indicates whether or
`not the PH value of the kth carrier is included
`in the control element 900. For example, ‘1’
`may mean that the corresponding PH value is
`included, while ‘0’ may mean that the PH
`value is not included.”).
`
`Ex. 1006 [0058]; Ex. 1007 [0059].
`
`
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`
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`Disclosure in Heo Provisionals
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`Claim 1 of Heo
`being reported, and another
`value in the bitmap
`indicating that the power
`headroom-related
`information for a
`corresponding carrier is not
`being reported.
`
`
`
`Ex. 1009 – U.S. Patent Application No. 2010/0111023 (“Pelletier”) is based
`
`on U.S. Patent Application No. 12/610,289, filed on October 31, 2009, was
`
`published on May 6, 2010, and is prior art to the ’590 patent under 35 U.S.C.
`
`§ 102(a) as of its publication date and under 35 U.S.C. § 102(e) based on the filing
`
`date of the non-provisional application.
`
`Ex. 1010 – U.S. Patent 8,537,767 (“Zhang”) was filed on April 5, 2011, and
`
`seeks priority to three provisional applications: Ex. 1011, U.S. Provisional Patent
`
`Application No. 61/282,813 (“Zhang Prov.-A”), filed April 6, 2010; Ex. 1012,
`
`U.S. Provisional Patent Application No. 61/344,237 (“Zhang Prov.-B”), filed June
`
`17, 2010; and Ex. 1013, U.S. Provisional Patent Application No. 61/410,655
`
`(“Zhang Prov.-C”), filed November 5, 2010. As shown in the chart below (see
`
`also Ex. 1014, Lanning Decl. Appendix C), claims of Zhang are fully supported by
`
`Zhang Prov.-A and Zhang Prov.-B. Accordingly, Zhang is prior art to the ’590
`
`patent under 35 U.S.C. § 102(e) based on the filing date of at least Zhang Prov.-B.
`
`
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`Dynamic Drinkware, 800 F.3d at 1381. Should the Patent Owner seek to antedate
`
`
`
`
`
`
`Zhang Prov.-B, Zhang is also prior art to the ’590 patent under 35 U.S.C. § 102(e)
`
`based on the filing date of Zhang Prov.-A.
`
`Disclosure in Zhang Provisionals
`Ex. 1012 3 (“PHR procedure for simultaneous
`transmission of PUCCH and PUSCH”); Ex.
`1011 14-15.
`
`
`
`“The UE has
`UL resource
`for new
`transmission”
`
`
`
`Claim 1 of Zhang
`A method for performing
`Power Headroom reporting
`procedure, adapted for a user
`equipment, wherein the user
`equipment is configured with
`simultaneous transmission of
`a physical uplink control
`channel and a physical
`uplink shared channel, a
`power headroom report
`comprising a type 1 power
`headroom and a type 2
`power headroom, the method
`comprising:
`
`determining whether the user
`equipment has uplink
`resources for new
`transmission;
`
`Ex. 1012 Fig. 6; Ex. 1011 Fig. 2.
`
`
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`10
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`

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`Disclosure in Zhang Provisionals
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`
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`
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`“At least one
`PHR has been
`triggered … “
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`Claim 1 of Zhang
`when the user equipment has
`uplink resources for new
`transmission, determining
`whether the power headroom
`report has been triggered;
`and
`
`when the power headroom
`report has been triggered,
`transmitting the type 1 power
`headroom and the type 2
`power headroom together
`wherein the type 1 power
`headroom and the type 2
`power headroom are carried
`by a power headroom report
`medium access control-
`control element comprising:
`
`type 1 power headroom field,
`for indicating a type 1 power
`headroom level wherein the
`type 1 power headroom level
`is obtained from a quantized
`value of a type 1 power
`headroom, wherein the type
`
`Ex. 1012 Fig. 6; see also Ex. 1011 Fig. 2.
`
`“If the triggering for PUCCH related PHR and
`PUSCH related PHR is independent, Type 2
`PHR can be always reported together with
`Type I PHR no matter whether a Type 1 PHR
`is triggered or not.” Ex. 1012 35.
`
`“Type 1 PHR and Type 2 PHR can be
`included in the same PHR MAC CE ….” Ex.
`1012 9.
`
`“In this alternative, Type 1 PHR and Type 2
`PHR are included in the same PHR MAC CE,
`and transmitted if the MAC CE plus its
`subheader could be accommodated into the
`corresponding UL resource.” Ex. 1012 23.
`
`Ex. 1011 8-9; 14-15.
`
`“Type 1 PHR is computed as: P_cmax minus
`PUSCH [physical uplink shared channel]
`power.” Ex. 1012 3.
`
`“So the PHR MAC CE should contain the
`information of both Type 1 PHR and Type 2
`PHR for PCC [primary carrier component] as
`
`
`
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`11
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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`
`Claim 1 of Zhang
`1 power headroom is
`determined by a physical
`uplink shared channel power
`of a primary cell;
`
`type 2 power headroom field,
`for indicating a type 2 power
`headroom level, wherein the
`type 2 power headroom level
`is obtained from the
`quantized value of power
`headroom, wherein the type
`2 power headroom is
`determined by the physical
`uplink shared channel power
`and a physical uplink control
`channel power of the primary
`cell;
`
`wherein the power headroom
`report media access control-
`control element is used for
`reporting the type 1 power
`headroom level and the type
`2 power headroom level to a
`network node.
`
`
`
`
`
`
`Disclosure in Zhang Provisionals
`well as PHR for other UL SCCs.” Ex. 1012
`23.
`
`Ex. 1011 14-15.
`
`“Type 2 PHR is computed as: P_cmax minus
`PUCCH [physical uplink control channel]
`power minus PUSCH [physical uplink shared
`channel] power.” Ex. 1012 3.
`
`“So the PHR MAC CE should contain the
`information of both Type 1 PHR and Type 2
`PHR for PCC [primary carrier component] as
`well as PHR for other UL SCCs.” Ex. 1012
`23.
`
`Ex. 1011 14-15.
`
`“In this alternative, Type 1 PHR and Type 2
`PHR are included in the same PHR MAC CE,
`and transmitted if the MAC CE plus its
`subheader could be accommodated into the
`corresponding UL resource.” Ex. 1012 23.
`
`“As a consequence of the second mechanism,
`the network would need knowledge of the
`PUCCH contribution to the current UE
`transmission power in order to schedule data
`on the PUSCH. Therefore, the PUCCH
`should be considered when PHR is reported.”
`Ex. 1012 3.
`
`“Otherwise the network only expecting the
`MAC CE containing both Type 1 PHR and
`
`
`
`
`12
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
`
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`Claim 1 of Zhang
`
`
`
`
`
`
`Disclosure in Zhang Provisionals
`Type 2 PHR may receive only a Type 1 PHR
`surprisingly.” Ex. 1012 15.
`
`Ex. 1012 3, 5, 26; Ex. 1011 1, 14-15.
`
`
`
`Heo and Pelletier were not cited during the prosecution of the ’590 patent,
`
`and are not cumulative of any prior art that was considered. During prosecution of
`
`the ’590 Patent, however, the examiner relied on the Zhang application (U.S.
`
`Published Application No. 2011/0243016) to reject certain claims. Specifically,
`
`the examiner found that Zhang taught all but one claim element of the claims that
`
`issued as claims 1, 5, and 9 of the ’590 patent. Ex. 1002 at p.216. As discussed
`
`below in Section IX.C.1.f, Petitioners believe the examiner overlooked the
`
`presence of that one claim element. Indeed, Zhang discloses all elements of the
`
`challenged claims of the ’590 patent.
`
`B.
`
`Statutory Grounds on Which the Challenge is Based
`
`#
`
`Claims
`
`35 U.S.C. §
`
`Prior Art
`
`1 1, 2, 5, 6, 9, 10
`
`2 3, 7, 11
`
`3 1-3, 5-7, 9-11
`
`4 5-7, 9-11
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Heo
`
`Heo and Pelletier
`
`Zhang
`
`Zhang and Heo
`
`
`
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`Case No. IPR 2016-_____
`Petition for Inter Partes Review
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` The grounds raised are meaningfully distinct from each other and are not
`
`redundant. Heo and Zhang use slightly different wording to describe the same
`
`concepts, and the Patent Owner may try to distinguish the claim elements from
`
`either Heo or Zhang based on this wording. Further, the priority date for the Zhang
`
`reference is relatively close to the priority date of the ’590 patent, while the Heo
`
`reference can establish priority to an application filed over a year prior to the
`
`priority date of the ’590 patent. Accordingly, all grounds should be included for
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`trial.
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`V. OVERVIEW OF THE ’590 PATENT
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`A. Background
`The ’590 patent relates to telecommunications systems, specifically to power
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`headroom reporting in the carrier aggregation context. Ex. 1001, ’590 patent
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`Abstract. In telecommunications, user devices (or “user equipment” or “UEs”)
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`connect to wireless telecommunications networks by communicating with base
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`stations (or “eNodeB” or “eNB”) over frequency bands. Ex. 1005, Heo 1:23-2:15;
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`Ex. 1014, Lanning Decl. ¶23. Telecommunications standards have been developed
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`to facilitate interoperability of these devices from different manufacturers and
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`different countries. Ex. 1014, Lanning Decl. ¶24. Organizations, such as 3rd
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`Generation Partnership Project (3GPP), develop these standards. See, e.g., id.;
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`Ex. 1001, ’590 patent 1:31-34.
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`The purported invention of the ’590 patent relates to the introduction of
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`carrier aggregation arising from the shift from the LTE (Long Term Evolution)
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`standard to the LTE-A (Long Term Evolution Advanced) standard. Id. 1:17-19. It
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`was understood that carrier aggregation would be introduced with the new LTE-A
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`standard. Id.; see also Ex. 1010, Zhang 2:47-49; Ex. 1005, Heo 3:8-10; Ex. 1014,
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`Lanning Decl. ¶¶25-29. Carrier aggregation permits a UE to transmit or receive
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`information over multiple frequency bands (or “carriers” or “component carriers”
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`or “cells” or “serving cells,” discussed in more detail in Section VII.C), allowing
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`the UE to transmit or receive more data. Ex. 1001, ’590 patent 1:21-29; Ex. 1010,
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`Zhang 2:48-51; Ex. 1014, Lanning Decl. ¶26. For transmitting data on the uplink
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`to the network, a UE is assigned a single primary carrier and may be assigned
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`multiple secondary carriers. Ex. 1001, ’590 patent 4:37-48; Ex. 1014, Lanning
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`Decl. ¶31.
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`Power headroom is a measurement provided by the UE to the network so the
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`network can allocate uplink bandwidth to each UE in order to provide a more
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`efficient cellular network. Ex. 1014, Lanning Decl. ¶32-33. The power headroom
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`measurement represents the difference between the UE’s estimated required
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`transmit power level and its maximum transmit power level. Ex. 1005, Heo 3:23-
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`29; 3:46-49. This information is reported to the base station, which it uses when
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`managing the available resources among the UE’s connected to the base station.
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`Id. at 3:25-29; Ex. 1014, Lanning Decl. ¶33.
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`Prior to carrier aggregation, because a UE would communicate data over a
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`single carrier, it would provide a single power headroom report (message) for that
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`carrier. With the advent of carrier aggregation, it was recognized that providing
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`power headroom reports separately for multiple carriers would result in wasted
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`resources and increased overhead for the reports. Ex. 1014, Lanning Decl. ¶28.
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`Indeed, in that scenario, the base station would need to receive multiple, separate
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`reports in order to obtain power headroom information for multiple carriers.
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`Ex. 1001, ’590 patent 1:51-60; Ex. 1016, Sony Mobile, IPR2015-01716, Paper 8,
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`Patent Owner Response, at 2. Similarly, providing a single power headroom report
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`for all carriers would also result in wasted resources and increased overhead, since
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`the base station may not need reports for all carriers. Ex. 1010, Zhang 5:40-44;
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`6:1-6; Ex. 1001, ’590 patent 1:47-50; Ex. 1005, Heo 5:18-20. Thus, new methods
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`for reporting some, but not necessarily all, carriers at the same time were required.
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`Ex. 1001, ’590 patent 2:8-10; Ex. 1005, Heo 5:39-42; Ex. 1010, Zhang 2:47-60;
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`Ex. 1014, Lanning Decl. ¶28.
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`The concepts of power headroom reporting, carrier aggregation, and the
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`combination of the two, were known prior to the purported June 2010 priority date
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`of the ’590 patent, and the ’590 patent does not allege to have invented these
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`concepts. See, e.g., Ex. 1001, ’590 patent 1:31-50; Ex. 1014, Lanning Decl. ¶39.
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`See also Ex. 1014, Lanning Decl. ¶¶21-37.
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`The ’590 Patent
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`B.
`To resolve the problem discussed above, the ’590 patent describes the use of
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`a power headroom report control element, which allows a UE to report the power
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`headroom for multiple carriers in one report (message). Ex. 1001, ’590 patent 4:2-
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`17; Ex. 1016, Sony Mobile, IPR2015-01716, Paper 8, at
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`3. That power headroom report control element includes
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`a bitmap (i.e. a collection of bits, discussed in more detail
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`in Section VII.A) arranged to indicate whether a power
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`headroom report for a particular carrier is being reported
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`(highlighted in yellow in the figure on the left).
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`Ex. 1001, ’590 patent 2:28-30. For example, in one
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`embodiment, the ’590 describes that each bit in a bitmap can be linked to a
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`particular carrier (i.e. a primary carrier or a particular secondary carrier), and, by
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`using a “0” or “1,” the bits in the bitmap can indicate whether the power headroom
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`report for that carrier is being reported. Id. 5:9-28. The ’590 patent explains that
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`the bitmap could be placed in a media access control (MAC) subheader or in the
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`payload portion of the report (message).1 See, e.g., id. 6:1-5; Fig. 3 (in a sub-
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`header); Fig. 5 (in a payload).
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`The claims of the ’590 patent, however, are not limited to this embodiment
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`and are broadly directed to the use of a bitmap (i.e. a collection of bits) indicating
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`which carrier’s power headroom is being reported. As described in this petition,
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`this technique was widely and publicly known in the art prior to the alleged
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`invention of the ’590 patent.
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`C. The Prior Art
`U.S. Patent No. 8,351,359 (“Heo”)
`1.
`Like the purported invention of the ’590 patent, Heo discloses a method,
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`computer program, and apparatus for reporting power headroom for aggregated
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`carriers where a bitmap is used to indicate to the base station (eNB) which of the
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`carriers are reporting power headroom. Ex. 1005, Heo Abstract; 10:42-60.
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`With the shift from LTE to LTE-A discussed above, it was well known in
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`the art that carrier aggregation could be used to support increased data
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`1 A “MAC subheader” is information associated with certain transmitted data. For
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`example, the MAC subheader may contain information about the type of data
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`being sent or to where the data is being routed. The “payload” refers to the
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`transmitted data associated with the MAC subheader.
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`transmissions. Id. 3:8-10. With carrier aggregation came unique matters not
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`present in a non-aggregated environment. Heo notes that the power headroom
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`available may be different for each carrier, and therefore it may be necessary to
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`report power headroom for each carrier. Id. 5:14-18. Heo also notes that it may
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`not always be necessary to report on every carrier (id. 5:18-20), and recognizes that
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`reporting on every carrier would result in increased overhead (id. 5:18-19; 5:39-42;
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`10:45-51). Heo further notes that the UE can prioritize the anchor carrier over the
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`other non-anchor carriers. Id. 7:4-8; 8:45-49; 9:11-27.
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`Thus, to reduce overhead, the UE provides power headroom information for
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`less than or up to the total number of carriers. Id. 5:39-44; 10:48-51. In order to
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`determine whether a carrier should be reported, Heo discloses a number of possible
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`reporting triggers, such as including a report only for carriers having a power
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`headroom above a certain threshold. Id. 11:16-21. These triggers can be specified
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`by the base station (eNodeB or eNB). Id. 11:16-21.
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`Heo further teaches that to “indicate to the access node [i.e., base station or
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`eNB]2 which reporting carriers’ [power headroom] are being transmitted,
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`additional signaling, such as a bitmap, is included with a [power headroom]
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`2 Heo uses the term “UA” to refer to user equipment (id. 1:23-41) and the term
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`“access node” to refer to a base station or eNB (id. 1:51-60).
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`report.” Id. 10:56-60. As one example, Heo discloses that this bitmap could
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`contain the same number of bits as there are carriers, so that each bit corresponds
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`to a single carrier, and the bit in the kth position corresponds to the kth carrier. Id.
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`11:4-10. The value of the bit (i.e., either “0” or “1”) indicates whether the carrier
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`is reporting. Id. 11:10-12. For example, a bit value of “1” for the kth carrier would
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`indicate that it is reporting whereas a bit value of “0” would indicate that it is not.
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`Figure 9 of Heo, annotated below by Lanning, depicts one example of such a
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`bitmap:
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`As shown in Figure 9, the bitmap is located in a MAC control element (900)
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`and contains five bits, each corresponding to one of the five carriers. Id. 11:5-9.
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`The values of the bits in the bitmap are 10011, indicating the first, fourth, and fifth
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`carriers are reporting. Id. 11:12-14. The bitmap is followed by the power
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`headroom reports for those first, fourth, and fifth carriers. Id. 11:13-14. See also
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`Ex. 1006 [0058]; Ex. 1007 [0059]; Ex. 1008 [0059].
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`U.S. Patent No. 8,537,767 (“Zhang”)
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`2.
`Zhang discloses a method for reporting power headroom reports for
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`aggregated carriers where a bitmap is used to indicate to the base station (or eNB)
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`whether the power headroom reports for particular carriers are being reported. Ex.
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`1010, Zhang Abstract; 9:4-28; 17:57-18:25.
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`Like the Heo reference, Zhang recognizes that, with the shift from LTE to
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`LTE-A, the power headroom reporting used in LTE for a single carrier reporting
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`may be less than ideal for aggregated carriers. Id. 2:35-41. Specifically, Zhang
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`explains that “as the introduction of multi-carrier deployment has gradually
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`become the trend of future wireless communication design, the PHR
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`triggering/reporting for UEs supporting multi-carrier transmission would require
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`further consideration.” Id. 5:38-45; see also id. 2:47-53; Ex. 1011, Zhang Prov.-A
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`4.
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`Zhang offers a solution for power headroom reporting for multiple carriers.
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`Ex. 1010, Zhang 3:5-7. Zhang teaches the use of a MAC control element
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`containing a “Ci field,” where the Ci field “is used for indicating whether each
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`power headroom field of its corresponding activated serving cell is reported.” Id.
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`3:62-66. This MAC control element “is used for reporting each power headroom
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`level of the corresponding activated serving cells to a network node” (i.e., base
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