Trials@uspto.gov
`571-272-7822
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` Paper 33
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` Entered: February 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, and ZTE (USA), INC.,
` Petitioner,
`
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-014931
`Patent 8,457,676 B2
`____________
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. 318(a)
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
`Inc. filed a petition in (now terminated) IPR2017-01081, and have been
`joined to the instant proceeding.
`
`
`571-272-7822
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` Paper 33
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`
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` Entered: February 12, 2018
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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, and ZTE (USA), INC.,
` Petitioner,
`
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-014931
`Patent 8,457,676 B2
`____________
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. 318(a)
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
`Inc. filed a petition in (now terminated) IPR2017-01081, and have been
`joined to the instant proceeding.
`
`
`
`IPR2016-01493
`Patent 8,457,676 B2
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`
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`I. INTRODUCTION
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`Apple Inc., filed a Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C.
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`§§ 311–19 to institute an inter partes review of claims 1, 3, 19, and 21 (“the
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`challenged claims”) of U.S. Patent No. 8,457,676 B2 (“the ’676 patent,” Ex.
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`1001). Pet. 1. The Petition is supported by the Declaration of Zygmunt J.
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`Haas, Ph.D. (“Haas Declaration,” “Haas Dec.,” Ex. 1006). HTC
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`Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA), Inc.
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`(collectively “Petitioner”) were joined into this inter partes review and the
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`inter partes review was subsequently terminated as to Apple Inc. Papers 23,
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`26. Cellular Communications Equipment LLC (“Patent Owner”) filed a
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`Preliminary Response (“Prelim. Resp.,” Paper 6).
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`On February 13, 2017, we instituted an inter partes review of claims
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`1, 3, 19, and 21 the ’676 patent. Paper 7 (“Inst. Dec.”). Patent Owner filed
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`a Response. Paper 12 (“PO Resp.”). The Patent Owner’s Response is
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`supported by the Declaration of Jay P. Kesan, Ph.D. (“Kesan Declaration,”
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`“Kesan Dec.,” Ex. 2007). Petitioner filed a Reply. Paper 16 (“Reply”). An
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`oral hearing was held on November 8, 2017. Paper 31 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
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`follow, we determine that Petitioner has not shown by a preponderance of
`
`the evidence that claims 1, 3, 19, and 21 are unpatentable.
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`A. Related Matters
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`Patent Owner advises us that the following District Court lawsuits are
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`related to this proceeding: Cellular Communications Equipment LLC v.
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`2
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`IPR2016-01493
`Patent 8,457,676 B2
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`
`AT&T Inc., et al., 2:15-cv-00576 (E.D. Tex.); Cellular Commc’ns
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`Equipment LLC v. Sprint Corp. et al., 2:15-cv-00579 (E.D. Tex.); Cellular
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`Commc’ns Equipment LLC v. T-Mobile USA, Inc. et al., 2:15-cv-00580
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`(E.D. Tex.); and Cellular Commc’ns Equipment LLC v. Verizon Commc’ns,
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`Inc. et al., 2:15-cv-00581 (E.D. Tex.). Paper 5, 2. In addition, there is one
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`other inter partes review proceeding asserting unpatentability of the ’676
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`patent: HTC Corporation and HTC America, Inc. v. Cellular
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`Communications Equipment LLC, Case IPR2016-01501 (“1501 IPR”).
`
`Paper 5, 3. A Final Written Decision in IPR2016-01501 is being issued
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`concurrently with the instant Decision.
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`B. The ’676 Patent
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`The ’676 patent generally relates to wireless communication
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`technologies and the reporting of power headroom information from a
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`mobile unit to a base station. The ’676 patent is directed to an apparatus and
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`method that “provides specific reporting criteria that are an attractive trade-
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`off between signalling overhead versus overall uplink performance for LTE
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`[Long-Term Evolution].” Ex. 1001, 4:32–35. When the user equipment
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`(UE) determines that a threshold from a set of one or more criteria has been
`
`reached, it triggers sending a power control headroom report to the base
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`station. Id. at Abstract. The inventors state that the triggering criteria used
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`in the invention “are found to be very efficient for sending a power control
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`headroom report in the uplink, while optimizing uplink performance, and
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`while minimizing signaling overhead.” Id. at 4:35–38. Further, the
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`triggering criterion “includes a threshold having been reached, and the
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`3
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`threshold is adjustable via a signal to the user equipment from a base
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`station.” Id. at Abstract. The inventors state that measurement of path-loss
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`“based on the DL [downlink] (e.g. DL pilot channel)” is an effective
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`parameter to analyze for optimizing the tradeoffs. Id. at 4:6. The inventors
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`found that “[e]ven if the frequency of potential power adjustments at the
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`terminal is high but the measured path-loss is not changing, [then] UL
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`signaling would be a waste of resources.” Id. at 4:7–9.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1 and 19 are the only independent
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`claims.
`
`Claim 1, reproduced below, is illustrative.
`
`1.
`
`A method comprising:
`
`determining that a set of at least one triggering criterion is met;
`
`and
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`providing a power control headroom report on an uplink from
`user equipment, in response to determining that the set is met,
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`wherein said at least one triggering criterion include at least one
`threshold having been reached, wherein said at least one threshold is
`adjustable via a signal to the user equipment,
`
`wherein the set of at least one triggering criterion comprises a
`criterion being met based on reaching a threshold of the at least one
`threshold of k transmission time intervals following a previous power
`control headroom report, wherein k is an integer and wherein said at
`least one threshold adjustable via the signal comprises adjusting the
`threshold integer k.
`
`Ex. 1001, 6:26–40.
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`4
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`D. Instituted Grounds of Unpatentability
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`We instituted trial on the following grounds (Inst. Dec. 20):
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`Claims
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`Basis
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`References
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`1 and 19
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`3 and 21
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`
`
`§ 103
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`Fong2 and Ericsson3
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`§ 103
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`Fong, Ericsson, and Bark4
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`I. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016). Under the broadest reasonable
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`interpretation standard, claim terms are given their ordinary and customary
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`meaning as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
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`
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`2 U.S. Patent Application Pub. No. 2004/0223455 A1 published Nov. 11,
`2004 (Ex. 1003, “Fong”)
`3 R2-052744, FILTERING FOR UE POWER HEADROOM MEASUREMENT, 3GPP
`RAN WG2 #49 MEETING, SEOUL, KOREA, NOVEMBER 2, 2005 (Ex. 1004,
`“Ericsson”)
`4 U.S. Patent No 6,445,917 B2 issued Sept. 3, 2002 (Ex. 1005, “Bark”)
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`5
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`Claim 19 recites “memory including software . . . configured, with the
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`at least one processor, to cause the apparatus to at least: determine that a set
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`of at least one triggering criterion is met,” and “memory including
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`software . . . configured, with the at least one processor, to cause the
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`apparatus to at least . . . provide a power control headroom report on an
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`uplink from user equipment, in response to the set having been met.” The
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`question raised regarding these “memory including software . . . configured
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`[with at least one] processor” terms (“processor terms”) is whether or not
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`they require construction as means-plus-function terms under 35 U.S.C.
`
`§ 112 ¶ 6. Petitioner notes that Patent Owner’s position in the District Court
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`Lawsuit is that the processor terms are not subject to section 112, paragraph
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`6 construction, but, if they are subject to § 112 ¶ 6, the corresponding
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`structure in the Specification of the ’676 patent is a “memory including
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`software and at least one processor.” Pet. 12 (citing Ex. 1018, 8). For
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`purposes of the Petition, Petitioner assumes this articulation of
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`corresponding structure is commensurate with the broadest reasonable
`
`construction of the processor terms. Id.
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`Patent Owner responds in its Preliminary Response that “Petitioner
`
`offers no construction for this limitation other than to argue § 112 as is
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`plainly not allowed under 35 U.S.C. § 311(b).” Prelim. Resp. 16. Patent
`
`Owner further contends that “the declaration of Petitioner’s expert cites no
`
`reasons and provides no support for his naked assertions. Thus, the Board
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`should afford this testimony little or no weight.” Prelim. Resp. 16 (citations
`
`and emphasis omitted).
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`6
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`In the Institution Decision we determined that the processor terms are
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`not means-plus-function limitations under section 112, paragraph 6. Inst.
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`Dec. 5–8. We also determined that neither Petitioner nor Patent Owner has
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`provided any argument or evidence tending to overcome the presumption
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`against means-plus-function treatment for the processor terms. Id. at 7–8
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`(citing Pet. 11–13; Prelim. Resp. 16; Apex Inc. v. Raritan Comp., Inc.,
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`325 F.3d 1364, 1371–72 (Fed. Cir. 2003) (“In general, a claim term that
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`does not use the word ‘means’ triggers a rebuttable presumption that section
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`112, paragraph 6 does not apply.”)). Thus, we invited the parties to address
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`the interpretation of the processor terms and provide their respective
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`positions during trial. Id. at 8.
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`In its Response, Patent Owner contends that these terms are not
`
`subject to section 112, paragraph 6, but offers no construction of these terms.
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`PO Resp. 14–22. Petitioner responded that it “agrees with the Board in the
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`Decision to Institute that no further construction of the ‘processor’ terms is
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`necessary.” Reply. 1.
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`Thus, on the full record before us, we determine that the presumption
`
`against § 112, ¶ 6 treatment has not been overcome, so we do not construe
`
`the processor terms as means-plus-function limitations. We additionally
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`determine that no further construction of the processor terms is necessary.
`
`Based on the full record before us, we determine it is unnecessary to
`
`provide express constructions for any other claim terms. Nidec Motor Corp.
`
`v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
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`2017)
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`7
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`B. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`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
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`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; see also
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`Translogic, 504 F.3d at 1259.
`
`C. Level of Skill
`
`Petitioner asserts, through its declarant, the level of skill includes “a
`
`B.S. degree in Electrical Engineering, Computer Engineering, Computer
`
`Science, or equivalent training, as well as at least three years of technical
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`experience in the field of wireless cellular communication systems and
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`networks.” Ex. 1006 (Hass Dec.) ¶ 15. Patent Owner does not assert a
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`specific level of skill. Thus, we adopt Petitioner’s articulation of the level of
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`skill and acknowledge that the level of ordinary skill in the art is also
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`8
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`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`
`
`
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`D. Obviousness of Claims 1 and 19 over Fong and Ericsson
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`Petitioner asserts that claims 1 and 19 are unpatentable under
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`35 U.S.C. § 103(a) as obvious in view of Fong and Ericsson.5 Pet. 13. To
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`support its contentions, Petitioner provides explanations as to how the prior
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`art allegedly teaches each claim limitation. Id. at 13–41.
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`Fong (Exhibit 1003) describes a wireless communication network,
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`including a mobile station and a base station that communicate information
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`over a wireless link. Ex. 1003, Abstract. Fong communicates “reverse
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`request messages containing buffer status and data rate information over a
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`reverse wireless link.” Id. ¶ 43, Fig. 2. Initially, call setup messaging is
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`exchanged between base station 19 and mobile station 16, and base
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`station 19 allocates a reverse request channel (R-REQCH) to the mobile
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`
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`5 In the Institution Decision, we determined that Petitioner had made a
`threshold showing that Ericsson qualifies as a prior art printed publication
`under 35 U.S.C. § 102(b). Inst. Dec. 9 n.3; see Pet. 7–8; Ex. 1012; Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (“A
`reference will be considered publicly accessible if it was ‘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.’” (citation omitted)). The parties did not brief this issue during trial and,
`taking into account the standard of proof applicable at this stage of the
`proceeding, we discern no reason to change our preliminary determination.
`9
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`station. Id. Then, the base station sends “various messages to the mobile
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`station, with such message(s) containing trigger parameters that are used by
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`the mobile station to trigger the transmission of a reverse request message on
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`R-REQCH.” Id. These trigger parameters “can be sent by the base station
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`to the mobile station at any time during the active state of the mobile
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`station.” Id.
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`Next, the mobile station detects “whether a trigger has occurred to
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`send a reverse request message.” Id. ¶ 50, Fig. 2. “If a trigger has occurred,
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`based on the trigger parameters sent by the base station to the mobile station,
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`the mobile station sends . . . a reverse request message on R-REQCH.” Id.
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`The reverse request message includes a field, MAXIMUM_TPR, or
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`maximum traffic-to-pilot ratio, an indication of the maximum supportable
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`data rate of the mobile station. Id. ¶¶ 34–35, 39. Fong also refers to
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`MAXIMUM_TPR as a representation of power headroom, id. ¶¶ 40, 58, and
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`describes power-related information as coming in various forms, including
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`“the actual power headroom remaining in the mobile station,” id. ¶ 41.
`
`Ericsson (Exhibit 1004) describes the following regarding measuring
`
`the time between successive transmissions of power headroom information
`
`in an integer number of transmission time intervals (TTIs):
`
`The UPH [UE power headroom] information bits are sent in the
`Scheduling Information, SI, appended at the end of the MAC-e
`PDU. The periodicity of the Scheduling Information sent to node
`B is defined in the order of TTI , with 1 TTI as the shortest report
`period and is configurable through RRC [radio resource control]
`signaling. Note that apart from the configurable periodicity, the
`inclusion of SI can be made arbitrarily, if for instance padding
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`10
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`allows it or if triggered by higher priority data entering the UE
`buffer.
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`
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`Ex. 1004, 2 (alterations added).
`
`1. Analysis
`
`As an initial matter, Patent Owner argues that there is a relevant
`
`difference in power control, resource allocation, and architecture between on
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`the one hand CDMA 2000 and WCDMA systems, such as Fong and
`
`Ericsson, and on the other hand the LTE system, to which it alleges the ’676
`
`invention is limited. PO Resp. 23. According to Patent Owner, failure to
`
`appreciate that difference in the earlier generation of cellular systems and
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`newer technologies of the ’676 patent resulted in “an incomplete analysis
`
`from Dr. Haas on issues requiring analysis from the perspective of a person
`
`of ordinary skill in the art.” Id. at 24 (emphasis omitted). Specifically,
`
`Patent Owner asserts “WCDMA systems [such as Fong and Ericsson] did
`
`not reflect the same needs for power headroom reporting that LTE systems
`
`require . . . . Nor do WCDMA systems use power headroom information for
`
`scheduling of resources in the same manner as in LTE.” Id. at 23 (citing Ex.
`
`2007 ¶¶ 25–35). For this reason, Patent Owner asserts “[Neither Ericsson
`
`nor] Fong . . . offer[s] a solution analogous to the power headroom reporting
`
`criteria that hold specific benefit to an LTE implementation, as described by
`
`the ’676 patent” and “Dr. Haas has not performed his analysis from that
`
`perspective, and accordingly, his opinions regarding obviousness that
`
`require such perspective are unreliable and should be given little weight.”
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`Id. at 23–24.
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`Petitioner responds that “whether Petitioner considered LTE in the
`
`analysis of the prior art is irrelevant, because the challenged claims do not
`
`require, and are not limited to, LTE.” Reply 3 (emphasis omitted). We
`
`agree. See Ex. 1020, 40:5–10 (Patent Owner’s declarant’s testimony
`
`acknowledging this is correct). For example, the Specification indicates that
`
`the invention is not limited to LTE:
`
`Although the present invention is applicable in the context of the
`EUTRAN (LTE or 3.9G), its principles are not limited to such an
`environment, and instead may also be applicable to various other
`current and future wireless telecommunications systems and
`access technologies.
`
`
`
`Reply 3 (quoting Ex. 1001, 4:28–32).
`
`Two criteria are relevant in determining whether prior art is
`
`analogous: (1) whether the art is from the same field of endeavor, regardless
`
`of the problem addressed, and (2) if the art is not within the same field of
`
`endeavor, whether it is still reasonably pertinent to the particular problem to
`
`be solved. In re Clay, 966 F.2d 656, 658–59, 23 USPQ2d 1058, 1060
`
`(Fed.Cir.1992) (citations omitted). Because the claims do not cite LTE and
`
`the Specification states the invention is applicable to “current” technologies,
`
`Fong and Ericsson are from the same field of endeavor as the challenged
`
`patent. Thus, we determine that Fong and Ericsson are properly analogous
`
`art. Additionally, we find that nothing in the record suggests consideration
`
`of the relevance of LTE versus CDMA 2000 and WCDMA under the proper
`
`construction of the claims would lead to a different interpretation of the
`
`evidence or affect the credibility of either declarant.
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`12
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`“As part of the obviousness inquiry, we consider whether a [person
`
`having ordinary skill in the art] would have been motivated to combine the
`
`prior art to achieve the claimed invention. . . .” In re Warsaw Orthopedic,
`
`Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal quotation and citation
`
`omitted).
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`Initially, Petitioner asserted “a [person of ordinary skill in the art]
`
`would have found it obvious to specify Fong’s MIN_DURATION time
`
`threshold between successive transmissions of power headroom information
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`using transmission time intervals (TTIs), as taught by Ericsson
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`Contribution.[6] Such a combination would have yielded a predictably
`
`beneficial result.” Pet. 16. Petitioner further asserted “the application of the
`
`TTI of Ericsson Contribution to Fong’s MIN_DURATION would have been
`
`the mere application of a known technique to a piece of prior art ready for
`
`improvement.” Pet. 19.
`
`Subsequently, in Petitioner’s Reply, Petitioner asserted
`
`Petitioner’s arguments do not require substituting TTIs as the
`“uniform time intervals” identified in Figure 5. Rather, the
`Petition sets forth that Fong discloses a “triggering criterion that
`
`
`
`6 Petitioner also relies on the testimony of its declarant who asserts “it was
`well-known in the wireless communications art to utilize transmission time
`intervals to specify time periods between sending power headroom reports.”
`Ex. 1006, 37–38 (citing Ex. 1004, 2). This testimony relies on the Ericsson
`reference and does not cite to any other evidence. See id. To the extent that
`Petitioner is relying on its declarant’s testimony alone to show this limitation
`would have been obvious, we find the testimony merely cumulative to the
`teachings of Ericsson itself that are put forth in the Petition and we are not
`persuaded by it.
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`is met based upon reaching the MIN_DURATION threshold of
`time following the transmission of … power headroom
`information,” and Ericsson discloses “specifying a time duration
`between subsequent power headroom reports in transmission
`time intervals (TTIs).” Pet. []35. The “uniform time intervals”
`identified in Figure 5 are simply evidence supporting the reasons
`why a [person of ordinary skill in the art] would consider
`Ericsson’s teaching. Petitioner does not rely on substituting TTIs
`for those uniform time intervals.
`
`
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`Reply 20. In other words, Petitioner asserts currently it is not relying on
`
`Ericsson as a simple substitution of a known element for another yielding a
`
`predictable result. At the hearing, Petitioner reaffirmed this understanding:
`
`[Petitioner’s Counsel:] I think that the case law on sort of
`motivations to combine or why we make a combination aren’t
`limited to situations that require dropping in a specific portion of
`one system with another system, and based on there being a
`predictable result. I think that it’s a broader understanding, based
`on what’s being taught. And in the context of Fong, it’s teaching
`that you’re going to have a trigging criteria, that that trigging
`criteria is going to be, for example, based on expiration of a time
`period, and that with that discussion in Fong, a skilled artisan’s
`motivated to go look to the prior art for different ways of
`articulating that time period.
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`
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`Tr. 64:12–65:3.
`
`“[T]he ‘predictable result’ discussed in KSR refers [] to the
`
`expectation that prior art elements are capable of being physically
`
`combined.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
`
`1314, 1326 (Fed. Cir. 2009) (citing KSR, 550 U.S. 398). Because Petitioner
`
`is no longer relying on the concept of applying a “known technique” to a
`
`device “ready for improvement” to obtain a predictable result as a way to
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`14
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`combine Fong and Ericsson, Petitioner must provide an explicit motivation
`
`to combine.7 See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`
`1356, 1367–68 (Fed. Cir. 2008) (analyzing the ability to physically combine
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`prior art under the rubric of applying a “known technique” to a device
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`“ready for improvement”).
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`We now analyze whether Petitioner has articulated reasoning with
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`some rational underpinning for the combination of Ericsson and Fong. See
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`KSR, 550 U.S. at 418. Petitioner first argues that one of ordinary skill would
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`have looked generically to “written contributions to 3GPP” such as Ericsson
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`because they “contain solutions to known problems.” Pet. 16. Petitioner
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`notes that Fong also teaches setting MIN_DURATION “to prevent the
`
`mobile station from transmitting reverse request messages too frequently.”
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`Id. at 13 (qouting Ex. 1003 ¶ 45), 44, 57. Petitioner also asserts that,
`
`because “Fong [] does not reference the particular unit of time in which
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`MIN_DURATION is specified . . . a [person of ordinary skill in the art]
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`would have looked to other documentation in the wireless communication
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`arts directed to power headroom reporting.” Id. at 17. We disagree that this
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`is a motivation to combine the references. Petitioner’s statements suggest
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`only that the references could be combined but does not explain why
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`specifically Ericsson’s TTI solves an articulated problem, even the generic
`
`
`
`7 To the extent that Petitioner asserts that, despite its admissions, it is relying
`on the combination Fong and Ericsson as a “predictable result,” we are not
`persuaded by Petitioner’s showing, because Petitioner has not presented
`sufficient evidence regarding how to physically combine Fong and Ericsson.
`15
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`problem of “too frequent” power headroom reports. See id. at 13 (qouting
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`Ex. 1003 ¶ 45), 44, 57 For example, Petitioner has not provided a reason,
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`other than the disclosure in ’676 patent itself, why the use of TTI would
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`improve the Fong device and how it would do so.
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`Petitioner further asserts that Ericsson’s TTIs are similar to “uniform
`
`time intervals” of Fong. Pet. 17; See Tr. 7:8–8:7. “Uniform time intervals”
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`is a term coined by Petitioner that is not found or explained explicitly in
`
`Fong. See generally, Ex. 1003. Petitioner states “Fong’s system already
`
`tracks time durations in uniform time periods[, t]hat is, Fong teaches
`
`dividing up periods of data transmission into 10 ms periods (i.e., 10 ms
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`transmission time intervals). Pet. 17–18 (citing Ex. 1003 (“A further rule
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`that is adhered to by mobile stations according to some embodiments is that
`
`the data rate transmitted in a particular 10-ms (millisecond) period is based
`
`on the latest reverse request message information.”)).
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`Patent Owner’s declarant responds “neither Dr. Haas nor Fong
`
`provide[s] any indication that the ‘10-ms period’ corresponds to the
`
`‘Uniform time periods’ that were identified in Figure 5 by Dr. Haas.” Ex.
`
`2007 ¶ 85. Patent Owner responds further that
`
`in the CDMA 2000 system of Fong, the 10-ms intervals for data
`transmission relate to the transmissions on the R-PDCH, whereas
`the reverse request messages are transmitted on the R-REQCH
`during time intervals clearly different from the time intervals of
`the R-PDCH. See Kesan Decl. at ¶¶ 85-87. . . . A person of
`ordinary skill in the art would understand that the ‘TTIs’ of
`Ericsson would correspond to a data transmission, such as the
`transmission periods of the R-PDCH in Fong. Id. Thus, the time
`period between the sending of reverse request messages on the
`
`16
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`IPR2016-01493
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`R-REQCH does not correspond to a measure of multiple
`transmission time intervals, and the substitution of Ericsson’s
`‘TTIs’ into the timing of the R-REQCH transmission would not
`have been obvious to a person of ordinary skill in the art. Id.
`
`PO Resp. 44. Although Patent Owner is discussing “substitution” in the text
`
`quoted above, Patent Owner explains the differences between Fong and
`
`Ericsson and gives context to the alleged combination of Fong and Ericsson.
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`Given that Petitioner is not relying on “substitution,” we are mindful
`
`that “[t]he test for obviousness is not whether the features of a secondary
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`reference may be bodily incorporated into the structure of the primary
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`reference,” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re
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`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d
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`at 425), but rather whether “a skilled artisan would have been motivated to
`
`combine the teachings of the prior art references to achieve the claimed
`
`invention,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
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`2007). The import of Patent Owner’s argument, however, is that Petitioner
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`relies on a far too general motivation to combine the references (based on
`
`“uniform time periods”) and engages in impermissible hindsight as to the
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`particular combination of the teachings of Fong and Ericsson.
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`Additionally, Petitioner does not respond directly to the factual
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`contentions by Patent Owner quoted above.8 In fact, Petitioner admits
`
`
`
`8 Petitioner asserts “Fong expressly suggests that [CDMA 2000] is
`applicable to other wireless protocols, including 3GPP, and Ericsson is
`likewise directed to 3GPP wireless protocols” (Reply 20–21), but this does
`not address the specifics of Patent Owner’s argument.
`17
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`“Petitioner does not rely on Fong as disclosing the threshold
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`MIN_DURATION in units of TTIs . . . , Fong discloses that its system is
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`capable of tracking time durations in ‘uniform time periods,’ which would
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`have made Ericsson’s measurement of time periods between power
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`headroom reports in units of TTIs, another uniform time period, easily
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`implementable.” Reply 14–15 (citing Pet. 16–19, 33–35).
`
`We find that Petitioner’s choice to define “uniform time periods” in
`
`Fong where they are not specifically discussed in Fong is a hindsight
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`recasting of Fong in order to create a motivation to combine Ericsson with
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`Fong. The notion that Fong’s purported “uniform time periods” could be
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`associated with Ericsson’s TTIs does not explain why a person of ordinary
`
`skill in the art would have combined Ericsson with Fong. Nor has Petitioner
`
`established that Ericsson’s TTIs solve a problem in Fong. Rather,
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`Petitioner’s rationale for the combination appears to be a baseless attempt to
`
`reach the limitation reciting a “threshold of k transmission time intervals . . .
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`, wherein k is an integer” in claims 1 and 19.
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`Petitioner fails to “explain why a person of ordinary skill in the art
`
`would have combined elements from specific references in the way the
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`claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Comms.,
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`Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Hyundai Motor Co. v.
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`Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24,
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`2017) (Paper 12) (“A determination of obviousness cannot be reached where
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`the record lacks ‘explanation as to how or why the references would be
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`combined to produce the claimed invention.’” (quoting Trivascular, Inc. v.
`
`18
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`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016))). Specifically, neither
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`Petitioner nor its declarant explains why a general desire to send reports less
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`frequently or the existence of “uniform time periods” would lead to using
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`Ericsson’s TTIs in the context of Fong’s teachings, besides seeking the
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`benefits described in the ’676 patent – a reason tainted by hindsight. See
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`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.
`
`Cir. 1983) (“To imbue one of ordinary skill in the art with knowledge of the
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`invention in suit, when no prior art reference or references of record convey
`
`or suggest that knowledge, is to fall victim to the insidious effect of a
`
`hindsight syndrome wherein that which only the inventor taught is used
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`against its teacher.”)
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`Thus, Petitioner has not established sufficiently that Fong’s alleged
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`“uniform time period,” the significance of which is not explained by
`
`Petitioner, would be combined with Fong’s MIN_DURATION variable and
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`the TTI disclosures in Ericsson. As Patent Owner argued at the hearing
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`Petitioner does not have “a connection between [Fong and Ericsson] that
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`connects those two and says why [one] would use the TTIs in Ericsson [to]
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`have any benefit to the power headroom reporting criteria in Fong[.]”
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`Tr. 41:19–26. We agree.
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`Petitioner also suggests a motivation to combine Fong and Ericsson
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`would be to encode MIN-DURATION with a smaller number of bits:
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`In addition to the advantages detailed in the Petition, Dr. Haas
`explained during cross-examination that it would require a
`smaller number of bits to encode MIN_DURATION in TTIs than
`in milliseconds. Ex. 2006, 160:5-22. That is, the granularity of
`
`19
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`IPR2016-01493
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`specifying MIN_DURATION in units of TTIs, as opposed to
`milliseconds, means that MIN_DURATION c
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