Trials@uspto.gov
`571-272-7822
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` Paper 26
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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 and HTC AMERICA, INC., ZTE CORPORATION,
`and ZTE (USA), INC.
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-015011
`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 ZTE Corporation, and ZTE (USA), Inc. filed a petition in (now terminated)
`IPR2017-01079, and have been joined to the instant proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 26
`
`
`
` Entered: February 12, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC., ZTE CORPORATION,
`and ZTE (USA), INC.
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-015011
`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 ZTE Corporation, and ZTE (USA), Inc. filed a petition in (now terminated)
`IPR2017-01079, and have been joined to the instant proceeding.
`
`
`
`IPR2016-01501
`Patent 8,457,676 B2
`
`
`I.
`
`INTRODUCTION
`
`HTC Corporation and HTC America, Inc. (collectively “HTC”) filed a
`
`Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
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`inter partes review of claims 1, 3, 19, 21, 33, and 34 (“the challenged
`
`claims”) of U.S. Patent No. 8,457,676 B2 (“the ’676 patent,” Ex. 1001). The
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`Petition is supported by the Declaration of Tim A. Williams, Ph.D.
`
`(“Williams Declaration,” “Williams Dec.,” Ex. 1003). ZTE Corporation and
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`ZTE (USA), Inc. (collectively “ZTE”) were joined into this inter partes
`
`review. Paper 18. Thus, HTC and ZTE (collectively “Petitioner”) are
`
`currently Petitioner in this inter partes review. Cellular Communications
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`Equipment LLC (“Patent Owner”) filed a Preliminary Response (“Prelim.
`
`Resp.,” Paper 6).
`
`On February 13, 2017, we instituted an inter partes review of claims
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`1, 19, and 33 of the ’676 patent. Paper 7, 20 (“Inst. Dec.”). Patent Owner
`
`filed a Response. Paper 11 (“PO Resp.”). The Patent Owner 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. 2005). Petitioner filed a Reply. Paper 13 (“Reply”). An
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`oral hearing was held on November 8, 2017. Paper 24 (“Tr.”).
`
`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
`
`follow, we determine that Petitioner has shown by a preponderance of the
`
`evidence that claims 1, 19, and 33 are unpatentable.
`
`A. Related Proceedings
`
`Petitioner advises us that the following District Court lawsuits are
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`related to this proceeding: Cellular Communications Equipment LLC v.
`
`2
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`
`
`IPR2016-01501
`Patent 8,457,676 B2
`
`AT&T Inc.,No. 2:15-cv-00576 (E.D. Tex.); Cellular Commc’ns Equipment
`
`LLC v. Sprint Corp., No. 2:15-cv-00579 (E.D. Tex.); Cellular Commc’ns
`
`Equipment LLC v. T-Mobile USA, Inc., No. 2:15-cv-00580 (E.D. Tex.); and
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`Cellular Commc’ns Equipment LLC v. Verizon Commc’ns, Inc., No. 2:15-
`
`cv-00581 (E.D. Tex.). Pet. 1. In addition, there is one other inter partes
`
`review proceeding asserting unpatentability of the ’676 patent: Apple Inc. v.
`
`Cellular Communications Equipment LLC, Case IPR2016-01493 (“1493
`
`IPR”). A Final Written Decision in IPR2016-01493 is being issued
`
`concurrently with the instant Decision.
`
`B. The ’676 Patent
`
`The ’676 patent generally relates to wireless communication
`
`technologies and the reporting of power headroom information from a
`
`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-
`
`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
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`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
`
`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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`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 the time since the last
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`3
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`IPR2016-01501
`Patent 8,457,676 B2
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`headroom report as measured by an integer multiplied by the transmission
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`time interval (TTI) is a triggering criterion. Id. at 4:53–59. The inventors
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`state that the absolute difference between the current and latest path-loss also
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`is a triggering criterion. Id. at 4:60–65.
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`
`
`C. Illustrative Claim
`
`The instituted claims 1, 19, and 332 are independent claims.
`
`Claim 1, reproduced below, is illustrative.
`
`1.
`
`A method comprising:
`
`determining that a set of at east one triggering criterion is met;
`
`and
`
`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 (paragraphing added).
`
`
`
`
`
`2 Claim 33 was changed in a Certificate of Correction dated July 7, 2015.
`Ex. 1002, 1.
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`4
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`IPR2016-01501
`Patent 8,457,676 B2
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`D. Instituted Ground of Unpatentability
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`
`
`We instituted trial on the following ground (Inst. Dec. 20):
`
`Claims
`
`Basis
`
`Reference
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`1, 19, and 33
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`§ 103
`
`Kwak3
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`
`
`II. ANALYSIS
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`A. Relevant Law
`
`1. Obviousness
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which said subject matter
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question of obviousness is resolved on the basis of underlying factual
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`determinations including: (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level
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`of skill in the art; and, (4) where in evidence, so-called secondary
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`considerations, including commercial success, long-felt but unsolved needs,
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`failure of others, and unexpected results.4 Graham v. John Deere Co.,
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`383 U.S. 1, 1718 (1966) (“the Graham factors”).
`
`
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`3 U.S. Patent Application Pub. No. 2006/0140154 A1, published June 29,
`2006 (Ex. 1005, “Kwak”).
`4 Patent Owner does not put forth evidence it alleges tend to show secondary
`considerations of non-obviousness in its Response.
`5
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`IPR2016-01501
`Patent 8,457,676 B2
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`2. Level of Skill
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`The level of ordinary skill in the art usually is evidenced by the
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`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
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`(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). For an obviousness analysis,
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`prior art references must be “considered together with the knowledge of one
`
`of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`Moreover, “it is proper to take into account not only specific teachings of the
`
`reference but also the inferences which one skilled in the art would
`
`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`
`(CCPA 1968). That is because 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 In re Translogic Tech., Inc., 504 F.3d at 1259.
`
`3. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`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). Under this standard, we
`
`interpret claim terms using “the broadest reasonable meaning of the words in
`
`their ordinary usage as they would be understood by one of ordinary skill in
`
`the art, taking into account whatever enlightenment by way of definitions or
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`otherwise that may be afforded by the written description contained in the
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`6
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`IPR2016-01501
`Patent 8,457,676 B2
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
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`1997).
`
`We presume that claim terms have their ordinary and customary
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`meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
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`2016) (“Under a broadest reasonable interpretation, words of the claim must
`
`be given their plain meaning, unless such meaning is inconsistent with the
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`specification and prosecution history.”); In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
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`the meaning that the term would have to a person of ordinary skill in the art
`
`in question.” (internal citation and quotation marks omitted)). A patentee,
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`however, may rebut this presumption by acting as his or her own
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`lexicographer, providing a definition of the term in the specification with
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`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need
`
`to be construed, and only to the extent necessary to resolve the controversy.
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`A. Level of Skill
`
`Petitioner asserts “[a] person of ordinary skill in the art of the subject
`
`matter of the ’676 patent would have had a Bachelor’s degree in electrical
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`engineering or a similar degree, with 2–4 years of experience in the design
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`and implementation of wireless communication systems, or the equivalent.”
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`Pet. 8 (citing Ex. 1003 ¶ 42). Patent Owner does not offer a proposed level
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`7
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`IPR2016-01501
`Patent 8,457,676 B2
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`of skill in its Patent Owner Response.5 We adopt Petitioner’s articulation of
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`the level of skill and acknowledge that the level of ordinary skill in the art is
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`also 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).
`
`B. Claim Construction
`
`In the Institution Decision, we adopted Patent Owner’s construction of
`
`“transmission time intervals” as argued by Patent Owner in its Preliminary
`
`Response. Inst. Dec. 5–7. We intended this construction to be read
`
`consistent with the use of TTI in the Specification. Id. Petitioner and Patent
`
`Owner did not present further arguments regarding this construction in the
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`Petitioner’s Reply or the Patent Owner’s Response, respectively. See
`
`generally, Reply, PO Resp. 13–14. We discern no reason to change our
`
`preliminary construction. Thus, we determine, on the full record before us,
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`that the broadest reasonable interpretation, consistent with the Specification,
`
`of “transmission time intervals” is “time periods determined by the duration
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`of a transmission of one or more transport blocks.” See Prelim Resp. 17.
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`Based on the full record before us, we determine it is unnecessary to
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`provide express constructions for any other claim terms.6
`
`
`
`5 In related Case IPR2016-01493, Patent Owner argues that one of ordinary
`skill would look at the art for the perspective of LTE systems only.
`IPR2016-01493, PO Resp. 5–7. Patent Owner does not make that argument
`here nor does Patent Owner assert that issue is relevant to this case. Thus,
`we do not address that issue.
`6 In related Case IPR2016-01493, the parties argued whether the terms
`“memory including software . . . configured, with the at least one processor,
`8
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`C. Obviousness of Claims over Kwak
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`Petitioner contends that claims 1, 19, and 33 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Kwak. Pet. 23. To support its
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`contentions, Petitioner provides explanations as to how the prior art
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`allegedly teaches each claim limitation. Id. at 23–39. As discussed below,
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`Patent Owner asserts Kwak fails to teach or suggest three specific limitations
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`of each independent claim. PO Resp. 16–26. Upon consideration the full
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`record of evidence and arguments, we determine that Petitioner has shown
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`by a preponderance of the evidence that claims 1, 19, and 33 are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Kwak.
`
`Kwak (Exhibit 1005) describes “a method and apparatus for signaling
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`the transmit power status (TPS), that is, uplink channel status of a User
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`Equipment (UE) for use in uplink packet transmission scheduling.”
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`Ex. 1005 ¶ 3. Kwak describes a Universal Mobile Telecommunication
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`Service (UMTS) system for providing voice, data, multimedia, and
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`wideband information to mobile subscribers or computer users. Id. ¶ 5. The
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`UMTS architecture described in Kwak consists of User Equipment (UE) 20,
`
`
`
`to cause the apparatus to at least: determine that a set of at least one
`triggering criterion is met,” and “memory including software . . . configured,
`with the at least one processor, to cause the apparatus to at least . . . provide
`a power control headroom report on an uplink from user equipment, in
`response to the set having been met” in claim 19 require construction as
`means-plus-function terms under 35 U.S.C. § 112 ¶ 6. We decided in the
`Decision on Institution, based on the record at that time, that 35 U.S.C.
`§ 112 ¶ 6 did not apply. Although the parties do not argue this issue in this
`case, we do not apply 35 U.S.C. § 112 ¶ 6 to those terms in this case for the
`same reasons.
`
`9
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`IPR2016-01501
`Patent 8,457,676 B2
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`the UMTS Terrestrial Radio Access Network (UTRAN) 12, Radio Network
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`Controllers (RNCs) 16a and 16b, and Node Bs 18a to 18d. Id. at Fig. 1,
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`¶¶ 6–9.
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`Kwak describes communicating transit power status (TPS)
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`information from a UE to a Node B. Id. ¶¶ 28–31, 51. “The TPS is
`
`expressed as the maximum transmit power of the UE,” the “maximum data
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`rate available to the UE,” or “the ratio of the maximum transmit power to the
`
`transmit power of the control channel, that is, the power margin of the UE.”
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`Id. ¶ 51. Kwak describes the UE using the medium access control (MAC)
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`layer to transmit the TPS to Node B. Id. ¶¶ 52, 63.
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`Kwak describes various criteria for triggering a TPS transmission
`
`from the UE to the Node B. For example, Kwak describes an exemplary
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`embodiment in which the UE transmits a TPS every TPS period 910. Id.
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`¶¶ 73–74, 77. TPS period 910 is a value which can be “notified to the UE
`
`and the Node B from the RNC by upper layer signaling using Radio
`
`Resource Control (RRC) and Node B Application Part (NBAP) protocols.”
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`Id. ¶ 78. Kwak also describes another exemplary embodiment in which the
`
`UE transmits a TPS every instance “when a predetermined event is
`
`fulfilled.” Id. ¶ 83. Kwak describes an example of a triggering event, i.e.,
`
`when the difference in time between a previous TPS and the current TPS
`
`exceeds a predetermined threshold. Id. ¶ 87. Kwak also describes the Node
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`B as receiving the TPS and using the information in scheduling. See, e.g.,
`
`id. ¶¶ 20, 24, 25, 91, 102, 114.
`
`10
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`IPR2016-01501
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`1. Analysis
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`As to whether Kwak is analogous art, Patent Owner argues that there
`
`is a relevant difference in power control, resource allocation, and
`
`architecture between WCDMA systems and the LTE systems (to which it
`
`alleges the ’676 invention is limited). PO Resp. 14–15. According to Patent
`
`Owner, failure to appreciate that difference in the earlier generation of
`
`cellular systems and newer technologies of the ’676 patent resulted in “an
`
`incomplete analysis from Dr. Williams on issues requiring analysis from the
`
`perspective of a person of ordinary skill in the art.” Id. at 15. Specifically,
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`Patent Owner asserts “3rd Generation WCDMA systems did not reflect the
`
`same needs for power headroom reporting as LTE systems . . . . Nor do
`
`WCDMA systems use power headroom information for scheduling of
`
`resources in the same manner as in LTE.” Id. at 23 (citing Ex. 2005 ¶¶ 25–
`
`35). For this reason, Patent Owner asserts “Kwak does not offer a solution
`
`analogous to the power headroom reporting criteria that hold specific benefit
`
`to an LTE implementation” and “Dr. Williams 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.” Id. at 24.
`
`Petitioner responds that “nothing in the claim language limits the
`
`purported invention to LTE/3.9G systems [].” Reply 3. We agree. 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
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`11
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`Patent 8,457,676 B2
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`telecommunications systems and access technologies.” Reply 2–3 (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 WCDMA under the proper construction of
`
`the claims would lead to a different interpretation of the evidence or affect
`
`the credibility of either declarant. As to claim 1, Petitioner establishes
`
`sufficiently that Kwak discloses determining that a set of at least one
`
`triggering criterion is met. Pet. 27–28; Ex. 1005. For example, Kwak
`
`describes various examples of triggering criteria for transmission of TPS
`
`information, including a time-based criterion (a TPS period), an event-based
`
`criterion using threshold values, and embodiments using combinations of
`
`both periodic and event-based criteria. Ex. 1005 ¶¶ 73, 74, 77, 83, 87, 92,
`
`93, 103,04.
`
`Petitioner establishes sufficiently that Kwak teaches providing a
`
`power control headroom report on an uplink from user equipment, in
`
`response to determining that the set of triggering criteria is met. Pet. 28–29;
`
`12
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`Ex. 1005. For example, Kwak discloses fourth and fifth embodiments using
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`both periodic and event-based criteria for triggering TPS transmission from
`
`a UE to a Node B. Ex. 1005 ¶¶ 92, 93, 103, 104, Figs. 11–12. In the fourth
`
`embodiment, a TPS is transmitted every TPS period 1111, as well as any
`
`time a specified event occurs. Id. ¶¶ 93, 96. In the fifth embodiment, a TPS
`
`is transmitted only if both the criteria are met, i.e., that a specified event has
`
`occurred and the threshold TPS period 1210 has been reached. Id. ¶¶ 104,
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`107. Additionally, Kwak teaches a second embodiment using a set of one
`
`triggering criteria in which the UE transmits a TPS every TPS period 910.
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`Id. ¶¶ 73, 74, 77. The TPS, or transmit power status, is expressed as the
`
`maximum transmit power of the UE, the maximum data rate available to the
`
`UE, or “the ratio of the maximum transmit power to the transmit power of
`
`the control channel, that is, the power margin of the UE.” Id. at 51. Thus,
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`Petitioner persuasively shows that Kwak’s TPS is a power control headroom
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`report. Pet. 29 (citing Ex. 1003 at ¶ 99).
`
`Petitioner establishes sufficiently that Kwak teaches “said at least one
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`triggering criterion include at least one threshold having been reached,
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`wherein said at least one triggering criterion is adjustable via a signal to the
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`user equipment.” Pet. 28–29; Ex. 1005. For example, Petitioner contends
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`“Kwak teaches that the TPS period trigger is adjustable through notification
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`to the UE and the Node B from the RNC by upper layer signaling using
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`RRC and NBAP protocols.” Pet. 29 (citing Ex. 1005 ¶¶ 78, 97, 109). The
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`following is the statement from Kwak cited above by Petitioner and its
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`declarant: “The TPS period 910 is a predetermined fixed value or notified to
`
`the UE and the Node B from the RNC by upper layer signaling using Radio
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`13
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`Resource Control (RRC) and Node B Application Part (NBAP) protocols.”
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`Id. (citing Ex. 1002 (Williams Decl.) ¶ 100 (citing Kwak at ¶¶ 78, 97, 109
`
`(each disclosing nearly identical language to the quoted language from
`
`¶ 78)).
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`Patent Owner asserts Petitioner’s declarant “Dr. Williams provides no
`
`analysis as to why this statement establishes the adjustability of the TPS
`
`period.” PO Resp. 17. Specifically, Patent Owner asserts that TPS period is
`
`a predetermined fixed value is “notified” to the UE and the Node B by the
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`RNC but cannot be changed or adjusted once the UE is notified of its value.
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`Id. at 17–18 (citing Ex. 2005 (Kesan Decl.) ¶ 55). Further, Patent Owner
`
`asserts Petitioner and its declarant do not explain how Kwak renders the
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`adjustable limitation obvious. Id.
`
`Petitioner responds that “[b]y contrasting a ‘fixed value’ with a value
`
`that is ‘notified’ to the UE by upper layer signaling, one of ordinary skill in
`
`the art understands Kwak to be teaching the ability to adjust that value.”
`
`Reply 5 (citing Ex. 1008 ¶ 20). In other words, Petitioner asserts that
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`“notification” of the value implies that the value is set based on that
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`“notification” rather than using the predetermined fixed value because the
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`conjunction “or” is used between fixed value and notified. We agree. The
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`context of paragraph 78 of Kwak is that a TPS is transmitted as soon as
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`possible after the TPS period 910 has expired. Ex. 1005 ¶ 78. The quoted
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`languages states that the “TPS period 910 is . . . notified to the UE.” Id. We
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`credit Petitioner’s declarant’s testimony that this implies that TPS
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`period 910 will be used by the UE as described in Kwak’s paragraph 78.
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`See Ex. 1008 ¶ 20; Ex. 2006 (Williams Reply Dep.), 52:4–56:21.
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`Patent Owner argues that even if the UE is notified of the “initial”
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`value of TPS period 910, it is not adjusted or changed after that initial value.
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`PO Resp. 18. Petitioner responds that the Specification of the ’676 patent
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`equates “configuring” the parameters with “adjusting” the parameters.
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`Pet. 6; compare Ex. 1001, 4:66–5:3 (“parameters . . . are configured by the
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`eNode-B . . . via RRC signaling from the eNode-B to the terminal [i.e.,
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`UE].”), with Ex. 1001, 5:28–30 (“the method 300 can begin with the base
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`station adjusting one or more of the thresholds . . . at the user equipment by
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`signalling to the UE”). We agree that configuring and adjusting are used
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`interchangeably in the Specification. Also, according to the Specification,
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`the first step in the claimed method is “adjusting” the parameters at step 307,
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`which demonstrates that the Specification associates setting the initial value
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`with an “adjustment.” Ex. 1001, 5:28–30.
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`Claim 1 recites that the threshold is “adjustable via a signal,” but it
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`does not recite that the threshold must have any particular value prior to the
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`adjustment. Both parties’ declarants agree that when the threshold is set via
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`the notification in Kwak, it must have some predetermined value prior to
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`being set. Ex. 1008 (Williams Decl.) ¶ 23; Ex. 1009 (Kesan Decl.) at
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`130:22–131:3. Thus, we determine that Petitioner has persuasively shown
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`that the threshold in Kwak is “adjustable via a signal.”
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`Petitioner establishes sufficiently that Kwak teaches “the set of at least
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`one triggering criterion comprises a criterion being met based on reaching a
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`threshold of the at least one threshold of k transmission time intervals
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`following a previous power control headroom report, wherein k is an integer,
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`and wherein said at least one threshold adjustable via the signal comprises
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`adjusting the threshold k.” Pet. 30–32; Ex. 1005. Specifically, Kwak
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`describes the TPS period as a threshold that must be reached before a
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`subsequent TPS is sent, and teaches that the TPS period is set as a certain
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`number of transmission time intervals following a previous power control
`
`headroom report. Pet. 30 (citing Ex. 1005 ¶¶ 77, 78, 96, 99, 107, 110, 111;
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`Figs. 9, 11–12). Petitioner further argues that
`
`one of ordinary skill in the art reading Kwak’s disclosure of a
`TPS period would have understood that disclosure in the context
`of a UMTS system to teach that the period is a value for k
`transmission time intervals measured from a previous TPS
`report, where k is an integer. Moreover, because Kwak teaches
`that the TPS period is adjustable via notification to the UE and
`the Node B by RRC and NBAP upper signaling, one of ordinary
`skill in the art would have understood that such adjustment would
`involve changing the value k. Alternatively, it would have also
`been obvious to one of ordinary skill in the art to utilize k
`transmission time intervals, where k is an integer, as the value
`for TPS period, and to adjust TPS period by adjusting the value k.
`
`Id. at 30–31 (citing Ex. 1003 ¶¶ 94–105).
`
`Patent Owner contends that Kwak does not disclose a threshold of k
`
`transmission time intervals. PO Resp. at 19–25. Patent Owner asserts “[t]he
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`evidence provided by Kwak is simply ambiguous as to the relationship of
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`TPS Period 910, 1111, or 1210 [relied on by Petitioner] to any interval of
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`time.” Id. at 20. Petitioner relies in part on Figure 9 of Kwak reproduced
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`below.
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`Figure 9, above, shows the time periods within the period TPS 910.
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`Ex. 1005, Fig. 9. Patent Owner asserts that Petitioner relies on its declarant
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`as the only evidence that the time periods such as 906, 907, 908, and 909 are
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`all equal such that TSP 910 is an integer number of transmission time
`
`intervals. PO Resp. 21. Additionally, Patent Owner asserts that although
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`there are four time intervals in the TPS period 910, this does not show that
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`the TPS period is defined by a multiple of those time periods. Patent Owner
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`contends that the “more plausible understanding” is that Kwak’s TPS
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`periods are defined as a fixed amount of time, rather than an integer number
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`of time intervals. Id. at 24.
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`Petitioner responds that Kwak teaches “time intervals” throughout its
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`disclosure in multiple instances, as well as in the figures. Reply 11–12
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`(citing Ex. 1005 ¶¶ 70, 71, 79, 87–89, 92, 97, 98, 100, 108, 110, 112, 119,
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`Figs. 8, 9, 10, 12; Ex. 1008 ¶¶ 25–31). The Petition and Petitioner’s
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`declarant Dr. Williams cite to portions of Kwak that teach that these time
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`intervals (such as 906, 907, 908, and 909 in Figure 9 above) are
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`“transmission time intervals” within our construction of that phrase. Pet.
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`30–31; Ex. 1005 ¶¶ 77–78, 96, 98, 99, 107, 109, 110, Figs. 9, 11–12; Ex.
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`1003 ¶ 102 (“[T]hese figures illustrate a typical system utilizing
`
`transmission time intervals (TTIs) as a period of time . . . . Kwak itself refers
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`to these blocks variously as ‘time intervals’ and ‘transmission time
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`intervals.’”). We agree with Petitioner’s interpretation.
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`Also, Patent Owner argues that the TPS period must be “defined” by
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`an integer multiple of TTIs. Nevertheless, the claim only requires that “at
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`least one threshold adjustable via the signal comprises adjusting the
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`threshold integer k.” Petitioner has shown that TPS 910 is an integer
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`number (four) of transmission time intervals (such as 907, etc.) that can be
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`adjusted by notifying the UE and that it would have been obvious to change
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`a value k to represent those four transmission time intervals. Pet. 30–31
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`(citing Ex. 1003 ¶¶ 94–105).
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`For the reasons above, we determine that Petitioner has shown a
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`preponderance of evidence that claim 1 would have been obvious over
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`Kwak.
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`Patent Owner does not argue claims 19 and 33 separately. Claims 19
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`and 33 recite an apparatus and a network element, respectively, comprising:
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`“at least one processor; and at least one memory including software, where
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`the at least one memory and the software are configured, with the at least
`
`one processor, to cause the apparatus to at least . . . .” The remaining
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`limitations of claim 19 are identical to those in claim 1 but are written in
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`apparatus form rather than method form. Claim 33 likewise includes
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`limitations from claim 1 in apparatus form along with certain other
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`limitations, which we discuss below. Petitioner relies on the same analysis
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`discussed above for the limitations that are common to or substantially
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`similar among claims 1, 19, and 33. See Pet. 35–39.
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`As to the initial clauses of claims 19 and 33, Petitioner contends:
`
`One of ordinary skill in the art would understand Kwak’s
`teaching of UE to each inherently include at least a processor,
`memory, and software for performing these tasks. That is, the
`UE in Kwak must necessarily include and use a processor,
`memory, and software to generate TPS information, determine
`whether to send it, and transmit the TPS from the UE to the Node
`B. Alternatively, it would have been obvious to one of ordinary
`skill in the art to utilize a processor, memory, and software to
`generate TPS information, determine whether to transmit it, and
`transmit the TPS information from the UE to the Node B. In the
`context of a typical UMTS as described by Kwak, it was well
`known to those of skill in the art that the UE in such a system
`typically involved mobile telephones containing at least one
`processor, memory, and software capable of performing these
`tasks. The skilled artisan, reading Kwak’s disclosure, would
`have been motivated to utilize the components and capabilities
`of typical UE to perform these tasks. It therefore would have
`been obvious to one of ordinary skill in the art for the UE to
`include a processor, memory, and software to perform the tasks
`described by Kwak.
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`
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`Pet. at 27–28 (citations omitted).
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`We are persuaded by this contention. Thus, based on Petitioner’s
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`showing regarding the processor, memory, and software limitations of
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`claim 19, and for the same reasons discussed above with respect to claim 1,
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`Petitioner has shown sufficiently that Kwak teaches each of the limitations
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`of claim 19.
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`Claim 33 additionally recites “receiv[ing] a power control headroom
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`report on an uplink from user equipment, in response to the user equipment
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`determining that a set of at least one triggering criterion is met because at
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`least one threshold has been reached.” Petitioner contends Kwak meets this
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`limitation. Pet. 27–28. As discussed above, Kwak discloses fourth and fifth
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`embodiments using both periodic and event-based criteria for triggering TPS
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`transmission from a UE to a Node B. Ex. 1005 ¶¶
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