Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: March 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE, INC. AND TCT MOBILE (US) INC.,
`Petitioner,
`v.
`WIRELESS PROTOCOL INNOVATIONS, INC.,
`Patent Owner.
`
`Case IPR2016-01861
`Patent 9,125,051 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, MITCHELL G. WEATHERLY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Determining Claims 1, 2, 4, 5, 21–23, 25, and 26 Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 35
`Entered: March 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE, INC. AND TCT MOBILE (US) INC.,
`Petitioner,
`v.
`WIRELESS PROTOCOL INNOVATIONS, INC.,
`Patent Owner.
`
`Case IPR2016-01861
`Patent 9,125,051 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, MITCHELL G. WEATHERLY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Determining Claims 1, 2, 4, 5, 21–23, 25, and 26 Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2016-017041861
`Patent 9,125,051 B2
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`TCT Mobile, Inc. and TCT Mobile (US) Inc. (collectively “TCT”)
`filed a petition (Paper 1, “Pet.”) to institute an inter partes review of claims
`1, 2, 4, 5, 21–23, 25, and 26 (the “challenged claims”) of U.S. Patent No.
`9,125,051 B2 (Ex. 1001, “the ’051 Patent”). 35 U.S.C. § 311. TCT
`supported the Petition with evidence including the declaration of Stuart J.
`Lipoff (Ex. 1005). Wireless Protocol Innovations, Inc. (“WPI”) timely filed
`a Preliminary Response. Paper 5 (“Prelim. Resp.”). WPI supported its
`Preliminary Response with evidence including the declaration of Gary
`Lomp, Ph.D. (Ex. 2001). On March 24, 2017, based on the record before us
`at the time, we instituted an inter partes review of claims 1, 2, 4, 5, 21–23,
`25, and 26. Paper 8 (“Decision on Institution” or “Dec.”). We instituted the
`review on the following challenge:
`
`References
`International Patent Publication No. WO 99/61993
`(Ex. 1022, “Abi-Nassif”), Data-Over-Cable Service
`Interface Specifications,1 Radio Frequency
`Interface Specification, Second Interim Release,
`Document Control No. SP-RFIv1.1-I02-990731
`(Ex. 1019, “DOCSIS 1.1”), and Alleged Admitted
`Prior Art (“APA”)
`
`Claims
`challenged
`Basis
`§ 103 1, 2, 4, 5,
`21–23, 25,
`and 26
`
`After we instituted this review, Patent Owner filed a Patent Owner
`Response in opposition to the Petition (Paper 19, “PO Resp.”) that was
`
`
`1 We refer to the first version of the Data-Over-Cable Service Interface
`Specifications as “DOCSIS.”
`
`2
`
`
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`IPR2016-017041861
`Patent 9,125,051 B2
`supported by a Second Declaration from Gary Lomp, Ph.D. (Ex. 2004).
`Petitioner filed a Reply in support of the Petition (Paper 24, “Reply”).
`Patent Owner did not move to amend any claim of the ’051 Patent.
`We heard oral argument on December 7, 2017. A transcript of the
`argument has been entered in the record (Paper 32, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). The evidentiary standard
`is a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons expressed below, we
`conclude that Petitioner has demonstrated by a preponderance of evidence
`that claims 1, 2, 4, 5, 21–23, 25, and 26 are unpatentable.
`B. RELATED PROCEEDINGS
`TCT and WPI identified as related proceedings the co-pending district
`court proceedings of Wireless Protocol Innovations, Inc. v. TCL
`Corporation, et al., Case Number 6:15-cv-918 (E.D. Tex.) and Wireless
`Protocol Innovations, Inc. v. ZTE Corporation, et al., Case Number 6:15-cv-
`919 (E.D. Tex.). Pet. 2–3; Paper 4, 2. Additional claims of the instant
`patent, specifically claims 6, 7, 9–12, and 14–19 of the ’051 Patent, are the
`subject of concurrent proceeding for inter partes review in IPR2016-01865.
`WPI identified three issued U.S. patents and two pending U.S. patent
`applications as being related to the ’051 Patent including: U.S. Patent
`Nos. 7,173,921 B2, 8,274,991 B2, and 8,565,256 B2; and U.S. Application
`Nos. 14/078,246 and 14/805,051. Paper 4, 3. The following inter partes
`reviews initiated by TCT are also considered related:
`
`3
`
`
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`IPR2016-017041861
`Patent 9,125,051 B2
`
`Proceeding
`IPR2016-01492
`
`Status
`Patent No.
`6,381,211 B2 Motion for adverse judgment
`granted: June 6, 2017
`
`IPR2016-01494
`
`8,274,991 B2 Final Written Decision issued
`February 12, 2018
`
`IPR2016-01700
`
`6,381,211 B2 Motion for adverse judgment
`granted: June 6, 2017
`
`IPR2016-01702
`
`6,381,211 B2 Motion for adverse judgment
`granted: June 6, 2017
`
`IPR2016-01704
`
`8,565,256 B2 Final Written Decision issued
`March 1, 2018
`
`
`C. THE ’051 PATENT
`The ’051 Patent relates to “point-to-multipoint communication; in
`particular, the invention relates to control of contention for data slots by
`customer premises equipment in a wireless point-to-multipoint
`communication system.” Ex. 1001, 1:37–40. “Contention” is shorthand for
`the process by which many instances of customer provided equipment (one
`being a “CPE”) negotiate for assignment of data slots available from a base
`station controller (“BSC”). Id. at 1:44–55. The Specification identifies
`problems with conventional methods when two CPEs “collide” while
`requesting a data slot, especially when the traffic from the CPEs is not
`“bursty” (e.g., traffic generated by online games and voice sources). Id.
`at 1:59–2:12. To address such problems, the Specification suggests a system
`of “using a new state machine to control a contention state” that “includes a
`grant pending absent state in which the [CPE] is polled with a unicast
`
`4
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`IPR2016-017041861
`Patent 9,125,051 B2
`request slot.” Id. at 2:23–31. The Specification briefly describes the grant
`pending absent state as follows:
`By virtue of the grant pending absent state, the customer
`premises equipment can request a data slot without entering into
`contention and generating excess contention traffic. After a
`suitable delay without more data being received to send
`upstream, the state machine can exit the grant pending absent
`state. This delay preferably is long enough for receipt of new
`non-bursty data for a communication, for example 50 ms.
`Id. at 2:36–42.
`Of the challenged claims, only claims 1 and 21 are independent, and
`dependent claims 2, 4, 5, 22, 23, 25, and 26 depend directly from either
`claim 1 or 21. Id. at 9:60–10:41, 12:35–13:31. Claim 1 is deemed
`representative and recites as follows:
`1. A method of operating a wireless communication unit,
`comprising:
`transmitting a first type request message to a base station
`controller (BSC) unit in a contention slot;
`receiving an upstream data transmission grant from the BSC
`unit;
`transmitting pending data to the BSC unit within a data slot
`specified by the upstream data transmission grant;
`transmitting a second type request message to the BSC unit
`within the data slot, the second type request message
`indicative of an amount of data pending for upstream
`transmission;
`receiving a subsequent upstream data transmission grant from
`the BSC unit;
`transmitting a first additional pending data to the BSC unit in
`a specified subsequent data slot specified by
`the
`subsequent upstream data transmission grant;
`transmitting an additional second type request message to the
`BSC unit within the specified subsequent data slot if there
`
`5
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`IPR2016-017041861
`Patent 9,125,051 B2
`is second additional pending data for transmission to the
`BSC unit;
`on condition that there is no further second additional pending
`data for transmission to the BSC unit and if2 new data
`becomes available for transmission to the BSC unit prior
`to expiry of a timeout, transmitting a third type request
`message to the BSC unit without contention, the third type
`request message indicating to the BSC unit that the new
`data awaits upstream transmission; and
`on condition that there is no further second additional pending
`data for transmission to the BSC unit and no new data
`becomes available for transmission to the BSC unit prior
`to expiry of
`the
`timeout, operating
`the wireless
`communication unit in an idle state.
`Id. at 9:60–10:26.
`
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142 (2016) (affirming that USPTO has statutory authority to construe
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`skill in the art in light of the specification, and absent any special definition,
`we give claim terms their ordinary and customary meaning. See In re Suitco
`Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech.,
`
`2 WPI asserts that the word “if” was erroneously included in issued claim 1
`(PO Resp. 27, 45) and seeks to file a Certificate of Correction, discussed
`below, to address this error. As discussed below, we conclude that the
`inclusion or exclusion of the word “if” in claim 1 does not affect our
`analysis of that claim’s patentability.
`
`6
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`Patent 9,125,051 B2
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`meaning is the meaning that the term would have to a person of ordinary
`skill in the art in question.” (internal quotation marks omitted)). Only terms
`which are in controversy need to be construed, and then only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the Decision on Institution, we acknowledged that TCT addressed
`the preambles of claims 1 and 21, and that WPI took no issue with the
`proposed constructions of those preambles “for purposes of [its] Preliminary
`Response.” Dec. 6. No claim terms were explicitly construed in the
`Decision on Institution. Id. WPI continues to have no dispute with TCT’s
`claim construction of the preamble, although WPI asserts that the
`transceiver, at least one processor, and a memory unit, of claim 21, do not
`constitute part of the preamble of that claim. PO Resp. 9–10. We agree with
`WPI that the recited elements of claim 21 are not part of the preamble,
`which TCT acknowledges. See Ex. 1001, 12:35–13:8; Reply 12.
`WPI also argues that the broadest reasonable interpretation of
`“operating the CPE in an idle state if no new data arrives at the CPE within
`the first period of time,” as recited in claims 1 and 21, is “operating the
`[CPE] in an idle state, in which the [CPE] awaits arrival of data packets
`to send as upstream data to the BSC, [on condition that] no new data
`arrives at the CPE within the first period of time.” PO Resp. 10. In so
`arguing, WPI relies on a commensurate passage in the Specification
`describing idle state 20. Id. (citing Ex. 1001, 6:50–52).
`TCT argues that we should reject WPI’s interpretation because the
`’051 Patent does not define a special meaning for idle state and the cited
`
`7
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`IPR2016-017041861
`Patent 9,125,051 B2
`portion of the Specification merely describes one type of “idle state.”
`Reply 9–10. The Specification provides another description of “idle state”
`that reads: “The state machine preferably also includes an idle state in
`which the customer premises equipment awaits arrival of data packets to
`send as upstream data to the base station controller.” Ex. 1001, 2:43–45.
`However, TCT asserts that all claims are unpatentable even if we were to
`accept WPI’s proposed interpretation. Id. at 11.
`Based on our review of the Specification, we determine that both
`passages cited by the parties support WPI’s argument that “idle state” as
`used in claims 1 and 21 refers to a state in which the CPE awaits arrival of
`data packets to send as upstream data to the BSC. Accordingly, we adopt
`WPI’s interpretation of “idle state.”
`However, we also note that the Specification describes at least two
`different states in which the CPE “awaits arrival of data packets to send as
`upstream data to the BSC.” For example, the CPE awaits arrival of data
`while it is still receiving unicast polling requests from the BSC. See
`Ex. 1001, 7:25–35 (describing grant pending absent state in which “CPE 13
`can use [a] . . . unicast request slot to request a data slot” (i.e., without
`contention) for upstream data “if more data is received” by CPE 13). CPE
`also awaits arrival of data packets when it has no grant pending and is not
`receiving unicast polling requests from BSC 12. Id. at 6:50–52. The
`Specification refers to this type of state as “idle state 20.” The claimed “idle
`state” refers to the second of these two states in which CPE awaits arrival of
`data packets to send as upstream data.
`
`8
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`IPR2016-017041861
`Patent 9,125,051 B2
`B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`In our Decision on Institution, we concluded that the argument and
`evidence adduced by TCT demonstrated a reasonable likelihood that claims
`1, 2, 4, 5, 21–23, 25, and 26 were unpatentable as obvious based on the
`challenges identified in the table in Part I.A above. Dec. 17. We must now
`determine whether Petitioner has established by a preponderance of the
`evidence that the specified claims are unpatentable over the cited prior art.
`35 U.S.C. § 316(e). In this regard, we previously instructed Patent Owner
`that “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper 9, 6; see also In re Nuvasive,
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s
`failure to proffer argument at trial as instructed in scheduling order
`constitutes waiver). Additionally, the Board’s Trial Practice Guide states
`that the Patent Owner Response “should identify all the involved claims that
`are believed to be patentable and state the basis for that belief.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`C. LEGAL STANDARDS
`TCT challenges the patentability of claims 1, 2, 4, 5, 21–23, 25, and
`26 on the grounds that the claims are obvious in light of Abi-Nassif,
`DOCSIS 1.1, and APA. To prevail in its challenges to the patentability of
`the claims, TCT must establish facts supporting its challenges by a
`preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In
`an [inter partes review], the petitioner has the burden from the onset to show
`with particularity why the patent it challenges is unpatentable.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35
`U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with
`
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`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). The burden of persuasion never shifts to WPI. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007), reaffirmed the framework for determining obviousness as set
`forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`summarized the four factual inquiries set forth in Graham that we apply in
`determining whether a claim is reasonably likely to be unpatentable as
`obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and
`content of the prior art, (2) ascertaining the differences between the prior art
`and the claims at issue, (3) resolving the level of ordinary skill in the
`pertinent art,3 and (4) considering objective evidence indicating obviousness
`or nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–
`18). In an inter partes review, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F. 3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail
`Petitioner must explain how the proposed combinations of prior art would
`
`
`3 The parties do not dispute that a person having ordinary skill in the art
`refers to a person holding an undergraduate degree in electrical engineering
`or having an equivalent educational experience, and three or more years
`working in a relevant field employing digital communications technology to
`deliver telecommunication services, or alternatively a relevant field
`involving the design of telecommunication products. Pet. 5 (citing Ex. 1005
`¶ 33); PO Resp. 8.
`
`10
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`IPR2016-017041861
`Patent 9,125,051 B2
`have rendered the challenged claims unpatentable. With these standards in
`mind, we address each challenge below.
`D. OBVIOUSNESS IN VIEW OF ABI-NASSIF, DOCSIS 1.1, AND APA
`TCT argues that the combination of Abi-Nassif, DOCSIS 1.1, and
`APA renders claims 1, 2, 4, 5, 21–23, 25, and 26 unpatentable as obvious.
`Pet. 37–78. TCT frames its challenge based on this combination by
`analyzing it two ways, one with Abi-Nassif being modified by teachings in
`DOCSIS 1.1 and the APA, id. at 37–58, and another with DOCSIS 1.1 being
`modified by teachings in Abi-Nassif and the APA, id. at 58–78. We consider
`the pair of these separately identified challenges as if TCT had merely cast
`its challenge as being based on Abi-Nassif, DOCSIS 1.1, and APA
`considered together.4 For the reasons expressed below, we are persuaded
`that TCT has demonstrated by a preponderance of evidence that the
`combination of Abi-Nassif, DOCSIS 1.1, and APA renders claims 1, 2, 4, 5,
`21–23, 25, and 26 unpatentable as obvious.
`
`
`4 The predecessor to our reviewing court has previously explained that:
`In a case of this type where a rejection is predicated on two
`references each containing pertinent disclosure which has been
`pointed out to the applicant, we deem it to be of no significance,
`but merely a matter of exposition, that the rejection is stated to
`be on A in view of B instead of on B in view of A, or to term one
`reference primary and the other secondary.
`In re Bush, 296 F.2d 491, 496 (CCPA 1961).
`
`11
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`Patent 9,125,051 B2
`1. Overview of Abi-Nassif
`TCT contends that Abi-Nassif “discloses every limitation of the
`independent claims other than the trivial aspect of transitioning to an idle
`state if new data [do] not arrive ‘prior to expiry of a timeout.’” Pet. 21. Abi-
`Nassif describes a medium access control (“MAC”) protocol for
`coordinating access to a shared medium communication network such as
`data-over-cable using hybrid fiber-optic and coaxial cable. Ex. 1022, 3:6–9,
`19:23–33. The MAC protocol provides rules for resolving collisions among
`secondary stations 104 as they request access to upstream channel 107. Id.
`at 20:19–21:9. The MAC protocol includes provisions for secondary
`stations to access the network using contention-free and contention-based
`methods. Id. at 21:10–22:20. Abi-Nassif
`describes the operating states of its network as
`ACTIVE, INACTIVE, and CONTENTION and
`an ability for secondary station 104 to transition
`from INACTIVE to ACTIVE without entering
`into contention. Id. at 24:30–26:4, Fig. 9. Abi-
`Nassif’s Figure 9, reproduced to the right, is a
`state diagram reflecting these three states. Although the preferred
`embodiment of Abi-Nassif is a wired network, Abi-Nassif also suggests that
`its methods may be used over a wireless network. Id. at 19:32–20:2.
`2. Overview of DOCSIS 1.1
`DOCSIS 1.1 is a complex and detailed standard by which cable
`providers deliver internet services to subscribers. See generally Ex. 1019. It
`specifies interactions among various hardware in the network, which is
`schematically depicted at a high level in Figure 1-1 that is reproduced below.
`
`12
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`
`
`
`Figure 1-1 illustrates IP traffic over a “Data-Over-Cable” system.
`Figure 1-1 illustrates the communication pathway from customer premises
`equipment to cable modems (“CM”), which relay data traffic over the cable
`network to a “cable modem termination system” (“CMTS”) located at the
`provider’s end. Ex. 1019 § 1.3.1. DOCSIS 1.1 uses a time division multiple
`access (“TDMA”) method for the CM to transmit data upstream in which the
`CMTS manages usage of time slots by CMs via a MAC protocol similar to
`the one discussed in Abi-Nassif. Id. §§ 3.5.2, 7.1. In operation, the CMTS
`regularly broadcasts a Bandwidth Allocation Map (“MAP”) message, which
`allocates upstream transmission opportunities (i.e., bandwidth) among the
`various CMs. Id. §§ 6.3.4, 7.1.1 et seq., Appendix O (“Bandwidth
`Allocation Map”); Ex. 1005 ¶¶ 146–147.
`The CMTS may broadcast an interval for requesting bandwidth,
`which the CMs interpret as an invitation to contend for bandwidth by
`sending requests during that interval. Ex. 1019 § 7.1.2.1, § 7.1.3.
`Alternatively, the CMTS may unicast an interval to a specific CM, which
`allows a specific CM to request a data slot without contending with other
`CMs. Id. DOCSIS 1.1 also offers enhanced quality of service (“QoS”),
`when compared to DOCSIS 1.0, in which certain types of data (e.g., voice
`over IP, high bandwidth FTP) that require high levels of network
`performance (e.g., high bandwidth, low latency, low jitter) are prioritized.
`Id. §§ 8.1.1.2, 8.1.6.
`
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`DOCSIS 1.1 describes the use of two “service flows” that use unicast
`polling to prioritize certain types of upstream data transmission. One, the
`real-time polling service (“rtPS”), enables the CM to reserve upstream data
`slots for real-time traffic like voice over IP (“VoIP”) while avoiding having
`to contend for those slots. Id. § 8.2.2, C.2.2.6.4; Ex. 1005 ¶ 191. The
`polling interval for the rtPS is on the order of tens of milliseconds or less.
`Ex. 1019 § 8.2.2. Another, the non-real-time polling service (“nrtPS”),
`reserves upstream data slots for applications like high bandwidth FTP
`transfers. Id. § 8.2.4. Like the rtPS, the nrtPS also allows the CM to reserve
`data slots without resorting to contention. Id.; Ex. 1005 ¶¶ 191–93.
`3. Overview of APA
`TCT contends that the ’051 Patent recognizes that “piggybacking (i.e.,
`including a bandwidth request within transmitted data) is ‘[o]ne technique
`used in the prior art to reduce contention traffic.’” Pet. 35 (citing Ex.1001,
`2:1–9, 6:1–9). TCT further contends that the piggybacking example details
`that the CPE attaches the size of its current data backlog to a header of a data
`packet sent upstream. Id. (citing Ex.1001, 2:4–6).
`4. Claim 1
`TCT contends that Abi-Nassif describes every claimed element (other
`than the timeout period recited in claim 1), Pet. 21, and DOCSIS 1.1
`describes every claimed element “nearly identical[ly],” but using different
`terminology, id. at 27. TCT also explains in detail how the teachings of Abi-
`Nassif and DOCSIS 1.1 would have rendered the claimed methods obvious
`to an ordinarily skilled artisan. Id. at 37–51, 58–72. TCT also cites
`testimony from Mr. Lipoff in which he explains in great detail how specific
`
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`functionality within Abi-Nassif and DOCSIS 1.1 correlate to the specific
`steps recited in the claimed method and system. Id.
`Claim 1 is directed to a method of operating a wireless
`communication unit through a series of steps performed by a CPE while
`communicating with a BSC over a link shared among other CPEs. The first
`three steps (1) involve transmitting a first type request message to the BCS
`in a contention slot, receiving an upstream data transmission grant, and then
`transmitting pending data to the BSC unit within a specified data slot. The
`next three steps (2) involve transmitting a second type request message,
`indicative of an amount of data pending for upstream transmission, to the
`BSC unit, receiving the grant, and transmitting a first additional pending
`data to the BSC unit. The next step (3) involves transmitting an additional
`second type request message if there is second additional pending data for
`transmission, with the following conditions:
`on condition that there is no further second additional pending
`data for transmission to the BSC unit and [if] new data becomes
`available for transmission to the BSC unit prior to expiry of a
`timeout, transmitting a third type request message to the BSC
`unit without contention, the third type request message indicating
`to the BSC unit that the new data awaits upstream transmission;
`and
`on condition that there is no further second additional pending
`data for transmission to the BSC unit and no new data becomes
`available for transmission to the BSC unit prior to expiry of the
`timeout, operating the wireless communication unit in an idle
`state.
`Ex. 1001, 10:15–26. As discussed above, WPI asserts that the word “if” was
`erroneously included in issued claim 1, which is bracketed in the noted
`conditions above. PO Resp. 27, 45. In general, the use of the word “if” in a
`claim indicates a conditional limitation, i.e., one that need not be satisfied in
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`consideration of the proper scope of such a claim. See Ex parte
`Schulhauser, App. No. 2013-007847 (PTAB Apr. 28, 2016) (Precedential;
`determining that the broadest reasonable interpretation of a method claim
`having a conditional “if” limitation does not include the conditional steps.).
`Removing the word “if” from claim 1 narrows the scope of that claim, i.e.,
`requiring consideration of the language after the word as well. We consider
`claim 1 below as omitting the word “if,” thus determining that the
`patentability of the broader claim 1, i.e., including the word “if,” would
`stand or fall with the patentability of the narrower claim.
`WPI does not contest that Abi-Nassif, DOCSIS 1.1, and APA describe
`steps denoted as (1)–(3) above, but argues only that references fail to teach
`or suggest the conditions of claim 1 reproduced above, i.e., the last two
`elements. We conclude that TCT’s contentions regarding the steps denoted
`as (1)–(3) above are persuasive. See Pet. 37–51, 58–72. WPI argues that
`TCT acknowledges Abi-Nassif’s failure to disclose the “expiry of a time
`out” condition and instead relies on DOCSIS 1.1 for the teaching of such a
`condition. PO Resp. 25–26 (citing Pet. 47). WPI counters, however, that
`DOCSIS 1.1 has no teaching or suggestion of timeouts in connection with
`operating a unit in an idle state. Id. at 26 (citing Ex. 2001 ¶ 18). We address
`WPI’s specific arguments below.
`WPI argues that TCT has misread Abi-Nassif as teaching that “unicast
`requests are used after piggybacking transmissions have ended.” Id. at 27–
`28 (citing Ex. 2001 ¶ 36). WPI also argues that “[t]he inevitability of
`transitions from contention-oriented to contention-free operations suggests
`nothing about a transition from one contention-free operation (e.g.,
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`piggybacking) to a different contention-free operation (e.g., unicast
`requests).” Id. at 28–29 (citing Ex. 2001 ¶ 37). We do not agree.
`As TCT points out, Abi-Nassif discloses that “[u]pon transmitting all
`of its data, the MAC User transitions back into the INACTIVE state,” but
`when new data to be transmitted are received, “a contention-free opportunity
`to transmit a request” is provided. Pet. 46; Reply 13–14 (citing Ex. 1022,
`24:31–25:5, 25:17–21). Figure 9 of Abi-Nassif, reproduced above,
`illustrates the transitions from the ACTIVE state to the INACTIVE state and
`from the INACTIVE state to the ACTIVE state, with the latter through a
`non-contention request. Reply 14–15 (citing Ex. 1022, Fig. 9, 24:30–25:5,
`25:17–21).
`WPI also argues that TCT has misconstrued DOCSIS 1.1 by
`rearranging elements thereof, by moving functions of the CMTS to the cable
`modem. PO Resp. 29–30, 31–32, 35–36, 45–47, 52–53 (citing Pet. 48, 69–
`71; Ex. 2001 ¶¶ 40, 52–53). More specifically, WPI argues that the
`“Timeout for Active QoS Parameters,” relied upon by TCT, is not an
`operation of the cable modem, but rather an operation of the CMTS,
`correlated with the BSC of claim 1. Id. at 30, 46 (citing Ex. 2001 ¶¶ 41, 53).
`WPI continues that any incorporation of DOCSIS 1.1’s cited functionalities
`into the system of Abi-Nassif would result in deactivation to the primary
`station, contrary to claim 1. Id. We do not agree.
`As TCT points out, claim 1 does not recite that the timeout must be
`maintained by the wireless communication unit, and that a person of
`ordinary skill in the art would have understood that “BSC could maintain the
`timeout and notify the wireless communication unit regarding the change in
`state of the timeout.” Reply 15–16 (citing Ex. 1001, 10:15–18, 10:24–25;
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`Ex. 1019, 251; Ex. 1057 ¶ 10). TCT also points out WPI’s declarant
`acknowledged that the cited element of claim 1 would be met where the base
`station maintains the timer and then tells the wireless communication unit
`that the timeout has expired, as taught by DOCSIS 1.1. Id. at 16 (citing Ex.
`1056, 79:19–25).
`WPI also argues that DOCSIS 1.1 discloses that although one service
`flow is inactive, another service flow is still active, and finds that TCT’s
`declarant acknowledges that at least one service flow is active at all times.
`PO Resp. 32–33, 48–52 (citing Pet. 51, 72–73; Ex. 2006, 32:8–10, 34:16–
`23, 41:13–22). WPI asserts that claim 1 requires operating the wireless
`communication unit in an “idle state,” and not merely operating with a
`service flow in an idle state. Id. We do not agree.
`The instant ground of unpatentability relies on the combination of
`Abi-Nassif and DOCSIS 1.1 to teach an “idle state,” as pointed out by TCT.
`Reply 17–18 (citing Pet. 47–48). In the INACTIVE state of Abi-Nassif, the
`secondary station has unicast polling opportunities, where those polling
`opportunities would time out if not used, as taught by DOCSIS 1.1. Id.
`(citing Ex. 1022, 24:30–25:5, 25:20–21; Ex. 1019, 251). We are not
`persuaded that the INACTIVE state in Abi-Nassif necessarily differs from
`the claimed “idle state,” such that the combination suggests “operating the
`wireless communication unit is an idle state,” per claim 1.
`With respect to the same aspect in DOCSIS 1.1, WPI also argues that
`the “idle state” shown in Figure K-1 of DOCSIS 1.1 is not associated with
`the “timeout” relied upon by TCT. PO Resp. 33–35 (citing Ex. 1019, 284,
`Fig. K-1; Ex. 2001 ¶¶ 18, 30, 45–46; Ex. 2004 ¶¶ 6–8). This is not
`persuasive, however, because the combination of Abi-Nassif and
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`DOCSIS 1.1 does not seek to incorporate the idle state of DOCSIS 1.1’s
`Figure K-1, as noted by TCT. Reply 19.
`Additionally, WPI argues that “DOCSIS 1.1 lacks the entire concept
`of a grant pending absent state,” and that “[c]laim 1 recites aspects of the
`grant pending absent state.” PO Resp. 44–45. Although it is correct that the
`specification of the ’051 Patent discusses a “grant pending absent state,” as
`discussed above in Section I.C., the challenged claims do not recite such a
`limitation. As such, we are not persuaded that DOCSIS 1.1’s omission of
`that specifically-recited state is problematic, given the discussions of Abi-
`Nassif, DOCSIS1.1, and APA, and their functionalities discussed above.
`With respect to combining Abi-Nassif, DOCSIS1.1, and APA, TCT
`argues that because Abi-Nassif expressly incorporates DOCSIS 1.0, an
`ordinarily skilled artisan would have found it obvious to incorporate the
`revised DOCSIS 1.1 and its improvements into Abi-Nassif to provide higher
`QoS and increase the efficiency of Abi-Nassif’s use of bandwidth. Pet. 49–
`50 (citing Ex. 1005 ¶¶ 264–270). TCT also argues that because Abi-Nassif
`explicitly incorporates DOCSIS 1.0 and DOCSIS 1.1 indicates that it is
`backward compatible with DOCSIS 1.0, an ordinarily skilled artisan would
`have used teachings in DOCSIS 1.1 relating to enhanced QoS features to
`improve the implementation of unicast polling already described in Abi-
`Nassif. Id. at 48–49 (citing Ex. 1005 ¶¶ 260–270).
`WPI counters that motivation, arguing that the “expiration of the timer
`associated with a service flow causes that service flow to become inactive
`[per DOCSIS 1.1]” and that “[i]ncorporating such functionality from a
`service flow into the operation of the MAC User [per Abi-Nassif] would not
`cause the cable modem to operate in its idle state, but rather would en
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