Trials@uspto.gov
`571-272-7822
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` Paper 39
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`Entered: December 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD,
`Patent Owner.
`_______________
`
`Case IPR2017-01472
`Patent 8,369,278 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
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`571-272-7822
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`
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`
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`
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`
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` Paper 39
`
`Entered: December 10, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD,
`Patent Owner.
`_______________
`
`Case IPR2017-01472
`Patent 8,369,278 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2017-01472
`Patent 8,369,278 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Samsung Electronics Co., Ltd. (“Petitioner”)1 filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 2, and 6–9 of U.S. Patent
`No. 8,369,278 B2 (Ex. 1001, “the ’278 patent”). Huawei Technologies Co.,
`Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim.
`Resp.”). We instituted an inter partes review of all the challenged claims.
`Paper 13 (“Inst. Dec.”); see 35 U.S.C. 314(a).
`Following institution, Patent Owner filed a Patent Owner Response
`(Paper 22, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Pet. Reply”).
`With our authorization, Patent Owner filed a Sur-Reply (Paper 32, “PO Sur-
`Reply”). Patent Owner also filed a Motion to Exclude (Paper 32), which we
`address below. On September 25, 2018, we conducted an oral hearing, for
`which a copy of the transcript (Paper 38, “Tr.”) is included in the record.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 2, and 6–9 of the ’278 patent
`are unpatentable. This final written decision is issued pursuant to 35 U.S.C.
`§ 318(a).
`
`B. Related Proceeding
`The parties identify one related district court case: Huawei
`Technologies Co. v. Samsung Electronics Co., Case No. 3:16-cv-02787
`(N.D. Cal.). Pet. 4; Paper 5, 1.
`
`
`1 Petitioner identifies Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., and Samsung Research America as real parties in interest.
`
`2
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`C. The ʼ278 Patent (Ex. 1001)
`The ’278 patent is entitled “Method and Apparatus for Sending
`Control Signaling” and is directed to
`[a] method for sending control signaling [that] may include:
`indicating, by the transmitter, a payload size or Redundancy
`Version (RV) through different states of one field in the control
`signaling; and sending the control signaling indicative of the
`payload size or RV on the field
`Ex. 1001, 3:36–40. The background of the ’278 patent discloses that
`mobiles and base stations use a retransmission scheme called Hybrid
`Automatic Repeat reQuest (HARQ). Ex. 1001, 1:36-45. HARQ is a scheme
`wherein a receiver sends either an acknowledgement (ACK) or negative
`acknowledgement (NACK) back to the transmitter after each message. Id. at
`1:60–67. The base station notifies the terminal of allocated physical
`resources and HARQ-related information through downlink control
`signaling and transmits the downlink data to the terminal. Id. at 1:46–49.
`Such control signaling may include payload size, HARQ process number,
`Redundancy Version (RV), and New Data Indicator (NDI). Id. at 1:49–51.
`As disclosed in the ’278 patent, payload size (the size of the
`transmitted data) and RV are the control information sent as part of the
`control signaling from a base station to a mobile device. Ex. 1001 at 1:49-
`52. “The value of RV is generally the default value in the initial
`transmission. If the packet is retransmitted, the NDI value is the same as
`that in the previous transmission, and the RV value changes.” Id. at 2:17–
`21. Thus, “the RV is marked RV1 when the packet is retransmitted for the
`first time, marked RV2 when the packet is retransmitted for the second time,
`. . . and so on.” Id. at 2:21–26. In the initial transmission and retransmission
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`Patent 8,369,278 B2
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`of the same packet, the payload size is the same,” thus the payload size need
`only be indicated in the initial transmission. Id. at 2:26–28.
`The ’278 patent further discloses that:
`[a] method for sending control signaling is provided in
`embodiments disclosed herein, including: indicating payload
`size or RV based on different states of one field in the control
`signaling; and sending, in response to the indication, the control
`signaling indicative of the payload size or RV in the field, thus
`vacating the field occupied by the information not required to be
`indicated, and saving physical resources.
`Id. at 4:23–29. Thus, in this method “[d]ifferent states of one field in the
`control signaling may indicate a payload size or RV.” Id. at 4:49–50.
`The ’278 patent provides an example of a 6-bit field that is used to
`represent either RV or payload size:
`in a 6-bit field, 4 states whose foremost upper bits are all 0s can
`indicate 4 different RVs. That is, the 4 states 000000, 000001,
`000010 and 000011 indicate RV1-RV4. Accordingly, the
`remaining 60 states (any bit in the 4 foremost upper bits of the
`remaining 60 states is non-zero) indicate 60 different payload
`sizes.
`Id. at 5:9-14. In this embodiment, the ’278 patent explains that “[t]he 2 bits
`occupied by the RV in the prior art are saved.” The ’278 patent further
`explains that “when the control signaling is received, it is practicable to
`judge whether the field in the control signaling indicates the payload size or
`the RV by only detecting the state code.” Id. at 5:14–17.
`
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`D. Illustrative Claims
`Petitioner challenges claims 1, 2, and 6–9 of the ’278 patent, with
`independent claims 1 and 7. Claims 1 and 2 are reproduced below:
`1. A method of signaling, comprising:
`[1A]
`receiving, by a
`terminal, control signaling
`comprising a field, wherein the field includes N bits that are
`either 1 or 0, and a state of the field is indicated by all the N bits
`of the field; wherein N is a positive integer greater than 1;
`[1B] wherein the field is dynamically indicative of one of a
`payload size or a Redundancy Version (RV) through the state of
`the field, [1C] wherein the payload size is indicated through a
`first state of the field when the first state is within a first
`predetermined range and the RV is indicated through a second
`state of the field when the second state is within a second
`predetermined range distinct from the first predetermined range;
`and
`
`[1D] sending, by the terminal, a packet according to the
`received control signaling to a base station (BS).
`2.
`The method of claim 1, further comprising:
`determining, by the terminal, that the RV is a default value
`if the received control signaling is indicative of the payload size
`on the field.
`Ex. 1001, 11:60–12:15 [bracketed lettering added], Cert. of Corr., 1.
`
`E. Instituted Grounds of Unpatentability
`We instituted review based on the Petition’s challenges to claims 1, 2,
`and 6–9 of the ’278 patent as follows (see Inst. Dec. 28–29; Pet. 6–7):
`
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`References
`Kim ’379,2 Kim ’470,3 and
`TS 24.0084
`R1-02-00515 and TS 24.008
`R1-02-0051, TS 24.008, and
`Kim ’379
`
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`1, 2, and 6–9
`1, 6, 7, and 9
`2 and 8
`
`II. ANALYSIS
`
`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude portions of TS 24.008 (Petitioner’s
`Exhibit 1007) and R1-02-0051 (Petitioner’s Exhibit 1008). Paper 30, 1–2
`(“PO Mot.”). Patent Owner also moves to exclude certain declaration
`testimony of Petitioner’s expert Dr. Yaqub, namely, paragraphs 54 through
`57 of Exhibit 1012, cited for public availability. Id. at 2. Petitioner opposes
`Patent Owner’s motion to exclude. Paper 33 (“Pet. Opp.”). In response,
`Patent Owner filed a reply to Petitioner’s opposition to the motion to
`exclude. Paper 35. Having reviewed the parties’ arguments and evidence
`and for the reasons below, Patent Owner’s motion to exclude is denied.
`
`
`2 U.S. Pat. No. 7,813,379 issued Mar. 6, 2001 to Kim published Oct. 12,
`2010 (Ex. 1005, “Kim ’379”).
`3 U.S. Patent App. Pub. No. 2003/0123470 A1 to Kim et al. published July
`3, 2002 (Ex. 1006, “Kim ’470”).
`4 3GPP TS 24.008 V6.15.0, 3rd Generation Partnership Project; Technical
`Specification Group Core Network and Terminals; Mobile radio interface
`Layer 3 specification; Core network protocols; Stage 3 (Release 6) (Ex.
`1007, “TS 24.008”).
`5 Samsung, An efficient signaling on SCCH-HS and channel coding of
`SCCH-HS, 3GPP TSG RAN WG1 Meeting #23, R1-02-0051, (Ex. 1008,
`“R1-02-0051”).
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`1. Declaration of Dr. Yaqub (Exhibit 1012)
`In paragraphs 49 through 57 of his declaration, Dr. Raziq Yaqub
`opines on the authenticity, public availability, and publication dates of TS
`24.008 and R1-02-0051. See Ex. 1012 ¶¶ 54–57. Dr. Yaqub bases his
`opinion, in part, on his ability to find these documents on the 3GPP ftp (file
`transfer protocol) server and listserv server, and the time stamps associated
`with these documents on those servers. Id. His testimony includes
`screenshots of portions of the 3GPP ftp server webpage listing TS 24.008
`and R1-02-0051, and URLs (universal resource locators) pointing to TS
`24.008 and R1-02-0051 on the 3GPP ftp server. Id.
`On December 21, 2017, Patent Owner objected to Dr. Yaqub’s
`declaration to the extent that it “rel[ies] on web pages that were not filed as
`exhibits in this proceeding,” and asserted that those web pages lack
`authentication and contain hearsay. Paper 15, 1–2. On January 8, 2018,
`Petitioner provided the webpages to Patent Owner in the form of
`supplemental evidence. See Paper 16, 1; see also 37 C.F.R. § 42.64(b)(2).
`On January 11, 2018, Patent Owner objected to the webpages “as lacking
`authentication and containing hearsay.” Paper 16, 1.
`Patent Owner moves to exclude paragraphs 54 through 57 of
`Dr. Yaqub’s declaration “because they rely on unauthenticated webpages for
`the truth of the matter asserted in those webpages.” PO Mot. 3–4. Patent
`Owner argues that the webpages lack authentication and contain
`inadmissible hearsay on which Dr. Yaqub relied in determining when TS
`24.008 (Ex. 1007) and R1-02-0051 (Ex. 1008) were publicly accessible on
`the 3GPP ftp server. Id. at 3–4. Petitioner argues that the webpages to
`which Patent Owner objects are self-authenticating and that they have been
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`authenticated by Dr. Yaqub’s testimony regarding their distinctive
`characteristics. Pet. Opp. 3–4. Petitioner further argues that the webpages
`“are exempt from the rule against hearsay under Federal Rules of Evidence
`803(6) and 807.” Id. at 5. Patent Owner’s reply asserts that Dr. Yaqub is
`not qualified to certify the authenticity of the webpages as regularly kept
`business records because “[h]is declaration is silent as to his role in the
`[3GPP] group’s recordkeeping or his role, if any, in maintaining the
`accuracy of the 3GPP webpages.” Paper 35, 2.
`Under Federal Rule of Evidence 803(6), records of a regularly
`conducted activity are not hearsay, provided the opposing party has not
`established that the source of information or the method or circumstances of
`their preparation indicate a lack of trustworthiness, and the party offering the
`records establishes through the testimony of a qualified witness that the
`records are (a) made at or near the time from information transmitted by
`someone with knowledge, (b) kept in the course of a regularly conducted
`business activity, and (c) made as a regular practice of that activity. Fed. R.
`Evid. 803(6). Under Federal Rule of Evidence 902(11), such records are
`self-authenticating, provided (a) they are originals or copies that meet the
`requirements of Rule 803(6)(a)–(c) as shown by certification of a qualified
`person, (b) notice of intent to offer the records is given to the opposing party
`before a hearing, and (c) the records and certifications are made available to
`the opposing party so that the opposing party has a fair opportunity to
`challenge them. Id. at 902(11).
`We note that, “[b]ecause of the general trustworthiness of regularly
`kept records and the need for such evidence in many cases, the business
`records exception [to the hearsay rule] has been construed generously in
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`favor of admissibility.” Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391
`(Fed. Cir. 1996). Moreover “the ‘custodian or other qualified witness’ who
`must authenticate business records need not be the person who prepared or
`maintained the records, or even an employee of the record-keeping entity, so
`long as the witness understands the system used to prepare the records.” Id.
`Lastly, “documents that are standard records of the type regularly
`maintained by firms in a particular industry may require less by way of
`foundation testimony than less conventional documents proffered for
`admission as business records.” Id.; see also Gjokaj v. U.S. Steel Corp., 700
`F. App’x 494, 502 (6th Cir.) (finding a business record certified by a
`qualified witness is self-authenticating under Federal Rule of Evidence
`902(11)).
`We are persuaded by Dr. Yaqub’s testimony and find that the 3GPP
`webpages on which he relied in his declaration are authentic, and that their
`contents, including the publication dates of TS 24.008 (Exhibit 1007) and
`R1-02-0051 (Exhibit 1008), are not hearsay. Dr. Yaqub is a qualifying
`witness for the purposes of Rules 806(b) and 902(11). See Conoco, 99 F.3d
`at 391; see also Gjokaj, 700 F. App’x at 502. We credit the facts qualifying
`Dr. Yaqub. See Ex. 1012 ¶¶ 7–12. In addition, Dr. Yaqub testifies that
`3GPP “produce[s] reports and specifications that define technologies
`covering cellular communications networks.” Id. ¶ 19. The specifications
`are “contribution-driven by 3GPP member companies,” and produced via
`regular and quarterly plenary meetings “where member companies’
`contributions, draft specification[s], and other discussion documents are
`presented for approval.” Id. ¶ 20. Dr. Yaqub further testifies that 3GPP
`follows “[a] well-established process . . . for capturing accepted proposals
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`and changes in Technical Specifications (TS) and Technical Reports (TR).”
`Id. ¶ 24. This process includes a file naming convention so that “changes
`that are brought into the standard, from the past, present, and in the future,
`are well documented and controlled.” Id. ¶ 28 (quoting Ex. 1016, 5). 3GPP
`documents are stored on 3GPP’s ftp server in zip-compressed format, where
`the filename of the zip file is the same as the name of the source document.
`Id. ¶ 30 (citing Ex. 1016 § 5A). Member-contributed documents (“TDocs”)
`are assigned unique document numbers, and “members upload these
`documents to 3GPP’s public FTP server before, during, and after Working
`Group meetings.” Id. ¶ 30. The documents are uploaded “[s]oon after the
`end of the meeting—the same day, or at worst within a few days.” Id. ¶ 37.
`The “TDocs. are publically-available and unrestricted on the online FTP
`server,” and are “openly published and no password is needed to access any
`information on the 3GPP website.” Id. ¶ 30; see also Ex. 1016 § 7.6.
`Documents uploaded to the 3GPP ftp server “receive a date and time stamp.”
`Ex. 1012 ¶ 33. The documents are “retained on the public 3GPP server
`indefinitely, and the date and time stamp can be relied upon to indicate when
`the upload occurred.” Id. ¶¶ 33, 37.
`Based on the foregoing testimony, we find that Dr. Yaqub
`“understands the system used to prepare [3GPP] records,” and is a “qualified
`witness” or “qualified person” as those terms are used in Federal Rules of
`Evidence 803(6) and 902(11). See Conoco, 99 F.3d at 391; see also Gjokaj,
`700 F. App’x at 502.
`For the particular documents relevant to this proceeding, namely, TS
`24.008 (Ex. 1007) and R1-02-0051 (Ex. 1008), Dr. Yaqub testifies that he
`“navigated to the relevant file” on the 3GPP ftp server and “confirm[ed] that
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`it had been correctly uploaded.” Ex. 1012 ¶ 51. Dr. Yaqub provides the
`URLs that he used to navigate to the documents and testifies that he
`recognizes the documents located by those URLs as “true and correct”
`copies. Id. ¶¶ 54, 56. Dr. Yaqub also provides screenshots of the 3GPP ftp
`server directories that include the identically named zip files containing TS
`24.008 and R1-02-0051. Id. As discussed above, when Patent Owner
`objected to these screenshots, Petitioner served complete printouts of the
`3GPP ftp server directories from which Dr. Yaqub took the screenshots.
`Paper 15, 1–2; Pet. Opp. 4–5; Exs. 1101–1103; see also Paper 16, 1.
`We are unpersuaded by Patent Owner’s arguments to exclude the
`webpages. Patent Owner provides no evidence that the 3GPP ftp server, the
`webpages disclosing the contents of the ftp server directories relied on, or
`the methods or circumstances by which those webpages or the contents
`disclosed in those webpages were prepared lack trustworthiness. See PO
`Mot. 2–4; Paper 35, 1–5. Dr. Yaqub, by contrast, testifies that the contents
`of the 3GPP ftp server directories (webpages) on which he relied were made
`and kept in the course of 3GPP’s regularly conducted business activity, and
`were made at or near the times indicated by their upload date and time
`stamps from information transmitted by 3GPP contributing members. See
`Ex. 1012 ¶¶ 24, 28–30, 33, 37. Dr. Yaqub’s declaration and the webpages
`(3GPP ftp server directory printouts) on which he relied were served on
`Patent Owner with notice of intent to use them, and Patent Owner was
`provided with the opportunity to challenge the webpages, their content, and
`Dr. Yaqub’s testimony regarding how that content and the webpages
`disclosing that content were created. See 37 C.F.R. § 42.51(b)(1)(ii).
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`Based on the evidence presented, as summarized above, we find that
`Dr. Yaqub’s testimony sufficiently authenticates the 3GPP ftp server
`directories (webpages) as well as their contents such that they are admissible
`under Federal Rule of Evidence 902(11) and are not hearsay under Federal
`Rule of Evidence 803(6). Accordingly, we deny Patent Owner’s motion to
`exclude paragraphs 54 through 57 of Dr. Yaqub’s declaration (Exhibit
`1012).
`Petitioner also argues that the 3GPP ftp server directories (webpages)
`on which Dr. Yaqub relies can be authenticated under Federal Rule of
`Evidence 901(b)(4), and that their contents are not hearsay under Federal
`Rules of Evidence 807. Pet. Opp. 5–9. Patent Owner argues to the contrary.
`Paper 35, 1–4. Because we find that Petitioner has shown that the webpages
`are self-authenticating business records and that their contents are not
`hearsay, we need not address these issues. See Beloit Corp. v. Valmet Oy,
`742 F.2d 1421, 1423 (Fed. Cir. 1984).
`2. TS 24.008 (Ex. 1007) and R1-02-0051 (Ex. 1008)
`Patent Owner moves to exclude as hearsay portions of TS 24.008 (Ex.
`1007) and R1-02-0051 (Ex. 1008) “[t]o the extent Petitioner relies on the
`dates within Exhibit 1007 [and Exhibit 1008] for the purported truth of the
`matter asserted to show the date of public accessibility of Exhibit 1007 [and
`Exhibit 1008].” PO Mot. 1–2. Petitioner argues that the contents of TS
`24.008 and R1-02-0051 are “exempt from the rule against hearsay under
`Federal Rules of Evidence 803(6) and 807.” Pet. Opp. 9; see also id. at 9–
`12. Patent Owner argues that “Dr. Yaqub’s role as a ‘participant in 3GPP’ is
`insufficient to render him a qualified individual to support admission under
`FRE 806(b),” and that “FRE 807 is an ‘exceptional’ remedy that Petitioner
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`has not justified in this case.” Paper 35, 2–3.
`For the reasons discussed above with respect to Exhibit 1012, we find
`that Dr. Yaqub is a qualified witness who has authenticated TS 24.008 and
`R1-02-0051, such that they are not hearsay under Fed. R. Evid. 803(6).
`Patent Owner reliance on Kolmes v. World Fibers Corp., 107 F.3d 1534,
`1542–43 (Fed. Cir. 1997), to argue that Dr. Yaqub is not a qualified witness
`is misplaced. Paper 30, 4. In Kolmes, a witness who “testified that he had
`seen [certain] documents while attending a meeting,” but failed to “testify
`concerning the record-keeping process related to them” was found not to be
`a “qualified witness” under Federal Rule of Evidence 803(6). Kolmes, 107
`F.3d at 1542–43. In the instant case, however, Dr. Yaqub has provided
`extensive testimony regarding 3GPP’s record-development and record-
`keeping process, including the fact that member-contributed documents that
`are uploaded to the 3GPP ftp server are indefinitely maintained on that
`server as of their upload dates. See Ex. 1012 ¶¶ 24, 28–30, 33, 37, 54, 57.
`Dr. Yaqub is, therefore, a qualifying witness. See Conoco, 99 F.3d at 391.
`Accordingly, for the reasons given, we find that TS 24.008 (Ex. 1007)
`and R1-02-0051 (Ex. 1008) are admissible business records under Federal
`Rule of Evidence 902(11), and that their contents are not hearsay under
`Federal Rule of Evidence 803(6). We, therefore, deny Patent Owner’s
`motion to exclude any portions of Exhibits 1007 and 1008. Moreover,
`because we find these exhibits are admissible and not hearsay under Federal
`Rule of Evidence 803(6), we do not address the parties’ additional
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`arguments regarding whether these documents are admissible and not
`hearsay under Federal Rule of Evidence 807. See Beloit, 742 F.2d at 1423.
`3. 3GPP FAQ Website (Ex. 1017)
`Patent Owner moves to exclude Exhibit 1017 for a lack of
`authenticity. Paper 15, 1; Paper 30, 4–5. Exhibit 1017 is a description
`document generally discussing 3GPP. Ex. 1017, 1–2. The substance of
`Patent Owner’s arguments is that Exhibit 1017 lacks authentication and
`contains inadmissible hearsay under FRE 801–802 because it does not
`support the citations Petitioner provides on page 19 of the Petition. Paper
`35, 4–5. Petitioner argues that Patent Owner’s arguments regarding Exhibit
`1017 are vague and do not state with particularity the deficiencies of the
`exhibit. Paper 33, 12.
`We deny Patent Owner’s request to exclude Exhibit 1017 as the
`citations Patent Owner identifies as incorrect do not address its lack of
`authenticity or hearsay. Paper 30, 4–5. The issues Patent Owner identifies
`regarding inaccurate citations to the document for background on the 3GPP
`pertain to the weight and persuasiveness of the cited evidence and not its
`authenticity. We see no need to exclude Exhibit 1017 based on its failure to
`support the propositions for which Petitioner cites the references. Instead,
`we give such evidence its due limited weight in consideration of the entire
`record before us. Accordingly, we deny Patent Owner’s motion to exclude
`Exhibit 1017.
`
`B. Level of Skill in the Art
`Petitioner argues that a person of ordinary skill in the art “at that time
`[of invention] would be a person with a graduate degree (M.S. or Ph.D.) in
`physics or a related field (e.g., electrical engineering or computer science)
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`and 2–3 years of work experience in cellular or radio communications
`systems.” Pet. 17 (citing Ex. 1004 ¶ 22). Patent Owner contends that a
`person of ordinary skill “would have at least a Bachelor’s degree in
`computer science or electrical engineering with a focus on
`telecommunications, and two to four years of experience in the
`telecommunications industry.” PO Resp. 7 (citing Ex. 2006 ¶ 19–20). We
`determine that the differences between the parties level of skill in the art are
`not material. Accordingly, we agree with the parties that a person of
`ordinary skill in the art would have experience in telecommunications or
`radio communications and a technical degree in physics, engineering, or
`computer science. We also find that such a level of ordinary skill in the art
`is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`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).
`C. Claim Interpretation
`The claim construction standard applicable to this inter partes review
`proceeding is the broadest reasonable interpretation in light of the patent
`specification. See 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard).6 Under this standard, claim terms
`
`
`6 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018, does not apply to this proceeding, because the new “rule is effective
`on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed
`on or after the effective date.” Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51340 (Nov. 13, 2018) (to be codified at 37
`C.F.R. pt. 42).
`
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`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only those terms that are in controversy, however, need to be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Both parties agree that the terms of the ’278 patent are to be given
`their plain and ordinary meaning, and no express constructions are needed.
`Pet. 18–19; PO Resp. 7. Accordingly, we agree that the terms should be
`construed to have their plain and ordinary meaning, and no term requires
`express interpretation for purposes of this Decision.
`
`D. Legal Standard
` A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`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
`
`16
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`IPR2017-01472
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`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418).
`
`E. Prior Art Cited
`1. Kim ’379 (Ex. 1005)
`Kim ’379 describes a 3GPP radio communication system with HARQ
`for retransmissions. Ex. 1005 at 1:26–37; 2:5–10. A “padding bit
`eliminator” is used to “eliminate[] optional padding bits of a variable size
`from a transport block for data packet transmission.” Id. at Abstract.
`Specifically, Kim ’379 discloses “transmitting additional control information
`about the number of padding bits without an additional information bit field
`by efficiently utilizing an existing control information field.” Id. at 7:26–30.
`“The [High Speed Shared Control Channel] is divided into two parts
`each delivering control information as illustrated in Table 1 below.
`Numerals in brackets indicate the number of information bits.” Ex. 1005,
`3:3–5.
`
`
`The Transport Block Size (TBS) indicates the size of a transport block on a
`transport channel. Id. at 3:36–37. HARQ introduces two new schemes to
`increase the transmission efficiency of Automatic Repeat reQuest (ARQ),
`while the Redundancy and Constellation Version (RV) varies with a
`modulation scheme. Id. at 3:41–42.
`
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`Table 5, shown below lists control information bits transmitted on the
`High Speed Shared Control Channel (HS-SCCH), where the HS-SCCH
`encoder includes a Padding Bit Number Indicator indicating the number of
`the eliminated padding bits in the control information. Id. at 9:1–9.
`
`
`
` “Table 5 is the same as Table 1 illustrating the configuration of control
`information recommended by the present standards” except that “the RV
`field is modified to additionally have the Padding Bit Number
`Indicator.” Id. at 9:20–25. Kim ’379 discloses that “[i]f one of the RV
`coding values, Xrv 0 to 7 is preset as a default for initial transmission
`between the transmitter and the receiver, there is no need for transmitting Xrv
`at an initial transmission. The transport block size is equal for initial
`transmission and retransmission.” Id. at 9:26–31.
`The Padding Bit Indicator is used to determine the new Transport
`Block Size (TBS) for the data being received by the mobile device. The
`Padding Bit Indicator described in Kim ’379 is used to determine the
`Transport Block Size, or layer 1 payload size. When the common field is
`used to indicate payload size, the RV is considered to be the default value,
`which is 0 (Xrv = 0). Id. at 11:20-22. “Information about the number of the
`padding bits can be transmitted without an additional information bit field
`
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`through efficient use of an existing control information field.” Id. at 11:36-
`40.
`
`2. Kim ’470 (Ex. 1006)
`Kim ’470 describes a 3GPP radio communication system with HARQ
`for retransmissions. Ex. 1006 ¶¶ 5, 9. Kim ’470 describes control signaling
`information exchanged between a base station and a mobile device on the
`High Speed-Shared Control Channel (HS-SCCH). Id. ¶ 13. Kim ’470
`discloses that HS-SCCH delivers at least Transport Block Size (TBS) and
`Redundancy Version (RV) information. Id. ¶¶ 14–23. Specifically, Kim
`’470 describes a “common field” that holds either TBS (together with
`transport channel identifier (TrCH ID)) or RV. Id. ¶¶ 68, 79. Figure 8A,
`below, shows the HS-SCCH in the communication system.
`
`
`
`Figure 8A shows that:
`the HS-SCCH is divided into two parts, i.e., part 1 and part 2.
`Part 1 delivers information about a channelization code set and
`an MS, and part 2 delivers information about an NDI, a TrCH ID
`&TBSS or RV, a CRC, and an HARQ Process ID. The field
`including the TrCH ID &TBSS or RV is defined as a common
`field.
`Id. ¶ 83. Kim ’470 discloses that the “common field” contains 6 bits. Id. at
`Table 2. Kim ’470 further discloses that “different control information (i.e.,
`RV or TrCH ID & TBSS) is transmitted depending on whether a data packet
`
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`is initially transmitted or retransmitted, thereby saving information bits
`assigned to the RV or TrCH ID & TBSS” using “one common field to
`deliver the RV or TrCH ID & TBSS. Id. ¶ 91.
`Figure 10, below, schematically shows the common field. Id. ¶ 68.
`
`
`
`Figure 10 shows the structure of the common field shown in Figure
`8A, shown above. Id. ¶ 90. Kim ’470 discloses that:
`if N bits are used to deliver a TrCH ID & TBSS and M bits are
`used to deliver an RV (generally N>M), (N-M) bits are unused
`at a retransmission of an HSDPA data packet because the TrCH
`ID & TBSS is transmitted at an initial transmission and the RV
`is transmitted at the retransmission. The (N-M) bits can be
`utilized as radio resources for various purposes: (1) to
`additionally transmit control information of another field, that is,
`for double transmission of the control information, (2) to increase
`demodulation performance by bit insertion; (3) to be DTX-
`processed; and (4) to be inserted as dummy bits.
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