Trials@uspto.gov
`571.272.7822
`
`Paper 45
`Entered: December 3, 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 IPR2017-01473
`Patent 8,885,583 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571.272.7822
`
`Paper 45
`Entered: December 3, 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 IPR2017-01473
`Patent 8,885,583 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2017-01473
`Patent 8,885,583 B2
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`
`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 3, 4, and 7 of U.S. Patent
`No. 8,885,583 B2 (Ex. 1001, “the ’583 patent”). We initially instituted an
`inter partes review of all the challenged claims and four of the five grounds
`presented in the Petition because Petitioner demonstrated a “reasonable
`likelihood” of prevailing on “at least 1 of the claims challenged in the
`petition.” Paper 11 (“Inst. Dec.”); see 35 U.S.C. § 314(a). After institution
`of trial, we modified our Institution Decision to include review of all the
`challenged claims and all the grounds presented in the Petition. Paper 24.
`Huawei Technologies Co., Ltd. (“Patent Owner”) filed a Patent
`Owner Response (Paper 23, “PO Resp.”) addressing the four grounds
`originally identified for review in our Institution Decision, and a
`Supplemental Patent Owner’s Response (Paper 31, “Supp. PO Resp.”)
`addressing the fifth ground that was subsequently added for review.
`Petitioner then filed a Reply. Paper 32 (“Pet. Reply”). With our
`authorization, Patent Owner filed a Sur-Reply. Paper 38 (“PO Sur-Reply”).
`Patent Owner also filed a Motion to Exclude (Paper 36), which we address
`below. On September 27, 2018, we conducted an oral hearing. A copy of
`the transcript (Paper 44, “Tr.”) is included in the record.
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 3, 4, and 7 of the ’583 patent are unpatentable. This
`final written decision is issued pursuant to 35 U.S.C. § 318(a).
`
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`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify one related federal district court case: Huawei
`Technologies Co. v. Samsung Electronics Co., Case No. 3:16-cv-02787 (N.D.
`Cal.). Pet. 5; Paper 5, 1.
`
`
`B. The ’583 Patent
`The ’583 patent is titled “Conditional Uplink Timing Alignment in a
`Mobile Station Device of a Radio Communication System.” Ex. 1001, [54].
`The Abstract describes the subject matter as follows:
`A mobile station device transmits a random access preamble,
`whose preamble ID is randomly selected by the mobile station
`device, to a base station device and performs uplink timing
`alignment based on the synchronization timing deviation
`information included in a random access response which the base
`station device transmits in response to the transmitted random
`access preamble. In an uplink synchronous status, upon
`receiving the random access response including timing deviation
`information, the mobile station device ignores the timing
`deviation information. Otherwise, the mobile station device
`performs the uplink timing alignment based on the timing
`deviation information.
`Id. at [57]. The specification further discloses that the mobile station device
`and the base station device use a timer to manage the uplink synchronous/
`asynchronous status of the mobile station device. Id. at 13:64–66. Either
`the base station device resets the timer when it transmits the synchronization
`timing deviation information or the mobile station device resets the timer
`when it receives the information. Id. at 14:3–6. The base station device
`provides the mobile station device with an expiration value for the timer. Id.
`at 14:6–8. The mobile station device is considered to be in an uplink
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`synchronous status until the timer expires, and it is considered to be in an
`uplink asynchronous status after the timer expires. Id. at 14:8–15.
`
`
`C. Illustrative Claim
`Petitioner challenges claims 3, 4, and 7 of the ’583 patent. Claims 3
`and 7 are independent. Claim 3 is illustrative of the claims under challenge:
`3. A mobile station device comprising:
`circuitry configured to transmit a random access preamble;
`circuitry configured to receive, from a base station device, a
`random access response to the random access preamble;
`and
`circuitry configured to ignore timing deviation information,
`in case that, in an uplink synchronous status, the timing
`deviation information is included in the random access
`response and corresponds to the random access preamble
`whose preamble identification (ID) is randomly selected
`by the mobile station device, wherein the timing deviation
`information does not include a Null value or an indication
`to ignore the timing deviation information; and to perform
`uplink timing alignment based on timing deviation
`information, in case that, in an uplink asynchronous status,
`the timing deviation information is included in the random
`access response and corresponds to the random access
`preamble whose preamble identification (ID) is randomly
`selected by the mobile station device.
`
`
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`
`D. The Instituted Grounds
`Petitioner asserts in its Petition five grounds based on obviousness
`under 35 U.S.C. § 103.1 Pet. 8, 31–70.
`Claims Challenged
`Reference(s)
`Basis
`3, 4, and 7
`TS 36.3002
`§ 103
`3, 4, and 7
`TS 36.300 and Toskala3
`§ 103
`3, 4, and 7
`TS 36.300 and Dalsgaard4
`§ 103
`3, 4, and 7
`TS 36.300 and Sun5
`§ 103
`3, 4, and 7
`TS 36.300 and R1-0721976
`§ 103
`In support of the instituted grounds, Petitioner relies on the declarations of
`Vijay Madisetti, Ph.D. (Exhibit 1004) and Raziq Yaqub, Ph.D. (Exhibit
`1012). Id. With its responsive papers, Patent Owner submits two
`declarations of Nicholas Laneman, Ph.D. (Exhibits 2005 and 2011).
`
`1 In its summary of the asserted grounds, Petitioner identifies three grounds.
`Pet. 8. Under the first ground, Petitioner asserts that claims 3, 4, and 7 are
`unpatentable over TS 36.300 alone or in combination with Toskala and
`Dalsgaard. Id. Based on Petitioner’s substantive arguments (id. at 31–52),
`however, we address whether the claims are unpatentable over TS 36.300
`alone or in combination with Toskala or Dalsgaard. That is, we treat the
`first ground as containing three separate grounds: obviousness over
`TS 36.300; obviousness over TS 36.300 and Toskala; and obviousness over
`TS 36.300 and Dalsgaard.
`2 3d Generation P’ship Project, Technical Specification Group Radio Access
`Network; Evolved Universal Terrestrial Radio Access (E-UTRA) and
`Evolved Universal Terrestrial Radio Access Network (E-UTRAN); Overall
`description; Stage 2 (Release 8) (3GPP TS 36.300 V8.1.0) (June 2007)
`(Ex. 1005, “TS 36.300”).
`3 Toskala, U.S. Patent No. 6,657,988 B2, issued Dec. 2, 2003 (Ex. 1006).
`4 Dalsgaard, Int’l Pub. No. WO 2007/110483 A1, published Oct. 4, 2007
`(Ex. 1020).
`5 Sun, U.S. Patent No. 7,286,841 B2, issued Oct. 23, 2007 (Ex. 1007).
`6 Texas Instruments, Transmission of Uplink Timing Advance Command in
`E-UTRA, 3GPP TSG RAN WG1#49, R1-072197 (May 2007) (Ex. 1008,
`“R1-072197”).
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`Transcripts of the depositions of Dr. Laneman and Dr. Madisetti are entered
`in the record as Exhibits 1100 and 2006, respectively.
`
`
`III. ANALYSIS
`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude portions of TS 36.300 (Petitioner’s
`Exhibit 1005) and R1-072197 (Petitioner’s Exhibit 1008). Paper 36, 1–2
`(“PO Mot.”). Patent Owner also moves to exclude certain declaration
`testimony of Petitioner’s expert Dr. Yaqub, namely, paragraphs 54 through
`59 of Exhibit 1012. Id. at 2. Petitioner opposes Patent Owner’s motion to
`exclude. Paper 39 (“Pet. Opp.”). In response, Patent Owner filed a reply to
`Petitioner’s opposition to the motion to exclude. Paper 41. For the reasons
`explained below, Patent Owner’s motion to exclude is denied.
`
`
`1. Declaration of Dr. Yaqub (Exhibit 1012)
`In paragraphs 54 through 59 of his declaration, Dr. Yaqub opines on
`the authenticity, public availability, and publication dates of TS 36.300 and
`R1-072197. See Ex. 1012 ¶¶ 54–59. 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 36.300 and R1-072197,
`and URLs (universal resource locators) pointing to TS 36.300 and R1-
`072197 on the 3GPP ftp server. Id.
`On December 19, 2017, Patent Owner objected to Dr. Yaqub’s
`declaration to the extent that it “rel[ies] on web pages that were not filed as
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`exhibits in this proceeding,” and asserted that “[t]hose web pages lack
`authentication and contain hearsay.” Paper 16, 1. On January 4, 2018,
`Petitioner provided the webpages to Patent Owner in the form of
`supplemental evidence. See Paper 17, 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 17, 1.
`Patent Owner moves to exclude paragraphs 54 through 59 of Dr.
`Yaqub’s declaration “because they rely on unauthenticated webpages for the
`truth of the matter asserted in those webpages.” PO Mot. 2–3. Patent
`Owner argues that the webpages lack authentication and contain
`inadmissible hearsay on which Dr. Yaqub relied in determining when TS
`36.300 (Exhibit 1005) and R1-072197 (Exhibit 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 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 responds 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 41, 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
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`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
`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, as
`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
`Fed. 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)).
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`
`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 36.300 and R1-072197, 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 Fed.
`App’x. at 502. From 1998 until 2010, Dr. Yaqub worked for various entities
`having an interest in developing or understanding 3GPP technologies.
`Ex. 1012 ¶¶ 7–12. During that time, he both participated in and contributed
`to 3GPP standards setting organizations, was an active member in various
`3GPP plenary level and working group level meetings, and served as a
`rapporteur of Technical Feasibility Report TR 33.817. Id. ¶¶ 8, 11.
`Dr. Yaqub testifies that 3GPP “produce[s] reports and specifications
`that define technologies covering cellular telecommunications 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 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. 1023, 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. ¶ 29 (citing Ex. 1023 § 5A). Member-
`contributed documents (“TDocs”) are assigned unique document numbers,
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`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. 1023 § 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 Fed. App’x. at 502.
`For the particular documents relevant to this proceeding, namely, TS
`36.300 and R1-072197, Dr. Yaqub testifies that he “navigated to the relevant
`file” on the 3GPP ftp server and “confirm[ed] that 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, 57. Dr.
`Yaqub also provides screenshots of the 3GPP ftp server directories that
`include the identically named zip files containing TS 36.300 and R1-072197.
`Id. As discussed above, when Patent Owner objected to these screenshots,
`Petitioner served complete printouts of the 3GPP ftp server directories from
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`which Dr. Yaqub took the screenshots. Paper 16, 1–2; Pet. Opp. 5; Exs.
`1101–1105; see also Paper 17, 1.
`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 41, 1–4. 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, 54, 57. 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 contents,
`and Dr. Yaqub’s testimony regarding how the contents and the webpages
`disclosing the contents were created. See 37 C.F.R. § 42.51(b)(1)(ii).
`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). We, therefore, deny Patent Owner’s motion to
`exclude paragraphs 54 through 59 of Dr. Yaqub’s declaration (Exhibit
`1012).
`As noted above, Petitioner also argues that the 3GPP ftp server
`directories (webpages) on which Dr. Yaqub relies can be authenticated under
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`Federal Rule of Evidence 901(b)(4), and that their contents are not hearsay
`under Federal Rules of Evidence 807. Pet. Opp. 3–5, 7–9. Patent Owner
`argues to the contrary. Paper 42, 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) (finding an
`administrative agency is at liberty to reach a decision based on a single
`dispositive issue “not only [to] save the parties, the [agency], and [the
`reviewing] court unnecessary cost and effort,” but also to “greatly ease the
`burden on [an agency] faced with a . . . proceeding involving numerous
`complex issues and required by statute to reach its conclusion within rigid
`time limits”).
`
`
`2. TS 36.300 (Exhibit 1005) and R1-072197 (Exhibit 1008)
`Patent Owner moves to exclude as hearsay portions of TS 36.300
`(Exhibit 1005) and R1-072197 (Exhibit 1008) “[t]o the extent Petitioner
`relies on the dates within Exhibit 1005 [and Exhibit 1008] for the purported
`truth of the matter asserted to show the date of public accessibility of Exhibit
`1005 [and Exhibit 1008].” PO Mot. 1–2. Petitioner argues that the contents
`of TS 36.300 and R1-072197 are “exempt from the rule against hearsay
`under Federal Rules of Evidence 803(6) and 807.” Pet. Opp. 9–10; see also
`id. at 10–12. 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 has not justified in this case.” Paper 41, 4–5.
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`For the reasons discussed above with respect to Exhibit 1012, we find
`that Dr. Yaqub is a qualified witness who has authenticated TS 36.300 and
`R1-072197, and established their trustworthiness, so that they are not
`hearsay under Fed. R. Evid. 803(6). Patent Owner relies 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. Paper 41, 4. We disagree. 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. Moreover,
`regarding TS 36.300 and R1-072197 in particular, Dr. Yaqub testifies that
`these documents are “true and correct” copies of the documents uploaded to
`the 3GPP ftp server as of their upload dates, and provides specific URLs to
`the 3GPP ftp server by which they are downloadable. Id. ¶¶ 54, 57.
`Accordingly, for the reasons given, we find that TS 36.300 (Exhibit
`1005) and R1-072197 (Exhibit 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 1005 and 1008. Moreover,
`because we find that Exhibits 1005 and 1008 are admissible and not hearsay
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`under Federal Rule of Evidence 803(6), we need not address the parties’
`additional arguments (see Pet. Opp. 10–12; Paper 41, 5) regarding whether
`these documents are admissible and not hearsay under Federal Rule of
`Evidence 807. See Beloit, 742 F.2d at 1423.
`
`
`B. Claim Construction
`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).7 Under this standard, claim terms
`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).
`Petitioner provides proposed interpretations of the claim terms “uplink
`synchronous status” and “uplink asynchronous status.” See Pet. 18–19
`(discussing “uplink [a]synchronous status”). Patent Owner does not
`respond. See generally PO Resp.; Supp. PO Resp. In light of the parties’
`
`
`7 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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`arguments, we determine that no term requires express interpretation to
`resolve any controversy in this proceeding.
`
`
`C. Obviousness over TS 36.300
`Petitioner asserts that claims 3, 4, and 7 of the ’583 patent would have
`been obvious over TS 36.300 alone. Pet. 31–49. For the reasons explained
`below, we are not persuaded that Petitioner has demonstrated by a
`preponderance of the evidence that these claims would have been obvious
`over TS 36.300 alone.
`
`
`1. TS 36.300
`TS 36.300 is a Third Generation Partnership Project (3GPP) technical
`specification, which describes the Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN) radio interface protocol architecture.
`Ex. 1005, 10. The specification includes a discussion on contention based
`random access procedures, which involve four steps: (1) sending a random
`access preamble from the user equipment to the base station; (2) sending a
`random access response from the base station to the user equipment; (3)
`sending a scheduled transmission from the user equipment to the base
`station; and (4) sending a contention resolution from the base station to the
`user equipment. Id. at 49–50. The random access response conveys timing
`alignment information. Id. at 49.
`According to TS 36.300, the user equipment uses a timing advance
`command from the base station “to advance/delay its timings of
`transmissions to the [base station] so as to compensate for propagation delay
`and thus time align the transmissions from different [user equipment] with
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`the receiver window of the [base station].” Id. at 21. TS 36.300 specifies
`that “[t]he timing advance command is on a per need basis.” Id.
`
`
`2. Claims 3, 4, and 7
`Independent claim 3 recites a “mobile station device” that comprises
`“circuitry configured to transmit a random access preamble” as well as
`“circuitry configured to receive, from a base station device, a random access
`response to the random access preamble.” For these limitations, Petitioner
`directs us to Figure 10.1.5.1–1 of TS 36.300, which is reproduced below.
`Pet. 31–33.
`
`
`Figure 10.1.5.1–1 illustrates the flow of messages between a UE (user
`equipment) and an eNB (E-UTRAN nodeB) in a contention based random
`access procedure. Ex. 1005, 49. As shown in Figure 10.1.5.1–1, the UE
`sends to the eNB a first message called a random access preamble. Id. The
`eNB then sends to the UE a second message called a random access
`response. Id. Next, the UE sends to the eNB a third message called a
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`scheduled uplink transmission. Id. Finally, the eNB sends to the UE a
`fourth message regarding contention resolution. Id. Petitioner identifies the
`UE and the eNB in TS 36.300 as a “mobile station device” and a “base
`station device,” respectively. Pet. 31, 33; see also id. at vi (Acronym
`Glossary). Petitioner further identifies the first and second messages shown
`in Figure 10.1.5.1–1 of TS 36.300 as a “random access preamble” and a
`“random access response,” respectively. Based on the record before us, we
`are persuaded by Petitioner’s arguments in this regard.
`Claim 3 also recites “circuitry configured to ignore timing deviation
`information,” where, “in an uplink synchronous status, the timing deviation
`information is included in the random access response and corresponds to
`the random access preamble whose preamble identification (ID) is randomly
`selected by the mobile station device.” Claim 3 requires that “the timing
`deviation information does not include a Null value or an indication to
`ignore the timing deviation information.”
`For these limitations, Petitioner directs us to where TS 36.300 teaches
`that the random access response includes timing alignment information,
`which Petitioner identifies as “timing deviation information.” Pet. 33 (citing
`Ex. 1005, 49, § 10.1.5.1); id. at 34. Petitioner also directs us to where
`TS 36.300 teaches that “[t]he timing advance is . . . sent by the eNB to the
`UE which the UE uses to advance/delay its timings of transmissions to the
`eNB so as to compensate for propagation delay and thus time align the
`transmissions from different UEs with the receiver window of the eNB.” Id.
`at 34 (citing Ex. 1005, 21, § 5.2.7.3). Petitioner contends that the timing
`alignment information and the timing advance are the same. Id. In addition,
`Petitioner also directs us to the background section in the ’583 patent, which
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`Petitioner describes as teaching that the “UE only listens for random access
`response messages containing the RA-preamble identifier that was randomly
`selected by the UE, and it performs timing alignment based on that received
`message.” Id. at 35 n.4 (citing Ex. 1001, 3:30–39). According to Petitioner,
`“[a skilled artisan] would have understood that this is how random access
`procedures work.” Id.
`Petitioner further directs us to where TS 36.300 describes an uplink
`synchronization status that may move from “synchronized” to “non-
`synchronized” upon the expiration of a UE-specific timer. Id. at 34 (citing
`Ex. 1005, 46, § 10.1.2.7). Petitioner points out that TS 36.300 teaches that
`“[t]he timing advance command is on a per need basis.” Id. (citing
`Ex. 1005, 21, § 5.2.7.3). Petitioner interprets this teaching to mean that “the
`command is only carried out by the UE when needed.” Id. As support,
`Petitioner relies on the declaration testimony of Dr. Madisetti. Id. (citing
`Ex. 1004 ¶ 97).
`Petitioner does not argue that TS 36.300 explicitly teaches ignoring
`timing deviation information when the UE is in an uplink synchronous
`status. Rather, Petitioner argues that “[i]t would have been obvious, in view
`of TS 36.300 itself, to ignore received timing advance commands while the
`UE has a synchronized status because the UE is already considered to be
`‘synchronized.’” Id. at 34–35.8 Relying on Dr. Madisetti’s declaration
`testimony, Petitioner contends that “[t]his would be the most logical and
`intuitive way to use the synchronization status already provided by TS
`
`
`8 Throughout the parties’ briefing, references to the prior art are underlined
`or italicized. In this Decision, we omit any such emphasis when quoting
`either party’s references to the prior art.
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`36.300 and comply with its teaching that the timing advance command be
`performed only on a ‘per need’ basis.” Id. at 35 (citing Ex. 1004 ¶ 97).
`Petitioner further notes that “[n]o ‘null value or an indication to ignore the
`timing deviation information’ is disclosed” in TS 36.300. Id. at 43.
`Based on the record before us, and for the reasons explained below,
`we are not persuaded by Petitioner’s arguments with respect to the recited
`“circuitry configured to ignore timing deviation information” while “in an
`uplink synchronous status.” We note that Patent Owner challenges
`Petitioner’s arguments in this regard, and we further address below the
`parties’ dispute as to this limitation.
`Lastly, claim 3 recites “circuitry configured . . . to perform uplink
`timing alignment based on timing deviation information,” where, “in an
`uplink asynchronous status, the timing deviation information is included in
`the random access response and corresponds to the random access preamble
`whose preamble identification (ID) is randomly selected by the mobile
`station device.” For this limitation, Petitioner again directs us to where
`TS 36.300 teaches that the UE uses the timing advance to adjust its
`transmission timing in order to “time align the transmissions from different
`UEs with the receiver window of the eNB.” Pet. 43–44 (citing Ex. 1005, 21,
`§ 5.2.7.3). Petitioner contends that such adjustment “is performed by the UE
`in an uplink asynchronous status (e.g., when the UE-specific timer described
`above expires, which moves the UE from ‘synchronized’ to ‘non-
`synchronized’ status).” Id. at 44. On this record, we are persuaded by
`Petitioner’s argument here.
`Independent claim 7 is directed to “a processing method of a mobile
`station device” and recites similar limitations as claim 3, including the step
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`of “ignoring timing deviation information,” where, “in an uplink
`synchronous status, the timing deviation informat
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