Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: Dec. 12, 2017
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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 IPR2017-01474
`Patent 8,639,246 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
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`
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` Paper 12
`
`
`
` Entered: Dec. 12, 2017
`
`
`
`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 IPR2017-01474
`Patent 8,639,246 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01474
`Patent 8,639,246 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Samsung Electronics Co., Ltd. (“Petitioner”)1 filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`8,639,246 B2 (Ex. 1001, “the ’246 patent”). Huawei Technologies Co., Ltd.
`(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under
`35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we institute an inter partes review as to all challenged claims of the
`’246 patent.
`
`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. 2; Paper 5, 1. Patent Owner further identifies two related requests
`for inter partes reviews: IPR2017-01471 and IPR2017-01475.
`
`C. The ʼ246 Patent (Ex. 1001)
`The ’246 Patent, titled “Method, Terminal, and System for Cell
`Reselection,” is directed to cell reselection. Ex. 1001, [54], [57], 1:23–25.
`In prior art LTE (Long Term Evolution or 4G) systems, a terminal decides
`what cell to camp on according to cell priority. Id. at 1:49–53; see Pet. 8
`(discussing cell reselection). The terminal measures a frequency/system
`
`
`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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`IPR2017-01474
`Patent 8,639,246 B2
`having a higher priority, and if that measurement meets the terminal’s cell
`reselection criteria, it will reselect that cell. Id. at 1:52–60. Otherwise, the
`terminal will measure a cell having a lower priority. Id. The ’246 patent
`states that:
`If a terminal camps on a cell having a lower priority, a cell having
`a higher priority might be measured periodically. The priority-
`based cell reselection method may reduce the measurements by
`the terminal and save power energy. Meanwhile, a good priority
`setting may lead to load balance.
`Ex. 1001, 1:58–63.
`The ’246 patent discloses having a mobile station receive from the
`LTE system a dedicated priority list for the particular mobile station. Id. at
`Abstract, 2:11–39, 2:56–3:9. When necessary, a mobile station performs
`cell reselection according to the dedicated priority list when the terminal
`camps on a cell of a second system, eliminating the need for the second
`system to establish the dedicated priority list when moving from an LTE
`system to a non-LTE system. Id. at Abstract, 2:11–39, 2:61–3:9.
`
`D. Illustrative Claims
`Petitioner challenges claims 1–20 of the ’246 patent, with claims 1
`and 11 independent. Claims 1 and 11 are illustrative and reproduced below:
`1. A method for inter-system cell reselection, comprising:
`[1A] when a terminal is in a cell of a Long Term Evolution
`(LTE) system, receiving, by the terminal, a message including a
`dedicated priority list from the LTE system; and
`[1B] when the terminal camps on a cell of a non-LTE
`system, performing, by the terminal, the inter-system cell
`reselection in accordance with the dedicated priority list before a
`valid time of the dedicated priority list expires.
`
`3
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`IPR2017-01474
`Patent 8,639,246 B2
`11. A terminal comprising:
`[11A] a receiver; and
`[11B] a processor, wherein
`[11C] when the terminal is in a cell of a Long Term
`Evolution (LTE) system, the receiver is configured to receive a
`message including a dedicated priority list from the LTE system;
`and
`
`[11D] when the terminal camps on a cell of a non-LTE
`system, the processor is configured to perform inter-system cell
`reselection in accordance with the dedicated priority list before a
`valid time of the dedicated priority list expires.
`Ex. 1001, 11:56–11:63, 12:27–37 (bracketed numbering added).
`
`E. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth the grounds of
`unpatentability of claims 1–20 of the ’246 patent as follows (see Pet. 4–5):
`
`References
`R2-0751612 and R2-0803383
`R2-075161, R2-080338, and
`Eerolainen4
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1–20
`11–20
`
`
`2 NTT DoCoMo, Inc., Inter-frequency/RAT idle mode mobility control,
`3GPP TSG RAN WG2 #60, Tdoc-R2-075161 (Nov. 2007) (Ex. 1005, “R2-
`075161”).
`3 Nokia Corp. & Nokia Siemens Networks, Reselection scenarios for multi-
`RAT terminals in Rel-8, 3GPP TSG-RAN WG2 Meeting #60bis, R2-080338
`(Jan. 2008) (Ex. 1007, “R2-080338”).
`4 U.S. Pub. No. 2008/0176565, published July 24, 2008 (Ex. 1006,
`“Eerolainen”).
`
`4
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`Patent 8,639,246 B2
`
`II. DISCUSSION
`A. Claim Interpretation
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). In applying a broadest reasonable
`construction, 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). 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).
`Petitioner provides a proposed interpretation of “camps/camping” as
`recited in claims 1, 2, 7, 14, and 15. Pet. 13–14. Petitioner also contends
`that “processor” (claims 11, 13, and 16) requires no construction, in
`accordance with Patent Owner’s position in related litigation. Id. at 14.
`Patent Owner responds for both terms that the Board need not decide
`the terms, as their “precise scope . . . does not appear relevant to the issues
`raised by the Petition.” Prelim. Resp. 10–11. For purposes of this Decision,
`we conclude that “camps,” “camping” and “processor” do not require
`express interpretation at this time to resolve any controversy in this
`proceeding.
`
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`Patent 8,639,246 B2
`
`B. 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
`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). On the
`record before us, we find that the 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. Prior Art Cited
`1. R2-075161 (Ex. 1005)
`R2-075161 is a Third Generation Partnership Project (3GPP) paper
`that relates to cell reselection. See Ex. 1005, 1 (“inter-frequency/RAT[5]
`
`
`5 RAT stands for Radio Access Technology. See, e.g., Pet. v; Ex. 1003 ¶ 52.
`
`6
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`IPR2017-01474
`Patent 8,639,246 B2
`mobility control in idle mode”). According to the paper, “[t]he UE specific
`inter-frequency control should be based on absolute priorities.” Id. at 2.
`The paper states that UE specific control information may be created by the
`eNB. Id. Such information “would include a list of frequency layers/RATs
`that the UE should handle with specific priorities.” Id. The paper also states
`that, “since the load conditions maybe temporal, it should be possible to set
`an expiry timer for the UE specific control information.” Id. Upon
`expiration of that timer, the UE discards the UE specific control information
`and proceeds with some other cell reselection process. Id.
`2. R2-080338 (Ex. 1007)
`R2-080338 is also a 3GPP paper, which discusses reselection
`scenarios for multi-RAT terminals. Ex. 1007, 1. R2-080338 explains that
`“a UE located in an area where a E-UTRAN, a UTRAN and a GERAN
`network coexist will use the priorities algorithm to determine which RAT it
`should be camping on.” Id. According to one scenario, neither the UTRAN
`network nor the GERAN network provides the mobile (i.e., terminal or UE)
`with the necessary parameters (i.e., priorities and thresholds) for the
`priorities algorithm. Id. at 3. The paper proposes that one option is to have
`the E-UTRAN network instead provide the parameters, which the mobile in
`turn stores and uses for the priority algorithm. Id. (discussing “Option 3”).
`3. Eerolainen (Ex. 1007)
`Eerolainen also relates to cell reselection. See Ex. 1006 ¶¶ 78–84.
`Eerolainen’s system includes a wireless network that communicates with a
`UE via a Node-B (base station). Id. ¶ 63. The UE includes a data processor
`
`
`Petitioner explains that a RAT refers to a cellular system, such as LTE,
`UMTS, and GSM. Pet. 28.
`
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`IPR2017-01474
`Patent 8,639,246 B2
`and a memory that stores a program with program instructions. Id. When
`the UE executes the instructions, the UE will operate according to the
`embodiments described. Id.; see also ¶¶ 78–84 (describing cell reselection).
`Eerolainen teaches that its invention may be implemented by computer
`software executable by the UE’s data processor, or by hardware, or by a
`combination of software and hardware. Id. ¶ 67.
`
`D. Obviousness based on R2-075161 and R2-080338
`Petitioner asserts that claims 1–20 of the ’246 patent would have been
`obvious over R2-075161 and R2-080338. Pet. 23–52. For the reasons
`explained below, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this asserted ground.
`1. Analysis
`Claim 1 recites a method for inter-system cell reselection. Petitioner
`cites R2-075161 as discussing a priority approach to inter-system cell
`reselection. Pet. 27; Ex. 1005, 1; Ex. 1003 ¶ 196. Petitioner also identifies
`the UE in R2-080338 as a “terminal.” See Pet. 28–29. Petitioner directs us
`to the title of R2-080338 (i.e., “Reselection scenarios for multi-RAT
`terminals in Rel-8”), and submits that “R2-080338 [] teaches a method for
`inter-system cell reselection.” Pet. 28; Ex. 1007, 1. Petitioner explains that
`“[a] ‘multi-RAT’ terminal is a UE that can operate on more than one RAT,
`or, a terminal that can operate on, for example, LTE, UMTS, and GSM.”
`Pet. 28. Based on the record before us, we are persuaded that R2-080338
`teaches the recited limitations.
`Limitation 1A of claim 1 recites two steps—the first step is
`“receiving,” “when a terminal is in a cell of a Long Term Evolution (LTE)
`system, . . . a message including a dedicated priority list from the LTE
`
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`IPR2017-01474
`Patent 8,639,246 B2
`system.” For this step, Petitioner directs us to R2-075161 for teaching the
`LTE network communicates a dedicated priority list to the terminal, relying
`on UE specific control information communicated to the UE from the LTE
`network. See Pet. 29–30. Petitioner also argues that R2-080338 teaches
`that “[t]he mobile stores the parameters received from the E-UTRAN
`network . . . and uses these parameters for the priority algorithm,” and that
`“the UE would remember the thresholds and priorities received whilst in E-
`UTRAN.” Pet. 33–34; Ex. 1007, 3. Petitioner explains that E-UTRAN
`refers to an LTE network.” Pet. 31 (citing Ex. 1003 ¶ 197). We note that
`the parameters for the priority algorithm in R2-080338 include “priorities
`and thresholds.” Ex. 1007, 3 (that is, “necessary parameters for the
`algorithm (i.e., priorities and thresholds)”). Based on the record before us,
`we are persuaded that R2-080338 teaches the recited “receiving” step of
`limitation 1A in claim 1.
`The second step in limitation 1B is “performing” “when the terminal
`camps on a cell of a non-LTE system, . . . cell reselection in accordance with
`the dedicated priority list before a valid time of the dedicated priority list
`expires.” For this step, Petitioner argues that R2-080338 “teaches
`performing cell reselection in accordance with cell reselection priorities
`received from the LTE network when camping on a cell of a non-LTE
`system.” Pet. 33. Petitioner directs us again to where R2-080338 teaches
`that “[t]he mobile stores the parameters received from the E-UTRAN
`network . . . and uses these parameters for the priority algorithm,” and that
`“the UE would remember the thresholds and priorities received whilst in E-
`UTRAN.” Id. (quoting Ex. 1007, 3) (emphases omitted). Petitioner
`explains that, “when the terminal is in an area where there is no LTE
`
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`IPR2017-01474
`Patent 8,639,246 B2
`network (for example, an area where there is only UMTS or GSM
`networks), the terminal should use the priorities from the LTE network to
`perform cell reselection.” Id. at 34 (citing Ex. 1003 ¶ 198). Petitioner relies
`on the declaration testimony of Dr. Williams. Id. (citing Ex. 1003 ¶ 156
`(cross-referencing Ex. 1003 ¶¶ 119–122)).
`Petitioner does not argue that R2-080338 teaches performing cell
`reselection according to the dedicated priority list “before a valid time of the
`dedicated priority list expires.” For this aspect of the “performing” step of
`limitation 1B, Petitioner directs us to where R2-075161 teaches that “UE
`specific control information is created by the eNB” and “would include a list
`of frequency layers/RATs that the UE should handle with specific
`priorities.” Pet. 31–32 (quoting Ex. 1005, 2) (emphases omitted). Petitioner
`also cites to the teaching in R2-075161 that “[a]n expiry timer can be
`signaled as part of the UE specific control information,” and that, “[u]pon
`expiry of the timer, the UE shall discard the UE specific control information
`and continue with the normal cell reselection procedure.” Id. at 32 (quoting
`Ex. 1005, 2) (emphasis omitted). Petitioner identifies the UE specific
`control information in R2-075161 as a “dedicated priority list,” and explains
`that the eNB is a base station on an LTE system. Id. at 30. Based on the
`record before us, we are persuaded that the combination of R2-075161 and
`R2-080338 teaches the recited “performing” step of limitation 1B.
`In addition to showing that each claim element is known, however,
`Petitioner must provide “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Petitioner argues
`that “one of ordinary skill in the art would have been motivated to apply the
`
`10
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`IPR2017-01474
`Patent 8,639,246 B2
`teachings of a list of frequencies/RATs and timers as disclosed in R2-
`075161 with the teaching in R2-080338 that priority information obtained
`from the LTE network should be used in cell reselection when only non-
`LTE networks are available.” Pet. 26 (citing Ex. 1003 ¶¶ 223–227).
`Petitioner explains that, “[a]s R2-080338 already discloses this procedure
`using certain priority information, it would be obvious and natural for one of
`ordinary skill to use the dedicated list, public list and expiry timer provided
`in R2-075161 as the priority information provided by the LTE network.” Id.
`at 26. We are persuaded by Petitioner’s argument, namely that it would
`have been obvious to substitute the parameters for the priority algorithm in
`R2-080338 with the UE specific control information (including the timer) of
`R2-075161, which we find would have amounted to a “simple substitution
`of one known element for another.” See KSR, 550 U.S. at 401, 417.
`In response to the Petition, Patent Owner makes several arguments.
`For example, Patent Owner argues that neither R2-080338 nor R2-075161
`teaches or suggests the recited “performing” step. Prelim. Resp. 19–20.
`Regarding R2-080338, Patent Owner contends that the reference “makes no
`mention of using a valid time.” Id. As discussed above, however, Petitioner
`relies on R2-075161 (not R2-080338) for teaching the recited “valid time.”
`See Pet. 32. Patent Owner does not dispute that R2-075161 teaches this
`limitation. Accordingly, Patent Owner does not adequately rebut
`Petitioner’s showing that the recited “performing” step would have been
`obvious over R2-075161 and R2-080338.
`Regarding R2-075161, Patent Owner further contends that the
`reference “relates solely to cell reselection in LTE cells, and does not
`describe the cell reselection process in non-LTE cells.” Prelim. Resp. 21–
`
`11
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`IPR2017-01474
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`27. Patent Owner’s arguments do not persuasively rebut Petitioner’s
`showing that the recited “performing” step would have been obvious over
`R2-075161 and R2-080338. As discussed above, we are persuaded by
`Petitioner’s reliance on R2-080338 (not R2-075161) for teaching the step of
`performing cell reselection according to the dedicated priority list while
`camping on a cell of a non-LTE system. See Pet. 33–34.
`Patent Owner further argues that “Petitioner does not articulate its
`alleged obviousness grounds with sufficient rational underpinnings to
`support its combination[] of [] R2-075161 and R2-080338.” Prelim. Resp.
`28 (emphases omitted). We disagree. As discussed above, Petitioner
`explains that it would have been obvious to use the UE specific control
`information (including a timer) of R2-075161 in place of the parameters for
`the priority algorithm in R2-080338, which we find would have amounted to
`a simple substitution of one known element for another. See Pet. 26–27;
`KSR, 550 U.S. at 417. Petitioner’s explanation provides a rationale that
`supports its theory of obviousness. Patent Owner does not provide any
`persuasive reason why Petitioner’s proffered rationale is inadequate.
`Accordingly, we find that Patent Owner does not sufficiently rebut
`Petitioner’s showing that claim 1 would have been obvious over R2-075161
`and R2-080338.
`Patent Owner further argues that combining R2-075161 and R2-
`080338 “would not render the claims obvious.” Prelim. Resp. 32–33.
`According to Patent Owner, “R2-080338 expressly rejected the portion of it
`that was relied upon by Petitioner, and instead proposes not ‘performing cell
`reselection in accordance with cell reselection priorities from the LTE
`network when camping on a cell of the non-LTE system.’” Id. at 32–33
`
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`(certain emphases omitted); see also id. at 31 (“Petitioner’s theory of
`unpatentability relies on R2-080338’s ‘Option 3’ . . . , which was an option
`that reference did not adopt.”) (certain emphasis omitted). As support,
`Patent Owner directs us to where R2-080338 teaches that Option 3 “would
`still introduce some unreliability once the UE reselects within UTRA, as the
`thresholds may[] be totally different and non-applicable,” and that Option 1
`is “the safest option.” Id. 31 (citing Ex. 1007, 3). Patent Owner adds that
`“applying the actual proposals of R2-080338—rather than the rejected
`options—would not result in the relied upon (or claimed) functionality.” Id.
`at 33 (certain emphasis omitted). We disagree.
`Although Petitioner’s obviousness argument relies on Option 3 in R2-
`080338, we find that R2-080338 does not reject that option. Stating that an
`option would introduce some unreliability is not necessarily a rejection of
`that option. R2-080338 does not indicate that its system would not be able
`to tolerate “some unreliability.” In addition, that Option 1 is the “safest
`option” does not mean that Option 3 cannot not be used. Indeed, R2-080338
`recommends that “multi-RAT terminals supporting E-UTRAN should also
`support the legacy algorithm.” Ex. 1007, 3 (emphasis added). That R2-
`080338 does not require supporting the legacy algorithm indicates that R2-
`080338 contemplates using either Option 1 or Option 3, not just Option 1.
`See id. (“Option 1: The mobile uses the legacy algorithm. . . . Option 3:
`The mobile stores the parameters received from an E-UTRAN network . . .
`and uses these parameters for the priority algorithm.”). Lastly, we note that
`Petitioner’s proposed combination of R2-75161 and R2-080338 appears to
`address the concern in R2-080338 that “the thresholds may [] be totally
`different and non-applicable.” For instance, when the timer of R2-075161
`
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`expires, the UE in R2-080338 will discard the “totally different and non-
`applicable” thresholds and continue with some other cell reselection
`procedure. See Ex. 1005, 2 (“Moreover, since the load conditions may be
`temporal, it should be possible to set an expiry timer for the UE specific
`control information. . . . Upon expiry of the timer the UE shall discard the
`UE specific control information and continue with the normal cell
`reselection procedure.”). Thus, based on the record before us, we find that
`Patent Owner does not adequately rebut Petitioner’s showing that claim 1
`would have been obvious over R2-075161 and R2-080338.
`In view of the foregoing, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`claim 1 would have been obvious over R2-075161 and R2-080338. Having
`reviewed Petitioner’s arguments asserting that independent claim 11 (based
`on inherency for the receiver and processor limitations (11A and 11B) of
`claim 11) and dependent claims 2–10 and 12–20 would have been obvious
`over R2-075161 and R2-080338, (see Pet. 34–48), we also determine that
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`assertion as to these claims.
`
`E. Obviousness based on R2-075161, R2-080338, and Eerolainen
`Petitioner asserts that claims 11–20 of the ’246 patent would have
`been obvious over R2-075161, R2-080338, and Eerolainen. Pet. 52–63. For
`the reasons explained below, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on this asserted ground.
`1. Analysis
`As discussed above, Petitioner argues that claim 11 would have been
`obvious over R2-075161 and R2-080338. Petitioner argues alternatively
`
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`that claim 11 would have been obvious over R2-075161, R2-080338, and
`Eerolainen. Pet. 48–55. Petitioner cites Eerolainen, which shows “a data
`processor 10A that executes the program 10C stored on memory 10B, all on
`the user equipment 10, which is a terminal device.” Id. at 51 (citing Ex.
`1006, Fig. 1). According to Petitioner, Eerolainen teaches the processor and
`receiver of claim 11. Pet. 51–54 (citing Ex. 1006 ¶ 144, Fig. 1). Based on
`the record before us, we are persuaded by Petitioner’s arguments.
`As discussed above, Petitioner must also provide “some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d at 988. In that regard, Petitioner argues
`that “one of ordinary skill in the art would be motivated to implement the
`teachings shown in R2-075161 and R2-080338 in the hardware described in
`Eerolainen, because Eerolainen describes the precise type of hardware that
`one of ordinary skill in the art knows is used in LTE and non-LTE cellular
`systems.” Pet. 50 (emphases omitted). We are persuaded by Petitioner’s
`argument. We find that adding Eerolainen’s hardware to the combined
`system of R2-07161 and R2-080338 would have amounted to “the
`predictable use of prior art elements according to their established
`functions;” as such, we find the addition simply would have enabled the
`combined system of R2-07161 and R2-080338 to carry out the reselection
`process proposed by Petitioner, as discussed above. See KSR, 550 U.S. at
`417.
`
`In its Preliminary Response, Patent Owner counters that “Petitioner
`does not articulate its alleged obviousness grounds with sufficient rational
`underpinnings to support its combination[] of . . . R2-075161 and R2-
`080338 in further view of Eerolainen.” Prelim. Resp. 28 (emphases
`
`15
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`
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`IPR2017-01474
`Patent 8,639,246 B2
`omitted). We disagree. As discussed above, Petitioner explains that it
`would have been obvious to use Eerolainen’s hardware with the combined
`system of R2-075161 and R2-080338 because such hardware was known to
`be used in LTE and non-LTE cellular systems. Pet. 48–50. As such, adding
`Eerolainen’s hardware to the combined system of R2-075161 and R2-
`080338 simply would have enabled the combined system to carry out the
`reselection process, which we find demonstrates the predictable use of prior
`art elements according to their established functions. See KSR, 550 U.S. at
`417. Petitioner’s explanation provides a rationale that supports its theory of
`obviousness. On the present record, Patent Owner does not provide any
`persuasive reason why Petitioner’s proffered rationale is inadequate.
`Accordingly, we find that Patent Owner does not sufficiently rebut
`Petitioner’s showing that claim 11 would have been obvious over R2-
`075161, R2-080338, and Eerolainen.
`In view of the foregoing, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`claim 11 would have been obvious over R2-075161, R2-080338, and
`Eerolainen. Having reviewed Petitioner’s arguments asserting that
`dependent claims 12–20 would have been obvious over R2-075161, R2-
`080338, and Eerolainen, (see Pet. 55–58), we also determine that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its assertion as to
`these claims.
`
`III. CONCLUSION
`For the foregoing reasons, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing that
`
`16
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`IPR2017-01474
`Patent 8,639,246 B2
`claims 1–20 of the ’246 patent are unpatentable. We have not made a final
`determination, however, with respect to the patentability of these claims.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that inter partes review is instituted as to claims 1–20 of
`the ’246 patent based on the following grounds:
`A. Obviousness under 35 U.S.C. § 103 of claims 1–20 over R2-
`075161 and R2-080338;
`B. Obviousness under 35 U.S.C. § 103 of claims 11–20 over R2-
`075161, R2-080338, and Eerolainen;
`FURTHER ORDERED that no other grounds of unpatentability are
`authorized for an inter partes review as to any claim of the ’246 patent; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`IPR2017-01474
`Patent 8,639,246 B2
`PETITIONER:
`Kevin P.B. Johnson
`Marissa Ducca
`Jared Newton
`Brian Mack
`Deepa Acharya
`Quinn Emanuel Urquhart & Sullivan
`marissaducca@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`jarednewton@quinnemaneul.com
`brianmack@quinnemanuel.com
`deepaacharya@quinnemanuel.com
`
`PATENT OWNER:
`Jeffrey Kushan
`Joseph Micallef
`iprnotices@sidley.com
`
`
`
`
`18
`
`
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