Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`
`Entered: October 11, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01979
`Patent 8,761,130 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`Paper 13
`
`Entered: October 11, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01979
`Patent 8,761,130 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01979
`Patent 8,761,130 B2
`
`
`INTRODUCTION
`I.
`Huawei Technologies Co., Ltd. (“Petitioner”)1 requested an inter
`partes review of claims 9–16 (the “Challenged Claims”) of U.S. Patent No.
`8,761,130 B2 (Ex. 1001, “the ’130 patent”). Paper 1 (“Petition” or “Pet.”).
`Samsung Electronics Co. Ltd. (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). We denied the Petition and did not
`institute an inter partes review. Paper 11 (“Dec.”). Petitioner now requests
`rehearing of our decision not to institute review. Paper 12 (“Reh’g Req.”).
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our]
`decision for an abuse of discretion.” Id. § 42.71(c). The request for
`rehearing “must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d).
`After considering the Request for Rehearing, we determine that
`Petitioner has not demonstrated that we abused our discretion in denying
`institution. We deny the Request for Rehearing for the reasons that follow.
`
`II. BACKGROUND
`Petitioner advanced six grounds of unpatentability. Pet. 5. Grounds
`1–3 relied on Cho2, and we determined that Petitioner failed to show a
`reasonable likelihood of prevailing on any of the three Cho grounds because
`Petitioner offered “no explanation of why one of ordinary skill would have
`
`1 Petitioner identifies the following additional real parties in interest to the
`Petition: HiSilicon Technologies Co., Ltd., Huawei Device USA, Inc.,
`Huawei Investment and Holding Co., and Huawei Technologies USA, Inc.
`Pet. 2.
`2 Cho et al., U.S. Pub. No. 2006/0262871 (“Cho”) (Ex. 1005).
`
`2
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`IPR2017-01979
`Patent 8,761,130 B2
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`understood . . . Cho’s symbol block—which itself is comprised of
`symbols—as meeting the claimed symbol.” Dec. 11.
`Petitioner’s remaining three grounds rely on various combinations of
`R1-0721223, R1-0707774, and R1-0710005. Pet. 5. Petitioner formulated
`grounds 4–6 as (id.):
`4.
`Claims 9–16 as rendered obvious under 35 U.S.C. § 103(a) by
`R1-072122 and R1-070777;
`5.
`Claims 13–16 as rendered obvious under 35 U.S.C. § 103(a) by
`R1-072122 and R1-071000; and
`6.
`Claims 9–16 as rendered obvious under 35 U.S.C. § 103(a) by
`R1-072122, R1-070777, and R1-071000.
`R1-072122 is directed to multiplexing of uplink data-non-associated
`control signals without data. Ex. 1006, 1. R1-072122 describes situations in
`which control information is transmitted separately from data. Id. In such
`situations, R1-072122 discloses multiplexing ACK/NACK and CQI, and
`further depicts mapping ACK/NACK to the symbol directly adjacent to the
`reference signal. Id. at 2, Fig. 2.
`
`
`3 3GPP Contribution R1-072122, published on 2007 (Exs. 1015,
`1024), in advance of the RAN1 Working Group 1 meeting 49 (R1-
`49) held in Kobe, Japan, May 7–11, 2007 (“R1-072122”)
`(Ex. 1006).
`4 3GPP Contribution R1-070777, published on February 6, 2007
`(Ex. 1035), in advance of the RAN1 Working Group 1 meeting 48
`(R1-48) held in St. Louis, Missouri, Feb. 12–16, 2007 (“R1-
`070777”) (Ex. 1007).
`5 3GPP Contribution R1-071000, published on February 6, 2007
`(Ex. 1022), in advance of the RAN1 Working Group 1 meeting 48
`(R1-48) held in St. Louis, Missouri, Feb. 12–16, 2007 (“R1-
`071000”) (Ex. 1008).
`
`3
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`IPR2017-01979
`Patent 8,761,130 B2
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`
`R1-070777 is directed to multiplexing of uplink control signals with
`data. Ex. 1007, 1. This multiplexing is achieved by puncturing the data “to
`provide room for control signalling [sic].” Id.
`R1-071000 is directed to transmission of control information together
`with data. Ex. 1008, 1. R1-071000 depicts placing data in the symbols
`directly adjacent to the symbol containing the reference signal. Id. at 4,
`Figs. 4 and 5.
`In our Decision, we determined Petitioner had not demonstrated a
`reasonable likelihood of prevailing on grounds 4–6 because “Petitioner and
`[its declarant] Dr. Akl do not explain in the record before us how or why an
`ordinarily skilled artisan would harmonize the disparate teachings of [R1-
`072122 with R1-070777 and/or R1-071000].” Dec. 14–15.
`
`III. ANALYSIS
`Petitioner contends we abused our discretion because our Decision
`“ignores the two motivations Petitioner identified in the Petition” for
`combining R1-072122 with R1-070777 and/or R1-071000. Reh’g Req. 3.
`More specifically, Petitioner contends that it “explained that R1-071000
`invites skilled artisans to expand and apply the data mapping scheme of R1-
`072122 (for transmission of data and control information over separate
`channels) also to instances where a UE transmits control information and
`data over the same channels.” Reh’g Req. 4. Second, Petitioner contends
`that it “explained that a number of contemporaneous 3GPP contributions
`expressly disclose and teach that it is advantageous to limit the number of
`different transmission formats due to complexity of the mobile terminal
`design.” Id. For instance, Petitioner asserts, “[a]s Petitioner and its expert
`explained, R1-071000 expressly teaches that control information should be
`
`4
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`IPR2017-01979
`Patent 8,761,130 B2
`
`encoded and mapped in the same manner whether or not data is present in
`order to minimize the number of encoding and transmission formats.” Id.
`Having considered Petitioner’s arguments in its Request for
`Rehearing, we are not persuaded that we abused our discretion. Petitioner
`presents its first argument solely in the context of combining R1-072122
`with R1-071000. Reh’g Req. 3–4. R1-071000 is directed to “L1/L2 control
`signalling transmitted in the LTE UL.” Ex. 1008, 1. Its disclosure
`“concentrate[s] on the case when the UE has both UL data and L1/L2
`control signals due to the DL transmission.” Id. R1-071000 graphically
`depicts the scope of its disclosure in Figure 1, reproduced below.
`
`
`Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited
`to transmission of control information together with data information. Id.
`Thus, R1-071000, on its face, is directed to the opposite scenario of R1-
`072122, which is directed to transmitting control information without data.
`Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated
`control signal transmission with UL data.”)). Even if we were to accept
`arguendo Petitioner’s first argument that R1-071000 invites skilled artisans
`to expand and apply the data mapping scheme of R1-072122, such an
`invitation does not remedy Petitioner’s failure to explain sufficiently how
`one with ordinary skill in the art would have modified the system of R1-
`
`5
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`IPR2017-01979
`Patent 8,761,130 B2
`
`072122 to transmit control signals with data, contrary to the express
`teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance,
`Petitioner does not address how one would reconcile the two references’
`diametrically opposed teachings regarding placement of the ACK/NAK. As
`we stated:
`Finally, although the cited portions of R1-071000 teach
`placing data in the symbols directly adjacent to the symbol
`containing
`the reference signal, R1-071000 depicts
`placing the ACK/NAK in the symbols farthest from the
`symbol containing the reference signal––directly opposite
`to the cited teachings of R1-072122 describing placing the
`ACK/NAK in the symbols directly adjacent to the
`reference signal. Ex. 1008, Figs. 4, 5. Here too,
`Petitioner and Dr. Akl do not address how or why an
`ordinarily skilled artisan would have harmonized the
`disparate teachings of these two references.
`Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence
`and explanation, Petitioner’s argument amounts to impermissible hindsight
`reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d
`1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).
`Petitioner’s second argument spans three pages of its Request for
`Rehearing. Reh’g Req. 4–6. A request for rehearing “must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a
`motion, an opposition, or a reply.” Id. § 42.71(d). Petitioner identifies a
`single page of its Petition as “the place where [that argument] was
`previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of
`the Petition, recites only a single sentence and string citation related to this
`argument: “Further, a number of 3GPP contributions, including both R1-
`071000 and R1-072122, expressly disclose and teach that it is advantageous
`
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`IPR2017-01979
`Patent 8,761,130 B2
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`to limit the number of different transmission formats due to complexity of
`UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5;
`Ex. 1003 ¶ 225).
`A request for rehearing is not an opportunity to present new
`arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v.
`Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016)
`(discussing that a rehearing request is “not intended as a vehicle simply to
`disagree with [the] outcome or to provide new arguments”). Contrary to
`Petitioner’s assertions on rehearing, the cited portion of the Petition does not
`provide sufficient explanation for the following statements made in the
`Request for Rehearing: that “R1-072122 also expressly teaches that a single
`mapping scheme for control information is preferred”; that “R1-070998,
`another contemporaneous 3GPP contribution, provides a similar statement”;
`or that “skilled artisans would have been motivated to apply the same
`control mapping scheme regardless of the presence of data.” Compare
`Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not
`discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second
`argument was not presented in its Petition, we do not consider it on
`rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its
`declarant Dr. Akl presented the extensive argument that Petitioner now puts
`forth in its Request for Rehearing, our rules particularly require
`identification of “the place where [that argument] was previously addressed
`in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37
`C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).
`Even if we were to consider Petitioner’s second argument, we would
`not find it persuasive because the argument fails to address: (i) “why an
`
`7
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`IPR2017-01979
`Patent 8,761,130 B2
`
`ordinarily skilled artisan would look to R1-070777 when considering the
`teachings of R1-072122 related to placement of control information directly
`adjacent to the reference signal”; and (ii) “how or why an ordinarily skilled
`artisan would harmonize the disparate teachings of [R1-072122 with R1-
`070777 and/or R1-071000].” Dec. 14–16.
`
`IV. CONCLUSION
`Upon consideration of the Petitioner’s Request for Rehearing, the
`Petition, the Preliminary Response, and the evidence before us, we
`determine that Petitioner has not established that we abused our discretion in
`failing to institute inter partes review on grounds 4–6 of the Petition.
`Accordingly, we deny the Request for Rehearing.
`
`V. ORDER
`
`It is hereby
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`8
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`
`IPR2017-01979
`Patent 8,761,130 B2
`
`FOR PETITIONER:
`Joseph A. Micallef
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jkushan@sidley.com
`
`PATENT OWNER:
`Kevin Johnson
`Alan L. Whitehurst
`Marissa R. Ducca
`Brian Mack
`Deepa Acharya
`Jared Newton
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`QE_Huawei.Samsung@quinnemanuel.com
`
`
`9
`
`
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