Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`
`Entered: February 27, 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 IPR2017-01980
`Patent 8,761,130 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b)
`
`
`571-272-7822
`
`
`
`
`Paper 9
`
`Entered: February 27, 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 IPR2017-01980
`Patent 8,761,130 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b)
`
`
`
`IPR2017-01980
`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.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is a reasonable likelihood that Petitioner
`will prevail with respect to at least one of the Challenged Claims. Applying
`this standard, we are not persuaded Petitioner has shown a reasonable
`likelihood that it would prevail with respect to at least one of the Challenged
`Claims because the Petition does not establish that the primary reference
`relied upon is prior art to the ’130 patent. Accordingly, we deny the Petition
`and decline to institute inter partes review of the Challenged Claims for the
`reasons set forth below.
`
`
`BACKGROUND
`II.
`The ’130 patent (Ex. 1001)
`A.
`The ’130 patent is related to wireless communication systems and was
`“considered in the development of the 3rd Generation Partnership Project
`(3GPP) Evolved Universal Terrestrial Radio Access (E-UTRA) long term
`evolution (LTE).” Ex. 1001, 1:15–16, 1:25–28. The ’130 patent describes
`transmitting “control and data information” simultaneously in a Single-
`
`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
`
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`
`IPR2017-01980
`Patent 8,761,130 B2
`
`Carrier Frequency Division Multiple Access communication systems. Id. at
`1:15–19. “Control information” consists of positive and negative
`acknowledgement information (“ACK/NAK”) and channel quality indicator
`(“CQI”). Id. at 1:36–38. Figure 1 of the ’130 patent is reproduced below.
`
`
`
`Figure 1 depicts a block diagram of a sub-frame structure 110 used to
`transmit information. Id. at 1:53–55. The sub-frame includes two slots 120.
`Id. at 1:55–56. Each slot further includes seven symbols 130. Id. at 1:56–
`57. The middle symbol in each slot carries the transmission of reference
`signals (RS) 140, also known as “pilot signals.” Id. at 1:61–65. These
`reference signals are used to provide channel estimation for coherent
`demodulation of the received signal. Id. According to the ’130 patent, the
`control information should be placed “immediately next to the RS” in order
`to minimize the bit error rate degradation. Id. at 5:57–59. Figure 6 of the
`’130 patent is reproduced below.
`
`3
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`IPR2017-01980
`Patent 8,761,130 B2
`
`
`
`
`Figure 6 of the ’130 patent illustrates the placement of both
`ACK/NAK bits 610 and CQI bits 620 within a slot of a sub-frame. Id. at
`5:60–62. “Due to the requirement for better reception reliability, the
`ACK/NAK bits are placed closer to the RS than the CQI bits.” 5:65–67.
`Data bits 640 occupy the remaining space of the symbols in the slot,
`including the otherwise unoccupied space of the symbols containing the
`control bits. 5:62–65.
`Illustrative Challenged Claims
`B.
`Claims 9 and 13 are independent and illustrative of the Challenged
`Claims. Claims 9 and 13 are reproduced below.
`9.
`An apparatus for transmitting a signal in a slot of a
`sub-frame in a wireless communication system, the signal
`including data
`information and acknowledgement
`information, the apparatus comprising:
`a mapper for mapping a reference signal to a middle
`symbol in the slot, mapping the data information to
`remaining symbols in the slot that are not used to map the
`reference signal, and mapping the acknowledgement
`information to first symbols among the remaining symbols
`in the slot, the first symbols not being used to map
`
`4
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`IPR2017-01980
`Patent 8,761,130 B2
`
`
`reference signals and the first symbols being directly
`adjacent to the middle symbol; and
`a transmitter for transmitting the signal including
`the mapped
`data
`information,
`the mapped
`acknowledgement information, and the mapped reference
`signal,
`wherein some of the data information is mapped to
`the first symbol which are directly adjacent to the middle
`symbol, and
`wherein CQI information is multiplexed with the
`data information.
`Id. at 7:52–8:14.
`13. A method for transmitting a signal in a slot of a sub-
`frame in a wireless communication system, the signal
`including data
`information and acknowledgement
`information, the method comprising:
`mapping a reference signal to a middle symbol in
`the slot;
`mapping the data information to remaining symbols
`in the slot that are not used to map the reference signal;
`mapping the acknowledgement information to first
`symbols among the remaining symbols in the slot, the first
`symbols not being used to map reference signals and the
`first symbols being directly adjacent to the middle symbol;
`and
`
`transmitting the signal including the mapped data
`information, the mapped acknowledgement information,
`and the mapped reference signal,
`wherein some of the data information is mapped to
`the first symbols which are directly adjacent to the middle
`symbol, and
`wherein CQI information is multiplexed with the
`data information.
`Id. at 8:26–45.
`
`5
`
`
`
`IPR2017-01980
`Patent 8,761,130 B2
`
`
`Evidence Relied Upon
`C.
`Petitioner relies on the following references (Pet. 3–4):
`1. Muharemovic et al., U.S. Pub. No. 2008/0200196
`(“Muharemovic”) (Ex. 1016);
`2. Muharemovic et al., Provisional App. No. 60/890,589
`(“Muharemovic Provisional”) (Ex. 1017);
`3. 3GPP TS 36.211, Technical Specification Group Radio Access
`Network; Physical Channels and Modulation, Release 8
`(“TS 36.211”) (Ex. 1010); and
`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).
`Petitioner further relies on a declaration of Dr. Robert Akl (Ex. 1003).
`Proposed Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability (Pet. 3–4):
`1. Claims 9–16 as anticipated under 35 U.S.C. § 102 by
`Muharemovic;
`2. Claims 12 and 16 as rendered obvious under 35 U.S.C. § 103(a) by
`Muharemovic;
`3. Claims 9–16 as rendered obvious under 35 U.S.C. § 103(a) by
`Muharemovic and TS 36.211;
`4. Claims 9–12 as rendered obvious under 35 U.S.C. § 103(a) by
`Muharemovic and R1-070777; and
`5. Claims 9–12 as rendered obvious under 35 U.S.C. § 103(a) by
`Muharemovic, TS 36.211, and R1-070777.
`
`6
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`
`
`IPR2017-01980
`Patent 8,761,130 B2
`
`
`Related Proceedings
`E.
`According to Petitioner, the ’130 patent is a continuation of
`U.S. Patent No. 8,331,328 and is the parent application of U.S. Patent No.
`9,300,454 and three pending continuation applications, namely U.S. Patent
`App. Nos. 14/862,995, 14/863,015, and 14/863,024. Pet. 2. Petitioner
`further states the ’130 patent is at issue in Huawei Techs Co., Ltd. v.
`Samsung Elecs. Co., Ltd., 3:16-cv-02787-WHO (N.D. Cal.). Id. at 3;
`Paper 4, 2. Finally, the ’130 patent is the subject of the petition filed in
`IPR2017-01979. Paper 4, 2.
`
`
`III. ANALYSIS
`Principles of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`Challenged Claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). At this stage of the proceeding, Petitioner must
`establish that there is a reasonable likelihood that it will prevail with respect
`to at least one of the Challenged Claims. 35 U.S.C. § 314(a).
`A claim is unpatentable under 35 U.S.C. § 102 only if every element
`set forth in the claims is found, either expressly or inherently described in a
`single prior art reference. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal.,
`814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown
`in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
`A 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
`
`7
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`IPR2017-01980
`Patent 8,761,130 B2
`
`matter as a whole would have been obvious at the time of the invention to a
`person having ordinary skill in the art. 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 skill in the art; and (4) when in evidence, objective
`evidence of non-obviousness, i.e., so-called secondary considerations such
`as commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The obviousness
`inquiry further requires an analysis of “whether there was an apparent reason
`to combine the known elements in the fashion claimed by the patent at
`issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006) (requiring “articulated reasoning with some rational underpinning
`to support the legal conclusion of obviousness”)).
`Claim Construction
`B.
`Petitioner addresses proposed constructions of the following three
`terms: (i) “a mapper” (claim 9); (ii) “a middle symbol in the slot” (claims 9,
`13); and (iii) “the some of the data information and the acknowledgement
`information are respectively transmitted over different subcarriers for
`transmission of the first symbols” (claims 10, 14) (Ex. 1001, 8:15–18, 8:46–
`49). Pet 8–11. Patent Owner does not seek construction of these terms
`because “the construction of all three terms has no bearing on whether inter
`partes review should be instituted.” Prelim. Resp. 14–15, fn. 7. We do not
`construe the terms identified by Petitioner because construction of these
`terms is not necessary for our analysis on whether to institute a trial, as
`detailed below. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`8
`
`
`
`IPR2017-01980
`Patent 8,761,130 B2
`
`803 (Fed. Cir. 1999) (explaining that only claim terms in controversy need
`to be construed, and only to the extent necessary to resolve the controversy).
`Reliance on Muharemovic as Prior Art
`C.
`Priority Date of the ’130 Patent
`1.
`The ’130 patent claims priority through patent U.S. Patent App. No.
`12/133,120 to Provisional App. No. 60/942,843 (“the ’843 provisional”),
`filed on June 8, 2007. Ex. 1001, at [60], [63]. Petitioner asserts, “it is
`unclear whether [the ’843 provisional] includes an enabling written
`description of the claims of the 130 Patent. Petitioner therefore assumes that
`the claims of the 130 Patent have an effective filing date of June 4, 2008.”
`Pet. 4–5. Patent Owner responds that the ’130 patent is entitled to a priority
`date of June 8, 2007 based on the ’843 provisional. Prelim. Resp. 5.
`When seeking institution of an inter partes review, Petitioner bears
`the burden of showing a reasonable likelihood that it would prevail on a
`ground of unpatentability. 35 U.S.C. § 314(a). The burden of persuasion
`regarding unpatentability never shifts to Patent Owner. Dynamic
`Drinkeware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). Moreover, Petitioner has the initial burden of production to establish
`unpatentability. Id. at 1379.
`With respect to entitlement to earlier effective filing dates, a patent
`owner “is not presumed to be entitled to the earlier filing dates of ancestral
`applications which do not share the same disclosure.” Lupin Ltd. v. Pozen,
`Inc., Case IPR2015-01775, slip op. at 10–11 (PTAB Mar. 1, 2016)
`(Paper 15) (citing Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-
`00116, slip op. at 9 (Paper 8) (PTAB Apr. 22, 2014); PowerOasis, Inc. v. T-
`Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed. Cir. 2008)); see also
`
`9
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`IPR2017-01980
`Patent 8,761,130 B2
`
`Franklin Electric Co. v. Liberty Pumps, Inc., Case IPR2017-00113, slip op.
`12–13 (PTAB Apr. 27, 2017) (Paper 14); Polaris Wireless, Inc. v.
`TruePosition, Inc., Case IPR2013-00323, slip op. at 29 (PTAB Nov. 15,
`2013) (Paper 9). Nevertheless, Petitioner first must raise the issue of
`whether Patent Owner is entitled to its effective filing date by “identifying,
`specifically, the features, claims, and ancestral applications allegedly lacking
`written description support for the claims based on the identified features.”
`Lupin Ltd., Case IPR2015-01775, at 11 (citing Focal Therapeutics, Case
`IPR2014-00116, at 10) (emphasis added); see also Franklin Electric Co.,
`Case IPR2017-00113, at 13; Polaris Wireless, Inc., Case IPR2013-00323, at
`10–11. Only once that initial production burden is satisfied by a petitioner
`must the patent owner “make a sufficient showing of entitlement to earlier
`filing date(s), in a manner that is commensurate in scope with the specific
`points and contentions raised by petitioner.” Id.
`Petitioner has not satisfied its initial production burden on this issue.
`Petitioner’s imprecise and generalized assertion that it is “unclear” whether
`the claims of the ’130 patent are supported by enabling written description in
`the ’843 provisional does not meet the requirement that the issue be raised
`by Petitioner through specific identification of those recited features that
`lack adequate support. Petitioner does not identify any specific features in
`the Challenged Claims that purportedly lack adequate written description
`support in the ’843 application. See Pet. 4–5. Petitioner, thus, articulates
`insufficient reasoning to support its assumption that the Challenged Claims
`are entitled only to an effective filing date of June 4, 2008. Accordingly, for
`the purposes of our analysis, we accord the Challenged Claims a priority
`date of June 8, 2007, the filing date of the ’843 provisional.
`
`10
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`
`
`IPR2017-01980
`Patent 8,761,130 B2
`
`
`Overview of Muharemovic
`2.
`Muharemovic relates to transmission of information in a wireless
`network, performed by allocating a channel from a transmitter to a receiver.
`Ex. 1016 ¶ 8. “The channel has at least one time slot with each time slot
`having a plurality of symbols. Each slot contains at least one reference
`symbol (RS).” Id.
`Muharemovic “first introduces a broader concept of Prioritized
`Information.” Id. ¶ 21. The Prioritized Information can include ACK/NAK
`information or CQI information, among other types of information. Id. ¶ 23.
`According to Muharemovic, Prioritized Information “is multiplexed with
`other Information” and “should be positioned in the vicinity of the Reference
`Signal (RS)” when designing a sub-frame structure. Id. ¶ 22. Muharemovic
`further describes that the Prioritized Information is used to produce digital
`samples and those samples are used to generate “priority symbols.” Id. ¶ 8.
`“Other symbols are generated using the other data.” Id.
`3. Muharemovic as Prior Art
`Muharemovic was filed on February 16, 2008 (Ex. 1016, at [22]) and
`claims priority to Provisional App. No. 60/890,589 (Ex. 1017) (“the ’589
`provisional”), filed on February 19, 2007. Id., at [60]. Because we accord
`the Challenged Claims an effective filing date of June 8, 2007 based on the
`’843 provisional (see supra Section III.C.1), Muharemovic constitutes prior
`art to the ’130 patent only if Muharemovic properly claims priority to the
`’589 provisional.
`“A reference patent is only entitled to claim the benefit of the filing
`date of its provisional application if the disclosure of the provisional
`application provides support for the claims in the reference patent in
`
`11
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`
`
`IPR2017-01980
`Patent 8,761,130 B2
`
`compliance with [35 U.S.C. ]§ 112, ¶ 1.” Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1381–82 (Fed. Cir. 2015). To comply with
`the written description requirement of 35 U.S.C. § 112 in order to be entitled
`to an earlier priority date under 35 U.S.C. § 119, each claim limitation must
`be expressly, implicitly, or inherently supported in the earlier-filed
`disclosure. See Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998).
`When an explicit limitation in a claim “is not present in the written
`description whose benefit is sought it must be shown that a person of
`ordinary skill would have understood, at the time the patent application was
`filed, that the description requires that limitation.” Id.
`Petitioner analyzes claim 1 of Muharemovic in support of its assertion
`that Muharemovic is entitled to a priority date based on the filing of the ’589
`provisional. Pet. 12–23. Claim 1 of Muharemovic is reproduced below.
`1. A method for transmitting information in a wireless
`network, comprising:
`allocating a first channel from a transmitter to a
`receiver, wherein said first channel comprises at least one
`time slot with each time slot comprising a plurality of
`symbols, wherein each symbol is generated from at least
`one digital sample, and wherein each slot contains at least
`one reference symbol (RS);
`classifying
`said
`information
`information (PI) and other information;
`producing at least one digital sample using an
`element of prioritized information;
`generating a first symbol using said at least one
`digital sample; and
`transmitting said first symbol via said first channel
`such that separation of said first symbol and a reference
`symbol does not exceed a time duration of one symbol.
`
`as prioritized
`
`12
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`IPR2017-01980
`Patent 8,761,130 B2
`
`Ex. 1016, 8.
`Petitioner’s analysis of claim 1 relies on Figure 2 of the ’589
`provisional for support of the claimed “allocating a first channel.” Pet. 13–
`14. Figure 2 of the ’589 provisional is reproduced below.
`
`
`
`With regard to the claimed “allocating a first channel,” Petitioner
`contends, “Muharemovic refers to the ‘channel’ as ‘a signal propagation
`medium.’” Pet. 13 (citing Ex. 1016 ¶¶ 7–8). Petitioner further asserts that
`the ’589 provisional discloses two wireless transmitters of a user device. Id.
`(citing Ex. 1017, Figs. 2–3; Ex. 1003 ¶ 84). Petitioner elaborates,
`“[i]nformation transmitted by each transmitter is assigned to a set of sub-
`carriers (as indicated by the arrows between the DFT and the IFFT units),
`which are collectively a signal propagation medium having certain
`frequency characteristics.” Id. at 13–14.
`On this record, Petitioner has not established that the claim limitation
`“allocating a first channel” is expressly, implicitly, or inherently supported
`in the ’589 provisional. As noted above, Petitioner first relies on
`Muharemovic—not the ’589 provisional—as supporting its assertion that the
`claimed channel is described as a signal propagation medium. Such a
`showing is insufficient to meet Petitioner’s burden of establishing written
`
`13
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`IPR2017-01980
`Patent 8,761,130 B2
`
`description support in the provisional for the limitations of Muharemovic’s
`claim 1. See Dynamic Drinkware, LLC, 800 F.3d at 1381–82. Further,
`Petitioner inadequately explains why the cited figure purportedly supports its
`assertion that the ’589 provisional describes allocating a first signal
`propagation medium. Pet. 13–14. Instead, Petitioner summarily asserts the
`use of arrows between two structures labelled DFT and IFFT in Figure 2 of
`the ’589 provisional indicates the use of a signal propagation medium. Id.
`This assertion is insufficient to establish written description support for the
`claim limitation “allocating a first channel” because it does not identify
`adequate disclosure of the channel, establish equivalence of the channel and
`a signal propagation medium, or define with particularity the structures
`alleged as comprising the signal propagation medium. Further, claim 1 does
`not simply recite use of a first channel but requires “allocating” a first
`channel. Petitioner provides no explanation regarding the “allocating”
`aspect of the limitation. See Pet. 13–14.
`Accordingly, we determine Petitioner has not shown that
`Muharemovic is entitled to priority based on the ’589 provisional. We,
`therefore, accord Muharemovic a prior-art date based on its actual date of
`filing, namely February 16, 2008. This date is insufficient to predate the
`’130 patent’s effective filing date of June 8, 2007. Petitioner thus does not
`show a reasonable likelihood of prevailing on its unpatentability challenges
`in the Petition because each asserted ground relies on Muharemovic, which
`on this record has not been shown to be prior art to the ’130 patent.
`
`
`14
`
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`IPR2017-01980
`Patent 8,761,130 B2
`
`
`IV. SUMMARY
`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenges to any one of claims 9–16 of the
`’130 patent.
`
`
`V. ORDER
`
`It is, therefore,
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`15
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`IPR2017-01980
`Patent 8,761,130 B2
`
`FOR PETITIONER:
`Joseph A. Micallef
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jkushan@sidley.com
`HuaweiSamsungIPRSidley@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
`
`
`16
`
`
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