Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`Paper 7
`Entered: January 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01380
`Patent 8,682,357 B2
`_______________
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
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`
`
`
`Paper 7
`Entered: January 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01380
`Patent 8,682,357 B2
`_______________
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01380
`Patent 8,682,357 B2
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`INTRODUCTION
`I.
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively,
`“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 11–14, 19, 30–33, 38, 47–50, and 54 (the “challenged
`claims”) of U.S. Patent 8,682,357 B2 (Ex. 1001, the “’357 patent”).
`Intellectual Ventures II LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–60 (2018).
`After considering the evidence and arguments presented in the
`Petition and the Preliminary Response, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing
`unpatentability of claims 11–14, 19, 30–33, 38, 47–50, and 54 of the ’357
`patent, and we institute on all challenged claims and on all asserted grounds.
`A. Related Proceedings
`Petitioner states the ’357 patent has been asserted by Patent Owner in
`
`the following cases: Intellectual Ventures II LLC v. T-Mobile USA, Inc. et
`al., Case No. 2:17-cv-00661 (E.D. Tex. 2017); and Intellectual Ventures II
`LLC v. Sprint Spectrum, L.P. et al., Case No. 2:17-cv-00662, (E.D. Tex.
`2017). Pet. 3; see also Paper 3, 1.
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`B. The ’357 Patent
` The ’357 patent is entitled “Paging in a Wireless Network,” and
`claims a priority date of May 2, 2006. Ex. 1001 [54, 22]. The ’357 patent is
`directed to a method of paging user equipment (“UE”), such as a mobile
`terminal, within a wireless network. See id. at 1:10–12, 30–31. Figure 1,
`reproduced below, depicts a cellular communication system according to
`embodiments of the invention. Id. at 4:40–41.
`
`
`
`Figure 1 of the ’357 patent, reproduced above, illustrates a cellular
`communication network including “a UE domain, a radio access network
`(RAN) domain, and a core network domain.” Id. at 4:41–43. Figure 2 of the
`patent, reproduced below, illustrates an exemplary wireless network
`comprising an access gateway (aGW, 118), various Node-B base stations
`each servicing a cell, and UE (110).
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`Figure 2 of the ’357 patent, reproduced above, depicts a “network-initiated
`connection establishment according to embodiments of the invention.”
`Ex. 1001, 3:54–55.
`According to the ’357 patent, to preserve power and network
`resources, UEs (e.g., mobile terminals) in the UE domain stay in an idle
`mode when not in use. Id. at 1:10–17, 1:36–38. “In idle mode, the mobile
`terminal has no connection to the RAN; however, it is connected to the core
`network.” Id. at 1:38–40. When the RAN wants to establish a connection to
`an idle UE, the core network initiates the connection via a paging process.
`Id. at 1:21–29. A network device within the core network (the aGW)
`initiates the connection by transmitting a paging message to a NodeB. Id. at
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`2:60–3:2. The NodeB receives the paging message and affixes information
`to the message. Id. In an embodiment, the affixed information includes a
`“cell-specific radio network temporary identity” (“RNTI”) and “index(es) to
`one or a set of shared control channels (SCCHs).” Id. 2:66–3:2. The NodeB
`then broadcasts the modified message to the UE, which periodically wakes
`up to listen for an incoming paging message. Id. at 3:7, 6:50–65, Fig. 9.
`The NodeB may send the paging message to a UE on separate
`channels. Id. at 3:21–3:30. In particular, the ’357 patent describes examples
`of ways that a NodeB may divide the elements across various channels
`during transmission:
`The paging message may be conveyed to the UE using:
`(1) paging indicators mapped onto a paging indicator channel
`(PICH), and the paging message mapped onto separate paging
`channels (PCH), (2) paging indicators mapped onto a shared
`control channel (SCCH) and the paging message mapped onto
`separate paging channels (PCH); or (3) paging indicators
`mapped onto a shared control channel (SCCH) and the paging
`message mapped onto a downlink shared transport channel
`(SCH).
`Id. The ’357 patent calls the division of these elements across separate
`channels “two-stage paging.” Id. at 5:66–6:3. According to an embodiment
`of two-stage paging shown below in Figure 9, each UE listens to a separate
`control channel (e.g., SCCH) for a paging indicator: “The UEs listen to the
`appropriate SCCH for paging indicators . . . .” Id. at 6:56–58.
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`Figure 9 of the ’357 patent, reproduced above, illustrates a way in which a
`paging message may be mapped according to an embodiment of the
`invention. See id. at 3:65–67.
`The SCCH will indicate not only the existence of a paging message
`but also the allocated resources for a corresponding SCH channel: “The
`message part of SCCH indicates the resources allocated for a corresponding
`SCH channel, which carries the paging message(s) (paging signal 2).” Id. at
`6:60–63. If the UE hears a paging indicator on the SCCH (e.g., its Group
`Id), “the UE reads the allocated SCH for its paging message.” Id. at 6:63–
`65. When the UE receives the paging message, it will read the paging
`message and then either connect to the network or perform an instructed
`task. Id. at 1:30–35.
`
`C. Illustrative Claim
`Of the contested claims, claims 11, 30, and 40 are independent. Claim
`11 is illustrative of the claimed subject matter (emphasis added):
`11. A method performed by a wireless network, the
`method comprising:
`sending, by a first network device, a paging signal
`to a second network device;
`paging, by the second network device, a user
`equipment (UE) in idle mode by sending a
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`message on a control channel, the message
`having an allocation of resources for a
`shared channel and a radio network
`temporary identity (RNTI) associated with a
`plurality of UEs including the UE;
`sending, by the second network device, a paging
`message in the allocated resources for the
`shared channel; and
`wherein the paging message includes an
`International Mobile Subscriber Identity
`(IMSI) or a Temporary Mobile Subscriber
`Identity (TMSI).
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable under
`35 U.S.C. § 103(a)1 based on the following grounds (Pet. 14):
`
`Ground
`
`References
`
`Claims Challenged
`
`1
`
`CATT2 and LG3
`
`11, 13, 30, 32, 47, and 49
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 102
`and § 103. Because the ’357 patent has an effective filing date prior to the
`effective date of the applicable AIA amendments, we refer herein to the pre-
`AIA versions of § 102 and § 103.
`2 CATT, “PCH mapping and Paging Control,” asserted by Petitioner to have
`been published on March 24, 2006, prior to 3GPP RAN1/RAN2 joint
`meeting on LTE, Athens, Greece, 27–31 March, 2006, R2-060988
`(Ex. 1005, “CATT”; see Pet. 15).
`3 LG Electronics, “Discussion on LTE Paging and DRX,” asserted by
`Petitioner to have been published on March 23, 2006, prior to Joint RAN
`WG1 and RAN WG2 on LTE, Athens, Greece, 27–31 March, 2006, R2-
`061014 (Ex. 1006, “LG”; see Pet. 14).
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`Ground
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`References
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`Claims Challenged
`
`2
`
`3
`
`CATT, LG, and CATT24
`
`12, 19, 31, 38, 48, and 54
`
`LG and Huawei5
`
`14, 33, and 50
`
`As further support, Petitioner offers the Declarations of Vijay K.
`Madisetti, Ph.D. (Ex. 1003); Craig Bishop (Ex. 1015); and Sven Ekemark
`(Ex. 1016).
`
`II. DISCUSSION
`A. Level of Ordinary Skill in the Art
`Relying on the testimony of Dr. Madisetti, Petitioner offers an
`assessment as to the level of skill in the art as of the filing date of the ’357
`patent as a person having
`a bachelor’s degree in electrical engineering, computer
`engineering, computer science or similar field, and three to five
`years of experience in digital communications systems, such as
`wireless communications systems and networks, or equivalent,
`or a Master’s degree in electrical engineering, computer
`engineering, computer science or similar field, and at least two
`years of work or research experience in digital communications
`systems, such as wireless communications systems and
`networks, or equivalent.
`
`
`4 CATT and RITT, “Access Procedure for TDD,” asserted by Petitioner to
`have been published on March 23, 2006, prior to 3GPP RAN1/RAN2 joint
`meeting on LTE, Athens, Greece, 27–31 March, 2006, R2-060905
`(Ex. 1007, “CATT2”; see Pet. 14).
`5 Huawei, “Inter-cell Interference Mitigation,” asserted by Petitioner to have
`been published on June 16, 2005, prior to 3GPP TSG RAN WG1 Ad Hoc on
`LTE, Sophia Antipolis, France, 20–21 June, 2005, R1-050629 (Ex. 1008,
`“Huawei”; see Pet. 15).
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`Pet. 10 (citing Ex. 1003 ¶¶ 25). At this time, Patent Owner does not propose
`an alternative assessment, but instead asserts the Board need not make a
`finding. Prelim. Resp. 7.
`To the extent necessary, and for purposes of this Decision, we accept
`the assessment offered by Petitioner as it is consistent with the ’357 patent
`and the asserted prior art.
`
`B. Claim Construction
`In this inter partes review, we construe the claim terms according to
`their broadest reasonable interpretation in light of the ’357 patent
`specification. 37 C.F.R. § 42.100(b) (2017);6 Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest
`reasonable interpretation, claim terms are presumed to have their ordinary
`and customary meaning as they would have been understood by a person of
`ordinary skill in the art in the context of the entire patent disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We conclude that no construction of any terms is necessary to
`determine whether to institute a trial in this proceeding. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“Because we need only construe terms ‘that are in
`
`
`6 The Office recently changed the claim construction standard used in inter
`partes review proceedings; however, the new rule applies only to petitions
`filed on or after November 13, 2018, and, therefore, does not apply to this
`matter. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (stating “[t]his rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date”) (to be codified at 37 C.F.R. pt. 42).
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`controversy, and only to the extent necessary to resolve the controversy,’ we
`need not construe [a particular claim limitation] where the construction is
`not ‘material to the . . . dispute.’” (citations omitted)).
`C. Principles of Law
`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) when in evidence, objective
`evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`D. Status of Asserted Prior Art as Printed Publications
`Petitioner’s challenges rely on several 3GPP documents (CATT,
`CATT2, LG, and Huawei), which Petitioner asserts were stored, indexed,
`and publicly accessible from the 3GPP website as of March 2006. See
`Pet. 14–18. In particular, relying on the testimony of Craig Bishop, who
`served as “rapporteur for 3GPP Technical Reports” (Ex. 1015 ¶ 11), and
`Sven Ekemark, who was part of Ericsson’s RAN2 delegation (Ex. 1016 ¶ 6),
`
`
`7 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
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`Petitioner asserts all of the documents “were disseminated via e-mail to
`subscribers of various 3GPP email lists on or before” their asserted public
`availability dates, with “no restriction on further dissemination and
`distribution.” Pet. 15 (citing Ex. 1015 ¶¶ 23–27; Ex. 1016 ¶¶ 16–20).
`Petitioner also asserts these documents were stored on the 3GPP website,
`which was sufficiently indexed to allow an interested party to find each
`document using reasonable diligence, and could have been downloaded from
`the website without restriction. Id. at 16–17 (citing Ex. 1015 ¶¶ 17–23, 28–
`30, 36–38, 52–54, 60–65; Ex. 1016 ¶¶ 12–20, 24–26, 32–34, 48–51, 57–59).
`Patent Owner argues: (1) Petitioner has shown only that “a POSITA
`‘could have’ accessed CATT if the POSITA knew what to look for, which is
`not the correct inquiry” (Prelim. Resp. 21); (2) “the e-mail that allegedly
`submitted CATT to the distribution list had an explicit confidentiality
`designation” (id. at 22); (3) “the record is devoid of any evidence showing
`that CATT was actually viewed or downloaded” (id. at 23); (4) the CATT
`document “was not presented” at the meeting, and Petitioner has failed to
`explain “why a POSITA would have searched for references in 3GPP’s Tdoc
`[(“technical document”)] repository” (id. at 24); and (5) Petitioner has not
`shown that CATT was “meaningfully indexed in a way that an interested
`artisan, exercising reasonable diligence, would have been able to find it . . .
`without first having the document” (id. at 25).
`As explained further below, upon consideration of Petitioner’s
`evidence and Patent Owner’s arguments regarding the insufficiency of that
`evidence, we are persuaded at this stage of the proceeding that Petitioner has
`demonstrated a reasonable likelihood of showing the 3GPP documents
`Petitioner cites in the Petition (CATT, CATT2, LG, Huawei, and
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`TR25.8138) were publicly available before the earliest effective priority date
`of the ’357 patent, and are, therefore, available as prior art under 35 U.S.C.
`§ 102.
`Whether an asserted document qualifies as a “printed publication”
`under § 102 “is a legal conclusion based on underlying factual
`determinations.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
`1340, 1350 (Fed. Cir. 2008). Public accessibility is “the touchstone in
`determining whether a reference constitutes a ‘printed publication.’” In re
`Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference “will be
`considered publicly accessible if it was ‘disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.’” Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)
`(quoting Kyocera Wireless Corp., 545 F.3d at 1350). Public accessibility “is
`determined on a case-by-case basis, and based on the ‘facts and
`circumstances surrounding the reference’s disclosure to members of the
`public.’” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). Petitioner bears the
`burden of persuasion of establishing that each reference was publicly
`accessible. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)
`(citing Blue Calypso, 815 F.3d at 1350–51).
`
`
`8 The TR25.813 reference is not cited by Petitioner as prior art in any of the
`three asserted grounds, but it is mentioned in the CATT reference (Ex. 1005,
`1) and appears to be relied upon by Petitioner as background. See Pet. 25–
`26.
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`The Federal Circuit has interpreted § 102 broadly, “finding that even
`relatively obscure documents qualify as prior art so long as the relevant
`public has a means of accessing them.” GoPro, Inc. v. Contour IP Holding
`LLC, 908 F.3d 690, 693 (Fed. Cir. 2018) (citing, e.g., Jazz Pharm., Inc. v.
`Amneal Pharm., LLC, 895 F.3d 1347, 1354–60 (Fed. Cir. 2018)). For
`example, the Federal Circuit has determined that a single cataloged thesis in
`a university library was “sufficient[ly] accessible to those interested in the
`art exercising reasonable diligence.” In re Hall, 781 F.2d 897, 900 (Fed.
`Cir. 1986).
`The Federal Circuit has recognized a “variety of factors” as “useful in
`determining whether a reference was publicly accessible.” Lister, 583 F.3d
`at 1312. One such factor is whether a party intended to make the reference
`public. See In re Wyer, 655 F.2d 221, 227 (CCPA 1981). Other factors
`include the length of time the reference was displayed, the expertise of the
`intended audience to which it was displayed whether the displaying party
`had a reasonable expectation that the information disclosed in the reference
`would not have been copied, efforts made to prevent copying, and the ease
`or simplicity with which the reference could have been copied. See
`Klopfenstein, 380 F.3d at 1350–51. Professional and behavioral norms can
`inform whether a displaying party had a reasonable expectation that
`information disclosed in a reference would not have been copied (that is,
`accessed by others). Id. Thus, “[e]vidence of routine business practice can
`be sufficient to prove that a reference was made [publicly] accessible.”
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568–69 (Fed.
`Cir. 1988). Cataloging and indexing are additional factors that can be
`sufficient to prove that a reference was made publicly accessible, but neither
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`is a necessary condition for a reference to be publicly accessible. Lister, 583
`F.3d at 1312.
`To determine whether the 3GPP documents cited by Petitioner were
`publicly accessible, “we must consider all of the facts and circumstances
`surrounding [their] disclosure and determine whether an interested
`researcher would have been sufficiently capable of finding the reference[s]
`and examining [their] contents.” Lister, 583 F.3d at 1312. As discussed
`further below, we find, based on the Klopfenstein factors discussed above,
`that Petitioner has demonstrated a reasonable likelihood of showing the
`3GPP documents it cites were publicly accessible prior to the priority date of
`the ’357 patent.
`In particular, according to the declaration testimony of both
`Mr. Bishop and Mr. Ekemark, it was the practice in 2005–2006 for members
`of each working group of 3GPP to prepare technical documents (“TDocs,”
`also referred to as “contributions”), which are the types of documents cited
`by Petitioner. See Ex. 1015 ¶ 20; Ex. 1016 ¶¶ 12–13. Further according to
`that practice, such documents were “assigned a number and then uploaded to
`a public file server in an area allocated to the particular working group,
`where they became publicly available . . . immediately upon upload” without
`needing any password. Ex. 1015 ¶ 21; see also Ex. 1016 ¶ 14. Petitioner’s
`declarants also testify that the 3GPP public file server automatically
`assigned each uploaded document a “time stamp,” which is an “accurate
`electronic record of when the document was last modified.” Ex. 1015 ¶ 23;
`see also Ex. 1016 ¶¶ 17–23.
`In addition to confirming the accessibility of the 3GPP documents via
`the 3GPP FTP site, Petitioner’s declarants also testify that 3GPP members in
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`some working groups, including the RAN1 and RAN2 groups in the 2005–
`2006 timeframe, were typically sent an email having attached TDocs.
`Ex. 1015 ¶ 24; Ex. 1016 ¶¶ 8, 13, 16–20. These emails lists in the relevant
`time frame included hundreds of subscribers. Ex. 1015 ¶ 25. “The typical
`practice among people who were to attend an upcoming meeting was to
`review and form opinions about the ideas in TDocs and their potential
`impact on the standard and on the user and the network equipment.”
`Ex. 1015 ¶ 24. These emails were also archived in a public archive and
`included a “computer-generated time stamp indicating when the email was
`sent.” Id. ¶ 27.
`According to Mr. Bishop, consistent with the foregoing described
`practices: CATT was uploaded to the 3GPP FTP site by March 24, 2006
`(Ex. 1015 ¶¶ 37–38); CATT2 was uploaded to the 3GPP FTP site by March
`23, 2006 (id. ¶¶ 29–30); LG was uploaded to the 3GPP FTP site by March
`23, 2006 (id. ¶¶ 45–46); Huawei was uploaded to the 3GPP FTP site by June
`16, 2005 (id. ¶¶ 53–54); and TR25.813 was uploaded to the 3GPP FTP site
`by March 21, 2006 (id. ¶¶ 61–62). Mr. Bishop also testifies that each of
`these documents was publicly distributed, without restriction on further
`dissemination, via email exploder on or before its being uploaded to the
`3GPP site. Id. ¶¶ 31–35 (CATT2); ¶¶ 41–43 (CATT); ¶¶ 47–51 (LG);
`¶¶ 55–59 (Huawei); ¶¶ 66–69 (TR25.813). Mr. Bishop further testifies that
`these documents could have been located using reasonable diligence by
`navigating to the 3GPP public file server / FTP site and clicking on the links
`corresponding to the desired subject matter, meeting number, or document
`number. See id. ¶¶ 35, 43, 51, 59. Petitioner’s other declarant on public
`accessibility of the 3GPP documents, Mr. Ekemark, provides testimony
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`similar to Mr. Bishop’s as to all of these documents. Ex. 1016 ¶¶ 24–31
`(CATT2); ¶¶ 33–39 (CATT); ¶¶ 41–47 (LG); ¶¶ 49–56 (Huawei); ¶¶ 58–65
`(TR25.813).
`We have reviewed and considered all of Patent Owner’s arguments
`challenging Petitioner’s showing as to public accessibility of the 3GPP
`documents, but we disagree, at this stage of the proceeding, that Petitioner’s
`showing is insufficient. In particular, we disagree with Patent Owner’s
`assertion that Petitioner’s showing is deficient because Petitioner shows only
`“that a POSTA ‘could have’ accessed [the 3GPP documents] if the POSITA
`knew what to look for.” Prelim. Resp. 21. As the Federal Circuit noted in
`Kyocera Wireless, standards specifications for GSM (an earlier mobile
`telecommunications standard) were publicly accessible because:
`The record shows that GSM specifications, though drafted
`within smaller technical subcommittees, were widely
`distributed before the critical date of the ’983 Patent. Versions
`of the standard were “publicly available and released as
`consistent sets.” Several U.S. companies took part in the ETSI
`work and had access to the GSM specifications through their
`European subsidiaries. The specifications themselves were
`visible to any member of the interested public without
`requesting them from an ETSI member. Further, ETSI did not
`impose restrictions on ETSI members to prevent them from
`disseminating information about the standard to non-members.
`Kyocera Wireless, 545 F.3d at 1350–51 (internal citations omitted).
`Similarly, here, Petitioner has presented persuasive evidence that the 3GPP
`documents were not only emailed to hundreds of interested individuals in the
`industry, but also were uploaded to a public repository, where they were
`available for viewing or download without restriction. Pet. 15–17 (citing
`Ex. 1015 ¶¶ 17–30, 36–38, 52–54, 60–65; Ex. 1016 ¶¶ 12–20, 24–26, 32–34,
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`48–51, 57–59). We note that, by their nature, the 3GPP documents
`Petitioner relies upon are directed to a sophisticated audience, as evidenced
`by Petitioner’s definition of the level of skill in the art, which Patent Owner
`does not contest. See § II.A, supra. A person of that skill level would have
`had the requisite computer skills needed to navigate the 3GPP FTP site to
`find and download documents of interest.
`
`Patent Owner’s suggestion that the email distribution was subject to
`“an explicit confidentiality designation” and, therefore, the documents
`themselves were subject to confidentiality restrictions, is not persuasive. See
`Prelim. Resp. 22–23. The “confidentiality designation” referenced by Patent
`Owner is a legend at the bottom of the cover email, which appears to be a
`generic email footer advising that the email is intended for the designated
`recipient only. E.g., Ex. 1015, p. 100. None of the documents themselves,
`however, bear any confidentiality labels, and both Mr. Bishop and
`Mr. Ekemark testify that each of the 3GPP documents was disseminated via
`email and uploaded to the FTP server “without restriction.” E.g., Ex. 1015
`¶¶ 26–27; see also Ex. 1016 ¶¶ 14, 17. On this record, we are persuaded, for
`purposes of institution, that the generic email footer does not contradict the
`testimony of Mr. Bishop and Mr. Ekemark as to the nonrestricted nature of
`the disseminated documents.
`
`Also unpersuasive is Patent Owner’s argument that Petitioner’s
`showing is deficient because “the record is devoid of any evidence showing
`that [the 3GPP documents were] actually viewed or downloaded.” Prelim.
`Resp. 23. As the Federal Circuit has explained, “[a]ccessibility goes to the
`issue of whether interested members of the relevant public could obtain the
`information if they wanted to” and “[i]f accessibility is proved, there is no
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`requirement to show that particular members of the public actually received
`the information.” Constant, 848 F.2d at 1569 (emphases added). As
`discussed above, we are persuaded at this stage and on this record that
`Petitioner has made a sufficient showing of such accessibility even in the
`absence of direct proof that any particular person actually downloaded the
`documents before the filing date of the ’357 patent.
`
`We find, on the record before us, that Petitioner has demonstrated a
`reasonable likelihood of showing the 3GPP documents cited in the Petition
`(CATT, CATT2, LG, Huawei, and TR25.813) were publicly accessible
`before the earliest effective priority date of the ’357 patent.
`E. Ground 1: Obviousness of Claims 11, 13, 30, 32, 47, and 49
`over CATT in View of LG
`1. Overview of CATT (Ex. 1005)
`CATT describes a DRX1 paging process that uses a paging indicator
`on a shared channel. Ex. 1005, 1. The paging process, as Figure 1 of CATT
`shows below, uses two shared channels: (1) a downlink physical shared
`channel, and (2) a downlink shared control channel. Id.
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`Figure 1 of CATT9 shows an example of mapping a paging channel (“PCH”)
`onto a downlink physical shared channel (“DPSCH”), wherein a paging
`indicator is carried on a downlink shared control channel (“DSCCH”).
`As CATT explains, reading the DPSCH requires more time and
`resources than reading the DSCCH. Id. To save time and resources,
`CATT’s method sends a paging indicator on the DSCCH on the frame
`immediately before the paging message, which is sent on the DPSCH. Id. at
`1–2. In Figure 1 of CATT, the paging indicator and paging message are
`shown in red as “PI” and “PCH Data” respectively. Id. With this paging
`indicator, the UE needs to listen only to the DSCCH—not the DPSCH. Id.
`CATT describes two embodiments of the paging indicator. Id. at 2.
`In the embodiment relied upon by Petitioner, the paging indicator has an ID
`(“PI-ID”). Id. at 2; see also Pet. 26. In this embodiment, the PI-ID not only
`indicates that a paging message will be sent during the next frame but also
`includes resources that identify the DPSCH. Ex. 1005, 2. CATT explains
`the method of using a PI-ID with the process flow of Figure 2, reproduced
`below.
`
`
`9 Figure 1 spans pages 1–2 of CATT, and is reproduced above in
`consolidated form as provided in Patent Owner’s Preliminary Response. See
`Prelim. Resp. 9.
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`Figure 2 of CATT, reproduced above, illustrates the control procedure of an
`idle UE. Ex. 1005, 3.
`As shown in Figure 2, when the UE is in an idle monitoring state, the
`UE will monitor the DSCCH. Id. at 2–3. If the UE does not receive a PI-ID
`on the DSCCH, that UE will go to a dormant state. Id. But when the UE
`receives a PI-ID on the DSCCH, the UE will determine whether it is paged
`(“Is my paging?”) and, if so, will read the resource to identify the DPSCH
`that will send the paging message. Id. The UE will then read the paging
`message on the next frame of the identified DSCCH. Id.
`2. Overview of LG (Ex. 1006)
`LG is generally directed to “how to specify Paging and DRX
`
`procedure and PCH channel in LTE” for efficient UE battery power
`
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`management in idle mode. Ex. 1006, 1. LG teaches that a “paging
`message” to a UE “will carry a longer UE id e.g. IMSI [International Mobile
`Subscriber Identity] and TMSI [Temporary Mobile Station Identifier]” since
`a UE id such as “C-RNTI” has not yet been allocated by a cell. Id. As a
`result, a UE in idle mode will monitor “a PCH channel based on a long UE
`identity for UE power saving.” Id. at 2.
`3. Analysis
`Petitioner contends claims 11, 13, 30, 32, 47, and 49 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of CATT and LG.
`Pet. 18–50. We are persuaded Petitioner has demonstrated a reasonable
`likelihood of prevailing on this ground as to all challenged claims.
`a. Claim 11 (preamble): “method performed by a wireless network”
`To the extent the preamble is limiting, Petitioner persuasively shows
`CATT discloses a wireless network and, in particular (as discussed further
`below in connection with the body of claim 11), a paging method performed
`in a wireless network. Pet. 25–27 (citing Ex. 1005, 1–2). At this stage,
`Patent Owner does not present separate arguments pertaining to the
`preamble of claim 11.
`Based on the current record, for purposes of this Decision, we are
`persuaded that Petitioner has demonstrated sufficiently that CATT discloses
`the subject matter of the preamble of claim 11.
`b. Claim 11: “sending, by a first network device, a paging signal to
`a second network device”
`Petitioner persuasively shows CATT discloses the subject matter of
`this limitation by disclosing an access gateway (“aGW”), which Petitioner
`asserts is a “first network device,” sending a paging message (a “paging
`
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`signal”) to an eNodeB, which Petitioner asserts is a “second network
`device.” Pet. 27–28 (citing Ex. 1005, 2). Petitioner’s assertions are
`supported by the cited teachings of CATT and also by the Madisetti
`Declaration. See Ex. 1003 ¶¶ 87–89.
`At this stage, Patent Owner does not present separate arguments
`pertaining to this limitation of claim 11.
`Based on the current record, for purposes of this Decision, we are
`persu
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