Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: February 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. AND ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01478
`Patent 6,760,590 B2
`____________
`
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 19, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. AND ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01478
`Patent 6,760,590 B2
`____________
`
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2018-01478
`Patent 6,760,590 B2
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`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`partes review of U.S. Patent No. 6,760,590 B2 (Ex. 1001, “the ’590 patent”
`or “the challenged patent”). See 35 U.S.C. § 314(a); 37 C.F.R § 42.4(a)
`(delegating authority to institute trial to the Board). 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).
`Apple Inc. and ZTE (USA) Inc. (collectively, “Petitioner”) filed a
`petition seeking inter partes review of claims 1–8 of U.S. Patent
`No. 6,760,590 B2. Paper 1 (“Pet.”). Patent Owner, INVT SPE LLC, filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). After receiving
`authorization (Paper 8), Petitioner filed a Reply (Paper 9) to address Patent
`Owner’s argument that institution should be denied for efficiency reasons,
`and Patent Owner filed a Sur-Reply (Paper 10).
`Although Petitioner initially sought to include claims 1, 2, 5, and 6 in
`its challenge, Patent Owner statutorily disclaimed those claims after the
`Petition was filed. See Ex. 2001. For the reasons discussed below,
`disclaimed claims 1, 2, 5, and 6 are no longer regarded as claims challenged
`in the Petition, leaving claims 3, 4, 7, and 8 as the only challenged claims.
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented does not show a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of claims 3,
`4, 7, and 8 of the challenged patent. Accordingly, we deny institution of an
`inter partes review.
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`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identified various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 34; Paper 5 (Patent Owner’s Mandatory
`Notices), 2–3.
`
`B. Statutory Disclaimer of Claims 1, 2, 5, and 6
`As noted above, Petitioner filed a petition challenging claims 1–8 of
`the ’590 patent. Pet. 3. Subsequently, Patent Owner filed a statutory
`disclaimer of claims 1, 2, 5, and 6. Ex. 2001; see Prelim. Resp. 1; see also
`35 U.S.C. § 253 (indicating a patentee may disclaim claims). Patent Owner
`contends that inter partes review should not be instituted on the disclaimed
`claims in accordance with 37 C.F.R. § 42.107(e). Prelim. Resp. 1.
`We agree with Patent Owner. “A statutory disclaimer under
`35 U.S.C. § 253 has the effect of canceling the claims from the patent and
`the patent is viewed as though the disclaimed claims had never existed in the
`patent.” Guinn v. Kopf, 96 F.3d 1419, 1442 (Fed. Cir. 1996) (citing Altoona
`Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An
`inter partes review cannot be instituted on claims that have been disclaimed
`and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will
`be instituted based on disclaimed claims.”). This conclusion is consistent
`with other panel decisions addressing this issue. See, e.g., Intuitive Surgical,
`Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7,
`2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015,
`Paper 9, 12–14 (PTAB Nov. 14, 2018).
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`Accordingly, we do not institute inter partes review on claims 1, 2, 5,
`and 6.
`
`C. The Challenged Patent
`The ’590 patent generally relates to transmission efficiency in mobile
`communications. Ex. 1001, 1:9–11, 1:15–18. The patent describes High
`Data Rate (“HDR”) as a known strategy to improve the transmission
`efficiency of a downlink from a base station to a communication terminal.
`Id. at 1:19–21 (Background Art). In HDR, a base station first transmits a
`pilot signal to a communication terminal. Id. at 1:28–31. The
`“communication terminal estimates the downlink channel quality using a
`CIR (desired carrier to interference ratio) based on the pilot signal, etc., and
`finds a transmission rate at which communication is possible.” Id. at 1:31–
`34. Based on the possible transmission rate, the “communication terminal
`selects a communication mode, which is a combination of packet length,
`coding method, and modulation method.” Id. at 1:34–39. The
`communication terminal then “transmits a data control rate (‘DCR’) signal
`indicating the communication mode to the base station.” Id. at 1:34–41.
`The base station sets a transmission rate for the communication terminal
`based on the DCR signal. Id. at 1:57–59. “Generally, DCR signals are
`represented by numbers from 1 to N, with a higher number indicating a
`proportionally better downlink channel quality.” Id. at 1:53–56.
`The challenged patent discloses various embodiments in which the
`measured CIR value is encoded prior to transmission to the base station such
`that the CIR value is less susceptible to errors during transmission. Id. at
`19:34–42. Figure 15 is set forth below.
`
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`As shown in Figure 15, “an upper digit information generation section
`1201 outputs the value of the upper digit in the CIR value output from the
`CIR measurement section 219 to a 6-bit coding section 1203. A lower digit
`information section 1202 outputs the value of the lower digit in the CIR
`value output from the CIR measurement section 219 to a 4-bit coding
`section 1204.” Id. at 20:33–39; Fig. 15. Using the example of an 8.7 dB
`CIR value output from the CIR measurement section 219, “the upper digit
`information generation section 1201 outputs the value of the integer part,
`‘8’, to the 6-bit coding section 1203,” which converts the value to a 6-bit
`code word. Id. at 20:39–42, 20:46–48. Continuing with the 8.7 dB value
`example, “the lower digit information generation section 1202 outputs the
`value of the fractional part, ‘7’, to the 4-bit coding section 1204,” which
`converts the value to a 4-bit code word. Id. at 20:39–45, 20:49–52.
`Of the claims remaining in the ’590 patent, claims 3 and 7 are
`independent. Claim 3, reproduced below, is illustrative of the claimed
`subject matter:
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`3. A communication terminal apparatus comprising:
`a measurer that measures a downlink channel quality and outputs
`information that is generated in association with said downlink
`channel quality and composed of a plurality of digits including
`an upper digit and an lower digit;
`a coder that encodes the information such that the upper digit is
`assigned a larger number of bits than the lower digit; and
`a transmitter that transmits the encoded information to a base
`station apparatus.
`
`D. The Asserted Ground of Unpatentability
`Petitioner challenges under 35 U.S.C. § 1031 the patentability of
`claims 3, 4, 7, and 8 of the ’590 patent. Petitioner relies on the following
`references as prior art.
`Paul Bender, et al., CDMA/HDR: A Bandwidth-Efficient High-
`Speed Wireless Data Service for Nomadic Users, IEEE
`COMMUNICATIONS MAGAZINE (July 2000) (Ex. 1004,
`“Bender”).
`U.S. Patent No. 6,470,470 B2, filed Feb. 6, 1998, issued
`Oct. 22, 2002 (Ex. 1006, “Jarvinen”).
`Petitioner supports its challenge with citations to the references and
`declaration testimony from Andrew C. Singer, Ph.D. (Exhibit 1003).
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
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`II. DISCUSSION
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied on). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103 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 the 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.2
`
`2 At this preliminary stage Patent Owner does not offer objective evidence of
`non-obviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In determining the
`level of ordinary skill, various factors may be considered, including the
`“types of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovation are made; the sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and
`citation omitted).
`
`B. Level of Ordinary Skill in the Art
`Relying on declaration testimony of Dr. Singer, Petitioner contends
`that one of ordinary skill in the art “would have been a person having a
`Bachelor’s degree in electrical engineering or equivalent plus 3 years of
`experience working with wireless communication systems or a Master’s
`degree in electrical engineering with an emphasis on communication
`systems or the equivalent plus 1 year of experience working with wireless
`communication systems.” Pet. 4 (citing Ex. 1003 ¶ 38). Patent Owner does
`not dispute Petitioner’s proposed level of ordinary skill. For purposes of this
`Decision, we adopt the level of ordinary skill proposed by Petitioner.
`
`C. Claim Construction
`For a petition for inter partes review filed before November 13, 2018,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable
`
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`construction standard in inter partes review).3 Accordingly, we use the
`broadest reasonable construction standard for this proceeding.
`Under the broadest reasonable construction standard, claim terms are
`presumed to have their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner and Patent Owner contend that no terms require express
`construction for this Decision. Pet. 6; Prelim. Resp. 15–16. To the extent it
`is necessary to determine whether to institute an inter partes review, we
`discuss claims terms in the context of analyzing the asserted ground. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review).
`
`
`3 Rule 42.100(b) has been amended to provide that petitions filed on or after
`November 13, 2018, are analyzed under the same claim construction
`standard applicable in district courts. See 37 C.F.R. § 42.100(b); Changes to
`the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340
`(Oct. 11, 2018).
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`D. Obviousness of Claims 3, 4, 7, and 8
`Petitioner asserts that the subject matter of independent claims 3 and 7
`and their respective dependent claims 4 and 8 would have been obvious to
`one of ordinary skill in the art in view of Bender and Jarvinen.
`
`1. Disclosure of Bender
`Bender describes “providing very high-data-rate downstream Internet
`access by [mobile] users within the current CDMA physical layer cellular
`architecture.” Ex. 1004, 704 (Abstract). An access terminal (also referred to
`as a user terminal, subscriber terminal, or handset) receives a pilot signal
`from a base station (also referred to as an access point). Id. at 71, 73; see id.
`at 70 (equating base station with access point). The pilot signals “provide
`the access terminal with means to accurately and rapidly estimate the
`channel conditions.” Id. at 73. Based on the pilot signal, the access terminal
`determines the received signal-to-noise-plus-interference ratio (SNR) of the
`channel. Id. at 71. “The data rate which can be supported to each user
`[access terminal] is proportional to its received SNR.” Id. at 71. The access
`terminal transmits “the SNR or equivalently the supportable data rate value”
`to the base station. Id. at 71.
`Bender further explains a method to use a supportable data rate value
`equivalent to the SNR. Id. at 73. Specifically, Bender indicates “[t]he value
`of the SNR is then mapped to a value representing the maximum data rate
`such a SNR can support for a given level of error performance.” Id. at 73.
`
`
`4 Following the practice of the parties, we refer to original article page
`numbers in the lower left corner rather than the exhibit page numbers in the
`lower right corner of the Exhibit pages.
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`“This channel state information, in the form of a data rate request, is then fed
`back to the [base station] via the reverse link data rate request channel
`(DRC).” Id. at 73. “The reverse link data rate request is a 4-bit value that
`maps the predicted SNR into one of the data rate modes of Table 1,” which
`is set forth below. Id. at 73.
`
`
`Id. at 72. Bender’s Table 1 presents eleven data rates in association with
`various parameters, including packet length and forward error correcting
`(FEC) rates. Id. at 72, 73.
`
`2. Disclosure of Jarvinen
`Jarvinen describes speech encoding techniques that automatically
`adjust “the number of speech parameter bits on which error correction
`coding and/or error detection focuses” “in relation to the number of total
`speech parameter bits as a function of the quality of the information transfer
`connection.” Ex. 1006, Abstract. Jarvinen’s Figure 1A, set forth below,
`illustrates a speech encoder for a GSM cellular system. Id. at 7:4–7, 7:44–
`46.
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`Jarvinen’s Figure 1A depicts speech signal 100 being “coded in
`speech encoder 101 into speech parameters 102, which are further
`transferred to channel encoder 104.” Id. at 7:46–48. “Channel encoder 104
`adds the error correction- and error detection bits in connection with speech
`parameters 102.” Id. at 7:48–50. Speech parameters are divided into two
`classes in bit separation block 103. Id. at 7:50–52. “Error detection- and
`error correction parameters are formed for the most important 182 bits
`(Class I).” Id. at 7:52–54. The encoding of the most important bits results
`in 378 bits of coded data 107, “which is combined with the least important
`78 bits (Class II, ref. 108).” Id. at 7:54–60. “[C]hannel encoder 104
`produces to the output (ref. 110) 456 bits for each 20 ms speech frame . . . .”
`Id. at 7:58–64.
`
`3. Petitioner’s Contentions Regarding Independent Claim 3
`Consistent with Bender’s disclosure discussed above, Petitioner relies
`on Bender’s SNR for teaching “information that is generated in association
`with said downlink channel quality,” recited in independent claim 3. Pet. 12
`(citing Ex. 1004, 71); Pet. 25 (relying on claim 1 arguments regarding the
`measurer recited in independent claim 3). Petitioner also indicates that
`examples of Bender’s SNR values are composed of the requisite two digits
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`as shown in Bender’s Table 2. Pet. 12 (citing Ex. 1004, Table 2).
`Petitioner’s annotation of Bender’s Table 2 is set forth below.
`
`
`Pet. 13. Bender’s Table 2 shows SNR values in the right column for data
`rates shown in the left column. Ex. 1004, 74 (Table 2). The SNR values
`shown in Table 2 are composed of a numeral with one figure to the right of
`the decimal point, such as “-12.5” for the data rate of 38.4 kb/s or “9.5” for
`the data rate of 2457.6 kb/s. As shown by the annotations of Bender’s
`Table 2, Petitioner contends that Bender’s SNR value is composed of “an
`upper digit (highlighted blue)” to the left of the decimal point and “a lower
`digit (highlighted green)” to the right of the decimal point.5 Pet. 12. Thus,
`according to Petitioner, Bender’s SNR value (corresponding to the recited
`information generated in association with downlink channel quality) is
`composed of an upper digit and a lower digit as required by the claim.
`
`
`5 For brevity and clarity, we will refer to the SNR digit to the left of the
`decimal point as the “upper digit” and the SNR digit to the right of the
`decimal point as the “lower digit.”
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`Pet. 12–13. Also consistent with Bender’s disclosure discussed previously,
`Petitioner contends that Bender teaches that the SNR value is transmitted
`from the access terminal to the base station. Ex. 1004, 71 (indicating “the
`SNR or equivalently the supportable data rate value is transmitted to the
`base station.”); see Pet. 8 (citing Ex. 1004, 71), 17–18, 29 (relying on
`claim 1 arguments regarding the recited transmitter).
`Petitioner contends a combination of Bender and Jarvinen teaches “a
`coder that encodes the information such that the upper digit is assigned a
`larger number of bits than the lower digit,” as recited in independent claim 3.
`Pet. 25–28. Based on antecedent basis of “the information,” the recited
`information that is encoded is “information that is generated in association
`with said downlink channel quality and composed of a plurality of digits
`including an upper digit and a lower digit,” which Petitioner contends is
`Bender’s SNR sent from the access terminal to the base station. Pet. 12–14.
`For the requisite encoding, Petitioner relies on Jarvinen’s description of
`encoding speech data such that the most significant bits (Class I) are
`represented by 378 bits of coded data, which then are combined with the
`least important 78 bits (Class II). Ex. 1006, 7:46–64, Fig. 1A.
`
`4. Analysis of Independent Claim 3
`We recognize that Jarvinen teaches encoding more important
`information with more bits than less important information, and that Bender
`teaches information about channel quality including an upper digit and a
`lower digit. Neither Jarvinen nor Bender, however, teaches or suggests
`encoding channel quality information “such that the upper digit is assigned a
`larger number of bits than the lower digit,” as recited in independent claim 3.
`
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`Nor does Petitioner contend either reference does so. Rather, Petitioner
`contends “[i]t would have been obvious to encode the SNR values of Bender
`‘such that the upper digit is assigned a larger number of bits than the lower
`digit’ in accordance with the teachings of Jarvinen.” Pet. 27.
`Central to Petitioner’s contention is that one of ordinary skill in the art
`would understand that the upper digit of Bender’s SNR value is more
`important than the lower digit of Bender’s SNR value and, therefore, would
`have encoded the digits of Bender’s SNR value as required by the claim—
`“such that the upper digit is assigned a larger number of bits than the lower
`digit”—by using Jarvinen’s method to encode more important information
`with a larger number of bits. Pet. 27 (citing Ex. 1003 ¶ 56) (contending one
`of ordinary skill in the art “would understand that correctly relaying the
`upper digit is far more important than correctly relaying the lower digit”).
`The cited passage of Dr. Singer’s declaration testimony, however, does not
`support Petitioner’s contention. Rather, Dr. Singer opines that, based on
`Bender’s discussion of forward error coding, one of ordinary skill in the art
`“would have been motivated to seek additional guidance on how to
`implement error correcting coding” and “would have looked specifically to
`Piret.” Ex. 1003 ¶ 56. Thus, Dr. Singer’s testimony does not support
`Petitioner’s contention that a skilled artisan “would understand that correctly
`relaying the upper digit is far more important than correctly relaying the
`lower digit.” Pet. 27 (citing Ex. 1003 ¶ 56).
`Notably, too, Dr. Singer testifies that one of ordinary skill in the art
`would seek guidance from Piret (Ex. 1003 ¶ 56), not Jarvinen. For this
`additional reason, Dr. Singer’s testimony does not provide sufficient support
`for Petitioner’s contentions that one of ordinary skill in the art would have
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`encoded Bender’s SNR value using Jarvinen’s method of encoding more
`important information with more bits.
`Petitioner also contends that one of ordinary skill in the art “with
`knowledge of [unequal error protection] would understand that the Bender
`teachings effectively direct a skilled artisan to employ encoding techniques
`to ensure that the upper digit of the SNR value is not misinterpreted by the
`base station.” Pet. 28 (citing Ex. 1003 ¶¶ 47, 48, 56). We disagree with
`Petitioner’s characterization of Dr. Singers’ declaration testimony.
`Dr. Singer’s testimony in paragraphs 47 and 56 discuss Bender’s “forward
`error correcting” scheme as a reason one of ordinary skill in the art would
`have looked for techniques to protect “data with more and less significant
`digits” (Ex. 1003 ¶ 56) or for techniques that “are particularly adaptable to
`the measured SNR values having a more significant and less significant
`digit” (Ex. 1003 ¶ 47). Dr. Singer’s testimony here assumes, but does not
`explain or otherwise adequately support, that one of ordinary skill in the art
`would understand that the upper digit in Bender’s SNR value would have
`been more important to protect than the lower digit.
`We acknowledge that Bender describes a “forward error correcting
`(FEC) scheme [that] employs serial concatenated coding and iterative
`decoding, with puncturing for some of the higher code rates.” Ex. 1004, 73.
`Bender’s FEC discussion, however, does not relate to transmitting SNR
`values. Bender’s discussion of the FEC scheme immediately follows
`Bender’s statement that “[t]he main coding and modulation parameters are
`summarized in Table 1,” which in turn follows Bender’s discussion of
`determining and transmitting “a 4-bit value that maps the predicted SNR into
`one of the data rate modes in Table 1,” not the SNR value itself. Ex. 1004,
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`73; see Ex. 1004, 71 (indicating “the SNR or equivalently the supportable
`data rate value is transmitted to the base station” (emphasis added)). In
`addition, the FEC scheme in Table 1 is a parameter of a variable data rate
`(not the SNR value shown in Table 2). This further supports our finding that
`the FEC scheme relates to determining and transmitting a data rate value to
`the base station, not transmitting an SNR value to the base station.
`Accordingly, a plain reading of the reference does not support a finding that
`Bender teaches or suggests that the FEC scheme is used to encode the SNR
`itself. Therefore, we are not persuaded that Bender’s FEC description would
`have provided reason to look to Jarvinen’s techniques for encoding more
`important information with more bits.
`Moreover, even if Bender’s disclosure of the FEC scheme shows that
`some type of error correction is needed when transmitting the SNR value,
`this disclosure does not provide a reason that one of ordinary skill in the art
`would have used Jarvinen’s encoding techniques to encode the upper digit of
`Bender’s SNR value with more bits than the lower digit. As discussed
`above, Petitioner does not support its contention that a skilled artisan would
`have understood that protecting the transmission of the upper digit of
`Bender’s SNR value would be more important than the lower digit.
`In paragraph 48, Dr. Singer opines that “[t]he fundamental principle
`behind one approach to unequal error protection is to provide more
`protection for high-order (or more-significant) digits when compared to low-
`
`
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`17
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`order (or less-significant) digits.” Ex. 1003 ¶ 48 (citing Ex. 10126
`(“Masnick”), 17); see Pet. 28 (citing Ex. 1003 ¶ 48). Here, Dr. Singer
`testifies generally about providing unequal error protection in the resulting
`encoded code words and does not address the relative importance of digits in
`the data that is encoded (such as Bender’s SNR values). Rather, protecting
`“digits” in Masnick refers to “specific digits in the code words” resulting
`from the encoding techniques, not digits of values being encoded (such as
`digits in Bender’s SNR values). Ex. 1012, 1 (“The class of codes discussed
`in this paper has the property that its error-correction capability is described
`in terms of correcting errors in specific digits of a code word even though
`other digits in the code may be decoded incorrectly.” (emphasis added)).
`Petitioner also contends that using a higher bit count to transmit the
`upper digit of Bender’s SNR value would result in various improvements,
`such as “increasing the chances of interpreting the SNR value either
`correctly or with one insignificant error” or “would create more robustness
`to communication errors while not significantly increasing the required
`bandwidth for the control information.” Pet. 28 (citing Ex. 1003 ¶¶ 35, 40–
`48). Although Petitioner identifies portions of Dr. Singer’s declaration
`testimony, the cited portions do not provide adequate support for Petitioner’s
`contentions. In paragraph 35, Dr. Singer opines about benefits of unequal
`error protection and does not specifically address encoding Bender’s SNR
`
`
`6 Burt Masnick, et al., On Linear Unequal Error Protection Codes, IEEE
`TRANSACTIONS ON INFORMATION THEORY (October 1967) (Ex. 1012
`“Masnick”).
`7 We refer to the page numbers in the lower left corner of the exhibit page,
`not the original page numbers in the upper left corner.
`18
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`value with Jarvinen’s encoding techniques. Paragraph 40 is an introductory
`paragraph in which Dr. Singer presents his conclusion regarding
`obviousness without providing reasoning or evidence. In paragraphs 41 to
`45, Dr. Singer describes the disclosure of Bender (paragraph 41), similarities
`between the challenged patent and Bender’s disclosure (paragraph 42), the
`disclosure of Jarvinen (paragraphs 43 and 45), and similarities between the
`challenged patent and Jarvinen’s disclosure (paragraph 44). In paragraphs
`46 and 47, Dr. Singer opines that the SNR value must be digitized before
`transmission and then error correction applied to the digitized value. We
`discussed the inadequacies of Dr. Singer’s testimony in paragraphs 47 and
`48 above. For these reasons, we conclude that Dr. Singer’s declaration
`testimony in paragraphs 35 and 40–48 do not support Petitioner’s contention
`that using a higher bit count to transmit the upper digit of Bender’s SNR
`value would result in various improvements (Pet. 28).
`We acknowledge that, at the end of paragraph 42, Dr. Singer notes the
`format of Bender’s SNR is the same as the channel quality measured in the
`challenged patent, which discloses the CIR value is composed of two digits
`where the severity of the error associated with the decimal integer is more
`significant than that of the fractional decimal. Ex. 1003 ¶ 42 (citing
`Ex. 1001, 19:42–54; Ex. 1004, Table 2). Even here, however, Dr. Singer
`does not sufficiently explain or cite evidence to support an opinion that one
`of ordinary skill in the art would have understood that the upper digit of
`Bender’s SNR would be more important to protect during transmission.
`Rather, in context, we understand Dr. Singer’s testimony to discuss
`similarities between Bender’s SNR value and the CIR in the challenged
`
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`patent, not opine how a skilled artisan would understand the relative
`importance of the digits in Bender’s SNR value.
`
`5. Conclusion Regarding Independent Claim 3
`It is axiomatic that an asserted ground of obviousness must
`demonstrate articulated reasoning with rational underpinning to support the
`legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006); see KSR, 550 U.S. at 418 (quoting In re Kahn). Mere conclusory
`statements are not sufficient. Kahn, 441 F.3d at 988.
`Here, for these reasons discussed previously, we conclude that
`Petitioner has not provided sufficient evidence from prior art references or
`Dr. Singer’s declaration testimony to support its contention that one of
`ordinary skill in the art would have used Jarvinen’s techniques to encode
`Bender’s SNR values in the manner required by the claims—such that the
`upper digit is assigned a larger number of bits than the lower digit.
`Therefore, Petitioner has not demonstrated articulated reasoning with
`rational underpinning to support the legal conclusion of obviousness.
`Moreover, based on the substantial differences between the prior art
`and the claimed subject matter discussed above, we conclude that Petitioner
`used improper hindsight to reconstruct the claimed subject matter by using
`the claims as a guide to combine the prior art references. Grain Processing
`Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care
`must be taken to avoid hindsight reconstruction by using the patent in suit as
`a guide through the maze of prior art references, combining the right
`references in the right way so as to achieve the result of the claims in suit.”
`(internal quotation marks omitted)).
`
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`
`We are not persuaded that Petitioner has demonstrated that a skilled
`artisan would have had reason to combine Jarvinen’s encoding of more
`important information to encode the digits of Bender’s SNR shown in
`Table 2 such that the upper digit is assigned a lar
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