Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Entered: February 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`
`IPR2018-015551
`Patent 7,848,439 B2
`
`
`
`
`
`
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`BENOIT, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 Apple Inc., who filed a petition in IPR2019-00958, has been joined as a
`petitioner in IPR2018-01555. Paper 15.
`
`
`
`
`571-272-7822
`
`Paper 37
`Entered: February 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`
`IPR2018-015551
`Patent 7,848,439 B2
`
`
`
`
`
`
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`BENOIT, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 Apple Inc., who filed a petition in IPR2019-00958, has been joined as a
`petitioner in IPR2018-01555. Paper 15.
`
`
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`I. INTRODUCTION
`In this inter partes review instituted pursuant to 35 U.S.C. § 314,
`Apple Inc., HTC Corporation and HTC America, Inc. (collectively,
`“Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent No.
`7,848,439 B2 (Ex. 1001, “the ’439 patent” or “the challenged patent”),
`owned by INVT SPE LLC (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. This Final Written Decision is entered
`concurrently with a final written decision in IPR2018-01581 that challenges
`the patentability of claim 8 of the ’the ’439 patent patent.
`For reasons discussed herein, Petitioner has not shown by a
`preponderance of the evidence that claims 1–7 are unpatentable.
`
`A. Procedural History
`HTC Corporation and HTC America, Inc. filed a Petition requesting
`inter partes review of the challenged claims. Paper 1 (“Pet.” or “Petition”).
`Patent Owner filed a Preliminary Response to the Petition. Paper 7. On
`March 7, 2019, after considering the information presented in the Petition
`and the Preliminary Response, we instituted an inter partes review of the
`challenged claims on the sole ground asserted by Petitioner. Paper 8
`(“Dec.”).
`Subsequent to the Decision on Institution, Apple Inc. (“Apple”) filed a
`petition asserting the same unpatentability ground on which we instituted
`review and timely filed a motion for joinder. IPR2019-00958, Paper 1
`(Petition); Paper 15, 4, 5. We determined that Apple’s petition met the
`threshold of institution and that joinder of Apple to this proceeding was
`appropriate. Paper 15, 13. Accordingly, we granted Apple’s motion. Id.
`
`2
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`Patent Owner filed a Response (Paper 16; “PO Resp.”), to which
`Petitioner filed a Reply (Paper 25; “Pet. Reply”). In response, Patent Owner
`filed a Sur-reply (Paper 33; “PO Sur-reply”). A hearing was held on
`January 8, 2020. See Paper 36 (“Tr.”).
`
`B. Real Parties in Interest
`The Petition identifies HTC Corporation and HTC America, Inc. as
`real parties in interest and the petition in IPR2019-00958 identifies Apple
`Inc. as a real party in interest. Pet. 1; IPR2019-00958, Paper 1, 1. Patent
`Owner identifies INVT SPE LLC as the real party in interest. Paper 5, 2.
`
`C. 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. 1–2; Paper 5 (Patent Owner’s Mandatory
`Notice), 2–3; IPR2019-00958, Paper 1, 1.
`The parties identify the following district court cases: INVT SPE LLC
`v. HTC Corporation, HTC America, Inc., No. 2:17-cv-03740 (D. N.J.); INVT
`SPE LLC v. ZTE, No. 2:17-cv-06522 (D.N.J.); INVT SPE LLC v. Apple,
`Inc., No. 2:17-cv-03738 (D.N.J.); Inventergy, Inc. v. HTC Corporation, No.
`2:17-cv-00200 (D. Del.); Inventergy, Inc. v. Apple, Inc., No. 2:17-cv-00196
`(D. Del.). Pet. 1; Paper 5, 2; IPR2019-00958, Paper 1, 1. Petitioner also
`identifies U.S. International Trade Commission Investigation No. 337-TA-
`1138, styled Certain KTE- and 3G-Compliant Cellular Communications
`Devices. IPR2019-00958, Paper 1, 1. Patent Owner identifies nine inter
`partes review proceedings that various petitioners requested. Paper 5, 2–3.
`
`3
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`D. The Challenged Patent
`The ’439 patent, titled “Communication Apparatus, Communication
`System, and Communication Method,” describes techniques for adaptive
`modulation and coding that result in improved spectrum usage in mobile
`communications between a handset and a base station. Ex. 1001, code (54),
`(57) (Abstract), 1:10–26.
`
`1. The Written Description
`The patent describes techniques for a wireless communication
`orthogonal frequency division multiplexing (OFDM) system that transmits
`high-speed data using a large number of subcarrier frequency bandwidths.
`Id. at 1:10–14. The patent explains the concept of adaptive modulation and
`coding (AMC) is “to change modulation and coding parameters in
`transmission based on channel characteristics at [the] current time.” Id. at
`1:65–67. “With OFDM, adaptivity . . . refers to adaptivity at two domains of
`time domain and frequency domain.” Id. at 1:67–2:2.
`The patent identifies two types of AMC used in conventional OFDM.
`Id. at 2:3. The first type of AMC is adaptivity based on individual OFDM
`subcarriers, which is difficult to implement due to the number of subcarriers.
`Id. at 2:3–12. The second type of AMC in OFDM is adaptivity based on
`groups of subcarriers, and the patent refers to groups of subcarrier as
`subbands. Id. at 2:12–21. The patent indicates that in prior art subband
`AMC: “a subband indicates a subcarrier group comprised of subcarriers in
`neighboring positions on the frequency domain.” Id. at 2:19–21. The
`conventional method of adaptivity based on subbands (groups of subcarriers)
`reduced the difficulty of implementing adaptivity and reduced feedback
`overhead. Id. at 4:56–60. But, these conventional methods were not able
`
`4
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`“to effectively utilize diversity performance between subbands,” which the
`patent indicates “is an important method for improving wireless transmission
`quality.” Id. at 4:56–60.
`The patent describes creating subband groups based on a predefined
`rule and selecting a modulation and coding scheme for the entire subband
`group, instead of doing so for a subband (group of subcarriers). Id. at 5:39–
`45, 8:57–60 (“On the receiving side, differences with subband adaptivity of
`the related art shown in FIG. 4B is that the unit of adaptive demodulation
`and coding is a subband group rather than a subband.”). The patent provides
`three examples of how subbands are to be grouped (combining neighboring
`subbands, combining subbands spaced at intervals, and combining all of the
`subbands) and indicates additional methods are possible. Id. at 10:29–33.
`
`2. The Challenged Claims
`Petitioner challenges claims 1–7 in the ’439 patent, of which claim 1
`is independent. Claim 1, reproduced below with brackets noting Petitioner’s
`identifiers, is illustrative of the claimed subject matter:
`1. A communication apparatus comprising:
`[1a2] a channel estimating section that carries out a channel
`estimation per subband;
`[1b] a parameter deciding section that decides modulation
`parameters and coding parameters per subband group
`comprised of a plurality of the subbands, based on a result of
`the channel estimation per subband;
`[1c] a parameter information transmission section that transmits,
`to a communicating party, parameter information indicating
`the modulation parameters and the coding parameters decided
`at the parameter deciding section;
`
`
`2 Petitioner’s limitation references are used for clarity and brevity.
`
`5
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`[1d] a receiving section that receives a signal containing data
`modulated and encoded on a per subband group basis at the
`communicating party using the modulation parameters and
`the coding parameters of
`the parameter
`information
`transmitted at
`the parameter
`information
`transmission
`section;
`[1e] a data obtaining section that demodulates and decodes the
`received signal received at the receiving section on a per
`subband group basis using the modulation parameters and the
`coding parameters decided at the parameter deciding section,
`and obtains the data contained in the received signal; and
`[1f] a pattern storage section that stores in advance patterns for
`selecting subbands constituting the subband groups wherein
`the parameter deciding section decides the modulation
`parameters and the coding parameters per subband group
`comprised of the subbands selected based on the patterns
`stored in the pattern storage section.
`Ex. 1001, 12:65–13:27.
`
`3. The Prosecution History
`The PCT application that issued as the ’439 patent on
`December 7, 2010 was filed on November 18, 2005 with twelve claims.
`Ex. 1001, code (22); Ex. 1002, 476–481 (PCT claims). The ’439 patent
`claims priority to a 2004 Chinese patent application. Ex. 1001, code (30);
`see Paper 7 (Preliminary Response), 5; Pet. 5–6. On February 2, 2010, the
`Examiner rejected the application’s independent claims and some dependent
`claims as anticipated by the application’s description of OFDM AMC prior
`art. Ex. 1002, 232–241 (citing Figs. 3A–3B (labeled prior art) and
`enumerated passages in the Background Art section). Application
`independent claim 1, for example, recited:
`A communication apparatus comprising:
`a channel estimating section that carries out a channel estimation
`per subband;
`
`6
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`a parameter deciding section that decides modulation parameters
`and coding parameters per subband group comprised of a
`plurality of the subbands, based on the channel estimation
`result;
`a parameter information transmission section that transmits to a
`communicating party, parameter
`information
`that
`is
`information for the modulation parameters and the coding
`parameters decided at the parameter deciding section;
`a receiving section that receives a received signal containing data
`modulated and encoded per
`subband group at a
`communicating party using the modulation parameters and
`the coding parameters of
`the parameter
`information
`transmitted at
`the parameter
`information
`transmission
`section;
`a data obtaining section that demodulates and decodes the
`received signal received at the receiving section per subband
`group using the modulation parameters and the coding
`parameters decided at the parameter deciding section, and
`obtains the data contained in the received signal.
`Ex. 1002, 476. According to the Examiner, however, some of the dependent
`claims would be allowable if written in independent form. Ex. 1002, 239.
`The Examiner indicated that the prior art of record did not teach or suggest:
`a pattern storage section that stores patterns for selecting
`subbands constituting the subband groups in advance.
`Ex. 1002, 239 (identifying a limitation in application claim 2, among others).
`In response, the Applicant amended the application claims to include
`one or the other of the identified allowable subject matter. Ex. 1002, 212–
`223. The Examiner allowed the claims in response to Applicant’s
`amendment, and in the Notice of Allowability identified allowable subject
`matter as including:
`a pattern storage section that stores in advance patterns for
`selecting subbands constituting the subband groups wherein the
`parameter deciding section decides the modulation parameters
`
`7
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`and the coding parameters per subband group comprised of the
`subbands selected based on the patterns stored in the pattern
`storage section [claim 1[f]]
`Ex. 1002, 201–202. The ’439 patent issued in due course. Ex. 1002, 190
`(Issue Notification).
`
`E. Instituted Ground of Unpatentability
`We instituted inter partes review of claims 1–7 based on the sole
`ground of unpatentability asserted in the Petition. Dec. 41–42; Paper 10, 3.
`Petitioner challenges claims 1–7 of the ’439 patent as unpatentable under 35
`U.S.C. § 1033 over the following references:
`U.S. Patent No. 6,904,283 B2, filed April 17, 2001, issued June 7,
`2005 (Ex. 1003, “Li”);
`U.S. Patent No. 7,221,680 B2, filed September 1, 2004, issued
`May 22, 2007 (Ex. 1004, “Vijayan”); and
`U.S. Patent No. 6,721,569 B1, filed September 29, 2000, issued
`April 13, 2004 (Ex. 1005, “Hashem”).
`Pet. 3. Petitioner indicates that the effective filing date of the challenged
`claims is no earlier than the November 19, 2004 priority date and contends
`that each of the references are prior art to the challenged claims. Pet. 9
`(effective filing date), 12 (Li), 16 (Vijayan), 19 (Hashem). More
`specifically, Petitioner asserts the following ground:
`Claims Challenged 35 U.S.C. §
`References
`1–7
`103
`Li, Vijayan, Hashem
`
`Dec. 5–7, 65; see Pet. 4–5 (identification of asserted ground).
`
`
`3 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.
`
`8
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`II. ANALYSIS
`A. Legal Standards
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2017). “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). This burden never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`partes review). Furthermore, 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
`
`9
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`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.4
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`The parties dispute the level of ordinary skill in the art. The level of
`ordinary skill in the art is “a prism or lens through which . . . the Board
`views the prior art and claimed invention” to prevent hindsight bias.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 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). Generally, it is easier to establish obviousness under a
`higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA
`Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated
`level of skill generally favors a determination of nonobviousness . . . while a
`higher level of skill favors the reverse.”).
`Relying on declaration testimony of Dr. Zhi Ding (Ex. 1007),
`Petitioner contends that one of ordinary skill in the art “had a bachelor
`degree in electrical engineering, computer science, or an equivalent field,
`plus at least three years of experience working in the fields of wireless
`communication systems, communication networks, and signal processing.”
`Pet. 8–9 (citing Ex. 1007 ¶ 61). To determine whether to institute this inter
`
`
`4 Patent Owner has not offered objective evidence of nonobviousness. See
`generally PO Resp.; PO Sur-reply.
`
`10
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`partes review, we adopted this level of ordinary skill, which Patent Owner
`did not dispute in its Preliminary Response. Dec. 10.
`In its Response, Patent Owner disputes the type of experience
`Petitioner proposes for the level of ordinary skill and contends that one of
`ordinary skill in the art only need experience in “wireless communications.”
`PO Resp. 15. Specifically, Patent Owner contends that one of ordinary skill
`in the art need not have “experience with general ‘communication networks’
`or ‘signal processing’ outside of wireless communication systems (such as
`with wired communication systems).” PO Resp. 15.
`For support, Patent Owner cites to declaration testimony of
`Dr. Branimir Vojcic (Ex. 2101) stating:
`I believe that a person skilled in the art of the technology
`described in the ’439 patent would at least have both a bachelor’s
`degree in Electrical Engineering (or an equivalent field) and three (3)
`years’ experience in wireless communications or an MSc degree in
`Electrical Engineering (or an equivalent field) and one (1) year of
`experience in wireless communications.
`Ex. 2101 ¶ 22; see PO Resp. 15 (citing Ex. 2101 ¶ 22). Because Dr. Vojcic
`does not provide reasoning or analysis to support his opinion, however, we
`accord little weight to his opinion. See In re Acad. of Sci. Tech Ctr., 367
`F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations.”); see also 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”).
`Patent Owner indicates that the challenged patent indicates “its
`‘Technical Field’ pertains to ‘wireless communication orthogonal frequency
`division multiplexing (OFDM) system[s].’” PO Resp. 15 (citing Ex. 1001,
`
`11
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`1:13–14). In its entirety, the challenged patent describes its technical field
`as:
`
`The present invention relates to a communication apparatus,
`communication system, and communication method, and
`particularly
`relates
`to
`a
`communication
`apparatus,
`communication system and communication method carrying out
`adaptive modulation and coding in adaptive transmission
`technology in Subcarrier communication systems—that is, in
`wireless
`communication orthogonal
`frequency division
`multiplexing (OFDM) system.
`Ex. 1001, 1:7–14.
`In reply, Petitioner and Dr. Ding maintain the position that one of
`ordinary skill in the art would have had experience in “wireless
`communication systems, communication networks, and signal processing.”
`Pet. Reply 2 (citing Ex. 1016 ¶ 62); Ex. 1016 ¶ 61. Unlike Dr. Vojcic,
`Dr. Ding explains the basis on which he formed his opinion:
`To determine the characteristics of a person of ordinary skill in
`the art, I considered the prior art and the various approaches in
`the prior art, the types of problems encountered, the solutions to
`those problems, the problems encountered by the inventor, and
`the rapidity with which innovations were made. I also
`considered the sophistication of the technology involved and the
`educational background and experience of those actively
`working in the relevant field at the time of the invention. Finally,
`I placed myself back at the time of the alleged invention and
`considered the technology available at that time, the students
`whom I have trained and taught, and the engineers and other
`professionals with whom I worked or interacted in the relevant
`industries, and
`their
`level of education, activities, and
`sophistication.
`Ex. 1016 ¶ 60. Furthermore, Dr. Ding explains that “wired and wireless
`communication engineering” perform common steps (such as
`“encoding/decoding, modulation/demodulation, and multiplexing/
`demultiplexing”) and “must transmit and receive data over distortive
`
`12
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`channels that can degrade the performance of data communications.”
`Ex. 1016 ¶ 62; see Pet. Reply 2 (citing Ex. 1016 ¶ 62). On this basis,
`Dr. Ding concludes that “[t]here is not strict separation between wired and
`wireless communication engineering.” Ex. 1016 ¶ 62.
`Furthermore, we credit Dr. Ding’s testimony that “the principles of
`OFDM apply equally well to both wireline communication systems such as
`DSL and to wireless communication systems such as WiFi and cellular” on
`which Petitioner relies. Ex. 1016 ¶ 64; see Pet. Reply 3 (citing Ex. 1016
`¶ 64). We do so because Dr. Ding’s testimony includes factual
`corroboration that supports his well-reasoned explanation. Ex. 1016 ¶ 64
`(“OFDM is a flexible and efficient modulation technique that is at the heart
`of major wireless and wired standards. In fact, the concept of multicarrier
`modulations used by OFDM was practically applied in both wireline
`applications such as ADSL[5] and older wireless applications such as
`Kathryn or Kineplex[6] well before the priority date of the ’439 Patent.
`Frequency-selective attenuation (fading) is a problem in both ADSL and
`wireless communications, and a POSITA would have been familiar with
`how OFDM handles this problem in both implementations.”); see Acad. of
`Sci. Tech Ctr., 367 F.3d at 1368; see also 37 C.F.R. § 42.65(a).
`In weighing the evidence and arguments provided by both parties, we
`find that a preponderance of the evidence supports a finding that the
`experience of one of ordinary skill in the art would have included
`
`5 Jacky S. Chow, Jerry C. Tu, and John M. Cioffi, “A Discrete Multitone
`Transceiver System for HDSL Applications,” IEEE Journal on Selected
`Areas in Communications, Vol. 9, No. 6, pp. 895–908 (Aug. 1991)
`(Ex. 1018).
`6 N.M. Maslin, “High data rate transmissions over h. f. links,” Radio and
`Electronic Engineer, Vol. 52, No. 2, pp. 75-87 (Feb. 1982) (Ex. 1019).
`
`13
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`“experience working in the fields of wireless communication systems,
`communication networks, and signal processing.” We are persuaded that
`there is not a strict distinction between wireless and wired communication
`systems because of the common problems and solutions—such as the use of
`OFDM techniques to address attenuation issues and common steps discussed
`above.
`We also note that both Patent Owner and Petitioner agree that one of
`ordinary skill in the art would have had a bachelor’s degree in electrical
`engineering, computer science, or an equivalent field. Pet. 8; PO Resp. 15.
`We credit Dr. Ding’s testimony that such an education would have typically
`included courses “pertaining to the principles of communication networks
`and signal processing applicable to both wireline and wireless
`communication systems” and would have used textbooks “discussing both
`wireline and wireless communication systems.” Ex. 1016 ¶ 66; see Pet.
`Reply 3–4 (citing Ex. 1016 ¶ 66).
`As Petitioner notes, the level of ordinary skill is not limited to the
`technical field stated in the patent but considers a number of factors, such as
`“(1) the educational level of the inventor; (2) type of problems encountered
`in the art; (3) prior art solutions to those problems; (4) rapidity with which
`innovations are made; (5) sophistication of the technology; and (6)
`educational level of active workers in the field.” Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); see Pet. Reply 3 (citing
`Daiichi Sankyo, 501 F.3d at 1256). Patent Owner does not contest the level
`of ordinary skill in its Sur-reply. See generally Sur-reply 1–27.
`Based on the evidence of record, we maintain the determination of the
`level of ordinary skill in the art applied in our Decision to Institute—one of
`ordinary skill in the art would have had a bachelor degree in electrical
`
`14
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`engineering, computer science, or an equivalent filed, plus at least three
`years of experience working in the fields of wireless communication
`systems, communication networks, and signal processing.
`
`C. Claim Construction
`In an 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. See 37 C.F.R. § 42.100(b); see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming
`that USPTO has statutory authority to construe claims according to 37
`C.F.R. § 42.100(b)).7
`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). In addition, the broadest reasonable
`construction of a claim term cannot be so broad that the construction is
`
`7 The Office changed the claim construction standard used in inter partes
`review proceedings. 37 C.F.R. § 42.100(b) (2019). As stated in the Federal
`Register notice, however, the new rule applies only to petitions filed on or
`after November 13, 2018. 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”). The Petition was filed
`on August 22, 2018 (Paper 4) and, therefore, the new rule does not impact
`this matter.
`
`15
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`unreasonable under general claim construction principles. Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other
`grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc) (“A construction that is unreasonably broad and which does not
`reasonably reflect the plain language and disclosure will not pass muster.”
`(internal quotation marks and citation omitted)). We apply these principles
`in our analysis.
`Furthermore, only claim terms that are in controversy need to be
`construed and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review). Both parties assert, and we agree, that no terms need to be
`construed expressly for this Decision. PO Resp. 16; Pet. Reply 5; Tr. 9:1–
`10:2 (Petitioner’s counsel); 29:24–26 (Patent Owner’s counsel).
`
`D. Prior Art Disclosures
`This section presents findings concerning the scope and content of the
`prior art asserted by Petitioner.
`
`1. State of the Art at the Time of the Invention
`The challenged patent generally relates to improving communication
`between cellular telephones (also known as user equipment (“UE”) and
`mobile terminals) and base stations within a cellular network. Ex. 1001,
`1:7–14, 2:54–60, 5:32–45; Ex. 1007 ¶ 32 (Dr. Ding Declaration); PO Resp.
`3; Pet. 4 (citing Ex. 1007 ¶ 32). The coverage area of a cellular network is
`divided into many “cells,” each served by a base station that
`communications with the cellular telephones within the cell. Ex. 1007 ¶ 33;
`
`16
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`Pet. 4 (citing Ex. 1007 ¶ 33). Base stations must be capable of
`simultaneously communicating with number cellular telephones so that
`cellular telephone users do not experience interference from other callers.
`Ex. 2101 ¶ 8 (Dr. Vojcic Declaration); PO Resp. 4 (citing Ex. 2101 ¶ 8).
`The signal flow from the cellular telephone to the base station is called the
`uplink, and the signal flow from the base station to the cellular telephone is
`called the downlink. Ex. 1007 ¶ 33; Pet. 4 (citing Ex. 1007 ¶ 33).
`Orthogonal Frequency Division Multiplexing (OFDM) is a way to
`allocate bandwidth to transmit and receive data signals. Ex. 1007 ¶ 36;
`Pet. 4 (citing Ex. 1007 ¶ 36); PO Resp. 4. With OFDM, a transmitter can
`divide its allocated frequency band into orthogonal (non-overlapping)
`subcarriers to transmit signals in each transmittal time slot. Ex. 1001, 1:18–
`33; Ex. 1007 ¶¶ 36–37; Pet. 4 (citing Ex. 1007 ¶¶ 36–37); PO Resp. 4. The
`orthogonality between subcarriers helps increase the number of cellular
`telephones that can be simultaneously supported in the cell. Ex. 1001, 1:22–
`24; PO Resp. 4 (citing Ex. 1001, 1:22–24).
`Figure 1 of the challenged patent is set forth below.
`
`
`
`17
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`Figure 1 shows an example of OFDM channel characteristics.
`Ex. 1001, 6:52–53. “Two horizontal axes respectively indicate OFDM
`symbols on the time domain and subcarrier numbers on the frequency
`domain, and the vertical axis indicates channel gains corresponding to
`OFDM symbols and subcarriers.” Ex. 1001, 1:58–61. “OFDM channels
`fluctuate[] in both time domain and frequency domain. . . .” Ex. 1001, 1:62–
`63. As Dr. Ding explains, “the signal bandwidth can be divided into
`hundreds of orthogonal subcarriers along the frequency axis and a number of
`OFDM symbol intervals along the time axis.” Ex. 1007 ¶ 37. “In each
`subcarrier for each OFDM symbol interval, the [base station] can transmit a
`data symbol to a UE.” Ex. 1007 ¶ 37.
`
`2. Disclosure of Li
`Li is a U.S. patent titled “Multi-Carrier Communications with Group-
`Based Subcarrier Allocation” that describes an OFDMA cellular
`communication system in which subcarriers are partitioned into groups
`(called “clusters”) and groups are allocated to a subscriber (i.e., user
`equipment). Ex. 1003, code (54) (Title), 3:5–17; see id. at code (57)
`(Abstract), 2:13–22, 3:18–23, 3:30–38, Fig. 1B.
`Li’s Figure 1A is set forth below.
`
`
`Li’s Figure 1A illustrates multiple subcarriers (one of which is labeled
`as subcarrier 101) and cluster 102 of four subcarriers. Id. at 5:18–20; see id.
`at 2:31 (indicating Figure 1A depicts subcarriers and clusters). Li explains
`
`18
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`that a cluster is “a logical unit that contains at least one physical subcarrier.”
`Id. at 5:18–20. “A cluster can contain consecutive or disjoint subcarriers.”
`Id. at 5:21–22. “The mapping between a cluster and its subcarriers can be
`fixed or reconfigurable,” in which case “the base station informs the
`subscribers when the clusters are redefined.” Id. at 5:22–25.
`Li describes the subscriber role in an example process. “For downlink
`channels, each subscriber first measures the channel and interferences
`information for all the subcarriers and then selects multiple subcarriers with
`good performance (e.g., a high signal-to-interference plus noise ratio
`(SINR)) and feeds the information on these candidate subcarriers to the base
`station.” Id. at 3:18–23. Li explains that the “feedback may comprise
`channel and interference information (e.g., signal-to-interference-plus-nois
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
