Trials@uspto.gov
`571.272.7822
`
`
`Paper 7
`Entered: March 25, 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 IPR2018-01666
`Patent 9,532,330 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

`

`Case IPR2018-01666
`Patent 9,532,330
`
`I. INTRODUCTION
`A. Background
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”) filed a
`Petition requesting an inter partes review of claims 1–3, 7, 8, 18–20, 24, and 25
`(“challenged claims”) of U.S. Patent No. 9,532,330 B2 (Ex. 1001, “’330 Patent”).
`Paper 1 (“Pet”). Intellectual Ventures II LLC (“Patent Owner”) timely filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter
`partes review may not be instituted unless it is determined that “the information
`presented in the petition filed under section 311 and any response filed under
`section 313 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).
`For the reasons provided below, we determine, based on the record before
`us, there is a reasonable likelihood Petitioner would prevail in showing at least one
`of the challenged claims is unpatentable. Moreover, 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).
`
`B. Related Proceedings
`The parties represent that the ’330 Patent is at issue in Intellectual Ventures
`II LLC v. T-Mobile USA, Inc., No. 2:17-cv-00661 (E.D. Tex.) and Intellectual
`Ventures II LLC v. Sprint Spectrum, LP, No. 2:17-cv-00662 (E.D. Tex.). Pet. 1;
`Paper 4, 1. The parties also indicate that certain claims of the ’330 Patent are at
`issue in Case IPR2018-01777. See Paper 4, 1–2. Patent Owner indicates the ’330
`Patent claims the benefit of U.S. Patent No. 8,682,357 which is the subject of Case
`IPR2018-01380 and Case IPR2018-01775. Paper 4, 1–2.
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`Case IPR2018-01666
`Patent 9,532,330
`
`C. The ’330 Patent (Ex. 1001)
`The ’330 Patent issued from Application No. 14/222,140, which was a
`continuation of Application No. 11/416,865, now U.S. Pat. No, 8,682,357, and
`claims the benefit of its earlier May 2, 2006, filing date. See id. at [21], [22], [63],
`1:6–8. The ’330 Patent relates to establishing connectivity in a cellular
`communication system. See Ex. 1001, 1:13–15.
`Figure 1 of the ’330 Patent is reproduced below.
`
`
`Figure 1 depicts an example of a cellular communication system including User
`Equipment (UE) domain comprising UE 110, Radio Access Network (RAN)
`domain comprising at least one base station (Node B) 112, and Core Network (CN)
`domain comprising CN 116, which includes access gateway (aGW) 118, coupled
`to external network 124. See Ex. 1001, 3:62–63, 4:50–5:2.
`
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`Case IPR2018-01666
`Patent 9,532,330
`Figure 3 of the ’330 Patent is reproduced below.
`
`
`Figure 3 depicts an example of signaling flow in network-initiated connection
`establishment procedure. See Ex. 1001, 3:66–67, 5:27–29. Core network via aGW
`118 transmits a paging message to the relevant Node B. See id. at 5:30–34. After
`receiving the paging message, Node B selects a cell-specific Radio Network
`Temporary Identifier (c-RNTI) and Shared Control Channel (SCCH) index and
`forms the paging signal for broadcast in a corresponding cell. See id. at 5:34–37.
`The paging signal broadcast in the cell includes the paging message (cause, UE
`identity) from core network, c-RNTI, SCCH index, and the allocated physical
`access resources for the uplink transmission (paging response). See id. at 5:37–40,
`5:57–61.
`Figure 5 of the ’330 Patent is reproduced below.
`
`
`Figure 5 depicts the format of a paging signal broadcast in a cell where dedicated
`access resources are signaled to the UE. See Ex. 1001, 4:3–5.
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`Case IPR2018-01666
`Patent 9,532,330
`After decoding the paging message, the UE sends a paging acknowledgment
`message, which may be combined with uplink synchronization information, to
`Node B 112, and is transmitted over a contention-based uplink channel such as a
`random access channel. See id. at 5:47–52. In the alternative, the paging
`acknowledgment signal is transmitted over the allocated dedicated physical access
`resource. See id. at 5:53–61. “Upon receipt of the paging acknowledgment from
`the UE, a shared channel connection is established between the RAN and the UE,
`and signaling and traffic will be transmitted over scheduled shared channel
`resources.” Id. at 6:7–10.
`
`D. Illustrative Claim
`Claims 2, 3, 7, and 8 depend claim 1, and claims 19, 20, 24, and 25 depend
`from independent claim 18. Claim 1 is illustrative and reproduced below:
`1. A network device comprising:
`circuitry configured to receive, from a core network, a paging message
`related to a user equipment (UE);
`a processor configured to send, on a control channel in a long-term
`evolution (LTE) network in response to reception of the paging
`message, a signal to indicate a page of the UE and the signal includes
`an indication of a shared channel for the UE to receive;
`wherein the signal is derived from a radio network temporary-identifier
`(RNTI); and
`the processor further configured to send a transmission to the UE on the
`indicated shared channel.
`Ex. 1001, 11:27–38.
`
`E. Asserted Prior Art
`Petitioner relies upon the following references (Pet. iv-vi, 69–72):
`US 2004/0142706 A1, published July 22, 2004 (Ex. 1007, “Kim”)
`US 2005/0105487 A1, published May 19, 2005 (Ex. 1026, “Rudolf”)
`3rd Generation Partnership Project; Technical Specification Group Radio
`Access Network; Multiplexing and channel coding (FDD) (Release 6),
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`Case IPR2018-01666
`Patent 9,532,330
`3GPP TS25.212v6.7.0, asserted by Petitioner to have been published on
`December 15, 2005 (Ex. 1023, “TS25.212”).
`“3rd Generation Partnership Project; Technical Specification Group Radio
`Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA)
`and Evolved Universal Terrestrial Radio Access Network
`(E-UTRAN); Radio interface protocol aspects (Release 7),” asserted by
`Petitioner to have been published on January 18, 2006 (Ex. 1022,
`“TR25.813v0.3.0”).
`“Paging for E-UTRA,” 3GPP TSG-RAN WG1 LTE AdHoc Meeting,
`Helsinki, Finland, January 23–25, 2006, R1-0600092, Ericsson, asserted by
`Petitioner to have been published on January 19, 2006 (Ex. 1020, “Ericsson-
`092”)
`“Text Proposal on E-UTRA Paging,” 3GPP TSG-RAN WG1 LTE AdHoc
`Meeting, Helsinki, Finland, January 23–25, 2006, R1-0600093, Ericsson,
`asserted by Petitioner to have been published on January 19, 2006 (Ex. 1021,
`“Ericsson-093”)
`US 2006/0019641 A1, published Jan. 26, 2006 (Ex. 1025, “Vayanos”).
`“3rd Generation Partnership Project; Technical Specification Group Radio
`Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA)
`and Evolved Universal Terrestrial Radio Access Network
`(E-UTRAN); Radio interface protocol aspects (Release 7),” asserted by
`Petitioner to have been published on March 21, 2006 (Ex. 1013,
`“TR25.813v0.6.0”).
`“LTE MAC scheduling with TP,” asserted by Petitioner to have been
`published on March 23, 2006, prior to 3GPP TSG–RAN2 Meeting #52,
`Athens, Greece, March 27–31, 2006, R2-060990 (Ex. 1008, “CATT-990”)
`“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”)
`Petitioner contends, with supporting declaration testimony by Craig Bishop
`(Ex. 1030) and Sven Ekemark (Ex. 1031) who have “knowledge of 3rd Generation
`Partnership Project (3GPP) practices and procedures” that each of TS25.212,
`“TR25.813v0.3.0, Ericsson-092, Ericsson-093, TR25.813v0.6.0, CATT-990, and
`CATT are prior art under 35 U.S.C. 102(a).” See Pet. 70. Specifically, Petitioner
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`Case IPR2018-01666
`Patent 9,532,330
`contends that TS25.212 is a 3GPP technical specification published by 3GPP on
`3GPP’s publically available website on December 15, 2005. See id. at 72 (citing
`Ex. 1030 ¶¶ 97–101; Ex. 1031 ¶¶ 85–98). Petitioner asserts it was a focus of 3GPP
`to publish technical specification to establish standards throughout the industry.
`See id. (citing Ex. 1030 ¶ 97).
`Petitioner also asserts TR25.813v0.3.0, Ericsson-092 and Ericsson-093,
`TR25.813v0.6.0, CATT-990, and CATT were distributed via e-mail to subscribers
`of various 3GPP working groups, the e-mails had no restriction on further
`dissemination and distribution, and anyone was able to join e-mail distribution lists
`for 3GPP documents. See Pet. 70 (citing Ex. 1030 ¶¶ 23–27; Ex. 1031 ¶¶ 16–20).
`Petitioner contends one of the purposes of the e-mail distribution lists was to share
`technical ideas for possible introduction into 3GPP standards. See id. at 70–71
`(citing Ex. 1030 ¶¶ 20, 24–27; Ex. 1031 ¶¶ 12–13, 16–20). Petitioner contends,
`“[t]he 3GPP references do not bear any confidentiality, password protection, or any
`indicia that might suggest a restriction on public dissemination.” Id. at 71 (citing
`Ex. 1030 ¶¶ 23, 26–27; Ex. 1031 ¶¶ 14, 17). Petitioner presents a table of the
`hyperlinks to the record e-mails, and dates of e-mail distribution of the
`TR25.813v0.3.0, Ericsson-092 and Ericsson-093, TR25.813v0.6.0, CATT-990,
`and CATT references. See id. (citing Ex. 1030 ¶¶ 31–34, 39–42, 47–50, 55–58,
`66–69, 90–93, 108–111; Ex. 1031 ¶¶ 27–29, 35–38, 44–47, 53–56, 61–64, 95–98).
`Petitioner also asserts that interested members of the public could have accessed
`the 3GPP references without restriction before the ’330 Patent’s claimed May 2,
`2006, priority date by way of the 3GPP publicly available website. See id. at 71–
`72 (citing Ex. 1030 ¶¶ 20–21, 28–30, 36–38, 44–46, 52–54, 60–62, 84–86; Ex.
`1031 ¶¶ 24–26, 32–34, 40–43, 49–52, 58–60, 90–94).
`
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`Case IPR2018-01666
`Patent 9,532,330
`Based on the current record, Petitioner has made a sufficient threshold
`showing that TS25.212, TR25.813v0.3.0, TR25.813v0.6.0, Ericsson-092, Ericsson-
`093, CATT, and CATT-990 are prior art printed publications under § 102(a).
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the following claims of the ’330
`Patent on the following grounds and prior art (Pet. 6–69):
`Statutory
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claim(s)
`18, 20
`1, 3, 8, and 25
`19
`2
`24
`7
`
`References
`CATT and TR25.813v0.6.0
`CATT, TR25.813v0.6.0, and Vayanos
`CATT, TR25.813v0.6.0, and Kim
`CATT, TR25.813v0.6.0, Vayanos, and Kim
`CATT, TR25.813v0.6.0, and CATT-990
`CATT, TR25.813v0.6.0, Vayanos, and
`CATT-990
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`and TS25.212
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`TS25.212, and Vayanos
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`TS25.212, and Kim
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`TS25.212, Vayanos, and Kim
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`TS25.212, and Rudolf
`Ericsson-092, Ericsson-093, TR25.813v0.30,
`TS25.212, Vayanos, and Rudolf
`The Petition also relies on the Declaration of Vijay K. Madisetti, Ph.D. (Ex. 1003).
`
`18, 20
`
`§ 103
`
`1, 3, 8, and 25
`
`§ 103
`
`19
`
`2
`
`24
`
`7
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`II. ANALYSIS
`A. Discretion to Deny Institution under 35 U.S.C. § 314
`Institution of inter partes review is discretionary. 35 U.S.C. § 314(a);
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (holding
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`that “the PTO is permitted, but never compelled, to institute an IPR proceeding”);
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op.
`at 9 (PTAB Nov. 14, 2016) (Paper 16) (precedential) (“[T]he Board may authorize
`the review to proceed . . . .”) (quoting 37 C.F.R. § 42.108(a))).
`Patent Owner urges the Board to exercise its discretion to deny institution,
`because Petitioner asks “Patent Owner and the Board to sift through over 100
`pages of declaratory testimony and over 1000 pages of attachments to assess
`whether seven references were publicly accessible––in direct contravention of the
`Board’s rules.” Prelim. Resp. 41, 43; see id. at 42. Patent Owner contends, “the
`Petition itself includes only two-and-a-half pages of substantive argument, most of
`which do not analyze each reference individually according to each references’
`unique facts.” Id. at 42. Patent Owner contends Petitioner placed a strong burden
`on Patent Owner and the Board that warrants denial of institution. See id. at 42–
`43. Patent Owner asserts that Petitioner has not sufficiently met their burden of
`proving within the Petition that all the references were publicly accessible before
`the priority date of the ’330 Patent, as Petitioner may not incorporate by reference
`arguments from one document into another. See id. at 43 (quoting DeSilva v.
`DiLeonardi, 181 F.3d, 865, 866–67 (7th Cir. 1999); A.C. Dispensing Equip. Inc. v.
`Prince Castle LLC, Case IPR2014–00511, slip op. at 6–7 (Sept. 10, 2014) (Paper
`16); citing 37 C.F.R. § 42.63(a)(3); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`1331, 1350-51 (Fed. Cir. 2016); Ariosa Diagnostics v. Vernata Health, Inc., Case
`IPR2013–00276, slip op. at 16–17 (Oct. 23, 2104) (Paper 43)).
`Patent Owner argues that Petitioner’s incorporation by reference is egregious
`and asks Patent Owner and the Board to play archeologist with the record. because
`the two-and-a-half page section of the Petition addressing public accessibility
`incorporates by reference over 170 paragraphs of declaratory testimony that
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`themselves incorporate by reference other documents and evidence. See Prelim.
`Resp. 44 (citing Pet. 70–72). Patent Owner asserts the declarations and
`attachments supporting the two-and-a-half pages of the Petition total over 1600
`pages. See id. (citing Pet. 70–72; Ex. 1030; Ex. 1031). Patent Owner
`acknowledges that a “petitioner should be allowed to reasonably cite to paragraphs
`of a declaration to provide the Board with the context for a specific proposition.”
`Id. at 44. Patent Owner, however, alleges that, in this case, Petitioner goes too far
`because it shifts a heavy burden to Patent Owner and the Board because of
`Petitioner’s incorporation by reference and because the Petition does not separate
`the evidence for each cited reference. See id. 44–45. Patent Owner contends that
`Petitioner’s grouping of references together in its analysis is improper because a
`public-accessibility determination must weigh certain factors for each reference
`individually. See id. at 45 (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1379–
`83 (Fed. Cir. 2018); GoPro, Inc. v. Contour IP Holdings LLC, 908 F.3d 690 (Fed.
`Cir. 2018).
`Patent Owner, utilizing TS25.212 as an example, asserts that Petitioner
`concludes TS25.212 was publicly available no later than December 15, 2005, and
`supported its conclusion by stating it was allegedly posted on 3GPP’s website
`where someone could navigate to the relevant page. See Prelim. Resp. 46 (citing
`Pet. 70, 72). Patent Owner contends that to determine additional facts and
`circumstances surrounding TS25.212, Patent Owner and the Board would need to
`dig through the voluminous record. See id.
`Patent Owner also asserts that Petitioner shifts the burden to Patent Owner
`and the Board to determine which references were disclosed in a confidential
`manner, because “the Petition relies on a blanket conclusion that ‘[t]he 3GPP
`references do not bear any confidentiality, password,[sic] protection, or any indicia
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`that might suggest a restriction on public dissemination.’” Prelim. Resp. 46–47
`(citing Pet. 71). Patent Owner contends that Petitioner’s cited argument is
`“factually and demonstrably false” because the e-mails allegedly disseminating
`CATT and CATT-990 were sent in a confidential manner. See id. at 47 (quoting
`Ex. 1030, 130; Ex. 1031, 78; citing Ex. 1030, 114, Ex. 1031, 62).
`We are not persuaded that Patent Owner’s allegations of improper
`incorporation by reference in the Petition provides a sufficient reason to exercise
`our discretion under § 314(a) and not institute review. The Petition presents
`specific arguments for each reference, and, where applicable, consolidates
`arguments for references that were publicly disseminated similarly by the 3rd
`Generation Partnership Project (3GPP). See Pet. 70–71. There is no requirement
`that the Petition itself must include all the evidentiary support for the arguments
`within the Petition. Nor is there prohibition on consolidating arguments in the
`Petition, where appropriate, to address more than one reference.
`As to Patent Owner’s argument that is would be necessary to dig through the
`voluminous record to determine additional facts and circumstances surrounding the
`public accessibility of TS25.212, we are not persuaded. In contrast to Patent
`Owner’s “voluminous record” characterization, the Petition merely cites to five
`paragraphs of Craig Bishop’s declaration, and five paragraphs of Sven Ekemark’s
`Declaration to support the public accessibility of TS25.212. See Pet. 72 (citing Ex.
`1030 ¶¶ 97–101; Ex. 1031 ¶¶ 85–891). We also find misplaced Patent Owner’s
`assertion that Petitioner’s cited argument is false because e-mails allegedly
`disseminating CATT and CATT-990 were sent in a confidential manner.
`
`
`1 The Petition cites to Ex. 1031 ¶¶ 85–98, which is a typographical error.
`Paragraphs 90–98 of Ex. 1031 address TR25.813v0.3.0 (Ex. 1022)
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`Petitioner’s argument, cited by Patent Owner, addresses the 3GPP references
`themselves, (“[t]he 3GPP references do not bear any confidentiality, password,
`protection, or any indicia that might suggest a restriction on public
`dissemination.”), and does not address the confidentiality of any e-mails
`disseminating the 3GPP references, such as CATT and CATT-990.
`Accordingly, we decline to exercise our discretion under 35 U.S.C. § 314 to
`deny institution of review.
`
`B. Claim Construction
`For petitions filed before November 13, 2018, claims of an unexpired patent
`that will not expire before issuance of a final written decision are interpreted using
`the broadest reasonable interpretation in light of the specification. See 37 C.F.R.
`§ 42.100(b) (2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). While the broadest reasonable interpretation standard is broad, the Board
`cannot interpret the words of a claim without regard for the full claim language and
`the written description. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`Cir. 2015). Dictionary definitions, while reflective of the ordinary meanings of
`words, do not always associate those meanings with context or reflect the
`customary usage of words by those skilled in a particular art. The words used in
`the claims must be considered in context and are examined through the viewing
`glass of a person skilled in the art. Ferguson Beauregard/Logic Controls, Div. of
`Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
`In Phillips v. AWH Corp., the court emphasized the importance of a patent’s
`specification as intrinsic evidence for construing claim terms. See 415 F.3d 1303,
`1315–17 (Fed. Cir. 2005) (en banc). “[T]he specification . . . is the single best
`guide to the meaning of a disputed claim term.” Id. at 1314 (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The court in
`Phillips stated that extrinsic evidence, such as dictionary definitions, may be
`useful, but is unlikely to result in a reliable interpretation of claim scope unless
`considered in the context of the intrinsic evidence. See Phillips, 415 F.3d at 1319.
`“Derived From”
`The term “derived from” is recited in independent claims 1 and 18 in the
`following context: “the signal is derived from a radio network temporary-identifier
`(RNTI).” Ex. 1001, 11:35–36, 12:33–34. The term “derived from” is also recited
`in dependent claims 8 and 25 in the following context: “the signal is sent in a time
`interval derived from an international mobile subscriber identity (IMSI) associated
`with the UE.” Ex. 1001, 11:55–57, 12:53–55. The term “derived from” appears
`only in the Abstract of the ’330 Patent. See id. at Abstract.
`Petitioner does not propose an explicit construction for “derived from.” See
`Pet. 5–6. Petitioner, however, implicitly construes “derived from” in the context of
`independent claims 1 and 18 as encompassing “includes” or “including.” See id. at
`14–15 (citing Ex. 1001, 5:37–40, Fig. 4; Ex. 1003 ¶¶ 89–90), 26. In the context of
`dependent claims 8 and 25, Petitioner implicitly construes “derived from” as
`encompassing “determined based on” or “based on.” See id. at 20–22, 27.
`Patent Owner asserts that “derived from” should be construed according to
`its plain and ordinary meaning, which Patent Owner asserts is “computed or
`otherwise obtained from.” Prelim. Resp. 16. Patent Owner contends that the plain
`and ordinary meaning is consistent with the claims. See id. In support of its
`arguments, Patent Owner directs attention to definitions for “derived data” and
`
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`“derived property” from IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS. See id. at 16–17 (citing Ex. 20012, 290).
`Patent Owner also contends that construing “derived from” as “computed or
`otherwise obtained from” is also consistent with the ’330 Patent Specification. See
`Prelim. Resp. 17. Patent Owner asserts the ’330 Patent Specification “explains that
`a part of the signal’s message is ‘selected from the available c-RNTIs . . . . for the
`cell. The selection of c-RNTI . . . may be managed by the scheduler at the Node B,
`the core network (e.g., the aGW), or a separate radio resource manager (RRM)
`server.’” Id. (quoting Ex. 1001, 3:13–18). Patent Owner contends the ’330 Patent
`“explains that ‘[b]efore the paging message is broadcast in each cell, the Node B
`attaches a c-RNTI . . . to the message.’” Id. (quoting Ex. 1001, 5:19–21).
`According to Patent Owner, “[i]n this embodiment, the Node B adds an RNTI to
`the message before sending the signal to the UE, so the signal sent to the UE is
`‘computed or otherwise obtained from’ an RNTI.” Id.
`Patent Owner further argues the ’330 Patent Specification is consistent with
`the ordinary and customary meaning for the dependent claims. See Prelim. Resp.
`18. Patent Owner contends that the ’330 Patent Specification “explains for one
`embodiment that ‘[a] group of UEs wake up and read the PICH channel at a paging
`occasion calculated based on the DRX cycle and IMSI.’” Id. (quoting Ex. 1001,
`6:19–23; citing Ex. 1001, 6:44–48, 7:3–5). In support of its argument, Patent
`Owner directs attention to a dictionary definition for “computation” from THE NEW
`OXFORD DICTIONARY OF ENGLISH to support its argument that the paging occasion
`
`
`2 IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS, 7th ed.,
`Standards Information Network IEEE Press (2000)
`
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`calculated based on an IMSI is computed from the IMSI. See id. (citing Ex. 20023,
`378).
`
`Patent Owner contends that Petitioner buries its construction for “derived
`from” within its obviousness analyses, and utilizes different definitions for the
`term throughout the Petition. See Prelim. Resp. 18. Patent Owner contends that,
`for independent claims 1 and 18, Petitioner construes “derived from” as “includes.”
`See id. (citing Pet. 14, 26). Patent Owner asserts Petitioner diverts attention to the
`signal broadcast on the channel, instead of how the signal was derived, and does
`not show how the signal was derived (i.e., computed or otherwise obtained from an
`RNTI). See id. at 19 (citing Pet. 14–15). Patent Owner asserts that, for dependent
`claims 8 and 25, Petitioner construes “derived from” as “based on.” See id. (citing
`Pet. 21–22). Patent Owner argues that Petitioner’s deviation from its construction
`for dependent claims 8 and 25, in which Petitioner shifts positions stating that
`“based on” teaches “derived from” showcase why “derived from” does not mean
`“includes.” See id. (citing Pet. 21–22). Patent Owner contends that the Federal
`Circuit applies a presumption that the same terms appearing in different portions of
`the claims should be given the same meaning unless the Specification and
`prosecution history make clear that the terms have different meanings at different
`portions of the claims. See id. at 19–20 (citing PODS, Inc. v. Porta Stor, 484 F.3d
`1359, 1366 (Fed. Cir. 2007)). Patent Owner argues, “the specification and
`prosecution history do not suggest that the applicant used two different meanings
`for the same term.” Id. at 20. Patent Owner also argues that Petitioner’s proposed
`construction for “derived from” as “includes” is incorrect because it impermissibly
`
`
`3 THE NEW OXFORD DICTIONARY OF ENGLISH, Oxford University Press (1998).
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`imports a limitation into the claims. See id. (quoting Superguide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)).
`We are not persuaded that the broadest reasonable interpretation of “derived
`from” should be limited strictly to the words of Patent Owner’s proposed ordinary
`and customary meaning: “computed or otherwise obtained from.” In addition to
`the Patent Owner’s citation to the ’330 Patent Specification related to the
`limitations of claims 1 and 18, the ’330 Patent Specification also discloses:
`After receiving the paging message from the core network, each Node
`B selects a c-RNTI and SCCH index (in one embodiment), and forms
`the paging signal to be broadcast in the corresponding cell. Thus the
`paging signal broadcast in the cell includes the paging message (cause,
`UE identity) from the core network, c-RNTI and the SCCH index (see
`FIG. 4).
`Ex. 1001, 5:34–40. Consistent with the ’330 Patent Specification, as it relates to
`the subject matter of claims 1 and 18, Patent Owner’s proposed ordinary and
`customary meaning for “derived from” cannot exclude the following ’330 Patent
`disclosures: (1) the paging signal is formed from the paging message, c-RNTI, and
`SCCH index; and (2) the paging signal includes the paging message, c-RNTI, and
`SCCH index. In other words, in order to be consistent with the ’330 Patent
`Specification the “otherwise obtained from” portion of Patent Owner’s proposed
`ordinary and customary meaning must encompass, and cannot exclude from its
`meaning, “formed from” and “includes.”
`In the context of the subject matter recited in dependent claims 8 and 25, the
`’330 Patent Specification discloses: (1) “a paging occasion calculated based on the
`DRX cycle and IMSI,” (Ex. 1001, 6:20–22); (2) “[t]he location of a paging
`indicator within a paging signal 1 may be calculated based on the IMSI,” (Ex.
`1001, 6:44–45); and (3) “paging occasion calculated based on DRX cycle and
`IMSI,” (Ex. 1001, 7:3–5). Consistent with the ’330 Patent Specification, as it
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`relates to the subject matter of dependent claims 8 and 25, Patent Owner’s
`proposed ordinary and customary meaning for “derived from” must encompass,
`and cannot exclude from its meaning “calculated based on.”
`
`Therefore, we determine Patent Owner’s proposed ordinary and customary
`meaning for “derived from” as “calculated or otherwise obtained from” must
`encompass, and cannot exclude from its meaning, “formed from,” “includes,” and
`“calculated based on.” With this additional explanation in mind, the broadest
`reasonable interpretation for “derived from” includes “computed or otherwise
`obtained from,” “formed from,” “includes,” and “calculated based on.”
`“Network Device”
`Petitioner contends that “network device,” as recited in claims 1 and 18,
`
`should be construed as “device in a network.” See Pet. 6 (citing Ex. 1003 ¶¶ 48–
`51). Patent Owner asserts Petitioner’s construction is circular and that no explicit
`construction is necessary since the construction of “network device,” at this pre-
`institution stage, is not case dispositive. See Prelim. Resp. 20–21 (citing Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`We agree that an explicit construction for “network device” is not necessary
`for the purpose of this Decision.
`Other Claim Terms and Phrases
`As demonstrated in the analysis below, for the purpose of this Decision, no
`other claim terms or phrases require an explicit construction. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017), cert. denied, 138 S. Ct. 1695 (2018) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs, 200 F.3d at 803)).
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`C. Asserted Grounds of Unpatentability
`1. Unpatentability of Claims 18 and 20 over CATT and TR25.813v0.6.0
`a. Overview of TR25.813v0.6.0 (Ex. 1013)
`TR25.813v0.6.0 discloses radio interface protocol evolution under
`consideration for Evolved Universal Mobile Telecommunications System (UMTS)
`Terrestrial Radio Access (E-UTRA) and Evolved UMTS Terrestrial Radio Access
`Network (E-UTRAN). See Ex. 1013, 7–8.
`Figure 5.1 of TR25.813v0.6.0 is reproduced below.
`
`
`Figure 5.1 depicts an overview of the E-UTRAN architecture. See Ex. 1013, 10.
`aGW denotes E-UTRAN Access Gateway and eNB denotes E-UTRAN Node B.
`See id. at 7–8. “The E-UTRAN consists of eNBs, providing the E-UTRA user
`plane (PHY/MAC) and control plane (RRC) protocol terminations toward the UE
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`[(user equipment)]. The eNBs are interconnected with each other in a meshed way
`and interface to the aGW via the S1 interface in a flexible manner.” Id. at 9.
`
`b. Overview of CATT (Ex. 1005)
`CATT discloses that in TR25.813, the paging channel (PCH) can be mapped
`on the downlink physical shared channel (DPSCH). See Ex. 1005, 1. To support
`user equipment (UE) power saving, a paging indicating channel in the physical
`layer should be configured to indicate a PCH. See id. UEs will listen to the paging
`indicating signal in the DRX mode. See id. Because the PCH is mapped on
`DPSCH and scheduling information of the DPSCH is carried on the downlink
`shared control channel (DSCCH), the paging indicating channel (PICH) can be
`combined into DSCCH. See id.
`Figure 1 of CATT is reproduced below.
`
`
`Figure 1 depicts in system frame number (SFN) 5 and SFN 10 the paging indicator
`occasions in DSCCH. See Ex. 1005, 2. In SFN 5, there is no paging information,
`so the scheduling information to UE1 is carried on DSCCH. See id. In subsequent
`SFN 6, UE1 transmits/receives data in DPSCH. See id. In SFN 10, a paging
`
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`indicator (PI) is presented on DSCCH. See id. In subsequent SFN 11, the PCH
`information appears on DPSCH. See id.
`CATT further discloses two methods for distinguishing a paging indicator
`and scheduling information on DSCCH. See Ex. 1005, 2. In one method, a paging
`indicator identifier (PI-ID) is used on the DSCCH as a paging indicator. See id.
`The “PI-ID equals to C-RNTI in size, and isn’t assigned to any UE for ever.” Id.
`When the special PI-ID has been detected, the content carried on DSCCH is a
`paging indicator. See id. In another method, a paging tag field is used in DSCCH
`frames. See id.
`When using a PI-ID, if there is no paging, the eNodeB transfers schedulin