Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`Entered: March 20, 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 IPR2018-01694
`Patent 8,897,828 B2
`____________
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 7
`Entered: March 20, 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 IPR2018-01694
`Patent 8,897,828 B2
`____________
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Case IPR2018-01694
`Patent 8,897,828 B2
`
`
`I.
`INTRODUCTION
`Petitioner, Ericsson Inc. and Telefonaktiebolaget LM Ericsson, filed a
`Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1, 2, 5, 6,
`8, 9, 12, 13, 15, 16, 19, 20, 22, 23, 26, 27, 29, 30, 33, 34, 36, 37, 40, and 41
`of U.S. Patent No. 8,897,828 B2 (Ex. 1001, “the ’828 patent”). Patent
`Owner, Intellectual Ventures II LLC, timely filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a), we have authority to determine whether to institute review.
`An inter partes review may not be instituted unless “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). For the
`reasons set forth below, we conclude that Petitioner has shown a reasonable
`likelihood it will prevail in establishing the unpatentability of at least one
`challenged claim. We, therefore, institute inter partes review of the
`challenged claims of the ’828 patent in this proceeding.
`
`A. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies 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
`Notices).
`
`B. THE ’828 PATENT
`The ’828 patent is titled “Power Control in a Wireless Communication
`System” and describes power-control systems that can operate in multiple
`modes. Ex. 1001, (54), (57). In particular, the ’828 patent describes open-
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`loop power control, in which a user equipment (UE) can measure path loss
`and use it to determine the transmit power level. Id. at 2:5–16. The ’828
`patent also describes closed-loop power control, in which the network
`measures the “signal to noise-plus-interference ratio (SNIR)” and uses it to
`issue transmit power control (TPC) commands to the UE. Id. at 1:50–56,
`2:17–32. The ’828 patent discloses that a UE receiving TPC commands may
`accumulate the commands to determine the transmit power level. Id. at
`6:39–46, 7:16–19. The UE may include both open- and closed-loop
`functionality so that it may respond to either TPC commands or to a change
`in the path loss. Id. at 8:5–7.
`
`C. CHALLENGED CLAIMS
`Challenged claims 1, 8, 15, 22, 29, and 36 are independent. Claim 15
`is illustrative of the claimed subject matter and is reproduced below:
`15[pre]. A method performed by a wireless network, the
`method comprising:
`[a] sending, by the wireless network, an indication of
`whether accumulation of transmit power control (TPC)
`commands is enabled;
`[b] determining, by a user equipment (UE), a path loss of a
`downlink channel;
`[c] receiving, on a single physical channel by the UE if
`accumulation is enabled, an allocation of a scheduled
`uplink resource and a TPC command, wherein the TPC
`command is accumulated with other received TPC
`commands;
`[d] calculating, by the UE if accumulation is enabled,
`transmit power in association with an uplink
`communication based on both the path loss and the
`accumulated TPC commands; and
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`[e] receiving, on the single physical channel by the UE if
`accumulation is not enabled, an allocation of a
`scheduled uplink resource to transmit data to the
`wireless network at a power level calculated by the UE
`based on the path loss.
`Ex. 1001, 14:41–611
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 103:
`
`References
`Zeira,2 Chen,3 and Cheng4
`
`Zeira, Chen, Cheng, and Tong5
`Zeira, Chen, Cheng, and Shiu6
`
`Claims
`1, 5, 8, 12, 15, 19, 22, 26, 29, 33,
`36, and 40
`2, 9, 16, 23, 30, and 37
`6, 13, 20, 27, 34, and 41
`
`Pet. 1. Petitioner also relies on the Declaration of Dr. Wayne Stark
`(Ex. 1003). See generally Pet. 11–73.
`
`
`1 We add square-bracketed annotations to separate claim limitations as
`identified by the parties. See Pet. 25–49.
`2 U.S. Patent No. 6,728,292 B2 (filed June 11, 2003; iss. Apr. 27, 2004)
`(Ex. 1004).
`3 U.S. Patent No. 7,532,572 B2 (filed May 14, 2004; iss. May 12, 2009)
`(Ex. 1006).
`4 U.S. Patent No. 6,411,817 B1 (filed Jan. 21, 2000; iss. June 25, 2002)
`(Ex. 1005).
`5 U.S. Patent No. 6,529,741 B1 (filed Apr. 16, 1999; iss. Mar. 4, 2003)
`(Ex. 1009).
`6 U.S. Patent. No. 6,983,166 B2 (filed Aug. 20, 2001; iss. Jan. 3, 2006)
`(Ex. 1008).
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`II. DISCUSSION
`A. 35 U.S.C. § 325(D)
`Patent Owner argues that we should deny institution because the
`Petition relies on Zeira and Chen, which were “heavily considered during
`prosecution,” and because “the Petition’s arguments directly overlap with
`those considered during prosecution.” Prelim. Resp. 15–19.
`We consider multiple factors when determining whether to exercise
`our discretion not to institute under 35 U.S.C. § 325(d), potentially
`including:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. at 17–-18 (PTAB Dec. 15, 2017) (Paper 8) (informative). As Patent
`Owner points out, Zeira was applied a number of times during prosecution.
`Prelim. Resp. 15–17. After the Board affirmed the Examiner’s rejection over
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`a combination of Zeira7 and two other references (Chen8 and Van Lieshout9)
`(Ex. 1010, 124–31), the applicant amended the claims (id. at 95–111). The
`Examiner, in a statement of reasons for allowance, stated that Zeira teaches
`“receiving by the IE, an indication of whether accumulation of transmit
`power commands (TPC) is enabled” and “determining, by the UE, a path
`loss of a downlink channel.” Id. at 20. According to the Examiner, however,
`none of the cited prior art, alone or in combination, teaches the remaining
`limitations of the independent claims. Id. at 21.
`Petitioner discusses the prosecution history of the ’828 patent, in
`particular the claim amendments made after the Examiner’s rejection was
`affirmed by the Board. Pet. 7–10. Petitioner argues that the limitations of the
`allowed claims were nonetheless patentable over art at issue during
`prosecution (Zeira and Chen) in combination with Cheng. Compare
`Ex. 1010, 129, with Pet. 25–49. Petitioner relies on Cheng as teaching
`sending an indication regarding accumulation of TPC commands. Pet. 9–10,
`30–31.
`Thus, the art previously applied was extremely similar to the art now
`asserted. The Examiner, however, did not reject the amended claims based
`on prior art. See Ex. 1010, 78–82. Thus, we cannot compare how the
`Examiner applied the cited prior art references to the amended and now
`issued claims to contrast that with Petitioner’s assertions. We recognize the
`similarities between the prior version of the claims for which the Board
`
`
`7 The Examiner applied the international publication of Zeira,
`WO 20/57574. Ex. 10102, 939–69.
`8 The Examiner applied Chen’s published U.S. Patent Application
`No. US 2005/0025056 A1. Ex. 1010, 126; see Ex. 1006, (65).
`9 Published U.S. Patent Application No. US 2001/0036823 A1.
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`affirmed the Examiner’s rejection and the amended claims the Examiner
`ultimately allowed.
`In a statement of reasons for allowance, the Examiner stated that Zeira
`discloses certain limitations in the challenged claims, but that even a
`combination of the cited prior art did not disclose other limitations.
`Ex. 1010, 20–21. The Examiner’s statement, however, does not appear
`consistent with Zeira’s disclosures. For example, the Examiner stated that
`Zeira teaches “receiving, by the IE, an indication of whether accumulation of
`transmit power control (TPC) commands is enabled” and cited Zeira’s
`summary section. Id. at 20 (citing id. at 944:17–945:8). But Zeira’s summary
`does not provide a disclosure supporting that Zeira teaches that limitation.
`Thus, we have concerns with the Examiner’s statements regarding Zeira.
`Although the Examiner stated that neither Zeira alone nor a combination of
`the cited references discloses other limitations of the challenged claims, our
`review of Petitioner’s contentions as discussed below indicates the Examiner
`erred.
`In light of Petitioner’s convincing presentation of unpatentability
`discussed below, we decline to exercise our discretion not to institute review
`in this proceeding. See Becton, Dickinson, slip op. at 18 (factors (e) and (f)).
`We note additionally that our intervening, precedential Schulhauser case
`may provide additional reasons for a conclusion that departs from the
`Examiner’s allowance. See Ex parte Schulhauser, Appeal 2013-007847,
`2016 WL 6277792 (PTAB Apr. 28, 2016). As discussed below, our
`conclusion regarding Schulhauser’s applicability may affect our final
`decision in this case.
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`B. CLAIM CONSTRUCTION
`In an inter partes review, the Board interprets claims of an unexpired
`patent using the broadest-reasonable construction in light of the specification
`of the patent.10 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016).
`Petitioner proposes constructions for two terms in the ’828 patent:
`“accumulation of transmit power control (TPC) commands” and “multilevel
`TPC command.” Pet. 17–20. Patent Owner asserts no construction is
`required for either term. Prelim. Resp. 12.
`We conclude that, for the purpose of this Decision, there is no need to
`construe any term to resolve any issue presented by the Petition and
`Preliminary Response. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`As noted above, however, our precedential Schulhauser case may
`affect the outcome in this case. In Schulhauser, we held that a method claim
`directed to two alternative outcomes based on a binary indicator is construed
`to cover two different methods, and that the broadest-reasonable
`construction encompasses either one of those methods. Schulhauser,
`2016 WL 6277792, *4. Thus, an obviousness showing for such a claim need
`only address one of the two claimed methods. Id. Although Patent Owner
`
`
`10 The Petition was filed before the November 13, 2018, effective date of the
`amendment to 37 C.F.R. § 42.100 changing the claim-construction
`standard applied in inter partes reviews. Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
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`argues that Schulhauser is inapplicable to the ’828 patent, that argument is
`based on the Examiner’s statements during prosecution of the ’828 patent.
`See Prelim. Resp. 12–13. As explained above, we are persuaded, at this stage
`of the proceeding, that at least some of the Examiner’s statements were
`erroneous. Moreover, whether Schulhauser applies to the challenged claims
`does not depend on any conclusions about the prior art; rather, the prior art
`may only affect the result of applying Schulhauser. In their briefing, the
`parties should discuss the applicability of Schulhauser in addition to the
`result of applying it to the claims here.
`
`C. OBVIOUSNESS OVER ZEIRA, CHEN, AND CHENG
`Petitioner asserts that Zeira teaches a conditional open- and closed-
`loop power-control scheme, that Chen teaches sending an allocation of a
`scheduled uplink resource to UEs, and that Cheng teaches sending an
`indication regarding power control to UEs. Pet. 20–49.
`Zeira discloses a system and method for controlling wireless
`transmission power using combined open- and closed-loop operation.
`Ex. 1004, 1:12–16, 2:57–59. In closed-loop operation, Zeira describes a
`receiving unit measuring signal interference and sending a power command
`to a transmitting unit. Id. at 3:65–4:13. Zeira also describes that a
`transmitting unit can measure path loss to implement open-loop control. Id.
`at 4:14–17, 5:33–37. Zeira’s combined system applies weighting to the
`various factors for determining transmission power. Id. at 6:4–49, 7:13–20.
`That weighting factor, α, permits the network operator “to use solely open
`loop or solely closed loop power control” if desired. Id. at 7:23–27.
`Regarding Zeira’s weighting factor (the α parameter), Petitioner
`submits that sending an indicator on the network “would have been a natural
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`and obvious mechanism for communicating the weighting factor to the UE.”
`Pet. 23–24 (citing Ex. 1003 ¶ 82). Thus, Petitioner argues, “[t]o the extent
`that Zeira does not explicitly describe that the wireless network sends an
`indication of whether accumulation is enabled to the UE . . . , it would have
`been nevertheless obvious in view of Cheng.” Pet. 30 (citing Ex. 1003 ¶ 95).
`Cheng discloses a system and method for controlling wireless
`transmission power, in which a base station may command mobile stations
`(e.g., a UE) to use either “basic” or “enhanced dynamic power control”
`modes. Ex. 1005, 11:1–4. To instruct a mobile station to use a particular
`mode, the base station “sends a physical layer control message to the mobile
`stations.” Id. at 11:9–19. Petitioner asserts also that sending an indicator to
`control Zeira’s α parameter, as taught by Cheng, would have allowed skilled
`artisans “to ensure UE capability with the combined scheme taught by
`Zeira,” and would have been “one obvious way to implement the network
`operators’ desire to use solely open loop as an alternative to the combined
`scheme.” Pet. 24 (citing Ex. 1003 ¶ 84).
`Regarding the requirement to use a “single physical channel” for both
`“an allocation of a scheduled uplink resource and a TPC command,”
`Petitioner asserts that “Zeira discloses that a TPC command ‘is typically sent
`in a dedicated channel,’ which is ‘dedicated to the communication between
`the receiving station 50 and the transmitting station 52, step 40.” Pet. 20–21
`(quoting Ex. 1004, 4:31–34). Petitioner relies on Chen as disclosing “a base
`station that notifies the UE of allocated uplink resources on a dedicated
`control channel.” Pet. 21 (citing Ex. 1006, 4:30–41). Chen discloses a
`scheduling method for packet communications between a mobile station and
`a base station. Ex. 1006, (57). Chen describes a “resource allocating unit” in
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`a base station, “configured to allocate a radio resource which is used in
`uplink packet communications with the mobile station.” Id. at 4:29–32.
`Chen’s base station further includes a “transmitting unit” that is “configured
`to notify the radio resources allocated by the resource allocating unit 14 to
`the mobile station via a downlink dedicated control channel (DCCH).” Id. at
`4:38–41.
`Petitioner asserts further that “Zeira and Chen both describe sending
`control information on a dedicated channel.” Pet. 22 (citing Ex. 1003 ¶ 77).
`Petitioner also argues that a skilled artisan would have configured the
`combined system to use the same channel “so that the UE’s transmit power
`could be adjusted before transmitting on the allocated resource.” Pet. 23
`(citing Ex. 1003 ¶ 80); see also id. at 22–23 (“Using the same dedicated
`channel for both the TPC commands and the resource allocation would have
`been a natural and obvious design choice.” (citing Ex. 1003 ¶ 80)).
`
`1. Power control process that depends on whether accumulation is enabled
`(all claims)
`Zeira discloses that, “[u]nder certain conditions, the network operator
`may desire to use solely open loop or solely closed loop power control,” and
`that “the operator may use solely closed loop power control by setting α to
`zero.” Ex. 1004, 1:60–65, 7:23–27; see Pet. 27–28. Petitioner submits that
`because Zeira’s closed-loop control uses the previous power-control factor
`when calculating the current power control factor, it includes a previous
`TPC command and, therefore, “TPC commands are ‘accumulated’” as
`claimed. Pet. 27–28 (citing Ex. 1004, 5:48–50, 5:65–6:30; Ex. 1003 ¶¶ 89–
`90). Thus, because Zeira teaches that the network operator may use α to
`selectively use open- or closed-loop operation, Petitioner asserts that Zeira
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`teaches operating with closed-loop control when that accumulation is
`enabled. Pet. 27–29; see also id. at 30 (“A POSITA would understand that
`solely open loop is a mode in which accumulation is not enabled.” (citing
`Ex. 1004, 7:23–25; Ex. 1003 ¶ 93)).
`Patent Owner argues “Zeira does not teach the claimed control
`process that depends on whether accumulation has been enabled.” Prelim.
`Resp. 24. Patent Owner recognizes that Zeira discloses using the parameter
`α to operate in solely open-loop or solely closed-loop power control, but
`maintains that Zeira does not describe the claimed process. Id. at 24–25. But
`Patent Owner does not explain its position other than to assert that Zeira fails
`to disclose the claimed process and that “the Office has already determined
`that Zeira’s iterative process does not teach the conditional control
`process.”11 Id. at 25–26. As discussed above, the Office’s prior
`determination appears to have been in error.
`We determine that Petitioner has shown adequately for purposes of
`institution that Zeira teaches using its α parameter to selectively control
`operation in open-loop or closed-loop power control.
`
`2. Single physical channel (all claims)
`The challenged claims require “a single physical channel” carry both
`“an allocation of a scheduled uplink resource and a TPC command.” E.g.,
`Ex. 1001, 13:42–47.
`
`
`11 Patent Owner additionally points out that the Petition does not rely on
`Cheng or Cheng to teach the recited conditional control process. Prelim.
`Resp. 26–27 (identifying “enablement of accumulation” as the relevant
`limitation). Petitioner relies on Zeira in this regard, so Patent Owner’s
`argument regarding Chen and Cheng is inapposite.
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`Petitioner submits that Zeira teaches sending TPC commands in a
`“dedicated channel . . . dedicated to the communication between the
`receiving station 50 and transmitting station 52.” Pet. 39 (quoting Ex. 1004,
`4:31–34; citing Fig. 3). Petitioner asserts skilled artisans understood a
`dedicated channel as a “single physical channel” because it “would be
`transmitted on a physical radio channel” and because relevant specifications
`“describe that a dedicated channel is mapped onto (i.e., transmitted as) a
`dedicated physical channel (DPCH).” Pet. 39–40 (emphasis omitted) (citing
`Ex. 1003 ¶ 110; Ex. 1007, 354, Fig. 13.2).
`Petitioner further relies on Chen disclosing a physical channel used to
`carry allocation and scheduling information from the base station to the
`remote receiver. To that end, Petitioner notes that the Board affirmed such a
`finding during prosecution. Pet. 41 (quoting Ex. 1010, 127, 129–30).
`Petitioner further identifies Chen’s disclosures in support. Pet. 41–43 (citing
`Ex. 1006, 1:60–63, 3:5–8, 4:29–41; Ex. 1007, 354, Fig. 13.2; Ex. 1003
`¶¶ 111–112).
`As to the combination of Zeira and Chen, Petitioner asserts:
`
`[I]t would have been manifestly obvious (and obvious to try) to
`use the same dedicated channel to send both pieces of
`information, as this would eliminate the need for additional,
`unnecessary physical channels to be established between the
`UE and base station, particularly in light of Zeira’s suggestion
`that an additional “communication” can be sent with the TPC
`command on the same dedicated channel.
`Pet. 43 (citing Ex. 1003 ¶ 112).
`Patent Owner argues that the combination does not result in use of a
`“single physical channel” as claimed. Prelim. Resp. 27–28. To that end,
`Patent Owner argues that the Examiner and Board previously determined
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`Zeira does not disclose a “shared physical channel used to carry allocation
`and scheduling information from the base station to the remote transceiver.”
`Id. at 27 (quoting Ex. 1010, 125, 128). Petitioner, however, notes that the
`claims before the Board required a “shared” channel, whereas the challenged
`claims do not. Pet. 41 n.13. Thus, a prior determination regarding a “shared
`physical channel” does not control the result for the challenged claims.
`We determine that Petitioner has shown adequately for purposes of
`institution that the combination would satisfy the claims’ requirement for
`using a single physical channel.
`
`3. Actual transmission (claims 1 and 15)
`In addition to the issues discussed above, claims 1 and 15 recite
`“receiving, by the UE” or “sending, by the wireless network” (respectively)
`“an indication of whether accumulation of TPC commands is enabled.” See
`Ex. 1001, 13:39–41, 14:43–45. Patent Owner appears to distinguish those
`recitations as requiring actual transmissions, in contrast to other claims
`requiring the capability for such transmissions. See Prelim. Resp. 29.
`According to Patent Owner, neither setting Zeira’s parameter α to a
`particular value nor measuring path loss of a channel equates to sending the
`claimed indication. Id. Similarly, because Cheng discloses only “basic” and
`“enhanced” power-control modes, Patent Owner argues that Cheng also fails
`to teach the claimed indication. Id. at 29–30. That argument, however,
`ignores that Petitioner relies on a combination of Zeira and Cheng, such that
`the indicator sent would represent the desired value for Zeira’s α parameter.
`Pet. 29–35.
`Moreover, in Zeira, the transmitting device implements the dual-
`mode, open-and-closed-loop controller using the α parameter (Ex. 1004,
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`7:8–20, Fig. 4), so it appears that the operator’s action must cause α to be
`sent to the UE. The communication of the α parameter causes Zeira’s
`network devices to operate using “solely open loop or solely closed loop
`power control,” and because only closed-loop control involves the
`accumulation of TPC commands, using the α parameter to select open-
`versus closed-loop control means the α parameter is an indication of whether
`accumulation of TPC commands is enabled. See Pet. 27–35.
`We determine that Petitioner has shown adequately for purposes of
`institution that the combination would satisfy the claims’ requirement for
`“receiving, by the UE” or “sending, by the wireless network” “an indication
`of whether accumulation of TPC commands is enabled.”
`
`4. Conclusion
`We have reviewed Petitioner’s submissions and Patent Owner’s
`arguments, and we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to unpatentability over Zeira, Chen, and
`Cheng.
`
`D. OBVIOUSNESS OVER ZEIRA, CHEN, CHENG, AND TONG
`Petitioner asserts that a combination of Zeira, Chen, Cheng, and Tong
`renders obvious claims 2, 9, 16, 23, 30, and 37. Pet. 64–69. Petitioner relies
`on Tong as teaching “multilevel TPC commands,” because “Tong discloses
`using more than one power control bit in the TPC command allows for
`additional step sizes.” Pet. 16 (citing Ex. 1009, (57), 4:54–56, 5:15–25;
`accord id. at 64–65. Petitioner asserts skilled artisans would “include
`multilevel capability to TPC commands” because “Tong expressly teaches
`the benefits of additional step sizes, such as minimizing power overshoot
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`caused by power control command transmission delay.” Id. at 66 (citing
`Ex. 1009, 2:13–45, 2:53–67; Ex. 1003 ¶ 163–164). Thus, Petitioner reasons,
`the combination would “support power control in dynamic environments
`without delay.” Id.; see also id. at 66–68 (further arguing the combination
`would have been predictable and motivated by design incentives and market
`forces).
`At this time Patent Owner does not contest Petitioner’s assertions
`regarding Tong. At this time and on this record, we are persuaded that a
`skilled artisan would have understood the benefit offered from using Tong’s
`teachings, and would have applied those teachings to the combination of
`Zeira, Chen, and Cheng to achieve that benefit. Petitioner has shown a
`reasonable likelihood of prevailing with respect to the combination of Zeira,
`Chen, Cheng, and Tong.
`
`E. OBVIOUSNESS OVER ZEIRA, CHEN, CHENG, AND SHIU
`Petitioner asserts that a combination of Zeira, Chen, Cheng, and Shiu
`renders obvious claims 6, 13, 20, 27, 34, and 41. Pet. 69–74. Petitioner relies
`on Shiu as teaching “calculated transmit power is based on a selected
`transport format,” because “Shiu discloses a power control method where
`calculated transmit power is based on a target SNIR that is chosen based on
`the selected transport format.” Pet. 70 (citing Ex. 1008, 3:27–46). Petitioner
`reasons skilled artisans would have used Shiu’s teachings with those of Zeira
`“in order to achieve the target signal to interference ratio.” Id. (citing
`Ex. 1003 ¶ 176). Petitioner reasons further that, “[b]y minimizing the
`amount of transmit power while maintaining the target BLER, increased
`system capacity and reduced delays in serving users can be achieved.” Id. at
`71 (quoting Ex. 1008, 1:44–52); see also id. at 71–73 (further arguing the
`
`16
`
`
`
`Case IPR2018-01694
`Patent 8,897,828 B2
`
`combination would have been predictable and motivated by design
`incentives and market forces).
`At this time Patent Owner does not contest Petitioner’s assertions
`regarding Shiu. At this time and on this record, we are persuaded that a
`skilled artisan would have understood the benefit offered from using Shiu’s
`teachings, and would have applied those teachings to the combination of
`Zeira, Chen, and Cheng to achieve that benefit. Petitioner has shown a
`reasonable likelihood of prevailing with respect to the combination of Zeira,
`Chen, Cheng, and Shiu.
`
`III. CONCLUSION
`We have addressed all of Patent Owner’s arguments raised in the
`Preliminary Response. For the foregoing reasons, we determine the
`information presented in the Petition establishes a reasonable likelihood that
`Petitioner will prevail in showing the challenged claims unpatentable. Thus,
`based on the standard in 35 U.S.C. § 314(a), and our evaluation of the
`present record, we institute inter partes review.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`the ’828 patent is instituted of the challenged claims on the grounds
`identified in the Petition.
`
`
`17
`
`
`
`Case IPR2018-01694
`Patent 8,897,828 B2
`
`PETITIONER:
`
`Chad Walters
`Harrison Rich
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`
`PATENT OWNER:
`
`Byron Pickard
`Daniel Block
`Tyler Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`tdutton-ptab@sternekessler.com
`
`James Hietala
`Russell Rigby
`Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`rrigby@intven.com
`tim@intven.com
`
`18
`
`
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