UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
`____________________
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`Case IPR2018-01694
`Patent 8,897,828
`____________________
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`PATENT OWNER INTELLECTUAL VENTURES II LLC’S
`PRELIMINARY RESPONSE TO PETITION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
`
`IPR2018-01694
`Patent 8,897,828
`
`
`I. 
`II. 
`
`B. 
`
`C. 
`
`Introduction ..................................................................................................... 1 
`The ’828 Patent Presents a Novel Approach to Transmit Power
`Control in a Wireless Network. ...................................................................... 2 
`A. 
`The Existing Approaches Did Not Provide a Particular Manner
`for Combining an Open Loop Scheme with a Closed Loop
`Scheme. ................................................................................................. 4 
`The ’828 Patent Describes a Combination of an Open Loop and
`Closed Loop Scheme with Control Dependent on Whether
`Accumulation Has Been Enabled. ......................................................... 5 
`The Prosecution History and Resulting Allowance Confirmed
`the Patentability of the ’828 Patent Claims. .......................................... 9 
`III.  Claim Construction ....................................................................................... 12 
`IV.  The Board Should Deny Institution Under 35 U.S.C. § 325(d)
`Because the Petition Cites to Substantially the Same References
`Considered During Prosecution in Substantially the Same Way. ................ 12 
`A. 
`The Board is Authorized to Exercise its Discretion and Deny
`Institution Under § 325(d) When the Petition Cites to the Same
`References Considered During Prosecution and Fails to Present
`Any New Arguments. .......................................................................... 13 
`Zeira and Chen, Were Extensively Considered During
`Prosecution and Deemed to Not Render Obvious Several
`Elements of the Independent Claims. .................................................. 15 
`Despite Including Cheng in Each Ground, the Petition Relies
`Solely on Zeira and Chen for the Same Claim Elements
`Deemed Allowable During Prosecution and Fails to Present any
`New Arguments or Indicate That any Error Occurred During
`the Examination of the ’828 Patent. .................................................... 17 
`Zeira Does Not Teach or Otherwise Render Obvious “receiving … 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” and “receiving …
`by the UE if accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data at a power level calculated by the UE
`based on the path loss.” ................................................................................ 19 
`
`B. 
`
`C. 
`
`V. 
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`IPR2018-01694
`Patent 8,897,828
`A.  Overview of Zeira ............................................................................... 20 
`B. 
`Overview of Chen ............................................................................... 21 
`C. 
`Overview of Cheng ............................................................................. 22 
`D. 
`The Petition Does Not Establish That the Combination of Zeira,
`Chen and Cheng Renders Obvious Independent Claims 1, 8, 15,
`22, 29, or 36. ........................................................................................ 23 
`1. 
`The Petition Fails to Establish That the Combination of
`Zeira, Chen, and Cheng Renders Obvious “receiving …
`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” and “receiving … by the UE if
`accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data at a power level
`calculated by the UE based on the path loss.” ......................... 23 
`Zeira Does Not Teach the Specific Control Process
`Recited
`in
`the Claims
`that Depends on Whether
`Accumulation Has Been Enabled. ........................................... 24 
`The Petition Does Not Rely on Any Secondary
`References
`to Teach
`the Specific Control Process
`Dependent on Whether Accumulation Has Been Enabled
`as Recited in the Claims. .......................................................... 26 
`The Petition Fails to Explain Why the Combination of
`Zeira and Chen Discloses an Allocation of a Scheduled
`Uplink Resource and a TPC Command Being Received
`on a “single physical channel.” ................................................ 27 
`Zeira and Cheng Do Not Teach “receiving, by the UE,”
`or “sending, by the wireless network” “an indication of
`whether accumulation of transmit power control (TPC)
`commands is enabled” as recited in Claim 1 and Claim
`15 respectively. ........................................................................ 29 
`VI.  Conclusion .................................................................................................... 31 
`
`
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
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`IPR2018-01694
`Patent 8,897,828
`
`I.
`
`Introduction
`
`The Board should deny institution of this proceeding because Petitioners do
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`not come close to meeting their burden. The Petition does not establish by a
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`preponderance of the evidence that claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-
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`23, 26-27, 29-30, 33-34, 36-37, or 40-41 of U.S. Patent 8,897,828 (“the ’828
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`patent”) are obvious over the proposed Grounds. Rather than presenting new art
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`and arguments not previously considered during prosecution, the Petition merely
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`relies on the exact same references—Zeira and Chen—and rehashes arguments that
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`the Examiner and Board have already heavily considered for the independent
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`claims. Because the Petition presents arguments that are duplicative of those
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`considered during prosecution of the ’828 patent, the Board should deny institution
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`under 35 U.S.C. § 325(d).
`
`The Petition fails for the exact same reasons the claims of the ’828 patent
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`were found allowable—the prior art does not render obvious the claimed power
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`control process that depends on whether accumulation has been enabled for user
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`equipment (UE) transmission power. Simply put, the prior art does not describe
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`performing particular actions in response to whether or not accumulation has been
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`enabled. Nor has the Petition established that a “single physical channel” carrying
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`“an allocation of a scheduled uplink resource and a TPC command” or “receiving,
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`by the UE,” or “sending, by the wireless network” “an indication of whether
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`IPR2018-01694
`Patent 8,897,828
`accumulation of transmit power control (TPC) commands is enabled” are obvious
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`in view of the art presented in the Petition. Thus, in view of the redundant and
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`flawed arguments presented in Petition, the Board should deny institution of an
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`inter partes review against the ’828 patent.
`
`II. The ’828 Patent Presents a Novel Approach to Transmit Power Control
`in a Wireless Network.
`
`Wireless communication networks require a balancing of signal power to
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`avoid several problems. For example, “radio signals transmitted with increased
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`power result in fewer errors when received than signals transmitted with decreased
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`power. Unfortunately, signals transmitted with excessive power may interfere with
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`the reception of other signals sharing the radio link.” (’828 patent, Ex. 1001, 1:18-
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`22.) In particular, this balancing is important for user equipment (UE) such as a
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`mobile device to communicate with a base station. (See id. at 1:43-49.)
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`One metric for determining a desired transmit power is to determine a target
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`signal to noise-plus-interference ratio (SNIR). (Id. at 1:50-53.) Using the target
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`SNIR, a UE may adjust its transmission power level depending on various factors,
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`such as the path loss detected on a communication channel. In this manner, the UE
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`may increase or decrease the transmit power to compensate for the path loss and to
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`achieve a target SNIR. (See id. at 2:5-32.)
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`Two schemes have been proposed in an attempt to adjust a UE’s
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`transmission power level: an open loop method and a closed loop method. In an
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`IPR2018-01694
`Patent 8,897,828
`open loop scheme, the UE “monitors the received strength of signals it receives to
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`determine a power level at which it will transmit.” (Id. at 2:8-11.) For example, the
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`UE may receive a signal from a base station and determine the degree to which the
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`received signal’s power level has decreased from the transmitted power level from
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`the base station. Using this information, the UE may determine the path loss of the
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`channel and increase the transmission power level to compensate for the decrease.
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`In the closed loop method, the UE may receive commands that “instruct the
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`UE to increase or decrease its transmitted power by a predetermined step dB
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`amount.” (Id. at 2:23-25.) These commands are referred to as transmit power
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`control (TPC) commands. The UE receives TPC commands from a network or a
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`base station and increases or decreases its transmission power level in response to
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`the received command. Traditionally, TPC commands were incremental or
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`decremental values as a with a single step magnitude of, for example, 1 decibel
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`(dB). (Id. at 2:23-28, 6:57-60.)
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`As further explained in the ’828 patent, “[b]oth the closed loop scheme and
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`the open loop scheme have their disadvantages. Therefore, an improved method
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`and system are needed that better balances the competing goals of reducing errors
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`in a received signal while also reducing interference imposed on signals received at
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`other receivers. An improved method and system are also needed to better reduce
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`IPR2018-01694
`Patent 8,897,828
`the overall residual SNIR fluctuations experienced by each users signal at a
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`receiver.” (Id. at 2:33-40.)
`
`In response to these challenges, the inventors of the ’828 patent developed a
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`novel approach of combining open loop and closed loop control to set a user
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`equipment (UE) transmission power level. In particular, the inventors developed a
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`control scheme dependent on whether accumulation has been enabled. “If
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`accumulation is enabled, the UE may receive on a single physical channel an
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`allocation of a scheduled uplink resource and a TPC command. The TPC command
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`may be accumulated with other received TPC commands. A transmit power for an
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`uplink communication based on both the path loss and the accumulated TPC
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`commands may then be calculated by the UE. If accumulation is not enabled, the
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`UE may receive an allocation of a scheduled uplink resource to transmit data at a
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`calculated power level.” (Id. at Abstract.)
`
`A. The Existing Approaches Did Not Provide a Particular Manner
`for Combining an Open Loop Scheme with a Closed Loop
`Scheme.
`
`The ’828 patent describes past techniques of using solely open loop or solely
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`closed loop control schemes to determine a UE’s transmit power. The disadvantage
`
`of using a solely open loop scheme, however, is that the “open loop method is
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`relatively slow at compensating for changes due to interfering signals from other
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`transmitters.” (’828 patent, 2:14-16.) Similarly, using a solely closed loop control
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`IPR2018-01694
`Patent 8,897,828
`scheme may “demand a very high command update rate to adequately compensate
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`for fast channel fading because of the single-dB-step commands used. At slower
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`update rates, fast channel fading is not tracked adequately since a large number of
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`iterations and long delays are needed to compensate for a change in power that is
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`substantially larger than the dB-step value.” (Id. at 2:25-32.)
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`The inventors of the ’828 patent addressed these issues by providing a
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`particular method and system for strategically combining “aspects of both an open
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`loop scheme and a closed loop scheme.” (Id. at 7:64-66.)
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`B.
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`The ’828 Patent Describes a Combination of an Open Loop and
`Closed Loop Scheme with Control Dependent on Whether
`Accumulation Has Been Enabled.
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`The ’828 patent describes a particular power control scheme that includes
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`aspects from a closed loop system and an open loop system. In particular, the “UE
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`incorporates the TPC structure of a closed loop scheme and the path loss
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`estimation structure of an open loop scheme.” (’828 patent, 8:4-7.) Depending on
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`the accumulation setting, “[t]he UE accumulates 420 the TPC commands and uses
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`the accumulated TPC commands in part to set 436 the transmit power level for
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`future uplink transmissions 400.” (Id. at 9:58-61.)
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`IPR2018-01694
`Patent 8,897,828
`
`(’828 patent, Figure 4.)
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`
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`When accumulation has been enabled, “the UE may calculate the transmit
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`power PTx(k) as shown below where K is the initial frame number determined
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`when the power control process begins; TPCi is −1 for a down TPC command, +1
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`for an up TPC command and 0 if no TPC command is received; and step is the
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`magnitude of the amount added to an accumulator upon receipt of each TPC
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`command. The transmit power PTx(k) may be updated for every frame period.”
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`(’828 patent, 8:66-9:8.)
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`IPR2018-01694
`Patent 8,897,828
`
`
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`(’828 patent, 9:12-17.)
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`The accumulated TPC commands are represented by the factor:
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`
`
`(’828 patent, 10:3-8.)
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`This accumulation aids in efficiently determining the transmit power when
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`“several TPC commands may be necessary to properly bring the UE's transmitted
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`power in line with the SNIR Target value. For example, if a path loss increases
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`from one frame to the next by 15 dB, the system will take 15 TPC commands to
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`compensate for the 15 dB fade. A UE accumulates the increase and decrease TPC
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`commands to determine a proper uplink transmit power level.” (’828 patent, 6:39-
`
`46.)
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`The ’828 patent also describes a scenario for when accumulation may not be
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`enabled. “During a period of inactivity on the uplink 402, TPC commands 418 may
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`not have been received by the UE. The UE transmit power level for a subsequent
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`initial transmission 400 may be determined using current updates of the open loop
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`component. That is, the initial transmit power level may be determined based on
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`the beacon power level 428, the measured 432 received power level, and optionally
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`IPR2018-01694
`Patent 8,897,828
`the interference measurements 430. The open loop component does not require
`
`feedback, thus may continue to be updated every beacon transmission even during
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`the uplink transmission pause.” (Id. at 11:7-18.)
`
`Further, the ’828 patent describes the disabling of accumulation: “The
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`history stored in the TPC accumulator may be stale. In some circumstances the
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`history may be considered useful and is not reset. Alternatively, the accumulated
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`TPC history could be used to set the uplink transmit power level but with some
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`excess power margin added to ensure a clean start to the loop. Alternatively, the
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`UE may decide to discard the accumulated TPC history and to reset it to a default
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`or initial value.” (Id. at 11:19-25.)
`
`In this manner, the ’828 patent describes the combination of an open loop
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`and closed loop power scheme that also considered whether accumulation has been
`
`enabled. As described in the ’828 patent, the combination aids in balancing the
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`“conflicting goals of reducing errors in a received signal while also reducing
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`interference imposed on signals received at other receivers.” (Id. at 2:34-37.)
`
`Further, the ’828 patent describes a particular control scheme dependent on the
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`enablement of accumulation to provide further control in achieving a target power
`
`transmission level. This invention is described in the claims. Independent claim 1
`
`is representative and reproduced below:
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`1. A method performed by user equipment (UE), the method comprising:
`
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`IPR2018-01694
`Patent 8,897,828
`receiving, by the UE, an indication of whether accumulation of
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`transmit power control (TPC) commands is enabled;
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`determining, by the UE, a path loss of a downlink channel;
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`receiving, on a single physical channel by the UE if accumulation is
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`enabled, an allocation of a scheduled uplink resource and a TPC command,
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`wherein the TPC command is accumulated with other received TPC
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`commands;
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`calculating, by the UE if accumulation is enabled, transmit power in
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`association with an uplink communication based on both the path loss and
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`the accumulated TPC commands; and
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`receiving, on the single physical channel by the UE if accumulation is
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`not enabled, an allocation of a scheduled uplink resource to transmit data at
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`a power level calculated by the UE based on the path loss.
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`(Id. at 13:36-55 (emphasis added).)
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`C. The Prosecution History and Resulting Allowance Confirmed the
`Patentability of the ’828 Patent Claims.
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`Upon consideration of the subject matter of the ’828 patent, the claims of the
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`’828 patent were deemed allowable by the Examiner. During examination, the
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`Examiner extensively cited to WO 00/57574 to Zeira and US 2005/0025056 to
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`Chen. As indicated by the Petition, the WO version of Zeira is substantially
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`identical to U.S. Patent 6,728,292 to Zeira used as the primary reference in the
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`IPR2018-01694
`Patent 8,897,828
`Petition. (Petition, p. 8.) The Chen publication is the same publication as U.S.
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`Patent 7,532,572 to Chen as cited in the Petition.
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`The application first included a first set of claims directed to calculating
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`transmit power level based on a path loss determination and a TPC command. (See
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`’828 Patent File History, Ex. 1010, pp. 1087-91.) The Examiner applied Zeira and
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`Chen during the examination of the ’828 patent. (See id. at 743-54, 619-39, 563-
`
`81, 504-29.) In particular, the Examiner applied Zeira in four Office Action
`
`rejections and Chen in three rejections before the Applicant ultimately appealed the
`
`rejections. (See id. at 436-58.) The Board then considered both Zeira and Chen and
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`affirmed the Examiner. (See id. at 123-31.)
`
`In response to the Board’s decision, the Applicant submitted new claims that
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`were ultimately allowed without amendment.1 Upon examining these claims, the
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`Examiner issued a Notice of Allowance. (Id. at 15-22.) In the Notice of Allowance,
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`the Examiner explicitly stated that:
`
`
`1 (See id. at 95-111.) The Examiner applied supplied a rejection under §
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`112(a) and a nonstatutory double patenting rejection after reviewing these new
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`claims. The Applicant provided specification evidence to overcome the § 112(a)
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`rejection and a terminal disclaimer to overcome the double patenting rejection
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`without amending the claims. (See id. at 77-82, 43-58.)
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`IPR2018-01694
`Patent 8,897,828
`[N]one of the prior art cited alone or in
`
`combination provides the motivation to teach receiving,
`
`… 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;
`
`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
`
`receiving, … by the UE if accumulation is not
`
`enabled, an allocation of a scheduled uplink resource to
`
`transmit data at a power level calculated by the UE based
`
`on the path loss.
`
`(Id. at 21 (emphasis added).)
`
`These claim elements are herein referred to as the “Allowed Claim
`
`Elements.” Having explicitly considered Zeira and Chen during examination, the
`
`Examiner allowed the claims in view of the references. The Examiner’s statement
`
`in the Notice of Allowance represents the Office’s position that Zeira and Chen,
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`IPR2018-01694
`Patent 8,897,828
`either alone or in combination, fail to teach or otherwise render obvious at least the
`
`above claim elements.
`
`III. Claim Construction
`
`Petitioner proposed constructions for two terms: “accumulation of transmit
`
`power control (TPC) commands” and “multilevel TPC command.” (Petition, pp.
`
`17-20.) In both instances, Patent Owner believes that a construction is not
`
`“necessary to resolve the controversy” in this proceeding. Vivid Techs. v. Amer.
`
`Science, 200 F.3d 795, 803 (Fed. Cir. 2000).
`
`IV. The Board Should Deny Institution Under 35 U.S.C. § 325(d) Because
`the Petition Cites to Substantially the Same References Considered
`During Prosecution in Substantially the Same Way.
`
`The Board should exercise its discretion under § 325(d) and deny institution
`
`because each of the Grounds in the Petition present the same or substantially the
`
`same prior art and arguments that were previously considered by the Office.
`
`Hologic, Inc. v. bioMérieux, Inc., IPR2018-00568, Paper 9 at 11 (P.T.A.B. Aug. 7,
`
`2018) (quoting 35 U.S.C. § 325(d)).
`
`The Petition presents three Grounds that rely on Zeira and Chen—two
`
`references extensively considered during prosecution. In each of the Grounds, the
`
`Petition fails to set forth any obviousness positions that are substantively different
`
`from those already considered by the Office. For example, for Ground 1, the
`
`Petition relies on Zeira and Chen to teach the elements of independent claims 1, 8,
`
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`IPR2018-01694
`Patent 8,897,828
`15, 22, 29, or 36 in substantially the same manner used by the Office. (See Petition,
`
`p. 1; ’828 Patent File History, pp. 743-54, 619-39, 563-81, 504-29.) But the
`
`independent claims were deemed patentable over Zeira and Chen, and the Petition
`
`never presents these references in any new light. While the Petition also relies on
`
`another reference, Cheng, the Petition never relies on this reference to teach the
`
`independent claim elements deemed patentable by the Examiner in the Notice of
`
`Allowance. (See Petition, pp. 37-49.) Because the Petition has relied on the same
`
`references considered during prosecution, has failed to identify any problems with
`
`the original prosecution, and fails to raise any new arguments in view of the
`
`prosecution history, the Board should deny institution of the Petition on all three
`
`Grounds.
`
`A. The Board is Authorized to Exercise its Discretion and Deny
`Institution Under § 325(d) When the Petition Cites to the Same
`References Considered During Prosecution and Fails to Present
`Any New Arguments.
`Institution of an inter partes review is always discretionary. See Harmonic
`
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). When a petition
`
`presents “the same or substantially the same prior art or arguments [that]
`
`previously were presented to the Office,” § 325(d) provides the Board with
`
`“express discretion” to deny it on that basis. Hologic, Inc., IPR2018-00568, Paper
`
`9 at 11 (P.T.A.B. Aug. 7, 2018); see also Becton, Dickenson & Co. v. B. Braun
`
`Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (P.T.A.B., Dec. 15, 2017)
`
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`IPR2018-01694
`Patent 8,897,828
`(informative). The Board has an interest in “conserving the resources of the Office
`
`and granting patent owners repose on issues and prior art that have been considered
`
`previously” and may therefore deny the petition when the petition presents the
`
`same prior art or arguments previously considered. Dorco Co., Ltd. v. The Gillette
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`Co., LLC, IPR2017-00500, Paper 7 at 14 (P.T.A.B. June 21, 2017).
`
`In Becton, Dickinson & Co. v. B. Braun Melsungen AG, the Board provided
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`informative guidance detailing several factors to consider when denying institution
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`under § 325(d). These factors include:
`
`(a)
`
`the similarities and material differences
`
`between the asserted art and the prior art involved during
`
`examination;
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`(b) the cumulative nature of the asserted art and
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`the prior art evaluated during examination;
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`(c) the extent to which the asserted art was
`
`evaluated during examination, including whether the
`
`prior art was the basis for rejection;
`
`(d)
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`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;
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`IPR2018-01694
`Patent 8,897,828
`(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, IPR2017-01586, Paper 8 at 17-18 (P.T.A.B. Dec. 15,
`
`2017) (informative).
`
`Here, the Becton, Dickinson factors weigh in favor of denying institution
`
`under § 325(d).
`
`B.
`
`Zeira and Chen, Were Extensively Considered During
`Prosecution and Deemed to Not Render Obvious Several
`Elements of the Independent Claims.
`
`Because the petition relies on the same references considered during
`
`prosecution and fails to present any new arguments, each of the Becton, Dickinson
`
`factors weigh in favor of denying institution under § 325(d). The Grounds in the
`
`Petition do not purport to offer substantive obviousness positions that were not
`
`already addressed during prosecution. Instead, the Petition’s arguments with
`
`respect to Zeira and Chen and the Allowed Claim Elements directly overlap with
`
`those considered during prosecution. Both Zeira and Chen were heavily considered
`
`during examination and are used in the Petition to address the same claim elements
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`that were previously deemed patentable. (See Petition, p. 1; ’828 Patent File
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`History, 743-54, 619-39, 563-81, 504-29.) While the Grounds in the Petition also
`
`rely on Cheng, the Petition does not rely on Cheng to address any of the Allowed
`
`Claim Elements. (See Petition, pp. 37-49.)
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`As admitted in the Petition, the Examiner and the Board exhaustively
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`examined the claims in view of Zeira2 and Chen—the same combination appearing
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`in three Office Actions and an appeal. (See ’828 Patent File History, 619-39, 563-
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`81, 504-29, 123-31.) After this extensive examination and in response to
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`amendments made by the applicant, the Examiner ultimately allowed the patented
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`claims even in view of Zeira and Chen. (See id. at 15-22.) In the Notice of
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`Allowance, the Examiner explicitly noted that:
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`[N]one of the prior art cited alone or in
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`combination provides the motivation to teach receiving,
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`… by the UE if accumulation is enabled, an allocation of
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`a scheduled uplink resource and a TPC command,
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`wherein the TPC command is accumulated with other
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`received TPC commands;
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`2 During prosecution, the Examiner applied the WO version of Zeira (WO
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`00/57574) which is substantially identical to U.S. Patent No. 6,728,292 to Zeira as
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`admitted in the Petition. (Petition, p. 8.)
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`calculating, by the UE if accumulation is enabled,
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`transmit power
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`in
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`association with
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`an uplink
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`communication based on both the path loss and the
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`accumulated TPC commands; and
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`receiving, … by the UE if accumulation is not
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`enabled, an allocation of a scheduled uplink resource to
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`transmit data at a power level calculated by the UE based
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`on the path loss.
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`(Id. at 21 (emphasis added).)
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`Thus, the Examiner has already considered both Zeira and Chen and has
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`concluded that the claims are patentable over these references as well as the other
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`references listed on the face of the ’828 patent.
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`C. Despite Including Cheng in Each Ground, the Petition Relies
`Solely on Zeira and Chen for the Same Claim Elements Deemed
`Allowable During Prosecution and Fails to Present any New
`Arguments or Indicate That any Error Occurred During the
`Examination of the ’828 Patent.
`
`As previously discussed, the claims of the ’828 patent were deemed
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`patentable based on the Allowed Claim Elements in view of Zeira and Chen.
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`However, the Petition fails to present any new arguments or indicate that any error
`
`occurred during the examination of the ’828 patent. Instead, the Petition’s Grounds
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`introduce another reference, Cheng, which it never relies on to teach any of the
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`Allowed Claim Elements.3
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`Rather than citing to new references, such as Cheng, the Petition relies
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`solely on Zeira and Chen for allegedly teaching the Allowed Claim Elements. For
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`example, while Ground 1 of the Petition includes a combination of Zeira, Chen,
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`and Cheng, when the Petition addresses claim Element 15[c] and 15[e], the
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`Petition only uses Zeira and Chen and advances the same obviousness arguments
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`previously raised and overcome during prosecution. (Petition, pp. 37-47, 48-49.)
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`Similarly, for claim element 15[d], the Petition again faces the same issue—only
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`relying on Zeira in the same manner raised and overcome during prosecution. (Id.
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`at 47-48.)
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`Further, the Petition does not argue that the Examiner committed any errors
`
`during prosecution. The Petition does not cite to any error, but rather cites to the
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`Examiner’s analysis to indicate that the Examiner extensively considered both
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`Zeira and Chen. (Petition, pp. 7-8.) Specifically, the Petition explicitly states that
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`the Examiner reviewed Zeira and Chen and included both references in multiple
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`rejections. (See id.) The Petition, however, fails to mention that the patented claims
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`3The Allowed Claim Elements refer to Claim 1 in the Notice of Allowance
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`but also correspond to Elements 15[c], 15[d], and 15[e] of claim 15 as referenced
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`in the Petition. (See ’828 Patent File History, p. 21; Petition, pp. 37-49.)
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`were ultimately allowed even in view of these references. Nor does the Petition
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`present additional arguments that were not previously considered by the Examiner
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`with respect to the Allowed Claim Elements above. As previously explained,
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`although Ground 1 includes reference to the Cheng reference, the Petition does not
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`rely on Cheng to allegedly teach the claim elements deemed patentable in the
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`Notice of Allowance: Elements 15[c], 15[d], and 15[e]. In this manner, the Petition
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`presents no additional evidence or arguments to warrant reconsideration of the
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`prior art.
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`For the reasons discussed above, all of the Becton, Dickinson factors weigh
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`in favor of the Board exercising its discretion under § 325(d) and denying
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`institution.
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`V. Zeira Does Not Teach or Otherwise Render Obvious “receiving … 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” and “receiving … by
`the UE if accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data at a power level calculated by the UE
`based on the path loss.”
`
`As acknowledged by the Examiner in the Notice of Allowance and seen
`
`from a review of the prosecution history, Zeira fails to teach a conditional power
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`control process that depends on whether the accumulation of transmit power
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`control (“TPC”) commands is enabled, as recited in the claims. Neither Zeira nor
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`any other secondary reference teach or otherwise render obvious this conditional
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`process.
`
`A. Overview of Zeira
`Zeira describes a “[c]ombined closed loop/open loop power control [that]
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`controls transmission power levels in a spread spectrum time division duplex
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`communication station.” (Zeira, Ex. 1004, 2:57-59.) Zeira explains that “[i]f the
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`quality of the path loss measurement is high, the system primarily acts as an open
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`loop system. If the quality of the path loss measurement is low, the system
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`primarily acts as a closed loop system. To combine the two power control aspects,
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`the system weights the open loop aspect based on the quality of the path loss
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`measurement.” (Id. at 5:48-56.) Under this weighted system, Zeira describes the
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`use of two equations to calculate a “transmitting station’s power level in decibels,
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`PTS”:
`
`
`
`
`
`(Zeira, 6:7-28.)
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` “Po is the power level that the receiving station 50 desires to receive