UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`T-MOBILE USA, INC., T-MOBILE US, INC.,
`SPRINT SPECTRUM L.P., and SPRINTCOM, INC.
`Petitioners
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
`____________________
`
`Case IPR2018-01773
`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
`
`IPR2018-01773
`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. ................ 13 
`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. .......................................................................... 14 
`Zeira, Krishnan, and Khan, Were Extensively Considered
`During Prosecution and Deemed to Not Render Obvious
`Several Elements of the Independent Claims...................................... 16 
`The Petition Relies on Zeira, Krishnan, and Khan 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. ........................ 18 
`Zeira, Krishnan, and Khan Do 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.” ................... 22 
`
`B. 
`
`C. 
`
`V. 
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`IPR2018-01773
`Patent 8,897,828
`A.  Overview of Zeira ............................................................................... 22 
`B. 
`Overview of Krishnan ......................................................................... 24 
`C. 
`Overview of Khan ............................................................................... 26 
`D. 
`The Petition Does Not Establish That the Combination of Zeira,
`Krishnan, and Khan Renders Obvious Independent Claims 1, 8,
`15, 22, 29, or 36. .................................................................................. 27 
`1. 
`The Petition Fails to Establish That the Combination of
`Zeira, Krishnan, and Khan 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.” ......................... 27 
`Zeira Does Not Teach the Specific Control Process
`Recited
`in
`the Claims
`that Depends on Whether
`Accumulation Has Been Enabled. ........................................... 28 
`Krishnan Does Not Teach the Specific Control Process
`Recited
`in
`the Claims Dependent on Whether
`Accumulation Has Been Enabled. ........................................... 31 
`The Petition Does Not Rely On Khan to Allegedly Teach
`a Power Control Process Dependent on Whether
`Accumulation Has Been Enabled. ........................................... 33 
`VI.  Conclusion .................................................................................................... 36 
`
`
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`2. 
`
`3. 
`
`4. 
`
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`IPR2018-01773
`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, Krishnan, and Khan—and rehashes
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`arguments that the Examiner and Board have already heavily considered for the
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`independent claims. Because the Petition presents arguments that are duplicative of
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`those considered during prosecution of the ’828 patent, the Board should deny
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`institution under 35 U.S.C. § 325(d).
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`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. Thus, in view of the redundant and flawed arguments presented in
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`Petition, the Board should deny institution of an inter partes review against the
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`’828 patent.
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`IPR2018-01773
`Patent 8,897,828
`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.)
`
`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.)
`
`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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`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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`IPR2018-01773
`Patent 8,897,828
`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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`the overall residual SNIR fluctuations experienced by each users signal at a
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`receiver.” (Id. at 2:33-40.)
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`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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`IPR2018-01773
`Patent 8,897,828
`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
`
`closed loop control schemes to determine a UE’s transmit power. The disadvantage
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`of a system only capable of open loop operation, however, is that the “open loop
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`method is relatively slow at compensating for changes due to interfering signals
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`from other transmitters.” (’828 patent, 2:14-16.) Similarly, a system only capable
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`of closed loop operation may “demand a very high command update rate to
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`adequately compensate for fast channel fading because of the single-dB-step
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`commands used. At slower update rates, fast channel fading is not tracked
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`adequately since a large number of iterations and long delays are needed to
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`IPR2018-01773
`Patent 8,897,828
`compensate for a change in power that is substantially larger than the dB-step
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`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.)
`
`B.
`
`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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`IPR2018-01773
`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, 8:66-9:6.)
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`IPR2018-01773
`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-
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`46.)
`
`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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`IPR2018-01773
`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
`
`and closed loop power scheme that also considered whether accumulation has been
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`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
`
`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:
`
`1. A method performed by user equipment (UE), the method comprising:
`
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`IPR2018-01773
`Patent 8,897,828
`receiving, by the UE, an indication of whether accumulation of
`
`transmit power control (TPC) commands is enabled;
`
`determining, by the UE, a path loss of a downlink channel;
`
`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;
`
`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
`
`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. As indicated by the Petition,
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`the WO version of Zeira is substantially identical to U.S. Patent 6,600,772 to Zeira
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`used as the primary reference in the Petition. (Petition, p. 5.) Similarly, the
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`IPR2018-01773
`Patent 8,897,828
`Examiner applied the Krishnan publication (U.S. Patent Application Publication
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`2005/0176455)—corresponding to Krishnan (U.S. Patent No. 7,493,133) used in
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`the Petition—in several rejections.1 The Examiner also considered the published
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`application corresponding
`
`to Khan
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`(U.S. Patent Application Publication
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`2004/0190485) just before allowing the claims in view of an Information
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`Disclosure Statement submitted by the Applicant. (See ’828 Patent File History,
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`Ex. 1008, pp. 28-29, 62-65.)
`
`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
`
`id., 1084-87.) The Examiner applied Zeira and Krishnan during the examination of
`
`the ’828 patent. (See id. at 621-22, 632-33, 636; 564-66, 573-74; 504-507, 520-21.)
`
`In particular, the Examiner applied Zeira in four Office Action rejections and
`
`Krishnan in three Office Action rejections. (See id.) The Applicant ultimately
`
`appealed the rejections. (See id. at 120-27.) The Board then considered Zeira in
`
`view of the independent claims and affirmed the Examiner. (See id.)
`
`In response to the Board’s decision, the Applicant submitted the Khan
`
`reference in an Information Disclosure Statement. (See id. at 62-65.) The Applicant
`
`
`1 (Petition, pp. 5, 12; ’828 Patent File History, pp. 621-22, 632-33, 636; 564-
`
`66, 573-74; 504-507, 520-21.)
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`IPR2018-01773
`Patent 8,897,828
`also submitted new claims that were ultimately allowed without amendment.2 The
`
`Examiner reviewed the claims in view of the Khan reference, indicating that the
`
`Khan reference was considered. (See id. at 28-29.) The Examiner subsequently
`
`allowed the claims and issued a Notice of Allowance in view of Khan and the
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`previously considered Zeira and Krishnan references. (’828 Patent File History, pp.
`
`11-18.) In the Notice of Allowance, the Examiner explicitly stated that:
`
`[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
`
`2 (See ’828 Patent File History, pp. 91-107.) The Examiner applied supplied
`
`an uplink
`
`in
`
`association with
`
`a rejection under § 112(a) and a nonstatutory double patenting rejection after
`
`reviewing these new claims. The Applicant provided specification evidence to
`
`overcome the § 112(a) rejection and a terminal disclaimer to overcome the double
`
`patenting rejection without amending the claims. (See ’828 Patent File History, pp.
`
`73-78, 39-60.)
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`IPR2018-01773
`Patent 8,897,828
`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 17 (emphasis added).)
`
`These claim elements are herein referred to as the “Allowed Claim
`
`Elements.” Having explicitly considered Zeira, Krishnan, and Khan 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, Krishnan, and Khan, 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 a “multilevel TPC command.”
`
`(Petition, pp. 18-19.) 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).
`
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`IPR2018-01773
`Patent 8,897,828
`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 two Grounds that rely on Zeira, Krishnan, and Khan—
`
`three 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, Krishnan, and Khan to teach the
`
`elements of independent claims 1, 8, 15, 22, 29, or 36 in substantially the same
`
`manner used by the Office.3 But the independent claims were deemed patentable
`
`over Zeira, Krishnan, and Khan, and the Petition never presents these references in
`
`any new light. While the Petition also relies on another reference, Andersson, the
`
`Petition never relies on this reference to teach any elements of the independent
`
`claims. (See Petition, p. 8.)
`
`3 (See ’828 Patent File History, pp. 621-22, 632-33, 636; 564-66, 573-74;
`
`Because the Petition has relied on the same
`
`504-507, 520-21; 28-29.)
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`IPR2018-01773
`Patent 8,897,828
`references considered during prosecution, has failed to identify any problems with
`
`the original prosecution, and has failed to raise any new arguments in view of the
`
`prosecution history, the Board should deny institution of the Petition on both
`
`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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`(informative). The Board has an interest in “conserving the resources of the Office
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`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).
`
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`IPR2018-01773
`Patent 8,897,828
`In Becton, Dickinson & Co. v. B. Braun Melsungen AG, the Board provided
`
`informative guidance detailing several factors to consider when denying institution
`
`under § 325(d). These factors include:
`
`(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
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`IPR2018-01773
`Patent 8,897,828
`(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, Krishnan, and Khan, Were Extensively Considered During
`Prosecution and Deemed to Not Render Obvious Several
`Elements of the Independent Claims.
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`Because the petition relies on the same references considered during
`
`prosecution and fails to present any new arguments, each of the Becton, Dickinson
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`factors weigh in favor of denying institution under § 325(d). The Grounds in the
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`Petition do not offer substantive obviousness positions different from those
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`addressed during prosecution. Instead, the Petition’s positions with respect to
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`Zeira, Krishnan, and Khan and the Allowed Claim Elements directly overlap with
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`those considered during prosecution. Zeira, Krishnan, and Khan were heavily
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`considered during examination and are used in the Petition to address the same
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`claim elements that were previously deemed patentable. (See Petition, pp. 32-45;
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`’828 Patent File History, pp. 621-22, 632-33, 636; 564-66, 573-74; 504-507, 520-
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`21; 28-29.)
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`IPR2018-01773
`Patent 8,897,828
`As admitted in the Petition, the Examiner and the Board exhaustively
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`examined the claims in view of Zeira4 and Krishnan—the same combination
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`appearing in three Office Actions.5 In view of the Board’s decision, the Applicant
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`submitted a Reply containing the amendments that were ultimately patented and an
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`Information Disclosure Statement including the Khan reference.6 After this
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`extensive examination, the Examiner allowed the patented claims even in view of
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`Zeira, Krishnan, and Khan. (’828 Patent File History, pp. 11-18.) 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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`4 During prosecution, the Examiner applied the WO version of Zeira (WO
`
`00/57574) which is substantially identical to U.S. Patent No. 6,600,772 to Zeira as
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`admitted in the Petition. (Petition, p. 5.)
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`5 (See ’828 Patent File History, pp. 621-22, 632-33, 636; 564-66, 573-74;
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`504-507, 520-21; 28-29.)
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`6 (See ’828 Patent File History, pp. 26-27; 62-65.)
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`IPR2018-01773
`Patent 8,897,828
`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
`
`on the path loss.
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`(Id. at 17 (emphasis added).)
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`Thus, the Examiner has already considered Zeira, Krishnan, and Khan and
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`has concluded that the claims are patentable over these references as well as the
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`other references listed on the face of the ’828 patent.
`
`C. The Petition Relies on Zeira, Krishnan, and Khan 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 Elements7 in view of Zeira, Krishnan, and
`
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`7 The Allowed Claim Elements refer to Claim 1 in the Notice of Allowance
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`and correspond to Elements 1[c], 1[d], and 1[e] as referenced in the Petition. (See
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`’828 Patent File History, pp. 11-18; Petition, pp. 37-49.)
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`Khan. The Petition does not present any new arguments nor indicate that any error
`
`occurred during the examination of the ’828 patent that warrants the Board
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`reconsidering these same combination of references and obviousness positions yet
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`again.
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`Rather than citing to new references, the Petition relies solely on Zeira,
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`Krishnan, and Khan—references explicitly considered by the Examiner—for
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`allegedly teaching the Allowed Claim Elements. For example, Ground 1 includes
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`the combination of Zeira, Krishnan, and Khan and alleges that these references
`
`render claim Elements 1[c], 1[d], and 1[e] obvious. These arguments, however,
`
`were already raised, considered, and rejected by the Examiner during prosecution.
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`In particular, the Examiner already considered Zeira and Krishnan explicitly
`
`in several Office Actions and applied both references in several rejections during
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`prosecution.8 Further, the Examiner already considered Khan in view of the
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`allowed claims despite the Petition’s erroneous position that the “combination of
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`Khan with Zeira and Krishnan raises novel arguments regarding the patentability
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`of the ’828 patent that were not considered during the original prosecution.”
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`(Petition, p. 6.) The Petition argues that “Khan is particularly relevant in view of
`
`new limitations added by the patentee in the final set of claims that resulted in
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`8 (See ’828 Patent File History, pp. 621-22, 632-33, 636; 564-66, 573-74;
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`504-507, 520-21; 28-29.)
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`issuance…” (Id.) The Petition further argues that “the ’828 patent would not have
`
`been issued had Khan been considered in combination with both Zeira and
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`Krishnan.” (Id. at 7.)
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`Petitioner, however, fails to realize or note that Khan was considered at the
`
`same time as when the Examiner examined the ultimately allowed claims. As
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`previously explained, in response to the Board’s decision on appeal, the Applicant
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`submitted new claims followed by Khan in an Information Disclosure Statement
`
`on August 25, 2014. (See ’828 Patent File History, pp. 91-111, 62-63.) The
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`Examiner then indicated that Khan was considered on September 22, 2014
`
`immediately before issuing the Notice of Allowance on September 26, 2014. (See
`
`id. at 28-29.) In this manner, the Examiner simultaneously reviewed Khan while
`
`reviewing the allowable claims and indicated that he reviewed Khan four days
`
`before allowing the issued claims. In view of this timing as well as the Examiner’s
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`extensive examination of Zeira and Krishnan—as evidenced by their inclusion in
`
`several rejections—the Examiner considered Zeira, Krishnan, and Khan during
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`prosecution of the ’828 patent. Thus, by presenting this combination, the Petition
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`raises no new arguments that were not previously presented during prosecution.
`
`Further, the Petition does not argue that the Examiner committed any errors
`
`during prosecution that warrants reconsideration of the same prior art and positions
`
`here. The Petition does not cite to any error, but rather cites to the Examiner’s
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`analysis to indicate that the Examiner extensively considered both Zeira and
`
`Krishnan. (Petition, pp. 7-8.) Specifically, the Petition explicitly states that the
`
`Examiner reviewed Zeira and Krishnan and included both references in multiple
`
`rejections. (See id.) The Petition attempts to argue that the Examiner did not fully
`
`consider Khan because the Applicant included Khan in an IDS. (Petition, p. 6.)
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`But rather than the Examiner committing an error, Petitioner commits an error in
`
`not realizing that the Examiner considere