Petition for Inter Partes Review
`U.S. Patent No. 8,897,828
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`T-MOBILE USA, INC., T-MOBILE US, INC.,
`SPRINT SPECTRUM L.P., and SPRINTCOM, INC.,
`Petitioner,
`
`v.
`
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`_______________
`
`
`Case IPR2018-______
`Patent No. 8,897,828
`
`_______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 2 
`
`A. 
`
`Real Party-In-Interest ............................................................................ 2 
`
`1. 
`
`2. 
`
`Sprint Real Parties-In-Interest..................................................... 2 
`
`T-Mobile Real Parties-In-Interest ............................................... 2 
`
`B. 
`
`C. 
`
`Related Matters ...................................................................................... 2 
`
`Lead and Back-up Counsel and Service Information Under 37
`C.F.R. § 42.8(b)(3) ................................................................................ 3 
`
`D. 
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 4 
`
`III. 
`
`PAYMENT OF FEES ..................................................................................... 4 
`
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 4 
`
`A.  Grounds for Standing ............................................................................ 4 
`
`B. 
`
`Claims for Which Review is Requested ................................................ 4 
`
`1. 
`
`2. 
`
`Statutory Grounds of Challenge ................................................. 5 
`
`How the Construed Claims are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied Upon to Support the Challenge .... 8 
`
`V. 
`
`BACKGROUND OF THE ’828 PATENT ..................................................... 8 
`
`A.  Overview of the ’828 Patent .................................................................. 9 
`
`B. 
`
`Prosecution History of the ’828 Patent ............................................... 11 
`
`VI.  BACKGROUND OF PRIOR ART ............................................................... 16 
`
`ii
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
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`VII.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 16 
`
`VIII.  CLAIM CONSTRUCTION .......................................................................... 17 
`
`A. 
`
`“multilevel TPC command” ................................................................ 18 
`
`IX.  GROUNDS OF UNPATENTABILITY ........................................................ 19 
`
`A.  Ground #1: Zeira in view of Krishnan and Khan renders
`claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-23, 26-27, 29-
`30, 33-34, 36-37, and 40-41 of the ’828 patent unpatentable
`under 35 U.S.C. § 103(a). .................................................................... 19 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Overview of Zeira ..................................................................... 19 
`
`Overview of Krishnan ............................................................... 21 
`
`Overview of Khan ..................................................................... 22 
`
`Claim 1 ...................................................................................... 24 
`
`Claim 2: “The method of claim 1, wherein the TPC command
`is a multilevel TPC command.” ................................................ 45 
`
`Claim 5: “The method of claim 1, wherein the determining the
`path loss further includes computing a difference between a
`signaled transmit power and a measured power of the downlink
`channel.” ................................................................................... 46 
`
`Claim 6: “The method of claim 1, wherein the calculated
`transmit power is based on a selected transport format.” ......... 47 
`
`Claim 8 ...................................................................................... 48 
`
`Claim 9: “The UE of claim 8, wherein the TPC command is a
`multilevel TPC command.” ...................................................... 51 
`
`10.  Claim 12: “The UE of claim 8, wherein the determination of
`the path loss further includes a computation of a difference
`between a signaled transmit power and a measured received
`power of the downlink channel.” .............................................. 51 
`
`iii
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`11.  Claim 13: “The UE of claim 8, wherein the calculated transmit
`power is based on a selected transport format.” ....................... 51 
`
`12.  Claim 15 .................................................................................... 51 
`
`13.  Claim 16: “The method of claim 15, wherein the TPC
`command is a multilevel TPC command.” ............................... 54 
`
`14.  Claim 19: “The method of claim 15, wherein the determining
`the path loss further includes computing a difference between a
`signaled transmit power and a measured received power of the
`downlink channel.” ................................................................... 54 
`
`15.  Claim 20: “The method of claim 15, wherein the calculated
`transmit power is based on a selected transport format.” ......... 54 
`
`16.  Claim 22 .................................................................................... 55 
`
`17.  Claim 23: “The wireless network of claim 22, wherein the TPC
`command is a multilevel TPC command.” ............................... 56 
`
`18.  Claim 26: “The wireless network of claim 22, wherein the
`determination of the path loss further includes a computation of
`a difference between a signaled transmit power and a measured
`received power of the downlink channel.” ............................... 56 
`
`19.  Claim 27: “The wireless network of claim 22, wherein the
`calculated transmit power is based on a selected transport
`format.” ..................................................................................... 57 
`
`20.  Claim 29 .................................................................................... 57 
`
`21.  Claim 30: “The method of claim 29, wherein the TPC
`command is a multilevel TPC command.” ............................... 59 
`
`22.  Claim 33: “The method of claim 29, wherein the determined
`path loss further includes computing a difference between a
`signaled transmit power and a measured received power of the
`downlink channel.” ................................................................... 59 
`
`23.  Claim 34: “The method of claim 29, wherein the calculated
`transmit power is based on a selected transport format.” ......... 59 
`
`iv
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`24.  Claim 36 .................................................................................... 59 
`
`25.  Claim 37: “The network device of claim 36, wherein the TPC
`command is a multilevel TPC command.” ............................... 62 
`
`26.  Claim 40: “The network device of claim 36, wherein the
`determined path loss further includes a computation of a
`difference between a signaled transmit power and a measured
`received power of the downlink channel.” ............................... 62 
`
`27.  Claim 41: “The network device of claim 36, wherein the
`calculated transmit power is based on a selected transport
`format.” ..................................................................................... 62 
`
`B. 
`
`Ground #2: Zeira in view of Krishnan, Khan, and Andersson
`renders claims 2, 9, 16, 23, 30, and 37 of the ’828 patent
`unpatentable under 35 U.S.C. § 103(a). .............................................. 62 
`
`1. 
`
`2. 
`
`3. 
`
`Overview of Andersson ............................................................ 63 
`
`Claim 2: “The method of claim 1, wherein the TPC command
`is a multilevel TPC command.” ................................................ 63 
`
`Claim 9: “The UE of claim 8, wherein the TPC command is a
`multilevel TPC command.” Claim 16: “The method of claim
`15, wherein the TPC command is a multilevel TPC command.”
`Claim 23: “The wireless network of claim 22, wherein the TPC
`command is a multilevel TPC command Claim 30: “The
`method of claim 29, wherein the TPC command is a multilevel
`TPC command.” Claim 37: “The network device of claim 36,
`wherein the TPC command is a multilevel TPC command. ..... 66 
`
`X. 
`
`CONCLUSION .............................................................................................. 67 
`
`v
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`Cases 
`
`Digital Check Corp. v. E-Imagedata Corp., IPR2017-00178, Paper 6 (PTAB April
`
`25, 2017) ................................................................................................................ 7
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ....................................................... 16
`
`In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ..................................................... 16
`
`In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007) ....................... 18
`
`KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 26, 29, 38
`
`Microsoft Corp. v. Parallel Networks Licensing, LLC, IPR2015-00483, Paper 10
`
`(PTAB July 15, 2015) ............................................................................................ 7
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 18
`
`Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .......................................... 17
`
`Regulations 
`
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`
`
`
`
`
`
`
`vi
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`PETITIONER’S LIST OF EXHIBITS
`
`
`No.
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`
`
`Exhibit
`
`U.S. Patent No. 8,897,828 to Anderson (“’828 Patent”)
`
`Declaration of Dr. Martin G. Walker
`
`CV of Dr. Martin G. Walker
`
`U.S. Patent No. 6,600,772 to Zeira et al (“Zeira” or “’772 Patent”)
`
`U.S. Patent No. 7,493,133 to Krishnan et al. (“Krishnan” or “’133
`Patent”)
`
`U.S. Patent Application Publication No. 2004/0190485 by Khan
`(“Khan”)
`
`U.S. Patent No. 6,334,047 to Andersson (“Andersson”)
`
`Prosecution File History of U.S. Patent Application No. 10/917,968
`(“’968 Application”) issued as the ’828 Patent.
`
`U.S. Patent Application Publication No. 2006/0035660 (“’828
`Published Application”)
`
`WO 97/49197 by Honksalo (“Honksalo”)
`
`
`
`
`vii
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`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`T-Mobile USA, Inc., T-Mobile US, Inc., Sprint Spectrum L.P., and
`
`SprintCom, Inc. (collectively, “Petitioner”), in accordance with 35 U.S.C. §§ 311–
`
`19 and 37 C.F.R. §§ 42.100 et seq., respectfully request that the Patent Trial and
`
`Appeal Board (“the Board”) institute inter partes review of U.S. Patent No.
`
`8,897,828 (“the ’828 patent”) (Ex. 1001), currently assigned to Intellectual
`
`Ventures II LLC (“Patent Owner”). This Petition, and in particular the analysis in
`
`Section IX demonstrates that claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-23, 26-
`
`27, 29-30, 33-34, 36-37, and 40-41 of the ’828 patent are unpatentable over the
`
`prior art and that Petitioner has a reasonable likelihood of prevailing with respect
`
`to the same.
`
`As set forth below and in the accompanying declaration of Dr. Martin
`
`Walker (Ex. 1002), the claimed features in the ’828 patent were well-known in the
`
`art before the patent’s priority date. Numerous prior art references teach its
`
`techniques, including U.S. Patent No. 6,600,772 to Zeira et al., upon which this
`
`Petition is based. While the original prosecution of the ’828 patent substantively
`
`discussed the corresponding PCT application by Zeira, the Examiner did not
`
`consider the combination of references presented herein, namely the combination
`
`of Zeira in view of U.S. Patent No. 7,493,133 to Krishnan and U.S. Patent
`
`Application Publication No. 2004/0190485 by Khan.
`
`1
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`

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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`1.
`
`Sprint Real Parties-In-Interest
`
`The real parties-in-interest for Sprint are Sprint Spectrum L.P. and SprintCom,
`
`Inc. Out of an abundance of caution, Sprint also identifies Sprint Corporation as a
`
`real party in interest only for the purpose of this proceeding based on recent decisions
`
`at the PTAB, and only to the extent that Patent Owner contends that this separate
`
`legal entity should be named a real party in interest in this IPR. Sprint Corporation
`
`is and always has been a holding company that is a legally and factually distinct
`
`entity from its subsidiaries. Each of Sprint Corporation’s subsidiaries, including
`
`Sprint Spectrum L.P. and SprintCom, Inc., maintains its own independent status,
`
`identity, and structure. Sprint Corporation does not provide any of the products and
`
`services at issue in the underlying infringement lawsuit.
`
`2.
`
`T-Mobile Real Parties-In-Interest
`
`The real-parties-in-interest for T-Mobile are T-Mobile USA, Inc. and T-
`
`Mobile US, Inc.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), the ’828 patent is currently being
`
`asserted in a district court litigation captioned as Intellectual Ventures II LLC v. T-
`
`Mobile USA, Inc. et al., Case No. 2:17-cv-661-JRG (E.D. Tex.) and Intellectual
`
`2
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`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`Ventures II LLC v. Sprint Spectrum L.P. et al., Case No. 2:17-cv-662-JRG (E.D.
`
`Tex.), filed September 21, 2017.1 The ’828 Patent is currently the subject of
`
`separate petitions for inter partes review in IPR2018-01694 (“’1694 IPR), filed by
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”), and
`
`IPR2018-01641 (“’1641 IPR”), filed by Nokia of America Corp. (“Nokia”).
`
`Neither Ericsson nor Nokia were involved in the preparation of this Petition, nor
`
`were any of the Petitioners involved in the preparation of the petitions in the ’1694
`
`IPR or the ’1641 IPR.
`
`C. Lead and Back-up Counsel and Service Information Under 37
`C.F.R. § 42.8(b)(3)
`
`Lead Counsel:
`
`Back-Up Counsel:
`
`Robert C. Hilton (Reg. No. 47,649)
`
`Email:
`rhilton@mcguirewoods.com;
`Sprint-IV4-IPRs@mcguirewoods.com
`
`Postal/Hand Delivery Address:
`MCGUIREWOODS LLP
`2000 McKinney Ave., Suite 1400
`Dallas, TX 75201
`
`Tel.: (214) 932-6400
`Fax.: (214) 932-6499
`
`1 Nextel Operations, Inc. (“Nextel”) is a named defendant in the district
`
`George B. Davis (Reg. No. 68,205)
`
`Email:
`gdavis@mcguirewoods.com;
`Sprint-IV4-IPRs@mcguirewoods.com
`
`Postal/Hand Delivery Address:
`MCGUIREWOODS LLP
`Gateway Plaza
`800 East Canal Street
`Richmond, VA 23219
`
`Tel.: (804) 775-1000
`
`court litigation. Nextel has merged with SprintCom, Inc., and no longer exists.
`
`3
`
`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`
`
`
`
`Fax.: (804) 775-2016
`
`
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service on Petitioner may be made by email, mail or hand delivery at the
`
`addresses shown above.
`
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by
`
`37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
`
`No. 23-1951. Any additional fees that might be due are also authorized.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’828 patent is satisfied.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ’828
`
`patent is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the claims of the ’828
`
`patent on the grounds identified herein.
`
`B. Claims for Which Review is Requested
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-23, 26-27, 29-30,
`
`4
`
`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`33-34, 36-37, and 40-41 of the ’828 patent and that the Board cancel the same as
`
`unpatentable.
`
`1. Statutory Grounds of Challenge
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the ’828 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`’828 patent (filed August 12, 2004):
`
`(1) U.S. Patent No. 6,600,772 to Zeira et al. (“Zeira,” attached as Ex.
`
`1004) entitled “Combined Closed Loop/Open Loop Power Control in a Time
`
`Division Duplex Communication System,” was filed March 21, 2000, and issued
`
`on July 29, 2003. Zeira is prior art under 35 U.S.C. § 102 (b).2 A PCT application
`
`corresponding to Zeira (WO 00/57574A2) was considered during the original
`
`prosecution of the ’828 patent, but was not substantively discussed in combination
`
`with the Krishnan and Khan references, as presented herein.
`
`(2) U.S. Patent No. 7,493,133 to Krishnan et al. (“Krishnan,” attached as
`
`Ex. 1005) entitled “Power Control in Ad-Hoc Wireless Networks,” was filed
`
`February 5, 2004, and issued on February 17, 2009. Krishnan is prior art under 35
`
`U.S.C. § 102(e). The published application corresponding to Krishnan (U.S.
`
`Patent Application Publication No. 2005/0176455) was cited by the examiner in
`
`
`2 All references to 35 U.S.C. §§ 102 and 103 are pre-AIA.
`
`5
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`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`the original prosecution, but not substantively discussed by the patentee or
`
`considered in combination with the Zeira and Khan references, as presented herein.
`
`(3) U.S. Patent Application Publication No. 2004/0190485 by Khan
`
`(“Khan,” attached as Ex. 1006) entitled “Method of Scheduling Grant
`
`Transmissions in a Wireless Communication System,” was filed March 24, 2003,
`
`and was published September 30, 2004. Khan is prior art under 35 U.S.C.
`
`§ 102(e). Khan is cited on the face of the ’828 patent, but was not substantively
`
`considered during the original prosecution of the ’828 patent.
`
`(4) U.S. Patent No. 6,334,047 to Andersson (“Andersson,” attached as
`
`Ex. 1007) entitled “Adaptive Power Control in a Mobile Radio Communications
`
`System,” was filed April 9, 1999, and issued on December 25, 2001. Andersson is
`
`prior art under 35 U.S.C. § 102 (b). Andersson was not cited or substantively
`
`considered in the original prosecution of the ’828 patent.
`
`The combination of Khan with Zeira and Krishnan raises novel arguments
`
`regarding the patentability of the ’828 patent that were not considered during the
`
`original prosecution. Although Khan was cited in an IDS by the applicant, it was
`
`not substantively considered during the original prosecution. Khan is particularly
`
`relevant in view of new limitations added by the patentee in the final set of claims
`
`that resulted in issuance following an unsuccessful appeal. (See Ex. 1008,
`
`Prosecution File History of U.S. Patent Application No. 10/917,968 (“’968
`
`6
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`

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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
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`Application”), 2014-04-30 Amendment at 2-12.) These limitations require
`
`receiving “on a single physical channel . . . an allocation of a scheduled uplink
`
`resource and a TPC command . . . .” (Id., 2014-04-30 Amendment at 2, 4, 5, 7, 9,
`
`11 (emphasis added); 2014-09-18 Response to Office Action at 14.)
`
`As detailed below, Khan discloses such a single physical channel that is used
`
`to transmit both “scheduling grants” and “TPC [commands]” (see, e.g., Ex. 1006,
`
`Khan, [0046] [0047]; see Section IX.A.4), and the ’828 patent would not have been
`
`issued had Khan been considered in combination with both Zeira and Krishnan. In
`
`view of Khan’s bearing on this limitation, and the examiner’s prior findings as to
`
`Zeira and Krishnan, the Board should decline to exercise its discretion under §
`
`325(d). See, e.g., Microsoft Corp. v. Parallel Networks Licensing, LLC, IPR2015-
`
`00483, Paper 10, at 14-15 (PTAB July 15, 2015) (instituting inter partes review
`
`where primary reference was previously cited in an IDS and initialed by the
`
`Examiner but “the reference was not applied against the claims and there is no
`
`evidence that the Examiner considered the particular disclosures cited by Microsoft
`
`in the Petition”); Digital Check Corp. v. E-Imagedata Corp., IPR2017-00178,
`
`Paper 6, at 12-13 (PTAB April 25, 2017) (instituting inter partes review where
`
`“there is no indication . . . that the Examiner rejected any claims based on either
`
`reference or that the Examiner or applicant substantively discussed either reference
`
`during prosecution”).
`
`7
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`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`The grounds of unpatentability presented in this petition are as follows:
`
`i. Ground #1: Claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-23, 26-
`
`27, 29-30, 33-34, 36-37, and 40-41 are rendered obvious under 35
`
`U.S.C. § 103 by Zeira in view of Krishnan and Khan;
`
`ii. Ground #2: Claims 2, 9, 16, 23, 30, and 37 are rendered obvious
`
`under 35 U.S.C. § 103 by Zeira in view of Krishnan, Khan, and
`
`Andersson.
`
`2. How the Construed Claims are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2)
`and Supporting Evidence Relied Upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 1-2, 5-6,
`
`8-9, 12-13, 15-16, 19-20, 22-23, 26-27, 29-30, 33-34, 36-37, and 40-41 of the ’828
`
`patent are unpatentable under the statutory grounds identified above, and of how
`
`Petitioner has at least a reasonable likelihood of prevailing on these grounds,
`
`including the identification of where each element of the claim is found in the prior
`
`art, are provided in Section IX. Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit
`
`numbers of the supporting evidence relied upon to support the challenges and the
`
`relevance of the evidence to the challenges raised, including identifying specific
`
`portions of the evidence that support the challenges, are provided in Section IX.
`
`V. BACKGROUND OF THE ’828 PATENT
`
`8
`
`

`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`A. Overview of the ’828 Patent
`
`The ’828 patent issued on November 25, 2014, from an application filed on
`
`August 12, 2004. The ’828 patent includes no claim of priority.3
`
`The ’828 patent is directed to an alleged improvement in power control in
`
`wireless networks. (Ex. 1001, ’828 patent, 1:12-15.) The patent explains that “[a]
`
`wireless communication system often employ[s] one of either an open loop scheme
`
`or closed loop scheme to control uplink transmit power of a mobile radio.” (Id.,
`
`1:41-43.) In an open loop scheme, a user equipment (UE), such as a mobile
`
`terminal/handset, receives a signal to noise-plus-interference (“SNIR”) target value
`
`from the network and attempts to maintain that SNIR value. (Id., 2:5-8.) The
`
`mobile handset “monitors the received strength of signals it receives to determine a
`
`power level at which it will transmit,” and may calculate such a transmit power
`
`based on a path loss estimate. (Id., 2:8-11, 6:6-10.) The patent notes that an open
`
`loop scheme is advantageous in reacting to fast channel fading, but slow to
`
`compensate for changes due to interference. (Id., 2:11-16; see also id., 7:23-45.)
`
`
`3 Petitioner reserves the right to challenge one or more claims of the ’828
`
`patent under 35 U.S.C. § 112, including the failure of the application’s
`
`specification to support the claims of the ’828 patent as issued.
`
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`
`In a closed loop scheme, “[a] received SNIR measurement is made by the
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`network on an uplink signal,” which is “compared within the network to the SNIR
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`Target value.” (Id., 2:17-21.) The network then attempts to match the SNIR
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`Target by “issuing transmit power control commands from the network to a UE,”
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`which “instruct the UE to increase or decrease its transmitted power by a
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`predetermined amount.” (Id., 2:21-25.) The UE accumulates transmit power
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`control (“TPC”) commands and adjusts its uplink transmit power based on the
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`accumulated commands. (Id., 7:16-18, Fig. 3.) The patent explains that a closed
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`loop scheme may be slow to compensate for fast channel fading, as it takes
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`numerous “single-dB-step commands” to cause the UE to transmit at the required
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`power level. (Id., 2:25-32; see also id., 7:46-56.) The ’828 patent purports to
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`overcome these disadvantages with a system and method in which “aspects of both
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`an open loop scheme and a closed loop scheme are strategically combined to form
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`a power control method.” (Id., 7:64-66.)
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`The ’828 patent specification also includes a single paragraph explaining
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`that “a new physical channel on the downlink may be used to carry fast allocation
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`and scheduling information to a user, thereby informing the UE of the uplink
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`resources that it may use” and that such a channel “could also be used as the
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`feedback channel for the combined power control scheme.” (Id., 12:44-51.)
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`Similarly, the patent mentions that a base station “may be implemented with a new
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`10
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`parameter, . . . [that] instructs a UE to enable or disable the setting of uplink
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`transmit power level based on both the path loss estimation and the TPC
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`commands. A parameter may indicate whether a UE is to use open loop power
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`control, closed loop power control or a combined scheme.” (Id., 12:57-65.) These
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`ancillary disclosures feature in the issued claims. (See, e.g., id., claim 1 (“receiving
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`. . . an indication of whether accumulation of transmit power control (TPC)
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`commands is enabled; . . . receiving, on a single physical channel . . . , an
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`allocation of a scheduled uplink resource and a TPC command”).)
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`As Petitioner’s expert declaration (Ex. 1002) explains, the ’828 patent does
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`nothing more than combine well-known techniques for power control in wireless
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`communications systems with known techniques for implementing such a system
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`(e.g., using a “single physical channel”) in a predictable way to achieve predictable
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`results. There is nothing new or inventive in the challenged claims.
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`B.
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`Prosecution History of the ’828 Patent
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`The ’968 application was filed on August 12, 2004, naming a single
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`inventor, Nicholas William Anderson. It was the subject of a lengthy prosecution,
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`including an unsuccessful appeal, after which all pending claims were cancelled.
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`(Ex. 1008, 2014-04-30 Amendment.)
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`The initially filed claims were rejected under § 102 as anticipated by WO
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`00/57574 by Zeira et al. (“Zeira PCT”), rendered obvious under § 103 by Zeira
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`PCT in view of U.S. Patent No. 6,983,166 to Shiu and by Zeira PCT in view of
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`U.S. Patent Application Publication No. 2003/0162093 by Bevan and U.S. Patent
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`No. 7,190,688 to Kamet. (Id. at 2007-07-02 Office Action.)
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`Applicant amended the independent claims, adding the requirement of
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`receiving “on a downlink channel an allocation of a scheduled uplink transmission
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`resource,” in addition to the recited TPC command. (Id. at 2007-12-28
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`Amendment.) The examiner rejected the amended claims as obvious in view of
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`Zeira PCT, combined with U.S. Patent Application Publication No. 2005/0025056
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`by Chen (“Chen”), and reiterated prior rejections. (Id. at 2008-08-01 Office
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`Action.) The examiner also rejected dependent claims directed to enabling or
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`disabling the accumulation of TPC commands, thereby enabling or disabling the
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`use of closed loop power control, based on Zeira PCT and Chen in combination
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`with U.S. Patent Application Publication No. 2005/0176455 by Krishnan
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`(“Krishnan ’455”). (Id. at 2008-08-01 Office Action at 17.)
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`The prosecution included rejections for lack of written description pursuant
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`to § 112, including limitations directed to: “calculating a transmit power level
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`associated with the scheduled uplink transmission resource based on . . . the
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`accumulated TPC command,” “instructing the remote transmitter to utilize only the
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`accumulated TPC commands when deriving the calculated transmit power level,
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`thereby disabling use of open loop power control and enabling the use of closed
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`12
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`loop power control only,” and “instructing the remote transmitter to disregard the
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`accumulated TPC commands when deriving the calculated transmit power level,
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`thereby enabling use of open loop power control and disabling the use of closed
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`loop power control.” (Id. at 2008-08-01 Office Action at 2-4.)
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`In response, Applicant added the requirement that the allocation of a
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`scheduled uplink transmission resource be received “on a shared physical channel
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`used to carry allocation and scheduling information from the base station to the
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`remote transceiver.” (Id. at 2008-12-23 Amendment at 2.) Responding to the §
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`112 rejection, Applicant stated that calculating a transmit power level based on a
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`path loss and “an accumulated TPC command” was supported by both its prior art
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`discussion of closed loop power control (Ex. 1009, ‘828 published application, ¶
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`0047)4 and disclosures of the alleged invention. (See Ex. 1008, 2008-12-23
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`Amendment at 7; Ex. 1009, ’828 published application at ¶¶ 0061, 0067, 0068,
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`0076.) Applicant further stated that support for dependent claims reciting
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`“instructing the remote transmitter to” either utilize or disregard “the accumulated
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`TPC commands,” was disclosed by the portion of the specification describing “a
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`4 Citations to the specification in this Response and in Responses and Office
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`Actions going forward use the paragraph numbering of the published application
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`(U.S. Patent Application Publication No. 2006/0035660).
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`13
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`

`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`new parameter [that] instructs a UE to enable or disable the setting of uplink
`
`transmit power level based on both the path loss estimation and the TPC
`
`commands. A parameter may indicate whether a UE is to use open loop power
`
`control, closed loop power control or a combined scheme.” (Ex. 1008, 2008-12-23
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`Amendment at 7 (citing Ex. 1009 at ¶ 0087).)
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`The examiner next rejected all claims based on Zeira PCT, Chen, and U.S.
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`Patent Application Publication No. 2001/0036823 by Van Lieshout (“Van
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`Lieshout”), noting Van Lieshout disclosed such a “shared physical channel.” (Ex.
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`1008, 2009-03-31 Office Action at 6.).) In rejecting pending claim 15 as obvious,
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`the examiner expressly noted that Zeira PCT discloses calculating transmit power
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`based on a path loss and “an accumulated TPC command.” (Id. at 2009-03-31
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`Office Action at 8; see Ex. 1004, Zeira at 4:17 – 5:8.) The examiner also rejected
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`dependent claims directed to enabling or disabling the accumulation of TPC
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`commands based on the combination of Zeira PCT, Chen, Van Lieshout, and
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`Krishnan ’455. (Ex. 1008, 2009-03-31 Office Action at 14-16.)
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`An additional Response and Office Action focused on the disclosures of Van
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`Lieshout in combination with Zeira PCT and Chen, (see id at 2009-09-30
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`Response; 2010-01-08 Office Action) which led to Applicant filing an appeal.
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`(See id. at 2010-12-03 Appeal Brief.) The Board affirmed the rejection, finding
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`U.S. Patent No. 8,897,828
`Petition for Inter Partes Review
`
`that Zeira PCT and Chen disclosed all limitations but a “shared physical channel”
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`and that Van Lieshout supplied the missing limitation. (Id., 2014-03-03 Decision.)
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`Following the Board decision, Applicant canceled all claims and added new
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`claims including limitations requiring receiving “on a single physical channel . . .
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`an allocation of a scheduled uplink resource and