Trials@uspto.gov
`571.272.7822
`
`
`Paper 8
`Entered: March 25, 2019
`
`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 IPR2018-01777
`Patent 9,532,330 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571.272.7822
`
`
`Paper 8
`Entered: March 25, 2019
`
`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 IPR2018-01777
`Patent 9,532,330 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Case IPR2018-01777
`Patent 9,532,330
`
`I. INTRODUCTION
`A. Background
`T-Mobile USA, Inc., T-Mobile US, Inc., Sprint Spectrum L.P., and
`SprintCom, Inc., (collectively “Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–3, 7–10, 14, 17–20, 24–27, 31, and 34
`(“challenged claims”) of U.S. Patent No. 9,532,330 B2 (Ex. 1001, “’330
`Patent”). Paper 1 (“Pet”). Intellectual Ventures II LLC (“Patent Owner”)
`timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An
`inter partes review may not be instituted unless it is determined that “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons provided below, we determine, based on the record
`before us, there is not a reasonable likelihood Petitioner would prevail in
`showing at least one of the challenged claims is unpatentable.
`
`B. Related Proceedings
`The parties represent that the ’330 Patent is at issue in Intellectual
`Ventures II LLC v. T-Mobile USA, Inc., No. 2:17-cv-00661 (E.D. Tex.) and
`Intellectual Ventures II LLC v. Sprint Spectrum LP, No. 2:17-cv-00662
`(E.D. Tex.). Pet. 3; Paper 5, 1. The parties also indicate that certain claims
`of the ’330 Patent are at issue in Case IPR2018-01666. See Pet. 3; Paper 5,
`2. Patent Owner indicates the ’330 Patent claims the benefit of U.S. Patent
`No. 8,682,357 (“’357 Patent”) which is the subject of Case IPR2018-01380,
`Case IPR2018-01175, and Case IPR2018-01775. Paper 5, 1–2.
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`C. The ’330 Patent (Ex. 1001)
`The ’330 Patent issued from Application No. 14/222,140 (“’140
`Application”) filed on March 21, 2014. See Ex. 1001 [21], [22]. The ’140
`Application was a continuation of Application No. 11/416,865 (“’865
`Application”), filed on May 2, 2006, now the ’357 Patent. See id. at [63],
`1:6–8. The ’330 Patent relates to establishing connectivity in a cellular
`communication system. See id. at 1:13–15.
`Figure 1 of the ’330 Patent is reproduced below.
`
`
`Figure 1 depicts an example of a cellular communication system including
`User Equipment (UE) domain comprising UE 110, Radio Access Network
`(RAN) domain comprising at least one base station (Node B) 112, and Core
`Network (CN) domain comprising CN 116, which includes access gateway
`(aGW) 118, coupled to external network 124. See Ex. 1001, 3:62–63, 4:50–
`5:2.
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`Figure 3 of the ’330 Patent is reproduced below.
`
`
`Figure 3 depicts an example of signaling flow in network-initiated
`connection establishment procedure. See Ex. 1001, 3:66–67, 5:27–29. Core
`network via aGW 118 transmits a paging message to the relevant Node B.
`See id. at 5:30–34. After receiving the paging message, Node B selects a
`cell-specific Radio Network Temporary Identifier (c-RNTI) and Shared
`Control Channel (SCCH) index, and forms the paging signal to be broadcast
`in a corresponding cell. See id. at 5:34–37. The paging signal broadcast in
`the cell includes the paging message (cause, UE identity) from core network,
`c-RNTI, SCCH index, and the allocated physical access resources for the
`uplink transmission (paging response). See id. at 5:37–40, 5:57–61.
`Figure 5 of the ’330 Patent is reproduced below.
`
`
`Figure 5 depicts the format of a paging signal broadcast in a cell where
`dedicated access resources are signaled to the UE. See Ex. 1001, 4:3–5.
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`After decoding the paging message, the UE sends a paging acknowledgment
`message, which may be combined with uplink synchronization information,
`to Node B 112, and is transmitted over a contention-based uplink channel
`such as a random access channel. See id. at 5:47–52. In the alternative, the
`paging acknowledgment signal is transmitted over the allocated dedicated
`physical access resource. See id. at 5:53–61. “Upon receipt of the paging
`acknowledgment from the UE, a shared channel connection is established
`between the RAN and the UE, and signaling and traffic will be transmitted
`over scheduled shared channel resources.” Id. at 6:7–10.
`D. Illustrative Claim
`Claims 2, 3, 7, and 8 depend claim 1, claims 10, 14, and 17 depend
`from independent claim 9, claims 19, 20, 24, and 25 depend from
`independent claim 18, and claims 27, 31, and 34 depend from independent
`claim 26.
`Claim 1 is illustrative and reproduced below:
`1. A network device comprising:
`circuitry configured to receive, from a core network, a paging
`message related to a user equipment (UE);
`a processor configured to send, on a control channel in a long-
`term evolution (LTE) network in response to reception of the
`paging message, a signal to indicate a page of the UE and the
`signal includes an indication of a shared channel for the UE
`to receive;
`wherein the signal is derived from a radio network temporary-
`identifier (RNTI); and
`the processor further configured to send a transmission to the UE
`on the indicated shared channel.
`Ex. 1001, 11:27–38.
`
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`E. Asserted Grounds of Unpatentability and Asserted Prior Art
`Petitioner challenges claims 1–3, 7–10, 14, 17–20, 24–27, 31, and 34
`as unpatentable under 35 U.S.C. § 103 over LG1 and Montojo2. Pet. 16, 32–
`67. The Petition also relies on the Declaration of Dr. Martin G. Walker
`(Ex. 1002).
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner asserts,
`a person of ordinary skill in the art [] in the field of the ’330
`Patent at the relevant time would have been someone with at least
`a Bachelor of Science in Electrical Engineering, Computer
`Engineering, or an equivalent field as well as at least three to four
`years of experience in wireless communications technology, or a
`Master’s degree in electrical engineering, computer engineering,
`or other equivalent degree.
`Pet. 14 (citing Ex. 1002 ¶ 16 (stating the same)). Petitioner’s declarant, Dr.
`Walker, testifies that his opinions and statements regarding the
`understanding of a person of ordinary skill in the art reflect the knowledge
`that existed before the May 2, 2006, earliest claimed priority date of the ’330
`Patent. See Ex. 1002 ¶ 17. Thus, the relevant time referenced by
`Petitioner’s definition is May 2, 2006.
`Patent Owner does not dispute Petitioner’s proposed definition of
`the level of ordinary skill in the art (see Prelim. Resp. 7–8), which appears
`
`
`1 Ex. 1011, U.S. Pat. No. 8,135,420 B2, issued March 13, 2012, filed
`January 5, 2007 (“LG”). Also referred to as “LG Patent” by the parties.
`2 Ex. 1009, U.S. Pat. No. 8,914,048 B2, issued Dec. 16, 2014, filed March 1,
`2007 (“Montojo” or “Montojo Patent”). Referred to as “Montojo Patent”
`by the parties.
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`to be consistent with the record before us. For these reasons, for the
`purpose of this Decision, we adopt Petitioner’s proposed definition of a
`person of ordinary skill in the art.
`
`B. Entitlement of Challenged Claims to May 2, 2006, Effective Filing Date
`As briefly mentioned above, the ’330 Patent issued from the ’140
`Application filed on March 21, 2014, which was a continuation of the ’865
`Application, filed on May 2, 2006, now the ’357 Patent. See Ex. 1001, [21],
`[22], [63], 1:6–8. Patent Owner asserts that the ’330 Patent is entitled to the
`May 2, 2006, earlier effective filing date of the ’357 Patent. See Prelim.
`Resp. 8, 8 n.1, 13 n.3. For the reasons below, and for the purpose of this
`Decision, we agree with Patent Owner that the claims of the ’330 Patent are
`entitled to the May 2, 2006, earlier effective filing date.
`Petitioner does not contest Patent Owner’s assertion that the ’330
`Patent is entitled to the May 2, 2006, earlier effective filing date. In fact,
`Petitioner asserts that the ’330 Patent has a priority date of May 2, 2006. See
`Pet. 1–2 (citing Ex. 1001, [063]). As shown by the record, Petitioner’s
`assertions regarding the prior art status of the LG Patent and Montojo are
`based on the premise that the challenged claims are entitled to the May 2,
`2006, earlier effective filing date. Specifically, Petitioner contends LG is
`prior art under 35 U.S.C. § 102(e) because “the LG Patent is entitled to a
`priority date of at least March 21, 2006, thereby antedating the priority date
`of the ’330 Patent.” Id. at 19; see id. at 17–25. Petitioner asserts Montojo is
`prior art under 35 U.S.C. § 102(e) because “the Montojo Patent is entitled to
`a priority date of April 28, 2006, before the priority date of the ’330 Patent.”
`Id. at 25; see id. at 25–32. Petitioner also makes numerous statements
`addressing what was known in the prior art as of the May 2, 2006, earlier
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`effective filing date. See id. at 2 (citing Ex. 1002 ¶¶ 23–36), 11 (citing Ex.
`1002 ¶¶ 41–44), 13–14 (citing Ex. 1009, 8:36–44; Ex. 1010, 11, Ex. 1011,
`6:48–56; Ex. 1012 ¶ 9; Ex. 1002 ¶¶ 26–33); 40 (citing Ex. 1016, 1).
`Moreover, we note that Petitioner asserts that the LG Patent and Montojo
`Patent are prior art under 35 U.S.C. § 102(e) (see Pet. 17, 25), which is the
`version of § 102 prior to the enactment of the Leahy-Smith America Invents
`Act (AIA). The AIA codified changes to § 102 that do not include
`subsection (e), and applies to patent applications having an effective filing
`date on or after March 16, 20133. Had Petitioner based its assertions that LG
`and Montojo are prior art based on the March 21, 2014, filing date of the
`’140 Application, Petitioner’s prior art assertions would have been based on
`the AIA version of § 102.
`
`For the foregoing reasons, and for the purpose of this Decision, we
`determine the challenged claims of the ’330 Patent are entitled to an
`effective filing date of May 2, 2006.
`C. Prior Art Status of Montojo
`Petitioner asserts the challenged claims are unpatentable under 35
`U.S.C. § 103 over LG and Montojo. Pet. 16, 32–67. Petitioner asserts
`Montojo is prior art under 35 U.S.C. § 102(e) because “the Montojo Patent
`is entitled to a priority date of April 28, 2006, before the priority date of the
`’330 Patent.” Id. at 25; see id. at 25–32. Patent Owner contends that
`
`
`3 Section 3(n)(1) establishes that the first inventor to file (“FITF”) provisions
`of the AIA “shall apply to any application for patent, and to any patent
`issuing thereon, that contains or contained at any time . . . a claim to a
`claimed invention that has an effective filing date as defined in section
`100(i) of title 35, United States Code, that is on or after the [March 16,
`2013] effective date . . . .” AIA § 3(n)(1), 125 Stat. at 293.
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`Petitioner fails to demonstrate that Montojo is prior art to the ’330 Patent
`under 35 U.S.C. § 102(e). See Prelim. Resp. 23–29
`1. Overview of Montojo (Ex. 1009)
`Montojo issued from Application No. 11/681,156 (“’156
`Application”) filed on March 1, 2007. See Ex. 1009, [21], [22]. The ’156
`Application claims priority to Provisional Application No. 60/795,675
`(“Montojo Provisional”) filed on April 28, 2006. See id. at [60], 1:4–7.
`Figure 7 of Montojo is reproduced below.
`
`
`
`Figure 7 depicts a paging procedure 700 that sends a page message from a
`specific cell. See Ex. 1009, 7:7–8. The serving cell and other cells in the
`paging area of a user equipment (UE) may send a paging indicator (Paging
`ind) and UE identification info (UE ID info) to the UE on the shared
`downlink control channel (SDCCH) in step 712. See id. at 7:8–13. The UE
`receives the paging indicator, and responds by performing random access
`and sending a transmission on the random access channel (RACH) in step
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`714. See id. at 7:13–16. The RACH transmission includes an
`acknowledgment (Paging ACK) for the paging indicator, channel quality
`information, and other information. See id. at 7:16–22. The serving cell
`responds to the RACH transmission by sending an assignment on the shared
`uplink assignment channel (SUACH) in step 716. See id. at 7:30–31. In the
`alternative, the UE may send channel quality information on the channel
`quality information channel (CQICH) in step 718. See id. at 7:39–42. “The
`serving cell may use the channel quality information for link adaptation and
`may select an MCS [(modulation and coding scheme)] and/or a transmit
`power level for transmission to the UE based on the received information.”
`Id. at 7:42–45. The serving cell sends control information on the SDCCH in
`step 720 and sends a page message on the DL-SDCH to the UE in step 722.
`See id. at 7:45–47. The UE may send channel quality information on the
`CQICH and/or an acknowledgment on the ACKCH for the page message in
`step 724. See id. at 7:51–53. The serving cell may send one or more
`retransmissions for the page message if needed in step 726. See id. at 7:53–
`56. The process of Figure 7 has several purportedly desirable features
`including that the page message may be sent in an efficient manner using
`features that are available for normal data transmission, e.g., HARQ and link
`adaptation. See id. at 7:57–66. More specifically, the page message may be
`sent with an MCS and/or at a transmit power level that may be selected
`based on the channel conditions of the UE instead of the worst-case channel
`condition for all UEs. See id. at 7:57–8:4.
`
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`Claim 10 of Montojo is reproduced below.
`10. A method comprising:
`sending a paging indicator on a shared control channel distinct
`from a paging indicator channel (PICH) to a user equipment
`(UE);
`receiving channel quality information from the UE;
`selecting a modulation and coding scheme or a transmit power
`based on the received channel quality information; and
`sending a page message on a shared data channel distinct from
`a paging channel (PCH) to the UE when an
`acknowledgement for the paging indicator is received from
`the UE using the selected modulation and coding scheme or
`selected transmit power.
`Ex. 1009, 13:35–47.
`
`
`2. Overview of Montojo Provisional (Ex. 1010)
`The Montojo Provisional was filed on April 28, 2006. Ex. 1009, [60];
`Ex. 1010, 1. As background, the Montojo Provisional discloses multiple-
`access systems capable of supporting communications with multiple users
`by sharing available system resources. See Ex. 1010 ¶ 1. The Montojo
`Provisional discloses code division multiple access (CDMA) systems, time
`division multiple access (TDMA) systems, frequency division multiple
`access (FDMA) systems, 3GPP LTE systems, and orthogonal frequency
`division multiple access (OFDMA) systems aa examples of multiple-access
`systems. See id. The Montojo Provisional discloses that the
`communications link between a terminal and base stations may be
`established via a multiple-in-multiple-out (MIMO) system. See id. ¶ 2. “A
`MIMO system employs multiple (NT) transmit antennas and multiple (NR)
`receive antennas for data transmission,” and “supports a time division
`duplex (TDD) and frequency division duplex (FDD) systems.” Id. ¶¶ 3–4.
`
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`A MIMO channel formed by the NT transmit NR receive antennas may be
`decomposed into NS independent spatial channels, each of which
`corresponds to a dimension. See id. ¶ 3. The Montojo Provisional discloses
`that the transmitting antennas of an access point (i.e., Node B) utilize
`beamforming in order to improve the signal-to-noise ratio of forward links
`(i.e., downlink) for the different access terminals (i.e., user equipment
`(UEs)). See id. ¶ 10, Fig. 1. “[A]n access point using beamforming to
`transmit to access terminals scattered randomly through its coverage causes
`less interference to access terminals in neighboring cells than an access point
`transmitting through a single antenna to all its access terminals.” Id. ¶ 10.
`Figure 2 of the Montojo Provisional is reproduced below.
`
`
`Figure 2 is a block diagram of an access point 210 and an access terminal
`250 in a MIMO system 200. See Ex. 1010 ¶ 12. Traffic data for a number
`of data streams is provided from data source 212 to transmit (TX) data
`processor 214. See id. “TX data processor 214 formats, codes, and
`interleaves the traffic data for each data stream based on a particular coding
`scheme selected for that data stream to provide coded data.” Id. ¶ 13. The
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`coded data for each data stream is multiplexed with pilot data using OFDM
`techniques, and then modulated based on a particular modulation scheme
`(e.g., BPSK, QSPK, M-PSK or M-QAM) selected for that data stream to
`provide modulation symbols. See id. ¶ 14. “The data rate, coding, and
`modulation for each data stream may be determined by instructions
`performed by processor 230.” Id. The modulation symbols for all data
`streams are provided to TX MIMO processor 220, and may further process
`the modulation symbols, and then provides NT modulation streams to NT
`transmitters (TMTR) 222a through 222t. See id. ¶ 15. “TX MIMO
`processor 220 applies beamforming weights to the symbols of the data
`streams and to the antenna from which the symbol is being transmitted.” Id.
`Each transmitter 222 receives and processes a respective symbol stream to
`provide one or more analog signals and further conditions the analog signals
`to provide a modulated signal for transmission over the MIMO channel. See
`id. ¶ 16.
`The transmitted modulated signals are received at receiver system 250
`by NR antennas 252a through 252r and are provided to respective receivers
`(RCVR) 254a through 254r, where the received signal is conditioned,
`digitized, and processed to provide corresponding received symbol streams.
`See Ex. 1010 ¶ 17. RX data processor 260 receives and processes the NR
`symbol streams from NR receivers 254 to provide NT detected symbol
`streams, and then demodulates, deinterleaves, and decodes each detected
`symbol stream to recover the traffic data for the data stream. See id. ¶ 18.
`Processor 270 periodically determines which pre-coding matrix to
`use, and formulates a reverse link message comprising various types of
`information regarding the communication link and the received data stream.
`
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`See Ex. 1010 ¶¶ 19–20. The reverse link message is processed by TX data
`processor 238, modulated by modulator 280, conditioned by transmitters
`254a through 254r, and transmitted back to transmitter system 210. See id.
`¶ 20. At transmitter system 210, the modulated signals from receiver system
`250 are received by antennas 224, conditioned by receivers 222,
`demodulated by demodulator 240, and processed by RX data processor 242
`to extract the reverse link message. See id. ¶ 21. “Processor 230 then
`determines which pre-coding matrix to use for determining the beamforming
`weights then processes the extracted message.” Id.
`The Montojo Provisional also discloses a proposed paging procedure.
`See Ex. 1010 ¶ 30.
`Figure 10 of the Montojo Provisional is reproduced below.
`
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`Figure 10 depicts a proposed paging procedure. Paging indicators are
`transmitted on a shared downlink control channel (SDCCH) from all cells in
`a UE’s paging area. See Ex. 1010 ¶¶ 30, 31. Upon reception the SDCCH,
`the UE whose LSB matched the signaled LSBs will perform random access
`that includes a channel quality indicator (CQI) and acknowledgment (ACK)
`of uplink physical (PHY) channels. See id. ¶ 31 (page 12). The cell
`receiving the UE’s RACH will reply with an uplink assignment channel
`(SUACH) containing the UE MAC ID, UL timing adjust, CQI, and ACK
`channel assignments. See id. Thereafter, “the UE may start the CQI
`transmission enabling . . . Closed loop link adaptation.” Id. (page 13). The
`UE’s serving cell will send the paging message over the DL-SDCH as a
`regular scheduled transmission that originates from a single cell, has closed-
`loop link adaptation enabled, and HARQ enabled. See id.
`3. Principles of Law
`“A reference patent is only entitled to claim the benefit of the filing
`date of its provisional application if the disclosure of the provisional
`application provides support for the claims in the reference patent in
`compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. National
`Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). Petitioner bears the
`burden to show a reference patent is entitled to the filing date of a
`provisional application. See id. at 1378.
`To be entitled to the benefit of the filing date of the provisional
`application, “the specification of the provisional must ‘contain a written
`description of the invention and the manner and process of making and using
`it, in such full, clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶ 1, to
`enable an ordinarily skilled artisan to practice the invention claimed in the
`
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`non-provisional application.” Dynamic Drinkware, 800 F.3d at 1378
`(quoting New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 1290,
`1294 (Fed. Cir. 2002) (emphasis omitted)). To comply with the written
`description requirement of § 112, the provisional “application itself must
`describe an invention, and do so in sufficient detail that one skilled in the art
`can clearly conclude that the inventor invented the claimed invention as of
`the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
`(Fed. Cir. 1997); see VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
`Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those
`skilled in the art that, as of the filing date sought, he or she was in possession
`of the invention[, which] is, for purposes of the ‘written description’ inquiry,
`whatever is now claimed.”). Possession of the invention is conveyed “by
`such descriptive means as words, structures, figures, diagrams, formulas,
`etc., that fully set forth the claimed invention[,] [a]lthough the exact terms
`need not be used in haec verba.” Lockwood, 107 F.3d at 1572. “[W]hatever
`the specific articulation, the test requires an objective inquiry into the four
`corners of the specification from the perspective of a person of ordinary skill
`in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc). As the Federal Circuit has explained,
`the patent specification is written for a person of skill in the art,
`and such a person comes to the patent with the knowledge of
`what has come before. . . . Placed in that context, it is
`unnecessary to spell out every detail of the invention in the
`specification; only enough must be included to convince a person
`of skill in the art that the inventor possessed the invention and to
`enable such a person to make and use the invention without
`undue experimentation.
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`LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir.
`2005). “Because the specification is viewed from the perspective of one of
`skill, in some circumstances, a patentee may rely on information that is ‘well
`known in the art’ for purposes of meeting the written description
`requirement.” Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353,
`1366 (Fed. Cir. 2011).
`
`4. Analysis
`Petitioner asserts the Montojo Provisional (Ex. 1010) provides
`sufficient disclosure for claim 10 of Montojo (Ex. 1009). See Pet. 25.
`Petitioner addresses each of the limitations of claim 10 (see id. at 25–32),
`however, our analysis focuses on the following limitation of claim 10:
`“selecting a modulation and coding scheme or a transmit power based on the
`received channel quality information.” Ex. 1009, 13:40–41
`Petitioner asserts that the Montojo Provisional discloses the
`aforementioned limitation of claim 10, because the Montojo Provisional
`“notes that the Node B in Fig. 10 will, in response to receiving CQI
`information, transmit the page ‘over the DL-SDCH exploiting link
`adaptation and H-ARQ.’” Pet. 29 (quoting Ex. 1010, 12; reproducing
`Ex. 1010 Fig. 10). Petitioner also contends, “in the Figure 10 embodiment
`the Node B can ‘send the Paging message over the DL-SDCH’ and that this
`transmission has ‘[c]losed-link adaptation enabled.’” Id. (quoting Ex. 1010,
`11–12). According to Petitioner, a person of ordinary skill in the art “would
`understand that use of closed-loop link adaptation selects ‘a transmit
`power.’” Id. at 30 (citing Ex. 1002 ¶ 99 (stating the same); Ex. 1009, 6:53–
`59). Petitioner concludes, “because the appropriate values for fine-tuning
`these power controls is determined by the CQI information sent from the
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`UE, the Montojo Provisional discloses this limitation.” Pet. 30 (citing Ex.
`1002 ¶ 99 (stating the same)).
`Patent Owner argues that Petition has not shown that the process in
`Montojo’s Provisional selects a transmit power based on the CQI, as
`required by the limitation of claim 10. See Prelim. Resp. 27. Patent Owner
`asserts that the Petition cites to the Montojo Patent, not the Montojo
`Provisional, to support its argument that use of a closed-loop link adaptation
`selects a transmit power. See id. Patent Owner points out that the Montojo
`Patent discloses: “[t]he serving cell may use the channel quality information
`received in step 620 for lin[k] adaptation and may select an MCS and/or a
`transmit power level based on the received information.” See id. (quoting
`Ex. 1009, 6:56–59); see also Ex. 1009, 7:42–45 (similar Patent disclosure).
`Patent Owner emphasizes that this disclosure is absent from the Montojo
`Provisional. See Prelim. Resp. 27. Patent Owner argues the Montojo
`Provisional merely discloses that the system uses closed-loop link
`adaptation, but “does not disclose adapting the transmit power ‘based on’ the
`CQI.” Id.
`We agree with Patent Owner’s arguments. Specifically, we are
`persuaded that Petitioner has not shown sufficiently that the Montojo
`Provisional itself describes the invention of clam 10 in sufficient detail, such
`that a person skilled in the art would have concluded that the inventor
`invented the invention of claim 10 as of the April 28, 2006, filing date. See
`Lockwood, 107 F.3d at 1572. Identical to the Petition, Dr. Walker’s
`declaration testimony cites the Montojo Patent to support his opinion that a
`person of ordinary skill in the art “would have understood that use of closed-
`loop link adaptation selects ‘a transmit power.’” Ex. 1002 ¶ 99. Although
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`“in some circumstances, a patentee may rely on information that is ‘well
`known in the art’ for purposes of meeting the written description
`requirement” (Boston Sci., 647 F.3d at 1366), Dr. Walker’s citation to the
`Montojo Patent itself is insufficient to show it was well-known to a person
`of ordinary skill in the art that the use of closed-loop link adaptation selects
`a transmit power. And, even if it was well-known, which we do not find, the
`Montojo Provisional merely discloses that the transmission of the paging
`message uses closed-loop link adaptation after channel quality information is
`received. See Ex. 1010 ¶ 31 (pages 12–13), Fig 10. Dr. Walker’s
`declaration testimony that “the appropriate values for fine-tuning these
`power controls is determined by the CQI information sent from the UE,”
`(Ex. 1002 ¶ 99 (emphasis added)) is not supported by the disclosure of the
`Montojo Provisional. See Ex. 1010 ¶ 31 (pages 12–13), Fig. 10. As pointed
`out by Patent Owner, the Montojo Provisional Application does not disclose
`that the closed-loop link adaptation is “based on” the channel quality
`information. See Prelim. Resp. 27.
`Petitioner also asserts, “the Montojo Provisional teaches that after
`CQI is received by the Node B, a ‘processor [at the Node B] determines
`which pre-coding matrix to use for determining the beamforming weights
`then processes the extracted message.’” Pet. 29 (quoting Ex. 1010 ¶ 21).
`According to Petitioner, a person of ordinary skill in the art “would
`understand that selection of beamforming weights is selection of ‘a
`modulation and coding scheme.’” Id. at 30 (citing Ex. 1002 ¶ 98 (stating the
`same)). Petitioner concludes, “[s]ince these beamforming weights are
`determined by the CQI information from the UE, the Montojo Provisional
`discloses this limitation.” Id. (citing Ex. 1002 ¶ 98 (stating same)).
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`Patent Owner argues that the Petition has not shown sufficiently that
`the Montojo Provisional provides written description support for claim 10
`because, “other than a single-sentence in Dr. Walker’s declaration, which
`parrots the Petition verbatim,” the Petition provides no evidence to support
`the argument that a person of ordinary skill in the art “would understand that
`selection of beamforming weights is selection of ‘a modulation and coding
`scheme.’” Prelim. Resp. 23. Patent Owner asserts that selecting
`beamforming weights is different from selecting a modulation and coding
`scheme. See id. at 24. According to Patent Owner, when the Montojo
`Provisional was filed, there were many types of modulation and coding
`schemes, including CDMA, COFDM, QAM, QSPK, S-CDMA, VSB. See
`id. (citing Ex. 2002, 1–7). Patent Owner directs attention to the Montojo
`Provisional disclosure stating the paging technique can be used with various
`communications systems such as CDMA, FDMA, TDMA, OFDMA, SC-
`FDMA, etc. See id. at 24–25 (citing Ex. 1009, 2:47–52). Patent Owner
`contends that the Montojo Provisional, when addressing beamforming,
`refers to something completely different. See id. at 25. According to Patent
`Owner, “[i]n contrast to selecting between modulation and coding schemes,
`Montojo’s provisional application uses a ‘multiple-in-multiple-out’ (MIMO)
`processor that uses beamforming to improve the signal-to-noise ratio
`between an access point and an access terminal.” Id. (citing Ex. 1010 ¶¶ 10,
`15, 21). Patent Owner asserts that the MIMO processor that applies
`beamforming weights is shown in Figure 2 of Montojo’s Provisional, but
`that Figure 2 does not appear in, and is not part of, the Montojo Patent. See
`id. According to Patent Owner, the terms “MIMO” and “beamforming” are
`not found in the Montojo Patent. See id. Patent Owner also argues that
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`Petitioner only alleges that the beamforming weights are selected after the
`Node B receives the CQI, but the Petition does not show where the Montojo
`Provisional discloses selecting beamforming weights “based on” the CQI.
`See id. at 26 (citing Pet. 29). Patent Owner asserts that the Montojo
`Provisional does not mention or reference CQI in the portions of the
`disclosure addressing selection of beamforming weights. See id. (citing Ex.
`1010 ¶¶ 15, 21).
`We agree with Patent Owner’s arguments. The Petition does not
`provide sufficient evidence to support a finding that the Montojo Provisional
`Application provides adequate written description support for “selecting a
`modulation and coding scheme . . . based on the received channel quality
`information.” Dr. Walker’s declaration testimony that a person of ordinary
`skill in the art “would understand that selection of beamforming weights is
`selection of ‘a modulation and
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