Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 11
`Filed: June 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., LG ELECTRONICS INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner.
`____________
`
`Case IPR2019-00222
`Patent 7,167,487 B2
`____________
`
`
`Before ROBERT J. WEINSCHENK, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 11
`Filed: June 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., LG ELECTRONICS INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner.
`____________
`
`Case IPR2019-00222
`Patent 7,167,487 B2
`____________
`
`
`Before ROBERT J. WEINSCHENK, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2019-00222
`Patent 7,167,487 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Apple Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. (“Petitioner”)1 filed a Petition requesting
`inter partes review of claims 1–6 (“the challenged claims”) of U.S. Patent
`No. 7,167,487 B2 (Ex. 1001, “the ’487 patent”). Paper 5 (“Pet.”), 1. Uniloc
`2017 LLC (“Patent Owner”), filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). We have authority under 35 U.S.C. § 314. Upon
`consideration of the Petition and Preliminary Response, we are persuaded
`that Petitioner has demonstrated a reasonable likelihood that it would prevail
`in showing the unpatentability of at least one challenged claim of the ’487
`patent. Accordingly, we institute inter partes review of all challenged
`claims on all grounds raised.
`B. Related Matters
`Petitioner and Patent Owner identify various matters between Uniloc
`USA, Inc. or Uniloc 2017 LLC, and Apple, Inc., Blackberry Corp., HTC
`America, Inc., Huawei Device USA, Inc., LG Electronics USA, Inc.,
`Microsoft Corp., Motorola Mobility, LLC, Samsung Electronics America,
`Inc., or ZTE (USA), in various Federal District Courts, including District
`Courts for the Eastern, Western, and Northern Districts of Texas, the Central
`and Northern Districts of California, the District of Delaware, and the
`Western District of Washington, as matters that can affect or be affected by
`this proceeding. See Pet. 76; Paper 7, 2.
`
`
`1 Petitioner identifies LG Electronics U.S.A., Inc. and LG Electronics
`Mobilecomm U.S.A. Inc. as real parties-in-interest. Pet. 76.
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`C. Evidence Relied Upon2
`
`References
`MAC protocol specification (Release 1999),
`3rd Generation Partnership Project, 3GPP TS
`25.321 V3.6.0 (2000–12) (“TS 25.321”).
`Corrections to logical channel priorities in
`MAC protocol, 3rd Generation Partnership
`Project, 3GPP TSG-RAN WG2 Meeting #18
`(“R2-010182”).
`Services provided by the physical layer
`(Release 1999), 3rd Generation Partnership
`Project, 3GPP TS 25.302 V3.6.0 (2000–09)
`(“TS 25.302”).
`Peisa
`
`US 6,850,540 B1
`
`
`
`Effective Date3
`
`Exhibit
`
`Dec. 10, 2000
`
`1007
`
`Jan. 23, 2001
`
`1008
`
`Oct. 16, 2000
`
`1009
`
`Feb. 25, 20004
`
`1013
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following ground of unpatentability:
`Reference(s)
`Basis
`Claims Challenged
`TS 25.321, TS 25.302, and R2-
`§ 103(a)
`1–6
`010182
`Peisa
`§ 103(a)
`1, 2
`Peisa and TS 25.302
`§ 103(a)
`4–6
`
`
`2 Petitioner also relies upon the Declarations of R. Michael Buehrer, Ph.D.,
`FIEEE (Ex. 1002) and Craig Bishop (Ex. 1006).
`3 Petitioner relies upon the Bishop Declaration to establish the public
`availability of TS 25.302, TS 25.321, and R2-010182, and their respective
`publication dates. See Pet. 9–10, 12, 15.
`4 Petitioner relies on the U.S. filing date of Peisa to establish its availability
`as prior art under 35 U.S.C. § 102(e). See Pet. 17.
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`II. ANALYSIS
`
`A. The ’487 Patent
`The ’487 patent “relates to a network with a first plurality of logic
`channels with which is associated a second plurality of transport channels
`. . . for the transmission of transport blocks formed from packet units of the
`logic channels.” Ex. 1001, 1:4–8. According to the ’487 patent, “[s]uch a
`network is known from the 3rd Generation Partnership Project (3GPP);
`Technical Specification Group (TSG) RAN; Working Group 2 (WG2);
`Radio Interface Protocol Architecture; TS 25.302 V3.6.0.” Id. at 1:9–12.
`The ’487 patent describes the 3GPP network architecture disclosed in
`TS 25.302 V3.6.0 as follows:
`A physical layer offers transport channels or
`transport links to the MAC [Media Access Control]
`layer. The MAC layer makes logic channels or logic
`links available to an RLC layer (RLC=Radio Link
`Control). The packet units formed in the RLC layer
`are packed in transport blocks in the MAC layer,
`which blocks are transmitted from the physical
`layer through physical channels to a terminal, or the
`other way about, by the radio network control.
`Apart from such a multiplex or demultiplex
`function, the MAC layer also has the function of
`selecting suitable transport format combinations
`(TFC). A transport format combination represents a
`combination of transport formats for each transport
`channel. The
`transport
`format combination
`describes inter alia how the transport channels are
`multiplexed into a physical channel in the physical
`layer.
`Id. at 1:14–28. This architecture is illustrated in in Figure 2 of the ’487
`patent, which is reproduced below.
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`Figure 2 is a “layer model” illustrating the various functions of a terminal or
`radio network control in a 3GPP wireless network. Id. at 4:63–64, 6:9–16.
`The “layer model” includes a physical layer (PHY), a data connection layer
`(MAC and RLC), and a radio resource control layer (RRC). Id. at 6:16–19.
`The RRC layer is responsible for signaling between a wireless terminal and
`a base station’s radio network controller (RNC), and “controls the layers
`MAC and PHY via control lines 10 and 11.” Id. at 6:22–27. The RLC layer
`receives data in the form of packet units from application channels 14. Id. at
`6:32–35. The MAC layer makes logic channels 13 available to the RLC
`layer. Id. at 6:30–32. The PHY layer makes transport channels 12 available
`to the MAC layer. Id. at 6:29–30.
`The MAC layer packs RLC layer packet units into transport blocks
`that are transmitted from a base station’s radio network controller to a
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`mobile terminal, or vice versa, through a radio channel. Id. at 6:34–37. It
`does so by selecting a suitable transport format combination from a set of
`transport format combinations. Id. at 6:37–40. Each transport format
`combination describes “how the transport channels are multiplexed into a
`physical channel in the physical layer (time multiplex).” Id. at 6:42–45.
`The MAC layer selection is performed by a selection algorithm that can be
`implemented in hardware or software, and in a mobile station or radio
`network controller. Id. at 7:43–47. The selection algorithm selects a
`transport format combination based on MAC logic channel priorities
`(MLPs), RLC layer data buffer occupancies (BOs), and transport channel
`transmission time intervals (TTIs). Id. at 7:15–22.
`The ’487 patent is directed toward “an optimized selection process for
`selecting a suitable transport format combination.” Id. at 1:29–31. The
`optimized selection process integrates into the MAC selection algorithm “the
`condition that a minimum bit rate can be guaranteed suitable for the
`respective logic channels.” Id. at 1:61–65.
`B. Illustrative Claims
`Of the challenged claims, claim 1 of the ’487 patent is independent,
`and each of claims 2–6 depend from it, either directly or indirectly. Claim 1
`is reproduced below.
`1. A network with a first plurality of logic channels
`with which is associated a second plurality of
`transport channels, which transport channels arc
`provided for transmitting transport blocks formed
`from packet units of the logic channels, wherein a
`plurality of valid transport format combinations is
`allocated to the transport channels, which
`combinations indicate the transport blocks provided
`for transmission on each transport channel, wherein a
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`selection algorithm is provided for selecting the
`transport format combinations, and wherein the
`selection algorithm uses a minimum bit rate criteria
`applicable to the respective logic channel.
`Ex. 1001, 14:40–50.
`
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, claim terms
`of an unexpired patent are given their broadest reasonable interpretation in
`light of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); 83 Fed. Reg. 51,340. Under the broadest reasonable
`interpretation standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Only claim terms which are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Neither Petitioner nor Patent Owner propose any construction for any
`claim term. See Pet. 20–21; Prelim. Resp. 19. Rather, both parties agree
`that no claim term requires express construction, and that all terms should be
`understood to have their broadest reasonable interpretation in light of the
`specification. Pet. 20–21; Prelim. Resp. 19. We agree. Accordingly, for
`purposes of this Decision, we decline to expressly construe any claim term.
`D. Overview of the Prior Art
`1. TS 25.321
`TS 25.321 is a specification of the UMTS (Universal Mobile
`Telephone System) MAC layer protocol. Ex. 1007, 6. The specification
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`describes, inter alia, the architecture, channel structure, functions, protocol
`data units (PDUs), formats, and parameters of the MAC layer. Id. The
`channel structure includes transport channels between the MAC layer and
`Layer 1 (e.g., Forward Access Channel or FACH), and logical channels
`between the MAC and RLC layers (e.g., Broadcast Control Channel or
`BCCH). Id. at 15–16. The MAC layer functions include mapping logical
`channels to transport channels, selecting transport formats for each transport
`channel, handling data flow priorities, and multiplexing (demultiplexing)
`PDUs from higher protocol layers into (from) transport blocks delivered to
`(received from) physical layer transport channels. Id. at 17–18.
`The MAC architecture for a mobile terminal or user equipment (UE)
`is illustrated in Figure 4.2.3.1.1 of TS 25.321, which is reproduced below.
`
`
`Figure 4.2.3.1.1 of TS 25.321 is a schematic illustration of the MAC layer
`on the UE side of the network. Id. at 11. The figure illustrates the mapping
`of logical channels (e.g., BCCH) to transport channels (e.g., FACH), which
`“depends on the multiplexing that is configured by RRC.” Id. at 9. In
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`particular, RRC maps logical channels to transport channels by generating a
`set of transport format combinations (TFCs), and the MAC layer selects one
`of these TFCs to fit PDUs from the RLC layer into available transport blocks
`on the transport channels. Id. at 9–10.
`
`TS 25.321 discloses another function of the MAC layer—handling
`different priorities for different UE data flows. Id. at 17. In particular, the
`RRC assigns a priority value—MLP or MAC Logical channel Priority—
`between 1 and 8 for each logical channel, and the MAC layer selects a TFC
`“according to the priorities between logical channels indicated by RRC.” Id.
`at 30, 38. The logical channel priorities are absolute, allowing the MAC to
`“maximize the transmission of high priority data.” Id.
`In addition to disclosing the UE MAC layer architecture and
`functionality, TS 25.321 discloses the RNC (Radio Network Controller)
`MAC layer architecture and functionality, which exists on the UTRAN
`(UMTS Terrestrial Radio Access Network) side of the network. See id. at
`12–15. The RNC MAC layer architecture and functionality is “similar to the
`UE case with the exception that there will be one MAC-d for each UE and
`each UE (MAC-d) that is associated with a particular cell may be associated
`with that cell’s MAC-c/sh.” Id. at 12. Moreover, the “MAC-c/sh is located
`in the controlling RNC while MAC-d is located in the serving RNC.” Id.
`2. R2-010182
`R2-010182 is a proposal for “[c]orrections to logical channel priorities
`in MAC protocol.” Ex. 1008, 1. Specifically, R2-010182 is a change
`request that proposes a modification to TS 25.321 affecting both the UE and
`RAN. Id. at 4. R2-010182 introduces “new parameters to characterise [sic]
`MAC logical channels for TFC selection,” and modifies the TFC selection
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`algorithm “to take into account these new parameters.” Id. Newly
`introduced parameters, MinGBr, MaxBr, and TW “complete the current
`MLP for representing logical channel priorities.” Id. at 1.
`R2-010182 identifies a number of problems with “the current
`algorithm proposed for TFC selection in MAC . . . because of its absolute
`priority scheme.” Id. One identified problem was the absolute priority
`algorithm’s inability to accurately characterize the quality of service needed
`by “all the applications foreseen in UMTS” because “[t]here is only one way
`to represent the quality of service at logical channel level (MLP).” Id.
`Another problem was the systematic way the algorithm prevented low
`priority logical channels from transmitting data on transport channels
`because “[l]ogical channels of higher MLP [lower priority] can never
`preempt lower MLP [higher priority] logical channels.” Id. at 2.
`R2-010182 proposed introducing three “new parameters completing
`MLP to express accurately the needs of different applications in term[s] of
`bit rate.” Id. The new parameters are “TW” representing “the time period
`on which the allocated bit rate for the logical channel is estimated” based on
`a number of previous TTI (transmission time intervals); “MinGBr”
`representing the minimum guaranteed bit rate or “basic needs of the logical
`channel,” and “MaxBr” representing “the nominal needs of the logical
`channel.” Id.
`R2-010182 assigns separate values for the parameters MLP, TW,
`MinGBr, and MaxBr characterizing logical channels in the proposed TFC
`selection algorithm. This is shown in the table provided on page 2 of R2-
`010182, which is reproduced below.
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`The Table shows how separate values of MLP, TW, MinGBr, and MaxBr
`are assigned to logical channels LC1 and LC2. In particular, logical channel
`LC1 is assigned a priority (MLP) of 1, a minimum guaranteed bit rate
`(MinGBr) of 100 bits/TW measured over a time window (TW) of 3 TTI, and
`a maximum bit rate (MaxBr) of 200 bits/TW measured over the 3 TTI time
`window. Id. It also shows that logical channel LC2 is assigned a priority
`(MLP) of 2, a minimum guaranteed bit rate (MinGBr) of 100 bits/TW
`measured over a time window (TW) of 4 TTI, and a maximum bit rate
`(MaxBr) of 200 bits/TW measured over the 4 TTI time window. Id.
`The proposed algorithm tries “to reach the MinGBr for each logical
`channel in . . . descending order of priority,” and upon achieving that goal
`tries “to reach the MaxBr for each logical channel in . . . descending order of
`priority,” and upon achieving that goal tries “to serve the logical channels
`which still have remaining data (best effort), still in . . . descending order of
`priority.” Id.
`3. TS 25.302
`TS 25.302 is “a technical specification of the services provided by the
`physical layer of UTRA [UMTS Terrestrial Radio Access] to upper layers.”
`Ex. 1009, 7. TS 25.302 discloses that “[t]he physical layer offers data
`transport services to higher layers . . . . through the use of transport channels
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`via the MAC sub-layer.” Id. at 10. The physical layer operates “according
`to the L1 radio frame timing,” and the timing of transport blocks or “the data
`accepted by the physical layer to be jointly encoded . . . . is then tied exactly
`to this L1 frame timing.” Id.
`TS 25.302 discloses that transport blocks are transmitted as transport
`block sets “exchanged between L1 and MAC at the same time instance using
`the same transport channel.” Id. at 17. Transport block sets are “transferred
`by the physical layer on the radio interface” over a transmission time
`interval (TTI) that is “defined as the inter-arrival time of Transport Block
`Sets,” and that is “always a multiple of the minimum interleaving period
`(e.g., 10ms, the length of one Radio Frame).” Id. This is illustrated in
`Figure 6 of TS 25.302, which is reproduced below.
`
`
`Figure 6 of TS 25.302 is a schematic illustration of “an example where
`Transport Block Sets, at certain time instances, are exchanged between
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`MAC and L1 via three parallel transport channels [DCH1–DCH3].” Id.
`“Each Transport Block Set consists of a number of Transport Blocks,” over
`a transmission time interval or “the time between consecutive deliveries of
`data between MAC and L1.” Id.
`TS 25.302 defines a transport format as “a format offered by L1 to
`MAC (and vice versa) for the delivery of a Transport Block Set during a
`Transmission Time Interval on a Transport Channel.” Id. at 18. TS 25.302
`also defines a number of terms that are used to explain how the MAC layer
`selects a transport format to deliver a transport block set on a transport
`channel. First, a transport format set “is defined as the set of Transport
`Formats associated to a Transport Channel.” Id. Next, a transport format
`combination “is defined as an authori[z]ed combination of the combination
`of currently valid Transport Formats that can be submitted simultaneously to
`the layer 1 for transmission on a Coded Composite Transport Channel.” Id.
`at 19. Lastly, a transport format combination set “is defined as a set of
`Transport Format Combinations on a Coded Composite Transport Channel.”
`Id. TS 25.302 discloses:
`The Transport Format Combination Set is what is
`given to MAC for control. However, the assignment
`of the Transport Format Combination Set is done by
`L3. When mapping data onto L1, MAC chooses
`between
`the
`different Transport
`Format
`Combinations given in the Transport Format
`Combination Set.
`
`Id.
`
`4. Peisa
`Peisa discloses a UMTS network that includes a number of RNCs and
`a number of UEs, such as mobile terminals. Ex. 1013, 1:66–2:16. “User
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`and signaling data may be carried between an RNC 140 and a UE 110 using
`Radio Access Bearers (RABs).” Id. at 4:28–30. UEs may be “allocated one
`or more RABs, each of which is capable of carrying a flow of user or
`signaling data,” and is “mapped onto respective logical channels.” Id. at
`4:31–34. A MAC layer includes “a set of logical channels [that are] mapped
`in turn onto a transport channel.” Id. at 4:34–36. The transport channels are
`in turn “mapped at the physical layer onto a [physical channel] for
`transmission over the air interface.” Id. at 4:43–47.
`Peisa discloses its UMTS layer 2 or MAC protocol layer in Figure 3,
`which is reproduced below.
`
`
`Figure 3 of Peisa “illustrates a simplified UMTS layer 2 protocol structure
`which is involved in the communication between mobile stations . . . or
`more broadly UEs 110, and Radio Network Controllers (RNCs) 140.” Id. at
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`6:31–37. The protocol structure “includes a set of Radio Access Bearers
`(RABs) 305 that make available radio resources (and services) to user
`applications.” Id. at 6:41–44. Data flowing from RABs 305 “are passed to
`respective Radio Link Control (RLC) entities 310 . . . [that] buffer the
`received data,” and map RABs 305 “onto respective logical channels 315.”
`Id. at 6:45–50. MAC 320 “receives data transmitted in the logical channels
`315 and further maps the data from the logical channels 315 onto a set of
`transport channels 325.” Id. at 6:50–54. “The transport channels 325 are
`finally mapped to a single physical transport channel 330, which has a total
`bandwidth . . . allocated to it by the network.” Id. at 6:54–57.
`Although MAC 320 “performs scheduling of outgoing data packets”
`that are buffered by RLC 310, a Radio Resource Controller (RRC) “sets a
`limit on the maximum amount of data that can be transmitted from each flow
`by assigning a set of allowed Transport Format Combinations” to MAC 320.
`Id. at 10:19–25. A Transport Format Combination is a set of “all possible
`TFs [transport formats] for a given transport channel.” Id. at 7:17–20. RRC
`335 defines the set of all possible TFs for a transport channel in terms of TB
`(Transport Block) sizes and TBS (Transport Block Set) sizes. Id. at 7:2–13.
`The TB size “tells the MAC entity what packet sizes it can use to transport
`data to the physical layer,” and the TBS size tells the MAC entity “the total
`number of bits [it] can transmit to the physical layer in a single transmission
`time interval (TTI).” Id. at 7:4–11. MAC 320 “independently decide[s] how
`much data is transmitted from each flow by choosing the best available
`Transport Format Combination (TFC) from the TFCS.” Id. at 10:25–28.
`Peisa discloses a number of algorithms by which MAC 320 selects the
`best available TFC from a set of TFCs to schedule data transmissions. For
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`example, Figure 4 is a “method in flowchart form for allocating bandwidth
`resources to data flow streams between entities in the exemplary second
`layer architecture of FIG. 3.” Id. at 3:51–54. Figures 6 and 8 are similarly
`“method[s] in flowchart form for scheduling data flows.” Id. at 3:55–57,
`3:61–63. Figure 8 of Peisa is reproduced below.
`
`
`Figure 8 is an illustration of “the scheduling process in the MAC layer
`[that] includes the selection of a TFC from a TFCS using a two-step scoring
`process.” Id. at 18:29–34. At step 805, “several parameters are obtained for
`each logical channel.” Id. at 18:35–36, Fig. 8. For example, “[t]he QoS
`Class for each logical channel may be obtained from the corresponding RAB
`parameter,” and “[t]he Guaranteed Rate for each logical channel may also be
`obtained from the corresponding RAB parameter.” Id. at 18:36–43. At step
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`810, a logical channel score and a logical channel bonus score are calculated
`for each logical channel. Id. at 18:60–67, Fig. 8. At step 815, a score is
`calculated by summing all of the logical channel scores, and a bonus score is
`calculated by summing all of the logical channel bonus scores for each TFC
`in the TFCS. Id. at 19:1–6, Fig. 8. At step 820, the MAC selects the TFC
`with the largest score, or the TFC with the largest bonus score if two or more
`TFCs have the same score. Id. at 19:7–10, Fig. 8. This algorithm “ensures
`that if there is a TFC that transmits at least the guaranteed rate for each flow,
`then that TFC is chosen.” Id. at 19:10–13.
`E. Level of Ordinary Skill in the Art
`Petitioner does not expressly define the qualifications of a person of
`ordinary skill in the art in the Petition itself. Rather, Petitioner cites to
`paragraphs 24 through 26 of the Buehrer Declaration for such a definition.
`Pet. 14 n.3 (citing Ex. 1002 ¶¶ 24–26). According to Dr. Buehrer, a
`POSITA would have had “a Bachelor’s Degree (or higher degree) in an
`academic area emphasizing telecommunications systems with two or more
`years of work experience in telecommunications systems” or would have
`had “at least a Master of Science Degree in an academic area emphasizing
`telecommunications systems, or an equivalent field (or a similar technical
`Master’s Degree, or higher degree) with a concentration in
`telecommunications systems.” Ex. 1002 ¶ 25.
`Patent Owner does not dispute Dr. Buehrer’s definition of the level of
`ordinary skill in the art, and does not offer an alternative definition. Prelim.
`Resp. 15. However, Patent Owner argues the Petition should be denied
`because Petitioner has failed to expressly define the level of skill in the art in
`the Petition itself or to adopt Dr. Buehrer’s definition of such a person. Id.
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`We are not persuaded by Patent Owner’s argument. “[T]he level of
`skill in the art is a prism or lens through which a judge, jury, or the Board
`views the prior art and the claimed invention.” Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). Although the Petition does not expressly
`set forth the level of skill in the art, Petitioner cites to Dr. Buehrer’s
`declaration when first referring to a person of ordinary skill in the art, and
`Dr. Buehrer sets forth the qualifications of such a person. See Pet. 14 (citing
`Ex. 1002 ¶ 25). Although it is preferable to specify the level of skill in the
`art in the Petition itself, failure to do so is not necessarily fatal, especially
`where “the prior art itself reflects an appropriate level and a need for
`testimony is not shown.” Okajima 261 F.3d at 1355. As noted above,
`Patent Owner does not dispute Dr. Buehrer’s opinion regarding the level of
`skill in the art, and does not offer a competing definition.
`Accordingly, at this stage of the proceeding, we adopt the definition
`of a person of ordinary skill in the art set forth in paragraph 25 of the
`Buehrer declaration, and decline to deny the Petition because Petitioner did
`not expressly set forth that definition in the Petition itself.
`F. Preliminary Challenges to Institution
`1. Constitutionality of Inter Partes Review
`Patent Owner challenges the Board’s jurisdiction to conduct inter
`partes review of the ’487 patent because “the Board’s appointments of
`administrative patent judges violate the Appointments Clause of Article II”
`of the U.S. Constitution. Prelim. Resp. 33. We decline to address the merits
`of this constitutional challenge because “administrative agencies do not have
`jurisdiction to decide the constitutionality of congressional enactments.”
`Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569
`
`18
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`IPR2019-00222
`Patent 7,167,487 B2
`
`(Fed. Cir. 1995). This is especially true when, as here, “the constitutional
`claim asks the agency to act contrary to its statutory charter.” Id.
`2. Multiplicity of Challenges
`Patent Owner argues we should deny institution because Petitioner
`“redundantly challenges Claims 1–6 of the ’487 Patent without providing
`any alleged justification for such inefficient redundancies.” Prelim. Resp.
`15. Patent Owner argues that by presenting redundant grounds, Petitioner is
`obligated to provide “a bi-directional explanation of the relative strengths
`and weaknesses of each redundantly offered ground.” Id. at 17. Because
`Petitioner did not do so, Patent Owner argues, “the Board need not and
`should not consider the merits of the redundant challenges” because they
`“place a significant burden on both the Board and the patent owner, causing
`unnecessary delay, compounding costs to all parties involved, and
`compromising the ability to complete review within the statutory deadline.”
`Id. at 16, 18.
`Although the Board has discretion to deny institution of inter partes
`review, we decline to do so based on the facts presented here. The Petition
`challenges each of claims 1, 2, and 4–6 on two separate grounds that rely on
`Peisa or TS 25.321 as the principal reference. Pet. 4. Under these facts, we
`disagree that the Petition places undue burden on the Patent Owner or Board,
`or obligates Petitioner to explain why alternative grounds of obviousness are
`presented.
`Accordingly, on this record, we decline to exercise our discretion to
`deny institution of inter partes review.
`
`19
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`3. Reliance on Previously Considered Prior Art
`The Director has discretion to institute inter partes review, and has
`delegated that discretion to the Board. See 35 U.S.C. § 314(a); see also 37
`C.F.R. §42.4(a). The Board may consider and weigh several factors when
`considering whether to institute inter partes review, including those set forth
`in 35 U.S.C. § 325(d). See Gen. Plastic Indus. Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, slip op. at 18–19 (PTAB Sept. 6, 2017) (Paper 19)
`(precedential). Under 35 U.S.C. § 325(d), the Director may “reject [a]
`petition . . . because [] the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`Petitioner challenges claims 1 and 2 as obvious over Peisa, and claims
`4–6 as obvious over Peisa and TS 25.302. Pet. 4. During prosecution of the
`application that issued as the ’487 patent, the Examiner rejected pending
`claim 1 as anticipated by Peisa. Ex. 1004, 33. Pending claim 1 recited a
`selection algorithm for selecting a transport format combination, and
`required the selection to be “carried out while maintaining a minimum bit
`rate applicable to [a] respective logic channel.” Id. at 77. The Examiner
`cited Peisa at column 9, lines 15–19 and column 10, lines 1–12 for
`disclosing this limitation, finding “the claimed minimum bit rate is inherent
`in the transport format combination.” Id. at 33.
`In response, the applicant disagreed that “the claimed minimum bit
`rate is inherent in the transport format combinations,” and argued that the
`cited portions of Peisa instead teach “how the Peisa system accounts for a
`backlog situation.” Id. at 29. The applicant also amended claim 1 to require
`“the selection algorithm uses a minimum bit rate criteria applicable to the
`respective logic channel,” and argued that “Peisa does not teach to use a
`
`20
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`
`minimum bit rate criteria as a factor in the selection of the TFC as recited in
`the amended claims.” Id. at 23, 29 (emphasis added). The Examiner
`accepted these arguments and allowed amended claim 1 to issue, finding
`“the prior art of record does not teach wherein the selection algorithm uses a
`minimum bit rate criteria applicable to the respective logic channel.” Id. at
`10–11.
`Petitioner acknowledges this prosecution history, but argues “different
`portions of Peisa are considered in this Petition, which, alone or in
`combination with other references, clearly render the ’487 Patent claims
`obvious.” Pet. 17–18. Petitioner further argues that the prosecution history
`“does not indicate that the Examiner considered the portions of Peisa cited in
`this Petition, which are more relevant to the purportedly novel features of the
`’487 patent than that cited and considered during original prosecution.” Id.
`at 18.
`Patent Owner argues we should deny the Petition because “Petitioner
`provides no reasonable justification to second-guess the Examiner,” and has
`cited no evidence “that the Examiner didn’t consider other portions of Peisa
`that [Petitioner] now cites.” Prelim. Resp. 28–29. Patent Owner further
`argues that the prosecution history “indicates that the Examiner affirmatively
`did consider Peisa in its entirety” because the Examiner’s rejection of
`pending claim 1 cited “six of the seventeen columns of Peisa’s detailed
`description.” Id. at 29–30. Patent Owner, therefore, argues the first three
`Becton Dickinson5 factors weigh against granting the Petition. Id. at 30–31.
`
`
`5 Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-
`01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative). We
`note the Becton, Dickenson factors have been adopted and applied in NHK
`21
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`
`In Becton Dickinson, the Board identified six non-exclusive factors
`that are considered when deciding whether to exercise discretion to deny
`review under 35 U.S.C. § 325(d). These are: (a) the similarities and material
`differences between the currently and previously asserted prior art; (b) the
`cumulative nature of the currently asserted prior art; (c) the extent to which
`the currently asserted prior art was previously considered, and whether it
`was the basis for a previo
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