Trials@uspto.gov
`571.272.7822
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` Paper No. 7
` Entered: June 27, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00259
`Patent 7,075,917 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`

`

`IPR2019-00259
`Patent 7,075,917 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–3, 9, and 10 of U.S. Patent No. 7,075,917 B2 (Ex. 1001, “the
`’917 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . 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). Upon consideration of the
`Petition and Preliminary Response, we decline to institute review of claims
`1–3, 9, and 10 of the ’917 patent.
`
`A. Related Matters
`Patent Owner indicates that the ’917 patent is the subject of several
`court proceedings. Prelim. Resp. 15–16. The ’917 patent also is the subject
`of IPR2019-00973, but a decision whether to institute has not yet been
`reached in that case. Id. at 15.
`
`B. The ’917 Patent
`The Specification of the ’917 patent describes “a wireless network
`comprising a radio network controller and a plurality of assigned terminals,
`which are each provided for exchanging data and which form a receiving
`and/or transmitting side.” Ex. 1001, 1:6–9. The ’917 patent explains that an
`object of the invention is “to provide a wireless network in which error-
`affected data repeatedly to be transmitted . . . are buffered for a shorter
`period of time on average.” Ex. 1001, 1:64–67. This is done by storing
`abbreviated sequence numbers whose length depends on the maximum
`number of coded transport blocks to be stored, and transmitting coded
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`transport blocks that include a packet data unit and an assigned abbreviated
`sequence number. Id. at 2:8–16. The use of abbreviated sequence numbers
`reduces the extent of information that is required to be additionally
`transmitted for managing transport blocks and packet data units and
`simplifies the assignment of the received acknowledge command to the
`stored transport blocks. Id. at 2:45–49. The ’917 patent further describes
`that a receiving physical layer checks whether a coded transport block has
`been transmitted correctly, and, if so, a positive acknowledge signal ACK is
`sent to the sending physical layer over a back channel. Id. at 6:9–13. If the
`coded transport block has not been received error-free, a negative
`acknowledge command NACK is sent to the sending physical layer. Id. at
`6:13–15.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–3, 9, and 10 of the ’917 patent. Claims
`1, 9, and 10 are independent claims, and claims 2 and 3 depend directly from
`claim 1. Claim 1 is reproduced below.
`1. A wireless network comprising a radio network
`controller and a plurality of assigned to signals, which are each
`provided for exchanging data according to the hybrid ARQ
`method an which form a receiving and/or transmitting side, in
`which a physical layer of a transmitting side is arranged for
`storing coded transport blocks in a memory, which blocks
`contain at least a packet data unit which is delivered by an
`assigned radio link control layer and can be identified by a packet
`data unit sequence number,
`storing abbreviated sequence numbers whose length
`depends on the maximum number of coded transport blocks to
`be stored and which can be shown unambiguously in a packet
`data unit sequence number, and for
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`Patent 7,075,917 B2
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`transmitting coded transport blocks having at least an
`assigned abbreviated sequence number and
`a physical layer of a receiving side is provided for testing
`the correct reception of the coded transport block and for sending
`a positive acknowledge command to the transmitting side over a
`back channel when there is correct reception and a negative
`acknowledge command when there is error-affected reception.
`Ex. 1001, 7:62–8:17.
`
`D. Asserted Ground of Unpatentability
`Petitioner asserts that claims 1–3, 9, and 10 are unpatentable based on
`the following ground (Pet. 5):
`Basis1
`References
`Decker2 and Abrol3
`§ 103(a)
`
`Challenged Claims
`1–3, 9, and 10
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review for a petition filed before November 13,
`2018, we construe claim terms in an unexpired patent according to their
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 42.100(b) (2018); see Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). Consistent
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’917
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 US 5,946,320, issued August 31, 1999 (Ex. 1004, “Decker”).
`3 US 6,507,582 B1, issued January 14, 2003 (Ex. 1005, “Abrol”).
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`with the broadest reasonable construction, claim terms are presumed to have
`their ordinary and customary meaning as understood by a person of ordinary
`skill in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner does not provide proposed constructions for any claim
`terms, instead relying upon the plain and ordinary meaning of the claim
`terms. Pet. 6. Patent Owner also does not provide proposed constructions
`for any claim terms. Prelim. Resp. 17.
`For purposes of this decision, we need not expressly construe any
`claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art;4 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1–3, 9, and 10 over Decker and Abrol
`Petitioner contends claims 1–3, 9, and 10 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Decker and Abrol. Pet. 9–59. In support
`of its showing, Petitioner relies upon the declaration of Dr. Creusere. Id.
`(citing Ex. 1003).
`
`1. Decker
`Decker describes a method and data communication system for
`transmitting packet data in an air interface of a digital cellular radio
`telephone system based on a hybrid forward error correction/automatic
`repeat request. Ex. 1004, 1:46–47, 1:54–57. According to Decker, the
`following steps occur for each data packet: (a) encoding the bits of the data
`packet, header, and frame check sequence using error correcting codes and
`storing the resulting bits for transmission at the sender side; (b) transmitting
`a predefined part of the encoded bits that is bigger than the original data
`packet; (c) collecting and storing all received data at the receiver side with a
`storage capacity large enough to store at least the encoded bits of one data
`packet; (d) deciding on transmission success at the receiver side, based on
`
`
`4 Relying on the testimony of Dr. Charles D. Creusere, Petitioner offers an
`assessment as to the level of skill in the art at the time of the ’917 patent.
`Pet. 4 (citing Ex. 1003 ¶ 33). Patent Owner does not propose an alternative
`assessment. Prelim. Resp. 16. To the extent necessary, and for purposes of
`this Decision, we accept the assessment offered by Petitioner as it is
`consistent with the ’917 patent and the asserted prior art.
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`the stored data and sending a positive acknowledgment (ACK) if the
`transmission has been decided to be successful and a negative
`acknowledgement (NAK) if not; and (e) checking at the sender side whether
`an ACK or NAK is received. Id. at 1:58–2:11.
`
`2. Abrol
`Abrol discloses a radio link protocol (RLP) that enables a
`transmission of a featureless byte stream. Ex. 1005, 3:24–26. According to
`Abrol, a shortened RLP sequence number is used, which is equal to the byte
`sequence number of the first data byte in the RLP frame divided by the page
`size. Id. at 6:52–55. In another embodiment, the most significant bits are
`omitted from the byte sequence number when such omission causes no
`ambiguity about which data is contained in the data portion of the RLP
`frame. Id. at 6:59–62.
`
`3. Discussion
`Claim 1 recites “a physical layer of a receiving side is provided for
`testing the correct reception of the coded transport block.” Independent
`claim 9 recites “a physical layer of the radio network controller is arranged
`as a receiving side for testing the correct reception of a coded transport
`block.” Independent claim 10 recites “[a] physical layer of the terminal is
`arranged as a receiving side for testing the correct reception of a coded
`transport block.” For the disputed claim 1 phrase, Petitioner contends that
`Decker in combination with Abrol teaches the phrase, but the italicized
`portion is taught specifically by Decker. Pet. 47–48. For the disputed claim
`9 and claim 10 phrases, Petitioner refers back to its showing for claim 1,
`while accounting for the differences. Id. at 55–56, 58. Thus, if Petitioner
`fails to show how Decker meets the italicized portion of claim 1 above,
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`Petitioner also fails to show how Decker meets the disputed claim 9 and
`claim 10 phrases. Correspondingly, Patent Owner’s arguments are also
`focused on the claim 1 disputed phrase as dispositive for the similar claim 9
`and claim 10 phrases. Prelim. Resp. 22–26. Accordingly, our discussion is
`with respect to the disputed claim 1 phrase.
`For the disputed claim 1 phrase, Petitioner contends Decker teaches
`determining soft decision values for received layer 1 bits based on an
`estimated bit error rate for each received bit. Pet. 45–46 (citing Ex. 1004,
`4:9–14, 4:21–48, 6:17–21). According to Petitioner, Decker further teaches
`using these soft decision values to determine whether the received frame was
`received correctly. Id. at 46–47 (citing Ex. 1004, 2:1–5, 5:4–16). With
`respect to the italicized language above, Petitioner contends
`Decker also teaches the claimed “physical layer of a
`receiving side is provided for testing the correct reception.”
`Decker teaches that the determination of whether the data in the
`layer 1 frame was successfully transmitted is made at the receiver
`side hardware, e.g., by the “receiver.” Decker (Ex. 1004) at 4:15-
`16. Decker also teaches, as discussed above, that the error
`correction is performed for a “layer 1 frame.” See id. at 4:21-23
`(referring to storing layer 1 frames at the receiver buffer) and
`4:40-45 (referring to determining the Log-Likelihood value for a
`layer 1 frame). As discussed above for the mapping of Claim 1
`(a), a PHOSITA would reasonably understand that a layer 1
`frame is processed in the physical layer. Expert Decl. (Ex. 1003)
`at ¶ 85. Therefore, because Decker teaches testing for the correct
`reception of a layer 1 frame of data at the receiver of the receiver
`side, Decker teaches that a “physical layer of the receiving side
`is provided for testing the correct reception,” as claimed. Id. at
`¶¶ 84-85, citing Decker (Ex. 1004) at 6:17-21 (Claim 1(d))
`(claiming “deciding on transmission success at the receiver
`side”) and 1:21-34 (Decker characterizing its method as
`improvement over the typical sub-optimal method of detecting
`errors at layer 2 (the radio link layer)).
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`Id. at 47–48. We agree with Patent Owner that Petitioner has not established
`that Decker teaches “a physical layer of a receiving side is provided for
`testing the correct reception of the coded transport block.” Prelim. Resp.
`22–24.
`Decker itself does not explicitly describe a physical layer of the
`receiving side that tests for correct reception of a coded transport block.
`Petitioner acknowledges this by asserting that (1) determination of whether
`data in the layer 1 frame was successfully transmitted is made at the receiver
`side hardware (citing Ex. 1004, 4:15–16); (2) error correction is performed
`for a layer 1 frame (citing Ex. 1004, 4:21–23); and (3) one of ordinary skill
`in the art would have reasonably understood that a layer 1 frame is processed
`in the physical layer. Pet. 47–48 (citing Ex. 1003 ¶¶ 84–85). Petitioner
`relies on Dr. Creusere’s declaration in support of the argument that one of
`ordinary skill would have understood that Decker teaches “a physical layer
`of a receiving side is provided for testing the correct reception of the coded
`transport block.” Id.
`Dr. Creusere testifies that Decker “teaches a process by which a
`likelihood of an error in a received frame is determined based on a sum of
`values reflecting the bit error rate per bit” and “that if a sum of these values
`exceeds a limit (L)” a decision is made that data was received correctly.
`Ex. 1003 ¶ 84 (citing Ex. 1004, 4:21–48, 5:4–16). Dr. Creusere further
`testifies that “[n]otably, in Decker it is only after this soft-decision has been
`made that the decoding process begins, the decoding process being the step
`at which systems performing typical ARQ communication methods
`determine correct reception of transmitted data.” Ex. 1003 ¶ 85.
`Dr. Creusere then concludes that one of skill in the art “would have
`understood, therefore, that Decker is teaching . . . making an earlier
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`determination of correct reception of transmitted data at the physical layer.”
`Id.
`The Petition fails to explain sufficiently why “receiver side hardware”
`equates to “a physical layer of a receiving side.” Pet. 47–48. Thus, we are
`not persuaded that Decker’s reference to a receiver or receiver side means
`that “a physical layer of a receiving side is provided for testing the correct
`reception” of the claimed data. Nor is there an adequate explanation for
`why Decker’s description that it is only after the soft-decision is made that
`the decoding process begins would have led a person of ordinary skill in the
`art to assume that the soft-decision was made in a physical layer of a
`receiving side. Pet. 47–48; Ex. 1003 ¶ 85. Notably, Decker describes that
`the soft-decision making is performed using “soft decision decoding within
`the convolutional decoding algorithm.” Ex. 1004, 4:24–25 (emphasis
`added). Neither Petitioner nor Dr. Creusere explains why decoding that
`occurs after the soft decision making would have led one to believe that the
`soft decision making, which also involves decoding, is performed at the
`physical layer.
`As pointed out by Patent Owner, and we agree, Decker never
`identifies separate layers or specifies what layer is performing functions of
`predicted decisions and exact decisions. Prelim. Resp. 22–24. As further
`pointed out by Patent Owner, and we agree, despite Decker’s specific
`statement as to allocation of providing forward error correction as a function
`in layer 1 and ARQ as a layer 2 function, Decker is silent as to allocation of
`its immediate predicted decision and exact decision between layers 1 and 2.
`Prelim. Resp. 24 (citing Ex. 1004, 1:21–24).
`We further have reviewed Petitioner’s assertion that “[a]s discussed
`above for the mapping of Claim 1(a), a PHOSITA would reasonably
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`understand that a layer 1 frame is processed in the physical layer.” Pet. 48
`(citing Ex. 1003 ¶ 85). Dr. Creusere similarly refers back to his opinion
`regarding “the mapping of Claim 1(a)” in support of his conclusion that “a
`PHOSITA would have understood that a ‘layer 1 frame’ is processed in the
`physical layer.” Ex. 1003 ¶ 85. The showing with respect to element 1(a) of
`claim 1 is directed to whether Decker describes “a physical layer of a
`transmitting side is arranged for storing coded transport blocks,” not
`whether Decker describes “a physical layer of a receiving side is provided
`for testing the correct reception of the coded transport block.” See, e.g., Pet.
`19–21. Petitioner has not explained how its showing for the claim 1(a)
`requirement of “a physical layer of a transmitting side is arranged for
`storing coded transport blocks” (Pet. 19–21) also shows that Decker
`describes and meets “a physical layer of a receiving side is provided for
`testing the correct reception of the coded transport block.” No analysis or
`explanation is provided. Pet. 48. Petitioner bears the burden of
`demonstrating that a particular feature is met by the prior art, not the Board.
`37 C.F.R. § 42.20(c). In any event, we have reviewed the portion of the
`Petition and accompanying supporting evidence regarding claim 1(a) and
`determine that that explanation and supporting evidence is insufficient to
`demonstrate a reasonable likelihood that Decker meets the disputed claim
`phrase.
`For example, Dr. Creusere opines that a person having ordinary skill
`in the art would have known at the time of the invention that a physical layer
`of one device interfaces with the physical layer of a second system or
`device. Ex. 1003 ¶ 69 (citing Ex. 1008, 51, 95). Dr. Creusere further
`testifies that because Decker describes teaching an improvement over
`systems addressing errors as a “layer 2 function,” Decker, thus, teaches a
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`“physical layer of the receiving side is provided for testing the correct
`reception.” Id. ¶ 85 (citing Ex. 1004, 1:21–34, 6:17–21). Even assuming
`the physical layer of Decker’s transmitting side interfaces with a physical
`layer of Decker’s receiving side, it does not necessarily follow that Decker’s
`error correction is performed at a physical layer of a receiving side. As
`explained above, Decker simply does not describe what layer is performing
`the testing and Petitioner has failed to show sufficiently that a person having
`ordinary skill in the art would have understood Decker to meet the disputed
`phrase.
`For all of these reasons, we are not persuaded that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claims 1–3, 9, and 10 as unpatentable under 35 U.S.C. § 103
`based on Decker and Abrol.5
`
`III. CONCLUSION
`Petitioner has failed to establish a reasonable likelihood of prevailing
`in showing that at least one of claims 1–3, 9, and 10 of the ’917 patent is
`unpatentable under 35 U.S.C. § 103(a).
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`5 Because we find Petitioner has not shown a reasonable likelihood of
`prevailing on the sole challenge for the reasons discussed above, we do not
`reach Patent Owner’s remaining arguments.
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`IPR2019-00259
`Patent 7,075,917 B2
`
`For PETITIONER:
`
`Adam Seitz
`Paul Hart
`Jennifer Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
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