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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Ericsson Inc.
`
`Petitioner
`
`v.
`
`Electronics and Telecommunications Research Institute
`
`Patent Owner
`
`
`U.S. Patent No. 9,603,174
`Filing Date: September 12, 2014
`Issue Date: March 21, 2017
`
`Title: ERROR CONTROL METHOD, MEDIUM ACCESS CONTROL (MAC)
`FRAME DESIGNING METHOD, AND TERMINAL REGISTRATION
`METHOD IN WIRELESS COMMUNICATION SYSTEM, AND RECORDING
`MEDIUM
`
`Inter Partes Review No. IPR2020-00251
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
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`

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`IPR2020-00251 (9,603,174)
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`TABLE OF CONTENTS
`
`Page
`PRELIMINARY STATEMENT ..................................................................... 1
`I.
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 2
`II.
`III. TECHNOLOGICAL BACKGROUND .......................................................... 2
`A.
`The ’174 Patent ..................................................................................... 2
`B.
`Challenged Claim .................................................................................. 7
`C.
`Prosecution History ............................................................................... 8
`D.
`Claimed Priority Date .......................................................................... 14
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 15
`V.
`CLAIM CONSTRUCTION .......................................................................... 15
`VI. PRIOR ART ................................................................................................... 16
`A.
`Boudreau – D. Boudreau and W. Tong, R1-02-1222, Reference
`OFDM Physical Layer Configuration, Nortel Networks, 3GPP TSG-
`RAN-1 Meeting #28bis (Espoo, Finland 8th – 9th, October 2002) .... 17
`Laroia – U.S. Patent No. 6,819,930 to Laroia et al. ............................ 21
`B.
`Stanwood – U.S. Patent No. 7,197,022 to Stanwood et al. ................. 24
`C.
`VII. CLAIM 25 IS UNPATENTABLE ................................................................ 28
`A. Ground 1: Boudreau Anticipates Claim 25 ......................................... 28
`B.
`Ground 2: Laroia Renders Obvious Claim 25 .................................... 35
`C.
`Ground 3: Stanwood Anticipates Claim 25 ........................................ 45
`VIII. CONCLUSION .............................................................................................. 53
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................. 53
`A.
`Real Parties-In-Interest ........................................................................ 53
`B.
`Related Matters .................................................................................... 53
`CERTIFICATION UNDER 37 C.F.R. §42.24(D) ........................................ 54
`X.
`XI. PAYMENT OF FEES ................................................................................... 54
`XII. TIME FOR FILING PETITION.................................................................... 54
`XIII. GROUNDS FOR STANDING ...................................................................... 54
`
`i
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`IPR2020-00251 (9,603,174)
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`
`
`Exhibit
`
`LIST OF EXHIBITS
`
`Description
`
`1001
`1002
`1003
`
`1004
`
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 9,603,174 to Lim et al. (“the ’174 Patent”)
`CV of Dr. Wayne Stark
`Declaration of Wayne Stark, Ph.D
`in Support of Petition for Inter Partes Review
`D. Boudreau and W. Tong, R1-02-1222, Reference OFDM Physical
`Layer Configuration, Nortel Networks, 3GPP TSG-RAN-1 Meeting
`#28bis (Espoo, Finland 8th – 9th , October 2002) (“Boudreau”)
`U.S. Patent No. 6,819,930 to Laroia et al. (“Laroia”)
`U.S. Patent No. 7,197,022 to Stanwood et al. (“Stanwood”)
`Prosecution History of U.S. App. No. 14/484,547 (application
`leading to the ’174 Patent)1
`U.S. Patent Application Publication No. 2003/0103525 to Wahl
`(“Wahl”)
`U.S. Patent Application Publication No. 2010/0220725 to Tzannes et
`al. (“Tzannes”)
`Prosecution History of U.S. App. No. 13/369,610 (application
`leading to U.S. Patent No. 8,861,459)2
`U.S. Patent Application Publication No. 2008/0285670 to Walton et
`al. (“Walton”)
`Prosecution History of U.S. App. No. 12/214,180 (application
`leading to the U.S. Patent No. 8,139,532)3
`
`
`1 For convenience to the Board, all references to Exhibit 1007 are to the page number
`endorsed by Ericsson.
`2 For convenience to the Board, all references to Exhibit 1010 are to the page number
`endorsed by Ericsson.
`3 For convenience to the Board, all references to Exhibit 1012 are to the page number
`endorsed by Ericsson.
`
`ii
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`

`

`IPR2020-00251 (9,603,174)
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`1013
`1014
`
`1015
`1016
`
`U.S. Patent No. 6,904,283 to Li et al. (“Li”)
`U.S. Patent Application Publication No. 2003/0072395 to Jia et al.
`(“Jia”)
`Declaration of Dr. Craig Bishop
`First Amended Complaint for Patent Infringement, Sol IP, LLC v.
`AT&T Mobility LLC, Case No. 2:18-cv-00526 (E.D. Tex.), filed on
`March 22, 2019 (Dkt. No. 100) (“Complaint”)
`
`iii
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`IPR2020-00251 (9,603,174)
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`I.
`
`PRELIMINARY STATEMENT
`Petitioner Ericsson Inc. (“Ericsson” or “Petitioner”) respectfully requests inter
`
`partes review and cancellation of claim 25 of U.S. Patent 9,603,174 (“the ’174
`
`Patent”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’174 Patent relates to the wireless communication between cellular
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`devices and base stations, and in particular, a concept called radio resource
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`allocation. Patent Owner Electronics and Telecommunications Research Institute,
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`by and through its licensing agent Sol IP, LLC (collectively “Patent Owner”), allege
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`that claim 25 of the ’174 Patent is essential to LTE Release 8.4 Ex. 1016, ¶¶ 49-50.
`
`However, ETRI did not contribute what it now claims as its invention to the LTE
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`standard. Instead, all of the concepts claimed in the ’174 Patent were developed
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`prior to the 4G LTE standard-setting process by others, including in printed
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`publications that were submitted to the standard-setting body and made publicly
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`available via an email reflector. Ex. 1015, ¶¶ 52-56. Shortly thereafter, ETRI filed
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`a patent application on these ideas in South Korea. Ex. 1001, Cover.
`
`This Petition, supported by the Declaration of Dr. Wayne Stark, explains why
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`there is a reasonable likelihood that claim 25 of the ’174 Patent is unpatentable as
`
`obvious to a person of ordinary skill in the art (“POSITA”) in view of the prior art
`
`
`4 Petitioner disagrees. Nevertheless, the invalidity analysis herein is based on
`Patent Owner’s allegation that practicing the LTE Release 8 standard infringes the
`Challenged Claim.
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`IPR2020-00251 (9,603,174)
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`cited herein, the knowledge and understanding of a POSITA, and the ’174 Patent
`
`itself. Accordingly, claim 25 of the ’174 Patent should be cancelled.
`
`II.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`Ericsson requests review under 35 U.S.C. § 311 of Challenged Claim 25 of
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`the ’174 Patent, and that the Board cancel the same as being unpatentable in view of
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`the cited prior art and the Grounds described below.
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`Ground 1: Claim 25 is anticipated by Boudreau.
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`Ground 2: Claim 25 is obvious over Laroia.
`
`Ground 3: Claim 25 is anticipated by Stanwood.
`
`III. TECHNOLOGICAL BACKGROUND
`The technology at issue in this petition was developed by members of the
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`Third Generation Partnership Project (“3GPP”) during the 3G standard setting
`
`process. To create the 3G standard, 3GPP held standard setting meetings at which
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`3GPP members proposed technology to include in the standard. These proposals
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`were typically submitted in documents called “contributions.” Ex. 1015, ¶¶ 21, 38,
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`43. The 3GPP members emailed their contributions to a 3GPP email list and posted
`
`them to the publicly available 3GPP FTP site before each meeting. Id. at ¶¶ 43-47.
`
`A. The ’174 Patent
`The ’174 Patent is directed to a medium access control (“MAC”) frame
`
`constitution method in a wireless communication system. Ex. 1001, Abstract, 1:26-
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`IPR2020-00251 (9,603,174)
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`31. Figure 1 of the ’174 Patent, reproduced below, illustrates an exemplary “wireless
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`communication system.” See also id. at 1:10-12.
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`
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`Figure 1 illustrates an access point 100 communicating over a network with a
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`plurality of terminals 200. Id. at 1:64-2:5 (“The wireless communication system
`
`according to the embodiment of the present invention is […] a point-to-multipoint
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`communication system comprising an AP (Access Point) 100, and a plurality of
`
`terminals 200 in communication with the AP by OFDM signal scheme. The AP 100
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`is connected to an Ethernet or an external network 300 and in wireless
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`communication with the multiple terminals 200 on a wireless channel 400.”)
`
`The claim at issue in this Petition focuses on information being transmitted
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`“downlink,” i.e., from a network node, e.g., an access point, to a wireless terminal.
`
`Id. at cl. 25 (“A method of transmitting a subframe from a transmitting apparatus to
`
`a terminal in a wireless communication system.”); 7:58-60 (“The downlink is a
`
`channel for signal transmission from AP 100 to each terminal 200….”).
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`IPR2020-00251 (9,603,174)
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`Each MAC frame is “temporally divided” into a “downlink sub-frame” and
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`an “uplink sub-frame.” Id. at 7:55-58. This is illustrated in Figure 10, reproduced
`
`below.
`
`A “broadcast
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`interval” of
`
`the downlink
`
`sub-frame
`
`includes a
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`“downlink/uplink map message.” Id. at 8:38-41. An example downlink/uplink map
`
`information element 600 is illustrated in Figure 12, reproduced below.
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`4
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`IPR2020-00251 (9,603,174)
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`
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`Among other things, this map information element includes a “terminal ID
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`field 610” and a “sub-carrier allocation information field 690.” Id. at 8:42-49. The
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`terminal ID field “enables every terminal 200 connected to the AP 100 to check
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`whether or not the map information corresponds to itself.” Id. at 8:50-52. The sub-
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`carrier allocation information field “includes allocated sub-carrier information for
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`each connection and the number of allocated information bits for each sub-carrier.”
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`Id. at 9:32-35; see also id. at 1:56-60.
`
`The ’174 Patent indicates that “conventional” wireless communication
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`systems, such as those defined in the IEEE 802.16 standard, provided for messages
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`that include information identifying the allocation of radio resources. See id. at 1:33-
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`39; Ex. 1003, ¶¶ 40-41. However, the ’174 Patent contends that the IEEE 802.16
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`standard is deficient because “the same number of information bits are used for every
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`time and frequency allocated to one connection in allocation of the time and
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`frequency resources.” Id. Due to this alleged deficiency, “sub-carriers of the same
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`channel gain are allocated irrespective of channel characteristics, so it is impossible
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`to adaptively cope with the channel characteristics, resulting in a deterioration of the
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`system efficiency.” Ex. 1001 at 1:39-43.
`
`The ’174 Patent’s purported novelty lies in “provid[ing] a MAC frame
`
`structure that adaptively allocates time and frequency resources according to the
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`channel status” by transferring “both the sub-carrier allocation status and the
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`5
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`IPR2020-00251 (9,603,174)
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`information bit allocation number of each sub-carrier [] as sub-carrier allocation
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`information.” Id. at 1:47-53; see also id. at 1:54-60 (“… a MAC frame designing
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`method that includes … assigning information on a sub-carrier allocation status for
`
`the connection ID and the number of allocated information bits of each sub-carrier
`
`to the sub-carrier allocation information.”). This purportedly novel feature is
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`illustrated by, for example, Figure 14, which is reproduced as annotated below:
`
`
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`“[A]s shown in FIG. 14, information 691 on whether or not a sub-carrier is
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`allocated is first transferred to each terminal or connection, and information 692 on
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`the number of allocated information bits is then additionally transferred to the
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`allocated sub-carriers only.” Id. at 10:6-10. “FIG. 14 shows, for example, the case
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`where the number of sub-carriers per OFDM symbol is 96 and two bits are used to
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`represent the maximum number of allocated information bits per sub-carrier. One
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`bit is allocated to transmit information on whether or not each sub-carrier is
`
`allocated, and the fields representing the number of allocated information bits are
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`6
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`IPR2020-00251 (9,603,174)
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`then added for the allocated sub-carriers only.” Id. at 10:10-17. So in the annotated
`
`Figure 14 above, the allocated subcarrier, indicated by a “1” in the subcarrier
`
`sequence (and highlighted in blue), indicates that the subcarrier corresponding to the
`
`subcarrier sequence index 1 is allocated to a wireless terminal. Furthermore, the
`
`number of bits allocated to this subcarrier (also highlighted in blue) is 2. A second
`
`allocated subcarrier corresponding to the index 3 is been allocated 4 bits. These
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`fields are highlighted in red. Ex. 1003, ¶ 42.
`
`
`
`Contrary to the patentee’s original belief in the novelty of including in a
`
`subframe both radio resource allocation information and information indicating a
`
`number of bits allocated to the radio resources, this functionality was already well-
`
`known by the filing date of the Korean foreign priority application to which the ’174
`
`Patent claims priority. Ex. 1003, ¶ 44. As explained below, the concepts claimed in
`
`the ’174 Patent were known prior to the earliest priority date of the ’174 Patent and
`
`were disclosed in prior art that had not been considered by the Examiner during
`
`prosecution of the ’174 Patent or its parent applications. Id.
`
`B. Challenged Claim
`This Petition challenges claim 25 of the ’174 Patent. Claim 25 is reproduced
`
`below and emphasized for reference in the following discussion:
`
`25. A method of transmitting a subframe from a transmitting apparatus to a
`
`terminal in a wireless communication system, the method comprising:
`
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`IPR2020-00251 (9,603,174)
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`generating a first signal comprising a part of the subframe based
`
`on an identifier associated with the terminal, the first signal comprising
`
`first information and second information;
`
`transmitting the first signal to the terminal; and
`
`transmitting data in the subframe to the terminal,
`
`wherein the first information indicates a location in the subframe
`
`of radio resources allocated to the terminal, and the second information
`
`indicates a number of bits allocated to the radio resources.
`
`C.
`Prosecution History
`The prosecution histories of the ’174 Patent and its parent applications make
`
`it clear that each and every element of the claim 25 of the ’174 Patent was fully
`
`disclosed and obvious in view of the prior art. Indeed, as explained below, multiple
`
`references cited during prosecution expressly disclosed the concepts of providing
`
`“first information indicat[ing] a location in the subframe of radio resources allocated
`
`to the terminal” and “second information indicat[ing] a number of bits allocated to
`
`the radio resources.” Nevertheless, based on arguments and representations by the
`
`applicant regarding the prior art and the pending claims, the ’174 Patent and its
`
`parent applications were allowed over the cited prior art. The grounds identified in
`
`this petition are based on prior art that was not cited or considered by the Examiner.
`
`Prosecution History of U.S. Application No. 14/484,547:
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`8
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`IPR2020-00251 (9,603,174)
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`During prosecution of U.S. Application No. 14/484,547 which led to the ’174
`
`Patent, the Examiner rejected the pending claims under an obviousness-type double
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`patenting rejection based on two parent patents named in the continuity chain of the
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`’174 Patent, namely, U.S. Patent Nos. 8,861,459 (the “’459 Patent”) and 8,139,532
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`(the “’532 Patent”). Ex. 1007, pp. 134-136, 6/29/2015 OA. The applicant responded
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`by filing terminal disclaimers citing to the ’459 and ’532 Patents. Id. at pp. 149-151,
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`158, 9/25/2015 Applicant’s Response and Terminal Disclaimers.
`
`The Examiner also rejected the pending claims of U.S. Application No.
`
`14/484,547 as being obvious over U.S. Patent Application Publication Nos.
`
`2003/0103525 to Wahl (“Wahl”) and 2010/0220725 to Tzannes et al. (“Tzannes”).
`
`Id. at pp. 203-204, 5/10/2016 OA. The Examiner contended that Wahl discloses first
`
`information indicating radio resource allocation based on its disclosure of data
`
`included in a downlink map. Id. Specifically, Wahl discloses a downlink frame that
`
`includes a downlink map, which was a known way to identify the location of radio
`
`resources within a frame prior to the claimed priority date of the ’174 Patent, and
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`indeed, the very purpose of a downlink map. See, e.g., id.; Ex. 1008, ¶ [0062] and
`
`Fig. 5; Ex. 1003, ¶¶ 46-47. Indeed, as discussed above, the ’174 Patent explains that
`
`the allocation information is included a “downlink/uplink map information
`
`element.” See Ex. 1001, 8:38-49; Ex. 1003, ¶ 47.
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`9
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`IPR2020-00251 (9,603,174)
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`The Examiner contended that Tzannes discloses second information
`
`indicating a number of bits allocated to the radio resources based on its disclosure
`
`of a header portion of a packet including information indicating the allocation of bits
`
`to subcarriers within that packet. Ex. 1007, pp. 203-204, 5/10/2016 OA.
`
`Specifically, Tzannes discloses a method for wireless communication between a
`
`transmitter and a receiver, where a packet includes a “header portion includ[ing]
`
`information indicating a first allocation of bits to subcarriers for the data portion of
`
`the first packet.” Ex. 1009, ¶¶ [0003], [0007], and cl. 12; see also Ex. 1003, ¶ 48.
`
`In response, the applicant amended pending claim 1, cancelled pending claims
`
`2-9, and added claims 10-40 (including issued Claim 25). Despite Wahl’s clear
`
`disclosure of a downlink map, the applicant argued that Wahl and Tzannes do not
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`disclose information that indicates the location of allocated radio resources. Ex.
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`1007, pp. 221-222, 5/10/2016 OA; see also Ex. 1003, ¶ 49. On the other hand, the
`
`applicant did not contest that Tzannes discloses information that indicates a number
`
`of bits allocated to the radio resources, even though this was purportedly the
`
`inventive aspect of the ’174 Patent. See id.
`
`Prosecution History of U.S. Application No. 13/369,610:
`
`During the prosecution of U.S. App. No. 13/369,610 which lead to the ’459
`
`Patent, the Examiner rejected pending claims directed to “first information being
`
`associated with sub-carrier allocation and the connection ID” and “second
`
`10
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`IPR2020-00251 (9,603,174)
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`information being associated with a number of allocated information bits per sub-
`
`carrier and the connection ID” as being anticipated by or obvious over U.S. Patent
`
`Application Publication No. 2008/0285670 to Walton et al. (“Walton”). Ex. 1010,
`
`pp. 105-107, 2/5/2014 OA.
`
`Specifically, Walton discloses a forward control channel (“FCCH”) which is
`
`a “downlink transport channel” “[u]sed by the access point to allocate resource on
`
`the downlink and uplink,” where “[t]he resource allocation may be performed on a
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`frame-by-frame basis.” Ex. 1011, Table 3, ¶¶ [0083]-[0084]. Walton also discloses
`
`a forward channel (“FCH”) which is a “downlink transport channel” “[u]sed by the
`
`access point to transmit user-specific data to the user terminals.” Id. at Table 3, ¶¶
`
`[0083]-[0084]. “The FCCH […] carries channel assignment information indicative
`
`of which user terminal(s) are designated to receive downlink data on the FCH.” Id.
`
`at ¶ [0086]; see also id. at ¶¶ [0097]-[0099]. “[T]he access point is able to allocate
`
`resource[s] for the FCH […] on a per frame basis” and [t]he FCCH is used by the
`
`access point to convey the resource allocation for the FCH […] (i.e., the channel
`
`assignments).” Id. at ¶ [0114].
`
`The FCCH message includes a “MAC ID” which is an “ID assigned to the
`
`user terminal.” Id. at ¶ [0117], Tables 6, 8. The FCCH message may also include
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`“information elements (IEs)” that “may be associated with a specific user terminal
`
`and may be used to provide information indicative of the assignment of FCH […]
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`11
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`IPR2020-00251 (9,603,174)
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`resources for that user terminal.” Id. at ¶ [0117], Tables 6, 8. For example, an “FCH
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`Offset” field in the FCCH message provides the “time offset” (i.e., location) “from
`
`the beginning of the current TDD frame to the start of the FCH […] assigned by the
`
`information element.” Id. at ¶ [0125], Table 8; see also Ex. 1003, ¶ 54. In addition,
`
`the FCCH message also includes “FCH Rate” information which provides “a
`
`particular code rate and a particular modulation scheme” corresponding to the FCH
`
`message.5 Id. at ¶¶ [0116]; see also Ex. 1003, ¶ 54. In short, Walton discloses
`
`“generating a first signal comprising a part of the subframe based on an identifier
`
`associated with the terminal” and “first information indicat[ing] a location in the
`
`subframe of radio resources allocated to the terminal” as claimed in claim 25 of the
`
`’174 patent. Ex. 1003, ¶ 55. Furthermore, to the extent the Patent Owner is taking
`
`the view that modulation and coding scheme information is sufficient to satisfy this
`
`aspect of the claims for the purposes of infringement, Walton discloses “second
`
`information indicat[ing] a number of bits allocated to the radio resources” as claimed
`
`in claim 25 of the ’174 patent. Ex. 1003, ¶ 56.
`
`However, because the claims at issue were directed to “sub-carriers” rather
`
`than, more generally, “radio resources” (as claimed in the ’174 Patent), the applicant
`
`
`5 To the extent the Patent Owner is taking the view that modulation and coding
`scheme information is sufficient to satisfy this aspect of the claim for the purposes
`of infringement, the FCH Rate information would qualify as an “indicat[ion] [of] a
`number of bits allocated to the radio resources,” as claimed in Claim 25.
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`12
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`IPR2020-00251 (9,603,174)
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`contended that Walton’s disclosure of resource allocation information in the time
`
`domain does not disclose the claimed information with respect to frequency domain
`
`“sub-carriers of an OFDM (or any other type of) signal.” See Ex. 1010, pp. 119-
`
`121, 4/29/2014 Applicant’s Response. On this apparent basis, the application
`
`leading to the parent ’459 Patent was allowed. See id. at pp. 126-130, 6/12/2014
`
`Notice of Allowance. As discussed below, both the Boudreau and Laroia references
`
`disclose these aspects of claim 25 of the ’174 Patent in the context of frequency
`
`domain radio resource allocation.
`
`Prosecution History of U.S. Application No. 12/214,180:
`
`During the prosecution of U.S. App. No. 12/214,180 which lead to the ’532
`
`Patent, the Examiner rejected pending claims directed towards “assigning a first
`
`information to the frame, the first information being associated with sub-carrier
`
`allocation” and “assigning a second information to the frame, the second information
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`being associated with a number of allocated information bits” as being obvious over
`
`U.S. Patent No. 6,904,283 to Li et al. (“Li”) in view of U.S. Patent Application
`
`Publication No. 2003/0072395 to Jia et al. (“Jia”). Ex. 1012, pp. 124-126,
`
`12/17/2010 OA. Li is directed to a “method for subcarrier selection for a system
`
`employing orthogonal frequency division multiple access (OFDMA).” Ex. 1013,
`
`Abstract. Li discloses that the “base station informs the subscribers about the
`
`subcarrier allocation and the coding/modulation rates to use.” Id. at 3:51-53. The
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`IPR2020-00251 (9,603,174)
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`Examiner contended that Li does not disclose the claimed “connection ID being
`
`associated with the terminal” and argued that feature would be obvious in view of
`
`Jia. Ex. 1012, pp. 124-126, 12/17/2010 OA. Jia is generally directed to a method
`
`and apparatus for encoding and decoding OFDM messages. Ex. 1014, Abstract. The
`
`applicant subsequently amended the claims and contended that Li and Jia do not
`
`disclose the claimed “connection ID … for identifying a connection between the
`
`transmitter and the receiver.” Ex. 1012, pp. 156-160, 4/12/2011 Applicant’s
`
`Response. Notably, the applicant did not dispute that Li discloses the other elements
`
`of the pending claims. See id. However, the applicant admitted that Jia disclosed
`
`an identifier used to identify a particular receiver. Id. at p. 159.
`
`In next Office Action, the Examiner rejected the claims as being obvious over
`
`Li in view of U.S. Patent Application Publication No. 2003/0086366 to Branlund et
`
`al. (“Branlund”). Id. at pp. 168-170, 6/9/2011 OA. Branlund was cited as rendering
`
`obvious the connection ID limitation. Id. The applicant’s response again focused
`
`on alleged absence of the connection ID limitation in the prior art, while conceding
`
`that Li discloses providing subcarrier allocation information. See id. at pp. 186-187,
`
`10/11/2011 Applicant’s Response.
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`D. Claimed Priority Date
`Application No. 14/484,547, which issued as the ’174 Patent, was filed on
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`September 12, 2014, claims benefit to U.S. Patent Application No. 10/695,135 filed
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`IPR2020-00251 (9,603,174)
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`on October 27, 2003, and claims priority to a foreign Korean application filed on
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`December 16, 2002. For the purposes of this Petition, December 16, 2002 is
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`presumed as the priority date of the challenged claim.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) would have (i) an
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`undergraduate degree in Electrical Engineering, Computer Science, or Computer
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`Engineering, or a related field, and around two years of experience in the theory,
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`design, and/or development of cellular technology, or (ii) a person with a Master’s
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`degree in one of the foregoing fields with a focus on cellular technology. See Ex.
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`1003, ¶ 28. Someone with less or different technical education but more relevant
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`practical experience, or more relevant education but less practical experience, could
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`also be considered a POSITA. Id.
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`V. CLAIM CONSTRUCTION
`The challenged claim of the ’174 Patent is construed herein “using the same
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`claim construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (Nov. 13, 2018). The claim terms
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`below are thus construed “in accordance with the ordinary and customary meaning
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`of such claim as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent.” Id.
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`IPR2020-00251 (9,603,174)
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`Petitioner does not believe any specific constructions are required at this time.
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`Accordingly, all terms in claim 25 of the ’174 Patent are to be given their ordinary
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`and customary meaning as understood by a POSITA in accordance with the
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`specification and prosecution history. Petitioner reserves the right to propose
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`specific constructions if it becomes appropriate/necessary during the course of these
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`proceedings.
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`VI. PRIOR ART
`As evidenced by the prior art and explained by Dr. Stark in the attached expert
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`declaration (Ex. 1003), each and every element of claim 25 was well known before
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`the ’174 Patent’s priority date including the claimed elements of “generating a first
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`signal comprising a part of the subframe based on an identifier associated with the
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`terminal,” “first information indicat[ing] a location in the subframe of radio
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`resources allocated to the terminal” and “second information indicat[ing] a number
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`of bits allocated to the radio resources.” Ex. 1003, ¶ 64.
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`In addition to the extensive background knowledge that a person of ordinary
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`skill in the art (“POSITA”)6 would have brought to bear on the subject matter
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`discussed in the ’174 Patent, the following prior art demonstrates that the claimed
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`subject matter was known prior to the earliest claimed priority date of the ’174
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`Patent.
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`6 Ex. 1003, ¶ 28.
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`A. Boudreau – D. Boudreau and W. Tong, R1-02-1222, Reference
`OFDM Physical Layer Configuration, Nortel Networks, 3GPP
`TSG-RAN-1 Meeting #28bis (Espoo, Finland 8th – 9th, October
`2002)
`Boudreau, entitled “Reference OFDM Physical Layer Configuration,” is a
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`written contribution submitted to 3GPP in advance of the 3GPP TSG-RAN WG1
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`Meeting #28bis in Espoo, Finland on October 8-9, 2002 by Nortel (“Boudreau” or
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`“R2-021222”). The document was a submission to the 3GPP standards body for
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`consideration in developing the 3G cellular system. Ex. 1015, ¶¶ 49-52. Boudreau
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`is a printed publication prior art reference under at least 35 U.S.C. 102(a)/(b) as it
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`was accessible and available via 3GPP’s publicly available website on October 3,
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`2002, prior to earliest priority date of the ’174 Patent – i.e., December 16, 2002 –
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`and more than one year before filing date of the earliest U.S. Application to which
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`the ’174 Patent claims benefit – i.e., October 27, 2003. Id. at ¶¶ 52-56. Boudreau
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`was not considered during prosecution of the ’174 Patent or its parents.
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`Boudreau
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`is directed
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`to a downlink orthogonal frequency division
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`multiplexing (“OFDM”) scheme, which was proposed by Nortel as an amendment
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`to
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`the Third Generation Partnership Project’s (“3GPP”) wireless mobile
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`telecommunications technology standard. Ex. 1004, p. 1; Ex. 1003, ¶ 65.
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`Part 1 of Boudreau provides a proposed amendment applicable to the 3GPP
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`Release 5 architecture. See Ex. 1004, p. 1. Figure 1 of Boudreau, reproduced below,
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`illustrates a reference network architecture in which downlink messages are
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`IPR2020-00251 (9,603,174)
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`provided from a network node (or “Node-B”) to user equipment (or “UE”) over an
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`OFDM High Speed Downlink Shared Channel (“HS-DSCH”). Ex. 1004, pp. 1-2;
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`Ex. 1003, ¶ 66.
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`
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`The OFDM HS-DSCH is a 5MHz bandwidth channel that uses multiple
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`orthogonal sub-carriers to transmit downlink data. Ex. 1004, p. 2; Ex. 1003, ¶¶ 67-
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`68. The physical channel is “defined by a specific carrier frequency, set of
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`orthogonal subcarriers, time start & stop (or duration), symbol interleaving pattern
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`and possibly frequency hopping pattern….” Id. at 2. “Given a carrier frequency,
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`physical channels are therefore mapped onto a specific 2-dimensional area in the
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`time-frequency plan.” Id. Boudreau explains that “[b]efore symbol interleaving,
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`each physical channel corresponds to a set of consecutive subcarriers, while after
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`IPR2020-00251 (9,603,174)
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`symbol interleaving, the subcarriers are distributed in a controlled manner across the
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`overall frequency band.” Id.
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`A “radio frame,” which is “[a]lso called an OFDM frame,” that is provided on
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`the OFDM HS-DSCH “consists of 15 slots,” while a “HS-DSCH sub-frame”
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`“corresponds to 3 slots.” Id. Figure 4 of Boudreau, reproduced below, illustrates a
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`radio frame. Id.
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`
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`The HS-DSCH subframe is the “basic time interval for HS-DSCH
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`transmission and HS-DSCH-related signaling at the physical layer.” Id. The “frame
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`structure is a sequence of OFDM symbols” and “[d]epending on its location within
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`the frame, the OFDM symbol is composed of a specific combination of pilot
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`samples, signaling or data sub-carriers.” Id. at 4.
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`For example, a “[s]ignaling OFDM physical channel” is “set of time-
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`frequency locations, within a 2 msec TTI [(i.e., Transmission Time Interval)]
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`containing signaling information.” Id. at 5 (emphasis added). A “[t]raffic OFDM
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`IPR2020-00251 (9,603,174)
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`physical channel[]” is the “subset[] of time-frequency locations, within a 2 msec TTI
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`… dedicated to carry[ing] traffic data.” Id.
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`Figure 5 of Boudreau, reproduced below, “illustrates an assignment for
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`Traffic OFDM physical channels, before they are interleaved or frequency hopped.
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`Id. at 5. In the figure below,7 “S” is a reference to a “signaling sub-carrier” and “D”
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`is a reference to a “data traffic sub-carrier.” Id.
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`
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`Boudreau explains that the certain information can be signaled with respect to
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`each sub-frame transmitted on the OFDM HS-DSCH using a high speed “[s]hared
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`[c]ontrol [c]hannel” (“HS-SCCH”). Ex. 1004, p. 6. For each HS-DSCH sub-frame,
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`the HS-SCCH “carries HS-D