Trials@uspto.gov
`571-272-7822
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`
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` Paper 28
` Date: January 26, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01413
`Patent 8,199,726 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`

`

`IPR2020-01413
`Patent 8,199,726 B2
`
`
`I. INTRODUCTION
`
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
`
`Motorola Mobility LLC (collectively “Petitioner”) filed a Petition for inter
`
`partes review of claims 1–10 and 14–18 of U.S. Patent No. 8,199,726 B2
`
`(Ex. 1001, “the ’726 patent”). Paper 1 (“Pet.”). InterDigital Technology
`
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 7. Upon
`
`consideration of the Petition and Preliminary Response, we instituted inter
`
`partes review, pursuant to 35 U.S.C. § 314, as to claims 1–10 and 14–18
`
`based on the challenges set forth in the Petition. Paper 8 (“Decision to
`
`Institute” or “Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 15, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`
`Response (Paper 17, “Pet. Reply”), and Patent Owner filed a Sur-reply
`
`(Paper 20, “Sur-reply”). On November 3, 2021, we held an oral hearing. A
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`transcript of the hearing is of record. Paper 27 (“Tr.”).
`
`For the reasons that follow, we conclude that Petitioner has proven by
`
`a preponderance of the evidence that claims 1–10 and 14–18 of the ’726
`
`patent are unpatentable.
`
`A. Related Matters
`
`The parties indicate that the ’726 patent is or has been the subject of,
`
`or relates to, the following proceeding: InterDigital Technology
`
`Corporation et al. v. Lenovo Holding Company, Inc. et al., No. 1:19-cv-
`
`01590 (D. Del.). Pet. 3; Paper 6, 2.
`
`B. The ’726 Patent
`
`The Specification of the ’726 patent relates to wireless digital
`
`communication systems with communication stations using code-division
`
`2
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`IPR2020-01413
`Patent 8,199,726 B2
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`multiple access (CDMA) technology utilizing measurement techniques to
`
`determine downlink resource allocation. Ex. 1001, 1:12–16. The
`
`’726 patent describes measuring channel quality (CQ) and signaling the
`
`information from user equipment (UE) to a base station. Id. at 2:27–31.
`
`Specifically, the ’726 patent describes “several embodiments to measure and
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`signal the CQ per timeslot, or subchannel, from the UE to the base station.”
`
`Id. at 2:29–31. Reproduced below is Figure 2.
`
`
`
` Figure 2 shows a block diagram illustrating a UE and a base station
`for implementing channel quality measurements for downlink resource
`allocation.
`
`Figure 2 shows a UE with antenna 16 coupled through isolator/switch
`
`18 to matched filter 20, which receives a downlink signal from the base
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`station through wireless interface 14. Id. at 3:21–23, 3:51–53. Power
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`measurement device 22 analyzes the output of matched filter 20 to determine
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`the power level of the downlink signal and outputs this power level to CQ
`
`determination device 28. Id. at 3:26–29. Interference measurement device
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`24 is connected to a second input of CQ determination device 28. Id. at
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`3:30–33. CQ determination device 28 analyzes the power level output from
`
`3
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`IPR2020-01413
`Patent 8,199,726 B2
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`power measurement device 22 and interference level from interference
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`measurement device 24 and provides a CQ measurement to transmitter 26.
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`Id. at 3:33–37.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–10 and 14–18 of the ’726 patent.
`
`Claims 1, 6, and 14 are independent claims. Claim 1 is reproduced below.
`
`1. A user equipment (UE), comprising:
`
`a measurement device configured to take a plurality of
`measurements based on a downlink quality, wherein each of
`the plurality of measurements is taken on a respective
`downlink resource of a plurality of downlink resources;
`
`a channel quality determination device configured to:
`
`derive a first channel quality indication indicating a channel
`quality of the plurality of downlink resources; and
`
`derive a plurality of difference indications, each difference
`indication being between
`the first channel quality
`indication and a channel quality indication for one of the
`plurality of downlink resources; and
`
`a transmitting device configured to transmit at least one report
`including the first channel quality indication and the
`plurality of difference indications.
`
`Ex. 1001, 6:58–7:7.
`
`D. Instituted Grounds of Unpatentability
`
`We instituted inter partes review based on the following grounds of
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`unpatentability under 35 U.S.C. § 103(a)1 as follows (Dec. 4–5, 31):
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Because the ’726 patent has an effective filing date before the effective date
`of the applicable AIA amendments, we refer to the pre-AIA version of
`35 U.S.C. § 103. Petitioner asserts, and Patent Owner does not dispute, that
`
`4
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`IPR2020-01413
`Patent 8,199,726 B2
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`Claim(s) Challenged
`1–10, 14–18
`1–3, 6–8, 14–16
`1–10, 14–18
`6–10
`1–10, 14–18
`1–10, 14–18
`
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Tiedemann2
`Li3
`Li, Tiedemann
`Tiedemann, Padovani4
`Li, Gesbert5
`Tiedemann, Gesbert
`
`II. DISCUSSION
`
`A.
`
`Principles of Law
`
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
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`demonstrate by a preponderance of the evidence6 that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A patent
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`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.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations
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`including (1) the scope and content of the prior art; (2) any differences
`
`
`each relied upon reference is prior art under the pre-AIA version. Pet. 16–
`17, 61, 64; see generally PO Resp.
`2 U.S. Pat. No. 6,307,849 B1, issued Oct. 23, 2001 (Ex. 1005,
`“Tiedemann”).
`3 U.S. Pat. No. 6,947,748 B2, issued Sept. 20, 2005 (Ex. 1006, “Li”).
`4 U.S. Pat. No. 6,574,211 B2, issued June 3, 2003 (Ex. 1014, “Padovani”).
`5 U.S. Pat. No. 6,760,882 B1, issued July 6, 2004 (Ex. 1012, “Gesbert”).
`6 The burden of showing something by a preponderance of the evidence
`requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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`5
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`between the claimed subject matter and the prior art; (3) the level of ordinary
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`skill in the art; and (4) when in evidence, objective evidence of
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`nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`B. Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner relies on the declaration testimony of
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`Dr. Anthony Acampora, who testifies that a person having ordinary skill in
`
`the art “would have been someone with at least a bachelor’s degree in
`
`electrical engineering, or related field, with four years of experience in a
`
`relevant technical field, such as working with any one of a number of
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`wireless communications systems that were known in the relevant time
`
`period.” Pet. 6–7 (citing Ex. 1003 ¶ 49). Dr. Acampora further testifies that
`
`alternatively a person having ordinary skill in the art “would have been
`
`someone with at least a master’s degree in electrical engineering, or related
`
`field, with two years of experience in a relevant technical field.” Ex. 1003
`
`¶ 49.
`
`Patent Owner responds that it “applies Petitioners’ alleged baseline
`
`level of ordinary skill without the phrase ‘at least.’” PO Resp. 3.
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`We adopt Petitioner’s definition of the level of skill for purposes of
`
`this Decision, except that we delete the phrase “at least” to avoid including
`
`
`7 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
`
`6
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`ambiguity in the definition of the level of skill. We further note that the
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`prior art of record in the instant proceeding reflects the appropriate level of
`
`ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55
`
`(Fed. Cir. 2001) (holding the Board may omit specific findings as to the
`
`level of ordinary skill in the art “where the prior art itself reflects an
`
`appropriate level and a need for testimony is not shown”).
`
`C. Claim Construction
`
`In an inter partes review, “[claims] of a patent . . . shall be construed
`
`using the same claim construction standard that would be used to construe
`
`the [claims] in a civil action under 35 U.S.C. 282(b), including construing
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`the [claims] in accordance with the ordinary and customary meaning of such
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`[claims] as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`
`“receiver configured to receive . . .”
`
`
`
`Dependent claim 2 recites “[t]he UE of claim 1, further comprising: a
`
`receiver configured to receive at least one subsequent downlink transmission
`
`associated with at least one modulation and coding set in response to the
`
`transmitted first channel quality indication and the plurality of difference
`
`indications.” Dependent claims 7 and 15 include a similar phrase. For
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`purposes of this discussion, we focus on claim 2. Petitioner contends that
`
`the phrase “should be construed to require only that ‘a receiver’ at the UE is
`
`configured to receive a downlink transmission ‘associated with’ a
`
`modulation and coding set and that the transmission is received ‘in response
`
`to’ the first channel quality indication.” Pet. 14 (citing Ex. 1003 ¶ 85).
`
`Petitioner explains that the claim language does not require “that the ‘at least
`
`7
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`one modulation and coding set’ be a newly changed modulation and coding
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`set or that it be selected based on the first channel quality indication.” Id.
`
`(citing Ex. 1003 ¶ 87). Patent Owner disagrees with Petitioner’s proposed
`
`construction and argues that the claim language requires “that the MCS
`
`[modulation and coding set] must be associated with the subsequent
`
`downlink transmission in response to the first CQI [channel quality
`
`indication] and difference indications.” PO Resp. 15.
`
`We begin with the claim language. Claim 2 recites, “a receiver
`
`configured to receive at least one subsequent downlink transmission
`
`associated with at least one modulation and coding set in response to the
`
`transmitted first channel quality indication and the plurality of difference
`
`indications.” Petitioner argues that “in response to” is an adverbial phrase
`
`that modifies the verb “receive.” Pet. 14 (citing Ex. 1010, 1–3; Ex. 1003
`
`¶ 86). Patent Owner argues that “the adverbial phrase ‘in response’ modifies
`
`‘associated,’ not ‘receive,’ because an adverbial phrase typically modifies
`
`the nearest reasonable referent.” PO Resp. 15 (citing Ex. 2008, 152–153).
`
`Patent Owner concludes, therefore, that “the phrase ‘in response to’ modifies
`
`the verb ‘associated’ because it is between ‘receive’ and ‘in response to.’”
`
`Id.
`
`We agree with Petitioner that “associated with” is an adjective phrase
`
`where the word “associated” is itself an adjective, not a verb as Patent
`
`Owner argues. Pet. Reply 5–6 (citing Ex. 1021). Tellingly, Patent Owner’s
`
`arguments and supporting evidence are premised on the mischaracterization
`
`of the disputed limitation to require “that the subsequent downlink
`
`transmission be ‘associated with at least one [MCS] in response to the
`
`transmitted first [CQI] and . . . difference indications.” PO Resp. 15. The
`
`claim, however, does not recite that the subsequent downlink transmission
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`8
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`IPR2020-01413
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`be associated with at least one modulation and coding set. Insertion of the
`
`word “be” or “to be” changes the meaning of the disputed limitation.
`
`Accordingly, we decline to rewrite the claim as Patent Owner suggests. As
`
`such, we find that “in response to” modifies “receive,” not “associated
`
`with.” Thus, the plain meaning of the claim language includes a modulation
`
`and coding set associated with the subsequent downlink transmission. The
`
`plain language of the claim does not require that the modulation and coding
`
`set be selected based on the first channel quality indication and plurality of
`
`difference indications as Patent Owner asserts.
`
`We next turn to the written description of the ’726 patent. Patent
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`Owner argues that “[a] goal of the invention is ‘to determine the proper
`
`modulation and coding to use for the downlink channels,’ and the
`
`specification explains that the appropriate MCS is determined based on
`
`channel quality” and that “[t]he claim language parallels this process.” PO
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`Resp. 16 (citing Ex. 1001, 5:19–21, 5:66–6:6 (describing “alternative 6”; Ex.
`
`2001 ¶ 56). Patent Owner further argues that the claim language “was
`
`similarly interpreted during prosecution.” Id. (citing Ex. 1002, 48).
`
`
`8 Patent Owner cites to page 4 of Exhibit 1002. That page, however, is
`included in the “Application Data Sheet” information and appears to have
`nothing to do with the argument presented. Ex. 1002, 3–4. We decline to
`sift through over eleven hundred pages to try to find what Patent Owner
`intended to cite in support of the position that the “language was similarly
`interpreted during prosecution.” PO Resp. 16. Moreover, Patent Owner
`fails to explain sufficiently how the language it quotes, “mapping an
`‘adjusted data rate and modulation scheme [that] is at least one modulation
`and coding set,’” supports the position that the disputed claim language was
`interpreted during prosecution the same as Patent Owner proposes here. No
`explanation is provided.
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`9
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`The testimony of Patent Owner’s expert, Dr. Mark Mahon, is also
`
`based on a flawed reading of the claim limitation to require “that the
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`‘subsequent downlink transmission’ be associated with at least one MCS in
`
`response to the transmission of the ‘first channel quality indication and the
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`plurality of difference indications.’” Ex. 2001 ¶ 56. Again, the claim
`
`limitation does not recite that the subsequent downlink transmission be
`
`associated with at least one modulation and coding set. In that light, we do
`
`not give much weight to Dr. Mahon’s testimony regarding how the written
`
`description of the ’726 patent supports the way that Dr. Mahon reads the
`
`claim language.
`
`In any event, Dr. Mahon does not explain how the embodiment
`
`describing alternative 6 is instructive of how we should interpret the
`
`disputed limitation. Id. Indeed, as the parties seem to assert, only certain
`
`embodiments that describe a “difference” indication are relevant to what is
`
`claimed in the independent claims from which claims 2, 7 and 15 depend.
`
`See Pet. 12 (explaining that Table 2 shows two examples that “employ the
`
`‘differential’ channel quality encoding to which the claims are directed”);
`
`PO Resp. 13 (explaining that Table 2 example 8 and corresponding
`
`description make it clear that “difference indications allow the base station
`
`to determine the CQI for a particular downlink resource by undoing the
`
`reported difference”). In alternative 6, however, “the UE 12 selects the
`
`available modulation coding sets (MCS) from the RSCP and ISCP
`
`measurements, and transmits this selection to the base station which the base
`
`station 30 uses for transmission.” Ex. 1001, 5:66–6:2. The UE “calculates
`
`which MSCs would be supportable give the current CQ.” Id. at 6:4–6.
`
`Missing from this description is that the modulation and coding set is in
`
`response to the transmitted first channel quality indication and the plurality
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`10
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`IPR2020-01413
`Patent 8,199,726 B2
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`of difference indications or that the technique is even relevant to what a UE
`
`receiver receives. Patent Owner has failed to show that such description
`
`supports its narrower proposed construction.
`
`The other portion of the Specification to which we are directed states
`
`that “[t]he goal of the present invention is to return timely and accurate CQ
`
`information and to determine the proper modulation and coding to use for
`
`the downlink channels.” Ex. 1001, 5:19–21. Dr. Mahon fails to explain
`
`how this description supports construing the disputed limitation the way that
`
`Patent Owner proposes. Ex. 2001 ¶ 56. Notably missing from the
`
`description is any mention about “difference indications” or that the “proper
`
`modulation and coding to use for the downlink channels” is dictated by the
`
`CQ information. We decline to read the passage to contain more than it
`
`does. It is broad and not as specific as Patent Owner proposes. For the
`
`above reasons, we adopt Petitioner’s proposed construction and construe the
`
`disputed term to “require only that ‘a receiver’ at the UE is configured to
`
`receive a downlink transmission ‘associated with’ a modulation and coding
`
`set and that the transmission is received ‘in response to’ the first channel
`
`quality indication.” Pet. 14.
`
`For purposes of this Decision, we need not expressly construe any
`
`other claim terms. 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
`
`11
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`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`
`in the context of an inter partes review).
`
`D.
`
`Asserted Obviousness of Claims 1–10 and 14–18 over Tiedemann in
`view of Gesbert
`
`1. Tiedemann
`
`Tiedemann describes a system for adjusting forward traffic channel
`
`power allocation in a communications system. Ex. 1005, code (57). A
`
`mobile station (mobile) measures signal qualities (signal to interference
`
`ratios) of pilot channels from base stations. Id. at 3:5–8. The mobile “uses a
`
`ratio of the received pilot energy per chip (Ec) to total received spectral
`
`density, noise and signals, denoted as Ec/Io, as a measure of the quality of the
`
`received pilot.” Id. at 7:12, 8:50–60, Fig. 3. The signal qualities are
`
`compared to a signal quality standard and the comparison results are
`
`reported to a system controller, indicating which of the pilot channels
`
`surpass the standard. Id., code (57).
`
`2. Gesbert
`
`Gesbert describes a method for selecting a mode for encoding data for
`
`transmission in a wireless communication channel between a transmit unit
`
`and a receive unit. Ex. 1012, 2:56–59. Data is encoded in accordance with
`
`an initial mode and transmitted to a receive unit. Id. at 2:59–61. Quality
`
`parameters are sampled in the data received by the receive unit. Id. at 2:61–
`
`62. A first-order statistical parameter and a second-order statistical
`
`parameter of the quality parameter are computed and used for selecting a
`
`subsequent mode for encoding the data. Id. at 2:62–65. Gesbert describes
`
`that the quality parameters can include several short-term quality parameters
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`12
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`and be selected among parameters such as signal-to-interference and noise
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`ratio (SINR). Id. at 2:66–3:3.
`
`3. Discussion
`
`Petitioner contends claims 1–10 and 14–18 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Tiedemann in view of Gesbert. Pet. 63–
`
`67. In support of its showing, Petitioner relies upon the declaration of
`
`Dr. Anthony Acampora. Id. (citing Ex. 1003). Patent Owner relies upon the
`
`declaration of Dr. Mark Mahon (Ex. 2001). PO Resp.
`
`As explained in the Decision to Institute, this challenge builds on the
`
`challenge made in the Petition based on Tiedemann alone. Dec. 28; Pet. 18–
`
`42. For example, Claim 1 recites “a first channel quality indication
`
`indicating a channel quality of the plurality of downlink resources.”
`
`Independent claims 6 and 14 recite similar limitations. Petitioner argues that
`
`to the extent Tiedemann does not meet this limitation, “it would have been
`
`obvious to include that functionality in the system of Tiedemann” in view of
`
`Gesbert. Pet. 64. In particular, Petitioner argues that Gesbert discloses
`
`deriving a mean channel quality value for a plurality of downlink resources
`
`that would be “a first channel quality indication” as claimed. Id. at 64–65.
`
`Petitioner also argues that the “differential indicators” in Tiedemann “would
`
`be calculated relative to this mean value.” Id. at 65. Petitioner provides
`
`reasons to combine Tiedemann with Gesbert. Id. at 65–67. For the
`
`remaining claim elements, we refer to Petitioner’s showing based on
`
`Tiedemann alone. Id. at 18–42.
`
`Patent Owner recognizes that “Ground 5 builds on the petition’s
`
`challenge based on Tiedemann alone (i.e., Ground 1)” and states that “its
`
`discussion below addresses the Board’s stated understanding of Ground 5.”
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`PO Resp. 44. Patent Owner argues, however, that it “maintains that Ground
`
`5 does not sufficiently identify which aspects of which references apply to
`
`each limitation.” Id. (emphasis added). To the extent Patent Owner is
`
`attempting to “maintain” arguments from pages 28–29 of its Preliminary
`
`Response, we find that Patent Owner has not preserved those arguments. Id.
`
`In our Scheduling Order, we notified the parties that “Patent Owner is
`
`cautioned that any arguments not raised in the [Patent Owner Response] may
`
`be deemed waived.” Paper 9, 8; see also In re NuVasive, Inc., 842 F.3d
`
`1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s failure to proffer
`
`argument at trial as instructed in the scheduling order constitutes waiver).
`
`Any arguments for patentability not raised in the Patent Owner Response are
`
`deemed waived. Merely mentioning an argument made in the Preliminary
`
`Response without providing the substance of that argument does not
`
`preserve the argument at trial. Accordingly, we consider any such argument
`
`to have been waived.
`
`With respect to independent claims 1, 6, and 14, Patent Owner argues
`
`that Petitioner fails to show that a person having ordinary skill in the art
`
`would have made the proposed modifications to Tiedemann. PO Resp. 44–
`
`46; see also Tr. 13:20–15:13, 47:11–48:14. Patent Owner makes additional
`
`arguments with respect to certain dependent claim and independent claim 6
`
`limitations. PO Resp. 61–62.
`
`For our analysis, we first focus on the terms of each of the claims.
`
`Then, we evaluate Petitioner’s reasons to combine Tiedemann and Gesbert,
`
`and Patent Owner’s arguments to that end. For the reasons that follow, we
`
`conclude that Petitioner has met its burden of proving by a preponderance of
`
`the evidence that each of the challenged claims 1–10 and 14–18 would have
`
`been obvious in view of the asserted prior art.
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`14
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`a. Claim 1: “a user equipment comprising:” (preamble)9
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`Claim 1 recites “user equipment.” Petitioner contends, and we agree,
`
`that Tiedemann describes examples of a mobile unit or “mobile,” which is
`
`“user equipment,” because it provides for the delivery of user data to a user.
`
`Pet. 19 (citing Ex. 1005, 4:18–5:5, 7:11–9:53, 10:64–16–19, Figs. 1, 3, 11;
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`Ex. 1003 ¶ 115). Patent Owner does not dispute Petitioner’s showing with
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`respect to the preamble. See generally PO Resp.
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`b. Claim 1: “a measurement device configured to take a
`plurality of measurements based on a downlink quality,
`wherein each of the plurality of measurements is taken on a
`respective downlink resource of a plurality of downlink
`resources”
`
`For the above limitation, Petitioner contends, and we agree, that
`
`Tiedemann describes that the mobile measures downlink quality of a number
`
`of pilot channels, and that the pilot channels are “a plurality of downlink
`
`resources” because each channel is transmitted in the downlink direction
`
`(from base station to mobile). Pet. 20 (citing Ex. 1005, code (57), 1:67–2:4,
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`3:5–10, 4:47–61, 5:6–6:5, 18:6–11; Ex. 1003 ¶ 118). Petitioner further
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`contends that the mobile includes search receiver 44 that receives the pilot
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`channel information and “uses a ratio of the received pilot energy per chip
`
`(Ec) to total received spectral density, noise and signals, denoted as Ec/Io, as
`
`a measure of the quality of the received pilot.” Id. (citing Ex. 1005, 8:50–
`
`60, Fig. 3; Ex. 1003 ¶ 119). We agree with Petitioner that measurements of
`
`“received pilot energy per chip (Ec)” and of “total received spectral density,
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`noise and signals” for each pilot meets the “measurements based on a
`
`downlink quality,” because each is an indication of how efficiently a channel
`
`
`9 We need not determine whether the preamble is limiting because
`Petitioner shows that Tiedemann meets the preamble.
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`is capable of communicating information. Id. (citing Ex. 1007, 1:30–2:30;
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`Ex. 1003 ¶ 120). Petitioner contends that, to the extent Tiedemann’s mobile
`
`receiver 44 does not meet the claimed “measurement device,” it would have
`
`been obvious to include structures and functionality required to take the
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`claimed measurements within search receiver 44. Id. at 21–22 (citing Ex.
`
`1005, 8:50–60, Fig. 3; Ex. 1003 ¶¶ 122–124).
`
`Petitioner asserts that Tiedemann describes that search receiver 44
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`“provides a signal strength measurement signal to the control processor 46
`
`indicative of the respective pilot channels and their strengths.” Id. at 22
`
`(quoting Ex. 1005, 8:50–60). Petitioner contends, and we agree, that a
`
`person having ordinary skill in the art would have understood “from this that
`
`search receiver 44 is taking the disclosed measurements on each ‘of the
`
`respective pilot channels.’” Id. at 22–23 (citing Ex. 1005, 18:6–10, Fig. 7;
`
`Ex. 1003 ¶ 125). Patent Owner does not contest Petitioner’s showing as to
`
`the above limitation. See generally PO Resp.
`
`c. Claim 1: “a channel quality determination device configured
`to”
`
`Claim 1 further recites “a channel quality determination device.”
`
`Petitioner contends, and we find, that Tiedemann’s mobile control processor
`
`46 is a channel quality determination device, because it is a device that
`
`makes several different determinations related to channel quality. Pet. 23
`
`(citing Ex. 1005, 11:18–12:38, Fig. 5B; Ex. 1003 ¶¶ 127–130). Patent
`
`Owner does not contest Petitioner’s showing as to the above limitation. See
`
`generally PO Resp.
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`d. Claim 1: “derive a first channel quality indication indicating
`a channel quality of the plurality of downlink resources”
`
`Petitioner argues that Gesbert discloses deriving a mean channel
`
`quality value for a plurality of downlink resources that would be “a first
`
`channel quality indication” as claimed. Pet. 64–65. In particular, Petitioner
`
`contends that Gesbert describes a mobile unit (receive unit) taking SINR
`
`measurements on each of a number of transmission frequencies and during
`
`time slots in which training tones are transmitted from the base station. Id.
`
`at 64 (citing Ex. 1012, 2:56–3:3, 8:13–24). Petitioner asserts, and we agree,
`
`that a person having ordinary skill in the art would have understood the
`
`training tones to be analogous to pilot beacons (downlink resources). Id.
`
`(citing Ex. 1017 ¶ 32). Petitioner contends, and we agree, that Gesbert
`
`describes using the measurements made during a time window to compute a
`
`mean SINR of those values, which meets “a first channel quality indication
`
`indicating a channel quality of the plurality of downlink resources.” Id. at
`
`64–65 (citing Ex. 1012, 8:24–41; Ex. 1003 ¶¶ 363–364). Petitioner
`
`proposes to include Gesbert’s mean in place of the three bit field of
`
`Tiedemann (Petitioner’s first mapping of Tiedemann). Id. at 65; see id. 23–
`
`25. Patent Owner does not contest Petitioner’s showing as to the above
`
`limitation. See generally PO Resp.
`
`e. Claim 1: “derive a plurality of difference indications, each
`difference indication being between the first channel quality
`indication and a channel quality indication for one of the
`plurality of downlink resources”
`
`Petitioner proposes to include the mean of Gesbert in place of the
`
`three bit field of Tiedemann (Petitioner’s first mapping of Tiedemann) in the
`
`bit vector message and then the differential indicators “described above”
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`would be calculated relative to the mean value. Pet. 65 (citing Ex. 1003
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`¶ 365).
`
`The “described above” reference is with respect to Petitioner’s
`
`explanation (id. at 28–30) of how Tiedemann alone calculates differential
`
`indicators using the “the three bit field of Tiedemann.” Id. There, Petitioner
`
`contends that Tiedemann discloses that the mobile receives from the
`
`communication system a quantity “Δ,” which the mobile uses to calculate a
`
`threshold value “Δr” that represents “a fixed level Δ beneath the strongest
`
`signal-to-noise ratio of the pilots A, B, and C in the mobile’s active set,” for
`
`making comparisons between respective qualities of the pilot channels being
`
`measured. Id. at 28 (citing Ex. 1005, 11:18–67; Ex. 1003 ¶ 149). Petitioner
`
`further contends that control processor 46 derives an indicator U for each
`
`respective pilot channel in the set that indicates whether the corresponding
`
`pilot channel was received above the Δr threshold signal. Id. (citing Ex.
`
`1005, 13:35–45, 15:41–56, Figs. 6A, 6B; Ex. 1003 ¶ 150). Petitioner argues
`
`that each quantity U is a “difference indication” as claimed because the U
`
`for each pilot channel indicates whether the quality of that pilot channel
`
`differs from the best pilot quality of the plurality (identified by I1, I2, I3) by
`
`more or less than the threshold Δ. Id. at 28–29 (citing Ex. 1005, 11:18–22,
`
`13:38–39, Fig. 5B; Ex. 1003 ¶¶ 151–152).
`
`For the challenge based on Tiedemann and Gesbert, we understand
`
`that Gesbert’s mean value would replace Tiedemann’s “three bit field” in
`
`making the U calculations. Id. at 65 (citing Ex. 1003 ¶ 365). Thus, in the
`
`combination, the threshold value “Δr” would represent a fixed level Δ
`
`beneath the mean value of the pilots A, B, and C in the mobile’s active set
`
`for making comparisons between respective qualities of the pilot channels
`
`being measured. We find that the combination of Tiedemann and Gesbert
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`meets the limitation of deriving difference indicators as claimed. Patent
`
`Owner does not contest Petitioner’s showing as to the above limitation. See
`
`generally PO Resp.
`
`f. Claim 1: “a transmitting device configured to transmit at
`least one report including t