Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: April 14, 2022
`
`
`
`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.
`____________
`
`IPR2020-01505
`Patent 8,797,873 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, CHRISTOPHER L. OGDEN, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 31
`Date: April 14, 2022
`
`
`
`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.
`____________
`
`IPR2020-01505
`Patent 8,797,873 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, CHRISTOPHER L. OGDEN, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-01505
`Patent 8,797,873 B2
`
`
`
`I.
`INTRODUCTION
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
`Motorola Mobility LLC (“Petitioner”) filed a Petition to institute an inter
`partes review (“IPR”) of claims 1–10 (the “challenged claims”) of U.S.
`Patent No. 8,797,873 B2 (Ex. 1001, the “’873 patent,” “challenged patent”)
`pursuant to 35 U.S.C. § 311 et seq. Paper 1 (“Pet.”). InterDigital
`Technology Corporation (“Patent Owner”) filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”).
`On April 15, 2021, we instituted an inter partes review of all
`challenged claims. Paper 11 (“Institution Decision” or “Inst. Dec.”). Patent
`Owner filed a Patent Owner Response (Paper 16, “PO Resp.”). Petitioner
`filed a Reply (Paper 19, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 20, “PO Sur-reply”). A transcript of an oral hearing held on January
`25, 2022 (Paper 30, “Tr.”) has been entered into the record.
`We have jurisdiction under 35 U.S.C. § 6. For the reasons discussed
`below, we determine that Petitioner has not shown, by a preponderance of the
`evidence, that claims 1–10 are unpatentable.
`A. Related Matters
`The parties identify the following related district court litigation:
`InterDigital Technology Corp. v. Lenovo Holding Co., Case No. 1-19-cv-
`01590 (D. Del.) (“Related Litigation”). Pet. 3; Paper 5, 2.
`Patent Owner identifies IPR2020-01236, IPR2020-01237, IPR2020-
`01413, IPR2020-01481, IPR2020-01494, IPR2020-01514, and IPR2020-
`01515 as all challenging patents asserted in the related district court
`litigation. Paper 5, 2–3.
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`B. Challenged Patent
`The ’873 patent relates to “a method and apparatus for preventing
`transmission blocking in an HSUPA [high speed uplink packet access]
`wireless communication system.” Ex. 1001, 1:18–22.
`Figure 1 of the ’873 patent is shown below:
`
`
`
`Figure 1 above is a functional block diagram of a WTRU (wireless
`transmit/receive unit) 110 and NB (Node-B) 120. Ex. 1001, 3:44–45. In the
`’873 patent, the term “WTRU” encompasses “user equipment (UE), a mobile
`station, a fixed or mobile subscriber unit, a pager, a cellular telephone, a
`personal digital assistant (PDA), a computer, or any other type of user device
`capable of operating in a wireless environment.” Id. at 3:34–39. Further, in
`the ’873 patent, the term “base station” encompasses a Node-B. Id. at 3:39–
`41. “WTRU 110 is in communication with the NB 120 and both are
`configured to perform a method for preventing transmission blocking in an
`HSUPA wireless communication system.” Id. at 3:46–49.
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`Figure 2 of the ’873 patent is shown below:
`
`
`
`
`Figure 2 above “is a flow diagram of a method for preventing transmission
`blocking in an HSUPA wireless communication system.” Ex. 1001, 3:19–21.
`The ’873 patent discloses that, in step 210 of this flow diagram, “a trigger
`condition for transmitting an SI [scheduling information] is detected.” Id.
`at 4:8–9. The ’873 patent provides the following example of a trigger
`condition: “the transmission of the SI alone may occur when the transmission
`of any, or in a specifically defined, MAC-d [medium access control-d] flow
`is stopped because the current non-zero grant is smaller than the minimum
`required to transmit the next MAC SDU [service data unit], or RLC [radio
`link control] PDU [protocol data unit] of the particular MAC-d flow.” Id.
`at 4:9–14. The ’873 patent further describes that “[t]he trigger condition, in
`this case, may occur when it is not possible to transmit a single PDU of a
`given MAC-d flow.” Id. at 4:14–16.
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`C. Challenged Claims
`Petitioner challenges claims 1–10. Pet. 1. Claims 1 and 6 are
`independent. Ex. 1001, 7:36–8:37. Claim 1 reads:
`1. A method performed by a Third Generation Partnership
`Project (3GPP) wireless transmit/receive unit (WTRU), the
`method comprising:
`triggering transmission of scheduling information (SI),
`from the WTRU to a Node-B, in response to the WTRU having
`a non-zero grant smaller than needed preventing the WTRU from
`sending a medium access control protocol data unit (PDU) of any
`of a plurality of scheduled medium access control-d (MAC-d)
`flows.
`Id. at 7:36–8:6. Claim 6 reads:
`6. A Third Generation Partnership Project (3GPP) wireless
`transmit/receive unit (WTRU) comprising:
`circuitry configured to trigger transmission of scheduling
`information (SI), from the WTRU to a Node-B, in response to
`the WTRU having a non-zero grant smaller than needed
`preventing the WTRU of transmission of a medium access
`control protocol data unit (PDU) of any of a plurality of
`scheduled medium access control-d (MAC-d) flows.
`Id. at 8:17–26.
`D. Asserted Challenges to Patentability and Prior Art
`Petitioner challenges claims 1–10 based on the grounds in the table
`below:
`Ground
`
`References
`
`Zhang1
`Zhang
`
`Claims
`Challenged
`1, 5, 6, and 10
`1, 5, 6, and 10
`
`35 U.S.C.
`§
`102
`103
`
`1
`2
`
`
`1 US 2005/0105553 A1 (Ex. 1005).
`
`
`5
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`Ground
`
`3
`4
`5
`
`Claims
`Challenged
`1–10
`1, 5, 6, and 10
`1–10
`
`35 U.S.C.
`§
`103
`103
`103
`
`References
`
`Zhang, TS 25.3212
`Zhang, Lohr3
`Zhang, Lohr, TS 25.321
`
`Pet. 4–5.
`Petitioner relies on a declaration from its expert, Apostolos K. Kakaes,
`Ph.D. (Ex. 1003), and Patent Owner relies on a declaration from its expert,
`Mark Mahon, Ph.D. (Ex. 2001).
`II.
`LEVEL OF ORDINARY SKILL AND CLAIM CONSTRUCTION
`A. Level of Ordinary Skill in the Art
`To determine the level of an ordinarily skilled artisan, various factors
`may be considered, including the “type of problems encountered in the art;
`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)
`(quotation omitted).
`Petitioner, citing Dr. Kakaes’s testimony, proposes that an ordinarily
`skilled artisan at the time of the invention likely would have had “a degree in
`electrical engineering, computer engineering, computer science, or related
`field with a[t] least two years of experience in a relevant wireless
`communications system, such as the Universal Mobile Telecommunications
`
`
`2 3GPP TS 25.321 V6.5.0 3rd Generation Partnership Project;
`Technical Specification Group Radio Access Network; Medium Access
`Control (MAC) protocol specification (Release 6), 3GPP (June 2005)
`(Ex. 1010).
`3 USP 7,948,936 B2 (Ex. 1006).
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`System (UMTS).” Pet. 7–8 (citing Ex. 1003 ¶ 49). Petitioner further
`proposes that the ordinarily skilled artisan also would have been familiar with
`“basic wireless, cellular, and computer communications technologies and
`techniques, including data transmission and signaling.” Id. (citing Ex. 1003
`¶ 49). Petitioner also asserts that “[a]dditional formal education could make
`up for less professional experience, and additional professional experience
`could make up for less formal education.” Id. (citing Ex. 1003 ¶ 49).
`In our Institution Decision, we accepted Petitioner’s proposed
`definition with one modification. Inst. Dec. 12–13. We determined that,
`arguably, the term “at least” creates unnecessary ambiguity, so we deleted
`that term from Petitioner’s definition and otherwise applied that definition.
`Id. at 13. Neither party has requested that we modify the definition we
`applied in our Institution Decision. PO Resp. 4–5; see generally Pet. Reply.
`Thus, we maintain that definition because it is not disputed and is appropriate
`for the subject matter of the ’873 patent. Ex. 1003 ¶ 49; Ex. 2001 ¶ 31.
`B. Claim Construction
`In an inter partes review proceeding based on a petition filed on or
`after November 13, 2018, a patent claim shall be construed using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). This
`rule adopts the same claim construction standard used by Article III federal
`courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc), and its progeny. Under this standard, the words of a claim are
`generally given their “ordinary and customary meaning,” which is the
`meaning a term would have to a person of ordinary skill at the time of the
`
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`invention, in the context of the entire patent including the specification. See
`id. at 1312–13.
`For this Decision, we only need to construe one claim term: “non-zero
`grant,” recited in claims 1 and 6.
`1. Parties’ Arguments Regarding the Construction of “Non-Zero
`Grant”
`Petitioner proposes construing “non-zero grant” as “information from a
`Node-B giving permission to the WTRU to engage in data transmission
`according to said information.” Pet. 12. Petitioner quotes the disclosure
`from the ’873 patent specification (“Specification”) that a
`wireless
`transmit/receive unit
`(WTRU) detects whether
`transmission of a medium access control (MAC) flow, such as a
`MAC dedicated transport channel flow, is prevented by a small
`non-zero grant. Transmission blocking may be detected when a
`non-zero grant is smaller than required for transmission of a MAC
`protocol data unit.
`Id. (emphases omitted) (quoting Ex. 1001, code (57); citing Ex. 1003 ¶ 64).
`Petitioner also quotes the Specification’s disclosure that “the transmission of
`the SI alone may occur when the transmission of any, or in a specifically
`defined, MAC-d flow is stopped because the current non-zero grant is smaller
`than the minimum required to transmit the next MAC SDU, or RLC PDU, of
`the particular MAC-d flow.” Id. (emphasis omitted) (quoting Ex. 1001, 4:9–
`14).
`
`Patent Owner argues that “non-zero grant” should be construed to
`mean a “power ratio greater than zero.” PO Resp. 9. Patent Owner asserts
`that the following passage in the Specification defines the term “grant” to
`mean a power ratio: “transmission of scheduling information (SI) is only
`allowed under certain conditions . . . such as if the user has a grant (power
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`Patent 8,797,873 B2
`ratio) of zero.” Id. at 7–8 (quoting Ex. 1001, 2:42–49) (emphasis by Patent
`Owner). Patent Owner asserts that the parenthetical reference to a power
`ratio is more than an illustrative example because the Specification identifies
`no other type of grant. Id. (citing Ex. 2001 ¶ 35). Further, Patent Owner
`argues that the Specification repeatedly refers to grants as power ratios. Id.
`(citing Ex. 2001 ¶¶ 35–36). Patent Owner also contends that a power ratio
`cannot be negative, so a “non-zero” power grant must be greater than zero.
`Id. at 9 (citing Ex. 2001 ¶ 38). Further, Patent Owner argues that, in the
`Related Litigation, the District Court construed “non-zero grant” to mean a
`“power ratio greater than zero.” Id. at 7 (citing Ex. 2009, 13).
`In its Reply, Petitioner argues that the term “non-zero grant” is not
`limited to a power ratio. Pet. Reply 1. Petitioner asserts that the passage of
`the Specification with the parenthetical that Patent Owner relies upon is in
`the Background section of the Specification and refers to only one exemplary
`prior art system. Id. at 2. Further, Petitioner argues that its proposed
`construction correctly captures the function within the claims of the “non-
`zero grant.” Id. at 3. Additionally, Petitioner asserts that the Specification
`repeatedly uses the terms “granted power ratio” and “power ratio grant,”
`which means that the terms “power ratio” and “grant” are not
`interchangeable, and the applicant could have used the phrase “power ratio”
`in its claims if that was the intended meaning. Id. at 4–5.
`In its Sur-reply, Patent Owner argues that the fact that the passage with
`the parenthetical that it relies upon is in the Background section of the
`Specification is of no consequence. PO Sur-reply 3. Patent Owner also
`disputes that the parenthetical reference to a power ratio merely describes
`how one exemplary prior art system works. Id. Patent Owner asserts that the
`
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`Patent 8,797,873 B2
`cited passage with the parenthetical refers to the 3GPP standard, and the
`claims of the ’873 patent are directed to 3GPP devices and methods. Id.
`2. Analysis
`In our Institution Decision, based on the record at the time, we adopted
`Petitioner’s proposed construction for “non-zero grant.” Inst. Dec. 16–17.
`At that time, Patent Owner had not proposed a construction for “non-zero
`grant.” Prelim. Resp. 3.
`In this Decision, we adopt Patent Owner’s proposed construction. See
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[At the
`institution stage], the Board is considering the matter preliminarily without
`the benefit of a full record. The Board is free to change its view of the merits
`after further development of the record, and should do so if convinced its
`initial inclinations were wrong.”). The intrinsic and extrinsic evidence of
`record support that proposed construction, and do not support Petitioner’s.
`We further note that, in the Related Litigation, in an opinion issued after our
`Institution Decision, the District Court adopted Patent Owner’s proposed
`construction.
`a. The Intrinsic and Extrinsic Evidence Support Patent
`Owner’s Proposed Construction
`As set forth below, the Specification describes a “grant” as a “power
`ratio.” Ex. 2001 ¶¶ 33–36. Pertinent extrinsic evidence (e.g., 3GPP TS
`25.321 V7.1.0 Technical Specification (Ex. 1023) (“3GPP Technical
`Specification”)) further describes a “grant” as a “power ratio.” Id. ¶ 37. In
`addition, as Dr. Mahon testifies, and Petitioner does not dispute, a power
`ratio cannot be negative. Id. ¶ 38. Thus, the intrinsic and extrinsic evidence
`of record support construing a “non-zero grant” as a “power ratio greater than
`zero.”
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`
`i. The Specification Describes a Grant as a Power
`Ratio
`The Specification describes a “grant” as a “power ratio.” Ex. 2001
`¶¶ 33–36. First, when describing the current state of the art, the Specification
`has a parenthetical with the term “power ratio” following the term “grant”:
`In the current state of the art, transmission of scheduling
`information (SI) is only allowed under certain conditions such as
`those described in 3GPP TS 25 .321, such as if the user has a grant
`(power ratio) of zero or has all its processes de-activated and has
`data to transmit, upon a change of E-DCH serving RLS (base
`station), or periodically, with a configurable period depending on
`whether the user has a grant or not.
`Ex. 1001, 2:42-49 (emphasis added).
`In Novacor Chemicals, Inc. v. United States, the Federal Circuit held
`that “general principles of construction support the view that a parenthetical
`is the definition of the term which it follows.” Novacor Chemicals, Inc. v.
`United States, 171 F.3d 1376, 1381 (Fed. Cir. 1999). An exception to this
`principle is when the parenthetical is merely an illustrative example. Id.
`Novacor addressed an issue of regulatory construction and determined
`that the parenthetical at issue in that case—“(additional duties assessed upon
`liquidation or reliquidation)”—was merely an illustrative example of the
`regulatory term being construed—“supplemental duties.” Novacor
`Chemicals, Inc., 171 F.3d at 1381. Novacor reached that conclusion because
`the code and involved regulation established that “supplemental duties”
`included “increased duties,” which the parenthetical excluded. Id.
`Here, we determine that the term “power ratio” in the involved
`parenthetical in the Specification is a definition, and not merely an illustrative
`example, of a “grant.”
`
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`First, the Specification does not identify any other type of grant.
`Dr. Mahon testifies that the Specification does not provide an example of any
`other type of grant. Ex. 2001 ¶ 35. Petitioner offers no rebuttal expert
`testimony and identifies no other type of grant disclosed in the Specification.
`See Pet. Reply 1–5. We credit Dr. Mahon’s unrebutted testimony that the
`Specification does not identify any other type of grant. Ex. 2001 ¶ 35. Thus,
`the parenthetical at issue in this case does not exclude any grant described in
`the Specification (nor, as set forth in Section II.B.2.ii, any grant set forth by
`ordinary meaning of the term grant based on the extrinsic evidence of
`record).
`Second, the Specification repeatedly describes a grant as a power ratio.
`Ex. 2001 ¶¶ 33–36. The Specification describes Node-B commands as
`conveyed by grant channels and expressed by power ratios: “Node-B
`commands are conveyed by absolute or relative grant channels” and “Node-
`B commands are expressed by a maximum power ratio over the power of the
`UL control channel (DPCCH).” Ex. 1001, 1:35–41 (emphases added). The
`Specification further describes a power ratio as determining how much data
`can be transmitted: “[t]he WTRU and Node-B are aware how much data can
`be transmitted for a given power ratio.” Id. at 1:52–53 (emphasis added). In
`the Specification, grants determine whether data can be transmitted. Id.
`at 2:42–49, 2:66–3:3. The Specification further describes a power ratio
`determining whether data can be transmitted as a grant: “[d]uring scheduled
`operation, WTRU transmissions from a given MAC-d flow can be
`completely interrupted, or ‘blocked,’ if the granted power ratio falls under
`the minimum required to transmit the RLC PDU at the head of buffer.” Id.
`at 2:12–14 (emphasis added). The Specification further describes a power
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`ratio grant: “[t]he power ratio grant required to transmit an E-TFC (MAC-e
`PDU) of a certain size is known by the WTRU 110, NB 120 and RNC.” Id.
`at 4:58–61 (emphasis added). Similarly, the Specification describes a grant
`as a power ratio in the following passage:
`In another embodiment of the present invention, the data
`rate is managed through the use of a scheduling grant. In this
`embodiment, the transmission is allowed for a minimum number
`of PDUs (Nmin) of the MAC-d flow for every new MAC-e
`transmission, without regard to the data rate imposed by the
`power ratio and without regard to the size of the PDU or PDUs.
`Id. at 6:11–17 (emphases added). Another disclosure of a grant as a power
`ratio in the Specification is:
`If the required power ratio to transmit the Nmin PDUs is
`higher than the current grant, several options may be employed.
`Preferably, the power ratio is allowed to increase above the
`current grant to support the transmission of the PDUs. However,
`the power ratio may also stay at the current grant, with the WTRU
`110 selecting the minimum E-TFC that can support the Nmin
`PDUs.
`Id. at 6:32–38 (emphases added). Thus, the Specification repeatedly
`describes a “grant” as a “power ratio.”
`Third, Petitioner argues that the passage in the Specification with the
`parenthetical with the term power ratio is in the Background section of the
`Specification and is not a description of the invention of the ’873 patent. Pet.
`Reply 2. Petitioner asserts that, as such, the passage is merely a passing
`reference to an exemplary prior art system and does not clearly set forth a
`new definition for a claim term as required by Bell Atlantic Network Services,
`Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir.
`2001). Id. We disagree. Although the involved passage in the Specification
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`appears in the Background section of the ’873 patent, Bell Atlantic does not
`indicate that we should disregard that passage’s teachings.
`Bell Atlantic addressed the requirements for “redefining the meaning
`of particular claim terms away from the ordinary meaning.” Bell Atlantic,
`262 F.3d at 1268. To redefine such claim terms, “the intrinsic evidence must
`‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one
`reasonably skilled in the art on notice that the patentee intended to so
`redefine the claim term.” Id. Here, Patent Owner is not redefining the term
`“grant” away from its ordinary meaning. As indicated by both the
`Specification and the extrinsic evidence of record, the ordinary meaning for a
`“grant” in the pertinent field is a “power ratio.” See above and Section
`II.B.2.a.ii below.
`Further, there is no requirement that a definition for a claim term
`appear only in the Detailed Description of the Preferred Embodiments. As
`set forth in Section II.B.2.a.ii below, the definition that the Specification
`provides for “grant” is the term’s ordinary meaning, and there is no reason
`that ordinary meaning cannot be provided when addressing the current state
`of the art in the Background section of the Specification. Further, as set forth
`above, the definition in the Background section is consistent with the
`teachings provided in the Specification’s Detailed Description of the
`Preferred Embodiments.
`Fourth, as mentioned, Petitioner cites two disclosures in the
`Specification that it asserts support its contrary construction for “non-zero
`grant.” We address those disclosures in Section II.B.2.b below and find that
`those disclosures do not support such a construction nor undermine Patent
`Owner’s proposed construction.
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`Fifth, as mentioned, Petitioner argues that the Specification’s use of the
`terms “granted power ratio” and “power ratio grant” means that the terms
`“grant” and “power ratio” are not the same, and that the applicant could have
`chosen a phrase that includes “power ratio” if that were the intended
`meaning. Pet. Reply 4–5. The use of the terms “granted power ratio” and, in
`particular, “power ratio grant” in the Specification could raise the possibility
`that a grant that is not a power ratio could exist. But neither the record nor
`Petitioner identifies any type of purported grant that is not a power ratio. Id.
`at 1–5. Despite making numerous references to grants, the Specification does
`not refer to any other type of grant, and Petitioner does not identify or offer
`evidence of any other type of grant. Ex. 2001 ¶ 35; Pet. Reply 4–5. Thus,
`although in isolation the terms “granted power ratio” and “power ratio grant”
`could leave open the possibility of grants that are not power ratios, on this
`record, we have no basis to find that any other type of grant exists (in the
`context of the ’873 patent). Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d
`1361, 1369 (Fed. Cir. 2005) (even claim differentiation “[cannot] broaden
`claims beyond their correct scope, determined in light of the specification and
`prosecution history and any relevant extrinsic evidence.”).
`Sixth, Petitioner further argues that Patent Owner’s proposed
`construction for “grant” should be rejected because “even where the
`specification describes only a single embodiment, absent a ‘clear intention to
`limit the claim scope,’ it is improper to limit the scope of broad claim
`language by importing extraneous details from the patent’s specification.”
`Pet. Reply 4 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004); citing Liebel-Flarsheim Co. v.
`Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)). We disagree. Patent
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`Owner’s proposed construction does not import extraneous details from the
`Specification. As set forth above, the Specification repeatedly describes a
`grant as a power ratio both when describing preferred embodiments and
`when describing the state of the current art. Thus, Patent Owner’s proposed
`construction does not import a limitation from a single embodiment. Further,
`as indicated above and as set forth in Section II.B.2.a.ii below, the ordinary
`meaning of the term “grant,” to an ordinarily skilled artisan based on the
`Specification and extrinsic evidence, is a power ratio. Thus, Patent Owner’s
`proposed construction does not attempt to limit a broader, ordinary meaning
`for “non-zero grant,” rather it sets forth that term’s ordinary meaning. In
`contrast, as set forth in Section II.B.2.b below, Petitioner’s proposed
`construction limits the meaning of the term “non-zero grant” by importing
`extraneous details from the Specification that limit the ordinary meaning of
`“grant.”
`After considering the Specification and the parties’ arguments and
`evidence, we credit Dr. Mahon’s testimony that the term “grant” in the
`Specification refers to a power ratio. Ex. 2001 ¶¶ 33–36.
`ii. Extrinsic Evidence Supports Construing a Grant as
`a Power Ratio
`Patent Owner provides extrinsic evidence that the 3GPP standards as
`of the earliest claimed priority date for the ’873 patent (August 21, 2006)
`used the term “grant” to refer to a power ratio. Ex. 2001 ¶ 37; see Ex. 1001,
`code (60); Pet. 5; PO Resp. 13. 3GPP standards are pertinent evidence of the
`ordinary meaning of the term “non-zero grant” to an ordinarily skilled artisan
`because the Specification repeatedly references 3GPP standards in its
`description of background art and preferred embodiments. The Background
`of the Specification begins: “[t]he Third Generation Partnership Project
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`(3GPP) Release 6 defines fast control of wireless transmit/receive unit
`(WTRU) transmissions through Node-B based scheduling in HSUPA [high
`speed uplink packet access].” Ex. 1001, 1:25–28. The Background further
`expressly references 3GPP TS 25.321, describing: “[i]n the current state of
`the art, transmission of scheduling information (SI) is only allowed under
`certain conditions such as those described in 3GPP TS 25.321.” Id. at 2:42–
`44.
`
`The Detailed Description of the Preferred Embodiments of the
`Specification similarly refers to the 3GPP standards: “the MGI [minimum
`grant information] may be encoded to consist of 5 bits and represent a power
`ratio with a mapping, such as bit mapping, similar to that found in the 3GPP
`TS 25.212 specification.” Ex. 1001, 5:38–41; see also id. at 5:45–47. The
`Detailed Description further states: “Under the current 3GPP standard, (e.g.,
`TS 25.309 Release 6), a MAC-d flow is managed through either non-
`scheduled transmissions or scheduled grants, but not both.” Id. at 6:18–20.
`Further, the challenged claims recite 3GPP methods and devices.
`Independent claim 1 recites: “[a] method performed by a Third Generation
`Partnership Project (3GPP) wireless transmit/receive unit.” Ex. 1001, 7:36–
`38. Independent claim 6 recites: “[a] Third Generation Partnership Project
`(3GPP) wireless transmit/receive unit.” Id. at 8:17–18. Claims 2–5 and 7–10
`depend respectively from claims 1 and 6. Id. at 8:7–37.
`Further demonstrating the relevance of 3GPP standards, two of the five
`challenges in this IPR include a 3GPP technical specification (dated 2005) as
`an asserted reference. Pet. 4–5; Ex. 1010, 1. Thus, an ordinarily skilled
`artisan would view 3GPP standards as relevant evidence for determining the
`ordinary meaning of the terms in the ’873 patent claims.
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`Dr. Mahon testifies that the 3GPP standards as of the effective filing
`date used the term “grant” to refer to a power ratio. Ex. 2001 ¶ 37. The
`3GPP Technical Specification (dated June 20064) supports this testimony.5
`The 3GPP Technical Specification describes grants as power ratios.
`This Technical Specification provides the following description for
`“Maximum_Serving_Grant”: “The variable Maximum_Serving_Grant
`indicates the maximum E-DPDCH to DPCCH power ratio that the UE is
`allowed to use for scheduled data while the timer Non_Serving_RG_Timer
`has not expired.” Ex. 1023, 8 (emphases added). Similarly, for “Minimum
`Grant,” the 3GPP Technical Specification states: “The value
`Minimum_Grant corresponds to the minimum E-DPDCH to DPCCH power
`ratio that the UE considers. This value is (5/15)^2.” Id. (emphases added).
`Further, the 3GPP Technical Specification describes the term “Absolute
`Grant Value” as “indicat[ing] the maximum E-DCH traffic to pilot ratio (E-
`DPDCH/DPCCH) that the UE is allowed to use.” Id. at 55 (emphasis added).
`The maximum E-DCH traffic to pilot ratio is a power ratio. Ex. 2001 ¶ 37;
`Ex. 1023, 8 (“maximum E-DPDCH to DPCCH power ratio”). The 3GPP
`Technical Specification also describes Relative Grants as power ratios.
`Ex. 2001 ¶ 37; Ex. 1023, 53–54 (“handling of the Relative Grant signaling is
`
`
`4 The 3GPP Technical Specification is dated 2006-06. Ex. 1023, 1.
`5 Petitioner acknowledges the relevance of the 3GPP Technical Specification
`for purposes of construing claim terms of the ’873 patent. See Pet. 9–12
`(relying on the 3GPP Technical Specification as support for Petitioner’s
`proposed constructions of “scheduling information (SI)” and “medium access
`control-d (MAC-d) flow,” and arguing that the document shows how a
`person of ordinary skill in the art would have understood the terms “in the
`context of a 3GPP WTRU (like that disclosed in [the ’873 patent]”); Ex. 1003
`¶¶ 55–56, 61 (same); see also Tr. 31:11–21.
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`based on the Scheduling Grant table shown in Table 9.2.5.2.1.1. . . .
`Determine the lowest power ratio in the SG-table.” (emphases added)).
`Petitioner offers no extrinsic evidence, other than the testimony of
`Dr. Kakaes, regarding the ordinary meaning of the term “grant,” and
`Dr. Kakaes cites no extrinsic evidence to support his definition of the term
`“non-zero grant.” Pet. 12; Pet. Reply 1–5; Ex. 1003 ¶¶ 63–65. Dr. Kakaes
`does not separately address the meaning of “grant.” Ex. 1003 ¶¶ 63–65.
`We find Dr. Mahon’s testimony and the 3GPP Technical Specification
`persuasive. As set forth above, the 3GPP Technical Specification describes
`grants as power ratios—a fact that Petitioner does not dispute. Pet. Reply 1–
`5. Further, as set forth above, in light of the Specification’s references to
`3GPP standards and the 3GPP recitations in the preambles of claims 1 and 6,
`3GPP standards from the time of the ’873 patent are highly relevant evidence
`to an ordinarily skilled artisan of the ordinary meaning of the terms “grant”
`and “non-zero grant.”
`iii. A Non-zero Power Ratio is a Power Ratio Greater
`than Zero
`Dr. Mahon testifies that a “non-zero grant” should be construed as “a
`power ratio greater than zero.” Ex. 2001 ¶ 33. Dr. Mahon explains that a
`power ratio cannot be negative, so a “non-zero” power grant must be greater
`than zero. Id. ¶ 38. Petitioner does not dispute Dr. Mahon’s testimony that a
`power ratio cannot be negative. Pet. Reply 1–5. Petitioner further does not
`dispute that if a “grant” is construed to be a “power ratio,” a “non-zero grant”
`should be construed to be a “power ratio greater than zero.” Id. We credit
`Dr. Mahon’s testimony that a power ratio cannot be negative. Ex. 2001 ¶ 38.
`Thus, in light of the Specification’s and extrinsic evidence’s teachings that a
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`“grant” is a “power ratio,” we construe “non-zero grant” to be a “power ratio
`greater than zero.”
`b. The Intrinsic and Extrinsic Evidence Do Not Support
`Petitioner’s Proposed Construction
`As mentioned, Petitioner proposes construing the term “non-zero
`grant” as “information from a Node-B giving permission to the WTRU to
`engage in data transmission according to said information.” Pet. 12. To
`support this construction,
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