UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`TESLA, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`———————
`
`IPR2025-00343
`U.S. Patent No. 10,292,138
`_____________________
`
`DECLARATION OF DR. ZHI DING, PH.D.,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`1
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`Ding Declaration
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`Inter Partes Review of U.S. 10,292,138
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 4
`
`Qualifications and Professional Experience....................................................6
`
`III.
`
`Level of Ordinary Skill in the Art .................................................................12
`
`IV. Relevant Legal Standards .............................................................................. 13
`
`V.
`
`The ’138 Patent .............................................................................................. 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`Overview of the ’138 Patent ..................................................................................15
`
`Prosecution History of the ’138 Patent ..................................................................19
`
`Supplemental Examination ....................................................................................20
`
`Previous IPRs Involving the ’138 Patent ...............................................................21
`
`VI. Claim Construction ........................................................................................ 23
`
`VII.
`
`Identification of How the Claims are Unpatentable ...................................... 23
`
`A.
`
`Ground 1: Claims 1-4 and 8-11 are obvious over Eckert in view of
`Bucknell and Lohr-1 ..............................................................................................24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`Summary of Eckert ....................................................................... 24
`
`Summary of Bucknell ................................................................... 27
`
`Eckert and Bucknell Are Analogous Art to the ’138 Patent ........ 28
`
`Summary of Lohr-1 ...................................................................... 30
`
`Lohr-1 is Analogous Art to the ’138 Patent ................................. 31
`
`Claim 1 ......................................................................................... 31
`
`Claim 2 ......................................................................................... 72
`
`Claim 3 ......................................................................................... 74
`
`Claim 4 ......................................................................................... 76
`
`Claim 8 ......................................................................................... 76
`
`Claim 9 ......................................................................................... 79
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`12.
`
`13.
`
`Claim 10 ....................................................................................... 79
`
`Claim 11 ....................................................................................... 79
`
`B.
`
`Ground 2: Claims 5 and 12 are obvious over Eckert in view of Bucknell,
`Lohr-1, and Hans ...................................................................................................79
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Hans ......................................................................... 79
`
`Reasons to combine Eckert and Hans .......................................... 80
`
`Claim 5 ......................................................................................... 86
`
`Claim 12 ....................................................................................... 90
`
`C.
`
`Ground 3: Claims 6 and 13 are obvious over Eckert in view of Bucknell,
`Lohr-1, and Lohr-2.................................................................................................90
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Lohr-2 ...................................................................... 90
`
`Reasons to combine Eckert, Bucknell, Lohr-1, and Lohr-2 ......... 91
`
`Claim 6 ......................................................................................... 93
`
`Claim 13 ....................................................................................... 95
`
`VIII. Conclusion ..................................................................................................... 96
`
`
`
`3
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`Ding Declaration
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`Inter Partes Review of U.S. 10,292,138
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`I, Dr. Zhi Ding, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Tesla, Inc. in the matter
`
`of the Inter Partes Review of U.S. Patent No. 10,292,138 (“the ’138 patent”) to
`
`Meister, et al.
`
`2.
`
`I am being compensated for my time spent on this matter and for
`
`reasonable and customary expenses associated with my work and testimony in this
`
`investigation. My compensation is not contingent on the outcome of this matter or
`
`the specifics of my testimony, and I have no other interest in this case or the parties
`
`thereto.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`6 and 8-13 (“the Challenged Claims”) of the ’138 patent are patentable, or whether
`
`they would have been obvious to a person having ordinary skill in the art
`
`(“POSITA”) at the time of the alleged invention, in light of the prior art. It is my
`
`opinion that all of the limitations of the Challenged Claims would have been
`
`obvious to a POSITA.
`
`In the preparation of this declaration, I have studied:
`
`the ’138 patent, Ex.1001;
`
`the prosecution history of the ’138 patent (“’138 File History”),
`
`4.
`
`a.
`
`b.
`
`Ex.1002;
`
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`c.
`
`U.S. Patent Application Publication No. 2006/0088058 by M. Eckert
`
`et al. (“Eckert”), Ex.1005; and
`
`d.
`
`U.S. Patent Application Publication No. 2007/0297435 to P. Bucknell
`
`et al. (“Bucknell”), Ex.1006;
`
`e. WIPO Publication WO 2005/125252 to J. Lohr et al. (“Lohr-1”),
`
`Ex.1007;
`
`f.
`
`g.
`
`U.S. Patent No. 7,245,636 to M. Hans et al. (“Hans”), Ex.1008;
`
`U.S. Patent Application Publication No. 2008/0254804 to J. Lohr et
`
`al. (“Lohr-2”), Ex.1009;
`
`h.
`
`i.
`
`Ex.1011;
`
`j.
`
`k.
`
`U.S. Patent Pub. No. 2005/0238051 to S. Yi et al. (“Yi-1”), Ex.1010;
`
`U.S. Patent Pub. No. 2003/0076799 to Y. Kwak et al. (“Kwak”),
`
`U.S. Patent Pub. No. 2003/0123485 to S. Yi et al (“Yi-II”), Ex.1012;
`
`IPR2022-01127, Ex. 2001, Declaration of Dr. Gary Lomp in Support
`
`of Patent Owner’s Preliminary Response, Ex.1013;
`
`l.
`
`File History of Supplemental Examination 96/000,323, Ex.1018;
`
`m.
`
`IPR2022-01127, Decision Denying Institution, January 3, 2023,
`
`Ex.1019; and
`
`n.
`
`5.
`
`IPR2023-00020, Petition, October 6, 2022, Ex.1021.
`
`In forming the opinions expressed below, I have considered:
`
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`Ding Declaration
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`Inter Partes Review of U.S. 10,292,138
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`the documents listed above;
`
`the relevant legal standards, including the standard for obviousness,
`
`and any additional authoritative documents as cited in the body of this
`
`declaration; and
`
`my own knowledge and experience based upon my work in the field
`
`of networking as described below, as well as the following materials.
`
`6.
`
`Unless otherwise noted, all emphasis in any quoted material has been
`
`added.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`7.
`
`I presently hold the title of Distinguished Professor in the Department
`
`of Electrical and Computer Engineering at the University of California, Davis.
`
`Before my appointment on July 1, 2020, I held the position of professor for the
`
`prior 24 years and have served as a faculty member at several United States
`
`universities for over 34 years. I am also a private technical consultant on various
`
`technologies related to information systems. In total, I have more than three
`
`decades of research experience on a wide range of topics related to data
`
`communications and signal processing.
`
`8.
`
`I earned my Bachelor of Science degree in 1982 in wireless
`
`engineering from the Nanjing Institute of Technology (later renamed as Southeast
`
`University) in Nanjing, China. I earned my Master of Science degree in 1987 in
`
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`electrical engineering from the University of Toronto in Toronto, Canada. I earned
`
`my Ph.D. in 1990 in electrical engineering from Cornell University in Ithaca, New
`
`York.
`
`9. My responsibilities as a Professor at University of California, Davis,
`
`include classroom instruction on various topics of communication systems and
`
`signal analysis, as well as mentoring undergraduate students and supervising
`
`graduate students in their research and development efforts on various topics
`
`related to digital communications. I have directly supervised such research and
`
`development works ranging from signal detection to wireless networking. As the
`
`chief academic advisor, I have also directly supervised the completion of over 20
`
`Masters' theses and over 30 Ph.D. dissertations on various topics related to digital
`
`communications. I have served full time as a faculty member at three major
`
`research universities in the United States over the past 30 years, including Auburn
`
`University from 1990 to 1998, University of Iowa from 1999 to 2000, and
`
`University of California, Davis, from 2000 to present.
`
`10. Since 1990, I have been selected as the principal investigator of
`
`multiple highly competitive federal and local research grants, including more than
`
`twenty major research projects supported by the National Science Foundation and
`
`two research projects funded by the U.S. Army Research Office. These
`
`competitive research projects focused on developing more efficient and effective
`
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`digital communication transceivers, networks, and signal processing tools. I have
`
`also participated in several large-scale projects supported by the Defense
`
`Advanced Research Projects Agency (DARPA) with teams of researchers. I have
`
`applied for, and received support from, other federal, state, and industry sponsors.
`
`11.
`
`I have published over 250 peer-reviewed research articles in premier
`
`international journals, in addition to over 250 refereed technical articles at top
`
`international conferences on communications and information technologies.
`
`According to Google Scholar, my published works have been cited by over 20,000
`
`times by peers. I also authored two books on communications technologies. My
`
`most recent book, coauthored with B.P. Lathi, is entitled, “Modern Digital and
`
`Analog Communication Systems,” 5th edition, and was published by the Oxford
`
`University Press in 2018. The 4th edition of this book (published in 2009) had been
`
`widely adopted as an introductory textbook to communication systems.
`
`12.
`
`In addition to the over 500 published technical papers that have been
`
`cited over 20,000 times according to Google Scholar, I am also co-inventor of 4
`
`issued U.S. patents on communication technologies.
`
`13.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE) and was elevated to the grade of Fellow in January 2003 for contributions
`
`made in signal processing for communication. The IEEE is the world's largest
`
`professional society of engineers, with over 400,000 members in more than 160
`
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`countries. The IEEE has led the development of many standards for modern digital
`
`communications and networking, most notably, the IEEE 802 series of network
`
`standards. The IEEE Grade of Fellow is conferred by the Boards of Directors upon
`
`a person with an extraordinary record of accomplishments in any of the IEEE
`
`fields of interest. The total number selected in any one year does not exceed one-
`
`tenth of one percent of the total voting Institute membership.
`
`14.
`
`I have served the IEEE in the following capacities:
`
`Chief Information Officer of the IEEE Communications Society from
`
`Jan. 2018 to present.
`
`Chief Marketing Officer of the IEEE Communications Society from
`
`Jan. 2020 to present.
`
`General Chair of the 2016 IEEE International Conference on
`
`Acoustics, Speech, and Signal Processing, the flagship conference of the IEEE
`
`Signal Processing Society.
`
`Chair of the Steering Committee for the IEEE Transactions on
`
`Wireless Communications from 2008 to 2010.
`
`Distinguished Lecturer of the IEEE Communications Society from
`
`January 2008 to December 2009.
`
`Technical Program Chair of the 2006 IEEE Globecom, one of two
`
`flagship annual IEEE Communication Society conferences.
`
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`Distinguished Lecturer of the IEEE Circuits and Systems Society
`
`from 2004 to 2005.
`
`Associate Editor of the IEEE Transactions on Signal Processing from
`
`1994 to 1997 and from 2001 to 2004.
`
`Member of the IEEE Statistical Signal and Array Processing for
`
`Communications Technical Committee from 1993 to 1998.
`
`Member of the IEEE Signal Processing for Communications
`
`Technical Committee from 1998 to 2004.
`
`15.
`
`In 2012, I received the Wireless Communications Technical
`
`Committee Recognition Award from the IEEE Communications Society, an award
`
`given to a person with a high degree of visibility and contribution in the field of
`
`"Wireless and Mobile Communications Theory, Systems, and Networks." I
`
`received the 2020 Education Award from the IEEE Communications Society.
`
`According to the Society, this award "recognizes distinguished and significant
`
`contributions to education within the Society's technical scope."
`
`16.
`
`I have also served as a technical consultant for the telecommunication
`
`industry. For example, in 1995 I consulted for Analog Devices, Inc., on the
`
`development of the first generation DOCSIS cable modem systems. I have also
`
`consulted for other companies, including Nortel Networks and NEC US
`
`Laboratories. I worked as a visiting faculty research fellow at NASA Glenn
`
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`Research Center in 1992 and at U.S. Air Force Wright Laboratory in 1993. I have
`
`served on multiple review panels of the National Science Foundation to evaluate
`
`competitive research proposals in the field of communication. I have also reviewed
`
`a large number of research proposals at the request of the National Science and
`
`Engineering Research Council (NSERC) of Canada as an expert panelist from
`
`2010 to 2013, and also at the request of the Research Grant Council (RGC) of
`
`Hong Kong as an external reviewer.
`
`17.
`
`I have served as an expert witness or consulting expert on a number of
`
`matters related to intellectual property, mostly in the arena of telecommunications,
`
`including cellular communications, Wi-Fi technologies, Bluetooth, and optical
`
`communications. For example, since 2007, I have been engaged to work on various
`
`litigations involving cellular, WiFi, Bluetooth, and optical communication
`
`networks. Many of my expert works related to the standard essentiality of patents
`
`with respect to the 3GPP 2G/3G/4G/5G technical specifications, the IEEE 802.11
`
`standards, and the Bluetooth standards. I have provided testimonies at court trials
`
`or hearings in multiple jurisdictions, both in the United States and internationally. I
`
`have submitted declarations to PTAB as expert on a number of inter partes reviews
`
`of challenged patents.
`
`18. Further experience and a complete list of my publications are
`
`presented in my curriculum vitae. See Ex.1004.
`
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`19.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`20.
`
` It is my understanding that the earliest possible priority date for the
`
`’138 patent is May 8, 2006. I am familiar with the wireless communications art
`
`pertinent to the ’138 Patent. I am also aware of the state of the art at the time of the
`
`alleged priority date. Based on the technologies disclosed in the ’138 patent, a
`
`person of ordinary skill in the art (“POSITA”) in the field of the ’138 patent, as of
`
`the earliest possible priority date of May 8, 2006, would have been someone
`
`knowledgeable and familiar with the wireless communications systems that are
`
`pertinent to the ’138 patent. That person would have had at least a bachelor’s
`
`degree from an accredited program in electrical engineering, computer
`
`engineering, computer science, or equivalent training, and at least two years of
`
`professional experience relating to wireless communication technology. Lack of
`
`professional experience can be remedied by additional education, and vice versa. I
`
`believe that I possessed and exceeded such experience and knowledge before and
`
`at the priority date and that I am qualified to opine on the ’138 Patent.
`
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`21. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of the earliest
`
`alleged priority date of the ’138 patent (i.e., May 8, 2006). Unless otherwise stated,
`
`when I provide my understanding and analysis below, it is consistent with the level
`
`of a POSITA as of the alleged priority date of the ’138 patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`22.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’138 patent, I am relying on certain basic
`
`legal principles that counsel explained to me. These principles are discussed below.
`
`23.
`
`I understand that prior art to the ’138 patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’138 patent.
`
`24.
`
`I have been informed that a claim preamble may or may not limit the
`
`claim scope. For the purposes of this Inter Partes Review, I have been informed by
`
`counsel to include the preamble in the analysis for obviousness in order to follow a
`
`conservative approach.
`
`25.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
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`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 the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`26.
`
`I have been informed that a threshold inquiry as to whether a
`
`reference can be considered in the obvious analysis is whether the reference is
`
`analogous art to the claimed invention. A reference is analogous art to the claimed
`
`invention if: (1) the reference is from the same field of endeavor as the claimed
`
`invention (even if it addresses a different problem); or (2) the reference is
`
`reasonably pertinent to the problem faced by the inventor (even if it is not in the
`
`same field of endeavor as the claimed invention).
`
`27.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
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`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`28. Also, I have been informed and understand that obviousness does not
`
`require physical combination or bodily incorporation but rather consideration of
`
`what the combined teachings of prior art references would have suggested to a
`
`POSITA at the time of the alleged invention.
`
`V. THE ’138 PATENT
`
`A. Overview of the ’138 Patent
`
`29. The ’138 patent relates to the use of “radio bearers” in a wireless
`
`communications system. Ex.1001, Abstract. The ’138 specification describes a
`
`service as an example radio bearer provided by the network to the user equipment
`
`(UE), where radio bearers are associated with queues, or buffers, that hold
`
`associated data. ’138 patent, 4:4-5 (discussing “buffer occupancy for individual
`
`radio bearers (or services)”); 4:24-27 (“radio bearers (e.g., services)”); 5:66-
`
`6:2; Figure 2 (“Functionality identifies a particular service and filters all data
`
`associated with this service onto a particular RB [radio bearer]”); 9:32-35 (“UE is
`
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`able to signal to the network separate buffer occupancy for each queue associated
`
`with the various RBs.”).
`
`30. The ’138 patent attempts to prioritize the provision of uplink
`
`resources to services/radio bearers based on “buffer occupancy.” ’138 patent, 4:4-
`
`7, 4:24-27 (discussing “prioritization” of “particular radio bearers (e.g. services)”).
`
`“This is in contrast to the conventional prioritization scheme provided by 3GPP,
`
`which uses a simple absolute priority scheme.” ’138 patent, 4:24-29. As illustrated
`
`in Fig. 5, UE 505 transmits message 535 to UTRAN 540 indicating buffer
`
`occupancy for each of the radio bearers. Id. at 10:8-18. The UTRAN provides a
`
`single allocation of physical (communication) resources to UE with message 560,
`
`and the UE allocates the resources to the /services radio bearers based on the buffer
`
`prioritization scheme. Id. at 10:18-22.
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`’138 patent, Fig. 5
`
`31. The ’138 patent illustrates its resource allocation process in more
`
`detail in Fig. 6, reproduced below. ’138 patent, 10:48-51 (“algorithm describes one
`
`mechanism to limit a number of queues served at a single instant in time”). The
`
`algorithm initially takes the number of free resources (denoted by FreeRAAU) and
`
`divides them among the different queues, with the number of resources for the qth
`
`defining a percentage. ’138 patent, 10:56-11:10. If the number of queues exceeds a
`
`threshold, the resources allocated to each queue is recalculated. Id., 11:11-17.
`
`32. The Challenged Claims require selecting data from the plurality of
`
`radio bearers “using a first iteration and a second iteration.” In order to provide
`
`additional context on how the ’138 patent describes a “first iteration” data selection
`
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`from “a subset” of radio bearers and a “second iteration” data selection, recited in
`
`claim 1, an annotated version of Figure 6 as provided by Patent Owner’s expert in
`
`IPR2022-01127 is below.
`
`Ex.1013, ¶34. A parameter– max_number_queues_serviced –appears in step 625
`
`above. According to Patent Owner’s expert: “In this step, a subset of all queues
`
`(corresponding to the max_number_queues_serviced) is selected from the top of
`
`the ordering.” Ex.1013, ¶38 (emphasis in original). Note that the only mention of
`
`
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`“iterations” in the ’138 patent specification is with respect to steps 610 and 615,
`
`where “no limitation has been applied in the first iteration” (steps 605 and 610) but
`
`“on the second iteration” there is a limitation placed on the number of queues in
`
`step 615. ’138 patent, 11:32-37. As shown above, in IPR2022-01127, Patent
`
`Owner describes the iterations corresponding to the claims using steps 628-665.
`
`Ex.1013, ¶34. The discussion of steps 628-665 does not use the term “iteration” at
`
`all in the ’138 patent specification.
`
`33. Patent Owner’s expert provided no guidance as to how he arrived at
`
`this seemingly arbitrary grouping of steps into the recited “iterations.” Ex.1013,
`
`¶¶34-44. Notwithstanding this delineation, the claims themselves recite the
`
`requirements of each iteration, as follows:
`
`wherein in the first iteration, the selection of the data is selected
`
`from a subset of the plurality of radio bearers based on the received
`
`parameters,
`
`wherein in the second iteration, the selection of the data is based
`
`on buffered data for respective radio bearers
`
`These requirements are disclosed in the prior art, as discussed below.
`
`B.
`
`Prosecution History of the ’138 Patent
`
`34. During prosecution of Application No. 15/618,669 (“the ’669
`
`application”) that led to the ’138 patent, there were no rejections based on prior art.
`
`In a first non-final office action, the only rejections were obviousness-type double
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`patenting rejections. Ex.1002, 226-233. In response, Applicant filed new claims 9-
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`22. Ex.1002, 204-213. The Examiner then issued a Notice of Allowance, stating
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`that the prior art of record does not disclose limitations including (limitation
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`numbers added by Petitioner):
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`[1.7] select data from the plurality of radio bearers for
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`transmission using the single allocation of uplink resources, wherein
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`the selection of the data occurs using a first iteration and a second
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`iteration,
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`[1.8] wherein in the first iteration, the selection of the data is
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`selected from a subset of the plurality of radio bearers based on the
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`received parameters,
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`[1.9] wherein in the second iteration, the selection of the data is
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`based on buffered data for respective radio bearers, and
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`Ex.1002, 191. Applicant thereafter submitted an Information Disclosure Statement
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`with new references for consideration, and a new Notice of Allowance issued. Id.,
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`75-76.
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`C.
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`Supplemental Examination
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`35. Patent Owner then filed a request for supplemental examination of the
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`’138 patent based on DE102004044956A1 (“Choi”). Ex.1018, 40, 156-157. The
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`request included the following analysis (referring to the last elements of claim 1,
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`with limitation numbering added by Petitioner):1
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`1 The language “a distribution component configured to” does not appear in claim 1.
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`[1.7]
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`[1.8]
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`[1.9]
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`Ex.1018, 48; see also 53-54. The Request was denied as lacking a substantial new
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`question of patentability for the same reasons given by the Requester: Choi
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`allegedly provides no teaching regarding the “first iteration” and “second
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`iteration” limitations of claims 1 and 8. Ex.1018, 22-25.
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`D.
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`Previous IPRs Involving the ’138 Patent
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`36. There are two prior IPRs challenging the ’138 patent –
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`IPR2022-01127 and IPR2023-00020 – both involving different petitioners than
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`Tesla.
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`37.
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`In IPR2022-01127, the dispute centered on the construction of the
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`term “a subset of the plurality of radio bearers.” IPR2022-01127, Decision
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`Denying Institution, Jan. 3, 2023 (Ex.1019), 12-19. Petitioner argued that no
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`construction was necessary, whereas Patent Owner argued that the term means
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`“less than all of the plurality of radio bearers.” Id. The Board adopted Patent
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`Owner’s construction. Id., 18-19, and determined that, based on this construction,
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`the prior art does not disclose wherein in the first iteration, the selection of the data
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`is selected from a subset of the plurality of radio bearers based on the received
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`parameters (labeled as [1.8] herein). Ex.1019, 23-29. The IPR was therefore
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`denied institution. Id., 34.
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`38. None of the prior art references used in IPR2022-01127 are used in
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`this Petition.
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`39.
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`IPR2023-00020 settled prior to the filing of any response by Patent
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`Owner or institution decision. In Ground 1, Petitioner in IPR2023-00020 relied
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`upon the same reference – Piesa, U.S. Patent No. 6,850,540 – for the same
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`limitation (the “first iteration” limitation with “a subset of the plurality of radio
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`bearers”) that was the basis for denial in IPR2022-01127. Compare Ex.1021,
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`36-37 and Ex.1019, 23-29. IPR2023-00020 added Grounds 2 and 3 to also address
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`the independent claims of the ’138 patent, and those grounds relied on the patent
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`(U.S. Patent No. 7,944,935) corresponding to the Bucknell reference (Ex.1006)
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`used herein, in combination with the U.S. patent (U.S. Patent No. 7,869,461)
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`corresponding to the WIPO publication Lohr-1 (Ex.1007) used herein. While
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`analysis is presented regarding the “first iteration” and “second iteration” of claim
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`1, there appears to be no analysis that Bucknell applies to “a subset of the plurality
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`of radio bearers,” instead apparently relying on Piesa. Ex.1021, 51-54. Regardless,
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`neither Patent Owner nor the Office has previously substantively addressed the
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`disclosures of Bucknell or Lohr-1.
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`VI. CLAIM CONSTRUCTION
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`40.
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`It is my understanding that in order to properly evaluate the ’138
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`patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be construed under
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`the so-called Phillips standard, under which claim terms are given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the art
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`in light of the specification and prosecution history, unless the inventor has set
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`forth a special meaning for a term. In IPR2022-01127, the Board preliminarily
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`determined that a subset of the plurality of radio bearers means “less than all of
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`the plurality of radio bearers.” Ex.1019, 18-19. I apply the prior art in accordance
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`with that construction; however, a formal construction is unnecessary in view of
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`the asserted grounds. For the purposes of my analysis below, I do not believe any
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`claim terms require an explicit construction.
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`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`41.
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`I have been asked to provide my opinion as to whether the Challenged
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`Claims of the ’138 patent would have been obvious in view of the prior art. The
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`discussion below provides a detailed analysis of how the prior art references
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`identified below teach the limitations of the Challenged Claims of the ’138 patent.
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`42. As part of my analysis, I have considered the scope and content of the
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`prior art and any differences between the alleged invention and the prior art. I
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`describe in detail below the scope and content of the prior art, as well as
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`differences between the alleged invention and the prior art, on an element-by-
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`element basis for each Challenged Claims of the ’138 patent.
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`43. As described in detail below, the alleged invention of the Challenged
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`Claims would have been obvious in view of the teachings of the identified prior art
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`references as well as the knowledge of a POSITA.
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`A. Ground 1: Claims 1-4 and 8-11 are obvious over Eckert in view of
`Bucknell and Lohr-1
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`1.
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`Summary of Eckert
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`44. Eckert relates to a “UMTS (Universal Mobile Telecommunications
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`System)” mobile radio system. Eckert, [0003]. This area of technology is described
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`in terms of numerous, but standard, acronyms that are assumed familiar to a
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`POSITA, with technical standards related to the technolog