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`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
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`

`

`
`
`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
`
`TABLE OF CONTENTS
`
`Petitioner’s Exhibit List ............................................................................................. 4
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 6
`
`Grounds for standing ....................................................................................... 6
`
`III. Note .................................................................................................................. 6
`
`IV. The ’138 patent ................................................................................................ 7
`
`A. Overview .............................................................................................. 7
`
`B.
`
`C.
`
`D.
`
`Prosecution History ............................................................................ 10
`
`Supplemental Examination ................................................................ 10
`
`Previous IPRs Involving the ’138 Patent ........................................... 11
`
`V.
`
`Priority date ...................................................................................................11
`
`VI. Level of ordinary skill in the art ....................................................................12
`
`VII. Claim construction .........................................................................................12
`
`VIII. Relief requested and the reasons for the requested relief ..............................13
`
`IX.
`
`Identification of how the claims are unpatentable .........................................13
`
`A.
`
`B.
`
`C.
`
`Challenged claims .............................................................................. 13
`
`Statutory grounds for challenges ........................................................ 13
`
`Ground 1: Claims 1-4 and 8-11 are obvious over Eckert in view of
`Bucknell and Lohr-1 ........................................................................... 14
`
`D. Ground 2: Claims 5 and 12 are obvious over Eckert in view of
`Bucknell, Lohr-1, and Hans ............................................................... 63
`
`2
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
`
`b.
`
`Ground 3: Claims 6 and 13 are obvious over Eckert in view of
`Bucknell, Lohr-1, and Lohr-2 ............................................................ 73
`
`X. Discretionary denial is inappropriate .............................................................79
`
`A. No basis for § 325(d) denial ............................................................... 79
`
`B.
`
`C.
`
`No basis for Fintiv denial ................................................................... 80
`
`No Basis for General Plastic Denial Under § 314(a) ........................ 83
`
`XI. Conclusion .....................................................................................................84
`
`XII. Mandatory notices .........................................................................................85
`
`A.
`
`B.
`
`C.
`
`Real party-in-interest .......................................................................... 85
`
`Related matters ................................................................................... 85
`
`Lead and back-up counsel and service information ........................... 86
`
`Certificate of Word Count .......................................................................................88
`
`Certificate of Service ...............................................................................................89
`
`3
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`

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`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`Ex.1011
`
`Ex.1012
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`Ex.1013
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`Ex.1014
`
`Ex.1015
`
`Ex.1016
`Ex.1017
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 10,292,138 to T. Speight (“’138 patent”)
`
`Prosecution File History of U.S. Patent Application No. 15/618,669
`issued as the ’138 Patent (“’138 File History”)
`
`Declaration of Zhi Ding, Ph.D. under 37 C.F.R. § 1.68
`Curriculum Vitae of Zhi Ding, Ph.D.
`
`U.S. Patent Application Publication No. 2006/0088058 by M.
`Eckert et al. (“Eckert”)
`
` U.S. Patent Application Publication No. 2007/0297435 to P.
`Bucknell et al. (“Bucknell”)
`
`WIPO Publication WO 2005/125252 to J. Lohr et al. (“Lohr-1”)
` U.S. Patent No. 7,245,636 to M. Hans et al. (“Hans”)
`
` U.S. Patent Application Publication No. 2008/0254804 to J. Lohr
`et al. (“Lohr-2”)
`
`U.S. Patent Pub. No. 2005/0238051 to S. Yi et al. (“Yi-1”)
`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-2”)
`
`IPR2022-01127, Ex. 2001, Declaration of Dr. Gary Lomp in
`Support of Patent Owner’s Preliminary Response
`IV’s Complaint, Intellectual Ventures II, LLC v. Tesla, Inc., No.
`6:24-cv-188-ADA (WDTX)
`Proposed Scheduling Order, Intellectual Ventures II, LLC v. Tesla,
`Inc., No. 6:24-cv-188-ADA (WDTX)
`Statistics on District Court Timing, Sept. 30, 2024
`Interim Procedure for Discretionary Denials in AIA Parallel
`
`4
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`

`

`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
`
`District Court Litigation, June 21, 2022
`
`File History of Supplemental Examination 96/000,323
`
`IPR2022-01127, Decision Denying Institution, January 3, 2023
`IV’s Preliminary Infringement Contentions Cover Pleading,
`Intellectual Ventures II, LLC v. Tesla, Inc., No. 6:24-cv-188-ADA
`(WDTX)
`IPR2023-00020, Petition, October 6, 2022
`
`
`
`
`
`
`Ex.1018
`
`Ex.1019
`Ex.1020
`
`Ex.1021
`
`5
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`I.
`
`INTRODUCTION
`
`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
`
`U.S. Patent No. 10,292,138 (“the ’138 patent,” Ex.1001) relates to and
`
`claims the transmission of data for communication services (“radio bearers”) from
`
`a user device in a wireless communication system. Throughout prosecution and a
`
`previous IPR, Patent Owner has alleged that the ’138 patent’s claims are patentable
`
`because the transmitted data is selected from “a subset of the plurality of radio
`
`bearers.” As shown herein, however, data selection from a subset of radio bearers
`
`was not novel. See, e.g., Bucknell (Ex.1006), [0027] (selecting data for
`
`transmission by “taking one data packet in turn from each of the subset” of radio
`
`bearers).
`
`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
`
`Tesla, Inc. (“Petitioner”) respectfully requests that the Board review and cancel as
`
`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-6 and 8-13 (the
`
`“Challenged Claims”).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’138 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`
`Petitioner cites to exhibits’ original page numbers, unless noted otherwise.
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`6
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`Emphasis in quoted material has been added. Claim terms are presented in italics.
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`IV. THE ’138 PATENT
`A. Overview
`
`The ’138 patent relates to the use of “radio bearers” in a wireless
`
`communications system. Ex.1001, Abstract. The ’138 specification describes a
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`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. Ex.1001, 4:4-5 (discussing “buffer occupancy for individual radio
`
`bearers (or services)”); 4:24-27 (“radio bearers (e.g., services)”); 5:66-6:2;
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`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 able to
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`signal to the network separate buffer occupancy for each queue associated with the
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`various RBs.”).
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`The ’138 patent attempts to prioritize the provision of uplink resources to
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`services/radio bearers based on “buffer occupancy.” Ex.1001, 4:4-7, 4:24-27
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`(discussing “prioritization” of “particular radio bearers (e.g. services)”). As
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`illustrated in Figure 5, UE 505 transmits message 535 to UTRAN 540 indicating
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`buffer occupancy for each of the radio bearers. Id. at 10:8-18. The UTRAN
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`provides a single allocation of physical (communication) resources to UE with
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`message 560, and the UE allocates the resources to the /services radio bearers
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`7
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`based on the buffer prioritization scheme. Id. at 10:18-22.
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`Ex.1001, Fig. 5
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`
`
`The resource allocation process is illustrated in Figure 6 (below). Ex.1001,
`
`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 queue denoted by RAAUq and a
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`normalized queue weighting parameter W′q defining a percentage. Ex.1001,
`
`10:56-11:10. If the number of queues exceeds a threshold, the resources allocated
`
`to each queue is recalculated. Id., 11:11-17.
`
`The Challenged Claims require selecting data from the plurality of radio
`
`bearers “using a first iteration and a second iteration.” The ’138 specification
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`8
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`does not indicate which, if any, steps in Fig. 6 correspond to an iteration, but Patent
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`Owner’s expert in IPR2022-01127 provided the following alleged designations.
`
`Ex.1013, ¶34.
`
`Patent Owner’s expert provided no guidance as to how he arrived at this
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`seemingly arbitrary grouping of steps into the recited “iterations.” Ex.1013,
`
`¶¶34-44. Notwithstanding this delineation, the claims themselves recite the
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`
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`9
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`requirements of each iteration, as follows:
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`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. Ex.1003,
`
`¶¶29-33.
`
`B.
`
`Prosecution History
`
`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 the first
`
`office action, the only rejections were obviousness-type double patenting
`
`rejections. Ex.1002, 226-233. In response, Applicant filed new claims 9-22.
`
`Ex.1002, 204-213. The Notice of Allowance indicated that the prior art of record
`
`does not disclose wherein the selection of the data occurs using a first iteration
`
`and a second iteration, as well as limitations specifying details of the first iteration
`
`and second iteration (limitations numbered [1.8] and [1.9] infra herein). Ex.1002,
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`191.
`
`C.
`
`Supplemental Examination
`
`Patent Owner filed a request for supplemental examination of the ’138
`
`patent based on DE102004044956A1 (“Choi”). Ex.1018, 40, 156-157. The request
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`10
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`included the following analysis (referring to the last elements of claim 1, with
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`limitation numbering added by Petitioner):1
`
`[1.7]
`[1.8]
`
`[1.9]
`
`
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`Ex.1018, 48; see also 53-54. The Request was denied as lacking a substantial new
`
`question of patentability for the same reasons given by the Requester: Choi does
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`not teach the “first iteration” and “second iteration” limitations. Ex.1018, 22-25.
`
`D.
`
`Previous IPRs Involving the ’138 Patent
`
`Two petitioners unrelated to Tesla previously challenged the ’138 patent in
`
`two IPRs that are discussed in Section X.A in the context of § 325(d).
`
`V.
`
`PRIORITY DATE
`
`The earliest possible priority date of the ’138 patent is May 8, 2006, and all
`
`the relied-upon prior art predates May 8, 2006. Petitioner does not waive any right
`
`
`
` “A distribution component configured to” does not appear in claim 1.
`
` 1
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`or opportunity to dispute the priority date of the ’138 patent in this or another
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`forum.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) in May 2006 would have
`
`been someone knowledgeable and familiar with the wireless communications
`
`systems that are pertinent to the ’138 Patent. A POSITA would have had 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
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`professional experience can be remedied by additional education, and vice versa.
`
`Ex.1003, ¶¶19-21.
`
`VII. CLAIM CONSTRUCTION
`
`In IPR2022-01127, the Board preliminarily determined that a subset of the
`
`plurality of radio bearers” means “less than all of the plurality of radio bearers.”
`
`Ex.1019, 18-19. Petitioner applies the prior art in accordance with that
`
`construction; however, in view of the asserted grounds, no claim term requires
`
`express construction to find the Challenged Claims unpatentable. Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017). Ex.1003, ¶40.
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`Petitioner asks that the Board institute an IPR trial and cancel the
`
`Challenged Claims in view of the analysis below.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged claims
`
`Petitioner challenges claims 1-6 and 8-13 (“the Challenged Claims”).
`
`B.
`
`Statutory grounds for challenges
`
`Grounds
`#1
`
`Claims
`1-4, 8-11
`
`#2
`
`#3
`
`5, 12
`
`6, 13
`
`Basis (pre-AIA)
`35 U.S.C. §103 over Eckert in view of Bucknell
`and Lohr-1
`§103 over Eckert in view of Bucknell, Lohr-1,
`and Hans
`§103 over Eckert in view of Bucknell, Lohr-1,
`and Lohr-2
`
`
`
`U.S. Patent Pub. No. 2006/0088058 (“Eckert,” Ex.1005) was filed on
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`September 28, 2005 and published on April 27, 2006. Eckert is prior art under
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`§§102(a) and 102(e).
`
`U.S. Patent Pub. No. 2007/0297435 to P. Bucknell et al. (“Bucknell,”
`
`Ex.1006) is a U.S. publication of a PCT application PCT/IB2005/053618, which
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`was filed on November 4, 2005, published as WO2006/051465 on May 18, 2006 in
`
`English and designates the U.S. Therefore, Bucknell is prior art under §102(e) as
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`of November 4, 2005.
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`WIPO Publication WO 2005/125252 to J. Lohr (“Lohr-1,” Ex.1007) is a
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`PCT publication that published on December 29, 2005. Thus, Lohr-1 is prior art
`
`under §102(a). Lohr-1 also has an international filing date of June 14, 2005, was
`
`published in English, and designates the U.S, so Lohr-1 is also prior art under
`
`§102(e).
`
`U.S. Patent No. 7,245,636 to M. Hans et al. (“Hans,” Ex.1008) has an
`
`international filing date of September 19, 2000, and Hans fulfilled the requirements
`
`of 35 U.S.C. 371(c)(1), (2) and (4) on September 17, 2002. Therefore, Hans is
`
`prior art as of September 17, 2002 under §102(e). See MPEP 2136, Example 6.
`
`U.S. Patent Pub. No. 2008/0254804 to J. Lohr et al. (“Lohr-2,” Ex.1009) is a
`
`U.S. publication of a PCT application that was filed on Feb. 7, 2006, published in
`
`English as WO2006/102949 on October 5, 2006 and designates the U.S. Therefore,
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`Lohr-2 is prior art under §102(e) as of the international filing date of Feb. 7, 2006.
`
`C. Ground 1: Claims 1-4 and 8-11 are obvious over Eckert in view of
`Bucknell and Lohr-1
`
`1.
`
`Summary of Eckert
`
`Eckert relates to a “UMTS (Universal Mobile Telecommunications
`
`System)” mobile radio system. Ex.1005, [0003]. This area of technology is
`
`described in terms of numerous, but standard, acronyms that are assumed familiar
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`to a POSITA, with technical standards related to the technology being referred to
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`throughout Eckert. See, e.g., Ex.1005, [0005]-[0007], [0009], [0020]-[0021],
`
`[0152] (each referring to a standards document promulgated by 3GPP). Ex.1003,
`
`¶44.
`
`Eckert presents its teachings in the context of a “UMTS air
`
`interface…logically divided into three protocol layers,” where the “protocol
`
`layers…are implemented both in the mobile radio terminal 118 and in the UMTS
`
`base station 108, 109, 110, 111 or in the respective mobile radio network control
`
`unit 106, 107.” Ex.1005, Id., [0143]. Referring to Figure 2, below, there is “layer
`
`1” (L1), “layer 2” (L2), and “layer 3” (L3), corresponding to the “physical,” “data
`
`link,” and “network” layers, respectively. Ex.1006, [0143]-[0147]. Layer 2
`
`includes “a plurality of subprotocol layers,” including “the Medium Access
`
`Control protocol Layer (MAC protocol layer) 203” and “the Radio Link Control
`
`protocol layer 204 (RLC protocol layer).” Id., [0146]. “The RLC protocol layer
`
`204 is modelled such that there is an independent RLC entity for each radio
`
`bearer.” Id., [0160]. The details regarding the “protocol layer arrangement 200” are
`
`further described in technical standards promulgated by 3GPP. Ex.1006, [0152];
`
`Ex.1003, ¶45.
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`Ex.1005, Figure 2
`
`
`
`The “MAC-e (MAC enhanced uplink) subprotocol layer 300…receives its
`
`data from the MAC-d subprotocol layer via ‘MAC-d flows’ 301, 302 and in turn
`
`transmits its data via the E-DCH transport channel 303 to the physical layer 201.”
`
`Ex.1005, [0168]. The E-DCH (Enhanced Dedicated Channel) is a “new dedicated
`
`transport channel.” Id., [0012]. “[E]ach MAC-d flow 301, 302 in the MAC-d
`
`subprotocol layer [is] assigned a priority, said priority being used by the function
`
`priority queue distribution.” Id., [0170]. “The data buffer storage in the priority
`
`16
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`queues 306 then buffer-stores the data until they are retrieved for transmission.”
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`Id., [0171]; Ex.1003, ¶46.
`
`Ex.1005, Figure 3
`
`
`
`2.
`
`Summary of Bucknell
`
`Bucknell focuses on activities in the MAC-e subprotocol layer including the
`
`E-DCH transport channel. Ex.1006, [0002] (For the E-DCH, “MAC-d Protocol
`
`Data Units or MAC-d PDUs, are grouped together for transmission to form larger,
`
`enhanced PDUs termed MAC-e PDUs.”). An output buffer 80 forming a MAC-e
`
`PDU is divided into “a first portion 90 and a second portion 95,” id., [0020], as
`
`shown in Figure 2 below.
`
`17
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`IPR2025-00343 Petition
`Inter Partes Review of 10,292,138
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`MAC-d flows
`
`MAC-d
`queues/flows
`
`MAC-e PDU
`
`Ex.1006, Figure 2 (annotated); Ex.1003, ¶47
`
`
`
`Bucknell presents numerous examples of rules for selecting data from a “subset” of
`
`MAC-d queues 50 and sequentially populating the portions 90 and 95 of a MAC-e
`
`PDU. Ex.1006, [0025]-[0030]. These examples are discussed further in the
`
`analysis of various claim limitations. Ex.1003, ¶48.
`
`3.
`
`Eckert and Bucknell Are Analogous Art to the ’138 Patent
`
`Eckert and Bucknell are each analogous art to the ’138 patent at least
`
`because Eckert and Bucknell both pertain to the same field of endeavor as the ’138
`
`patent, namely, wireless, cellular communication systems, such a Universal Mobile
`
`Telecommunication System (UMTS). Ex.1001, 1:23-28 (“The invention is
`
`applicable…for use in the universal mobile telecommunication standard”
`
`[UMTS])), 2:5-67; Ex.1005, [0112] (“The mobile radio devices and also the
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`mobile radio network control unit are…preferably for communication on the basis
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`IPR2025-00343 Petition
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`of the cellular mobile radio system UMTS.”); Ex.1006, [0001] (“The invention has
`
`application in… the Universal Mobile Telecommunication System (UMTS).”);
`
`Ex.1003, ¶49.
`
`Eckert and Bucknell are also analogous art to the ’138 patent because Eckert
`
`and Bucknell are reasonably pertinent to a same problem faced by the inventor of
`
`the ’138 patent of how “to provide an improved mechanism to differentiate
`
`between IP data flows.” Ex.1001, 3:17-18. Eckert is related to this problem
`
`because Eckert is concerned with how data of different priorities are to be
`
`transmitted. Ex.1005, [0015] (“One possible solution is to split the data according
`
`to their priorities over various data buffer storages… which are then processed and
`
`hence transmitted … according to … their priority.”). Bucknell is also related to
`
`this problem because Bucknell is concerned with “a method of multiplexing data
`
`packets” for transmission in UMTS, Ex.1006, [0001], such as “multiplex[ing] data
`
`packets having different priorities,” id., [0002]; Ex.1003, ¶50.
`
`Motivations to combine Eckert and Bucknell are presented in the analysis of
`
`relevant limitations where teachings of Eckert and Bucknell are combined.
`
`4.
`
`Summary of Lohr-1
`
`Lohr-1 also relates to the E-DCH implemented in a UMTS network protocol
`
`layer architecture compliant with wireless standards. Ex.1007, 4:19-26, 1:16-20.
`
`19
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`Consistent with Eckert and Bucknell, Lohr-1 describes the MAC-d subprotocol
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`IPR2025-00343 Petition
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`layer as having data flows and corresponding priority queues. Id., 5:26-6:1. Lohr-1
`
`explains that a “radio bearer control message” sent from the network to a mobile
`
`terminal includes a “set of parameters indicating the priorities of a logical channel
`
`of the radio bearer” and that a radio bearer may be established according to these
`
`parameters. Id., 20:14-24; Ex.1003, ¶52.
`
`5.
`
`Lohr-1 is Analogous Art to the ’138 Patent
`
`Lohr-1 is analogous prior art to the ’138 patent at least because Lohr-1
`
`pertains to the same field of endeavor as the ’138 patent, namely, wireless, cellular
`
`communication systems, such UMTS systems. Ex.1001, 1:23-28, 2:5-67; Ex.1007,
`
`24:25-25:4. Ex.1003, ¶53.
`
`Lohr-1 is also analogous art to the ’138 patent because Lohr-1 is reasonably
`
`pertinent to a same problem faced by the inventor of the ’138 patent of how “to
`
`provide an improved mechanism to differentiate between IP data flows.” Ex.1001,
`
`3:17-18. Lohr-1 is directed to differentiating between different data flows
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`according to priority. Ex.1007, 25:15-19 (“According to one aspect of an
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`embodiment of the invention a different priority handling of uplink transmissions
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`depending on the scheduling mode is introduced.”). Ex.1003, ¶54.
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`Claim 1
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`6.
`[1.0] A user equipment (UE) comprising:
`Eckert discloses a UE, thereby disclosing limitation [1.0]. For example,
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`Figure 1 in Eckert illustrates a communication system in which base stations 108,
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`109, 110, 111 communicate with a “user equipment, UE” 118. Ex.1005, [0138];
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`Ex.1003, ¶¶55-56.
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`user equipment (UE)
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`Ex.1005, Figure 1 (annotated); Ex.1003, ¶56
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`
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`
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`[1.1] a processor communicatively coupled to a transmitter and circuitry
`configured to receive; and
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`Eckert in view of Bucknell renders obvious limitation [1.1]. Ex.1003, ¶57.
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`Eckert teaches user equipment (used synonymously with the term “mobile
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`radio terminal”) communicating with a base station (Ex.1005, [0138]), and
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`Bucknell similarly discloses a mobile communication terminal 310 having a
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`transceiver 310 (a transmitter and circuitry configured to receive) and a processor
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`320 (processor). Ex.1006, [0032] (“The communication terminal 410 …
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`comprises … a transceiver 310 for transmitting data and receiving
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`acknowledgements, and a processor 320…”); [0001] (“[T]he invention has
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`application in…mobile communication systems such as …UMTS”). As shown in
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`Figure 4, the processor is “communicatively coupled” to the transceiver 310.
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`processor
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`transmitter (Tx)/
`circuitry configured to
`receive (Rx)
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`communicatively
`coupled
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`Ex.1006, Figure 4 (annotated); Ex.1003, ¶58
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`
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`Thus, Bucknell discloses or renders obvious a processor (Bucknell’s
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`processor 320) communicatively coupled to a transmitter and circuitry configured
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`to receive (connected to Bucknell’s transceiver 310). Ex.1003, ¶59.
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`Motivation to Combine Eckert with Bucknell
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`Eckert discloses UMTS user equipment and various functions implemented
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`on the user equipment, but Eckert provides insufficient details regarding the
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`internal architecture of such user equipment. Thus, a POSITA would have been
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`motivated to look to Bucknell, which provides details about the internal
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`architecture of a UMTS-compatible mobile radio terminal as including a processor
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`and a transceiver. Ex.1003, ¶60.
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`In more detail, Figure 1 in Eckert illustrates a communication system in
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`which base stations communicate with a “user equipment, UE” which is “also
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`called [a] mobile radio terminal.” Ex.1005, [0138]. Eckert describes the E-DCH
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`and associated MAC-e subprotocol layer being implemented on the mobile radio
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`terminal 118 (user equipment). Id., [0168]. (A “MAC-e (MAC enhanced uplink)
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`subprotocol layer 300” is implemented “in the mobile radio terminal 118... The
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`MAC-e subprotocol layer 300 … in turn transmits its data via the E-DCH
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`transport channel 303 to the physical layer 201.”). Ex.1003, ¶¶61-62.
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`While Eckert describes the E-DCH transport channel being implemented in
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`a mobile terminal/UE, Eckert provides insufficient details regarding the internal
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`architecture of such a mobile terminal/UE. Bucknell provides such details on the
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`internal architecture of a mobile terminal for implementing an E-DCH, such as in
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`Eckert, including a “transceiver” and a “processor.” Ex.1006, [0032], [0002]
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`(discussing different priorities of packets “in UMTS for an Enhanced Uplink Data
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`Channel (E-DCH)”); id., [0020]; Ex.1003, ¶62.
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`
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`Implementing Eckert’s user equipment (UE) using Bucknell’s processor and
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`transceiver would have involved combining prior art elements (Eckert’s UE having
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`an architecture with Bucknell’s processor and transceiver) according to known
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`methods (having a processor control a transceiver) to yield the predictable and
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`beneficial result of a UE architecture for implementing the teachings of Eckert and
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`Bucknell. In other words, it would have been naturally beneficial to implement
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`Bucknell’s standard UMTS-compatible mobile radio terminal architecture in
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`Eckert so that Eckert’s device is also UMTS compatible. A POSITA would have
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`also found it advantageous to implement Eckert’s transmission/reception
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`functionality in a transceiver that is controlled by a processor (e.g., via software
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`modules) to achieve (1) simplicity of implementation via programming or
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`configuration of a single processor and a single transceiver and (2) speed of
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`implementation as a result of a simple architecture. Ex.1003, ¶¶63-64.
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`A POSITA would have had a reasonable expectation of success in
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`implementing Bucknell’s mobile terminal hardware architecture in Eckert’s UE
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`because both Bucknell and Eckert describe the same MAC protocol layer having
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`the same E-DCH channel. Ex.1005, [0168]; Ex.1006, [0002]. Thus, a POSITA
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`would have expected that using Bucknell’s processor and transceiver to provide the
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`hardware platform for Eckert’s UE would be successful. Ex.1003, ¶65.
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`[1.2] the processor is configured to:
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`As explained in the analysis of limitation [1.1], Eckert’s UE includes
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`Bucknell’s processor. It was obvious or understood that a processor in a mobile
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`terminal, such as Bucknell’s processor, can be programmed or configured to
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`perform various functions, such as the functions in the remaining limitations,
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`which are obvious in view of the teachings of Eckert, Bucknell, and Lohr-1,
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`thereby rendering obvious claim element [1.2]. Ex.1003, ¶66 (citing Lohr-1,
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`34:11-12 (“Further, the various embodiments of the present invention may also be
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`implemented by means of software modules which are executed by a processor...”)
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`and Ex.1010, Figure 11 and related discussion in [0006]-[0011] and [0074]-[0076];
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`Ex.1003, ¶66.
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`[1.3] cause the circuitry to receive parameters associated with a plurality of radio
`bearers,
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`Eckert in view of Lohr-1 renders obvious limitation [1.3]. Ex.1003, ¶67.
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`Eckert presents a protocol stack for communication between a base station
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`and a UE. Ex.1005, [0005]. The protocol stack includes a Radio Resource Control
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`(RRC) protocol layer, which is responsible for configuring and reconfiguring radio
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`bearers. Id., [0006]. (“The RRC protocol or the RRC protocol layer is
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`responsible for setting up and clearing down and also for (re)configuring …
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`radio bearers…”). Ex.1003, ¶68.
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`Furthermore, as was understood generally in the art, a radio bearer provides
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`a corresponding service over the wireless medium. Ex.1005, [0156] (providing
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`“services by means of radio bearers (RB)”), [0161]; Ex.1003, ¶69 (citing Ex.1010,
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`[0014] (“[A] radio bearer (RB) [is] established, respectively, for providing services
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`having an appropriate QoS.”), and Ex.1012, [0011]). Eckert’s usage of the term of
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`art “radio bearer” is consistent with that of the ’138 patent, which describes a
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`service as an example radio bearer. Ex.1001, 4:4-5 (“radio bearers (or services)”),
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`4:24-27 (“radio bearers (e.g., services)”).
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`Eckert’s UE may maintain a plurality of services, provided by a plurality of
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`radio bearers (plurality of radio bearers), simultaneously. For example, in one
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`embodiment of Eckert, three packet services are provided on the uplink in parallel:
`
`For the exemplary embodiments shown, a transmission
`scenario is assumed in which a user of the mobile radio
`terminal 118 uses three packet services in the uplink at
`parallel times, for example one service for interactive
`gaming on the internet, one service for downloading text
`files and one service for streaming video data.
`
`Ex.1005, [0197]. Other prior art confirms that a UE can have multiple radio
`
`bearers, each providing a service. Ex.1003, ¶70 (citing Ex.1012, [0118]
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`(Describing Figure 7, which is identical to Eckert’s Figure 2, that “one UE may
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`have several RBs and, in general, one RLC entity and one PDCP entity are used
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`for one RB.”) and [0121]). Thus, Eckert describes the use of a radio bearer to
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`provide a service and describes a UE providing a plurality of services at the same
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`time, thereby disclosing or rendering obvious a plurality of radio bearers.
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`Ex.1003, ¶70.
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`
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`Eckert explains that the RRC protocol layer is responsible for “negotiating
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`all parameters of the protocol layers of layer 1 and layer 2 on the basis of UMTS.”
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`Ex.1005, [0006]. Protocol layer 2 (L2) includes radio bearers – for example, “the
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`data link layer 202, protocol layer 2,” Ex.1005, [0146], is shown in Figure 2 as
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`including “radio bearers 210,” id., [0163]. Layer 2 202 also includes the MAC
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`layer. See Ex.1005, Figure 2. Eckert explains that “the UMTS mobile radio core
`
`network 105 provides this requested service in a prescribed, defined quality of
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`service (QoS) which corresponds to the Quality of Service requirements of the
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`service in question.” Ex.1005, [0177]. The core network provides these services
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`via other infrastructure network elements, such as NodeB. See Eckert, Figure 1
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`(illustrating core network 105 and NodeBs 108,109). Because the UMTS mobile
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`radio core network provides the services, it would have been obvious that the RRC
`
`protocol layer at the infrastructure side is responsible for providing the parameters
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`of the radio bearers (in layer 2), including the priority levels of the logical channels
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`of the radio bearers. Ex.1003, ¶71.
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`Lohr-1 confirms that the network communicates param