Case: 23-1123 Document: 78 Page: 1 Filed: 03/19/2024
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SISVEL S.P.A.,
`Appellant
`
`v.
`
`TCT MOBILE INTERNATIONAL LIMITED, TCT
`MOBILE, INC., TCT MOBILE (US) INC., TCT
`MOBILE (US) HOLDINGS, INC., TCL
`COMMUNICATION TECHNOLOGY HOLDINGS
`LIMITED, HONEYWELL INTERNATIONAL INC.,
`SIERRA WIRELESS, ULC., TELIT CINTERION
`DEUTSCHLAND GMBH F/D/B/A THALES DIS AIS
`DEUTSCHLAND GMBH,
`Appellees
`______________________
`
`2023-1123
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2021-
`00678.
`
`______________________
`
`Decided: March 19, 2024
`______________________
`
`TIMOTHY DEVLIN, Devlin Law Firm LLC, Wilmington,
`DE, for appellant. Also represented by NEIL A. BENCHELL,
`ANDREW PETER DEMARCO, ROBERT J. GAJARSA.
`
`

`

`Case: 23-1123 Document: 78 Page: 2 Filed: 03/19/2024
`
`2
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`
` JEREMY DEANE PETERSON, PV Law LLP, Washington,
`DC, for appellees TCT Mobile International Limited, TCT
`Mobile, Inc., TCT Mobile (US) Inc., TCT Mobile (US) Hold-
`ings, Inc., TCL Communication Technology Holdings Lim-
`ited. Also represented by BRADFORD CANGRO.
`
` JEFFREY R. GARGANO, K&L Gates LLP, Chicago, IL, for
`appellee Honeywell International Inc. Also represented by
`BRIAN PAUL BOZZO, Pittsburgh, PA; ERIK HALVERSON, San
`Francisco, CA.
`
` AMANDA TESSAR, Perkins Coie LLP, Denver, CO, for ap-
`pellee Sierra Wireless, ULC. Also represented by DANIEL
`TYLER KEESE, Portland, OR.
`
` GUY YONAY, Pearl Cohen Zedek Latzer Baratz LLP,
`New York, NY, for appellee Telit Cinterion Deutschland
`GmbH. Also represented by KYLE AUTERI, I.
`______________________
`
`Before LOURIE, LINN, and STOLL, Circuit Judges.
`LOURIE, Circuit Judge.
`Sisvel S.p.A. (“Sisvel”) appeals from a final written de-
`cision of the United States Patent and Trademark Office
`Patent Trial and Appeal Board (“the Board”) finding claims
`1, 3–5, 11, and 13–15 of U.S. Patent 8,971,279 (the “’279
`patent”) unpatentable as obvious. TCT Mobile Int’l Ltd., et
`al. v. Sisvel S.p.A., IPR202-00678 (P.T.A.B. June 7, 2023),
`J.A. 1–54 (“Decision”). For the reasons provided below, we
`affirm.
`
`BACKGROUND
`The ’279 patent relates to improvements in network
`communication efficiency in advanced LTE networks for
`cellular phones. To better allocate network resources, cell
`phones (i.e., user equipment or “UE”) are assigned certain
`
`

`

`Case: 23-1123 Document: 78 Page: 3 Filed: 03/19/2024
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`3
`
`intervals in which to transmit data and certain frequencies
`for that transmission. See ’279 patent, col. 3 ll. 31–37. One
`method of allocation
`is Semi-Persistent Scheduling
`(“SPS”), which provides user equipment with a transmis-
`sion time and frequency that is valid for a limited period of
`time, rather than having the user equipment request per-
`mission to transmit each time. See id. col. 3 ll. 44–62. Un-
`der an SPS regime, a user equipment is said to be
`“activated” during its allocated time period for transmis-
`sion and is considered “deactivated” when that time period
`is over. Id. To deactivate the user equipment, the base
`station will transmit a message called an “SPS deactiva-
`tion signal” to the user equipment informing the user
`equipment that its assigned frequency was released. Id.
`The ’279 patent is directed to a method of sending more
`efficient SPS deactivation signals that essentially “piggy-
`back” on existing messages. Appellant’s Br. at 5. One such
`teaching is a method of filling a preexisting binary field
`(e.g., resource indication value or “RIV”) with all “1”s to
`serve as an SPS deactivation notice. See ’279 patent, col.
`4–5 passim; id. col. 26 ll. 2–26. In the patented system, the
`string of ones would always be processed as an invalid
`value and never mistaken for a valid resource allocation
`message, providing stability to the network, regardless of
`size. Appellant’s Br. at 6–8; ’279 patent Fig. 16. Repre-
`sentative claim 1 is reproduced below:
`1. A method for deactivating Semi-Persistent
`Scheduling (SPS) transmission in a wireless mobile
`communication system, the method comprising:
`performing, by a User Equipment (UE), a
`SPS transmission at an interval of a sub-
`frame period configured by a radio resource
`control (RRC) signal;
`receiving, by the UE, a Physical Downlink
`Control Channel (PDCCH) signal with a
`Radio Network Temporary
`Identifier
`
`

`

`Case: 23-1123 Document: 78 Page: 4 Filed: 03/19/2024
`
`4
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`(RNTI), wherein the PDCCH signal in-
`cludes a first field related to a resource al-
`location; and
`performing a procedure for deactivating
`the SPS transmission if the PDCCH signal
`satisfies conditions for SPS deactivation,
`wherein the conditions for SPS deactiva-
`tion include:
`the RNTI is a SPS Cell RNTI (SPS C-
`RNTI); and
`the first field is entirely filled with ‘1’.
`’279 patent, col. 26 ll. 2–26 (emphases added). The other
`challenged independent claim, claim 11, contains the same
`requirement that “the conditions for SPS deactivation in-
`clude . . . the first field is entirely filled with ‘1’.” Id. col. 27
`ll. 13–15.
`TCT Mobile International Limited, TCT Mobile, Inc.;
`TCT Mobile (US) Inc.; TCT Mobile (US) Holdings, Inc.; TCL
`Communication Technology Holdings Limited; Honeywell
`International Inc.; Sierra Wireless, Inc.; and Thales Dis Ais
`Deutschland GMBH (collectively, “Honeywell”) petitioned
`for inter partes review. Honeywell asserted four grounds
`including (1) obviousness based on Samsung1 and Nokia2
`
`
`1 TDOC R2-084455, SPS RESOURCE RELEASE, 3GPP
`TSG-RAN2#63 MEETING, Jeju, South Korea (August
`18–22, 2008), J.A. 1744.
`2 RI-083718, MISSING DETAILS OF SEMI-PERSISTENT
`SCHEDULING, 3GPP TSG-RAN WG1 MEETING #54BIS, Pra-
`gue, Czech Republic (September 29–October 3, 2008), J.A.
`1742–43.
`
`

`

`Case: 23-1123 Document: 78 Page: 5 Filed: 03/19/2024
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`5
`
`and (2) obviousness based on Samsung and Dahlman.3
`Samsung is a technical specification by an industry stand-
`ards group considering potential codes for SPS deactiva-
`tion. It proposes that “all 1s could be a good candidate” for
`such a code, but with no explanation of why. J.A. 1744.
`Nokia is a technical specification by the same industry
`standards group that proposes filling a field with all zeroes
`to serve as a codeword for “SPS release.” J.A. 1742. Dahl-
`man is a book that provides background information on
`wireless technology, particularly on a resource block allo-
`cation field, but it does not mention the use of a specific
`value as a codeword for SPS deactivation.
`Sisvel argued that a person of ordinary skill in the art
`would not have had a reasonable expectation of success in
`the proposed combinations because of the allegedly exten-
`sive calculations that would have been required to ensure
`that filling the field entirely with ones would be invalid in
`all circumstances, regardless of network size. Decision,
`J.A. 34. Sisvel cited the testimony of its expert witness
`stating that a skilled artisan in this field would have de-
`manded mathematical certainty that the solution would
`work for all size networks. Id. at J.A. 37.
`The Board held all challenged claims unpatentable as
`obvious based on both asserted grounds, Dahlman together
`with Samsung as well as Nokia together with Samsung.
`The Board found that claim 1 (and claim 11) did “not re-
`quire performing any calculations prior to filling the ‘first
`field’ entirely with 1s,” nor did it require any particular
`field size. Decision, J.A. 34–35. It therefore found no need
`to resolve the parties’ dispute as to whether or not a person
`of ordinary skill in the art would have been capable of cal-
`culating whether or not the use of all 1s would be invalid
`
`3 ERIK DAHLMAN ET AL., 3G EVOLUTION: HSPA AND
`LTE FOR MOBILE BROADBAND 1–608 (2d ed. 2008), J.A.
`1091.
`
`

`

`Case: 23-1123 Document: 78 Page: 6 Filed: 03/19/2024
`
`6
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`in all circumstances. Id. The Board also found that Hon-
`eywell had demonstrated a reasonable expectation of suc-
`cess
`in combining Samsung and Dahlman because
`Samsung (1) describes its solution as “simple,” (2) states
`that “all 1s could be a good candidate,” and (3) uses the
`same DCI format for signaling SPS deactivation as Dahl-
`man. Id. at J.A. 34–38 (quoting J.A. 1744). See also id. at
`44–45 (making similar findings with regard to the Sam-
`sung and Nokia combination). It noted that, despite
`Sisvel’s expert testimony that a person of ordinary skill
`would have demanded certainty of success, “‘the expecta-
`tion of success need only be reasonable, not absolute.’” Id.
`at J.A. 37 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d
`1348, 1364 (Fed. Cir. 2007)).
`Sisvel appeals. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`Sisvel argues on appeal that the Board erred in finding
`a motivation to combine Samsung and Dahlman with a rea-
`sonable expectation of success. Honeywell responds that
`the Board’s finding is without legal error and based on sub-
`stantial evidence. Honeywell further argues that Sisvel
`failed to appeal the Board’s invalidation of the claims based
`on Samsung and Nokia, and the appeal can therefore be
`affirmed on that ground without consideration of Sisvel’s
`arguments on the other ground. Sisvel replies that its ar-
`guments are with respect to the Samsung reference, which
`is present in both grounds, and it therefore did not forfeit
`any such argument or appeal.
`Because of the weakness of Sisvel’s position on the mer-
`its, we choose not to address the forfeiture argument. The
`Board’s finding of obviousness is soundly based in both fact
`and law. Samsung expressly teaches “to use all 1s in [the]
`RB assignment field on SPS resource allocation . . . to re-
`lease the SPS resource” and that “all 1s could be a good
`candidate.” J.A. 1744. It further describes that solution as
`
`

`

`Case: 23-1123 Document: 78 Page: 7 Filed: 03/19/2024
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`7
`
`a “simple release mechanism.” Id. That language is une-
`quivocal. The reference explicitly teaches both the chal-
`lenged element (i.e., “to use all 1s in [the] RB assignment
`field on SPS resource allocation”) and provides for a rea-
`sonable expectation of success in implementing that ele-
`ment (i.e., “all 1s could be a good candidate”). Id.
`That Samsung does not explain why it selected all ones
`or list out the calculations proving its effectiveness does not
`defeat its plain teaching. See, e.g., In re Corkill, 771 F.2d
`1496, 1500 (Fed. Cir. 1985) (“Although [the inventor] de-
`clared that it cannot be predicted how any candidate will
`work in a detergent composition, but that it must be tested,
`this does not overcome [the prior art]’s teaching that hy-
`drated zeolites will work.”). The law only requires that a
`person of ordinary skill in the art have a reasonable expec-
`tation of success, not an absolute one. Pfizer, 480 F.3d at
`1364. Although different fields of art may have differences
`in what constitutes a “reasonable” expectation of success,
`such differences are not determinative in this case. Hon-
`eywell’s expert witness testified that using all ones would
`avoid calculations and be a simple design choice, which the
`reference itself echoes. Decision, J.A. 36; J.A. 1744 (de-
`scribing the solution as “simple”). And, as the Board found,
`there is nothing in the record showing that using all ones
`would not work or would be exceedingly difficult to imple-
`ment. Decision, J.A. 37. Sisvel asks us to ignore the plain
`text of the reference and impose an inappropriately high
`standard on expectation of success, which we decline to do.
`The Board therefore did not err in concluding that in-
`dependent claims 1 and 11 would have been obvious over
`Dahlman (or Nokia) together with Samsung and we affirm
`those holdings. See Appellant’s Reply Br. at 18 (asserting
`that the Board’s interpretation of Samsung, common to
`both grounds, was the critical basis for the Board’s find-
`ings); Decision, J.A. 45 (referencing “Patent Owner’s argu-
`ments that are common” to both grounds). Because Sisvel
`does not separately argue for the patentability of the
`
`

`

`Case: 23-1123 Document: 78 Page: 8 Filed: 03/19/2024
`
`8
`
`SISVEL S.P.A. v. TCT MOBILE INTERNATIONAL LIMITED
`
`challenged dependent claims, the Board’s finding of obvi-
`ousness of claims 3–5 and 13–15 is likewise affirmed.
`CONCLUSION
`We have considered Sisvel’s remaining arguments but
`find them unpersuasive. For the foregoing reasons, the de-
`cision of the Board is affirmed.
`AFFIRMED
`
`