Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10428 Filed 05/17/23 Page 1 of 66
`
`
`
`Exhibit 1
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10429 Filed 05/17/23 Page 2 of 66
`Trials@uspto.gov
`Paper: 8
`571-272-7822
`Date: May 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`NEO WIRELESS LLC,
`Patent Owner.
`
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, CHARLES J. BOUDREAU, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10430 Filed 05/17/23 Page 3 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`INTRODUCTION
`
`I.
`A. Background and Summary
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–14 (the “challenged claims”) of
`U.S. Patent 10,075,941 B2 (Ex. 1001, the “’941 patent”). Paper 1
`(“Petition” or “Pet.”). Neo Wireless LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Preliminary Response” or “Prelim.
`Resp.”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review. 35 U.S.C. § 314;
`37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes
`review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted unless “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least [one] of the claims
`challenged in the petition.”
`After considering the Petition, the Preliminary Response, and the
`evidence of record, we determine that Petitioner has demonstrated a
`reasonable likelihood that it would prevail with respect to at least one of
`claims 1–14. Accordingly, we institute an inter partes review of all
`challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. 37
`C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize
`the review to proceed on all of the challenged claims and on all grounds of
`unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348, 1359–60 (2018).
`
`2
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10431 Filed 05/17/23 Page 4 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`Real Parties-in-Interest
`B.
`The parties identify themselves as the real parties-in-interest. Pet. 3;
`Paper 6, 1. Petitioner further states that Volkswagen Group of America, Inc.
`is a subsidiary of Volkswagen AG. Pet. 3.
`C. Related Proceedings
`The parties identify, as matters involving or related to the ’941 patent,
`In re: Neo Wireless, LLC Patent Litigation, 2-22-md-03034 (E.D. Mich.)
`(“the NEO Wireless litigation”) and Neo Wireless LLC v. Volkswagen Group
`of America, Inc. et al., 2-22-cv-11404 (E.D. Mich.). Pet. 3–4; Paper 6, 1–2.
`The parties also identify other district court proceedings involving the ’941
`patent, both current and former, including Neo Wireless, LLC v. Volkswagen
`Group of America, Inc. et al., 1-22-cv-00076 (E.D. Tenn.) (terminated
`June 14, 2022). Pet. 3–4; Paper 6, 1–3.
`The parties further state that Petitioner has filed petitions in IPR2022-
`01538 (U.S. Patent 10,771,302) and IPR2022-01539 (U.S. Patent
`10,965,512). Pet. 4; Paper 6, 3–4. In addition, Patent Owner identifies
`IPR2022-01567 (U.S. Patent 10,447,450) as a related matter. Paper 6, 4.
`Petitioner also identifies IPR2021-01468 (“the -01468 proceeding”), a
`petition filed by Dell Inc. that was denied inter partes review, as a related
`matter. Pet. 4.
`We additionally note that Ford Motor Company and American Honda
`Motor Co., Inc. (“Honda”) also have filed petitions for review of the ’941
`patent. IPR2023-00766, Paper 1; IPR2023-00791, Paper 3. Honda’s
`petition is substantially identical to the instant Petition and was accompanied
`by a motion for joinder as a petitioner in this proceeding. IPR2023-00791,
`Paper 2.
`
`3
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10432 Filed 05/17/23 Page 5 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`D. The ’941 Patent
`The ’941 patent is titled “Methods and Apparatus for Multi-Carrier
`Communication Systems with Adaptive Transmission and Feedback.”
`Ex. 1001, code (54). The ’941 patent describes various methods to improve
`the performance of a wireless system, such as adaptive modulation and
`coding (“AMC”), channel estimation, transmission power control (“TPC”),
`and the adjustment of a subchannel configuration in accordance with the
`state of a communication channel. Id. at 1:34–48. The ’941 patent,
`however, states that “[t]he subchannel configuration is normally defined and
`fixed in an operation, and it is usually not considered an adjustable function
`of the system to be adapted to the user profile and/or operational
`environment.” Id. at 2:4–7.
`The ’941 patent describes a method for adaptive transmission of
`wireless communication signals in which modulation and coding scheme
`(“MCS”), coding rates, training pilot patterns, TPC levels, and subchannel
`configurations “are jointly adjusted to adapt to the channel conditions.”
`Ex. 1001, 2:33–38. Figure 4 of the ’941 patent is reproduced below.
`
`4
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10433 Filed 05/17/23 Page 6 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`
`Figure 4 shows an example of a control process between Device A
`and Device B. Ex. 1001, 2:17–18. Device A and Device B may be a base
`station and a mobile station that use adaptive transmission. Id. at 4:14–17.
`Specifically, based on output from adaptation process 406, Device A’s
`transmitter 401 transmits data 402 and control information 404 to Device B.
`Id. at 4:17–19. Device B’s receiver 408 receives data 402 and control
`information 404, whereas measurement process 410 measures channel
`conditions and feeds channel quality information (“CQI”) 412 back to
`Device A. Id. at 4:20–24.
`According to the ’941 patent, “[t]he underlying principles of adaptive
`transmission and feedback are both to increase the degree of freedom of a
`transmission process and to supply information for the adaptation process of
`a communication system.” Ex. 1001, 3:63–66. The ’941 patent explains
`that when adaptive modulation, coding, training, and power control
`(“AMCTP”) is used, a transmitter relies on CQI to select an appropriate
`AMCTP scheme for transmitting the next packet or retransmitting a
`
`5
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10434 Filed 05/17/23 Page 7 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`previously failed packet. Id. at 4:46–49. The ’941 patent states that “[t]he
`adaptation process adjusts the allocated modulation schemes, coding rates,
`pilot patterns, power levels, spatial processing schemes, subchannel
`configurations, etc. in accordance with the transmission channel state and
`condition, for improving system performance and/or capacity.” Id. at
`3:66–4:4.
`
`E. Illustrative Claim
`Petitioner challenges claims 1–14 of the ’941 patent. Pet. 1. Claims
`1, 6, 8, and 13 are the independent challenged claims. Claim 1, reproduced
`below with Petitioner’s bracketing and labels, is representative.
`1. [1A] A link adaptation method by a base station serving a
`plurality of mobile stations in an Orthogonal Frequency Division
`Multiplexing
`(OFDM)
`communication
`system,
`the
`communication system utilizing a transmission structure with
`time slots in the time domain and frequency subchannels in the
`frequency domain, the method comprising:
`[1B] transmitting a control message to a mobile station over
`a control channel, wherein:
`[1C] the control message contains transmission parameters
`allocated to the mobile station for a subsequent transmission of
`data by the base station over a frequency subchannel to the
`mobile station in a time slot; and
`[1D] the mobile station-specific transmission parameters
`indicate an antenna transmission scheme and
`[1E] a corresponding subchannel configuration,
`[1F]
`the antenna
`transmission scheme comprising a
`transmission diversity scheme or a multiple-input multiple-
`output (MIMO) scheme and
`configuration
`subchannel
`[1G]
`the
`corresponding
`characterized by distributed subcarriers or localized subcarriers
`in the frequency domain; and
`[1H] transmitting a data packet to the mobile station over the
`frequency subchannel in accordance with the mobile station-
`specific transmission parameters.
`
`6
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10435 Filed 05/17/23 Page 8 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`
`Ex. 1001, 9:5–31; Pet. 117–118.
`
`
`
`
`
`
`
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–14 of the ’941 patent are unpatentable
`on the following grounds (Pet. 7):
`References
`Claims Challenged 35 U.S.C. §
`802.16a-2001,2 802.16a-2003,3
`1–14
`103(a)1
`Heath4
`1, 3–8, 10–14
`103(a) Walton040,5 Li0176
`2, 9
`103(a) Walton040, Li017, Tufvesson7
`Petitioner also relies on the Declaration of Sarah Kate Wilson, PhD.
`(Ex. 1003, “the Wilson Declaration”) in support of its arguments. Patent
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013.
`Because the ’941 patent claims priority as a continuation to an application
`filed before March 16, 2013, we apply the pre-AIA versions of the statutory
`bases for unpatentability. See Ex. 1001, code (63).
`2 IEEE Std 802.16-2001, “802.16-2001 - IEEE Standard for Local and
`Metropolitan Area Networks - Part 16: Air Interface for Fixed Broadband
`Wireless Access Systems” (Ex. 1005, “802.16a-2001”).
`3 IEEE Std 802.16-2003, “802.16a-2003 - Standard for Amendment to IEEE
`Standard for Local and Metropolitan Area Networks - Part 16: Air Interface
`for Fixed Broadband Wireless Access Systems - Medium Access Control
`Modifications and Additional Physical Layer Specifications for 2-11 GHz”
`(Ex. 1006, “802.16a-2003”).
`4 US 6,937,592 B1, issued Aug. 30, 2005 (Ex. 1007, “Heath”).
`5 US 2003/0125040 A1, published July 3, 2003 (Ex. 1008, “Walton040”).
`6 US 2002/0147017 A1, published Oct. 10, 2002 (Ex. 1009, “Li017”).
`7 F. Tufvesson et al., “Pilot Assisted Channel Estimation for OFDM in
`Mobile Cellular Systems,” 1997 IEEE 47th Vehicular Technology Conf.
`Tech. in Motion, May 4–7, 1997 (Ex. 1010, “Tufvesson”).
`
`7
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10436 Filed 05/17/23 Page 9 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`Owner relies on the Declaration of William P. Alberth Jr. (Ex. 2001, “the
`Alberth Declaration”) in support of its arguments.
`II. DISCRETIONARY DENIAL
`Patent Owner argues that we should exercise our discretion to deny
`institution of inter partes review in this case under 35 U.S.C. § 314(a) in
`view of the decision in the -01468 proceeding. Prelim. Resp. 54–66. For
`the following reasons, we decline to exercise our discretion under § 314(a)
`to deny institution of inter partes review.
`A. Denial Due to Serial Petitions
`In exercising discretion to institute review, the Board may consider
`the following non-exhaustive list of factors set forth in General Plastic
`Industrial Co. v. Canon Kabushiki Kaisha:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`
`8
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10437 Filed 05/17/23 Page 10 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to
`section II.B.4.i).
`General Plastic’s first enumerated factor has been expanded to
`include, as a reason weighing in favor of exercising discretion to deny
`institution, where a previous petition was filed by another petitioner against
`the same claims of the same patent, and there exists a “significant
`relationship” between the different petitioners. See Valve Corp. v. Elec.
`Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9–10 (PTAB April 2,
`2019) (precedential). In Valve, a significant relationship was found between
`different petitioners (HTC and Valve) because they were co-defendants in
`litigation and accused of infringing the same patent based on “HTC’s . . .
`devices that incorporate technology licensed from Valve.” Valve, Paper 11
`at 9–10.
`Patent Owner argues that the ’941 patent was previously challenged in
`the -01468 proceeding, which was denied on the merits, and “[s]ix months
`later, Petitioner filed its petition, also alleging obviousness, based on
`different references ‘with similar inventors to’ the references in [the -01468
`proceeding].” Prelim. Resp. 55 (citing Pet. 7 n.1). Patent Owner contends
`that Petitioner discusses the previous challenge, “argues that its references
`and arguments are ‘different’ from those in that case,” and replaced the
`references asserted in the -01468 proceeding “with ‘different’ references,
`including a ‘different’ Walton and a ‘different’ Li, in a frank attempt to
`address the flaws the panel pointed out and relied upon to reject [the -01468
`proceeding].” Id. at 55–56. Patent Owner asserts this is “road-mapping”
`
`9
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10438 Filed 05/17/23 Page 11 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`under General Plastic and Code200, UAB v. Bright Data, Ltd., IPR2022-
`00861, Paper 18 (PTAB Aug. 23, 2022) (precedential). Id. at 56–57. In
`addition, Patent Owner contends that although Petitioner and the petitioner
`in the -01468 proceeding are not the same, there is a significant relationship
`between the different petitioners because Petitioner has used the work
`product of the -01468 proceeding as a road map to form the arguments for
`this proceeding. Id. at 57–59 (citing Ericsson Inc. v. Uniloc 2017, LLC,
`IPR2019-01550, Paper 8, 12 (Mar. 17, 2020)).
`In summary, Patent Owner alleges that Petitioner has used the -01468
`proceeding as a road map and that this creates a significant relationship
`between the different petitioners. As Patent Owner’s arguments
`acknowledge, the petitioner in the -01468 proceeding and Petitioner are not
`the same. Id. at 57–59. Although Ericsson found an implicit relationship
`was created through the manner in which the second petitioner fashioned its
`petition (see Ericsson, Paper 8 at 12), it is not a precedential decision, and,
`therefore, not binding on our decision.
`Our precedential decision, Valve, found a significant relationship
`existed between the petitioner, Valve Corporation (“Valve”), and HTC
`Corporation and HTC America, Inc. (collectively, “HTC”). Specifically,
`both Valve and HTC were accused of patent infringement based on the same
`product, “namely HTC’s VIVE devices that incorporate technology licensed
`from Valve,” and Valve employees provided HTC with technical assistance
`during the development of the accused devices. Valve, Paper 11 at 9–10.
`Here, Patent Owner does not allege that Petitioner and the petitioner in the
`-01468 proceeding have a relationship of this type.
`
`10
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10439 Filed 05/17/23 Page 12 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`Because the evidence does not show a significant relationship
`between Petitioner and the petitioner of the -01468 proceeding, General
`Plastic factors 1, 2, 4, and 5 weigh against discretionary denial. As
`explained above, this is Petitioner’s first petition challenging the ’941 patent
`and there is no indication of a significant relationship under Valve and factor
`1 between Petitioner and the petitioner of the -01468 proceeding.
`Accordingly, Petitioner did not file a second petition following-on to a first
`petition under factors 2, 4, and 5. In other words, this is not a case where we
`need to address concerns that Petitioner is “strategically stag[ing] [its] prior
`art and arguments in multiple petitions” in order to refine its positions based
`on lessons learned from Petitioner’s filing of an earlier petition. General
`Plastic, Paper 19 at 17; Code200, Paper 18 at 5.
`With regard to General Plastic factor 3, it is undisputed that Petitioner
`had received both Patent Owner’s preliminary response and the Board’s
`decision denying institution in IPR2021-01468 at the time of filing the
`Petition. See Pet. 13–14 (summarizing the proceedings in IPR2021-01468).
`Nonetheless, as noted above, the present Petition is the first petition filed by
`Petitioner with respect to the ’941 patent, and we find the impact of this
`factor to be mitigated to some extent by Patent Owner’s staggered assertions
`of the ’941 patent in district court proceedings over more than a year. See
`id. at 3–4 (listing related matters and filing dates thereof); Paper 6 (listing
`related matters). At the time Patent Owner first asserted the ’941 patent
`against Petitioner in the Eastern District of Tennessee in March 2022 (id.
`at 3), more than a year after asserting the ’450 patent against Dell in the
`Western District of Texas in January 2021 (id.), Patent Owner had already
`filed its preliminary response in IPR2021-01468, and the Board’s decision
`
`11
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10440 Filed 05/17/23 Page 13 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`denying institution in IPR2021-01468 issued only about two weeks later.
`Accordingly, we weigh this factor at most slightly in favor of exercising our
`discretion to deny.
`Lastly, under General Plastic factors 6 and 7, we do not discern that
`the institution of this proceeding would tax unduly the resources of the
`Board or that we could not meet the requirement of 35 U.S.C. § 316(a)(11)
`to issue a final determination within one year after institution. Therefore,
`factors 6 and 7 do not favor discretionary denial.
`For the reasons stated above, we determine that only General Plastic
`factor 3 weighs to any extent in favor of exercising our discretion under
`35 U.S.C. § 314(a) to deny institution. On balance, particularly in view of
`the lack of evidence of any relationship between Petitioner and the petitioner
`of the -01468 proceeding, we decline Patent Owner’s request to deny the
`Petition under 35 U.S.C. § 314(a) for reason of serial petitions.
`B. Denial Due to Analysis of Merits in the -01468 Proceeding
`Patent Owner argues that denial of inter partes review in the -01468
`proceeding is entitled to weight and deference.8 Prelim. Resp. 59–61.
`However, the majority of the caselaw Patent Owner cites to support its
`position concerns prior invalidity determinations by a district court. Id. The
`-01468 proceeding is neither a proceeding in a district court nor a
`determination of invalidity.
`
`8 We note that Patent Owner does not argue that we should discretionarily
`deny the petition under 35 U.S.C. § 325(d) because the same or substantially
`the same prior art or arguments were previously presented to the Office in
`the -01468 proceeding. Nor does Patent Owner argue estoppel under
`35 U.S.C. § 315(e)(1), which would not apply because the -01468
`proceeding did not result in a final written decision and involved a different
`petitioner.
`
`12
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10441 Filed 05/17/23 Page 14 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`The remaining cases and authority Patent Owner cites regard res
`judicata or the preclusive effect of an earlier decision. Id. To the extent
`Patent Owner contends that res judicata, or claim preclusion, should apply,
`we note that “[c]laim preclusion applies when ‘(1) the parties are identical or
`in privity; (2) the first suit proceeded to a final judgment on the merits; and
`(3) the second claim is based on the same set of transactional facts as the
`first.”’ Phillips/May Corp. v. U.S., 524 F.3d 1264, 1268 (Fed. Cir.
`2008) (quoting Ammex, Inc. v. U.S., 334 F.3d 1052, 1055 (Fed. Cir. 2003)).
`As discussed above with regard to our serial petition analysis under General
`Plastic, the petitioners for this proceeding and the -01468 proceeding are not
`identical. Nor does Patent Owner allege that the petitioners are in privity.
`Therefore, res judicata, or claim preclusion, does not apply in view of
`the -01468 proceeding.
`To the extent Patent Owner argues that collateral estoppel (also
`known as issue preclusion) should apply, we do not agree with that position.
`Issue preclusion is appropriate only if: (1) the issue is identical to one
`decided in the first action; (2) the issue was actually litigated in the first
`action; (3) resolution of the issue was essential to a final judgment in the
`first action; and (4) the party against whom issue preclusion is asserted had a
`full and fair opportunity to litigate the issue in the first action. In re
`Freeman, 30 F.3d 1459, 1466 (Fed. Cir. 1994). We do not agree that
`Petitioner’s grounds present issues that are identical to those decided in the
`-01468 proceeding. Specifically, the -01468 proceeding resulted in a denial
`on the merits. Conversely, for the reasons discussed below, and based on
`the current record, we find that Petitioner’s second ground demonstrates a
`
`13
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10442 Filed 05/17/23 Page 15 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`reasonable likelihood of prevailing on the merits and that at least one of the
`challenged claims is unpatentable.
`Patent Owner also argues that the failure of the petition in the -01468
`proceeding is evidence of nonobviousness. Prelim. Resp. 62–66. However,
`Patent Owner cites caselaw that concerns invalidity in district court cases
`(Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed.
`Cir. 2001); Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 488-489
`(1900)), caselaw that is not controlling (Beloit Corp. v. Valmet Corp., 1997
`U.S. Dist. LEXIS 21329, at *11-12 (W.D. Wis. July 15, 1997)) or
`precedential (Synaptics, Inc. v. Amkor Tech, Inc., IPR2017-00085, Paper 12,
`10 (Apr. 18, 2017)), caselaw concerning the issue of serial petitions under
`§ 314(a) that we discuss above (General Plastic and Code200), or caselaw
`regarding impermissible hindsight in an obviousness determination (cases
`cited at Prelim. Resp. 63–66). As a result, Patent Owner does not
`sufficiently support its position that a prior denial of a petition for inter
`partes review serves as evidence of nonobviousness.
`Therefore, we decline to discretionarily deny the petition under
`§ 314(a) in view of the analysis of the merits in the -01468 proceeding.
`C. Conclusion
`For these reasons, we decline to exercise our discretion to deny the
`Petition under § 314(a).
`
`III. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`14
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10443 Filed 05/17/23 Page 16 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”9 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR, 550
`U.S. at 418. An obviousness determination requires finding “both ‘that a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`
`
`9 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however,
`has presented any such evidence for us to consider.
`
`15
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10444 Filed 05/17/23 Page 17 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an
`obviousness analysis, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not
`to allow hindsight reconstruction of references . . . without any explanation
`as to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376,
`1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount to an
`“insufficient articulation[] of motivation to combine”; “instead, the finding
`must be supported by a ‘reasoned explanation’” (citation omitted)); In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To
`satisfy its burden of proving obviousness, a petitioner cannot employ mere
`conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.”).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`16
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10445 Filed 05/17/23 Page 18 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`Petitioner asserts that at the time of the invention a person of ordinary
`skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical
`engineering, computer engineering, computer science, or an equivalent field,
`or an advanced degree in those fields, as well as least 3–5 years of academic
`or industry experience in mobile wireless communications, or comparable
`industry experience.” Pet. 14 (citing Ex. 1003 ¶¶ 53–54).
`Patent Owner does not provide its own assessment regarding the level
`of skill in the art, or otherwise dispute Petitioner’s assertion. See generally
`Prelim. Resp.; see also Ex. 2001 ¶ 23 (Patent Owner’s expert “accept[s] Dr.
`Wilson’s proposed qualifications of a POSITA.”).
`Based on our review of the record at this stage, we find that
`Petitioner’s proposal is consistent with the level of skill reflected in the prior
`art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d
`1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the
`art, prior art solutions to those problems, and the sophistication of the
`technology as factors that may be considered in determining the level of
`ordinary skill in the art). The prior art itself may be sufficient to
`demonstrate the level of skill in the art at the time of the invention. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`
`17
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10446 Filed 05/17/23 Page 19 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`specific findings regarding ordinary skill level are not required “where the
`prior art itself reflects an appropriate level and a need for testimony is not
`shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985)).
`Accordingly, for purposes of this decision, we adopt Petitioner’s
`definition of the person of ordinary skill in the art.
`C. Claim Construction
`In an inter partes review proceeding for a petition filed on or after
`November 13, 2018, a patent claim shall be construed using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b).10 This rule adopts
`the same claim construction standard used by Article III federal courts,
`which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny.
`Under that standard, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning the term would
`have to a person of ordinary skill at the time of the invention, in the context
`of the entire patent including the specification. See Phillips, 415 F.3d at
`1312–13. “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`We address the following claim terms.
`
`
`10 The Petition in this case was accorded a filing date of September 15, 2022.
`See Paper 3, 1.
`
`18
`
`

`

`Case 2:22-md-03034-TGB ECF No. 145-1, PageID.10447 Filed 05/17/23 Page 20 of 66
`IPR2022-01537
`Patent 10,075,941 B2
`
`
`1. 1C, 6C: “transmission parameters allocated to the mobile station”
`8C, 13C: “transmission parameters specific to the mobile station”
`1D, 1H, 6D, 6H, 8D, 8H, 13D, 13H: “mobile station-specific transmission
`parameters”
`Claim 1 recites the transmission of a control message to a mobile
`station over a control channel, “wherein: the control message contains
`transmission parameters allocated to the mobile station for a subsequen