Lanning Declaration
`U.S. Patent No. 8,310,993
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: IPR2014-01330
`
`U.S. Patent No. 8,310,993
`
`Attorney Docket No. 4472-00100
`
`Issued: November 13, 2012
`
`Petitioners: Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson
`
`Inventor: Timothy J. Speight
`
`Panel: To be assigned
`
`Assignee: Intellectual Ventures II LLC
`
`
`
`Title: Acknowledging Communication in a Wireless Network
`
`DECLARATION OF MARK R. LANNING
`REGARDING U.S. PATENT NO. 8,310,993
`
`
`
`
`Page 1 of 96
`
` ERICSSON EXHIBIT 1002
`
`
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`Table of Contents
`
`I. LIST OF REPORT APPENDICES AND EXHIBITS .................................. 4
`II. INTRODUCTION AND BASES FOR OPINIONS ....................................... 5
`A. EDUCATION AND WORK EXPERIENCE ............................................................... 5
`B. SCOPE OF WORK AND COMPENSATION ............................................................. 6
`C. DOCUMENTS RELIED UPON ............................................................................... 7
`III. SUMMARY OF OPINIONS......................................................................... 8
`IV. RELEVANT LEGAL PRINCIPLES AND GUIDELINES ....................... 9
`A. ANTICIPATION ................................................................................................... 9
`B. OBVIOUSNESS .................................................................................................10
`C. DATE OF INVENTION .......................................................................................11
`V. OVERVIEW OF THE ’993 PATENT ..........................................................11
`A. THE FIELD OF ART .........................................................................................11
`B. APPLICANT’S ADMITTED PRIOR ART (“AAPA”) ............................................12
`C. THE ’993 PATENT ...........................................................................................15
`D. PRIORITY DATE FOR THE ’993 PATENT ...........................................................18
`E. PERSON OF ORDINARY SKILL ..........................................................................18
`F. CHALLENGED CLAIMS ....................................................................................19
`G. LEGAL STANDARD FOR CLAIM CONSTRUCTION ..............................................19
`H. CONSTRUED TERMS ........................................................................................19
`i. Transfer Communication Protocol (TCP) .................................................19
`ii. Other Claim Terms .....................................................................................20
`VI. TECHNICAL BASIS UNDERLYING THE GROUNDS OF
`REJECTIONS SET FORTH IN THE PETITION FOR INTER PARTES
`REVIEW .................................................................................................................21
`A. GROUND 1: CLAIMS 1, 2, 4-8, AND 10-12 ARE OBVIOUS OVER SIPOLA IN VIEW
`OF BERGSTROM AND AAPA ....................................................................................21
`i. Disclosure of Sipola regarding Claim 1 ....................................................23
`ii. Disclosure of Bergstrom regarding Claim 1..............................................24
`iii. Disclosure of AAPA regarding Claim 1 .....................................................24
`iv. Summary of Reasons Claim 1 is Obvious over Sipola in view of Bergstrom
`and AAPA ..........................................................................................................25
`v. Rationale to Combine Sipola with Bergstrom and AAPA ..........................38
`vi. Disclosure of Sipola, Bergstrom, and AAPA regarding Claims 2 and 8 ...40
`vii. Disclosure of Sipola, Bergstrom, and AAPA regarding Claims 4 and 10 .42
`
`Page 2 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`viii. Disclosure of Sipola, Bergstrom, and AAPA regarding Claims 5 and 11
`…………………………………………………………………………………..45
`
`ix. Disclosure of Sipola, Bergstrom, and AAPA regarding Claims 6 and 12 .46
`B. GROUND 2: CLAIMS 3 AND 9 ARE OBVIOUS UNDER 35 U.S.C. § 103(A) OVER
`SIPOLA IN VIEW OF BERGSTROM, AAPA, AND RINNE ...............................................49
`C. GROUND 3: CLAIMS 1, 2, 4-8, AND 10-12 ARE OBVIOUS UNDER 35 U.S.C. §
`103(A) OVER KAKANI IN VIEW OF SIPOLA AND AAPA .............................................52
`i. Disclosure of Kakani regarding Claim 1 ...................................................53
`ii. Disclosure of Sipola regarding Claim 1 ....................................................54
`iii. Disclosure of Kakani, Sipola, and AAPA regarding Claims 2 and 8 ........64
`iv. Disclosure of Kakani, Sipola, and AAPA regarding Claims 4 and 10 ......67
`v. Disclosure of Kakani, Sipola, and AAPA regarding Claims 5 and 11 ......68
`vi. Disclosure of Kakani, Sipola, and AAPA regarding Claims 6 and 12 ......69
`D. GROUND 4: CLAIMS 3 AND 9 ARE OBVIOUS UNDER 35 U.S.C. § 103(A) OVER
`KAKANI IN VIEW OF SIPOLA, AAPA, AND RINNE ......................................................71
`E. GROUND 5: CLAIMS 1, 2, 4-8, AND 10-12 ARE OBVIOUS UNDER 35 U.S.C. §
`103(A) OVER KONING IN VIEW OF BERGSTROM AND AAPA .....................................74
`i. Disclosure of Koning regarding Claim 1 ...................................................75
`ii. Disclosure of Bergstrom regarding Claim 1..............................................76
`iii. Disclosure of Koning, Bergstrom, and AAPA regarding Claims 2 and 8 .85
`iv. Disclosure of Koning, Bergstrom, and AAPA regarding Claims 4 and 10
` ……………………………………………………………………………………..88
`v. Disclosure of Koning, Bergstrom, and AAPA regarding Claims 5 and 11
` …………………………………………………………………………………….89
`vi. Disclosure of Koning, Bergstrom, and AAPA regarding Claims 6 and 12
` ……………………………………………………………………………………90
`F. GROUND 6: CLAIMS 3 AND 9 ARE OBVIOUS OVER KONING IN VIEW OF
`BERGSTROM, AAPA, AND RINNE .............................................................................92
`VII. OTHER COMMENTS ................................................................................96
`
`Page 3 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`I.
`
`LIST OF REPORT APPENDICES AND EXHIBITS
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`Appendix No.
`
`Appendix 1
`Appendix 2
`
`Mark Lanning C.V.
`Claim Charts
`
`Description
`
`Exhibit No. Exhibit Description
`1001
`U.S. Patent No. 8,310,993 to Speight (the “’993 Patent”)
`
`1002
`
`Declaration of Mark Lanning re the ’993 Patent with appendices
`
`1003
`
`1004
`
`1005
`
`1006
`
`Office Action issued February 13, 2012, Prosecution History of
`’993 Patent
`
`Response to Office Action filed July 12, 2012, Prosecution History
`of ’993 Patent
`
`Interview Summary of Interview Conducted July 27, 2012,
`Prosecution History of ’993 Patent
`
`Notice of Allowability with Examiner’s Amendment issued
`August 14, 2012, Prosecution History of ’993 Patent
`
`1007
`
`U.S. Patent No. 7,260,073 to Sipola (“Sipola”)
`
`1008
`
`U.S. Patent Publication No. 2005/0054347 to Kakani (“Kakani”)
`
`1009
`
`U.S. Patent No. 8,005,481 to Bergstrom (“Bergstrom”)
`
`1010
`
`U.S. Patent No. 7,706,274 to Koning, et al. (“Koning”)
`
`1011
`
`U.S. Patent No. 8,572,250 to Rinne, et al. (“Rinne”)
`
`1012
`
`1013
`
`Response to Office Action filed February 18, 2011, Prosecution
`History of U.S. Patent No. 8,031,654
`
`Response to Office Action filed June 1, 2010, Prosecution History
`of U.S. Patent No. 8,031,654
`
`Page 4 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`II.
`
` INTRODUCTION AND BASES FOR OPINIONS
`
`1.
`
`I have been retained in the above-referenced inter partes review
`
`proceeding by Conley Rose, P.C., on behalf of Ericsson
`
`Inc. and
`
`Telefonaktiebolaget LM Ericsson (collectively “Ericsson” or “Petitioners”), as a
`
`technical expert to evaluate U.S. Patent 8,310,993 (the “’993 Patent”). (Ex. 1001)
`
`2.
`
`Specifically, I have been requested to evaluate Claims 1-12 of the
`
`’993 Patent. As detailed in this report, it is my opinion that each of the asserted
`
`claims are anticipated or rendered obvious by prior art references that predate the
`
`’993 Patent. If requested by the Patent Trial and Appeal Board (“PTAB”), I will
`
`testify at trial about my opinions expressed herein.
`
`3.
`
`I reserve the right to modify or supplement my opinions, as well as
`
`the basis for my opinions, based on the nature and content of the documentation,
`
`data, proof and other evidence or testimony that other experts may present or based
`
`on any additional discovery or other information provided to me or found by me in
`
`this matter.
`
`A. Education and Work Experience
`
`4.
`
`I am currently the President of Telecom Architects, Inc., a technical
`
`consulting company that I own. I have over 35 years of experience in the design and
`
`implementation of voice and data telecommunication networks and also the
`
`development of the equipment used in these networks and by their users.
`
`Page 5 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`5.
`
`Along with the experience listed in my C.V., I note the following
`
`experience that is uniquely situated to the technology at issue in this matter. I have
`
`extensive experience in the design and development of the software and hardware
`
`for communication protocols and, specifically data communications systems,
`
`including wireless cellular communication systems and networks according to the
`
`3rd Generation Partnership Project (3GPP), the Internet Protocol (IP) suite of
`
`protocols (also known as TCP/IP) and the function and interaction of such protocols
`
`at different layers of a network topology, and related technologies.
`
`6.
`
`I received a B.S. in Computer Science from SMU in 1983. More
`
`details on my education and work experience are contained in my C.V. in Appendix
`
`1.
`
`7.
`
`The cases that I have previously given testimony within the past
`
`four years are also listed in my C.V. in Appendix 1.
`
`B.
`
`Scope of Work and Compensation
`
`8.
`
`I have reviewed the ’993 Patent, its prosecution history, and
`
`references cited therein.
`
`9.
`
`I have been asked to compare the subject matter recited for Claims
`
`1-12 of the ’993 Patent to publications, systems, and patents that predate the filing
`
`date of the ’993 Patent. I have been asked to express my opinion on the differences,
`
`if any, between the subject matter recited in each of those claims and each of the
`
`Page 6 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`foregoing items. To the extent I conclude there are any differences, I have also been
`
`asked to express my opinion on whether the subject matter recited in each of those
`
`claims would have been obvious to a person of ordinary skill in the art of in light of
`
`the technical information available to such a person at the time of the earliest
`
`priority of the ’993 Patent.
`
`10. My detailed analysis is included in claim charts attached as
`
`Appendix 2.
`
`11.
`
`I was requested to specifically address the following topics:
`
`a.
`
`the level of skill of persons who would have worked in the field
`
`around the time of invention of the ’993 Patent; and
`
`b. whether the claims are unpatentable as anticipated or obvious in
`
`view of the prior art to one of skill in the art.
`
`12.
`
`I am being paid an hourly rate of $550 per hour, plus reasonable
`
`expenses. I have received no additional compensation of any kind for my work on
`
`this case. No part of my compensation is dependent on the conclusions that I reach
`
`or the outcome of this case.
`
`C. Documents Relied Upon
`
`13.
`
`In performing my analysis, I have relied on my own personal
`
`knowledge and extensive experience, including my extensive experience in the
`
`design, development, network design, and operation of relevant systems as well as
`
`my review of the ’993 Patent and its prosecution history.
`
`Page 7 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`14.
`
`In citing portions of the specification, I will refer to the ’993 Patent
`
`unless otherwise noted. Additionally, where I provide a citation to column and line
`
`number in the specification of the ’993 Patent, it should be understood that this
`
`citation is an example of where support can be found in the specification and is not
`
`intended to suggest that the cited portion is the entirety of support in the
`
`specification. If asked to explain my conclusions about the scope, meaning or
`
`disclosure of the ’993 Patent, I intend to use any and all parts of the patent,
`
`including the drawings and prosecution history
`
`15. A list of all other documents that I relied upon in preparing this
`
`report is listed in the list of Exhibits.
`
`III.
`
`SUMMARY OF OPINIONS
`
`16. Based on my experience, knowledge of the art at the date of filing
`
`of the patent application for the ’993 Patent, and my analysis of references, it is my
`
`opinion that, to one of ordinary skill in the art, Claims 1-12 of the ’993 Patent are
`
`unpatentable as anticipated or rendered obvious by one or more of the prior art
`
`references cited in this report as identified in the claim charts in Appendix 2.
`
`17.
`
`I have reviewed the inter partes review Petition prepared by Conley
`
`Rose, P.C. on behalf of the Petitioners and believe it accurately describes the ’993
`
`Patent and cited references. Further, I have reviewed and understand the claim
`
`construction and claim charts contained in the Petition and believe that a person of
`
`Page 8 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`ordinary skill in the art would agree with the construction of claim terms, as well as,
`
`the teaching and disclosures of the cited references.
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`IV. RELEVANT LEGAL PRINCIPLES AND GUIDELINES
`
`18.
`
`I am not an attorney and I will offer no opinions on the law. I am,
`
`however, informed on several principles concerning patentability, which I have
`
`used in arriving at my stated conclusions in this Report.
`
`19.
`
`I have written my Report with the understanding that the standard
`
`for instituting an inter partes review is on showing there is a reasonable likelihood
`
`that at least one or more of the challenged claims is unpatentable.
`
`A. Anticipation
`
`20.
`
`It is my understanding that claims of a patent are anticipated (and
`
`therefore unpatentable) by a prior art reference if each and every element of the
`
`claim, as properly construed, is found either explicitly or inherently in a single prior
`
`art reference.
`
`21.
`
`I understand that, although anticipation cannot be established
`
`through a combination of references, additional references may be used to interpret
`
`the allegedly anticipating reference by, for example, indicating what the allegedly
`
`anticipating reference would have meant to one of ordinary skill in the art.
`
`However, for the claim to be anticipated, I understand that these other references
`
`must make clear that the missing descriptive matter in the patent claim is
`
`Page 9 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`necessarily or inherently present in the allegedly anticipating reference, and that it
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`would be so recognized by one of ordinary skill in the art.
`
`B. Obviousness
`
`22.
`
`I further understand that a claimed invention may be invalid even if
`
`each and every limitation is not disclosed in a single reference or described by a
`
`single use or sale.
`
`23.
`
`I have been informed that, under the doctrine of obviousness, a
`
`claim may be invalid if the differences between the invention and the prior art are
`
`such 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.
`
`24. Obviousness, as I understand, is based on the scope and content of
`
`the prior art, the differences between the prior art and the claim, the level of
`
`ordinary skill in the art, and secondary indicia of obviousness and non-obviousness,
`
`to the extent they exist.
`
`25.
`
`I understand that a claim can be found invalid as obvious if the
`
`design incentives or market forces provided a reason to make an adaptation, and the
`
`invention resulted from the application of the prior knowledge in a predictable
`
`manner. I understand that a claim can be found invalid as obvious if the claim
`
`would have been obvious because the substitution of one known element for
`
`Page 10 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`another would have yielded predictable results to one of ordinary skill in the art at
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`the time of the invention.
`
`26.
`
`I understand that a claim can be found invalid as obvious if the
`
`claim would have been obvious because the technique for improving a particular
`
`class of devices was part of the ordinary capabilities of a person of ordinary skill in
`
`the art. I understand that a claim can be obvious if the claim would have been
`
`obvious because a particular known technique was recognized as part of the
`
`ordinary capabilities of one skilled in the art.
`
`27.
`
`I understand that a claim can be obvious in light of a single
`
`reference, without the need to combine references, if the elements of the claim that
`
`are not found in the reference can be supplied by the common sense of one of skill
`
`in the art.
`
`C. Date of Invention
`
`28. As further discussed below, I have been instructed to rely upon
`
`certain dates for priority for the ’993 Patent.
`
`V.
`
`OVERVIEW OF THE ’993 PATENT
`
`A. The Field Of Art
`
`29. The ’993 Patent relates
`
`to allocating uplink resources for
`
`acknowledging data transmissions in wireless networks. More specifically, the ’993
`
`Patent proposes allocating resources to send an uplink segment acknowledging
`
`Page 11 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`receipt of transmission control protocol (TCP) data without having to send a request
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`for resources used to send the uplink segment.
`
`B. Applicant’s Admitted Prior Art (“AAPA”)
`
`30. The Background of the ’993 Patent (also referred hereinto as
`
`AAPA) states:
`
`Transport communication protocol (TCP) is a protocol in the well-
`
`known TCP/IP (Internet Protocol) suite of communication protocols
`
`(see [RFC 793] for a full description of the TCP protocol). TCP
`
`provides a connection-orientated, reliable, byte stream service. The
`
`reliability is maintained by the use of acknowledgement messages
`
`(ACKs) that are sent by the receiver back to the transmitter, in
`
`response to a received segment. In this manner, lost or corrupted data
`
`segments may be indicated to the transmitter, and these lost or
`
`corrupted data segments may be re-sent.
`
`
`
`However, in TCP the receiver does not immediately send an
`
`acknowledgment for every received segment. A functionality termed
`
`‘delayed ACK’ is employed (see [RFC 813]). When a data segment is
`
`received, a delay timer is started and an ACK data segment is sent in
`
`response to one of the following conditions: [0017] a) The delay timer
`
`expires, [0018] b) New Data is returned to the original transmitter of
`
`the segment (i.e. in interactive style applications, such as ‘rlogin’) and
`
`this new data can be ‘piggybacked’ with an ACK message, and [0019]
`
`c) More segments are received from the transmitter.
`
`Page 12 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`
`
`In the case of bulk data transfer it is condition-(c) that is the
`
`most likely, as the transmitter is, ideally, continuously sending new
`
`segments.
`
`
`
`Typically only one more segment is required for an ACK to be
`
`sent. The following quote is from [RFC 1122]: ‘When used, a TCP
`
`receiver MUST NOT
`
`excessively delay
`
`acknowledgments.
`
`Specifically, an ACK SHOULD be generated for at least every second
`
`full-sized segment, and MUST be generated within 500 msec. of the
`
`arrival of the first unacknowledged packet.’
`
`
`
`Most current TCP stacks
`
`implement
`
`the delayed ACK
`
`functionality so that an ACK is generated when a single TCP segment
`
`is received . . . i.e. an ‘ACK’ is transmitted for ‘every second full-
`
`sized data segment’ received.
`
`(Ex. 1001, col. 3, ll. 26-61 (emphasis added))
`
`31. The Background of the ’993 Patent describes an example of using
`
`the “delayed ACK functionality” for a bulk TCP data transfer with respect to FIG. 3
`
`below.
`
`Page 13 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`32. AAPA states that the data transfer in step 325 above refers to a
`
`network 310 transmitting at least one TCP segment to a UE 305. (Ex. 1001, col. 4,
`
`ll. 28-33) When this step is complete, the UE 305 should send the network 310 an
`
`ACK to acknowledge receipt of the TCP data. However, the UE 305 needs to send
`
`the network 310 a message requesting uplink (UL) resources in order to transmit the
`
`ACK (step 335), and then wait to receive a message from the network 310
`
`allocating the requested UL resources (step 345). (See Ex. 1001, col. 4, ll. 30-38)
`
`“Thereafter, the UE 305 is able to implement the data transfer in step 355, which
`
`Page 14 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`includes an ‘ACK’ message. Notably, a significant latency 350 exists with this
`
`request for an allocated resource.” (Ex. 1001, col. 4, ll. 39-42 (emphasis added))
`
`C. The ’993 Patent
`
`33. The ’993 Patent aims to address the latency issue described above.
`
`To this end, the ’993 Patent proposes a network “apparatus [that] comprises
`
`counting logic . . . arranged to count a number of transmitted segments, as they are
`
`transferred to the UE.” (Ex. 1001, col. 5, ll. 5-7) The proposed “counting logic
`
`provides a mechanism to count every DL full sized segment separately in each TCP
`
`flow (if there are multiple) and use the counting logic to ensure that when the
`
`second segment is sent UL resources are allocated.” (Ex. 1001, col. 5, ll. 8-12
`
`(emphasis added)) The ’993 Patent describes an example of this process with
`
`respect to FIG. 5 below.
`
`Page 15 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`FIG. 5 commences with a full-sized TCP data segment arriving at a
`
`DL buffer within the network 510. The network determines that an
`
`ACK is likely to be generated by the receiving UE in response to the
`
`transmitted TCP data segment, in step 515. The knowledge is based
`
`on the fact that with a delayed ACK feature there will be an ACK
`
`every other segment. It is therefore possible to easily count DL
`
`segments (for each TCP flow, if necessary) and then when the counter
`
`reaches two allocate UL resources accordingly. The counter is then
`
`reset. Thus, the scheduler is made aware that the data being
`
`transferred is using the TCP protocol following transmission of a
`
`message to the UE, as shown in step 525.
`
`Page 16 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`
`
`Notably, the scheduler arranges for the message to indicate an
`
`allocation of DL resources plus sufficient UL resources to transfer a
`
`stand-alone ACK data segment 530, in step 520. The scheduler 428
`
`(from FIG. 4) continues allocating DL resources to transfer the
`
`segments to the UE 505. Notably, the scheduler comprises counting
`
`logic 429 arranged to count a number of transmitted segments, as they
`
`are transferred to the UE 505. In this manner, the scheduler 428 is
`
`made aware of when the end of each data segment is likely to be fully
`
`transferred to the UE 505.
`
`(Ex. 1001, col. 8, ll. 30-52 (emphasis added))
`
`34. The ’993 Patent suggests the benefit of allocating uplink resources
`
`to the UE 505 at the end of every second segment is that a “stand-alone ‘ACK’ data
`
`segment may be immediately placed in allocated UL resources in 540, so there is no
`
`requirement to transmit a message to request UL resources, in step 550.” (Ex. 1001,
`
`col. 8, ll. 56-61 (emphasis added))
`
`35.
`
`It is my opinion that the invention disclosed by the ’993 Patent is
`
`nothing more than the predictable integration of networks and methods that were
`
`already in existence, and that the invention was common knowledge to persons of
`
`ordinary skill in the art long before the filing of the ’993 Patent. The following
`
`paragraphs describe how all of the components and concepts claimed by the ’993
`
`Patent existed prior to their filing date in the same arrangement or combination as in
`
`the selected claims. Each of the components and concepts using the systems and
`
`Page 17 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`methods claimed by the ’993 Patent were common sense to one of ordinary skill in
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`the art.
`
`D. Priority Date for the ’993 Patent
`
`36. The ’993 Patent issued on November 13, 2012, from U.S. App. No.
`
`13/234,904,
`
`filed on September 16, 2011. According
`
`to
`
`the “Related
`
`Application(s)” section, the ’993 Patent was filed as a continuation of U.S. App.
`
`No. 11/726,397 (“the Parent application”), which claims the benefit of British App.
`
`No. 0616241.6, filed on August 16, 2006. I have been instructed for the purposes of
`
`this report to assume the priority date of the ’993 Patent is August 16, 2006.
`
`E.
`
`Person of Ordinary Skill
`
`37.
`
`It is my opinion that a person of ordinary skill in the field of the
`
`’993 Patent would have at least a Bachelors or Masters level college degree in
`
`Electrical Engineering, Computer Science, Computer Engineering or equivalent
`
`training and experience. This person would also have at least three to five years of
`
`academic or industrial experience in the field of communication systems, such as
`
`wireless cellular communication systems and cellular networks defined by the 3rd
`
`Generation Partnership Project (3GPP). Such a person would be familiar with the
`
`Internet Protocol (IP) suite of protocols (also known as TCP/IP) and understand
`
`how these protocols function and interact in different layers of a network topology.
`
`Page 18 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`F. Challenged Claims
`
`38.
`
`I have been asked to opine on challenged Claims 1-12 of the ’993
`
`Patent for which I have provided detailed analysis in charts attached as Appendix 2.
`
`G. Legal Standard for Claim Construction
`
`39. My understanding is that a primary step in determining the
`
`patentability of a patent’s claims is to properly ascertain the meaning of the claims
`
`to determine the claim scope. I have been informed that in an inter partes review
`
`proceeding, the claims are to be given their broadest reasonable construction in light
`
`of the patent’s specification and prosecution history. I contrast this with the
`
`different standard I understand is used in District Court litigation, where the claims
`
`are to be given their ordinary and customary meaning to a person of ordinary skill
`
`in the art in light of the specification and prosecution history. Accordingly, any
`
`interpretation or construction of the challenged claims in this proceeding, either
`
`implicitly or explicitly, do not necessarily impact what I consider to be the proper
`
`interpretation or construction of these claims for litigation.
`
`40. For any claim terms in which a particular claim construction is not
`
`provided or discussed, the claims terms have been construed as one of skill in the
`
`art applying the broadest reasonable interpretation at the time of invention of the
`
`’993 Patent.
`
`H. Construed Terms
`
`i.
`
`Transfer Communication Protocol (TCP)
`
`Page 19 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`41. The ’993 Patent refers to TCP as “transfer communication
`
`protocol,” but those of ordinary skill in the art usually refer to TCP as “transmission
`
`control protocol.” Nonetheless, “transfer communication protocol” is otherwise
`
`described in the ’993 Patent as being equivalent to “transmission control protocol.”
`
`For example, the ’993 Patent describes “transfer communication protocol” as a
`
`reliable protocol. (Ex. 1001, col. 3, ll. 29-30) “Transmission control protocol” is
`
`well known in the art to provide reliable service. Moreover, the ’993 Patent refers to
`
`“[RFC 793] for a full description of the TCP protocol.” (Ex. 1001, col. 3, ll. 28-29)
`
`In the “Other Publications” section of the ’993 Patent, RFC 793 is a document
`
`entitled “Transmission Control Protocol.” (Ex. 1001, p. 1) Accordingly, for
`
`purposes of the present inter partes review petition, the broadest reasonable
`
`interpretation of “transfer communication protocol” includes “transmission control
`
`protocol.” Although this is the broadest reasonable interpretation, other claim
`
`constructions including narrower ones may apply in contexts outside the present
`
`inter partes review.
`
`ii. Other Claim Terms
`
`42. For the purposes of this inter partes review petition, other claim
`
`terms will be given their broadest reasonable construction as understood by one of
`
`ordinary skill in the art at the time of invention. Although the broadest reasonable
`
`Page 20 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`interpretation is applied here, other claim constructions including narrower ones
`
`may apply in contexts outside the present inter partes review.
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`VI. TECHNICAL BASIS UNDERLYING THE GROUNDS OF
`REJECTIONS SET FORTH IN THE PETITION FOR INTER PARTES
`REVIEW
`
`43.
`
`In the sections that follow, each selected claim is reproduced and its
`
`elements are identified. I then discuss where in each of the references the particular
`
`elements are disclosed. The claims are presented out of numerical order, instead
`
`grouped by grounds of unpatentability.
`
`44. Claims 1-6 of the ’993 Patent are directed to a wireless network,
`
`while Claims 7-12 are directed to a method performed by a network. However, the
`
`method claims (7-12) do not include any materially different limitations from their
`
`corresponding network claims (1-6). Therefore, for the purpose of the present inter
`
`partes review petition, the discussions for all grounds herein are directed to the
`
`network claims but apply equally to the corresponding method claims.
`
`A. Ground 1: Claims 1, 2, 4-8, and 10-12 are obvious over Sipola in view
`of Bergstrom and AAPA
`
`45. As explained in more detail below, I believe that Claims 1, 2, 4-8,
`
`and 10-12 of the ’993 Patent would have been obvious to one of ordinary skill in
`
`the art in light of Sipola, Bergstrom, and AAPA, particularly when the claims are
`
`given their broadest reasonable interpretation consistent with the specification and
`
`prosecution history of the ’993 Patent.
`
`Page 21 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`46. Claim 1 of the ’993 Patent is reproduced below, with annotations
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`for ease of reference:
`
`1. (pre) A wireless network comprising:
`
`(a)
`
`a circuit located in the wireless network,
`
`(b) wherein the circuit buffers segments of transfer communication
`
`protocol (TCP) data for downlink (DL) transmission;
`
`(c)
`
`a transmitter arranged to transmit the buffered segments of TCP
`
`data to a user equipment (UE);
`
`(d)
`
`the circuit is further configured to count a number of
`
`transmitted segments of TCP data;
`
`(e) wherein the circuit is further configured, in response to the
`
`count exceeding a predetermined number,
`
`(f)
`
`to transmit a message that indicates an allocation of uplink
`
`resources to transfer an uplink segment and the allocation of uplink
`
`resources
`
`is
`
`sufficient
`
`to
`
`have
`
`information
`
`indicating
`
`acknowledgment; and
`
`(g) wherein the circuit is further configured to receive, in response
`
`to the uplink resources, the uplink segment which includes the
`
`information indicating acknowledgment of receipt of the transmitted
`
`segments of TCP data.
`
`47. Appendix 2, attached herewith, shows claim charts setting forth a
`
`detailed element-by-element comparison showing that each and every element of
`
`Claims 1 and 7 are disclosed by the prior art combination of Sipola, Bergstrom, and
`
`AAPA. The element-by-element analysis of Claim 1 in comparison to the
`
`Page 22 of 96
`
`ERICSSON EXHIBIT 1002
`
`

`
`combination of Sipola, Bergstrom, and AAPA is further summarized in the
`
`Lanning Declaration
`U.S. Patent No. 8,310,993
`
`following discussion.
`
`i.
`
`Disclosure of Sipola regarding Claim 1
`
`48. Sipola proposes “an improved method for scheduling of plural
`
`packet data flows transmitted via a single tr