`
`Trials@uspto.gov
`Filed: March 28, 2016
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00178
`Patent 8,385,966 B2
`____________
`
`
`
`Before JENNIFER S. BISK, GREGG I. ANDERSON, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`LG Electronics, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims
`1–17 of U.S. Patent No. 8,385,966 B2 (“the ’966 patent”), filed
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`May 5, 2009.1 The Petition is supported by the Declaration of Dr. Robert
`Akl (“Akl Declaration,” Ex. 1002). Cellular Communications Equipment
`LLC (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.,” Paper
`8). We have jurisdiction under 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review
`of claims 1–17. Trial is not instituted on any other ground of
`unpatentability. The Board has not made a final determination of the
`patentability of any claim.
`A. Related Proceedings
`Petitioner advises that Patent Owner has asserted the ’966 patent in
`Cellular Communications Equipment LLC v. LG Electronics, Inc. et al.,
`Civil Action Nos. 6:15-cv-00049, 6:14-cv-00982, and 6:14-cv-00983 (E.D.
`Texas). Pet. 1, Paper 7, 2–3. Another petition challenging this patent was
`previously filed in Kyocera Communications, Inc. v. Cellular
`Communications Equipment LLC, No. IPR2015-01559 (PTAB) (“’1559
`IPR”).2
`B. Technology Background and the ’966 Patent (Ex. 1001)
`The ’966 patent discloses improvements to power control for a
`physical uplink shared channel (PUSCH) and physical uplink control
`channel (PUCCH). Prelim. Resp. 2. It incorporates by reference and quotes
`portions of TS 36.213 (Ex. 1004), which is a specification related to Long
`
`
`1 On the present record, we cannot determine whether or not the ’966 patent
`is entitled to the May 5, 2008, filing date of a provisional application. Ex.
`1001 (60). Petitioner alleges all the references are prior art. Pet. 13–15.
`Patent Owner does not contest presently that the references are prior art.
`2 The ’1559 IPR was terminated January 7, 2016. See ’1559 IPR, Paper 13.
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`Term Evolution (LTE), one of the competing standards for 4th generation
`(4G) cellular radio systems. Ex. 1002 ¶¶ 25, 27–28.
`In LTE, the user equipment (UE) can request a connection setup with
`an evolved Node B (eNB). Ex. 1002 ¶ 33 (citing 4G LTE / LTE-Advanced
`for Mobile Broadband, Ex. 1007, 14.3, 358, Fig. 14.8; see Ex. 1001, Fig.
`1B). TS 36.213 specifies details of that setup, for example, that “[t]he
`setting of the UE Transmit power PPUSCH for the physical uplink shared
`channel (PUSCH) transmission in subframe i is defined by PPUSCH(i) =
`min{PMAX, 10log10(MPUSCH(i)) + PO_PUSCH(j) + α · PL + ΔTF(TF(i)) + f(i)}.”
`Prelim. Resp. 1 (citing Ex. 1004 § 5.1.1.1). A similar (but not identical)
`power control formula is specified for the physical uplink control channel
`(PUCCH) transmissions having transmit power PPUCCH(i). Id. (citing Ex.
`1004 § 5.1.2.1).
`The ’966 patent also discloses technology which is from the TS
`36.300 (Ex. 1008), a technical specification of the 3rd Generation Partnership
`Project (3GPP). Ex. 1001, 1:61–66, 4:1–4, Figs. 1B and 1C. Figures 1B
`and 1C of the ’966 patent are from the TS 36.300 specification. Ex. 1001,
`4:1–4. Figure 1B is reproduced below:
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`Figure 1B, reproduced above, depicts the prior art contention based random
`access procedure, which UEs use to request a connection setup with an eNB.
`Furthermore, as shown in Figure 1B, the contention based random access
`procedure includes four messages: a random-access preamble; a random-
`access response; scheduled transmission or Radio Resource Control (RRC)
`signaling from the terminal; and contention resolution or RRC signaling
`from the eNB. See Ex. 1001, Fig. 1B; Ex. 1002 ¶¶ 34–39 (citing Ex. 1008,
`10.1.5.1, Ex. 1007, 14.3, 359).
` Figure 3 of the ’966 patent is reproduced below:
`
`
`Figure 3 (reproduced above, best available copy) is a process flow diagram
`of a power control algorithm of the ’966 patent. Ex. 1001, 10:28–30.
`Significant steps in the algorithm are summarized as follows:
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`step 302, path loss for communication with eNB;
`step 304, UE computes first power control value;
`step 306, UE sends a first message to the eNB;
`step 308, eNB replies to the UE with a second message;
`step 310, the UE receives the second message and computes a
`second power control value (see equation 4a below);
`step 312, the UE sends data on the PUSCH using the second
`power control value computed in step 310; and
`step 314, a third power control value may be computed sending
`control information on the PUCCH (see equation 4b below).
`
`
`Id. at 10:31–67.
`The problem the ’966 patent purports to solve is “how the power
`control formulas for PUSCH and PUCCH are taken in use during or after the
`Random Access procedure.” Ex. 1001, 4:16–19. “[A]ccording to 3GPP TS
`36.213 v.8.2.0 . . . Message 3 (see FIG. 1B) is transmitted using the PUSCH
`PC formula taking into account the PC command received from the eNB in
`Message 2 (see FIGS. 1B and 1C).” Id. at 4:20–25.
`The ’966 patent describes “how the UE specific parameters of the
`PUSCH and PUCCH power control formulas are initialized.” Id. at 4:26–
`27. The power control adjustment state for the uplink shared channel
`(PUSCH) is f(i) and the power control adjustment state for the uplink control
`channel (PUCCH) is g(i). Id. at 12:60–64. Specifically, “the UE receives a
`power control command (e.g., ΔPPC) in the preamble response from the
`eNB.” Ex. 1001, 6:58–60. The f(i) and g(i) power control functions are
`initialized for i=0 as follows:
`PO_UE_PUSCH + f(0) = ΔPPC + ΔPrampup [4a]
`P0_UE_PUCCH + g(0) = ΔPPC + ΔPrampup [4b]
`Ex. 1001, 6:60–67, claims 1, 3. Equation 4a appears in claim 1 as
`reproduced below.
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`C. Illustrative Claim
`Of the challenged claims, claims 1, 9, and 10 are independent. Claims
`2–8 depend directly or indirectly from claim 1. Claims 11–17 depend
`directly or indirectly from claim 10. Claim 1 is reproduced below:
`1. A method comprising:
`
`
`using a processor to initialize for i=0 a first power control
`adjustment state g(i) for an uplink control channel and a second
`power control adjustment state f(i) for an uplink shared channel
`to each reflect an open loop power control error;
`
`using the processor to compute an initial transmit power for
`the uplink shared channel using full path loss compensation,
`wherein the initial transmit power depends on a preamble power
`of a first message sent on an access channel and the second power
`control adjustment state f(0); and
`
`sending from a transmitter a third message on the uplink
`shared channel at the initial transmit power;
`
`wherein the second power control adjustment state f(i) for i=0
`is initialized as:
`
`
`P0_UE_PUSCH+f(0)=ΔPPC+ΔPrampup;
`
`in which:
`
`
`P0_UE_PUSCH is a power control constant for the uplink shared
`channel that is specific for a user equipment executing the
`method;
`
`ΔPrampup is a ramp-up power for preamble transmissions; and
`
`ΔPPC is a power control command indicated in a second
`message that is received in response to sending the first message.
`
`Ex. 1001, 12:59–13:19.
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`Claims Challenged
`1, 3, 4, 9, 10, 12, and 13
`2 and 11
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–17 of the ’966 patent as unpatentable
`on the following grounds. Pet. 16–56.
`References
`Basis
`Qualcomm3 and TS 36.2134 § 103
`Qualcomm, TS 36.213, and
`§ 103
`TS 36.3005
`Qualcomm, TS 36.213, TS
`36.300, and ’386
`publication6
`
`
`§ 103
`
`5–8 and 14–17
`
`II. ANALYSIS
`
`A. Claim Construction
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the specification in which they appear. See
`37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 105
`(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
`
`
`3 US 8,599,706 B2, to Damnjanovic, filed Oct. 3, 2007, (“Qualcomm,” Ex.
`1003).
`4 3GPP TS 36.213, 3rd Generation Partnership Project; Technical
`Specification Group Radio Access Network; Evolved Universal Terrestrial
`Radio Access (E-UTRA); Physical layer procedures (Release 8), 1–30
`(2008) (“TS 36.213,” Ex. 1004).
`5 3GPP TS 136 300, Evolved Universal Terrestrial Radio Access (E-UTRA)
`and Evolved Universal Terrestrial Radio Access (E-UTRAN); Overall
`description; Stage 2, 1–130 (2008) (Version 8.4.0 Release 8) (“TS 36.300,”
`Ex. 1008).
`6 US 2010/0093386 A1, to Damnjanovic, published April 15, 2010 (“’386
`publication,” Ex. 1005).
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`claim must be given their plain meaning, unless such meaning is inconsistent
`with the specification and prosecution history”) (internal citation omitted);
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any
`special definition for a claim term must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In the absence of such a special definition or
`other consideration, “limitations are not to be read into the claims from the
`specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner identifies 17 terms for construction. Pet. 7–13. Patent
`Owner does not believe construction of any claim term or phrase is
`necessary at this point in the proceedings. Prelim. Resp. 4.
`For purposes of this Decision and on this record, only the following
`terms require explicit construction. Although not so identified by Petitioner,
`for the sake of completeness, we include “second message” as a term
`requiring construction.
`1. “initialize” or “initializing” (claims 1, 9, and 10)
`Petitioner proposes that “initialize” as used in the claims of the ’966
`patent should be interpreted to mean calculate an initial state, i.e., a state at
`time=0. Pet. 8 (citing Ex. 1002 ¶ 44).
`For purposes of this Decision, we agree with the proposed
`construction, which is supported by the claim language and the specification.
`For example, claim 1 recites “using a processor to initialize… a first power
`control adjustment state.” The term “initialize” or “initializing” in the ’966
`patent describes how the “UE then initiates” the PC formula for PUSCH and
`PUCCH refers to calculating initial states. Ex. 1001, 6:60–67. We
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`specifically note that the specification and claims describe initializing power
`control states according to provided equations:
`P0_UE_PUSCH + f(0) =ΔPPC +ΔPrampup [4a]
`P0_UE_PUCCH + g(0) =ΔPPC +ΔPrampup [4b]
`Ex. 1001, 6:60–67, 13:9, 13:39.
`2. “open loop power control error” (claims 1, 9, and 10)
`Petitioner proposes that “open loop power control error” should be
`interpreted to mean a power control error that is the difference between a
`target power and an observed power. Pet. 8–9 (citing Ex. 1002 ¶ 46).
`The specification defines the phrase “open loop power control error”
`as the “sum of the UE specific power control constants (P0_UE_PUSCH or
`P0_UE_PUCCH) and the power control initial states (f(0) or g(0)) . . . , taking into
`account the preamble power ramp-up.” Ex. 1001, 7:1–5. The cited portion
`of the specification specifically refers to equations 4[a] and 4[b]. Id. at
`6:65–7:5. Rewriting equation [4a] results in the “open loop power control
`error” being ΔPPC = P0_UE_PUSCH +f(0) - ΔPrampup. See Ex. 1002 ¶ 46. Further,
`the specification states that “ΔPPC is here assumed to be the difference
`between the target preamble power and the power that eNB actually
`observes.” Ex. 1001, 7:5–7.
`For purposes of this Decision, we, therefore, preliminarily construe
`“open loop power control error” to mean the difference between the target
`preamble power and the power that eNB actually observes.
`3. “full path loss compensation” (claims 1, 9, and 10)
`Petitioner proposes that “full path loss compensation” should be
`interpreted to mean using the entire estimate path loss. Pet. 9 (citing Ex.
`1002 ¶¶ 47–48).
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`“Path loss is a term of art that means the difference in transmit power
`of a message and the receive power of that message.” Ex. 1002 ¶ 47 (citing
`Ex. 1001, 6:24). The ’966 patent describes “full path loss compensation” as
`“the Message 3 power relative to preamble power.” Ex. 1001, 8:9–11. The
`specification also explains that “α=1 full path loss compensation” is used to
`achieve improved performance when “the UE performs contention based
`random access and when preamble collisions are assumed to be frequent” in
`the calculation for what the UE receives. Id. at 8:7–25. By contrast, the
`specification also describes fractional path loss “where two UEs transmit the
`same preamble sequence” to compensate for Message 3. Id. at 7:54–57.
`For purposes of this Decision, we, therefore, preliminarily construe
`“full loss path loss” to mean “full path loss and not fractional path loss.”
`4. “preamble power” (claims 1, 2, 5, 9–11, and 14)
`Petitioner proposes that “preamble power” be interpreted as the
`transmit power of a preamble that depends upon ΔPrampup. Pet. 9–10 (citing
`Ex. 1001, 6:18–26; 9:65–10:25; 10:49–60, claim 5).
`The specification includes a formula for the preamble power control
`(“PC”) for the UE’s transmission on the random access channel (“RACH”).
`Ex. 1001, 6:18–26. In the contention based random access procedure,
`transmission occurs between the UE and the eNB. See Ex. 1001, Fig. 1B.
`Further, the specification explains “the initial transmit power depends on a
`preamble power of a first message sent on an access channel” (Ex. 1001,
`3:22–24).
`Thus, for purposes of this Decision, we preliminarily construe
`“preamble power” to be the power for transmission of the first message in a
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`contention based random access procedure from the user equipment (UE)
`transmission to the evolved Node B (eNB).
`5. “third message” (claims 1, 2, 5, 9–11, and 14)
`Petitioner proposes that “third message” be interpreted to mean a
`message transmitted by the user equipment after a successful transmission of
`a random access preamble. See Pet. 10 (citing Ex. 1002 ¶ 38).
`Claim 1 recites, in part, “sending from a transmitter a third message
`on the uplink shared channel.” Ex. 1001, 13:4–5. “Message 3”7 or
`“scheduled transmission” is shown in Figure 1B in the context of TS 36.300.
`The specification states:
`[A]nother embodiment of the invention defines the Message 3
`power relative to preamble power, i.e.[,] full path loss
`compensation used. The objective is that transmit TX power of
`Message 3 would not be unnecessary [sic] high.
`
`Ex. 1001, 8:7–17. We determine that Messages 2 and 3 of the TS 36.300
`specification are equivalent to the respectively claimed “second message”
`and “third message.” See Ex. 1001, 4:21–25.
`For purposes of this Decision, we preliminarily construe “third
`message” to mean “a message transmitted by the user equipment to the
`evolved Node B after a random access preamble transmission to, and
`successful random access response from, evolved Node B.”
`6. “initial transmit power” (claims 1, 5, 8–10, 14, and 17)
`Petitioner proposes that “initial transmit power” should be interpreted
`to mean the transmit power of a message that depends upon “preamble
`power of a first message sent on an access channel and the second power
`
`
`7 Shown in Figure 1B as a “3” within a circle.
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`control adjustment state f(0).” Pet. 10 (citing Ex. 1001, claims 1, 9, and 10,
`6:18–26; 9:65–10:25; 10:49–60).
`We base our construction on the claim language of claim 1. Claim 1
`recites “comput[ing] an initial transmit power for the uplink shared channel”
`and “sending from a transmitter a third message on the uplink shared
`channel at the initial transmit power.” For purposes of this Decision, we
`preliminarily construe “initial transmit power” to mean “the power at which
`the third message is sent from the user equipment on the uplink channel to
`the evolved Node B.” Ex. 1001, 12:65–67, 13:4–5.
`7. “ramp-up power” (claims 1, 9, and 10)
`Petitioner proposes that the phrase “ramp-up power” should be
`interpreted to mean “a ramp-up power level for preamble retransmissions.”
`Pet. 10–11 (citing Ex. 1001, 6:25–26, Ex. 1002 ¶ 37).
`The specification describes the term as “the power ramp-up applied
`for preamble retransmissions” and, for purposes of this Decision, we
`preliminarily adopt that meaning. See Ex. 1001, 6:25–26.
`8. “power control command” (claims 1, 9, and 10)
`Petitioner proposes that “power control command” should be
`interpreted to mean “a signal, contained in a message, used to establish or
`determine the power used to transmit a subsequent message.” Pet. 11 (citing
`Ex. 1001, 2:65–3:6). The precise language from the cited portion of the
`specification is “Message 2 contains a power control command for
`transmission of Message 3.” Ex. 1001, 2:65– 67. Petitioner notes that the
`’966 patent uses the term ΔPC_Msg3 to denote “power control command” for
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`“the preamble response (e.g., Message [2]).”8 Pet. 11 (citing Ex. 1001,
`8:32–34).
`The specification also explains that “the UE receives the second
`message and computes a second power control value (P PUSCH(0)).” Ex.
`1001, 10:49–50. Thus, for purposes of this Decision we preliminarily
`construe “power control command” to be “control information contained in
`the second message (Message 2) used to transmit the third message
`(Message 3).”
`9. “P0_UE_PUSCH” (claims 1, 4, 9, 10, and 13)
`Petitioner proposes that “P0_UE_PUSCH” should be interpreted to mean “a
`power control constant for the uplink shared channel that is specific for a
`user equipment” that can be initialized to zero, e.g., at i=0. Pet. 11 (citing
`Ex. 1001, 7:16–21, claims 4 and 13).
`Claim 1 states “P0_UE_PUSCH is a power control constant for the uplink
`shared channel that is specific for a user equipment executing the method.”
`Ex. 1001, 13:12–14. For purposes of this Decision, we preliminarily adopt
`the language from the claim as our construction of P0_UE_PUSCH.
`10. “fractional power control” (claims 2, 6, 11 and 15)
`Petitioner proposes that “fractional power control” should be
`interpreted to mean “power control that uses a fraction of the estimated path
`loss. Alpha in Equation [1] and Claims 6 and 15 represents a fraction of the
`estimated path loss in controlling the transmit power for messages sent after
`Message 3.” Pet. 11 (citing Ex. 1001, 4:31–33; Ex. 1002 ¶ 48).
`The specification describes “fractional PC” (power control, Ex. 1001,
`
`
`8 Petitioner references Message 3 but the cited portion of the ’966 patent
`refers to message 2.
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`1:36) in the context of path loss compensation for Message 3. See Ex. 1001,
`7:60–63 (“fractional PC could result in Message 3 of the UE with the
`smaller PL being received at the eNB with a stronger signal strength than the
`Message 3 of the UE With the larger PL”). As discussed above, “path loss”
`is the “difference in transmit power of a message and the receive power of
`that message.” See Ex. 1002 ¶ 47 (citing Ex. 1001 6:24). We construe
`“fractional power control” to be proportional variation of power control
`based on path loss.”
`11. “P0_UE_PUCCH” (claims 3, 4, 12, and 13)
`Petitioner proposes that “P0_UE_PUCCH” should be interpreted to mean
`“‘a power control constant for the uplink control channel that is specific for
`a user equipment’ that can be initialized to zero, e.g., at i=0.” Pet. 12 (citing
`Ex. 1001, 7:16–21, claims 4 and 13; Ex. 1002 ¶ 44).
`Claim 3 states “P0_UE_PUCCH is a power control constant for the uplink
`control channel power that is specific for a user equipment executing the
`method.” Ex. 1001, 13:40–42. For purposes of this Decision, we
`preliminarly adopt the language from the claim as our construction of
`P0_UE_PUCCH.
`12. “random access request message” (claims 2 and 11)
`Petitioner proposes that “random access request message” should be
`interpreted to mean “a message communicated on a random access channel
`to request communication with a network node, such as a random access
`preamble.” Pet. 12 (citing Ex. 1002 ¶ 91).
`Other than the claims, e.g., claim 2, the ’966 patent has no mention of
`“random access request message.” For purposes of this Decision, we
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`preliminarily adopt Petitioner’s proposed construction as based on how the
`term would be understood by the person of ordinary skill in the art.
`13. “ΔTFTF(i)” (claims 5 and 14)
`Petitioner proposes that “ΔTFTF(i)” should be interpreted to mean a
`value “calculated from received signaling” that can be zero. Pet. 12 (citing
`Ex. 1001, claims 5 and 14, 4:54–61; Ex. 1004, 5.1.1.1, 8; Ex. 1002 ¶ 52).
`The specification describes TF(i) as “the PUSCH transport format
`valid for subframe [(i)].” Ex. 1001, 4:56–57. Thus, for purposes of this
`Decision, we preliminarily construe “ΔTFTF(i)” to mean “a value calculated
`from the received signal relating to the PUSCH transport format valid for
`subframe (i).”
`14. “ΔPC_Msg3” (claims 5 and 14)
`Petitioner proposes that “ΔPC_Msg3” should be interpreted to mean
`“indicated by a power control command received at the receiver.” Pet. 12–
`13 (citing Ex. 1001, claims 5 and 14). This construction is consistent with
`what is recited in claim 5. Ex. 1001, 13:60–61. For purposes of this
`Decision, we preliminarily adopt Petitioner’s proposed construction.
`15. “MPUSCH(i)” (claims 5, 6, 14, and 15)
`Petitioner proposes that “MPUSCH(i)” should be interpreted to mean “an
`adjustment of uplink power determined from an uplink resource allocation.”
`Pet. 13 (citing Ex. 1001, claims 5 and 14; Ex. 1002 ¶ 109). Petitioner further
`contends “[t]he uplink resource allocation is determined by an eNB and sent
`by the eNB in a second message in response to receiving a first message.”
`Id. (citing Ex. 1001, claims 5 and 14; Ex. 1002 ¶ 110).
`Claim 5 states that “MPUSCH(i) is determined from an uplink resource
`allocation of a second message received in response to sending the first
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`message.” Ex. 1001, 13:56–58. The specification states “MPUSCH(i) is the
`size of the PUSCH resource assignment expressed in number of resource
`blocks valid for subframe i.” Id. at 4:37–39. For purposes of this Decision,
`we preliminarily construe “MPUSCH(i)” to mean “the size of the uplink
`(PUSCH) resource assignment allocation of a second message from the eNB
`received in response to sending the first message to the eNB.”
`16. “fractional path loss computation” (claims 7 and 16)
`Petitioner proposes that “fractional path loss computation” should be
`interpreted to mean “a path loss computation based upon a fraction of the
`estimated path loss.” Pet. 13. Petitioner cites to α in Equation [1] and
`claims 6 and 15 as representing the fractional component. Id. (citing Ex.
`1001, Fig. 4, 410, 4:31–33; 11:39–44; Ex. 1002 ¶ 48).
`The term “fractional path loss compensation” does not appear in the
`specification and appears only in the claims. Petitioner’s proposal is
`consistent with the path loss discussions above, for example in our
`construction of “fractional power control.” We also credit the Akl
`Declaration, as being consistent with the specification. For purposes of this
`Decision, we therefore preliminarily adopt Petitioner’s proposed
`construction of “fractional path loss compensation.”
`17. “second message” (claims 1, 2, 5, 9–11, and 14)
`Petitioner does not include “second message” as a term for
`interpretation. However, inasmuch as we have construed “third message,”
`the sequence in the random access procedure includes the previous
`communication between the user equipment and eNB, i.e., the “second
`message.” See Fig. 1B above.
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`Claim 1 recites, in part, “ΔPPC is a power control command indicated
`in a second message that is received in response to sending the first
`message.” Ex. 1001, 13:17–19. We determined above that Messages 2 and
`3 of the TS 36.300 specification are the same as respectively the claimed
`“second message” and “third message.” See Ex. 1001, 4:21–25.
`For purposes of this Decision, we preliminarily construe “second
`message” to mean “a random access response from evolved Node B which
`includes a power control command.”
`B. Obviousness Over Qualcomm and TS 36.213
`Petitioner alleges claims 1, 3, 4, 9, 10, 12, and 13 would have been
`obvious to the person of ordinary skill in the art over Qualcomm and TS
`36.213.9 Pet. 2, 16–32. Petitioner cites the Akl Declaration in support of its
`positions. See Ex. 1002 ¶¶ 40–89.
`1. Qualcomm
`Qualcomm discloses techniques “for transmitting random access
`signaling for system access . . . .” Ex. 1003, Abstract. Qualcomm is
`intended for use in various wireless communication systems, including
`3GPP LTE systems. Id. at 2:55–3:14. Qualcomm discloses determining
`“the transmit power of the first uplink message sent after successful
`transmission of the random access preamble.” Id. at 10:1–3. Qualcomm
`discloses messages are sent by the user equipment to initiate a random
`access procedure. See id. at 8:37–39. The formula Qualcomm discloses to
`calculate the transmit power for the first uplink message is as follows:
`PUSCH_power=
`
`
`9 Petitioner inadvertently includes TS 36.300 in this ground at page 16 of the
`Petition.
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`RACH[10]_power + PC_correction +
`PUSCH_RACH_power_offset
`
`Where
`RACH_power is the transmit power of the
`successful transmission of the random access preamble
`on the RACH,
`PUSCH_power is the transmit power of the
`message sent on the PUSCH,
`PC_correction is the PC correction received in the
`random access response, and
`PUSCH_RACH_power_offset is a power offset
`between the PUSCH and RACH.
`
`
`Id. at 10:6–19 (“Eq (4)”).
`2. TS 36.213
`TS 36.213 is part of the LTE specification that describes the physical
`layer procedures, including physical uplink shared channel (PUSCH). Ex.
`1004, 5.1.1, 8.11 As part of these procedures, the formulas used to calculate
`transmit power for messages sent on the physical uplink shared channel and
`physical uplink control channel are described. Id. at 5.1.1.1, 9.
`3. Claims 1, 9, and 10
`
`Pages 16 through 28 of the Petition provide the grounds for the
`assertion that independent claims 1, 9, and 10 are unpatentable over
`Qualcomm and TS 36.213. Our analysis focuses on method claim 1 (Ex.
`1001, 12:59) in the first instance. Claim 9 is substantially the same but
`written as a “computer readable memory” (Ex. 1001, 14:21). Claim 10 is
`also very similar, claiming an “apparatus” (Ex. 1001, 14:48). Based on our
`
`
`10 Random access channel. Ex. 1001, 1:44.
`11 For ease of reference, we cite specific passages from Exhibit 1004 as
`“[section number], [page number].
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`review of the evidence and argument Petitioner has presented in connection
`with claim 1, we determine that Petitioner has shown a reasonable likelihood
`that either Qualcomm alone or in combination with TS 36.213 disclose the
`claimed steps of claim 1 as well as the limitations of claims 9 and 10.
`Petitioner alleges Qualcomm teaches the claimed “initial transmit
`power” as the transmit power that is used to transmit Message 3. Pet. 16
`(citing Ex. 1002 ¶ 65). Furthermore, Petitioner contends Qualcomm teaches
`calculating a transmit power of Message 3 that includes initializing power
`control adjustment states by disclosing a formula used to calculate the initial
`transmit power of Message 3. Id. (citing Ex. 1003, 10:1–19).
`The primary dispute raised by the parties at this stage of the
`proceeding is whether Qualcomm discloses the initial transmit power for the
`second power control adjustment state, specifically the formula for
`initialization of the transmit power, f(i) for i=0. Petitioner contends
`Qualcomm’s formula for calculating the transmit power for the first uplink
`message is the equation claimed. As referenced above, Qualcomm’s
`disclosed formula is:
`PUSCH_power=
`RACH_power + PC_correction +
`PUSCH_RACH_power_offset
`
`Where
`RACH_power is the transmit power of the
`successful transmission of the random access preamble
`on the RACH,
`PUSCH_power is the transmit power of the
`message sent on the PUSCH,
`PC_correction is the PC correction received in the
`random access response, and
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`PUSCH_RACH_power_offset is a power offset
`between the PUSCH and RACH.
`Pet. 17 (citing Ex. 1003, 10:6–19 (“Eq (4)”).
`Patent Owner responds that the Qualcomm formula above “merely
`discloses setting ‘the transmit power of the first uplink message sent after
`successful transmission of the random access preamble . . . as follows:
`PUSCH_power = RACH_power + PC_correction +
`PUSCH_RACH_power_offset.’” Prelim. Resp. 10 (also citing Ex. 1003,
`10:1–8). Patent Owner contends the Qualcomm formula does not disclose
`the claimed formula, P0_UE_PUSCH+f(0)=ΔPPC+ΔPrampup. Id. at 12–15.
`Petitioner’s argument that the Qualcomm formula meets the limitation
`is premised on first letting P0_UE_PUSCH equal 0. Pet. 18 (citing Ex. 1001,
`7:16–18, Ex. 1002 ¶ 72). As a result, Petitioner argues f(0) is calculated as
`equal to ΔPPC +ΔPrampup. Id. (citing Ex. 1001, 7:19–20, Ex. 1002 ¶ 72).
`Thus, according to Petitioner, the initial transmit power or f(0) depends on
`ΔPPC +ΔPrampup. Id.
`Patent Owner argues that setting P0_UE_PUSCH to 0 relies on “disclosure
`from the challenged ’966 patent rather than disclosure from Qualcomm or
`TS 36.213.” Prelim. Resp. 12. Although we agree that using the disclosure
`of the ’966 patent to show a claimed limitation would be improper use of
`hindsight, we do not agree that is what Petitioner is doing.
`We determine it is appropriate to analyze claim 1 and its initialization
`formula with P0_UE_PUSCH set to 0. Both the specification cited above, as well
`as claim 4 of the ’966 patent, disclose the initial transmit power formula
`includes times when P0_UE_PUSCH is set to 0. As such, even though the
`Qualcomm formula may not disclose the formula of claim 1 under all
`conditions, if it does so when the term is 0, the limitation is met. See
`
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`Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir.
`2003) (“a prior art product that sometimes, but not always, embodies a
`claimed method nonetheless teaches that aspect of the invention”).
`Once P0_UE_PUSCH is set to 0, Petitioner argues the claimed initial
`transmit power formula is reduced to f(0)=ΔPPC+ΔPrampup. Pet. 18.
`Petitioner contends the calculation of PUSCH_Power, the transmit power for
`the uplink message, i.e., Message 3, in Qualcomm includes summing a
`power control correction with a preamble rampup value, just as claimed. Id.
`(citing Ex. 1003, 10:5–13, Ex. 1002 ¶ 70). Qualcomm discloses “Eq (1),” as
`cited by Petitioner, for calculating the “transmit power for the m-th
`transmission of the random