UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SONY MOBILE COMMUNICATIONS (USA) INC.
`
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00384
`
`U.S. Patent No. 8,385,966
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ...................................................................................... .. i
`
`LIST OF EXHIBITS ............................................................................................. .. ii
`
`I.
`
`INTRODUCTION ....................................................................................... ..1
`
`B. Related Matters ......................................................................................... ..l
`
`D. Service Information .................................................................................. ..2
`
`III.
`
`PAYMENT OF FEES ................................................................................. ..2
`
`
`TABLE OF CONTENTS ........................................................................................ i
`LIST OF EXHIBITS ............................................................................................... ii
`I.
`INTRODUCTION ......................................................................................... 1
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ................. 1
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ............... ..1
`A. Real Party-In-Interest ................................................................................. 1
`A. Real Party-In-Interest ............................................................................... ..l
`B. Related Matters ........................................................................................... 1
`C. Lead and Back-Up Counsel ........................................................................ 2
`C. Lead and Back-Up Counsel ...................................................................... ..2
`D. Service Information .................................................................................... 2
`III. PAYMENT OF FEES ................................................................................... 2
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................ 2
`IV. REQUIREMENTS FOR INTER PARTES REVIEW.............................. ..2
`A. Grounds for Standing ................................................................................. 2
`A. Grounds for Standing ............................................................................... ..2
`B. Identification of Challenge ......................................................................... 3
`B. Identification of Challenge ....................................................................... ..3
`FACTUAL BACKGROUND ....................................................................... 7
`A. Summary of the ‘966 Patent ....................................................................... 7
`A. Summary of the ‘966 Patent ..................................................................... ..7
`B. Prosecution History of the ‘966 Patent ..................................................... 11
`B. Prosecution History of the ‘966 Patent ................................................... .. 11
`VI. BROADEST REASONABLE CONSTRUCTION ................................... 13
`VII. LEVEL OF ORDINARY SKILL IN THE ART ...................................... 15
`VIII. GROUNDS OF UNPATENTABILITY ..................................................... 16
`A. Ground 1: Claims 1, 2, and 9-11 are rendered obvious by TS 36.213 in
`A. Ground 1: Claims 1, 2, and 9-11 are rendered obvious by TS 36.213 in
`view of Damnjanovic under 35 U.S.C. § 103(a) ...................................... 16
`view of Damnjanovic under 35 U.S.C. § lO3(a) .................................... ..l6
`B. Ground 2: Claims 3, 4, 12, and 13 are rendered obvious by TS 36.213 in
`B. Ground 2: Claims 3, 4, 12, and 13 are rendered obvious by TS 36.213 in
`view of Damnjanovic and Shin under 35 U.S.C. § 103(a) ....................... 39
`view of Damnjanovic and Shin under 35 U.S.C. § lO3(a) ..................... ..39
`IX. CONCLUSION ............................................................................................ 47
`
`
`V.
`
`V.
`
`FACTUAL BACKGROUND ..................................................................... ..7
`
`VI. BROADEST REASONABLE CONSTRUCTION ................................. ..13
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART .................................... ..15
`
`VIII. GROUNDS OF UNPATENTABILITY ................................................... ..16
`
`IX. CONCLUSION .......................................................................................... ..47
`
`i
`
`
`
`
`
`

`
`
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`1008
`1009
`
`LIST OF EXHIBITS
`
`
`U.S. Patent No. 8,385,966 to Lindholm et al. (“the ‘966 patent”)
`U.S. Provisional Patent Application No. 61/126,617
`Excerpts from the Prosecution History of Application No. 12/387,661,
`which matured into the ‘966 patent
`3GPP TS 36.213 v8.2.0 (2008-03); Technical Specification; 3rd
`Generation Partnership Project; Technical Specification Group Radio
`Access Network; Evolved Universal Terrestrial Radio Access (E-
`UTRA); Physical layer procedures (Release 8) (“TS 36.213”)
`WIPO International Publication No. WO 2008/042967 A2 to
`Damnjanovic et al. (“Damnjanovic”)
`WIPO International Publication No. WO 2008/042187 A2 to Shin et
`al. (“Shin”)
`Declaration of Professor Bruce McNair (“McNair Decl.”)
`Declaration of Dr. Raziq Yaqub (“Yaqub Decl.”)
`Petition for Inter Partes Review from IPR2015-01559 (Kyocera
`Communications, Inc. v. Cellular Communications Equipment LLC)
`
`
`
`
`
`ii
`
`

`
`I.
`
`INTRODUCTION
`
`Petitioner Sony Mobile Communications (USA) Inc. (“Petitioner”)
`
`respectfully requests inter partes review of claims 1-4 and 9-13 of U.S. Patent No.
`
`8,385,966 (“the ‘966 patent,” Ex. 1001) in accordance with 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`Sony Mobile Communications (USA) Inc., Sony Mobile Communications
`
`Inc., and Sony Corporation are the real parties-in-interest.
`
`B. Related Matters
`
`The ‘966 patent is asserted in the following co-pending litigation, each in the
`
`District Court for the Eastern District of Texas.
`
`Cellular Communications Equipment LLC
`v. LG Electronics, Inc. et al.
`Cellular Communications Equipment LLC
`v. Sony Mobile Communications, Inc. et al.
`Cellular Communications Equipment LLC
`v. Kyocera Corporation et al.
`
`6-14-cv-00982
`
`6-14-cv-00983
`
`6-15-cv-00049
`
`The ‘966 patent is also subject to a co-pending Petition for Inter Partes
`
`
`
`Review by Kyocera Communications, Inc. (IPR2015-01559; the “Kyocera IPR”;
`
`petition attached herewith as Ex. 1009).
`
`
`
`Petitioner has also filed a concurrent Petition for Inter Partes Review of
`
`claims 1, 5-8, 10, and 14-17 (IPR2016-00385) based on Patent Owner’s asserted
`
`
`
`
`
`1
`
`

`
`claim construction (see IPR2016-00385, Section VI) and recommends assigning
`
`both Petitions to the same panel.
`
`C. Lead and Back-Up Counsel
`
`Lead counsel:
`
`Scott A. McKeown (Reg. No. 42,866)
`
`Back-up counsel: Greg Gardella (Reg. No. 46,045)
`
`
`
`
`
`
`
`Bradley D. Lytle (Reg. No. 40,073)
`
`D. Service Information
`
`Scott A. McKeown, Greg Gardella, or Bradley D. Lytle
`Address:
`Oblon
`
`
`1940 Duke Street
`
`
`Alexandria, VA 22314
`
`
`CPDocketMcKeown@oblon.com
`Email:
`CPDocketGardella@oblon.com
`
`
`CPDocketLytle@oblon.com
`
`
`Telephone: (703) 413-6297
`Fax:
`
`(703) 413-2220
`
`
`
`
`
`
`
`
`
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the fee required by
`
`37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
`
`No. 15-0030. Any additional fees that might be due are also authorized.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘966
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`
`
`
`
`2
`
`

`
`estopped from requesting inter partes review challenging the claims of the ‘966
`
`patent on the grounds identified herein.
`
`B. Identification of Challenge
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-4 and 9-13 of the ‘966 patent, and that the Board cancel
`
`the same as unpatentable. The ‘966 patent matured from U.S. Patent Application
`
`No. 12/387,661, filed May 5, 2009, and claims priority to U.S. Provisional
`
`Application No. 61/126,617 (Ex. 1002), filed May 5, 2008.
`
`1. The Specific Art on Which the Challenge is Based
`
`Petitioner relies upon the following printed publications:
`
`•
`
`Ex. 1004 – 3GPP TS 36.213 v8.2.0 (2008-03); Technical Specification;
`
`3rd Generation Partnership Project; Technical Specification Group Radio
`
`Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA);
`
`Physical layer procedures (Release 8) (“TS 36.213”) was published on or before
`
`March 18, 2008, and may be found at
`
`http://www.3gpp.org/ftp/specs/archive/36_series/36.213/36213-820.zip. TS 36.213
`
`is a technical specification of the 3rd Generation Partnership Project (3GPP), a
`
`global initiative of telecommunication standard development that regularly meets,
`
`discusses, collaborates, and publishes documents and other information regarding
`
`
`
`
`
`3
`
`

`
`telecommunications standards. TS 36.213 is prior art to the ‘966 patent under 35
`
`U.S.C. § 102(a). See Yaqub Decl. (Ex. 1008: ¶¶ 13-22.)
`
`TS 36.213 was submitted as Exhibit B to the provisional application of the
`
`‘966 patent, along with TS 36.300 v8.4.0 (Exhibit A; “TS 36.300”). (See Ex. 1002:
`
`pp. 24-58; [0007] at p. 5; [0019] at p. 7.) The ‘966 patent cites to TS 36.213, TS
`
`36.300, and TS 36.321 v8.0.0 (“TS 36.321”) throughout its specification to
`
`describe the state of the art prior to the ‘966 patent. (See Ex. 1001: Figs. 1A-1C;
`
`1:61 to 3:6; 4:20 to 6:57.)
`
`As technical specifications of 3GPP, TS 36.213 is part of the same
`
`standardization effort as TS 36.300 (2008-03) and TS 36.321 (2007-12), all three
`
`of which were cited by the Applicant/Patent Owner. (Ex. 1001: p.1 (“Other
`
`Publications”); 1:26-32.) Patent Owner’s reference, citation, and/or incorporation
`
`of known 3GPP documents is an acknowledgement that the 3GPP documents, and
`
`similar documents from the same time frame such as TS 36.213, were accessible to
`
`the public prior to the earlier priority date of the ‘966 patent. Accordingly, for
`
`these reasons and reasons discussed in the Yaqub Decl., TS 36.213 qualifies as a
`
`printed publication and prior art to the ‘966 patent.
`
`•
`
`Ex. 1005 – WIPO International Publication No. WO 2008/042967 A2 to
`
`Damnjanovic et al. (“Damnjanovic”) was published on April 10, 2008.
`
`Damnjanovic is prior art to the ‘966 patent under 35 U.S.C. § 102(a).
`
`
`
`
`
`4
`
`

`
`•
`
`Ex. 1006 – WIPO International Publication No. WO 2008/042187 A2 to
`
`Shin et al. (“Shin”) was published on April 10, 2008. Shin is prior art to the ‘966
`
`patent under 35 U.S.C. § 102(a).
`
`TS 36.213 appears in the specification of the ‘966 patent, as discussed
`
`above, but was not explicitly mentioned or considered in view of any other prior
`
`art during the original prosecution of the ‘966 patent.
`
`Damnjanovic and Shin were not considered during the original prosecution
`
`of the ‘966 patent, nor are they cumulative of any prior art considered by the
`
`original patent examiner.
`
`Damnjanovic and TS 36.213 are both relied upon in grounds for
`
`unpatentability in the co-pending Kyocera IPR. However, Damnjanovic is utilized
`
`as a primary reference by Kyocera. In the instant petition, on the other hand, the
`
`order is reversed and TS 36.213 is used as the primary reference.
`
`The utilization of Damnjanovic as the primary reference (labeled
`
`“Qualcomm” in the Kyocera IPR) and TS 36.213 as the secondary reference may
`
`be deemed deficient. For example, the Kyocera IPR explains that “[t]he value
`
`P0_UE_PUSCH can have an initial value of 0” (Ex. 1009: pp. 18 and 26), and therefore,
`
`the presence of P0_UE_PUSCH is treated as if it drops out of the equation. As it may be
`
`argued that the Kyocera interpretation fails to properly consider the complete
`
`
`
`
`
`5
`
`

`
`equations of the claims, and as the instant Petition takes a competing view, this
`
`Petition is in no way similar or overlapping.
`
`The present Petition sets forth an interpretation that resolves at least the
`
`above-noted deficiency and, moreover, presents the combined teachings of TS
`
`36.213 in view of Damnjanovic, in that specific order, and in a manner not
`
`previously considered by the original Examiner or the PTAB.
`
`2. Statutory Grounds on Which the Challenge is Based
`
`#
`
`1
`
`2
`
`
`
`Claims
`
`35 U.S.C.
`§
`
`Prior Art
`
`1, 2, 9-11
`
`103(a)
`
`TS 36.213 in view of Damnjanovic
`
`3, 4, 12, 13
`
`103(a)
`
`TS 36.213 in view of Damnjanovic and Shin
`
`3. How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(b)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1-4 and
`
`9-13 of the ‘966 patent are unpatentable under the statutory grounds identified
`
`above, that the Petitioner has at least a reasonable likelihood of prevailing on these
`
`grounds, including the identification of where each element of the claim is found in
`
`the prior art, is provided in Section VIII, below. Pursuant to 37 C.F.R. §
`
`42.204(b)(5), the exhibit numbers of the supporting evidence relied upon to
`
`support the challenges and the relevance of the evidence to the challenges raised,
`
`
`
`
`
`6
`
`

`
`including identifying specific portions of the evidence that support the challenges,
`
`are provided in Section VIII, below.
`
`V.
`
`FACTUAL BACKGROUND
`
`A.
`
`Summary of the ‘966 Patent
`
`The ‘966 patent, titled “Method, Apparatus and Computer Program for
`
`Power Control Related to Random Access Procedures,” describes a method of
`
`power control including power control adjustment states. (Ex. 1001: Title;
`
`Abstract.)
`
`The ‘966 patent attempts to build upon existing prior art random access
`
`procedures in LTE (E-UTRA) systems, which were described in at least 3GPP
`
`specifications TS 36.300 v8.4.0 (2008-03) and TS 36.321 v8.0.0 (2007-12). (Ex.
`
`1001: 1:55 to 2:26; Figs. 1-2.) An example of a prior art contention based random
`
`access procedure is shown in Fig. 1B:
`
`
`
`
`
`7
`
`

`
`
`
`In a first message (Message 1), a user equipment (UE) transmits a random access
`
`preamble to an evolved Node B (eNB). In response, a second message (Message 2)
`
`is sent to the UE, allocating uplink resources and including power control
`
`commands for the UE to use in a third message. In the third message (Message 3),
`
`a transmission is made by the UE. (Ex. 1001: 2:27-38, 65-67.)
`
`The random access preambles (sent on the random access channel (RACH))
`
`are transmitted by the UE using a full path-loss compensation power control (PC)
`
`formula in an effort to normalize the level of received preambles at the eNB.
`
`Subsequent uplink transmissions may be made using fractional PC. (Ex. 1001:
`
`2:39-53.)
`
`
`
`
`
`8
`
`

`
`However, the ‘966 patent alleges that a problem with the RACH message
`
`full path-loss compensation PC is that the eNB generally does not know what path-
`
`loss value the UE is using in its full path-loss compensation PC formula, especially
`
`for an initial access with no handover. (Ex. 1001: 2:54-64.) In other words, “[t]he
`
`problem therefore may be stated as how best to define a transition from the full
`
`path loss compensated preamble transmission to the PUSCH (fractional) power
`
`control system.” (Ex. 1001: 3:7-10.)
`
`For example, the ‘966 patent first presents the physical uplink shared
`
`channel (PUSCH) PC formula defined in 3GPP TS 36.213 v8.2.0 (Ex. 1004):
`
`[Eq. 1]
`
`(Ex. 1001: 4:28 to 5:35.) With respect to the PUSCH power control adjustment
`
`state f(i), f(i) may be expressed as either:
`
`
`depending on whether the radio resource control (RRC) signals the UE to
`
` or
`
`
`
`determine the power control adjustment state f(i) as an accumulated value or a
`
`current absolute value. (Ex. 1001: 5:1-35.)
`
`In both cases, f(i) depends on the state of previous sub-frames (i.e.,
`
`depending on “i-1” and “i-KPUSCH”). Thus, for a first transmission on the PUSCH
`
`(Message 3), there may be no “previous” transmission to reference to, and f(0)=0
`
`
`
`
`
`9
`
`

`
`may be implemented. (Ex. 1001: 6:27-35.) A similar situation may exist on the
`
`physical uplink control channel (PUCCH) and a power control adjustment state
`
`g(i). (Ex. 1001: 5:36 to 6:17; 6:42-49.)
`
`Accordingly, the ‘966 patent instead seeks to “initiate the PC formula for
`
`PUSCH and PUCCH, or compensate[] open loop error” with two equations
`
`involving f(0) and g(0):
`
`[Eq. 4a]
`
`[Eq. 4b]
`
`with Δ(cid:1842)(cid:3017)(cid:3004)+Δ(cid:1842)(cid:3045)(cid:3028)(cid:3040)(cid:3043)(cid:3048)(cid:3043) representing an open loop correction; Δ(cid:1842)(cid:3017)(cid:3004) representing a
`eNB; Δ(cid:1842)(cid:3045)(cid:3028)(cid:3040)(cid:3043)(cid:3048)(cid:3043) representing a preamble rampup; and (cid:1842)(cid:3016)_(cid:3022)(cid:3006)_(cid:3017)(cid:3022)(cid:3020)(cid:3004)(cid:3009) and
`(cid:1842)(cid:3016)_(cid:3022)(cid:3006)_(cid:3017)(cid:3022)(cid:3004)(cid:3004)(cid:3009) representing UE specific power control constants. (Ex. 1001: 6:58 to
`
`difference between a target preamble power and a preamble power observed by an
`
`7:45.) The UE then sends a message, Message 3, using the PUSCH PC formula
`
`(Eq. 1 above). (Ex. 1001: 7:46-51.)
`
`The ‘966 patent describes that, in another embodiment, a formula different
`
`from Eq. 1 is used for the Message 3 power:
`
`[Eq. 5]
`
`
`
`
`
`10
`
`

`
`with (cid:1842)(cid:3043)(cid:3045)(cid:3032)(cid:3028)(cid:3040)(cid:3029)(cid:3039)(cid:3032) representing a preamble power of the UE’s transmission on the
`RACH; Δ(cid:2868),(cid:3043)(cid:3045)(cid:3032)(cid:3028)(cid:3040)(cid:3029)(cid:3039)(cid:3032)_(cid:3014)(cid:3046)(cid:3034)(cid:2871) representing a typical power offset between a Message 3
`and a preamble whose power corresponds to a detection threshold; and Δ(cid:3017)(cid:3004)_(cid:3014)(cid:3046)(cid:3034)(cid:2871)
`(similar to “Δ(cid:3017)(cid:3004)” (i.e., ΔP(cid:3017)(cid:3004)). (Ex. 1001: 8:7-62.) Eq. 5 does not explicitly identify
`
`representing a power control command included in a Message 2 preamble response
`
`“power control adjustment states,” the components f(i) and g(i), or the initialization
`
`thereof.
`
`Accordingly, the claims of the ‘966 patent are directed to the concept of
`
`using characteristics of a preamble (Message 1) and preamble response (Message
`
`2) for power control of a transmission (Message 3). However, as shown throughout
`
`this Petition, others in the telecommunications industry had already developed the
`
`same associations between the preamble and UL transmissions allegedly invented
`
`in the ‘966 patent.
`
`See also Ex. 1007 (“McNair Decl.”) ¶¶ 43-51 and 26-42 (additional
`
`background information).
`
`B.
`
`Prosecution History of the ‘966 Patent
`
`U.S. Patent Application No. 12/387,661 (“the ‘966 patent application”),
`
`which matured into the ‘966 patent, was filed on May 5, 2009 with claims 1-20
`
`(amended in a Preliminary Amendment). (Ex. 1003: 1-8.)
`
`
`
`
`
`11
`
`

`
`In an Office Action dated October 3, 2011, the Examiner rejected claims 1,
`
`2, and 10-13 as being anticipated by Kim et al. (U.S. 2003/0119452), claims 3-5
`
`and 14-16 as being unpatentable over Kim et al. and “E-UTRA Uplink Power
`
`Control Proposal and Evaluation”1, and claims 6-9 and 17-20 as being
`
`unpatentable over Kim et al. and “Meeting #52”2. (Ex. 1003: pp. 25-40.)
`
`In a reply received March 5, 2012, Patent Owner argued, inter alia, that the
`
`multimedia broadcast multicast service (MBMS) of Kim et al. and its various
`
`features, as applied by the Examiner, were inapplicable to the power control
`
`method described in the claims. (Ex. 1003: 41-52.)
`
`In an Office Action dated May 18, 2012, the Examiner rejected claims 1, 10,
`
`and 12 as being unpatentable over Motorola (R1-081056) (same as “Meeting #52”
`
`above) and Docomo et al. (R1-070870), and claims 2 and 13 as being unpatentable
`
`over Motorola (R1-081056), Docomo et al. (R1-070870)3, and IPWireless (R1-
`
`060637)4, and indicated that dependent claims 3-9, 11, and 14-20 recited allowable
`
`subject matter. (Ex. 1003: pp. 53-64.)
`
`
`1 See http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_49/Docs/R1-072365.zip.
`
`2 See http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_52/Docs/R1-081056.zip.
`
`3 See http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_48/Docs/R1-070870.zip.
`
`4 See http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_44/Docs/R1-060637.zip.
`
`
`
`
`
`12
`
`

`
`In a reply received August 21, 2012, Patent Owner amended the independent
`
`claims to recite allowable subject matter from dependent claims 3, 11, and 14.
`
`Claim 1, for example, was amended to recite:
`
`
`
`Claims 10 and 12 were amended to recite similar, though not identical, limitations.
`
`The Examiner issued a Notice of Allowability on September 14, 2012. The
`
`Examiner’s statement of reasons for allowance included recitations of the claim
`
`limitations that were found allowable in claims 1, 10, and 12 (from now-canceled
`
`claims 3, 11, and 14) and in claims 4, 6, 15, and 17. (Ex. 1003: 77-85.)
`
`The ‘966 patent issued on February 26, 2013. (Ex. 1001.)
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes
`
`review shall receive the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” See 37 C.F.R. § 42.100(b) );
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`
`
`
`
`13
`
`

`
`The USPTO uses the broadest reasonable interpretation (“BRI”) because, among
`
`other reasons, the patentee has the opportunity to amend its claims in this
`
`proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,764
`
`(Aug. 14, 2012). As the Federal Circuit noted in In re Trans Texas Holding Corp.,
`
`498 F.3d 1290, 1298 (Fed. Cir. 2007), the Office has traditionally applied a
`
`broader standard than a court does when interpreting claim scope. Moreover, the
`
`Office is not bound by any district court claim construction. Trans Texas, 498 F.3d
`
`at 1297-98, 1301.
`
`In view of the above, claim interpretations submitted herein for the purpose
`
`of demonstrating a Reasonable Likelihood of Prevailing are not binding upon
`
`litigants in any litigation, nor do such claim interpretations correspond to the
`
`construction of claims under the legal standards that are mandated to be used by
`
`the courts in litigation. The interpretation of the claims presented either implicitly
`
`or explicitly herein should not be viewed as constituting, in whole or in part,
`
`Petitioner’s own interpretation and/or construction of such claims for the purposes
`
`of any current or future litigation. Instead, such constructions in this proceeding
`
`should be viewed only as constituting an interpretation of the claims under the BRI
`
`standard.
`
`
`
`
`
`14
`
`

`
`All claim terms have been accorded their BRI in light of the patent
`
`specification, including their plain and ordinary meaning, to the extent such a
`
`meaning could be determined by a skilled artisan.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art is evidenced by the prior art. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
`
`not err in adopting the approach that the level of skill in the art was best
`
`determined by references of record). The prior art discussed herein, and in the
`
`declaration of Professor Bruce McNair, demonstrates that a person of ordinary skill
`
`in the art, at the time the ‘966 patent was filed, would have been aware of wireless
`
`signaling protocols and cellular terminal authentication techniques and standards.
`
`An example of such a person of ordinary skill in the art is one having a Bachelor of
`
`Science or Bachelor of Engineering degree in Electrical Engineering or Computer
`
`Engineering from an institution accredited by the Accreditation Board for
`
`Engineering and Technology (ABET) or an equivalent accrediting organization
`
`and five years of work experience in wireless systems or signal processing.
`
`Another example of such a person is one having a Master of Science or Master of
`
`Engineering degree in Electrical or Computer Engineering from an equivalently
`
`accredited institution and two years of similar work experience. (McNair Decl. ¶¶
`
`22-25.)
`
`
`
`
`
`15
`
`

`
`VIII. GROUNDS OF UNPATENTABILITY
`
`Although the ‘966 patent alleges to have invented a method of power control
`
`related to random access procedures, such power control techniques were known
`
`prior to filing of the application which issued as the ‘966 patent. As demonstrated
`
`below, the prior art references render claims 1-4 and 9-13 of the ‘966 patent
`
`unpatentable.
`
`This Petition is supported by the Declaration testimony of Professor Bruce
`
`McNair, which describes the scope and content of the prior art at the time of the
`
`alleged invention of the ‘966 patent. (McNair Decl.)
`
`A. Ground 1: Claims 1, 2, and 9-11 are rendered obvious by TS
`36.213 in view of Damnjanovic under 35 U.S.C. § 103(a)
`
`1.
`
`a.
`
`Claim 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…”
`
`TS 36.213 is a technical specification of the 3GPP (3rd Generation
`
`Partnership Project) and “specifies and establishes the characteristics of the
`
`physicals (sic) layer procedures in the FDD and TDD modes of E-UTRA.” (Ex.
`
`1004: Title; § 1.) TS 36.213 further discloses power control definitions for both a
`
`physical uplink shared channel (PUSCH) and a physical uplink control channel
`
`(PUCCH), for a subframe i, as follows:
`
`
`
`
`
`16
`
`

`
`
`
`
`(Ex. 1004: §§ 5.1.1.1, 5.1.2.1.) For an initial transmit power (for i=0), TS 36.213
`
`discloses that the PUSCH power control adjustment state f(i) and the PUCCH
`
`power control adjustment state g(i) are initialized to zero (i.e., f(0)=g(0)=0). TS
`
`36.213 also discloses the use of random access procedures, including the
`
`transmission of a random access preamble and random access response, prior to
`
`transmission on shared data channels. (Ex. 1004: § 6.1.)
`
`However, TS 36.213 does not explicitly disclose that f(i) and g(i) are
`
`initialized to each reflect an open loop power control error to account for actual
`
`network conditions. While the TS 36.213 specification does describe initializing
`
`f(0) and g(0) to zero, it was also known in the art that the practical implementation
`
`of theoretical values and techniques needed adjustments for such real world
`
`application. For example, a theoretical power calculation for communication on a
`
`particular channel may not provide enough power to be received when the
`
`theoretical power calculation is put into practice. Thus, those implementing
`
`standards such as those in TS 36.213 would have availed themselves of known
`
`techniques to ensure that the appropriate values were used to provide enough
`
`power for transmitting and receiving signals, but at the same time, avoid wasting
`
`power and causing excessive interference to others.
`
`
`
`
`
`17
`
`

`
`Damnjanovic is titled “Random Access Signaling Transmission for System
`
`Access in Wireless Communication,” and teaches processor-based techniques that
`
`may be used for various wireless communications systems, including LTE and E-
`
`UTRA, like TS 36.213. (Ex. 1005: Title; ¶¶ 22, 79-84.) Damnjanovic teaches that
`
`when a user equipment (UE) desires access to a communications system, it may
`
`use random access procedures, including the transmission of a random access
`
`preamble that signals for system access. The random access procedures include a
`
`repetitive mechanism to ensure that a proper transmit power is used by the UE to
`
`successfully transmit the random access preamble to a node (evolved node b,
`
`“eNB”), as shown in Fig. 6:
`
`
`
`
`
`18
`
`
`
`

`
`As shown in Fig. 6, a first transmission at time T1 is made with a first
`
`received by the UE after a predetermined time, a second transmission at time T2 is
`
`transmit power level (cid:1842)(cid:3021)(cid:3025)(cid:3022)(cid:3006)(1). If the first transmission fails, and a response is not
`made with a higher transmit power level (cid:1842)(cid:3021)(cid:3025)(cid:3022)(cid:3006)(2). This process may be repeated,
`successful transmission at time TM is made with transmit power level (cid:1842)(cid:3021)(cid:3025)(cid:3022)(cid:3006)((cid:1839)).
`
`with progressively higher transmit powers, until a response is received from the
`
`eNB or until a maximum number of attempts is made. (Ex. 1005: ¶ 49.) In Fig. 6, a
`
`An eNB, after successfully receiving the random access preamble, may
`
`respond with a random access response, which contains various types of
`
`information, such as an indication of an adjustment to the transmit power of the
`
`UE. These communications may be performed on the PRACH, PDCCH, and
`
`PDSCH channels. (Ex. 1005: ¶¶ 27, 31, 37.) After receiving the random access
`
`response, the UE may then transmit a first message on the uplink channel at time
`
`Tmsg. Taking into account information received in the random access response, the
`
`transmit power of the first uplink message, (cid:1842)(cid:3040)(cid:3046)(cid:3034)(cid:3022)(cid:3006) , may be “selected to achieve
`
`reliable reception of the first uplink message while reducing uplink
`
`interference.” (Ex. 1005: ¶¶ 50, 57; emphasis added.)
`
` Damnjanovic teaches that the transmit power of the first uplink message
`
`sent after successful transmission of the random access preamble may be
`
`determined according to the equation:
`
`
`
`
`
`19
`
`

`
`(Eq. 4)
`
`(Ex. 1005: ¶¶ 50, 57.) In the equation, “PC_correction” is received from an eNB in
`
`a random access response, and it indicates an increase or decrease in transmit
`
`power. (Ex. 1005: ¶ 58.) The PC correction may be based on a received signal
`
`quality of the random access preamble at the eNB, thus reflecting an open loop
`
`power control error. (Ex. 1005: ¶ 77.)
`
`See also McNair Decl. ¶¶ 54-64, 69-72.
`
`b.
`
`“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…”
`
`TS 36.213 discloses computing the transmit power for the uplink shared
`
`
`
`channel using path loss compensation (“α·PL”), wherein “full” path loss
`
`compensation is used when α=1, and wherein the initial transmit power depends on
`
`the second power control adjustment state f(0):
`
`
`where:
`
`
`
`
`
`20
`
`

`
`
`and
`
`
`
`(Ex. 1004: § 5.1.1.1.)
`
`
`
`However, TS 36.213 does not explicitly teach adapting the initial transmit
`
`power based upon random access procedures such that the initial transmit power
`
`depends on a preamble power of a first message sent on an access channel.
`
`Damnjanovic teaches determining the initial transmit power by making use
`
`of the random access procedures such that the initial transmit power depends on a
`
`preamble power of a first message sent on an access channel. As stated previously
`
`(see Section VIII(A)(1)(a)), Damnjanovic teaches that the initial transmit power
`
`may be determined according to the equation:
`
`where “RACH_power” represents the transmit power of the successful
`
`(Eq. 4)
`
`transmission of the random access preamble on the random access channel
`
`(RACH) (Ex. 1005: ¶ 57.) RACH_power, in turn, includes a ramp-up value
`
`((cid:1837)(cid:3045)(cid:3028)(cid:3040)(cid:3043)((cid:1865)) or power_ramp_up) that is added to the preamble power of an initial
`
`message sent on an access channel. (Ex. 1005: ¶¶ 51, 53.) “PC_correction” is
`
`
`
`
`
`21
`
`

`
`received from an eNB in a random access response and indicates an increase or
`
`decrease in transmit power. (Ex. 1005: ¶ 58.)
`
`To the extent that the TS 36.213 standard does not explicitly disclose the
`
`initial transmit power using full path loss compensation,