Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 14
`Entered: November 30, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC., HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00757
`Case IPR2016-013451
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 These cases have been consolidated. Unless otherwise indicated, citations
`are to the record of IPR2016-00757.
`
`

`

`IPR2016-00757
`Patent 7,881,236 B2
`
`
`In response to a Petition (Paper 3, “Pet.”) filed by ZTE (USA) Inc.,
`HTC Corporation, and HTC America, Inc., (collectively, “Petitioner”), we
`instituted an inter partes review of claims 1–10, 12, and 13 of U.S. Patent
`No. 7,881,236 B2 (“the ’236 patent”). Paper 11 (“Dec.”), 19. Samsung
`Electronics Co., Ltd., and Samsung Electronics America, Inc., filed a
`Petition in IPR2016-01345 that was substantially identical to the Petition in
`this proceeding, and trial was instituted in IPR2016-01345 on the same
`grounds as in this proceeding. Paper 12, 2. Therefore, IPR2016-01345 was
`consolidated with this proceeding. Id. During the trial, Evolved Wireless
`LLC (“Patent Owner”) timely filed a Response (Paper 22, “PO Resp.”), to
`which Petitioner timely filed a Reply (Paper 28, “Reply”). An oral hearing
`was held on August 8, 2017, and a copy of the transcript was entered into the
`record. Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–10, 12, and 13
`are unpatentable.
`
`
`I. BACKGROUND
`A. The ’236 Patent
`The ’236 patent “relates to a mobile communication technology.” Ex.
`1001, col. 1, ll. 17–18. In particular, the patent describes a random access
`procedure for user equipment (“UE”) and a base station in a
`telecommunication system. Id. at col. 3, ll. 42–59. Figure 1 of the ’236
`patent illustrates a particular example of such a telecommunication system—
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`the Evolved Universal Mobile Telecommunication System (“E-UMTS”),
`and is reproduced below.
`
`
`Figure 1 provides a schematic view of a network architecture for the E-
`UMTS, which may be conceived in terms of two component networks:
`Evolved UMTS Terrestrial Radio Access Network (“E-UTRAN”) 101 and
`Core Network 102. Id. at col. 1, ll. 26–35. The first of these, E-UTRAN
`101, may include user equipment (“UE”) 103, multiple base stations 104
`(referred to in the ’236 patent as “eNode B” or “eNB”), and Access Gateway
`(“AG”) 105. Id. at col. 1, ll. 35–39. Access Gateway 105 is positioned at
`the end of the network and connected to an external network, and can
`include a portion for processing user traffic and a portion for processing
`control traffic. Id. at col. 1, ll. 39–41.
`As the ’236 patent describes, “a UE performs the random access
`procedure” in a number of instances, including “when the UE performs
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`IPR2016-00757
`Patent 7,881,236 B2
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`initial access” to a base station and “when there is uplink data transmission
`in a situation where uplink time synchronization is not aligned or where a
`specific radio resource used for requesting radio resources is not allocated.”
`Id. at col. 3, ll. 42–57. A version of Figure 5 of the ’236 patent annotated by
`Petitioner (Ex. 2009, 12) is reproduced below.
`
`
`Figure 5 shows an example of a random access procedure performed
`between user equipment UE and base station eNB. Ex. 1001, col. 6, ll. 53–
`55. The procedure begins with transmission of a “random access preamble”
`from the UE to the base station at step S501 (referred to as a “message 1”
`transmitting step). Id. at col. 4, ll. 3–7. The UE receives a “random access
`response” from the base station at step S502 “in correspondence with the
`transmitted random access preamble” (referred to as a “message 2” receiving
`step). Id. at col. 4, ll. 7–11. Of particular relevance, the UE then transmits
`an uplink message to the base station at step S503 (referred to as a “message
`3” or “Msg3” transmitting step). Id. at col. 4, ll. 11–14. The UE receives a
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`corresponding “contention resolution” message from the base station at step
`S504 (referred to as a “message 4” receiving step). Id. at col. 4, ll. 14–17.
`In the random access procedure, the UE stores data to be transmitted
`via the message 3 in a “Msg 3 buffer” and transmits the stored data “in
`correspondence with the reception of an Uplink (UL) Grant signal.” Id. at
`col. 4, ll. 18–21. The UL Grant signal indicates information about uplink
`radio resources that may be used when the UE transmits a signal to the base
`station. Id. at col. 4, ll. 21–26. For example, the UL Grant could be
`received on the Physical Downlink Control Channel (PDCCH), indicating
`that new data may be transmitted, or the UL Grant could be received on the
`Physical Downlink Shared Channel (PDSCH), which indicates that it was
`received in a random access response message (i.e., message 2). Id. at col.
`5, ll. 9–22. Thus, some UL Grants are received as part of the above message
`1-2-3-4 random access procedure, and some are not. According to the ’236
`patent, then-current LTE system standards provided that data stored in the
`Msg3 buffer of the UE would be transmitted to the base station “regardless
`of the reception mode of the UL Grant signal,” and that “if the data stored in
`the Msg3 buffer is transmitted in correspondence with the reception of all
`UL Grant signals, problems may occur.” Id. at col. 4, ll. 26–32 (emphases
`added). Thus, the alleged problem is that the UE could send Msg3 buffer
`data when it was not supposed to, outside of the proper message 1-2-3-4
`random access procedure. The ’236 patent purports to solve such problems.
`Id. at col. 4, ll. 33–34.
`Figure 9 of the ’236 patent is reproduced below.
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`
`
`Figure 9 is a flowchart of a method showing the operation of an uplink
`Hybrid Automatic Repeat Request (“HARQ”) entity in a UE. Id. at col. 13,
`ll. 35–39. After a UL grant signal is received from the base station at step
`902, the UE determines at step 906 whether there are data in the Msg3
`buffer. Id. at col. 13, ll. 42–44. If so, a further determination is made at step
`907 whether the received UL grant signal is on a random access response
`(“RAR”) message, i.e., that the UL grant was on a message 2 in the above
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`IPR2016-00757
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`random access procedure. Id. at col. 13, l. 66–col. 14, l. 3. The UE
`transmits the data in the Msg3 buffer to the base station “only when” both
`conditions are met, i.e., “only when there is data [stored]in the Msg3 buffer
`when receiving the UL Grant signal and the UL Grant signal is received on
`the random access response message (S908).” Id. at col. 14, ll. 3–7.
`Conversely, if either condition is not met, i.e. there are no data in the Msg3
`buffer or the UL Grant signal is not on a random access response message,
`then the UE determines that the base station is making a request for
`transmission of new data and performs new data transmission at step 909.
`Id. at col. 14, ll. 7–13.
`
`B. Illustrative Claims
`Claims 1 and 7 of the ’236 patent, reproduced below, are independent
`claims respectively directed at the above-described method and at user
`equipment that implements the above-described method.
`1. A method of transmitting data by a user equipment through an
`uplink, the method comprising:
`receiving an uplink grant (UL Grant) signal from a base station
`on a specific message;
`determining whether there is data stored in a message 3 (Msg3)
`buffer when receiving the UL Grant signal on the specific message;
`determining whether the specific message is a random access
`response message;
`transmitting the data stored in the Msg3 buffer to the base station
`using the UL Grant signal received on the specific message, if there is
`data stored in the Msg3 buffer when receiving the UL Grant signal on
`the specific message and the specific message is the random access
`response message; and
`transmitting new data to the base station in correspondence with
`the UL Grant signal received on the specific message, if there is no data
`stored in the Msg3 buffer when receiving the UL Grant signal on the
`specific message or the specific message is not the random access
`response message.
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`
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`7. A user equipment, comprising:
`a reception module adapted to receive an uplink grant (UL Grant)
`signal from a base station on a specific message;
`a transmission module adapted to transmit data to the base station
`using the UL Grant signal received on the specific message;
`a message 3 (Msg3) buffer adapted to store UL data to be
`transmitted in a random access procedure;
`a Hybrid Automatic Repeat Request (HARQ) entity adapted to
`determine whether there is data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal and the specific message
`is a random access response message, acquiring the data stored in the
`Msg3 buffer if there is data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal and the specific message
`is
`the random access response message, and controlling
`the
`transmission module to transmit the data stored in the Msg3 buffer to
`the base station using the UL Grant signal received by the reception
`module on the specific message; and
`a multiplexing and assembly entity used for transmission of new
`
`data,
`
`wherein the HARQ entity acquires the new data to be transmitted
`from the multiplexing and assembly entity if there is no data stored in
`the Msg3 buffer when the reception module receives the UL Grant
`signal on the specific message or the received message is not the
`random access response message, and controls the transmission module
`to transmit the new data acquired from the multiplexing and assembly
`entity using the UL Grant signal received by the reception module on
`the specific message.
`
`
`C. Instituted Grounds of Unpatentability
`We instituted trial for challenges under 35 U.S.C. § 103(a)2 over the
`following combinations of references. Dec. 19.
`
`
`2 Because the ’236 patent has a filing date before September 16, 2012 (the
`effective date of the Leahy-Smith America Invents Act (AIA), Pub. L.
`No. 112-29, § 4(c), 125 Stat. 284 (2011)), we refer herein to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
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`
`References
`3GPP TS 3003 and 3GPP TS 3214
`3GPP TS 300, 3GPP TS 321, and Ericsson5
`
`Challenged Claims
`1–6
`7–10, 12, 13
`
`
`Petitioner asserts that 3GPP TS 300 and 3GPP TS 321 are printed
`
`publications published prior to the filing date of the provisional patent
`application from which the ’236 patent claims priority and are thus prior art
`under 35 U.S.C. § 102(a). Pet. 10–15. Petitioner asserts that Ericsson is
`prior art under 35 U.S.C. § 102(e) because the application on which it was
`based was filed prior to the filing date of the provisional patent application
`from which the ’236 patent claims priority. Id. at 11. Patent Owner does
`not challenge any of these assertions of Petitioner or otherwise challenge the
`prior art status of the cited references. See generally PO Resp. Based on
`this record, Petitioner has established the cited references are prior art under
`35 U.S.C. §§ 102 and 103.
`D. Real Parties in Interest and Related Proceedings
`Petitioner identifies ZTE (USA) Inc., HTC Corporation, and HTC
`America, Inc. as the real parties in interest. Pet. 2.6 Patent Owner identifies
`only itself as a real party in interest. Paper 7, 2.
`The parties indicate that the ’236 patent is the subject of several
`district-court litigations: Evolved Wireless, LLC v. Apple, Inc., No. 1:15-cv-
`542 (D. Del.); Evolved Wireless, LLC v. HTC Corp., No. 1:15-cv-543
`
`
`3 3GPP TS 36.300 v8.4.0 (2008) (Ex. 1002, “3GPP TS 300”).
`4 3GPP TS 36.321 v8.2.0 (2008) (Ex. 1003, “3GPP TS 321”).
`5 U.S. Patent No. 9,204,468 B2, filed June 9, 2008, issued Dec. 1, 2015 (Ex.
`1004, “Ericsson”).
`6 Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.,
`were identified as the real parties in interest in IPR2016-01345 (Paper 1, 3).
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`(D. Del.); Evolved Wireless, LLC v. Lenovo Group Ltd., 1:15-cv-544
`(D. Del.); Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., 1:15-cv-
`545 (D. Del.); Evolved Wireless, LLC v. ZTE Corp., 1:15-cv-546 (D. Del.);
`Evolved Wireless LLC v. Microsoft Corp., 1:15-cv-547 (D. Del.). Pet. 2–3;
`Paper 7, 2–3. In addition, the ’236 patent is the subject of the following
`inter partes reviews: IPR2016-01228 and IPR2016-01229.
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). “[T]he claim construction
`inquiry . . . begins and ends in all cases with the actual words of the claim.”
`Renishaw PLC v. Marposs Società per Azioni, 158 F.3d 1243, 1248 (Fed.
`Cir. 1998). Under the broadest reasonable construction standard, claim
`terms are generally given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`A claim-construction disagreement between the parties is grounded in
`use of the word “if” in the two “transmitting” limitations of independent
`claims 1 and 7. See Pet. 16–19; PO Resp. 9–32; Reply 3–9. Those
`limitations implicate two conditions, resulting in different data being
`transmitted depending on whether both conditions are satisfied or not. The
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`first condition is whether “there is data stored in the Msg3 buffer when
`receiving the UL Grant signal on the specific message,” and the second
`condition is whether “the specific message is the random access response
`message.” Ex. 1001, col. 16, l. 59 – col. 17, l. 3; col. 17, l. 38 – col. 18, l. 7.
`“If” both conditions are satisfied, the “data stored in the Msg3 buffer” are
`transmitted to the base station; and “if” either condition is not satisfied, “new
`data” are transmitted to the base station. Id.
`Petitioner presents an argument that addresses the first “transmitting”
`limitation in isolation, contending that the limitation “requires no
`construction and should be given its plain and ordinary meaning consistent
`with the broadest reasonable interpretation standard.” Pet. 16. According to
`Petitioner, “[t]he first ‘transmitting’ feature is straight-forward,” because it
`requires transmitting the data stored in the Msg3 buffer when the two
`conditions are met and nothing more. Id. That is, Petitioner contends that
`“if” in the first “transmitting” limitation should be construed as introducing a
`“sufficient condition.” Id. at 16–17.
`Patent Owner presents a counterargument that considers an interplay
`between the two “transmitting” limitations, correctly observing that the two
`conditions “are independent of one another” and that the recitations in the
`two “transmitting” limitations are “logical opposite[s].” PO Resp. 9–12. As
`Patent Owner asserts, “both limitations cannot, at the same time, be true.”
`Id. at 12. In considering this logical interplay, Patent Owner contends that
`“if” in each “transmitting” limitation should therefore be construed as
`introducing a necessary condition: “The proper claim construction is one
`that follows the claim’s plain language; that is Msg3 data is transmitted if
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`[both conditions are] met . . . and new data are transmitted if [either
`condition] is not met.” Id. at 13.7
`We have considered the positions of both parties, and conclude that
`Patent Owner presents the more compelling reading of the claim. In
`isolation, the plain and ordinary meaning of “if” is amenable to both
`sufficient-condition and necessary-condition constructions. Indeed, it is
`trivial to construct English sentences in which a listener would naturally
`understand one of those constructions to be implicated. For instance, “If
`there is smoke, there is fire” is naturally understood not to preclude the
`possibility of fire if there is no smoke (sufficient if). Conversely, “If you
`take another step, I’ll shoot,” is naturally understood to mean that the
`speaker will not shoot if the listener does not take another step (necessary
`if).
`
`To resolve the ambiguity, we look, as we must, to the context
`provided by the claims themselves, as well as to the Specification in whose
`light they must be considered under the broadest-reasonable-interpretation
`standard. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996) (“the context of the surrounding words of the claim also
`must be considered in determining the ordinary and customary meaning of
`
`
`7 Patent Owner characterizes its position as equivalent to reciting “but not
`transmitting the new data” as part of the first “transmitting” limitation, i.e.,
`when both conditions are met; and to reciting “but not transmitting any data
`stored in the Msg3 buffer” as part of the second “transmitting” limitation,
`i.e., when at least one of the conditions is not met. PO Resp. 10. Although
`such additional language is logically consistent with Patent Owner’s
`position, we find it unnecessary to incorporate such negative limitations into
`the claims; the proper construction can be resolved by correctly construing
`the meaning of “if.”
`
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`those terms”). We agree with Patent Owner’s characterization of
`Petitioner’s position as improperly including the optional possibility of
`transmitting data stored in the Msg3 buffer even when both conditions are
`not satisfied. See PO Resp. 12–13. Such an optional possibility is a logical
`consequence of a sufficient-if construction, and we acknowledge that such a
`reading would be tenable if the claim included only the first “transmitting”
`step.8 But the claim explicitly answers the question of what occurs when at
`least one of the conditions is not satisfied: “new data” are transmitted to the
`base station. Ex. 1001, col. 16, l. 16 – col. 17, l. 3; col. 17, l. 52 – col. 18, l.
`7. By isolating the first “transmitting” limitation, Petitioner improperly
`reaches too broad a construction of the claim as a whole.
`Furthermore, Patent Owner’s proposed construction is consistent with
`the Specification of the ’236 patent. For example, in the Background of the
`Invention , the Specification observes that, in the prior art, “if the UL Grant
`signal is received in a state in which data is stored in the Msg3 buffer, the
`data stored in the Msg3 buffer is transmitted regardless of the reception
`mode of the UL Grant.” Id. at col. 4, ll. 26–30 (emphasis added). As
`explained in the Specification, applicants purport to resolve such a
`deficiency because “if the data stored in the Msg3 buffer is transmitting in
`correspondence with the reception of all UL Grant signals, problems may
`occur.” Id. col. 4, ll. 30–34 (emphasis added). In addition, the description
`of Figure 9 of the patent, reproduced above, explicitly explains that data in
`the Msg3 buffer are transmitted to the base station “only when” both
`conditions recited in the claims are met. Id. at col. 14, ll. 3–8.
`
`
`8 Indeed, this is precisely the case for a child of the ’236 patent, as discussed
`infra.
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`
`The parties also address the relevance of the prosecution history of a
`child of the ’236 patent. PO Resp. 22–25; Reply 8. During prosecution of
`U.S. Patent No. 9,532,336 B2 (Ex. 2007, “the ’336 patent”), which shares
`the same written description as the ’236 patent, explicit language was
`included in the independent method claims to require transmission of data
`stored in the Msg3 buffer “only when” such data are stored in the Msg3
`buffer and the UL Grant was received on the random access response
`message. Ex. 2008, 146. Such “only when” language did not appear in the
`claims as originally filed, and was added in response to a rejection in which
`the Examiner made the following remarks:9
`Claim 1 recites the limitation “if there is data stored in the Msg3
`buffer and if the UL Grant signal was received on the random
`access response.” The limitation is directed to the action to
`transmit the UL Grant, however, there is no language to limit the
`claim to only this scenario or the claim language does not
`provide an alternative for what if the statement is not true. The
`Applicant’s invention is not being claimed in independent claims
`1 and 9.
`
`Id. at 139 (emphases added).
`Importantly, the claims in the ’336 patent do not include language that
`corresponds to the second “transmitting” limitation of the claims at issue in
`this proceeding—the “only when” language was added to a limitation that
`corresponds to the first “transmitting” limitation. We agree with Patent
`Owner’s characterization of the relevance of these facts and of the
`Examiner’s prior basis for rejection of unamended claims of the ’336 patent.
`That is “the Examiner specifically rejected a claim without the ‘only when’
`
`
`9 Independent method claim 26 of the ’336 patent was added by amendment
`at the same time, including the “only when” language. Ex. 2008, 151.
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`language because there was no alternative recited in the claim . . . if the
`condition[s were] not met.” PO Resp. 24. The addition of the “only when”
`language in the ’336 patent resolves the ambiguity, recognized by the
`Examiner, that is otherwise resolved in the claims at issue in this proceeding
`by the presence of the second “transmitting” limitation. In light of this
`difference in the claims in the two patents, we are not persuaded by
`Petitioner’s argument that “Patent Owner’s decision to narrow the language
`from ‘if’ in the ’236 patent to ‘only when’ in the child patent demonstrates
`the difference in meaning between these two phrases and belies Patent
`Owner’s argument that they mean the same thing.” Reply 8.
`For these reasons, we agree with Patent Owner that “if” in the
`“transmitting” limitations of independent claims 1 and 7 is properly
`construed, under the broadest-reasonable-interpretation standard, as
`introducing necessary conditions, rather than sufficient conditions.10 We
`adopt such a construction for purposes of this Decision.
`B. Legal Principles Governing Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`
`
`10 This construction is consistent with the reasoning of Ex Parte
`Schulhauser, Appeal No. 2011-002626, slip op. (PTAB Sept. 19, 2012)
`(precedential). Similar to the claims at issue in this proceeding, Schulhauser
`considered a claim that recited “mutually exclusive” steps. Schulhauser, slip
`op. at 6. The Board held that, under the broadest reasonable interpretation,
`the claim “covers at least two methods, one in which the prerequisite
`condition for the [first] step is met and one in which the prerequisite
`condition for the [second] step is met.” Id. at 8. The Board did not thereby
`hold that the language of one of the steps could simply be read out of the
`claim (as Petitioner’s argument would effectively require) nor that that
`language could not properly inform construction of the other of the steps.
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`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 said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.11 See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`C. Level of Skill in the Art
`Petitioner contends:
`
`The person of ordinary skill in the art of the subject matter
`of the 236 patent would have had a master’s degree in electrical
`engineering with 2-3 years of experience
`in cellular
`communication system, and would have been aware of the efforts
`of the Third Generation Partnership Project and its various
`groups. (Ex. 1016, Min decl., at ¶ 34.) Alternatively, that person
`would have had a Ph. D. in electrical engineering with the same
`familiarity with the work of the Third Generation Partnership
`Project and its various groups. (Id.)
`
`Pet. 6. Patent Owner does not present any argument or contentions relating
`to the level of skill in the art. See generally PO Resp. We find Petitioner’s
`proposal reasonable, and accordingly, based on this record, we adopt the
`level of skill in the art proposed by Petitioner.
`D. Obviousness of Claims 1–6 Over 3GPP TS 300 and 3GPP TS 321
`Independent claim 1 and dependent claims 2–6 are challenged as
`
`obvious over 3GPP TS 300 (Ex. 1002) and 3GPP TS 321 (Ex. 1003) (Pet.
`
`
`11 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`20–48), and the Board instituted an inter partes review on this challenge
`(Dec. 19).
`1. 3GPP TS 300 (Ex. 1002)
`Technical Specification 300 is published by the 3GPP12 and “provides
`an overview and overall description of the E-UTRAN (Evolved Universal
`Terrestrial Radio Access Network) radio interface protocol architecture” in
`an LTE system. Ex. 1002, 11. Section 10.1.5 describes a Random Access
`Procedure, and section 10.1.5.1 outlines a contention-based random access
`procedure. Id. at 48–49.
`2. 3GPP TS 321(Ex. 1003)
`Technical Specification 321 is published by the 3GPP and “specifies
`the E-UTRA [Evolved Universal Terrestrial Radio Access] MAC [Medium
`Access Control] Protocol” in an LTE system. Ex. 1003, 6. Section 5.4 of
`3GPP TS 321 describes uplink data transfer, section 5.4.1 describes UL
`Grant reception, and section 5.4.2.1 states:
`At the given TTI [transmission time interval], the HARQ entity
`shall:
`
` -
`
` if an uplink grant indicating that the NDI has been incremented
`compared to the value in the previous transmission of this HARQ
`process is indicated for this TTI or if this is the very first
`transmission for this HARQ process (i.e. a new transmission
`takes place for this HARQ process):
`
`
`- if there is an ongoing Random Access procedure and
`there is a MAC PDU in the [Message3] buffer:
`
`
`12 The Third Generation Partnership Project is a standards-setting
`organization for mobile communications and was developing a cellular
`communication system known as the Long Term Evolution (LTE). Pet. 6;
`PO Resp. 2. See also Ex. 1001, col. 1, ll. 22–25.
`
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`IPR2016-00757
`Patent 7,881,236 B2
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` -
`
` instruct the HARQ process corresponding to this
`TTI to trigger a new transmission using the
`identified parameters.
`
`
`Id. at 18 (brackets in original).
`3. Obviousness Analysis
`Petitioner asserts that claims 1–6 would have been obvious over the
`combination of 3GPP TS 300 and 3GPP TS 321. Pet. 20–48. Petitioner
`advances several reasons why persons of ordinary skill in the art would have
`been motivated to combine the teachings of 3GPP TS 300 and 3GPP TS
`321. Id. at 46–48 (citing Ex. 1016 (Min Decl. ¶¶ 116–119)). Petitioner
`asserts skilled artisans “would have consulted the two complementary
`references together because both specifications were part of the then-current
`LTE standard” and such artisans “considered the LTE standard as one
`collective reference set.” Id. at 46. The ’236 patent repeatedly refers to the
`“LTE system standard” as a whole. Ex. 1001, col. 4, l. 26, col. 12, l. 17, col.
`12, l. 49, col. 13, l. 6. Petitioner also asserts “[s]killed artisans also would
`have consulted the 300 and 321 references together because both
`specifications described LTE’s random access procedure” and “[t]o
`understand and implement the random access procedure, the skilled artisan
`would have needed to consult both specifications together, rather than
`
`18
`
`
`
` -
`
`- obtain the MAC PDU to transmit from the
`[Message3] buffer.
`
` else, if the “uplink prioritisation” entity indicates the
`need for a new transmission:
`
`
`- obtain the MAC PDU to transmit from the
`“Multiplexing and assembly” entity;
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`IPR2016-00757
`Patent 7,881,236 B2
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`treating each specification in isolation.” Pet. 46. And, 3GPP TS 300
`references “3GPP TS 321.” Ex. 1002, 11. Patent Owner does not contest
`Petitioner’s assertions related to the reason for combining the teachings of
`the cited references. See generally PO Resp. Based on this record, we
`conclude Petitioner has established that a person of ordinary skilled in the art
`would have had a reason to combine the teachings of 3GPP TS 300 and
`3GPP TS 321.
`a. Independent Claim 1
`Claim 1 is a method claim. The preamble of claim 1 recites, “[a]
`method of transmitting data by a user equipment through an uplink.”
`Petitioner cites section 5.4 of 3GPP TS 321, which is titled “UL-SCH data
`transfer” (Ex. 1003, 18), and section 10.1.5.1 of 3GPP TS 300, which
`describes a “contention based random access procedure” in which step 3 is
`the “[f]irst scheduled UL transmission on UL-SCH” by the “UE” (Ex. 1002,
`48–49). Pet. 22–23. “SCH” is an abbreviation for synchronization channel.
`Ex. 1002, 14. We find the cited art teaches, “[a] method of transmitting data
`by a user equipment through an uplink.”
` The first method step of claim 1 recites, “receiving an uplink grant
`(UL Grant) signal from a base station on a specific message.” Petitioner
`cites both 3GPP TS 321 and 3GPP TS 300 as teaching this step. Pet. 23–24.
`3GPP TS 321 states, “the UE shall for each TTI [Transmission Time
`Interval]: - if [(1)] an uplink grant for the TTI has been received on the
`PDCCH [Physical Downlink Control Channel] for the UE’s C-RNTI [Cell-
`Radio Network Temporary Identifier] or Temporary C-RNTI; or – [(2)] if an
`uplink grant for this TTI has been received in a Random Access Response; -
`[then] indicate a valid uplink grant.” Ex. 1003, 18. Petitioner cites Figure
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`19
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`IPR2016-00757
`Patent 7,881,236 B2
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`10.1.5.1 of 3GPP TS 300 as showing eNodeB, a base station, would transmit
`the random access response to the UE in step 2. Ex. 1002, 48. We find the
`cited art teaches, “receiving an uplink grant (UL Grant) signal from a base
`station on a specific message.”
`The second method step of claim 1 recites, “determining whether
`there is data stored in a message 3 (Msg3) buffer when receiving the UL
`Grant signal on the specific message.” Petitioner cites 3GPP TS 321 as
`teaching this step. Pet. 24–25. Section 5.4.2.1 of 3GPP TS 321 states, “[a]t
`the given TTI [Transmission Time Interval], the HARQ [Hybrid Automatic
`Repeat Request] entity shall: . . . if there is an ongoing Random Access
`procedure and there is a MAC PDU [Medium Access Control Packet Data
`Unit] in the [Message3][13] buffer.” Ex. 1003, 18. With regard to when the
`determination of whether there is