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 IPR2015-01716
`U.S. Patent 8,848,556
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`________________
`
`
`PATENT OWNER CELLULAR COMMUNICATIONS
`EQUIPMENT LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
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`Page 1 of 28
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`TELEFONAKTIEBOLAGET LM ERICSSON AND
`ERICSSON INC. EX. NO. 1016
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`Case IPR2015-01716
`Patent 8,848,556
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`Paper No. 6
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`TABLE OF CONTENTS
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`
`INTRODUCTION .......................................................................................... 1
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`I.
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`II. OVERVIEW OF THE ’556 PATENT ........................................................... 1
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`III. CLAIM CONSTRUCTION ........................................................................... 5
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`IV. APPLICABLE LEGAL STANDARDS ......................................................... 6
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`A.
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`Standard for Review ............................................................................. 6
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`B. Obviousness .......................................................................................... 6
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`i.
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`Claims Cannot be Found Obvious if an Element is Absent ...... 7
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`A Petition Must Address the Graham Factors ........................... 7
`
`ii.
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`PETITIONER CANNOT SHOW THAT THE CHALLENGED CLAIMS
`ARE UNPATENTABLE UNDER 35 U.S.C. § 103 ...................................... 9
`
`A. Overview of the Petition ...................................................................... 9
`
`B.
`
`The Heo Reference does not Disclose an Element of Claims 5, 13, and
`21 ........................................................................................................ 11
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`The Petition and Expert Declaration do not Follow the Graham
`Framework and are Deficient ............................................................. 16
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`
`C.
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`
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`VI. CONCLUSION ....................................................................................... 22
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`
`
`ii
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`V.
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`TABLE OF AUTHORITIES
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`Cases
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`ActiveVideo Networks, Inc. v. Verizon Commc’n, Inc.
`694 F.3d 1312 (Fed. Cir. 2012) ...................................................................... 20-21
`
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................................. 7
`
`
`eBay, Inc. v. Paid, Inc.,
`CBM2014-00125, Paper 15 (PTAB Sept. 30, 2014) ......................................... 8-9
`
`
`Eizo Corp. v. Barco N.V.,
`IPR2014-00358, Paper 11 (PTAB July 23, 2014) ..................................... 8, 17, 19
`
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 15 (PTAB Jan. 9, 2013) .................................................... 7
`
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ......................................................................... 6-9, 16-17, 19-20
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................... 21
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ........................................................................... 7, 16
`
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ............................................................................... 7
`
`In re Royka,
`490 F.2d 981 (CCPA 1974) ................................................................................. 7
`
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 .................................................................................... 21
`
`
`
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`iii
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 8, 20-21
`
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00243, Paper 6 (PTAB June 18, 2014) ................................................ 8
`
`
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00246, Paper 6 (PTAB June 18, 2014) ................................................ 8
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2014-01112, Paper 9 .................................................................................... 22
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`
`Statutes
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`35 U.S.C. § 103 ......................................................................................... 1, 6-7, 9-10
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`35 U.S.C. § 313 ......................................................................................................... 1
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`35 U.S.C. § 314(a) .............................................................................................. 6, 22
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`Regulations
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`37 C.F.R. § 42.22(a)(2) ...................................................................................... 21-22
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`37 C.F.R. § 42.65(a) ................................................................................................ 22
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`37 C.F.R. § 42.100(b) ............................................................................................... 5
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`37 C.F.R. § 42.104(b)(4) ......................................................................................... 16
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`37 C.F.R. § 42.104(b)(5) ......................................................................................... 22
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`37 C.F.R. § 42.107 .................................................................................................... 1
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`37 C.F.R. § 42.108(b) ............................................................................................. 22
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`37 C.F.R. § 42.108(c) ................................................................................................ 6
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`iv
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`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ............... 6
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`Paper No. 6
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R § 42.107, Patent Owner Cellular
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`Communications Equipment LLC (“CCE”) respectfully submits this preliminary
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`response to Sony Mobile Communications (USA) Inc.’s (“Petitioner”) Petition for
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`Inter Partes Review (“Petition”). A trial should not be instituted in this matter
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`because Petitioner cannot demonstrate that there is a reasonable likelihood that at
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`least one of the challenged claims of U.S. Patent No. 8,848,556 (Ex. 1001, the “’556
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`Patent”) is unpatentable. Specifically, Petitioner attacks the three independent
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`claims at issue (claims 5, 13 and 21) under 35 U.S.C. § 103(a) using a single
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`reference (the “Heo” reference). The Heo reference, however, does not disclose at
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`least one element of each of the independent claims. Petitioner does not attempt to
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`satisfy this missing element from another source. This deficiency is fatal to the
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`Petition as a whole. As such, trial should not be instituted.
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`II. OVERVIEW OF THE ’556 PATENT
`“Carrier aggregation” is a technique that allows a mobile device to use
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`multiple “component carriers” having different frequency bandwidths for
`
`transmissions to a base station, thereby increasing throughput. ’556 Patent at
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`1:14-25. These “component carriers” may include a primary carrier provided on the
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`“primary serving cell,” and additional secondary carriers provided on “secondary
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`serving cells.” ’556 Patent at 4:23-53. The ’556 Patent discloses an improvement
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`
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`1
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`related to the timing and generation of power headroom reports in the context of
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`carrier aggregation.
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`Prior to carrier aggregation, power headroom reporting was described by
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`3GPP TS 36.321 (releases 8 and 9). ’556 Patent at 1:28-45. According to TS 36.321
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`(releases 8 and 9), “a power headroom report is triggered if any of the following
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`occur”:
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`a timer called “prohibitPHR-Timer” expires or has expired and the path
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`loss has changed more
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`than a predetermined amount, “dl-
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`pathlossChange” dB, since the transmission of a power headroom
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`report when the user equipment has uplink resources for new
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`transmission; a timer called “periodicPHR-Timer” expires; or upon
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`configuration or reconfiguration of the power headroom reporting
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`functionality by upper layers, which is not used to disable the function.
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`’556 Patent at 1:28-45. As this prior standard applies “without carrier aggregation,”
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`each of the “triggers” disclosed by TS 36.321 (releases 8 and 9) is specific to an
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`individual carrier. ’556 Patent at 1:28-38. As described below, the ’556 Patent
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`teaches that these same “triggers” may be used for carrier aggregation. ’556 Patent
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`at 1:39-45.
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`The ’556 Patent describes a technique to control the timing and content of
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`“power headroom” reports to be made in the context of carrier aggregation. Rather
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`than sending multiple, separate power headroom reports for each component carrier,
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`the ’556 Patent employs a power headroom report control element that allows for
`2
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`reporting of multiple component carriers. ’556 Patent at 3:61-4:2; 5:4-12. The
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`power headroom control element includes a bitmap indicating which power
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`headroom reports are being reported. Id. For example, a bit set to “1” can indicate
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`a power headroom report for the corresponding carrier is being included. ’556 Patent
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`at 5:13-23. A bit set to “0” can indicate that a power headroom report for the
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`corresponding carrier is not included. Id.
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`Figure 5 from the Patent illustrates an embodiment in which the fist octet of
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`the payload is the bitmap of the power headroom report:
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`’556 Patent at 3:34-35; 6:8-10. In this example, the first eight bits indicate which
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`power headroom reports for the corresponding carriers are being reported. Id. The
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`individual power headroom reports follow the bitmap. ’556 Patent at Figure 5.
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`3
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`The independent claims each require “a trigger” to cause preparation of the
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`power headroom control element including the bitmap. Claim 13 of the ’556 Patent
`
`is exemplary:
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`13. A non-transitory computer readable medium encoded with a
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`computer program that, when executed in hardware, causes the
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`hardware to perform a process, the process comprising:
`preparing a power headroom report control element, based on a
`trigger configured by a base station, the trigger determining
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`when the power headroom report control element is to be sent in
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`an uplink, the preparing of the power headroom report control
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`element includes incorporating a bitmap indicating which power
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`headroom reports are being reported, the preparing of the power
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`headroom report control element further includes preparing the
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`bitmap to include bits for power headroom reports for a plurality
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`of secondary cells; and
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`sending the prepared power headroom report control element to the
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`base station.
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`’556 Patent at claim 13 (emphasis added). Claim 13 expressly sets forth a
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`relationship between “a trigger” and the preparation of the “bitmap.” Specifically,
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`the “power headroom report control element” is prepared “based on a trigger
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`configured by the base station….” The “preparation of the power headroom report
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`control element further includes a bitmap indicating which power headroom reports
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`are being reported….” Thus, the claim requires a link between “a trigger” and the
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`preparation of the “bitmap.” This is consistent with the ’556 Patent specification,
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`which teaches that the same triggers disclosed by TS 36.321 (releases 8 and 9) can
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`be applied to carrier aggregation, and that when power headroom reporting is
`“triggered,” power headroom reports for all “serving” carriers should be reported:
`
`The
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`‘prohibitPHR-Timer,’
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`‘periodicPHR-Timer,’
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`and
`
`‘dl-
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`PathlossChange,’ are configured by a radio resource controller. Similar
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`power headroom report triggering could also be applied to carrier
`aggregation. When power headroom reporting is triggered, power
`headroom reports on all the scheduled CC (or serving cells) or
`configured CC (or configured serving cells) should be reported.
`
`’556 Patent at 1:39-45 (emphasis added).
`
`
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`III. CLAIM CONSTRUCTION
`According to 37 C.F.R. § 42.100(b), a claim in an inter partes review is to be
`
`given its “broadest reasonable interpretation in light of the specification of the patent
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`in which it appears.” Petitioners have construed the meanings of various claim terms
`
`in the Petition. CCE disputes that Petitioner’s proposed constructions are consistent
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`with the “broadest reasonable construction in light of the specification” and,
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`consequently, CCE does not acquiesce to Petitioner’s definitions. CCE, however,
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`does not believe construction of any claim term or phrase is necessary to deny the
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`Petition at this stage. CCE reserves its rights to set forth competing claim
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`constructions in a Response (and with the support of its own expert) if an inter partes
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`review is instituted.
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`IV. APPLICABLE LEGAL STANDARDS
`A. Standard for Review
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`The Board may only grant a petition for inter partes review where “the
`
`information presented in the petition … shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Petitioner bears the
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`burden of showing that this statutory threshold has been met. See Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“The Board … may institute
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`a trial where the petitioner establishes that the standards for instituting the requested
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`trial are met ….”).
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`B. Obviousness
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`Section 103 of the Patent Act provides that “[a] patent may not be obtained
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`… if the differences between the subject matter sought to be patented and the prior
`
`art are such that the subject matter as a whole would have been obvious at the time
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`the invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” 35 U.S.C. § 103(a). The obviousness analysis requires a
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`number of threshold inquiries. The level of ordinary skill in the art must be
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`established, the scope and content of the prior art must be determined, and any
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`differences between the prior art and the claims at issue must be ascertained. Graham
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`v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
`6
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`i) Claims Cannot be Found Obvious if an Element is Absent
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`If a single element of the claim is absent from the prior art, the claims cannot
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`be considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
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`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
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`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
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`teach or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed
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`Techs. LLC, Case No. IPR2012-00001, Paper 15 at 15 (PTAB Jan. 9, 2013) (refusing
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`to institute an inter partes review under 35 U.S.C. § 103 where prior art did not
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`disclose all claim limitations). Furthermore, the claims cannot be obvious in light
`
`of a combination of elements that changes the principle operation of the prior art
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`reference being applied. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“If a
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`proposed modification or combination of the prior art would change the principle of
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`operation of the prior art device being modified, then the teachings of the references
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`are not sufficient to render the claims prima facie obvious.”). As explained below,
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`Petitioner has not established a reasonable likelihood that at least one of the
`challenged claims of the ’556 Patent is unpatentable for at least the reason that the
`Heo does not disclose a limitation of the independent claims.
`ii) A Petition Must Address the Graham Factors
`
`While CCE believes the above points of law sufficient to warrant denial of the
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`Petition under the facts presented, CCE notes (for completeness) that the Petition is
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`deficient because Petitioner’s obviousness analysis does not comply with the
`7
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`Graham v. John Deere Co. framework. 383 U.S. 1 (1966). Obviousness is resolved
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`on a number of factual determinations “including (1) the scope and content of the
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`prior art, (2) any differences between the claimed subject matter and the prior art,
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`and (3) the level of ordinary skill in the art.” See, e.g., Eizo Corp. v. Barco N.V.,
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`IPR2014-00358, Paper 11 at 29 (P.T.A.B. July 23, 2014) (citing Graham, 383 U.S.
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`at 17-18; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). Petitions for
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`inter partes reviews “must address the Graham factors.” Eizo Corp., IPR2014-
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`00358, Paper 11 at 29-30. For example, the Board faulted the petitioner in Eizo
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`Corp. for failing to identify the differences between the claimed subject matter and
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`the prior art. Id. at 29-30. In particular, the Board found insufficient the petitioner’s
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`“conclusory assertion” that “[t]o the extent [the first prior art reference] may not
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`explicitly teach” the limitation, the second prior art reference “explicitly teaches this
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`limitation.” Id. at 30. The Board explained that “such an assertion fails to resolve
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`the exact differences sought to be derived from” the second prior art reference. Id.
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`(finding that petitioner had not shown a reasonable likelihood of prevailing on that
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`ground). Numerous other Board decisions have reached the same result. See, e.g.,
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`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6 at 18 (P.T.A.B.
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`June 18, 2014) (faulting petitioner for failing to “explain[] any differences between
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`the claimed subject matter and the prior art”); Moses Lake Indus., Inc. v. Enthone,
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`Inc., IPR2014-00246, Paper 6 at 17 (P.T.A.B. June 18, 2014) (same); eBay, Inc. v.
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`Paid, Inc., CBM2014-00125, Paper 15 at 21 (P.T.A.B. Sept. 30, 2014) (concluding
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`8
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`similarly even where petitioner’s claim charts were “detailed”). The Petition at issue
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`is deficient because it does not address the Graham factors.
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`V.
`
`PETITIONER CANNOT SHOW THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE UNDER 35 U.S.C. § 103
`
`A. Overview of the Petition
`Petitioner contends that several claims of the ’556 Patent are unpatentable
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`under 35 U.S.C. § 103. Pet. at 8. Notably, no anticipation argument is asserted.
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`Specifically, the Petition alleges:
` Independent claims 5, 13, and 21 are unpatentable under 35 U.S.C.
`
`§ 103 in view of a single reference, U.S. Patent No. 8,351,359 (Ex.
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`1004, “Heo”). Pet. at 8. Although Petitioner also cites to various parts
`
`of three provisional applications to which Heo claims priority,
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`Petitioner does so only for purposes of arguing that Heo is entitled to
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`an earlier effective filing date. Pet. at 3.
` Dependent claims 6, 14, and 22 are unpatentable under 35 U.S.C. § 103
`
`in view of Heo. Pet. at 8.
` Dependent claims 8, 16, and 24 are unpatentable under 35 U.S.C. § 103
`
`in view of Heo and U.S. Patent Application Publication No.
`
`2010/0296467 (“Pelletier”) (Ex. 1008). Pet. at 8.
` Dependent claims 8, 16, and 24 are unpatentable under 35 U.S.C. § 103
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`in view of Heo, Pelletier, and TS 36.213 v8.7.0 (Ex. 1012). Pet. at 8.
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` Dependent claims 8, 16, and 24 are unpatentable under 35 U.S.C. § 103
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`in view of Heo, Pelletier, and R1-103405 (Ex. 1013). Pet. at 8.
` Dependent claims 8, 16, and 24 are unpatentable under 35 U.S.C. § 103
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`in view of Heo, Pelletier, and Chinese Patent Application Publication
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`No. CN 101715207 (Ex. 1014). Pet. at 8.
` Dependent claims 8, 16, and 24 are unpatentable under 35 U.S.C. § 103
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`in view of Heo, Pelletier, and R1-102693 (Ex. 1016). Pet. at 8.
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`As set forth above, Petitioner’s sole challenge to independent claims 5, 13,
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`and 21 is unpatentability under 35 U.S.C. § 103 in view of the single reference, Heo.
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`Should the Board decline to institute trial on independent claims 5, 13, and 21, the
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`Board must also decline to institute trial on all other claims. This is because
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`Petitioner’s arguments with respect to the dependent claims rely entirely on
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`Petitioner successfully invalidating the independent claims under 35 U.S.C. § 103 in
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`view of Heo.1
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`1 This Preliminary Response addresses the Petition’s deficiencies with respect
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`independent claims 5, 13, and 21. CCE reserves the right to address other
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`deficiencies of the Petition in a full Response (and with the support of its own expert)
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`if an inter partes review is instituted.
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`B.
`The Heo Reference does not Disclose an Element of Claims 5, 13
`and 21.
`As set forth in Section IV(B), patent claims cannot be found obvious where
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`an element is not taught, suggested, or disclosed by the prior art. In this case,
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`independent claims 5, 13 and 21 cannot be found obvious in view of Heo because
`Heo does not disclose “preparing a power headroom report control element, based
`on a trigger configured by a base station….[the preparing / preparation] of the power
`headroom report control element includes incorporating a bitmap ….” (emphasis
`
`added). As explained below, Petitioner and its expert acknowledge that Heo fails to
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`disclose this limitation. Pet. at 19; Declaration of Bruce McNair (Ex. 1017) p. 26-
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`27, ¶ 65.
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`Claims 5, 13, and 21 each include the following language: “preparing a power
`headroom report control element, based on a trigger configured by a base
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`station….” Claims 5, 13, and 21 further require the power headroom report control
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`element to include a bitmap:
` Claim 5 states: “the preparing of the power headroom report control
`element includes incorporating a bitmap …”
` Claim 13 states: “the preparing of the power headroom report control
`element includes incorporating a bitmap …”
` Claim 21 states: “preparation of the power headroom report control
`element includes incorporating a bitmap …”
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`This is consistent with disclosure in the ’556 Patent whereby a single trigger
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`configured by the base station causes power headroom reports to be sent for multiple
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`carriers. ’556 Patent at 1:39-45 (“When power headroom reporting is triggered,
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`power headroom reports on all the scheduled CC (or serving cells) or configured
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`CC (or configured serving cells) should be reported.”)
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` As Petitioner admits, Heo discloses numerous embodiments. Pet. at 19. With
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`respect to the bitmap, the Petition appears to rely on particular embodiment(s) found
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`at 10:57-60 and 11:4-15 of Heo. Pet. at 18-19. In this disclosure, Heo does not teach
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`that a single trigger causes preparation of a power headroom control element that
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`incorporates a bitmap. Heo at 10:42-57. Instead, this embodiment of Heo discloses
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`sending power headroom reports only for component carriers which have been
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`individually “triggered”:
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`In yet another alternative for reporting LTE-A power headroom
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`via a MAC control element, a UA transmits the PH of only a certain
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`reporting carrier or of only certain reporting carriers. The disadvantage
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`of transmitting the PH for all reporting carriers, as described in the first
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`alternative given above, is that PH information may be reported
`unnecessarily. In an embodiment, to reduce signaling overhead, the
`UA transmits PH information only for a carrier or carriers for which
`a specific event trigger occurs or when that carrier's PUSCH is
`scheduled. Different dl-PathlossChange, periodicPHR-Timer, and/or
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`prohibitPHR-Timer can be configured for each carrier or for a subset
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`of carriers. In case where multiple events are triggered, PHs of all
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`triggered carriers can be transmitted. For example, when the path loss
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`difference is larger than a preconfigured threshold in carrier #1, UA
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`would transmit the PH only for carrier #1.
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`Heo at 10:42-57 (emphasis added). According this embodiment, if one trigger “goes
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`off,” only one carrier’s power headroom report will be sent. Heo at 10:42-57 (“For
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`example, when the path loss difference is larger than a preconfigured threshold in
`carrier #1, UA would transmit the PH only for carrier #1”). If two triggers “go
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`off,” two carrier’s power headroom reports will be sent. Heo at 10:42-57 (“In case
`where multiple events are triggered, PHs of all triggered carriers can be
`transmitted.”). Heo states that reporting power headroom reports only for carriers
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`that are individually triggered is a mechanism to “reduce signaling overhead.” Heo
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`at 10:48-51.
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`Heo mentions using a bitmap: “To indicate to the access node which reporting
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`carriers’ PHs are being transmitted, additional signaling, such as a bitmap, is
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`included with a PH report.” Heo at 10:57-60. Heo, however, does not identify any
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`association between the carrier-specific triggers and the preparation of the bitmap.
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`Heo does not teach, suggest, or disclose “preparing a power headroom report control
`element, based on a trigger configured by a base station… [the preparing /
`preparation] of the power headroom report control element includes incorporating
`a bitmap ….” (emphasis added) as recited in the independent claims.
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`Notably, the Petition admits this limitation is not disclosed by the Heo
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`reference:
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`Therefore, to the extent that Heo does not explicitly disclose certain
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`features of power headroom reporting together in a single embodiment
`(as may be required to find anticipation) (for example preparing a
`power headroom control element including the above-described
`bitmap, based on a trigger periodicPHR-Timer)….
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`Pet. at 19 (emphasis added). Likewise, Petitioner’s expert admits that Heo does not
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`disclose a functional relationship between the bitmap and triggers:
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`It is further noted that the drafters of the Heo patent describe many
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`features using terms such as “alternatively,” “in an embodiment,” “in
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`some embodiments,” “in another technique,” etc. However, one of
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`ordinary skill in the art would have understood that the various
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`disclosed features, techniques, and methods could be combined and/or
`integrated with each other. For example, although the bitmap and
`triggers are not explicitly described to function together in any
`particular manner, it is obvious that they may simply be considered as
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`different features or options of Heo’s PHR system.
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`Declaration of Bruce McNair (Ex. 1017) at 26-27, ¶ 65 (emphasis added). Critically,
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`Petitioner does not seek to satisfy this missing limitation with disclosure from
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`another embodiment of Heo (or from another source). Thus, Petitioner has not
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`shown that Heo discloses the limitation “preparing a power headroom report control
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`element, based on a trigger configured by a base station … [the preparing /
`preparation] of the power headroom report control element includes incorporating
`a bitmap ….”
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`Not only does Heo fail to disclose an association between a trigger and the
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`preparation of the bitmap, the Heo “bitmap” embodiment cited by Petitioner (Heo at
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`10:42-57) relies on multiple triggers to achieve its stated purpose:
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`To reduce signaling overhead and to reduce the unnecessary reporting
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`of power overhead reports, only certain carriers are reported. (Ex. 1004:
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`10:42-51.) (See also Ex. 1005: ¶ 57; Ex. 1006: ¶ 58; Ex. 1007: ¶ 58.)
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`For example, triggers, using variables such as dl-PathlossChange,
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`periodicPHR-Timer, and prohibitPHR-Timer, may be used
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`to
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`determine which carriers are to send power headroom reports. (Ex.
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`1004: 10:51-55.) (See also Ex. 1005: ¶¶ 35, 36; Ex. 1006: ¶¶ 36, 37, 58;
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`Ex. 1007: ¶¶ 36, 37, 58.)
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`Pet. at 17-18. As set forth above, the Heo embodiment at issue is expressly
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`concerned with “reduction of signaling overhead.” Heo at 10:42-51. Heo’s
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`“bitmap” embodiment purports to achieve reduction in signaling overhead by only
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`sending power headroom reports for carriers that are individually triggered. Heo at
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`10:48-51. The Heo “bitmap” embodiment expressly criticizes the practice of
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`transmitting the PH for all reporting carriers as “unnecessary.” Heo at 10:45-47. If
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`only one carrier was triggered, only one power headroom report would be sent. Heo
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`at 10:42-51. Therefore, according to Heo’s disclosure, preparing and sending a
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`bitmap designed to report for multiple carriers when only one carrier’s power
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`headroom report is triggered would increase signaling overhead, thereby defeating
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`the stated purpose of the embodiment. As discussed above, if the combination of
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`elements changes the principle of operation of the prior art device being modified,
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`there is no prima facie case of obviousness. See In re Ratti, 270 F.2d at 813 Id.
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`In summary, the bitmap embodiment of Heo relied upon by Petitioner does
`not disclose “preparing a power headroom report control element, based on a trigger
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`configured by a base station … [the preparing / preparation] of the power headroom
`report control element includes incorporating a bitmap ….” This is admitted by
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`Petitioner and its expert. Petitioner fails to satisfy this missing element with other
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`disclosure from Heo (or from another source). This deficiency, by itself, requires
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`denying institution. See 37 C.F.R. § 42.104(b)(4) (“The petition must specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon”). Additionally, Heo’s teaching of using multiple triggers in connection
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`with a bitmap cannot be used to disclose use of a single trigger for causing
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`preparation of a bitmap as this would change the principle of operation of Heo and
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`be inconsistent with Heo’s stated objectives.
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`C.
`The Petition and Expert Declaration do not Follow the
`Graham Framework and are Deficient.
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`Petitions for inter partes reviews must address the Graham factors. See
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`Section IV(B), above. The Petition at issue is wholly deficient in this regard.
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