Filed on behalf of Cellular Communications Equipment LLC
`By: Terry A. Saad (tsaad@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Daniel F. Olejko (dolejko@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`
`Case IPR2016-01493
`U.S. Patent No. 8,457,676
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,457,676
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`By: Terry A. Saad (tsaad@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Daniel F. Olejko (dolejko@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`
`Case IPR2016-01493
`U.S. Patent No. 8,457,676
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,457,676
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`IPR2016-01501
`Patent 8,457,676
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`
`
`I.
`
`II. OVERVIEW OF THE TECHNOLOGY OF THE ’676 PATENT .................. 2
`
`III. CLAIM CONSTRUCTION ........................................................................... 12
`
`A. Applicable Legal Principles .................................................................... 14
`
`B. “memory including software . . . configured, with the at least one
`processor, to cause the apparatus to at least: determine that a set of
`at least one triggering criterion is met.” ................................................ 16
`
`
`C. Construction of Other Claim Terms ....................................................... 22
`
`
`IV. ARGUMENT .................................................................................................. 22
`
`A. Dr. Haas Has Not Conducted an Analysis From the Perspective of a
`Person of Ordinary Skill in the Art. ...................................................... 22
`
`
`B. Petitioners Have Failed to Show by A Preponderance of Evidence
`That Fong in View of Ericsson Renders Claims 1 and 19 Obvious. .... 24
`
`
` Unlike the ’676 Patent, Fong Describes a CDMA2000 System. .....25
`
`
`
`
`
`
`
`
`
` Fong does not disclose the limitation “wherein said at least one
`threshold is adjustable via a signal to the user equipment.” .............30
`
` Fong and Ericsson do not disclose the limitation “wherein the set of
`at least one triggering criterion comprises a criterion being met
`based on reaching a threshold of the at least one threshold of k
`transmission time intervals following a previous power control
`headroom report, wherein k is an integer.” ......................................34
`
` Fong and Ericsson do not disclose the limitation “wherein said at
`least one threshold adjustable via the signal comprises adjusting the
`threshold integer k.” ..........................................................................46
`
`I
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`C. Fong In View of Ericsson and in Further View of Bark Does Not
`Render Obvious Claims 3 and 21 of the ’676 Patent. ........................... 48
`
`
` Dr. Haas fails to establish that it would have been obvious to
`combine Bark with Fong and Ericsson to arrive at the invention of
`the ’676 patent. .................................................................................49
`
`
`
` Bark does not disclose “a triggering criterion such that an absolute
`difference between current and most recent path loss measurements
`has reached a threshold of difference.” ............................................55
`
`
`V. CONCLUSION .............................................................................................. 60
`
`
`
`
`
`
`II
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`
`PATENT OWNER’S EXHIBIT LIST
`
`
`Exhibit No. Description
`
`Excerpts from LTE - The UMTS Long Term Evolution: From
`Theory to Practice, Stefania Sesia, Issam Toufik, Matthew
`Baker, John Wiley & Sons, 2011
`
`Excerpts from UMTS Networks: Architecture, Mobility and
`Services, Heikki Kaaranen, John Wiley & Sons, 2005
`
`Excerpts from Fundamentals of LTE, Arunabha Ghosh, Jun
`Zhang, Jeffrey G. Andrews, Rias Muhamed, Prentice Hall,
`2010
`
`3GPP2 C.S0001-D_v1.0_031504
`
`EX. 2005 - Analyzing W-CDMA Performance During
`Compressed-Mode Handovers
`
`Haas Deposition Transcript
`
`Declaration of Dr. Jay P Kesan
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`
`
`III
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`I.
`
`INTRODUCTION
`
`Patent Owner Cellular Communications Equipment LLC (“CCE” or “Patent
`
`Owner”) hereby files this response (“Response”) to the Petition (Paper 1) (the
`
`“Petition”) for Inter Partes Review of U.S. Patent No. 8,457,676 (Ex. 1001) (the
`
`“’676 Patent”) in IPR2016-011493 filed by Apple, Inc. (“Apple” or “Petitioner”) on
`
`the grounds instituted for trial by the Decision (Paper 7) of the Patent Trial and
`
`Appeal Board.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. § 316(e). Petitioner has failed to carry that burden for the
`
`reasons outlined below.
`
`In its Institution Decision, the Board instituted trial on Petitioner’s challenges
`
`to claims 1, 3, 19, and 21 based on the following grounds of unpatentability:
`
` Obviousness under 35 U.S.C. 103(a) of claims 1 and 19 of the ’676
`
`patent in view of U.S. Patent App. Pub. No. 2004/0223455 A1 (“Fong”)
`
`in further view of R2-052744, FILTERING FOR UE POWER
`
`HEADROOM MEASUREMENT, 3GPP RAN WG2 #49 MEETING,
`
`SEOUL, KOREA, NOVEMBER 2, 2005 (“Ericsson”).
`
` Obviousness under 35 U.S.C. 103(a) of claims 3 and 21 of the ’676
`
`patent in view of the combination of Fong, Ericsson, and U.S. Patent
`
`1
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`No. 6,445,917 B2 (“Bark”).
`
`However, the Petitioners’ challenge to the ’676 Patent claims should be
`
`rejected because the suggested combinations of prior art fail to teach or suggest one
`
`or more material limitations of each of the challenged claims. Petitioner’s reliance
`
`on the testimony of Dr. Haas as evidence fails to result in a showing by a
`
`preponderance of evidence that claims 1, 3, 19, and/or 21 are obvious in view of
`
`Fong, Ericsson, and/or Bark.
`
`II. OVERVIEW OF THE TECHNOLOGY OF THE ’676 PATENT
`
`The following provides an introduction to the network technologies related to
`
`the ’676 Patent.
`
`Cellular networks are built on the principle of “cells.” They provide coverage
`
`
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`over large areas by implementing an array of smaller cells that house equipment,
`
`known as base stations, supporting a relatively smaller service area. A large number
`
`of these “cells” are aggregated to provide coverage across a wide area. Base stations
`
`enable mobile devices such as cell phones to communicate with them wirelessly
`
`using certain electromagnetic radio frequencies known as the wireless spectrum.
`
`Companies in this industry invest heavily in the design and optimization of cellular
`
`networks in order to make the most efficient use of the wireless spectrum and to
`
`ensure cellular technologies are implemented in a standardized and uniform manner.
`
`To this end, industry leaders participate in non-profit organizations, such as the
`
`Third-Generation Partnership Project (known as “3GPP”) and the European
`
`Telecommunications Standards Institute (known as “ETSI”), to share responsibility
`
`for developing and publishing cellular technology standards. An example of specific
`
`cellular standards relevant to the ’676 Patent are the LTE and LTE-Advanced
`
`standards. LTE is a fourth generation, or 4G network technology and provides
`
`advancements over the earlier second and third generation cellular technologies
`
`known as GSM, 2G, and UMTS, 3G. LTE supports data communication via packet-
`
`switched services such as web browsing, electronic mail, text chat sessions, file
`
`transfers, interactive game sessions, voice-over-IP (Internet Protocol) sessions, and
`
`so forth.
`
`In a multiuser environment, a number of users share the same radio resources.
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`3
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`A consequence of the limited availability of radio channels in the network is that the
`
`same channel has to be assigned to many users. Thus, a signal intended for a certain
`
`user will reach other users, possibly introducing interference to their connection and
`
`degrading system quality. A mobile device with a very good quality connection may
`
`use lower power and still have acceptable quality. The advantage is that it will
`
`disturb other users less, thereby improving the quality of their connection. Power
`
`control provides this power management in a controlled manner.
`
`In particular, the ’676 Patent describes techniques for sending power
`
`headroom reports to the base station if one or more conditions, known as triggers,
`
`are met. In an LTE system, multiple mobile devices in a single cell transmit
`
`simultaneously to the base station. One important consideration for these
`
`transmissions is power. All mobile device transmissions require power, and different
`
`circumstances may require higher or lower power transmissions.
`
`Managing power constraints presents several challenges. For example, in
`
`favorable conditions a low power level may suffice. However, a mobile device
`
`moving away from a cell may need to increase its power to maintain a set data
`
`transmission rate. Typically, for various reasons, mobile devices are subject to a
`
`maximum power level for their transmissions.
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`4
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`Additionally, a mobile device transmitting on a single code at a specified
`
`power may also need to concurrently transmit using a second code. This increases
`
`the total power output of the device, but again this cannot exceed the device’s
`
`
`
`maximum power level.
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`5
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`
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`To avoid exceeding the maximum transmission power, mobile devices keep a
`
`power headroom, which represents the difference between the maximum power and
`
`the current transmission power. Before increasing the transmission power, the
`
`mobile device ensures that the increase does not exceed the existing power
`
`headroom.
`
`The Problem to be Solved
`
`In an LTE system, the base station, known as an e-Node B, must allocate
`
`resources such as bandwidth across numerous mobile devices known also as “User
`
`Equipment” or “UE.” Cellular phones represent one type of UE. As the ’676 Patent
`
`explains, in order for the base station to properly make these allocations, it needs to
`
`be aware of the power levels at which the UEs are transmitting. For instance, before
`
`6
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`allocating additional resource to a UE, it would be helpful for the base station to
`
`know how much additional resource that UE can handle.
`
`
`
`To this end, the UEs send Power Headroom Reports to the base station. But
`
`there is a trade-off between the value of this information and the overhead of sending
`
`it to the base station. As such, any report from the UE to the base station comes at a
`
`cost to the overall throughput capacity (system uplink capacity) for the system. Thus,
`
`the inventors sought a way to eliminate unnecessary cost by implementing power
`
`headroom reporting on a limited, controlled basis.
`
`The Inventive Solution Provided by the ’676 Patent
`
`The solution, in one embodiment illustrated particularly in Figure 3 of the
`
`‘676 Patent, was to implement certain threshold parameters at the UE, which can be
`
`adjusted by the base station.
`
`7
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`
`
`The ’676 Patent, titled “Power Headroom Reporting Method” was filed on
`
`June 23, 2008 and claims priority to its provisional application filed on June 20,
`
`2007 and was disclosed as potentially essential to the LTE standard. The ’676 Patent
`
`is directed to an apparatus and method that “provides specific reporting criteria that
`
`are an attractive trade-off between signaling overhead versus overall uplink
`
`performance for LTE.” ’676 Patent at 4:32-35.
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`8
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`
`
`When the UE determines that a threshold from a set of one or more criterion
`
`has been reached, it triggers sending a Power Headroom Report to the base station.
`
`The inventors discovered the following triggering criteria “are found to be very
`
`efficient for sending a power control headroom report in the uplink, while optimizing
`
`uplink performance, and while minimizing signaling overhead.” ’676 Patent
`
`at 4:35-38. Further, the triggering criterion “includes a threshold having been
`
`reached, and the threshold is adjustable via a signal to the user equipment from a
`
`base station.” Id. at Abstract.
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`9
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`
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`After receiving the Power Headroom Report, the base station can provide a
`
`power control correction command to the UE, which adjusts its signals accordingly.
`
`By providing Power Headroom Reports on a specifically controlled basis, the ’676
`
`Patent allows the base station to make optimal radio resource management decisions,
`
`while minimizing the impact the power headroom reporting has on the throughput
`
`capacity for the system.
`
`One important goal of the ’676 Patent is “to (partly or fully) compensate the
`
`path-loss (including antenna-pattern, distance dependent path-loss and shadowing)
`
`between the eNode-B and the terminal.” ’676 Patent at 4:3-5. To this end, the
`
`inventors found that measurement of path-loss “based on the DL [downlink] (e.g.
`
`DL pilot channel)” was an effective parameter to analyze for optimizing the trade-
`
`offs. Id. at 4:2-7. The inventors found that “[e]ven if the frequency of potential power
`
`10
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`adjustments at the terminal is high but the measured path-loss is not changing, [then]
`
`UL signaling would be a waste of resources.” Id. at 4:7-14. The issue for reporting
`
`then becomes the potential misinterpretation of closed loop power control
`
`commands from the base station by the UE. Id. This would potentially be a problem
`
`where “relative closed loop power control commands are used (which is also the
`
`working assumption in 3GPP).” Id. at 4:14-17.
`
`To solve the above problems, the inventors came up with a method of
`
`triggering power headroom reports only under specific conditions as recited, for
`
`example, in claim 1 of the ’676 Patent:
`
`[1.] A method comprising:
`
`[1a] determining that a set of at least one triggering criterion is met; and
`
`[1b] providing a power control headroom report on an uplink from user
`
`equipment, in response to determining that the set is met,
`
`[1c-d] wherein said at least one triggering criterion include at least one
`
`threshold having been reached, wherein said at least one threshold is
`
`adjustable via a signal to the user equipment,
`
`[1e] wherein the set of at least one triggering criterion comprises a
`
`criterion being met based on reaching a threshold of the at least one
`
`threshold of k transmission time intervals following a previous power
`
`control headroom report, wherein k is an integer and wherein said at least
`
`one threshold adjustable via the signal comprises adjusting the threshold
`
`integer k.
`
`’676 Patent at 6:26-40. Claim 19 is a counterpart apparatus claim. Although claim
`
`11
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`19’s language differs from claim 1, the analysis provided herein applies to both
`
`claims. Claim 33 recites a network element that receives a power headroom report
`
`in response to a triggering criterion being met and provides a signal for adjusting a
`
`threshold. Claim 33 shares similar claim limitations to claims 1 and 19.
`
`Additionally, the inventors found that adjusting for the path-loss by using a
`
`triggering criterion “such that an absolute difference between current and most
`
`recent path-loss measurements has reached a threshold of difference” for sending
`
`the power control headroom reports was a particularly beneficial parameter. See,
`
`e.g., ’676 Patent at 6:45-47 (claims 3, 21, and 34). In this case, a path loss change
`
`(e.g., entering or leaving a building causing a significant change in path loss)
`
`whether the path loss increases by a certain amount, or decreases by a certain
`
`amount, results in a power headroom report being triggered.
`
`III. CLAIM CONSTRUCTION
`
`The claim terms in the ’676 Patent are given their broadest reasonable
`
`interpretation in the instant proceeding, as the ’676 Patent is an unexpired patent.
`
`See 37 C.F.R. § 42.100(b). Although claim terms are given their broadest reasonable
`
`interpretation, claims are not interpreted in a vacuum but are part of and read in light
`
`of the specification. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116
`
`(Fed. Cir. 1987). Additionally, “claims mean precisely what they say.” Cent.
`
`Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347,
`
`12
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`1355 (Fed. Cir. 2007) (“We look to the words of the claims themselves ... to define
`
`the scope of the patented invention.”) (emphasis added). The words of the claim are
`
`given their ordinary and customary meaning, as would have been understood by one
`
`of ordinary skill in the art in the context of the specification. In re Trans logic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The construction that stays true to the
`
`claim language and most naturally aligns with the inventor’s description is likely the
`
`correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1250 (Fed. Cir. 1998). A claim term is presumed to be given its ordinary and
`
`customary meaning absent the patent clearly setting forth a different definition of
`
`the term in the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`However, the broadest reasonable interpretation must not be “unreasonably broad in
`
`light of the language of the claims and specification.” Microsoft Corp. v. Proxyconn,
`
`Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015) (reversing the PTAB’s final decision for
`
`applying an overbroad claim construction). “A construction that is ‘unreasonably
`
`broad’ and which does not ‘reasonably reflect the plain language and disclosure’ will
`
`not pass muster.” Id. at 1298 (quoting In re Suitco Surface, Inc., 603 F.3d 1255,
`
`1260).
`
`The Petition asks the Board to construe three claim terms: “power control
`
`headroom report,” “absolute difference” and “memory including software . . .
`
`configured, with the at least one processor, to cause the apparatus to at least:
`
`13
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`determine that a set of at least one triggering criterion is met.” In the Institution
`
`Decision, the Board declined to construe “power control headroom report” and
`
`“absolute difference.” The Board further declined to construe the “memory
`
`including software” limitation as a means-plus-function limitation, but suggested
`
`that the parties further “address the interpretation of the processor terms and provide
`
`their respective positions during trial.” Inst. Dec., Paper 7 at 8. Patent Owner agrees
`
`with the Board’s preliminary finding that 35 U.S.C. § 112 ¶ 6 does not apply. Patent
`
`Owner provides its position below.
`
`A. Applicable Legal Principles
`
`Under 35 U.S.C. § 112 ¶ 6, a patentee may elect to express a claim limitation
`
`as a means for performing a specified function, without reciting a particular
`
`structure. See Inventio AG v. Thyssenkrupp Elevator Ams., 649 F.3d 1350, 1355-56
`
`(Fed. Cir. 2011). Such elements are construed to cover the corresponding structure
`
`clearly linked or associated with the claimed function in the specification or file
`
`history, and equivalents of those structures. Med Instrumentation & Diagnostics
`
`Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003).
`
`Use of the word “means” creates a presumption that § 112, ¶ 6 applies.
`
`Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703
`
`(Fed. Cir. 1998). Conversely, “the failure to use the word ‘means’ creates a
`
`presumption that § 112, ¶ 6 does not apply.” Id. at 703–04; see also Williamson v.
`
`14
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`Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). “[W]hen a claim
`
`term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6
`
`will apply if the challenger demonstrates that the claim term fails to recite
`
`sufficiently definite structure or else recites function without reciting sufficient
`
`structure for performing that function.” Williamson, 792 F.3d at 1348 (citations
`
`omitted). Where a claim recites a function, but also provides “sufficient structure,
`
`material, or acts within the claim itself to perform entirely the recited function, the
`
`claim is not in means-plus-function format.” Personalized Media, 161 F.3d at 704.
`
`When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the
`
`structure, materials, or acts described in the specification as corresponding to the
`
`claimed function and equivalents thereof.” Williamson, 792 F.3d at 1347. Construing
`
`a means-plus-function limitation involves two steps. “The first step . . . is a
`
`determination of the function of the means-plus-function limitation.” Medtronic, Inc.
`
`v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). “[T]he
`
`next step is to determine the corresponding structure disclosed in the specification
`
`and equivalents thereof.” Id. This step cannot include “incorporation of structure
`
`from the written description beyond that necessary to perform the claimed function.”
`
`Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
`
`
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`B. “memory including software . . . configured, with the at least one
`processor, to cause the apparatus to at least: determine that a set of
`at least one triggering criterion is met.”
`
`Because the disputed claim limitation does not use the term “means,”
`
`Petitioner bears the burden of presenting evidence to overcome the presumption that
`
`35 U.S.C. § 112 ¶6 does not apply. See Apex Inc. v. Raritan Computer, Inc., 325
`
`F.3d 1364, 1372 (Fed. Cir. 2003). Petitioner has not shown that this limitation, as
`
`understood by one of ordinary skill in the art, demonstrates that the claim term fails
`
`to recite sufficiently definite structure or else recites a function without reciting
`
`sufficient structure for performing that function. Id. at 1373.
`
`The same (or substantially similar) arguments that limitations reciting “a
`
`processor” or “software” performing a function should be governed by § 112 ¶ 6
`
`have been rejected by district courts repeatedly. See, e.g., Smartflash LLC v. Apple
`
`Inc., 77 F. Supp. 3d 535, 562 (E.D. Tex. 2014); Syncpoint Imaging, LLC v. Nintendo
`
`of Am. Inc., No. 2:15-CV-00247-JRG-RSP, 2016 WL 55118, at *18 (E.D. Tex. Jan.
`
`5, 2016); Advanced Mktg. Sys., LLC v. CVS Pharmacy, Inc., No. 6:15-CV-134-JRG-
`
`KNM, 2016 WL 1741396, at *20 (E.D. Tex. May 3, 2016); Uniloc USA, Inc. v.
`
`Autodesk, Inc., No. 2:15-CV-1187-JRG-RSP, 2016 WL 3647977, at *18-20 (E.D.
`
`Tex. July 7, 2016). The courts have found that those terms have a sufficiently definite
`
`meaning as the name for structure. Smartflash, 77 F. Supp. 3d at 562-63 (finding
`
`claim terms reciting “processor” and code” were sufficiently coupled to the code’s
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`or processor’s operation and therefore were not means-plus-function terms),
`
`reconsideration denied, 6:13-CV-447-JRG-KNM, 2015 WL 4208754 (E.D. Tex.
`
`July 7, 2015) (finding that “processor” and “code” are not a nonce words after
`
`Williamson); Syncpoint, 2016 WL 55118 at *18 (finding the phrase “processor . . .
`
`for . . .” connotes sufficiently definite structure to one of ordinary skill in the art);
`
`Advanced Marketing, 2016 WL 1741396 at *20 (finding the phrase “data processor
`
`for” not to be a generic nonstructural term such as the terms “means,” “element,”
`
`and “device” that typically do not connote sufficient structure); Uniloc USA, 2016
`
`WL 3647977 at *20 (finding that the phrase “add-on computer software code”
`
`connotes sufficiently definite structure); see also Williamson, 792 F.3d at 1349.
`
`Other district courts have also rejected the same arguments, finding that terms
`
`such as “processor” and “software” do not fall under 112 ¶ 6 when coupled to their
`
`operations. Collaborative Agreements, LLC v. Adobe Sys. Inc., No. 15-CV-03853-
`
`EMC, 2015 WL 7753293, at *4–8 (N.D. Cal. Dec. 2, 2015) (“code segment [for
`
`performing a function]” found to be sufficiently definite structure on reconsideration
`
`after Williamson because the claim described the operation of the code segment);
`
`Finjan, Inc., v. Proofpoint, Inc., No. 13-CV-05808-HSG, 2015 WL 7770208, at *9–
`
`11 (N.D. Cal. Dec. 3, 2015) (“processor [for performing a function]” found to be
`
`sufficiently definite structure because the claim described how the processor
`
`functions with the other claim components); SuperSpeed, L.L.C. v. Google, Inc., No.
`
`17
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`
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`IPR2016-01501
`Patent 8,457,676
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`H-12-1688, 2014 WL 129225, at *22–23 (S.D. Tex. Jan. 14, 2014) (“executable . . .
`
`code” found to be sufficiently definite structure because the claim describes the
`
`operation of the code).
`
`The Federal Circuit has agreed that terms such as those in dispute here connote
`
`sufficiently definite structure when coupled with a description of the operation.
`
`Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed.Cir.2004)
`
`(finding that “when the structure-connoting term ‘circuit’ is coupled with a
`
`description of the circuit's operation, sufficient structural meaning generally will be
`
`conveyed to persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not
`
`apply”). In Personalized Media, the Federal Circuit reversed the International Trade
`
`Commission’s holding that the term “digital detector for [performing a function]”
`
`was governed by § 112, ¶ 6 and that the claim was indefinite for lack of structure.
`
`Personalized Media, 161 F.3d at 700–01, 703–707. The Federal Circuit held that
`
`“‘detector’ had a well-known meaning to those of skill in the electrical arts
`
`connotative of structure.” Id. at 704–05.
`
`Because the term “processor,” as used in the above limitation and which itself
`
`connotes structure, is coupled to claim language describing the operation of the
`
`processor, the term “processor” would be understood by persons of ordinary skill in
`
`the art to have a sufficiently definite meaning as the name for structure. See
`
`Williamson, 792 F.3d at 1349; Linear Tech, 379 F.3d at 1320. Just as was found in
`
`18
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`
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`Patent 8,457,676
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`Smartflash, Syncpoint, and Advanced Marketing, the term “processor” is not a nonce
`
`word such as “means,” “element,” or “device” in the context of these claims because
`
`it connotes a well-understood structure having sufficient definition within the art.
`
`Smartflash, 77 F. Supp. 3d at 562-63; Smartflash, 2015 WL 4208754 at *3;
`
`Syncpoint, 2016 WL 55118 at *18; Advanced Marketing, 2016 WL 1741396 at *20.
`
`Further, the claim itself includes the “objectives or operations” of the processor.
`
`Linear Tech., 379 F.3d 1311, 1320-21.
`
`The “memory including software” claim limitation would be understood by
`
`persons of ordinary skill in the art to have a sufficiently definite meaning as the name
`
`for structure. See Williamson, 792 F.3d at 1349; Linear Tech, 379 F.3d at 1320. The
`
`limitations recite structure in the form of memory, software, and a processor. Each
`
`of these claimed elements has its own well-understood structure, and when
`
`combined together, as the claim limitations do, connotes more than sufficient
`
`structure, such that a person of ordinary skill in the art is informed of the definition
`
`of the claim limitation by far more than the mere function that these elements
`
`perform. Kesan Decl. at ¶¶ 46-51.
`
`Though the recital of a processor is sufficient to end this inquiry and find that
`
`these limitations are not governed by § 112 ¶ 6, the recitation of “memory” and
`
`“software” provide even further structure beyond the processor. Each of these
`
`claimed elements connote their own structure that is sufficiently definite to end the
`
`19
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`IPR2016-01501
`Patent 8,457,676
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`inquiry. See Kesan Decl. at ¶¶ 46-51. Like “processor” and “code,” “memory” is not
`
`a generic nonstructural term such as “means,” “element,” or “device.” See Advanced
`
`Marketing, 2016 WL 1741396 at *20; see also Smartflash, 77 F. Supp. 3d at 562-
`
`63. “Memory” has a well-known structure that a person of ordinary skill would have
`
`no problem understanding. Kesan Decl. at ¶ 48. The ’676 patent provides examples
`
`of the various memory structures that would be known to a person of skill in the art:
`
`“A memory may comprise any known type of data storage and/or transmission
`
`media, including magnetic media, optical media, random access memory (RAM),
`
`read-only memory (ROM), a data cache, a data object, etc. Moreover, similar to the
`
`CPU, the memory may reside at a single physical location, comprising one or more
`
`types of data storage, or be distributed across a plurality of physical systems in
`
`various forms.” ’676 patent at 5:63-6:3.
`
`Additionally, district courts have repeatedly found that software terms
`
`(including “software code,” “executable . . . code,” “code segment,” and “code”)
`
`have sufficiently definite structure and, when coupled to the operations performed,
`
`are not means-plus-function limitations. Smartflash, 77 F. Supp. 3d at 562-63;
`
`Smartflash, 2015 WL 4208754 at *3; Uniloc USA, 2016 WL 3647977 at *20;
`
`Collaborative Agreements, 2015 WL 7753293 at *4–8; SuperSpeed, 2014 WL
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`129225 at *22–23. Each of the recited structural elements—“processor,” “memory,”
`
`and “software,”—have sufficient structure on their own, and when paired with each
`
`20
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`
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`IPR2016-01501
`Patent 8,457,676
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`other, the elements form a system with an undeniably sufficient structure. See Kesan
`
`Decl. at ¶¶ 46-51. Petitioner’s attempt to improperly characterize this claim
`
`limitation should be rejected.
`
`The operation performed by the processor, memory, and software is provided
`
`by claim 19. See Kesan Decl. at ¶¶ 49-50. The claim requires these elements to
`
`determine that a set of at least one triggering criterion is met. But additionally, the
`
`claim describes how this “determining” operation is performed in great detail. See,
`
`e.g., id. at 8:4-10 (“wherein the set of at least one triggering criterion comprises a
`
`criterion being met based on reaching a threshold of the at least one threshold of k
`
`transmission time intervals following a previous power control headroom report,
`
`wherein k is an integer and wherein said at least one threshold adjustable via the
`
`signal comprises adjusting the threshold integer k.”). See Kesan Decl. at ¶¶ 49-50.
`
`Thus, claim 19 recites sufficient structure for the “memory including software
`
`. . . configured, with the at least one processor,” such that a person of ordinary skill
`
`can easily understand the structure, scope, and definition of the claimed limitations.
`
`See Kesan Decl. at ¶¶ 46-51. Accordingly, each of the above claim limitations
`
`reciting a “memory including software” is not a means-plus-function limitation
`
`requiring construction under 35 U.S.C. § 112 ¶ 6.
`
`If the Board determines that these limitations should be construed under § 112
`
`¶ 6, the corresponding structure, under the broadest reasonable interpretation, is a
`
`21
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`IPR2016-01501
`Patent 8,457,676
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`memory including software and at least one processor. See ’676 patent at 5:56-6:3;
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`Kesan Decl. ¶ 52. To the extent it is necessary, an algorithm for “determine that a
`
`set of at least one triggering criterion is met” is disclosed in both the claims and the
`
`specification. See ’676 patent, claims 19, 21, 23-26; id. at 4:35-5:5; Kesan Decl. at
`
`¶¶ 53-54. The algorithm for “provide a power control headroom report in an uplink
`
`from user equipment, in response to the set having been met” is described in the ’676
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`patent at 5:28-35. Kesan Decl. ¶ 55.
`
`C. Construction of Other Claim Terms
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`If the Board determines further consideration of the construction of any of the
`
`terms offered for construction by the Petition is necessary, Patent Owner
`
`incorporates its analysis from the Preliminary Response herein by reference (Patent
`
`Owner Preliminary Response, Paper 6 at 13-17) and reserves the right to further
`
`address any issues raised by the Board or Petitioners.
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`IV. ARGUM
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