`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner
`________________
`
`IPR2016-01493
`Patent 8,457,676 B2
`
`________________
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`i
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ................................................................................................ 1 
`
`II.  CLAIM CONSTRUCTION.................................................................................. 1 
`
`III.  PETITIONER’S OBVIOUSNESS ANALYSIS WAS PROPERLY
`PERFORMED ............................................................................................................ 2 
`
`A.  The Obviousness Analysis Did Not Need To Address LTE Because the
`Claims Are Not Directed to LTE .................................................................. 2 
`
`B.  Fong and Ericsson Are Properly Combinable .............................................. 4 
`
`IV. INDEPENDENT CLAIMS 1 AND 19 ARE OBVIOUS .................................... 5 
`
`A.  Fong Discloses “wherein said at least one threshold is adjustable via a
`signal to the user equipment” ....................................................................... 5 
`
`1.  Fong’s MIN_DURATION Threshold is Adjustable ............................... 6 
`
`2.  Patent Owner’s Assumption That “Predetermined” Means “Not
`Adjustable” Is Incorrect ................................................................................. 9 
`
`B.  Fong in View of Ericsson Discloses “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” ....................................................................................................... 10 
`
`1.  Patent Owner’s Argument About MIN_DURATION in
`Milliseconds Has No Merit ......................................................................... 11 
`
`2.  Patent Owner Attacks the References Individually .............................. 14 
`
`3.  Ericsson Teaches Sending Power Headroom Reports at
`Specified Intervals ....................................................................................... 15 
`
`4.  Ericsson Discloses the Claimed “k is an integer” ................................. 18 
`ii
`
`

`

`
`
`5.  Patent Owner is Incorrect that the Combination Substitutes the
`TTIs of Ericsson for Fong’s Uniform Time Intervals ................................. 20 
`
`6.  Patent Owner’s Argument About Fong and CDMA2000 Fails ............ 20 
`
`C.  Fong in View of Ericsson Discloses “wherein said at least one
`threshold adjustable via the signal comprises adjusting the threshold
`integer k” .................................................................................................... 21 
`
`V.  DEPENDENT CLAIMS 3 AND 21 ARE OBVIOUS ...................................... 22 
`
`A.  Patent Owner’s Continued Focus on LTE and Isolated Disclosures
`Fails ............................................................................................................. 23 
`
`B.  Bark Teaches “a triggering criterion such that an absolute difference
`between current and most recent path-loss measurements has reached a
`threshold of difference” .............................................................................. 24 
`
`1.  Petitioner Does Not Rely on Bark for Disclosing Power
`Headroom .................................................................................................... 24 
`
`2.  Patent Owner’s Arguments Fail To Account For Bark’s Explicit
`Disclosure of Measuring “Change” In a Parameter .................................... 25 
`
`VI. CONCLUSION .................................................................................................. 28 
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Case Law
`
`In re Keller,
`642 F.2d 413, 426 (CCPA 1981)………………………………………….15
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 419 (2007)………………………………………………….4
`
`
`Outdry Techs. Corp. v. Geox S.P.A.,
`859 F.3d 1364, 1371 (Fed. Cir. 2017)………………………………………4
`
`
`
`iv
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`I.
`
`INTRODUCTION
`Patent Owner’s Response is predicated upon the premise that the challenged
`
`claims of the ’676 Patent are applicable only to the LTE standard. This premise is
`
`false, as established by the claim language and the specification, and confirmed by
`
`Patent Owner’s expert during cross-examination. The Response is also permeated by
`
`an incorrect understanding of obviousness—one that requires the motivation to
`
`combine elements to be the same motivation as the asserted patent. The Federal
`
`Circuit has held that that there is no such requirement.
`
`Additionally, when addressing individual claim elements, Patent Owner attacks
`
`the prior art references individually and ignores their combined teachings and explicit
`
`disclosures. For example, Patent Owner alleges that Fong’s teachings are limited to
`
`one particular wireless standard and could not be combined with other references
`
`directed to different standards, while ignoring Fong’s explicit disclosure that its
`
`teachings are applicable to other wireless communication standards and protocols.
`
`The arguments raised by Patent Owner are without merit, and the challenged
`
`claims should be found unpatentable.
`
`II. CLAIM CONSTRUCTION
` There is no material dispute on claim construction.
`
`Petitioner agrees with the Board in the Decision to Institute that no further
`
`construction of the “processor” terms is necessary.
`
`1
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`Petitioner proposed a construction of “absolute difference” as “absolute
`
`value of a difference” in the Petition, and Patent Owner agrees with Petitioner’s
`
`construction.
`
`Both Petitioner’s and Patent Owner’s proposed constructions of “power
`
`control headroom report” include “a report containing power headroom,” which is
`
`demonstrated by the prior art. Thus, Petitioner does not dispute Patent Owner’s
`
`proposed construction, as the construction does not impact any argument.
`
`III. PETITIONER’S OBVIOUSNESS ANALYSIS WAS PROPERLY
`PERFORMED
`
`
`A. The Obviousness Analysis Did Not Need To Address LTE Because
`the Claims Are Not Directed to LTE
`
`
`
`Patent Owner argues that the obviousness analysis was not properly
`
`performed because the obviousness analysis did not address the LTE (Long Term
`
`Evolution) cellular standard. This argument permeates Patent Owner’s analysis of
`
`both independent claims 1 and 19, see, e.g., Response (Paper No. 12, May 22,
`
`2017) at 22-30, and dependent claims 3 and 21, see, e.g., Response at 50-52. Patent
`
`Owner also argues that the motivation to combine should address the problems
`
`associated with the LTE protocol. See, e.g., Response at 29-30.
`
`Patent Owner references LTE eleven times in its opening arguments
`
`(Section IV-A), criticizing the prior art as not being directed to LTE and criticizing
`
`Petitioner’s expert as not considering specific features of LTE in his analysis of the
`
`2
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`Fong/Ericsson combination. See Response at 22-24. Patent Owner persists with the
`
`same arguments with respect to the Fong/Ericsson/Bark combination. See
`
`Response at 50-52. However, whether Petitioner considered LTE in the analysis of
`
`the prior art is irrelevant, because the challenged claims do not require, and are
`
`not limited to, LTE.
`
`For example, the ’676 patent itself indicates that the claims, which include
`
`no LTE limitations, are not limited to LTE:
`
`“Although the present invention is applicable in the context of the E-
`UTRAN (LTE or 3.9G), its principles are not limited to such an
`environment, and instead may also be applicable to various other
`current and future wireless telecommunications systems and access
`technologies.”
`APPL-1001 at 4:28-32. Additionally, Patent Owner’s expert admitted that the
`
`claims are not limited to LTE:
`
`Q Okay. So looking just at the claim terms, would you agree with
`me that there’s not a single claim term in any of the claims at issue in
`this case that restrict the scope of the claims to the LTE network?
` A There’s no such limitation in the claim.
`APPL-1020, 40:5-10.
`
`Further, any implication that invalidity requires the prior art to address the
`
`same problem as the ’676 patent is legally incorrect. The alleged problem solved
`
`by the ’676 patent is irrelevant to whether Fong and Ericsson invalidate the claims
`
`3
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`because, according to KSR: “[i]n determining whether the subject matter of a
`
`patent claim is obvious, neither the particular motivation nor the avowed purpose
`
`of the patentee controls. What matters is the objective reach of the claim. If the
`
`claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 419 (2007) (emphasis added). As a corollary, the
`
`Federal Circuit has explained that “[t]he motivation supported by the record and
`
`found by the Board need not be the same motivation articulated in the patent for
`
`making the claimed combination.” Outdry Techs. Corp. v. Geox S.P.A., 859 F.3d
`
`1364, 1371 (Fed. Cir. 2017) (emphasis added). Thus, any argument that
`
`obviousness requires a POSITA to combine prior art references for the same
`
`reasons given in the ’676 patent is meritless.
`
`B.
`Fong and Ericsson Are Properly Combinable
`Fong is directed to methods for “efficiently manag[ing] loading of the
`
`reverse wireless link for packet-switched communications,” APPL-1003, ¶ 9. In
`
`order to illustrate these methods, Fong discusses an example communication
`
`network that is based upon the CDMA2000 protocol. APPL-1003, ¶ [0018]. Fong,
`
`is explicit, however, that its example communication network could utilize many
`
`different protocols:
`
`Referring to FIG. 1, a wireless or mobile communications network
`according to one embodiment includes components that operate
`according to CDMA (code-divisional multiple access) 2000. …
`
`4
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`However, in other embodiments, other types of wireless protocols
`can be used for communications in the wireless communications
`network, including other versions of CDMA, TDMA protocols,
`UMTS (Universal Mobile Telecommunications System) protocols,
`and other protocols.
`APPL-1003, ¶ 18 (emphasis added).
`One of the “other types of wireless protocols” disclosed in Fong is “the
`
`3GPP (Third Generation Partnership Project) UMTS (Universal Mobile
`
`Telecommunications System) Release 1999 Standard.” Id., ¶ 8 (emphasis added).
`
`Correspondingly, Ericsson teaches that its techniques are applied in a wireless
`
`network using 3GPP protocols. APPL-1004, p. 2 (Ericsson presents a “[p]roposal
`
`… based on the existing requirements in 3GPP TS 25.331 as outlined in this
`
`document.”); see also APPL-1006, ¶ 53 and Ex. 2007, ¶ 90. For these and the other
`
`reasons set forth in the Petition, Ericsson and Fong would have been combined.
`
`Patent Owner’s arguments about the characteristics and/or functionality of LTE are
`
`irrelevant, for the reasons given in Section III-A.
`
`IV.
`
`INDEPENDENT CLAIMS 1 AND 19 ARE OBVIOUS
`A.
`Fong Discloses “wherein said at least one threshold is adjustable
`via a signal to the user equipment”
`Fong teaches “wherein said at least one threshold is adjustable via a signal
`
`to
`
`the user equipment.”
`
` Fong discloses an example
`
`threshold called
`
`MIN_DURATION. APPL-1003, ¶¶ 45, 52. In Fong, a trigger parameter (e.g.,
`
`5
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`MIN_DURATION) is transmitted to user equipment at various times: (i) as part of
`
`a call setup procedure, (ii) at any time during an active state, and/or (iii) during
`
`handoff procedures. APPL-1006, p. 35; see also APPL-1003, ¶ 43. Relying on
`
`Fong’s teachings and Petitioner’s expert, Petitioner presented an example in which
`
`a trigger parameter is one value (value A) prior to handoff, when a user equipment
`
`is connected to one base station, and a second value of trigger parameter (value B)
`
`is transmitted to user equipment during handoff to another base station, thus
`
`“adjusting” the trigger parameter. See Pet. at 29.
`
`1.
`
`Fong’s MIN_DURATION Threshold is Adjustable
`
`Patent Owner alleges that Fong intended for the parameters to be sent only
`
`once “as part of the call setup and without subsequent signals for adjusting those
`
`parameters.” Response at 33. However, Patent Owner’s position ignores Fong’s
`
`explicit disclosure.
`
`As discussed above, Fong discloses sending trigger parameters (i) as part of
`
`a call setup procedure, (ii) at any time during an active state, and/or (iii) during
`
`handoff. APPL-1006 at 34-35. Handoff allows a radio connection to continue
`
`when a mobile station moves from one base station to another. APPL-1020,
`
`114:17-25; see also APPL-1005, 1:25-28. Both Dr. Kesan and Dr. Haas confirmed
`
`that different base stations in a cellular system do not always use the same
`
`thresholds. For example, Dr. Kesan testified that as a mobile station (a “UE”)
`
`6
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`moves between base stations (“eNodeBs”), transmission conditions may change,
`
`leading to a new threshold:
`
`Q As the UE moves from the country to the city and changes
`eNodeBs that it communicates, the city eNodeB will send a new
`threshold to the UE as it enters the city, correct?
`MR. SAAD: Objection. Form.
`A It may or may not. … Presumably there -- there -- there may be
`a need if -- if you are dealing with a different transmission
`condition.
`APPL-1020, 54:12-55:2 (emphasis added). Also:
`
`Q If the country node sends one threshold for reporting frequency
`and the city node sends a different [threshold] for reporting frequency,
`has the threshold been adjusted?
`MR. SAAD: Objection. Form.
`A I mean, it -- it could be a situation where the criteria for sending
`a power headroom report has changed, so -- so that criteria could be
`changed, yes.
`Id., 62:14-22. Dr. Kesan’s testimony is consistent with Dr. Haas’s explanation of
`
`adjusting thresholds during handover. APPL-1006, p. 35.
`
`Patent Owner seeks to use Fig. 2 as supporting its incorrect conclusion that
`
`trigger parameters are sent only once (during call setup). Fong’s Fig. 2 is
`
`reproduced below.
`
`7
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`
`
`APPL-1003, p. 3. However, Patent Owner’s view on Figure 2 is contradicted by
`
`Fong’s disclosure:
`
`[t]he base station sends (at 104) various messages to the mobile
`station, with such message(s) containing trigger parameters … The
`message(s) sent at 104 … can be sent by the base station to the
`mobile station at any time during the active state of the mobile
`station.
`Further, call setup (i.e., 102) and trigger parameter communication (i.e., 104) are
`
`shown as separate transmissions in Fig. 2, with trigger parameter communication
`
`occurring at “any time during the active state of the mobile station.” Thus, Fong
`
`8
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`explicitly teaches that the trigger parameter can be sent “at any time.” Patent
`
`Owner’s position that Fong discloses sending trigger parameters as part of call
`
`setup only is incorrect.
`
`
`
`Accordingly, the evidence establishes: (1) Fong discloses sending triggers
`
`(e.g., the MIN_DURATION trigger threshold) at the beginning of a call, at any
`
`time, and during handoff; (2) handoff involves transferring a call from one base
`
`station to another while maintaining the connection; and (3) different base stations
`
`may have different transmission conditions and thus different power headroom
`
`reporting thresholds.
`
`Thus, Fong discloses adjusting MIN_DURATION for handoffs between two
`
`base
`
`stations with different
`
`channel
`
`conditions
`
`(and
`
`thus different
`
`MIN_DURATION thresholds) because the threshold changes from A (for one base
`
`station) to B (for a second base station). Fong discloses to a POSITA “wherein
`
`said at least one threshold is adjustable via a signal to the user equipment.”
`
`2.
`Patent Owner’s Assumption That “Predetermined” Means
`“Not Adjustable” Is Incorrect
`
`
`
`Patent Owner argues that Fong’s MIN_DURATION parameter is not
`
`adjustable because the MIN_DURATION is “predetermined.” Response at 31.
`
`Patent Owner’s argument contradicts the evidence of record of how POSITAs in
`
`1999 understood the term “predetermined.” For example, Bark (APPL-1005),
`
`describes a
`
`threshold as “predetermined,” but
`9
`
`further shows
`
`that
`
`this
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`“predetermined” threshold is adjustable, in exactly the same context of trigger
`
`parameters. APPL-1005, 8:12-23. In other words – “predetermined” as used by
`
`POSITAs in 1999 to describe a trigger parameter did not mean the parameter is set
`
`once and never changed again (as alleged by Patent Owner). Rather, Fong’s
`
`description of its trigger parameter MIN_DURATION as “predetermined” simply
`
`means, to a POSITA, that the threshold was determined prior to performing the
`
`calculation that compares the time since the last report to MIN_DURATION to
`
`determine if the trigger is satisfied.
`
`B.
`Fong in View of Ericsson Discloses “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”
`Fong teaches a triggering criterion is met by reaching a threshold time
`
`duration (called MIN_DURATION) following a previous reverse request message.
`
`See, e.g., APPL-1003, ¶ 45. Fong also discloses the ability of a mobile station to
`
`track time durations in uniform time periods. APPL-1006, ¶ 55. For example,
`
`Fong’s mobile station tracks data rate during 10 ms intervals. Id., p. 36. As another
`
`example, Fong’s mobile station shows multiple uniform time periods between
`
`control messages on the reverse request channel. Id., ¶ 55. Petitioner did not rely
`
`on these teachings as disclosing the claimed TTIs. Instead, Petitioner relied on
`
`10
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`Ericsson’s teaching of measuring the time between successive transmissions of
`
`power headroom information in units of TTIs. APPL-1004, p. 2.
`
`Accordingly, as set forth more fully in the Petition, because Fong’s system
`
`discloses a threshold parameter based on waiting an integer number of uniform
`
`time periods between successive reverse request messages containing power
`
`headroom information, and Ericsson discloses using an integer number of TTIs as
`
`the length of time between transmitting power headroom information, the solution
`
`of Fong and Ericsson render obvious the disputed claim element. Pet. at 16-19 and
`
`33-35.
`
`Patent Owner makes a number of arguments against the combination of
`
`Fong and Ericsson, all of which fail. We address each in turn.
`
`1.
`Patent Owner’s Argument About MIN_DURATION in
`Milliseconds Has No Merit
`
`Patent Owner argues that, because Fong specifies MIN_DURATION in
`
`milliseconds1, a POSITA would have no reason to combine Fong and Ericsson.
`
`Response at 34-36. However, MIN_DURATION expressed in milliseconds is not
`
`inconsistent with Petitioner’s position that it would be obvious to specify
`
`MIN_DURATION in TTIs, because TTIs are known in the art to be defined in
`
`
`1 Fong does not explictly specify any unit of time, as confirmed by Patent Owner’s
`
`expert. APPL-1020, 115:3-116:19.
`
`11
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`milliseconds. That is, it would have been predictable and advantageous to specify a
`
`parameter allegedly expressed in milliseconds (MIN_DURATION) with a unit
`
`measured in milliseconds (TTI).
`
`For example,
`
`in his deposition, Dr. Kesan admitted
`
`that Fong’s
`
`MIN_DURATION could be equal to lengths of time, such as 10 ms and 20 ms,
`
`that are known in the art to be the length of a TTI or a multiple thereof:
`
`Q Could the parameter MIN_DURATION be specified in any
`fraction of a second?
`A Yes, it could -- I mean, it could be, yes.
`Q In Fong, could the parameter MIN_DURATION be equal to
`ten milliseconds?
`A It is possible. However, that’s probably fairly large, but it's
`certainly possible.
`the parameter
`in Fong,
`that,
`Q Would you agree
`MIN_DURATION could also be equal to 20 milliseconds, 40
`milliseconds, or 80 milliseconds?
`A I mean, I think in those systems, those numbers are certainly
`possible.
`APPL-1020, 116:10-21.
`The values of 10 milliseconds (ms), 20 ms, 40 ms, and 80 ms to which Dr.
`
`Kesan testified were well-known examples of TTI durations, as shown in Fig. 6.13
`
`from a textbook on 3G:
`
`12
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`
`
`APPL-1007, p. 23. Dr. Kesan’s admissions that the MIN_DURATION teaching of
`
`Fong could be 10 ms, 20 ms, 40 ms, or 80 ms directly correlate to the TTI values
`
`already known to POSITAs (1 TTI, 2 TTIs, 4 TTIs, or 8 TTIs, where TTI = 10 ms,
`
`as in APPL-1007).
`
`Not only would it be predictable to specify Fong’s MIN_DURATION in an
`
`integer number of TTIs, but it would also be advantageous. In addition to the
`
`advantages detailed in the Petition, Dr. Haas explained during cross-examination
`
`that it would require a smaller number of bits to encode MIN_DURATION in TTIs
`
`than in milliseconds. Ex. 2006, 160:5-22. That is, the granularity of specifying
`
`MIN_DURATION in units of TTIs, as opposed to milliseconds, means that
`
`MIN_DURATION can be encoded and communicated to user equipment using
`
`fewer bits.
`
`13
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`Accordingly, Fong’s disclosure of MIN_DURATION as a threshold time
`
`value as a trigger parameter for sending power headroom reports, in view of
`
`Ericsson using transmission time intervals (TTIs) to measure time between reports
`
`renders obvious “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.”
`
`2.
`
`Patent Owner Attacks the References Individually
`
`Next, Patent Owner resorts to attacking whether Fong or Ericsson,
`
`individually, disclose the claimed feature at issue. For example, Patent Owner
`
`alleges that “Dr. Haas also identifies the timing diagram provided in Figure 5 of
`
`Fong as an indication that this limitation is disclosed by Fong,” Response at 36,
`
`but, according to Patent Owner, the time period between reverse request messages
`
`“cannot be an integer multiple of transmission time intervals [TTIs],” Response at
`
`39 (emphasis removed). Patent Owner also alleges that the uniform time periods
`
`annotated in Fig. 5 are not the same as a 10 ms interval for transmission of data.
`
`Response at 37. Patent Owner also attacks Ericsson by itself. Response at 40.
`
`Patent Owner’s argument misses the point – Petitioner does not rely on Fong
`
`as disclosing the threshold MIN_DURATION in units of TTIs, as explained above.
`
`Fong discloses that its system is capable of tracking time durations in “uniform
`
`14
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`time periods,” which would have made Ericsson’s measurement of time periods
`
`between power headroom reports in units of TTIs, another uniform time period,
`
`easily implementable. See Pet. at 16-19 and 33-35. Patent Owner’s attack on the
`
`references individually is unavailing. “[O]ne cannot show non-obviousness by
`
`attacking references individually where, as here, the rejections are based on
`
`combinations of references,” In re Keller, 642 F.2d 413, 426 (CCPA 1981),
`
`“[r]ather, the test is what the combined teachings of the references would have
`
`suggested to those of ordinary skill in the art,” id. at 425.
`
`3.
`Ericsson Teaches Sending Power Headroom Reports at
`Specified Intervals
`
`Ericsson teaches measuring the time between successive transmissions of
`
`power headroom information in an integer number of TTIs:
`
`The UPH [UE power headroom] information bits are sent in the
`Scheduling Information, SI, appended at the end of the MAC-e PDU.
`The periodicity of the Scheduling Information sent to node B is
`defined in the order of TTI, with 1 TTI as the shortest report period
`and is configurable through RRC signaling.
`APPL-1004, p. 2 (emphasis added). In other words, Ericsson expressly teaches
`
`specifying a time duration between power headroom reports in units of TTIs (with
`
`“1 TTI” explicitly disclosed, which meets the claimed “k transmission time
`
`intervals…, wherein k is an integer”).
`
`
`
`Patent Owner, instead, argues about what Ericsson does not say:
`
`15
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`“while Ericsson does state that UPH information bits are sent in the
`Scheduling Information, it does not state that UPH is always included
`in the Scheduling Information. Thus, Scheduling Information may be
`sent to the Node B without including UPH in certain circumstances.”
`Response at 41 (emphasis added). But, there is no evidence to support Patent
`
`Owner’s argument, as confirmed by Patent Owner’s expert:
`
`Q Is there anywhere in the Ericsson reference where it states that UPH
`is excluded from scheduling information?
`A I think all it says is that the UPH information is sent in the
`scheduling information.
`APPL-1020, 121:8-12.
`
`Patent Owner relies on conjecture, while ignoring the express teaching of
`
`Ericsson: periodic sending of power headroom reports separated by an integer
`
`number of TTIs.
`
`Moreover, Patent Owner’s conjecture that the power headroom report is not
`
`always sent in the Scheduling Information is contradicted by the ’676 patent itself.
`
`Ericsson is an HSUPA reference, as admitted by Patent Owner, see Response at 40
`
`(“Ericsson is a T-doc submitted to 3GPP … to be implemented in [] HSUPA…”),
`
`and the ’676 patent Background admits that power headroom is part of the
`
`scheduling information of HSUPA:
`
`In HSUPA, the UE Power Headroom (UPH) is part of the Scheduling
`Information (SI), which is transmitted by the UE as part of the MAC-e
`header.
`
`16
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`APPL-1001, 4:18-20. Patent Owner has submitted no evidence that power
`
`headroom is ever excluded from scheduling information in HSUPA.
`
`Next, Patent Owner focuses on other, additional power headroom reports
`
`that could “arbitrarily” be sent. Response at 42. These additional reports are
`
`irrelevant to the teaching Petitioner relies upon. Ericsson plainly states that “[t]he
`
`UPH [UE power headroom] information bits are sent in the Scheduling
`
`Information.” APPL-1004, p. 2. Moreover, Patent Owner’s argument is premised
`
`upon an incorrect claim construction that requires an integer number of TTIs since
`
`the previous report. However, claim 1 requires “reaching a threshold of the at least
`
`one threshold of k transmission time intervals following a previous power
`
`headroom report.” APPL-1001 at 6:36-38 (emphasis added). Because the claim
`
`recites a previous power headroom report rather than the previous power
`
`headroom report (or the most recent), the receipt of an arbitrarily-timed power
`
`headroom after a previous periodic power headroom report does not “corrupt” the
`
`periodicity of the reporting. This is because the next periodic power headroom
`
`report included with the Scheduling Information is still periodic as measured with
`
`respect to a previous power headroom report, regardless of any intervening
`
`arbitrary power headroom report.
`
`
`
`Then, Patent Owner points to Ericsson’s disclosure of “compressed mode”
`
`in which no measurements are reported. Response at 42. However, Dr. Kesan
`
`17
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`confirmed in his deposition that “compressed mode” is not always used. APPL-
`
`1020, 123:10-12 (“Q Does a UE always operate in compressed mode? A. No.”)
`
`Thus, there are periods when periodic reporting is performed “in the order of TTI,”
`
`per APPL-1004 at 2.
`
`4.
`
`Ericsson Discloses the Claimed “k is an integer”
`
`
`
`Patent Owner alleges that the phrase “in the order of TTI” in Ericsson does
`
`not mean that the periodicity of power headroom reporting is measured in integer
`
`multiples of TTIs. Response at 43. This assertion, even if true, is irrelevant because
`
`Ericsson’s disclosure of “1 TTI as the shortest reporting period” satisfies the
`
`claimed “k is an integer,” with k equal to one TTI. See Pet. at 35-36.
`
`
`
`Patent Owner takes the position that “in the order of TTI” means that
`
`Ericsson’s reporting period is “on the order of one TTI,” Response at 43, i.e.,
`
`within an order of magnitude from one TTI, Ex. 2007, ¶ 96. Notably, though,
`
`Patent Owner does not challenge that Ericsson discloses the adjustability of its
`
`reporting period or that Ericsson discloses k=1 TTI as a reporting period, which
`
`provides motivation to specify Fong’s MIN_DURATION as an integer number of
`
`TTIs (e.g., k=1 TTI).2 Fong’s MIN_DURATION threshold combined with
`
`
`
`2 CCE makes a similar argument that even though Ericsson discloses “1 TTI as the
`
`shortest report period,” this “merely provides a minimum report period,” but “does
`
`18
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`Ericsson’s teaching of one TTI satisfies the claim element “at least one threshold
`
`of k transmission time intervals … wherein k is an integer.” Thus, Patent Owner’s
`
`allegation lacks merit on its face.
`
`Even further, Dr. Kesan explained what he understood “in the order of TTI”
`
`in Ericsson to include during his cross-examination:
`
`Q So “in the order of TTI” would include two TTIs, correct?
`A Right.
`Q And three TTIs, correct?
`A Right. Right.
`See APPL-1020, 134:24-135:12 see also 63:8-64:14. Thus, even under Patent
`
`Owner’s expert’s understanding of “in the order of TTI,” Ericsson discloses
`
`example reporting periods of one TTI, two TTIs, and three TTIs and that the
`
`reporting period may be adjusted. Adjusting Fong’s threshold from one of
`
`Ericsson’s values to another of Ericsson’s values (e.g., between one TTI and two
`
`TTIs as MIN_DURATION) teaches “at least one threshold of k transmission time
`
`intervals … wherein k is an integer.”
`
`
`
`not indicate that the report period is set as a threshold of k transmission time
`
`intervals.” Response at 44. This argument fails on its face because a report period
`
`equal to the minimum report period of one TTI is k [i.e., k=1] TTIs.
`
`19
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`5.
`Patent Owner is Incorrect that the Combination Substitutes
`the TTIs of Ericsson for Fong’s Uniform Time Intervals
`
`
`
`Patent Owner next alleges that “the substitution of Ericsson’s ‘TTIs’ for the
`
`‘uniform time intervals’ identified in Figure 5 by Dr. Haas would not be an
`
`obvious substitution.” Response at 44. However, Patent Owner mischaracterizes
`
`Petitioner’s argument, as Petitioner’s arguments do not require substituting TTIs as
`
`the “uniform time intervals” identified in Figure 5. Rather, the Petition sets forth
`
`that Fong discloses a “triggering criterion that is met based upon reaching the
`
`MIN_DURATION threshold of time following the transmission of … power
`
`headroom information,” and Ericsson discloses “specifying a time duration
`
`between subsequent power headroom reports in transmission time intervals
`
`(TTIs).” Pet. at 35. The “uniform time intervals” identified in Figure 5 are simply
`
`evidence supporting the reasons why a POSITA would consider Ericsson’s
`
`teaching. Petitioner does not rely on substituting TTIs for those uniform time
`
`intervals.
`
`6.
`Fails
`
`Patent Owner’s Argument About Fong and CDMA2000
`
`Patent Owner next alleges that Dr. Haas did not consider the differences in
`
`the architecture between Fong and Ericsson, where “the system that Fong is
`
`directed to (CDMA 2000) and the system that Ericsson is directed to (WCDMA).”
`
`Response at 45. However, as explained earlier, Fong expressly suggests that is
`
`20
`
`

`

`Petitioner Reply
`
`
`
`IPR2016-01493
`
`applicable to other wireless protocols, including 3GPP, and Ericsson is likewise
`
`directed to 3GPP wireless protocols.
`
`C.
`Fong in View of Ericsson Discloses “wherein said at least one
`threshold adjustable via the signal comprises adjusting the threshold
`integer k”
`Patent Owner recycle