throbber
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
`
`
`
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`
`
`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 PRELIMINARY RESPONSE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`

`
`IPR2016-01493
`Patent 8,457,676
`
`
`
`
`I.
`
`Table of Contents
`
`INTRODUCTION ............................................................................................ 1
`
`A. Grounds in the Petition .......................................................................... 2
`
`B. Introduction to the Technology of the ’676 Patent ................................ 3
`
`II. CLAIM CONSTRUCTION ........................................................................... 13
`
`A. “power control headroom report” (Claims 1, 19). ............................... 14
`
`B. “absolute difference” (Claims 3, 21). .................................................. 16
`
`C. “memory including software, where the at least one memory and
`the software are 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” (Claim 19). .............................................. 16
`
`III. ARGUMENT ................................................................................................. 17
`
`A. The Combination of Fong and Ericsson does not Disclose
`“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” as Recited in the Independent
`Claims. ................................................................................................. 17
`
`B. Petitioner Fails to Show Fong, Ericsson, and Bark Disclose
`“triggering criterion such that an absolute difference between
`current and most recent path-loss measurements has reached a
`threshold of difference” and also fails to demonstrate a motivation
`to combine these references. ................................................................ 23
`
`IV. CONCLUSION .............................................................................................. 27
`
`
`
`I
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`IPR2016-01493
`Patent 8,457,676
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`I.
`
`INTRODUCTION
`
`Patent Owner Cellular Communications Equipment LLC (“CCE” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary 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 IPR2016-01493 filed by Apple Inc.
`
`(“Apple” or “Petitioner”).
`
`The Petitioner’s challenge to the ’676 Patent claims should be rejected
`
`because (1) U.S. Patent Pub. No. 2004/0223455 (Ex. 1003) (“Fong”) and a
`
`Standards discussion group meeting “contribution” document provided by Ericsson
`
`titled “Filtering for UE Power Headroom Measurement,” R2-052744 (Ex. 1004)
`
`(“Ericsson”), the sole basis of Petitioner’s obviousness ground against independent
`
`claims 1, and 19 of the ’676 Patent, fail to disclose, both separately and in
`
`combination, at least one material limitation of each claim; and (2) U.S. Patent No.
`
`6,445,917 (Ex. 1005) (“Bark”) does not disclose the limitation for which it is offered
`
`and Petitioner has additionally failed to show a motivation to combine Fong,
`
`Ericsson, and Bark — the combination of art that forms the basis of Petitioner’s
`
`obviousness claim asserted against dependent claims 3 and 21 of the ’676 Patent.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §§ 1.7,
`
`42.107(b), as it is filed on the next business day following three months from the
`
`August 12, 2016 mailing date of the Notice of Filing Date Accorded to Petition and
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`IPR2016-01493
`Patent 8,457,676
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`Time for Filing Patent Owner Preliminary Response. Paper 3. For purposes of this
`
`Preliminary Response, Patent Owner has limited its identification of deficiencies in
`
`the Petition and does not intend to waive any arguments not addressed in this
`
`Preliminary Response.
`
`A. Grounds in the Petition
`
`The Petition includes two grounds of alleged invalidity; all of the grounds rely
`
`on the combination of Fong and Ericsson for allegedly rendering obvious
`
`independent claims 1 and 19 of the ’676 Patent under 35 U.S.C. § 103. Ground 2
`
`addresses only dependent claims 3 and 21 and relies upon an additional reference as
`
`shown below.
`
`Ground References Combined
`
`1
`2
`
`Fong and Ericsson
`Fong, Ericsson, and Bark
`
`Independent
`Claims
`1, 19
`
`
`Dependent
`Claims
`
`3, 21
`
`
`Pet. at 7-8.
`
`As discussed in detail below, Petitioner fails to show that Fong and Ericsson
`
`disclose, either separately or in combination, all limitations in the independent
`
`claims, including, for example, “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.” Further, Petitioner fails to meet its burden to prove that any of the
`
`challenged claims would be obvious because Petitioner has not shown sufficient
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`reasons to combine the various embodiments and references. Thus, the Petition does
`
`not demonstrate a reasonable likelihood that any of the proposed grounds of
`
`unpatentability will succeed for any claim of the ’676 patent.
`
`B. Introduction to the Technology of the ’676 Patent
`
`The following section provides an introduction to the network technologies
`
`related to the ’676 Patent.
`
`
`
`Cellular networks are built on the principle of “cells.” They provide coverage
`
`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
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`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. The specific cellular
`
`standards relevant to this case 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.
`
`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, introducing interference to their connection, and
`
`degrading system quality. A user’s device with a very good quality connection may
`
`use lower power and still have acceptable quality. The advantage is that it will
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`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 wireless 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 including limiting interference with
`
`other mobile device communications, mobile devices are subject to a maximum
`
`power level for their transmissions.
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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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`
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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 wireless 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
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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 (e.g., system uplink capacity) for the system.
`
`Thus, the inventors sought a way to eliminate unnecessary cost by implementing
`
`power headroom reporting limited to certain triggers on a controlled basis.
`
`The Inventive Solution Provided by the ’676 Patent
`
`The solution, in one embodiment illustrated particularly in Figure 3, was to
`
`implement certain threshold parameters at the UE, which can be adjusted by the base
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`station.
`
`
`
`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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`
`
`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, “[t]he 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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`
`
`After receiving the Power Headroom Report, the base station provides a
`
`power control correction command to the UE, which adjusts its signals accordingly.
`
`By providing Power Headroom Reports on a 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 “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 “the measurement of path-loss is done based on the DL
`
`(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
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`power 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 becoming 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 certain conditions as recited, for
`
`example, in claim 1 of the ’676 Patent:
`
`[1.0] A method comprising:
`
`[1.1] determining that a set of at least one triggering criterion is met; and
`
`[1.2] providing a power control headroom report on an uplink from user
`
`equipment, in response to determining that the set is met,
`
`[1.3-1.4] 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,
`
`[1.5-6] 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
`
`12
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`19’s language differs from claim 1, the analysis provided herein applies to both
`
`claims.
`
`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 ’676
`
`Patent at 6:45-47 (claims 3 and 21). In this case (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, a power headroom report is triggered.
`
`II. 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). The terms are also given their ordinary and customary meaning, as
`
`would be 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.
`
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`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).
`
`Petitioner proposes the construction of three claim terms:
`
`A. “power control headroom report” (Claims 1, 19).
`
`Petitioner suggests that this term be construed as “a report containing power
`
`headroom or some equivalent information.” (emphasis added). Pet. at 11.
`
`Petitioner’s notes that the terms “power control headroom” and “power headroom”
`
`are used interchangeably in the specification.1 Petitioner also quotes two portions of
`
`the background of the specification where “power control headroom” and “power
`
`headroom” are mentioned:
`
`“The power control headroom report basically provides a measure of how
`
`close the terminal’s power spectral density (PSD) is to the maximum PSD
`
`limit.” ’676 Patent at 3:31-34.
`
`“Consequently, reporting of power headroom or some equivalent information
`
`is needed. However, reporting of the power control headroom is a trade-off
`
`
`1 For the purposes of this Preliminary Response, Patent Owner does not challenge
`
`this assertion, but reserves its right to do so in the event that a trial is instituted.
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`between uplink signaling overhead versus performance improvements that
`
`result from having this information readily available at the eNode-B.”
`
`’676 Patent at 3:60-65.
`
`Petitioner, however, mischaracterizes the specification here by referring to the above
`
`quote as a description of the claim term:
`
`In this Petition for Inter Partes Review, because the specification treats
`
`“power control headroom report” and “power headroom report”
`
`interchangeably, and describes it as reporting of power headroom or
`
`some equivalent information, it is only necessary to construe “power
`
`control headroom report” to mean “a report containing power
`
`headroom or some equivalent information.”
`
`Pet. at 11.
`
`First, the sentence that refers to “or some equivalent information” is not a
`
`description of the claimed report, much less so a “clear definition” that would
`
`warrant departure from construing the term with something other than its “ordinary
`
`and customary meaning.” This is merely provided background information
`
`explaining the context for the need to provide reports to the base station for power
`
`analysis. Petitioner also conveniently ignores other language in the background that
`
`states that the report “basically provides a measure of how close the terminal’s power
`
`spectral density (PSD) is to the maximum PSD limit.”
`
`Petitioner clearly seeks to improperly broaden the claim term to include a
`
`reports that does not have “power headroom” or “power control headroom.” Patent
`
`15
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`Owner, in keeping with the presumption that the term receive its “plain and ordinary
`
`meaning” suggests that the claim term “power control headroom report” be
`
`construed simply as “a report containing power headroom information.”
`
`B. “absolute difference” (Claims 3, 21).
`
`Petitioner offers that this term should be construed as “absolute value of a
`
`difference.” For the purposes of this preliminary response, Patent Owner does not
`
`challenge this assertion, but reserves its right to do so in the event that the IPR trial
`
`is instituted.
`
`C. “memory including software, where the at least one memory and the
`software are 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” (Claim 19).
`
`Petitioner offers no construction for this limitation other than to argue § 112
`
`as is plainly not allowed under 35 U.S.C. § 311(b). Pet. at 12. Furthermore, the
`
`declaration of Petitioner’s expert cites no reasons and provides no support for his
`
`naked assertions. Thus, the Board should afford this testimony little or no weight.
`
`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts
`
`or data on which the opinion is based is entitled to little or no weight.”); In re
`
`American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004);
`
`Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser,
`
`61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where
`
`underlying basis has not been provided).
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`With respect to the remaining claim terms, because it is not necessary for the
`
`Board to construe these terms in order to make a determination that the present
`
`Petition should be denied, Patent Owner does not take a position as to claim
`
`construction in this Preliminary Response. Notwithstanding, Patent Owner reserves
`
`the right to do so in the event trial is instituted in this case.
`
`III. ARGUMENT
`
`A. The Combination of Fong and Ericsson Does not Disclose 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” as Recited in the Independent
`Claims.
`
`Independent claims 1 and 19 of the ’676 Patent requires, among other things:
`
`“. . . 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. . .” ’676 Patent at 6:34-38 (emphasis added).
`
`Petitioner relies on the combination of Fong and Ericsson as teaching this
`
`element. Pet at 29-33. First, Petitioner relies on a cropped and annotated Figure 5
`
`from Fong stating that “Fong’s system is already capable of waiting an integer
`
`number of uniform time periods between successive reverse request messages
`
`containing power headroom information . . . .” Pet. at 18. But Fong doesn’t teach
`
`what Petitioner contends. Additionally, the autonomous mode embodiment cited in
`
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`Figure 5 does not disclose including sending power headroom reports.
`
`Fong discloses an autonomous mode for data packet transmittal where the
`
`“mobile station not scheduled by the base station can transmit autonomously up to
`
`the maximum autonomous data rate, subject to the certain rules as described below
`
`in connection with FIG. 5.” Fong’s Figure 5 and accompanying text describes the
`
`timing requirements between the reverse request channel messages and frames
`
`transmitted on a reverse packet data channel when the mobile device is transmitting
`
`autonomously to the base station. Fong ¶ [0016]; see also id. at [0077] (“A fixed
`
`time offset T2 is defined between the R-REQCH frame boundary (e.g., boundary
`
`402) and the frame boundary of R-PDCH (e.g., boundary 404).”) (emphasis added).
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`Reverse Request
`Message Information
`
`
`
`Fong, Fig. 5 (annotated).
`
`Petitioner references Figure 5’s time axis markings as “uniform time periods.”
`
`See Ex. 1006 at ¶ 55. Fong refers to the offsets T1 and T2 as a “fixed” amount of
`
`time that is used to allow the base station enough time to process the request. Fong
`
`does not disclose and is silent as to the timing between requests much less measuring
`
`that timing in “time intervals following a previous power control headroom report”
`
`as claimed.
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`Furthermore, the embodiment using Fong’s autonomous mode does not teach
`
`or suggest sending power headroom information. Rather, Fong discloses in this
`
`mode that the reverse request message simply contains the buffer status and
`
`maximum data rate:
`
`A reverse request message sent on R-REQCH is communicated from
`
`the mobile station to the base station to indicate the buffer status and
`
`maximum data rate that is supportable by the mobile station. This
`
`buffer status and maximum supportable data rate information that are
`
`communicated in the reverse request message on R-REQCH is used by
`
`the scheduler 40 to grant a data rate to the mobile station.”
`
`Fong, ¶ [0077].
`
`Petitioner resorts to switching from the scheduled mode embodiment to
`
`autonomous mode embodiments in Fong. However, modifying Fong’s autonomous
`
`mode embodiment to include the sending of power control headroom reports would
`
`change Fong’s principle of operation. Petitioner fails to explain how or why one of
`
`ordinary skill in the art would modify Fong’s autonomous mode embodiment to
`
`include power control headroom reports thus decreasing the uplink throughput.
`
`Claims cannot be obvious in light of a combination of elements that changes
`
`the principle operation of the prior art reference being applied. See In re Ratti, 270
`
`F.2d 810, 813 (CCPA 1959) (“If a proposed modification or combination of the prior
`
`art would change the principle of operation of the prior art device being modified,
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`then the teachings of the references are not sufficient to render the claims prima facie
`
`obvious.”).
`
`Petitioner undoubtedly must demonstrate why a person of ordinary skill in the
`
`art would have combined the elements of the Fong and Ericsson references in the
`
`asserted manner despite the undesirable consequences resulting from such a
`
`combination. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed.
`
`Cir. 2000) (“Trade-offs often concern what is feasible, not what is, on balance,
`
`desirable. Motivation to combine requires the latter.”); see also Zodiac Pool Sys.,
`
`Inc. v. Aqua Prods., Inc., IPR2013-00159, Paper No. 18 at 32-33 (Aug. 23, 2013)
`
`(Petitioner must show “why, on balance, the benefits of the proposed modification
`
`outweigh its deleterious effects on [] operation and use”). Petitioner’s failure to
`
`address the problems with its proposed combination demonstrates that its
`
`obviousness theories do not show a proper motivation to combine and do not have a
`
`reasonable likelihood of success.
`
`Furthermore, Ericsson fails to cure the shortcomings of Fong. Petitioner
`
`asserts that Ericsson “teaches measuring the time between successive transmissions
`
`of power headroom information in TTIs (transmission time intervals).” Pet. at 31.
`
`But neither Ericsson nor Fong separately or in combination disclose using TTIs in
`
`integer timer intervals as a threshold for triggering a report. Ericsson, simply
`
`provides the periodicity of the scheduling information sent to the base station “is
`
`21
`
`

`
`IPR2016-01493
`Patent 8,457,676
`
`configurable:”
`
`The UPH 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. Note that apart from the configurable
`
`periodicity, the inclusion of SI can be made arbitrarily, if for instance
`
`padding allows it or if triggered by higher priority data entering the UE
`
`buffer.
`
`Ericsson at 2. Ericsson simply describes the prior art that the periodicity (defined in
`
`the order of TTI) is configurable and that inclusion of the scheduling information
`
`can be arbitrary. Ericsson says nothing regarding using TTIs in integer timer
`
`intervals as a threshold for triggering a report.
`
`Claims cannot be found obvious if an element of the claim is absent from the
`
`prior art. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
`
`2003) (“Obviousness requires a suggestion of all limitations in a claim.”) (citing In
`
`re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531, 1534
`
`(Fed. Cir. 1993) (reversing obviousness rejection where prior art did not teach or
`
`suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs.
`
`LLC, Case No. IPR2012-00001, Paper 15 at 15 (PTAB 2013) (refusing to institute
`
`an inter partes review under 35 U.S.C. § 103 where prior art did not disclose all
`
`claim limitations). As explained above, Petitioner has not established a reasonable
`
`22
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`

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`IPR2016-01493
`Patent 8,457,676
`
`likelihood that at least one of the challenged claims of the ’676 Patent is unpatentable
`
`for at least the reason that none of the references disclose a limitation of the
`
`independent claims.
`
`B. Petitioner Fails to Show Fong, Ericsson, and Bark Disclose
`“triggering criterion such that an absolute difference between
`current and most recent path-loss measurements has reached a
`threshold of difference” and also fails to demonstrate a motivation
`to combine these references.
`
`Claims 3 and 21 both require “wherein the set of at least one triggering
`
`criterion comprises a triggering criterion such that an absolute difference between
`
`current and most recent path-loss measurements has reached a threshold of
`
`difference.”
`
`Petitioner relies on Bark to teach this limitation. Pet. at 1-2. However, to
`
`supposedly show that Bark discloses this element, Petitioner relies on mental
`
`gymnastics and contortions of the actual teachings of Bark. Indeed, Petitioner,
`
`devotes over ten pages of claim charts and argues numerous extrapolations that a
`
`person of ordinary skill would have to make just to arrive at what Petitioner purports
`
`teaches the limitation of claim 3. Pet. at 48-55; Ex. 1006 at 52-63. For example, the
`
`Petitioner relies on the following unsupported conclusions:
`
` “First, . . . Fong teaches a set of triggering criteria.” Pet. at 48.
`
` “Second, . . .” Bark teaches “a path-loss triggering criterion.” Pet. at 48.
`
` “Bark teaches a predetermined event that, if satisfied, triggers the
`
`sending of a measurement report” Pet. at 48.
`
`23
`
`

`
`IPR2016-01493
`Patent 8,457,676
`
` “Third, Bark teaches . . . one of its trigger events is defined by how
`
`quickly a measured parameter value changes” Pet. at 49.
`
` Even though Bark shows an analog signal “it would have been well
`
`known to a POSITA that the way signals were typically processed was
`
`in discrete time, not continuous time” Pet. at 51.
`
` The annotations on Fig. 12 “y2 denotes the measured parameter and y1
`
`denotes the measured parameter just prior to reporting event 1, as
`
`would have been understood by a POSITA.” Pet. at 52.
`
` An “event is defined based on how quickly the measured parameter
`
`value for a channel changes . . . is an example of an absolute value of a
`
`difference (an “absolute difference”) between a current measurement
`
`and a most recent measurement exceeding a threshold of difference.
`
`Pet. at 52-53.
`
` “Fourth, Bark teaches that its measured parameter value can be path
`
`loss” Pet. at 54.
`
`But even assuming arguendo that one having ordinary skill would follow the
`
`winding path fashioned by the Petitioner, the result still does not arrive at the subject
`
`matter claimed in claim 3.
`
`To be sure, Bark does not even disclose computing the absolute difference
`
`between current and most recent path-loss measurements, much less comparing that
`
`value with a threshold. The only relevant disclosure of using “path loss” is in the
`
`context that Bark provides that “path loss” is a measurable parameter in a generic
`
`trigger scheme to provide a generic “measurement report.” See Bark at Fig. 5; 7:59-
`
`65; 8:28-45 (showing “path loss” as one of a number of different “radio-related
`
`24
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`

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`IPR2016-01493
`Patent 8,457,676
`
`parameters”).
`
`Id. at Fig. 5.
`
`
`
`However, nothing in Bark teaches or suggests reporting power headroom
`
`much less taking the absolute value of the difference between current and most
`
`recent path-loss measurements much less comparing that absolute difference to a
`
`threshold as a trigger to

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