`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
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`
`Case IPR2016-01501
`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
`
`
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`IPR2016-01501
`Patent 8,457,676
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`
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`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, 33) ......................... 14
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`B. “transmission time interval” (Claims 1, 19, 33) ................................. 16
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`C. “path loss” (Claim 3, 21, 34) .............................................................. 17
`
`III. ARGUMENT .................................................................................................. 19
`
`A. Grounds 1 & 3 - Fong Does not Teach 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. .................. 19
`
`B. Petitioners Fail to Show that the combination of Otten and Zeira
`Discloses “triggering criterion such that an absolute difference
`between current and most recent path-loss measurements has
`reached a threshold of difference” and fails to demonstrate a
`motivation to combine these references. ............................................ 25
`
`IV. CONCLUSION .............................................................................................. 31
`
`
`
`I
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`I.
`
`INTRODUCTION
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`Patent Owner Cellular Communications Equipment LLC (“CCE” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary Response”) to the
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`Petition (Paper 1) (the “Petition”) for Inter Partes Review of U.S. Patent
`
`No. 8,457,676 (Ex. 1001) (the “’676 Patent”) in IPR2016-01501 filed by HTC
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`Corporation and HTC America, Inc. (collectively “HTC” or “Petitioners”).
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`The Petitioners’ challenge to the ’676 Patent claims should be rejected
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`because (1) the two references asserted against the independent claims, U.S. Patent
`
`Pub. No. 2004/0223455 (Ex. 1003) (“Fong”) and U.S. Patent App. Pub. No.
`
`2006/0140154 A1 (“Kwak”), each fail to teach or suggest one or more material
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`limitations of each independent claim; and (2) the combination of WIPO Int’l Pub.
`
`No. WO1996/031009 (“Otten”) does not disclose the limitation for which it is
`
`offered and Petitioners have additionally failed to show a motivation to combine
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`Otten and Kwak with Fong or Zeir —the combination of references that form the
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`basis of Petitioners’ obviousness claims asserted against dependent claims 3, 21, and
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`34 of the ’676 Patent.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), as
`
`it is filed within three months of the August 16, 2016 mailing date of the Notice of
`
`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response (Paper 3). For purposes of this Preliminary Response, Patent Owner has
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`1
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`Patent 8,457,676
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`limited its identification of deficiencies in the Petition and does not intend to waive
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`any arguments not addressed in this Preliminary Response.
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`A. Grounds in the Petition
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`The Petition includes four grounds of alleged invalidity; Grounds 1 and 2 rely
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`on Fong and Kwak, respectively, for allegedly rendering obvious independent claims
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`1, 19, and 33 of the ’676 Patent under 35 U.S.C. § 103. Grounds 3 and 4 address
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`only dependent claims 3, 21, and 34 and rely upon adding the combination of Otten
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`and Zeira to Grounds 1 and 2.
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`Ground References Combined
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`Kwak, Otten, and Zeira - 3, 21, 34
`
`Independent
`Dependent
`Claims
`Claims
`1, 19, 33 —
`1, 19, 33 1
`Fong, Often, and Zeira 1 3, 21, 34
`
`Pet. at 5.
`
`As discussed in detail below, Petitioners fail to show that either Fong or Kwak
`
`disclose all limitations in the independent claims, including, for example, “wherein
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`the set of at least one triggering criterion comprises a criterion being met based on
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`reaching a threshold of the at least one threshold of k transmission time intervals
`
`following a previous power control headroom report.” Additionally, Petitioners fail
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`to show that Otten and Zeira, either separately or in combination, disclose the
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`dependent
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`limitation “the set of at least one triggering criterion comprises a
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`triggering criterion such that an absolute difference between current and most recent
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`path-loss measurements has reached a threshold of difference” as claimed. Further,
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`Petitioners fail to demonstrate a motivation to combine these references. Thus, the
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`Petition does not demonstrate a reasonable likelihood that any of the proposed
`
`grounds of unpatentability will succeed for any claim of the ’676 patent.
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`B. Introduction to the Technology of the ’676 Patent
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`The following provides an introduction to the network technologies related to
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`the ’676 Patent.
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`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
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`of these “cells” are aggregated to provide coverage across a wide area. Base stations
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`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.
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`Companies in this industry invest heavily in the design and optimization of cellular
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`networks in order to make the most efficient use of the wireless spectrum and to
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`ensure cellular technologies are implemented in a standardized and uniform manner.
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`To this end, industry leaders participate in non-profit organizations, such as the
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`Third-Generation Partnership Project (known as “3GPP”) and the European
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`Telecommunications Standards Institute (known as “ETSI”), to share responsibility
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`for developing and publishing cellular technology standards. An example of specific
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`cellular standards relevant to the ’676 Patent are the LTE and LTE-Advanced
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`standards. LTE is a fourth generation, or 4G network technology and provides
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`advancements over the earlier second and third generation cellular technologies
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`known as GSM, 2G, and UMTS, 3G. LTE supports data communication via packet-
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`switched services such as web browsing, electronic mail, text chat sessions, file
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`transfers, interactive game sessions, voice-over-IP (Internet Protocol) sessions, and
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`so forth.
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`In a multiuser environment, a number of users share the same radio resources.
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`A consequence of the limited availability of radio channels in the network is that the
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`same channel has to be assigned to many users. Thus, a signal intended for a certain
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`user will reach other users, possibly introducing interference to their connection and
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`degrading system quality. A mobile device with a very good quality connection may
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`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
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`control provides this power management in a controlled manner.
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`In particular, the ’676 Patent describes techniques for sending power
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`headroom reports to the base station if one or more conditions, known as triggers,
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`are met. In an LTE system, multiple mobile devices in a single cell transmit
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`simultaneously to the base station. One important consideration for these
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`transmissions is power. All mobile device transmissions require power, and different
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`circumstances may require higher or lower power transmissions.
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`Managing power constraints presents several challenges. For example, in
`
`favorable conditions a low power level may suffice. However, a mobile device
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`moving away from a cell may need to increase its power to maintain a set data
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`transmission rate. Typically, for various reasons, mobile devices are subject to a
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`maximum power level for their transmissions.
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`Additionally, a mobile device transmitting on a single code at a specified
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`power may also need to concurrently transmit using a second code. This increases
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`the total power output of the device, but again this cannot exceed the device’s
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`
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`maximum power level.
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`
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`To avoid exceeding the maximum transmission power, mobile devices keep a
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`power headroom, which represents the difference between the maximum power and
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`the current transmission power. Before increasing the transmission power, the
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`mobile device ensures that the increase does not exceed the existing power
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`headroom.
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`The Problem to be Solved
`In an LTE system, the base station, known as an e-Node B, must allocate
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`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
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`explains, in order for the base station to properly make these allocations, it needs to
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`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
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`know how much additional resource that UE can handle.
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`
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`To this end, the UEs send Power Headroom Reports to the base station. But
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`there is a trade-off between the value of this information and the overhead of sending
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`it to the base station. As such, any report from the UE to the base station comes at a
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`cost to the overall throughput capacity (system uplink capacity) for the system. Thus,
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`the inventors sought a way to eliminate unnecessary cost by implementing power
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`headroom reporting on a limited, controlled basis.
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`The Inventive Solution Provided by the ’676 Patent
`The solution, in one embodiment illustrated particularly in Figure 3 of the
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`‘676 Patent, was to implement certain threshold parameters at the UE, which can be
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`adjusted by the base station.
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`
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`The ’676 Patent, titled “Power Headroom Reporting Method” was filed on
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`June 23, 2008 and claims priority to its provisional application filed on June 20,
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`2007 and was disclosed as potentially essential to the LTE standard. The ’676 Patent
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`is directed to an apparatus and method that “provides specific reporting criteria that
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`are an attractive trade-off between signaling overhead versus overall uplink
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`performance for LTE.” ’676 Patent at 4:32-35.
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`
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`When the UE determines that a threshold from a set of one or more criterion
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`has been reached, it triggers sending a Power Headroom Report to the base station.
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`The inventors discovered the following triggering criteria “are found to be very
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`efficient for sending a power control headroom report in the uplink, while optimizing
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`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
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`base station.” Id. at Abstract.
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`10
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`
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`After receiving the Power Headroom Report, the base station can provide a
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`power control correction command to the UE, which adjusts its signals accordingly.
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`By providing Power Headroom Reports on a specifically controlled basis, the ’676
`
`Patent allows the base station to make optimal radio resource management decisions,
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`while minimizing the impact the power headroom reporting has on the throughput
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`capacity for the system.
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`One important goal of the ’676 Patent is “to (partly or fully) compensate the
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`path-loss (including antenna-pattern, distance dependent path-loss and shadowing)
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`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
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`adjustments at the terminal is high but the measured path-loss is not changing, [then]
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`UL signaling would be a waste of resources.” Id. at 4:7-14. The issue for reporting
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`then becomes the potential misinterpretation of closed loop power control
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`commands from the base station by the UE. Id. This would potentially be a problem
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`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
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`[1b] providing a power control headroom report on an uplink from user
`
`equipment, in response to determining that the set is met,
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`[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,
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`[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
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`integer k.
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`’676 Patent at 6:26-40. Claim 19 is a counterpart apparatus claim. Although claim
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`19’s language differs from claim 1, the analysis provided herein applies to both
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`claims.
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`Additionally, the inventors found that adjusting for the path-loss by using a
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`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 a path loss change (e.g., entering or
`
`leaving a building causing a significant change in path loss) whether the path loss
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`increases by a certain amount, or decreases by a certain amount, a power headroom
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`report is triggered.
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`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
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`(Fed. Cir. 1987). Additionally, “claims mean precisely what they say.” Cent.
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`Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347,
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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
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`given their ordinary and customary meaning, as would have been understood by one
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`of ordinary skill in the art in the context of the specification. In re Trans logic Tech.,
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`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,
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`1260).
`
`The Petition asks the Board to construe three claim terms:
`
`A. “power control headroom report” (Claims 1, 19, 33)
`
`Petitioners suggest that this term be construed as “a report that provides a
`
`measure of how close the terminal’s transmission power is relative to its maximum
`
`transmission power.” (emphasis added). Pet. at 9. Petitioners’ assertion is bereft of
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`any analysis or argument whatsoever other than citing broadly to two paragraphs of
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`the ’676 Patent and referencing a paragraph in Petitioners’ expert declaration. Id.
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`But the two cited paragraphs do nothing to support Petitioners’ construction and
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`furthermore, the Petitioners’ construction is not even consistent with the cited
`
`expert’s declaration. See Ex. 1003 at ¶ 45 (“Indeed, power control headroom is
`
`generally understood by those of ordinary skill in the art to refer to any report
`
`regarding the transmission power conditions that may be relevant to determining
`
`power control instructions.”) Moreover, Petitioner’s expert provides no support or
`
`reasoning for this conclusory assertion. Such conclusory testimony, without any
`
`underlying reasoning, facts, or data, should be given no evidentiary weight. See 37
`
`C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts
`
`or data “is entitled to little or no weight”). Furthermore, even if the declaration
`
`provided evidence supporting Petitioners’ construction, it would not save the
`
`Petition because the arguments must be in the Petition itself. 37 C.F.R. § 42.6(a)(3)
`
`(“Arguments must not be incorporated by reference ....”).
`
`Patent Owner, in keeping with the presumption that the term receive its “plain
`
`and ordinary meaning” suggests that the claim term “power control headroom
`
`report” can be construed simply as “a report containing power headroom
`
`information.”
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`B. “transmission time interval” (Claims 1, 19, 33)
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`Petitioners suggest this term should be construed as “any specified period of
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`time.” Pet. at 9. This construction is unreasonably broad, is inconsistent with the
`
`specification, and ignores the plain an ordinary meaning of the claim language. First,
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`Petitioners’ proposed construction of “transmission time interval” misstates the term
`
`as used in the challenged claims. The challenged claims use the term “transmission
`
`time intervals” (plural). Petitioners’ definition attempts to read the plural nature of
`
`the claim term out of its meaning. Additionally, Petitioners’ construction ignores the
`
`“words of the terms themselves.” The claim term “transmission” modifies “time
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`intervals” indicating that the time interval is relative with respect to a transmission.
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`To combat transmission errors on mobile digital telecommunications radio
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`links, data is divided at the transmitter into Transport Blocks and then the bits within
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`a block are encoded and interleaved. For a particular channel, the period of time
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`within which the Transport Blocks need to be transmitted (i.e., exchanged between
`
`medium access control (MAC) and the physical layers) is known as the Transmission
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`Time Interval (TTI). See ’676 Patent at 2:19-29.
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`This is consistent with the specification:
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`The basic data unit exchanged between MAC and physical layer is
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`called the Transport Block (TB). It is composed of an RLC PDU and a
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`MAC header. During a period of time called the transmission time
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`interval (TTI), several transport blocks and some other parameters are
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`delivered to the physical layer.
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`Id.
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`Thus, a Transmission Time Interval is a period of time during which transport
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`blocks are transmitted. And the claim term “transmission time intervals” should be
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`construed as “time periods determined by the duration of a transmission of one or
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`more transport blocks.”
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`C. “path loss” (Claim 3, 21, 34)
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`Petitioners suggest that this term be construed as “any wireless signal loss”
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`(emphasis added). Pet. at 10. Petitioners’ construction is bereft of any analysis or
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`argument whatsoever other than the citations to the ’676 Patent specification (none
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`of which support this unreasonably broad construction) and a paragraph in
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`Petitioners’ expert declaration. Id. This is insufficient. The regulations require that a
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`petition for inter partes review must include “a detailed explanation of the
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`significance of the evidence,” 37 C.F.R. § 42.22(a)(2). Moreover, Petitioners’
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`construction is not even consistent with the cited expert’s declaration: “those skilled
`
`in the art would have understood that term to mean degradation or loss in the quality
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`of a wireless signal, such as through distance, shadowing, or other factors known
`
`well by those skilled in the art.” Ex. 1003 at ¶ 47. Petitioner’s expert however,
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`discounts the specification and provides no support or reasoning for his conclusory
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`assertion. Id. Such conclusory testimony, without any underlying reasoning, facts,
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`or data, should be given no evidentiary weight. See 37 C.F.R. § 42.65(a).
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`Furthermore, even if the declaration provided credible evidence supporting
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`Petitioners’ construction, it should not be allowed because the arguments must be in
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`the Petition itself. 37 C.F.R. § 42.6(a)(3) (emphasis added) (“Arguments must not
`
`be incorporated by reference....”); McClinton Energy Grp., LLC v. Magnum Oil Int’l,
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`LTD, IPR2013-00231, Paper 31 at 17 (PTAB 2014).
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`Additionally, Petitioner ignores the “words of the claims themselves” and
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`seeks to read out of the claim language the term “path.” The specification discusses
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`path loss in the following quote: “Further, the aim of these power adjustments at the
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`terminal is basically to (partly or fully) compensate the path-loss (including antenna-
`
`pattern, distance dependent path-loss and shadowing) between the eNode-B and the
`
`terminal, and the measurement of path-loss is done based on the DL (e.g. DL pilot
`
`channel).” Thus, “any wireless signal loss” is inconsistent with the specification as
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`“path loss” provides that it is a wireless signal loss associated with the signal’s path
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`(including antenna-pattern, distance dependent path-loss and shadowing) measured
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`based on the downlink.
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`Notwithstanding Petitioners’ erroneous construction, for purposes of this
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`Patent Owner Preliminary Response, Patent Owner contends that construction of this
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`term is not necessary to determine that institution should be denied on all grounds.
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`Accordingly, Patent Owner does not offer a construction of this term at this time,
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`but reserves the right to propose constructions, either affirmatively or in rebuttal, if
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`trial is instituted on any ground.
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`With respect to the remaining claim terms, because it is not necessary for the
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`Board to construe these terms in order to make a determination that the present
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`Petition should be denied, Patent Owner does not take a position as to claim
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`construction in this Preliminary Response. Notwithstanding, Patent Owner reserves
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`the right to do so in the event trial is instituted in this case.
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`III. ARGUMENT
`
`A. Grounds 1 & 3 - Fong Does not Teach 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, 19, and 33 of the ’676 Patent require, 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
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`report, wherein k is an integer. . .” ’676 Patent at 6:34-38 (emphasis added).
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`Petitioners rely on Fong as teaching this limitation for Ground 1. Pet. at 15-16
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`(citing Fong paragraphs [0045], [0052]). Fong discusses “three triggers for sending
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`a reverse request message.” Fong at [0052]. In particular, Petitioners cite the “buffer
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`update trigger” (first trigger) which uses the MIN_DURATION trigger field. Id.
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`Fong expressly discloses that the MIN_DURATION field is provided in terms of
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`“system time” measured in mobile station clocks. Id. (“whether a current system
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`time (the time provided by the clock of the mobile station) exceeds a time at which
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`a reverse request message was last transmitted for the service instance i by the
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`predetermined time duration” MIN_DURATION. Id. Fong provides this so that
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`regardless how quickly its buffer state changes, there is a minimum specified time
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`duration between reverse request messages sent to the base station to update the
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`buffer’s status. Pet. at 16; Fong at [0052]. But the “time duration” specified here is
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`not a number of “transmission time intervals” as claimed. In fact, Fong does not
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`disclose using transmission time intervals at all, much less using them as a threshold
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`measure “of k transmission time intervals following a previous power control
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`headroom report.”
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`As explained above with regard to claim construction of “transmission time
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`intervals” in Section II.B supra, a “transmission time interval” is a function of the
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`size of the blocks transmitted. Thus counting transmission time intervals is not the
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`same as counting “system time” in mobile station clocks. Here, Petitioners’
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`obviousness argument falls apart since it relies on an unreasonable claim
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`construction equating the claimed “transmission time intervals” with “any specified
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`period of time” (see pages 15-17 above regarding Petitioners’ flawed claim
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`construction).
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`Petitioner provides essentially identical arguments for this limitation under
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`claims 1, 19, and 33. Because this element is missing from all three claims,
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`Petitioners’ obviousness argument fails for all three. Claims cannot be found obvious
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`if an element of the claim is absent from the prior art. See CFMT Inc. v. YieldUp
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`Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“Obviousness requires a
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`suggestion of all limitations in a claim.”) (citing In re Royka, 490 F.2d 981, 985
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`(C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversing
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`obviousness rejection where prior art did not teach or suggest all claim limitations);
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`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case No. IPR2012-00001,
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`Paper 15 at 15 (PTAB 2013) (refusing to institute an inter partes review under 35
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`U.S.C. § 103 where prior art did not disclose all claim limitations). Because
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`Petitioners fail to show the claim element “wherein the set of at least one triggering
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`criterion comprises a criterion being met based on reaching a threshold of the at
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`least one threshold of k transmission time intervals following a previous power
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`control headroom report,” Petitioners have failed to meet their burden and the
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`Board should deny institution of independent claims 1, 19, and 33 accordingly. As
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`explained above, Petitioner has not established a reasonable likelihood that at least
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`one of the challenged claims of the ’676 Patent under Grounds 1 and 3 is
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`unpatentable.
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`In an apparent acknowledgement that Fong fails to disclose the claimed
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`limitation, Petitioners argue in a conclusory fashion that one of ordinary skill “would
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`have understood” Fong to teach the limitation. Pet. at 16-17. This is because,
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`according to Petitioners, “Fong teaches that its disclosed embodiments can be
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`utilized in many types of wireless protocols” and that a POSITA “would have
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`understood that transmission time interval is a parameter [in these systems].”
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`For reference, the entirety of Petitioner’s argument and reasoning is
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`reproduced below:
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`Fong teaches that its disclosed embodiments can be utilized in many
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`types of wireless protocols, including CDMA, TDMA, and UMTS
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`(Universal Mobile Telecommunications) protocols. Id. at [0018]. One
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`of ordinary skill in the art would have understood that transmission time
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`interval is a parameter in UMTS and other digital telecommunication
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`networks. Ex. 1003 at ¶80. Indeed, the ’676 patent admits that UMTS
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`radio networks were prior art to the ’676 patent, and that such a protocol
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`includes a period of time called the transmission time interval (TTI).
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`Ex. 1001 at 1:26-30, 2:19-29. Thus, one of ordinary skill in the art
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`reading Fong’s disclosure of a threshold value MIN_DURATION
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`would have understood that disclosure in the context of a UMTS system
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`to teach that the specified time duration for MIN_DURATION is a value
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`for k transmission time intervals, where k is an integer. Ex. 1003 at
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`¶ 79-80.
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`Pet. at 16-17.
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`Petitioners have not demonstrated that “a skilled artisan would have been
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`motivated to combine the teachings of the[se] prior art references to achieve the
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`claimed invention” or “that the skilled artisan would have had a reasonable
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`expectation of success in doing so.” InTouch Techs., 751 F.3d at 1347–49 (reversing
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`judgment of obviousness where the evidence did “not explain what reason or
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`motivation one of ordinary skill in the art at the time of the invention would have
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`had to place the pieces [of the prior art] together” to reach the claimed invention).
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`For example, Petitioners do not explain how one of ordinary skill in the art “would
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`have understood” Fong “in the context of a UMTS system to teach that the specified
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`time duration for MIN_DURATION is a value for k transmission time intervals” or
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`why a person of ordinary skill in the art would see the need to modify Fong such that
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`the MIN_DURATION would be measured in “transmission time intervals.” Id. This
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`amounts to unsupported attorney argument.
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`In support of these conclusions, Petitioners cite to paragraphs 79-80 of their
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`expert declaration. Pet. at 16-17. But the cited paragraphs of the declaration merely
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`parrot (substantially verbatim) Petitioner’s conclusory attorney argument without
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`any further explanation or evidence, as discussed above. Compare e.g., Pet. 16-17
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`with Ex. 1003 ¶ 80 (showing expert testimony essentially identical to conclusory
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`attorney argument). Indeed, the declaration does not provide the missing evidence
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`identified above, such as how or why the cited document teaches what he alleges is
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`taught or how it shows that the invention is obvious or why a person or ordinary skill
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`in the art would have been motivated to make the proposed combination of elements.
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`Moreover, the declaration does not explain why a person of ordinary skill in the art
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`would have concluded that counting transmission time intervals is the same as
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`counting “system time” in mobile station clocks found in Fong. The alleged support
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`in the declaration, therefore, should be given no weight.
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`In