throbber
Paper No. 1
`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`HTC CORPORATION, HTC AMERICA, Inc.
`ZTE CORPORATION, and ZTE (USA), Inc., Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`
`
`
`
`
`Patent Owner
`
`
`
`
`
`
`
`U.S. Patent No. 8,385,966
`Issued: February 26, 2013
`Inventor(s): Jari Lindholm; Juha S.Korhonen
`
`Title: METHOD, APPARATUS AND COMPUTER PROGRAM FOR POWER
`CONTROL RELATED TO RANDOM ACCESS PROCEDURES
`
`Inter Partes Review No.
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,385,966 PURSUANT TO 35 U.S.C. §§
`311-319 AND 37 C.F.R. § 42
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ...................................... 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................................ 1
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............................. 1
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ......................................... 2
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ....................................... 2
`IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................. 2
`V.
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`VI. STATEMENT OF PRECISE RELIEF REQUESTED ................................... 4
`VII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ............... 5
`VIII.
`STATEMENT OF REASONS FOR RELIEF REQUESTED ................... 5
`A. Introduction to the Technology of the ’966 Patent .......................................... 5
`B. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`C. Construction of the Claims ............................................................................ 10
`D. PRIOR ART ................................................................................................... 13
`E. Claim-By-Claim Explanation of Grounds for Unpatentability ..................... 15
`IX. CONCLUSION .............................................................................................. 51
`
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
`
`LIST OF EXHIBITS
`
`Exhibit
`U.S. Patent No. 8,385,966 (“‘966 patent”)
`Declaration of Dr. Robert Akl
`U.S. Patent No. 8,599,706 (“Qualcomm”)
`3GPP TS 36.213 v8.2.0 (2008-03) (“TS 36.213”)
`3GPP TS 36.300 v8.4.0 (2008-04) (“TS 36.300”)
`3GPP TS 36.321 v8.0.0 (2007-12) (“TS 36.321”)
`U.S. Patent Publication No. 2010/0093386 (“Qualcomm-386”)
`3GPP Draft Proposal “Transmission Power Control in E-UTRA
`Uplink” (“R1-070870”) .by NTT DoCoMo (Feb. 2007)
`3GPP Draft Proposal “Uplink power control procedures and Text
`Proposal for E-UTRA” (“R1-074704”) by InterDigital
`Communications, LLC (November. 2007)
`3GPP Draft Proposal “Reply to RAN2 LS on RACH Power Control
`Optimisation Use Case” (“R1-080612”) by Jung A. Lee of Alcatel
`Lucent (January. 2008)
`3GPP Draft Proposal “Uplink power control procedures and Text
`Proposal for E-UTRA” (“R1-080879”) by Ericsson (February, 2008)
`3GPP Specifications Home,
`http://www.3gpp.org/specifications/specifications (accessed 2017-
`04-
`19)
`Prosecution History of U.S. Patent No. 8,385,966 (“‘966 file
`history”)
`Provisional Application of U.S. Patent No. 8,385,966 (“‘966
`provisional”)
`
`Exhibit No.
`Ex.1001
`Ex.1002
`Ex.1003
`Ex.1004
`Ex.1005
`Ex.1006
`Ex.1007
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`
`
`

`

`
`
`
`I.
`
`INTRODUCTION
`
`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
`
`
`
`Petitioner HTC Corporation and ZTE (USA), Inc. requests institution of
`
`Inter Partes Review, and cancellation of Claims 1-17 (the “Challenged Claims”),
`
`of U.S. Patent No. 8,385,966 (“the ’966 Patent”) (Ex. 1001).
`
`II.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real-parties-in-interest for this Petition are HTC Corporation, HTC
`
`America, Inc., ZTE Corporation and ZTE (USA), Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The following would affect, or be affected by, a decision in this proceeding:
`
`(1) Cellular Communications Equipment LLC v. HTC Corporation et al, No. 6:16-
`
`cv-00475-RWS- KNM (E.D. Tex.) and (2) Cellular Communications Equipment
`
`LLC v. ZTE Corporation et al, No. 6:16-cv-00476-RWS-KNM (E.D. Tex.).
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioners provides the following designation of counsel.
`
`Lead Counsel:
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-3112
`Facsimile: 619-236-1995
`Email: steve.moore@pillsburylaw.com
`
`
`
`Back-Up Counsel
`Brian Nash (Reg. No. 58,105)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Post and Hand Delivery Address
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: 512.580.9629
`Facsimile: 512.580.9601
`Email: brian.nash@pillsburylaw.com
`1
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`

`

`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
`
`
`
`Back-Up Counsel
`Cheng (Jack) Ko (Reg. No. 54,227)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-5000
`Facsimile: 619-236-1995
`Email: jack.ko@pillsburylaw.com
`
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents via hand-delivery may be made at the postal
`
`mailing address of the respective lead or back-up counsel designated above with
`
`courtesy email copies to the email addresses and docket_ip@pillsburylaw.com
`
`III.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge Deposit Account No.
`
`033975 for the fee set forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes
`
`Review and any additional fees in connection with this Petition.
`
`IV.
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the ’966 patent is available for Inter Partes Review,
`
`and that Petitioner is not barred or estopped from requesting Inter Partes Review
`
`challenging the claims of the ’966 patent on the grounds identified herein.
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`STATEMENT OF MATERIAL FACTS
`
`
`
`V.
`
`The earliest potential effective filing date of the claims of the ’966 patent is
`
`May 5, 2008. (See Ex. 1001). U.S. Patent No. 8,599,706 (“Qualcomm,” Ex. 1003)
`
`is at least § 102(e) prior art to the claims of the ’966 patent because it was filed on
`
`June 5, 2009, as a National Stage Application to PCT/US2007/080319, filed
`
`October 3, 2007. U.S. Patent Application No. 12/443,783 was filed on July 2,
`
`2009, as a National Stage Application to PCT/US07/83239, filed October 31, 2007,
`
`and published as U.S. Patent Publication 2010/0093386 (“Qualcomm-386,” Ex.
`
`1005). Qualcomm-386 is at least § 102(e) prior art to the claims of the ’966 patent.
`
`Applicant’s Admitted Prior Art (“AAPA”): The AAPA of the ‘966 patent
`
`includes at least FIGs. 1A, 1B, 1C (which are labelled “Prior Art”) and
`
`descriptions related to those figures. The AAPA also includes 3GPP LTE
`
`specifications referenced in the ‘966 patent, including TS 36.213 (Ex. 1004), TS
`
`36.300 (Ex. 1005), TS 36.321 (Ex. 1006) and disclosure related to those
`
`specifications; e.g., 1:24 – 3:6 and 4:21– 6:49 of the ‘966 patent. (Ex. 1002, ¶¶33-
`
`35, 76). A patent applicant’s prior art admissions are prior art for purposes of Inter
`
`Partes Review. See, e.g., Intri-Plex Tech., Inc. v. Mmi Holdings Saint-Gobain
`
`Performance Plastics Rencol Ltd., IPR2014-00309 (Paper 83).
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Petitioner respectfully requests the Board initiate an Inter Partes
`
`
`
`VI.
`
`Review and cancel Claims 1-17 of the ’966 patent as unpatentable pursuant to 35
`
`U.S.C.§ 311(b) based on the following three grounds of unpatentability that are
`
`discussed in detail herein (including relevant claim constructions). These grounds
`
`are:
`
`Ground A: Qualcomm and TS 36.213 render obvious Claims 1, 3, 4, 9, 10,
`
`12, and 13 under 35 U.S.C. § 103.
`
`Ground B: Qualcomm, TS 36.213, and TS 36.300 render obvious Claims 2
`
`and 11 under 35 U.S.C. § 103.
`
`Ground C: Qualcomm, TS 36.213, TS 36.300, and Qualcomm-386 render
`
`obvious Claims 5-8 and 14-17 under 35 U.S.C. § 103.
`
`Petitioner evaluates the scope and content of the prior art and, any
`
`differences between the prior art and the claims, and the level of skill of a person
`
`of ordinary skill in the art in accordance with Graham v. John Deere Co., 383 U.S.
`
`1 (1966) and KSR Int’l C. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“a court must
`
`ask whether the improvement is more than the predictable use of prior art elements
`
`according to their established functions”).
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
`
`A detailed explanation of why the Challenged Claims are invalid is provided
`
`
`
`
`
`below, including grounds stated in the supporting declaration by Professor Akl
`
`(“Akl Dec.”; (Ex. 1002)).
`
`VII.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`A petition for Inter Partes Review must demonstrate “a reasonable
`
`likelihood that the petitioner would prevail with respect to at least one of the
`
`claims challenged in the petition.” (35 U.S.C. § 314(a)). The Petition meets this
`
`threshold. The prior art teaches each of the elements of Claims 1-17 of the ’966
`
`patent as explained below in the proposed grounds of unpatentability. Also, the
`
`Petition establishes reasons and motivations to combine prior art for each ground
`
`under 35 U.S.C. § 103(a).
`
`VIII.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A.
`
`Introduction to the Technology of the ’966 Patent
`
`The ’966 patent describes “techniques for power control on different uplink
`
`messages sent from a communication device.” (1:19-20). The ‘966 patent relates to
`
`determining the transmit power on uplink messages sent from a user equipment.
`
`Specifically, the ’966 patent indicates “the problem solved by those embodiments
`
`is how the power control formulas for PUSCH [physical uplink shared channel]
`
`and PUCCH [physical uplink control channel] are taken in use during or after the
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`Random Access procedure.” (4:16-19). A brief overview of the state of the art and
`
`the random access procedure is provided by Dr. Robert Akl. (Ex. 1002, ¶¶27-75).
`
`Figures 1B and 1C of the ’966 patent—labeled “Prior Art”—show random
`
`access procedures and include sending various messages between user equipment
`
`(UE) and a base station called an evolved Node B (eNB). (Ex. 1002, ¶¶36-45). As
`
`shown in FIG. 1B, the contention-based random access procedure includes four
`
`messages.
`
`(FIG. 1B of the ‘966 Patent)
`
`
`
`The UE communicates the first message (“Message 1”), which is a “random
`
`access preamble,” to the eNB. (Ex. 1002, ¶39). The UE uses open loop power
`
`control to determine the transmit power of the random access preamble. (See
`
`Ex.1001, Equation [3], 6:20-24; Ex.1002, ¶39). If the UE does not receive a
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`response to its transmitted preamble, the UE can retransmit the preamble with
`
`increased power. The ’966 patent refers to the increased power as a “ramp-up”
`
`value. (6:25-26; Ex.1002, ¶42).
`
`The eNB responds with a random access response (“Message 2”) once it
`
`receives the random access preamble. (Ex. 1002, ¶40). The claimed “second
`
`message” of Claims 2 and 11 of the ‘966 patent corresponds to Message 2, which
`
`is the random access response. (Id.). After receiving the random access response,
`
`the UE can respond with a first scheduled transmission on the uplink shared
`
`channel; this first transmission after receiving the random access response is called
`
`“Message 3.” (Ex. 1002 ¶43). Message 3 serves as the first message sent after the
`
`successful transmission of the random access preamble. (Id.). The’966 patent refers
`
`to the transmit power of Message 3 as an “initial transmit power.” (Id.).
`
`The AAPA of the ‘966 patent also describes this random process procedure:
`
`“the UE transmits a random access preamble and expects a response from the eNB
`
`in the form of a so-called Message 2 (e.g., Random Access Response at FIGS. 1B
`
`and 1C). Message 2 is transmitted on a DL [downlink] shared channel DL-SCH
`
`(PDSCH, the PDCCH) and allocates resources on an UL-SCH (PUSCH). *** The
`
`Message 2 contains UL [uplink] allocations for the transmissions of a Message 3 in
`
`the UL (e.g., step 3 of the Contention Based Random Access Procedure at FIG.
`
`7
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`1B).” (Ex. 1001, 2:27-38).
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`The ’966 patent points to the LTE technical specification 3GPP TS
`
`36.213v.8.2.0 (“TS 36.213”; Ex. 1004) as dictating the transmission of “Message 3”
`
`in the LTE communication system using the PUSCH power control formula,
`
`taking into account the power control command received from the eNB in Message
`
`2. (Ex.1001, 4:21-25; Ex. 1002 ¶77). Importantly, the ’966 patent states: “However,
`
`this [technical specification] does not specify how the UE specific parameters of
`
`the PUSCH and PUCCH power control formulas are initialized.” (Ex.1001, 4:25-
`
`27; Ex. 1002 ¶¶78-80). Thus, the ’966 patent attempts to teach the “initialization”
`
`of power control formulas for PUSCH and PUCCH. (Ex. 1002, ¶81). To teach how
`
`the formulas are “initialized,” the ’966 patent purports:
`
`According to an embodiment of the invention, the UE receives a
`
`power control command (e.g., ΔPPC) in the preamble response
`
`from the eNB, which is Message 2. The UE then initiates the PC
`
`formula for PUSCH and PUCCH, or compensates open loop error,
`
`according to the following equations:
`
`P0_UE_PUSCH + f(0) = ΔPPC + ΔPrampup
`
`P0_UE_PUCCH + g(0) = ΔPPC + ΔPrampup
`
`
`
`
`
`[4a]
`
`[4b]
`
`(Ex.1001, 6:58-67). ΔPPC is a “power control command” that is included in
`
`Message 2. (Ex.1001, Claim 1; see also 7:5-13). ΔPrampup is “the power ramp-up
`
`applied for preamble retransmissions.” (Ex.1001, 6:25-26). The ’966 patent admits
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`that the values P0_UE_PUSCH and P0_UE_PUCCH can be set to zero. (Ex.1001, 4:40-50;
`
`5:48-53; 7:16-19). Thus, the purported invention of the ’966 patent teaches that the
`
`power control formulas, claimed as power control adjustment states, can both be
`
`initialized to ΔPPC + ΔPrampup. (Ex.1001, 7:19-21).
`
`As discussed further below, both ΔPPC and ΔPrampup parameters were well
`
`known to a person of ordinary skill in the art (“POSITA”) by the time of the ‘966
`
`patent. (Ex. 1002 ¶¶80-84). The UE receives information for ΔPrampup before the
`
`preamble transmission, and the UE receives the power control command, ΔPPC, in
`
`the random access response, which is Message 2. (Ex. 1002 ¶¶85). Therefore, both
`
`ΔPrampup and ΔPPC parameters are known to the UE before the transmission of
`
`Message 3. (Id.). Once the UE has information for ΔPrampup and ΔPPC, it would have
`
`been obvious to a POSITA to use the known ΔPrampup and ΔPPC parameters in place
`
`of the unknown UE specific parameters, (P0_UE_PUSCH or P0_UE_PUCCH) and (f(0) or
`
`g(0)), to calculate the transmission powers of PPUSCH (0) and PPUCCH (0). (Id.).
`
`The power control equations disclosed in the ‘966 patent were all known
`
`prior to the invention of the ‘966 patent. (Ex. 1002 ¶¶86-89). As discussed below,
`
`Qualcomm, Qualcomm-386, and/or AAPA (including 3GPP TS 36.213, TS
`
`36.300, TS 36.321) teach all of the claimed features of the independent claims,
`
`including calculating a transmit power of Message 3 that depends on ΔPPC +
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`ΔPrampup, as well as preamble power, power control command, and power offset.
`
`(Id.).
`
`B.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA as of the time of the ’966 patent would have
`
`been aware of power control of mobile terminals in cellular systems. (Ex. 1002,
`
`¶19). Such a POSITA would have had a B.S. degree in computer science, computer
`
`engineering, electrical engineering, or a related field, and around 2 years of
`
`experience in the design or development of transmitter power control in wireless
`
`communication systems, or the equivalent. Also, such a POSITA would have been
`
`familiar with various working group proposals presented in the 3GPP meetings
`
`related to uplink power control and 3GPP specifications, including 3GPP TS
`
`36.213, 3GPP TS 36.300, and 3GPP TS 36.321. (Ex. 1002 ¶¶21-22).
`
`C. Construction of the Claims
`
`A claim in Inter Partes Review receives the “broadest reasonable
`
`construction in light of the specification.” (See, 37 C.F.R. § 42.100(b)). For the
`
`purposes of this proceeding, claim terms are presumed to take on their broadest
`
`reasonable meaning. As stated in the case In re ICON Health and Fitness, Inc. at
`
`496 F.3d 1374, 1379 (Fed. Cir. 2007): “the PTO must give claims their broadest
`
`reasonable construction consistent with the specification. Therefore, we look to the
`
`specification to see if it provides a definition for claim terms, but otherwise apply a
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`broad interpretation.” In addition to this presumption, Petitioner provides a more
`
`detailed explanation of the broadest reasonable meaning of certain claim terms.
`
`1.
`
`“Full path loss compensation” (Claims 1, 9, and 10)
`
`In the context of the ‘966 patent, the terms “path loss”, “pathloss”, and “PL”
`
`are used interchangeably and they all refer to the downlink path loss estimate
`
`calculated by the UE. (Ex. 1002, ¶125). Specifically, the ‘966 patent states “PL is
`
`the downlink pathloss estimate calculated in the UE” (Ex. 1001, 4:53) and “PL is
`
`the path loss that UE estimates from DL.” (Ex. 1001, 6:24).
`
`The phrase “full path loss compensation” refers to using an entire estimated
`
`path loss, which is in contrast to fractional path loss compensation that uses only a
`
`portion of the estimated path loss. (Ex.1001, 8:7-17 and 11:25-31). The power
`
`formulas of the ’966 patent indicate full path loss compensation by setting α to 1
`
`(Ex.1001, 8:21-25). Thus, “full path loss compensation” as used in the claims of
`
`the ’966 patent should be interpreted to mean using the entire estimate path loss.
`
`(Ex. 1002, ¶¶125-126).
`
`2.
`
`“Initial transmit power” (Claims 1, 5, 8-10, 14, and 17)
`
`The ‘966 patent refers to “Message 3” as the “first or initial message sent on
`
`PUSCH.” (Ex. 1001, 11:15-17). The phrase “initial transmit power” should mean
`
`the transmit power of the message after a successful transmission of a random
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`access preamble; i.e., the transmit power of Message 3. (Ex. 1001, 11:15-19; Claim
`
`
`
`5; Ex. 1002, ¶¶86-87).
`
`3.
`
`“Depends on” (Claims 1, 9, and 10)
`
`In the context of the ‘966 patent, the phrase “depends on” includes both
`
`direct dependency and indirect dependency. (Ex. 1002, ¶¶119-123). For example,
`
`the initial transmit power can depend directly on a parameter or depend indirectly
`
`on a parameter. (Ex. 1001, claims 1 and 5; Ex. 1002 ¶¶120-122). This reading of
`
`“depends on” is consistent with the claims and the specification of the ‘966 patent.
`
`(Id.).
`
`4.
`
`“Fractional path loss compensation” (Claims 7 and 16)
`
`The phrase “fractional path loss computation” as used in the claims of
`
`the ’966 patent should be interpreted to mean a path loss computation based on a
`
`fraction of the estimated path loss. Ex. 1002, ¶44. α in Equation [1] and Claims 6
`
`and 15 represents the fractional component. (Ex.1001, Fig. 4, 410; 4:31-33; and
`
`11:39-44). In the context of the ‘966 patent, “fractional path loss compensation” is
`
`also referred to as “fractional power control.” (Ex.1001, 2:39-49; Ex. 1002, ¶44).
`
`Petitioner notes that claim construction in Inter Partes Review is broader
`
`than in litigation. Nothing in this Petition should be taken as an assertion regarding
`
`how the claims should be construed in litigation, whether the claims constitute
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,385,966
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`patentable subject matter under 35 U.S.C. § 101, or whether the claims satisfy the
`
`definiteness, enablement, or written description requirements of 35 U.S.C. § 112.
`
`
`
`D.
`
`5.
`
`PRIOR ART
`
`U.S. Patent 8,599,706 (Qualcomm)
`
`U.S. Patent No. 8,599,706 (“Qualcomm”; Ex. 1003) was filed on June 5,
`
`2009, as a National Stage Application to PCT/US2007/080319, filed October 3,
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`2007. The PCT application claimed the benefit of Provisional Application No.
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`60/828,058, filed on October 3, 2006. Accordingly, Qualcomm qualifies as a
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`printed publication and prior art to the ’966 patent. In addition,
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`PCT/US2007/080319 published as WO2008/042967 on April 10, 2008, has
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`substantially the same disclosure as Qualcomm.
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`6.
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`3GPP TS 36.213 v8.2.0 (TS 36.213)
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`The 3rd Generation Partnership Project (3GPP) website made 3GPP TS
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`36.213 v8.2.0 (“TS 36.213”; Ex. 1004) available before the invention of the ‘966
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`patent. (Ex. 1002, ¶33). The 3GPP brings together partners to produce
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`specifications on 3GPP technologies, such as LTE. (Ex. 1002, ¶31-32).
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`Accordingly, one of skill in the art interested in LTE would turn to the resources
`
`and/or specifications that are available on the 3GPP website. (Id.). TS 36.213,
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`therefore, was both publicly available and also sufficiently accessible to the public
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`that are interested in LTE prior to the invention of the ’966 patent. (Id.).
`
`The ’966 patent acknowledges that TS 36.213 was available prior to the
`
`invention of the ’966 patent. (Ex.1001, 4:20-30). Portions of TS 36.213 were
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`attached as an exhibit to the ’966 patent’s provisional application. (Id.). The ’966
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`patent admits that Equation [1] and its description are from section 5.1.1.1 of TS
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`36.213. (Ex.1001, 4:20-30). Accordingly, TS 36.213 is part of AAPA and qualifies
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`as a printed publication and prior art to the ’966 patent. (Ex. 1002, ¶33).
`
`7.
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`3GPP TS 36.300 v8.4.0 (TS 36.300)
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`3GPP TS 36.300 v8.4.0 (“TS 36.300”; Ex. 1005) was published before
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`March, 2008 and publicly available before the invention of the ‘966 patent. (Ex.
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`1002, ¶34). The ’966 patent admits that TS 36.300 was available prior to the
`
`invention of the ’966 patent. (Ex.1001, 2:18-26). Portions of TS 36.300 were
`
`attached as an exhibit to the ’966 patent’s provisional application. (Id.).
`
`Accordingly, TS 36.300 is part of AAPA and qualifies as a printed publication and
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`prior art to the ’966 patent.
`
`8.
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`U.S. Patent Publication 2010/0093386 (Qualcomm-386)
`
`U.S. Patent Application No. 12/443,783 was filed on July 2, 2009, as a
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`National Stage Application to PCT/US07/83239, filed October 31, 2007. The PCT
`
`application claimed the benefit of Provisional Application No. 60/855,903, filed on
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`October 31, 2006. U.S. Patent Application No. 12/443,783 published as U.S.
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`Patent Publication 2010/0093386 (“Qualcomm-386”; Ex. 1007). Accordingly, the
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`Qualcomm-386 qualifies as a printed publication and prior art to the ’966 patent.
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`E. Claim-By-Claim Explanation of Grounds for Unpatentability
`
`Ground A. Qualcomm (Ex. 1003) and TS 36.213 (Ex. 1004) Render
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`Obvious, Under 35 U.S.C. § 103, Claims 1, 3, 4, 9, 10, 12,
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`and 13.
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`Claims 1, 3, 4, 9, 10, 12, and 13 of the ’966 patent are unpatentable under 35
`
`U.S.C. § 103(a) over Qualcomm and 3GPP TS 36.213 v8.2.0 (TS 36.213). See Ex.
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`1002, Appendix B.
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`Claims 1, 9, and 10 include features which are taught in Qualcomm and TS
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`36.213 (which is AAPA of the ‘966 patent). Claims 1, 9, and 10 claim different
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`invention types (method, computer readable memory, and an apparatus), but
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`contain nearly identical features. These claims require initializing f(0) and g(0);
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`calculating an initial transmit power; and sending the third message with the initial
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`transmit power. As detailed below, Qualcomm and TS 36.213 (which is AAPA)
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`teach all the features of these claims. (Ex. 1002 ¶¶ 98-135; App. B.) Regarding the
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`preambles of Claims 1, 9, and 10, Qualcomm discloses “The steps of a method or
`
`algorithm described in connection with the disclosure herein may be embodied
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`directly in hardware, in a software module executed by a processor, or in a
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`combination of the two.” (Ex. 1003, 14:37-40).
`
`
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`1. “compute/computing an initial transmit power for the uplink shared
`
`channel using full path loss compensation, wherein the initial transmit
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`power depends on a preamble power of a first message sent on an
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`access channel and the second power control adjustment state f(0) …
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`wherein the second power control adjustment state f(i) for i=0 is
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`initialized as [Equation 4a]”
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`Qualcomm teaches calculating the “initial transmit power”, which is the
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`transmit power for Message 3, in the form of PUSCH_power. (Ex. 1003, 10:1-19
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`(“PUSCH_power is the transmit power of the message sent on the PUSCH” and it
`
`is “the transmit power of the first uplink message sent after successful transmission
`
`of the random access preamble”)). Qualcomm teaches that PUSCH transmit power
`
`depends on both the preamble power of the first message sent on a random access
`
`channel and the power control adjustment state f(0). For example, Qualcomm
`
`discloses “FIG. 10 shows a design of a process 1000 for transmitting a message for
`
`system access. A random access preamble may be sent for system access (block
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`1012). A random access response with a PC correction may be received (block
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`1014). The transmit power of a message may be determined based on the PC
`
`correction and possibly other parameters (block 1016). For example, the transmit
`
`power of the message may be determined further based on the transmit power of
`
`the random access preamble, a power offset between a first channel used to send
`
`the random access preamble and a second channel used to send the message, etc.
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`The message may be sent with the determined transmit power (block 1018).” (Ex.
`
`1003, 13:34-45; emphasis added).
`
`a. “the initial transmit power depends on a preamble power of a first
`
`message sent on an access channel”
`
`Qualcomm’s Equation (4) discloses a formula for calculating the transmit
`
`power for Message 3 (PUSCH_power): “PUSCH_power = RACH_power +
`
`PC_correction + PUSCH_RACH_power_offset.” (Ex. 1003, 10:1-19).
`
`The parameter RACH_power “is the transmit power of the successful
`
`transmission of the random access preamble on the RACH [random access
`
`channel].” (Ex. 1003, 10:12-13). The initial transmit power (PUSCH_power),
`
`therefore, depends on the preamble power of the first message, i.e., the transmit
`
`power of the random access preamble (RACH_power).
`
`b. “the initial transmit power depends on ... power control
`
`adjustment state f(0) … wherein the second power control
`
`adjustment state f(i) for i=0 is initialized as [Equation 4a]”
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`Equation [4a] of the ‘966 patent recites “P0_UE_PUSCH + f(0) = ΔPPC
`+ ΔPrampup”, but Equation [4a] can be rewritten as f(0) = ΔPPC + ΔPrampup. (Ex. 1002,
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`¶81). Qualcomm discloses that initial transmit power (PUSCH_power) depends on
`
`both ΔPPC and ΔPrampup. (Ex. 1002 ¶¶ 102-106; 119-124). For example, TX_power
`
`(the transmit power for the random access preamble, or RACH_power; 8:37-9:36)
`
`is defined in units of decibels in Equation (2) of Qualcomm. As shown below,
`
`TX_power (or RACH_power) depends on the power_ramp_up parameter.
`
`Equation (2): TX_power = RACH_power = -RX_power +
`
`interference_correction + offset_power + added_correction +
`
`power_ramp_up.
`
`The power_ramp_up parameter describes the increase in the UE’s transmit
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`power for subsequent transmissions of the random access preamble. (Ex. 1003,
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`9:45-49). It is used to increase the transmit power of a subsequent random access
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`preamble that is sent when the UE does not receive a response from the eNB from
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`an earlier sent random access preamble. (Ex. 1002, ¶103). The power_ramp_up
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`parameter is the same as “a ramp-up power for preamble transmissions,” i.e.,
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`ΔPrampup of claims 1, 9, and 10 of the ‘966 patent. (Id.).
`
`Further, the PUSCH_power described in Equation (4) of Qualcomm can be
`
`rewritten by substituting the parameter RACH_power with Qualcomm’s Equation
`
`(2), which describes the transmit power of the preamble. As shown below, after
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`this substitution, the modified Equation (4) of Qualcomm shows that
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`PUSCH_power depends on power_ramp_up + PC_correction (Ex. 1002, ¶104):
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`Equation (4) of Qualcomm: PUSCH_power = RACH_power +
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`PC_correction + PUSCH_RACH_power_offset.
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`Equation (2) of Qualcomm: TX_power = RACH_power = -RX_power +
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`interference_correction + offset_power + added_correction +
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`power_ramp_up.
`
`Substituting Equation (2) into Equation (4) to obtain:
`
`Modified Equation (4): PUSCH_power = -RX_power +
`
`interference_correction + offset_power + added_correction +
`
`power_ramp_up + PC_correction + PUSCH_RACH_power_offset.
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`Rearranging Modified Equation (4) to obtain:
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`Modified Equation (4): PUSCH_power = power_ramp_up +
`
`PC_correction - RX_power + interference_correction + offset_power +
`
`added_correction + PUSCH_RACH_power_offset.
`
`Qualcomm describes that PC_correction “indicates an amount of increase or
`
`decrease in transmit power” and it “is the PC correction received in the random
`
`access response” (Ex. 1003, 10:20-21; 10:16-17). The random access response
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`(which is Message 2) is the response sent by the eNB after receiving the random
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`access preamble. (Ex. 1002, ¶105). In the ‘966 patent the UE receives a power
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`control command, ΔPPC, in the preamble response from the eNB, which is Message
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`2. (Ex. 1001, 6:58-60.) ΔPPC indicates if the UE should increase or decrease its
`
`transmit power. (Ex. 1002, ¶105). Thus, PC_correction is “a power control
`
`command indicated in a second message that is received in response to sending the
`
`
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`first message,” i.e., ΔPPC of claims 1, 9, and 10 of the ‘966 patent. (Id.).
`
`Accordingly, the initial transmit power (PUSCH_power) described in Qualcomm
`
`also depends on f(0), i.e. ΔPPC + ΔPrampup.
`
`As discussed above, PUSCH_power as described in Qualcomm depends on
`
`both the preamble power, i.e., RACH_power, and f(0), i.e., ΔPPC +ΔPrampup or
`
`PC_correction + power_ramp_up. The power_ramp_up parameter is part of both
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`the preamble power and f(0). In this manner, the initial transmit power
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`(PUSCH_power) of Qualcomm depends directly on a preamble power and depends
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`indirectly on the power_ramp_up parameter. (Ex. 1002 ¶¶ 119-124).
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`In addition, it would have been obvious for a POSITA to come up with
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`Equation [4a] based on AAPA of the ‘966 patent. (Ex. 1002 ¶¶ 107-118). For
`
`example, TS 36.213 discloses an equation for PUSCH transmit power, which is
`
`Equation [1] of the ‘966 patent. (Ex. 1001, 4:28-5:35; Ex. 1004, §5.1.1.1). A
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`POSITA would understand Equation [1] is dependent on UE specific parameters,
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`P0_UE_PUSCH and f(i). (Ex. 1002 ¶¶108-111). And the ‘966 patent admits that except
`
`for the UE specific parameters, P0_UE_PUSCH and f(0), other parameters of Equation
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`[1] are known. (Ex. 1001 10:11-20). Thus, a POSITA would have been motivated
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`to use other parameters relevant to the Random Access Procedure in place

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