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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`HTC CORPORATION AND HTC AMERICA, INC.,
`ZTE (USA) INC.,
`Petitioners
`v.
`
`INVT SPE LLC,
`Patent Owner
`
`
`Case No. IPR2018-01473
`U.S. Patent No. 6,611,676
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`

`

`IPR2018-01473
`Patent 6,611,676
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`
`
`
`TABLE OF CONTENTS
`
`I. Preliminary Statement ................................................................................. 1
`II. Factual Background of the ’676 Patent ....................................................... 2
`A. State of the art at the time of invention .................................................... 2
`B. Overview of the ’676 Patent ..................................................................... 7
`III. Claim Construction ....................................................................................11
`IV. The Petition’s Asserted Ground 1 ..........................................................12
`A. Overview of Keskitalo (Ex. 1004) ...........................................................12
`B. Overview of Lindell (Ex. 1005) ..............................................................15
`C. The Petition has not shown a “reasonable likelihood” of success on
`Ground 1, which relies on Keskitalo and Lindell. ........................................16
`1. Keskitalo and Lindell, either alone or in combination, fail to disclose
`all elements of the challenged claims. .......................................................17
`i. All Challenged Claims requires a “rate changing means for
`changing a transmission rate according to the comparison result.” .......18
`ii. Keskitalo does not teach a “rate change circuitry that changes a
`transmission rate.” ..................................................................................20
`iii. Lindell does not remedy Keskitalo’s shortcomings. ........................22
`a. Lindell’s power disabling circuitry is a switch or “fuse,” not a
`“rate change circuitry.” .......................................................................22
`b. Lindell teaches limiting the transmission power, not changing the
`transmission rate. .................................................................................23
`2. The Petition fails to provide an “articulated reasoning with some
`rational underpinning” for why a POSITA would have been motivated to
`combine Keskitalo with Lindell. ...............................................................25
`i. The Petition has not shown that a POSITA would expect success in
`making the combination. ........................................................................25
`ii. The Petition has not shown that combining Keskitalo and Lindell
`would further the references’ objectives. ...............................................28
`iii. The Petition’s proposed combination does not achieve the claimed
`invention. ................................................................................................30
`iv. The Petition’s motivation to combine arguments contain
`ii
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`IPR2018-01473
`Patent 6,611,676
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`
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`unsupported and conclusory statements. ................................................31
`V. Conclusion .................................................................................................33
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`IPR2018-01473
`Patent 6,611,676
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................. 32
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................. 1, 16
`Gen. Elec. Co. v. TAS Energy Inc.,
`IPR2014-00163, Paper 11 (PTAB May 13, 2014) ..................................... 31
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ........................................................................................ 16
`In re NTP, Inc.,
`654 F. 3d 1279 (Fed. Cir. 2011) ................................................................. 17
`In re Rambus, Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ...................................................................... 11
`In re Royka,
`490 F.2d 981 (CCPA 1974) ........................................................................ 16
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) ................................................................................ 16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 29, 31
`Magnum Oil, 829 F.3d at 1381 .................................................................. 29, 31
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ............................................................. 31
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`868 F.3d 1013 (Fed. Cir. 2017) .................................................................. 11
`
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`IPR2018-01473
`Patent 6,611,676
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................. 11
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .................................................................. 16
`Other Authorities
`37 C.F.R. § 42.6(e)(4) ...................................................................................... 35
`37 C.F.R. § 42.24(a)(i) and (b)(1) .................................................................... 34
`37 C.F.R. § 42.207(e) ......................................................................................... 1
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`IPR2018-01473
`Patent 6,611,676
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`
`EXHIBIT LIST
`
`Exhibit Description
`2001
`Shannon Paper
`2002
`Vojcic Declaration
`2003
`PCT Application WO1994019876A1
`U.S. Patent No. 5,056,109
`2004
`
`
`
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`Patent 6,611,676
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`I. Preliminary Statement
`
`Apple Inc. (“Apple”), HTC Corporation and HTC America, Inc. (“HTC”),
`
`and ZTE (USA) Inc. (“ZTE”) (collectively, “Petitioners”) fall short of
`
`demonstrating a reasonable likelihood of success on any of the asserted grounds.
`
`The Petition challenges claims 1-11 of the ’676 patent. Ground 1 addresses claims
`
`1-3, 5-9, and 11. Pet. at 6. Ground 2 addresses claims 4 and 10. Id. Patent Owner,
`
`however, has disclaimed claims 4 and 10.1 Accordingly, Ground 2 is moot and the
`
`Board should not institute inter partes review on the basis of Ground 2. 37 C.F.R.
`
`§ 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant
`
`review will be instituted based on disclaimed claims”). This Patent Owner
`
`Preliminary Response substantively addresses only Ground 1, which addresses the
`
`remaining claims 1-3, 5-9, and 11 (the “Challenged Claims”).
`
`Ground 1 relies on combining a PCT application by Keskitalo et al.
`
`(“Keskitalo”) with a U.S. Patent to Lindell (“Lindell”). Ground 1 fails to identify,
`
`however, any portions in Keskitalo or Lindell that disclose a “rate change circuitry
`
`that changes a transmission rate according to the comparison result in said
`
`comparison circuity.” Thus, the Petition fails to demonstrate a reasonable
`
`likelihood that at least one of the Challenged Claims is obvious, where obviousness
`
`
`1 See Ex. 2004.
`
`
`
`1
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`IPR2018-01473
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`“requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l
`
`Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
`
`The Petition also fails to provide an adequate motivation to combine where
`
`Keskitalo and Lindell have markedly different purposes and fields of use.
`
`Specifically, Keskitalo relates to reducing transmission interference, while Lindell
`
`relates to limiting an end user’s exposure to harmful radiation emitted during data
`
`transmission. As explained in detail below, a POSITA would not look to combine
`
`references from such disparate fields, a fact not addressed by the Petition.
`
`For each of these reasons, the Petition fails to meet the burden of showing a
`
`reasonable likelihood that the Challenged Claims are unpatentable. The Petition
`
`should be denied accordingly.
`
`II.
`
`Factual Background of the ’676 Patent
`
`A. State of the art at the time of invention
`
`The ’676 patent, which was originally applied for and obtained by Panasonic
`
`Corporation, relates to wireless telecommunications systems. Ex. 1001 at 1:9-11.
`
`At a high level, such systems are comprised of three main components: base
`
`stations, user equipment (“UE”),2 and cells. UE can refer to cellular phones, tablet
`
`
`2 The ’676 patent refers to UEs as “mobile stations” or communication terminal
`
`apparatuses.” See, e.g., Ex. 1001 at 1:62; 2:12.
`
`
`
`2
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`

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`IPR2018-01473
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`computers, smartwatches, or other devices that allow users to communicate across
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`a network. UEs connect to and communicate through base stations, where the
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`geographic coverage of a given base station in turn defines a “cell.”
`
`
`
`Exemplary Cellular Communications System
`
`In such systems, communication quality, including the quality of the
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`transmission “signal,” depends on numerous factors including transmission rate,
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`transmission power, and transmission interference. “Transmission rate” refers to
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`the rate at which data is processed by the radio communication system, measured
`
`by bits per second, or bitrate. “Transmission power” refers to the strength of the
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`transmission signal, measured by decibels or dB. Generally, transmission rate
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`changes proportionally with transmission power.
`
`There are two exceptions to this general rule. One exception is that
`
`transmission rate will increase with transmission power until the transmission rate
`
`reaches a maximum limit. The other exception, as explained in further detail
`
`
`
`3
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`IPR2018-01473
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`below, occurs when changes in other variables allow a system to change the
`
`transmission power and maintain the same transmission rate.
`
`One such other variable is “transmission interference,” which refers to
`
`undesired signals, separate from the useful signal, which modify or disrupt a useful
`
`signal as it travels along a channel between a UE and a base station. Interference
`
`can also occur where the transmissions to and/or from multiple UEs conflict with
`
`each other. Ex. 1001 at 1:46-56.
`
`As alluded to above, when a transmission rate remains constant, altering
`
`transmission power directly affects both the useful signal strength and interference
`
`levels. When transmission power increases, the signal strength of the entire
`
`transmission signal increases, including both transmission interference and the
`
`useful signal. Similarly, reducing transmission power reduces the entire signal
`
`strength of the transmission signal. Id. When transmission power remains constant,
`
`transmission signal strength is proportional to the transmission rate.3
`
`
`3 In information theory, the Shannon–Hartley theorem provides the maximum rate
`
`at which information can be transmitted over a communications channel of a
`
`specified bandwidth in the presence of noise. Thus, for a given bandwidth,
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`adjusting the transmission rate to the allowed maximum rate can optimize the
`
`useful signal strength and not increase the noise. Ex. 2001 at 10-11.
`
`
`
`4
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`Patent 6,611,676
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`
`As explained by the ’676 patent, traditionally, the base station responded to
`
`interference by regulating transmission power, and not the transmission rate.
`
`Ex. 1001 at 1:41-45. The base station regulated transmission power based on two
`
`variables: “reception” signal-to-interference ratio (SIR) and “target” SIR. Id. at
`
`1:41-46. SIR is the quotient between the average received modulated carrier power
`
`and the average received co-channel interference power, i.e. cross-talk, from other
`
`transmitters than the useful signal. Ex. 2002 (Vojcic Decl.) at ¶ 23. When the
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`reception SIR was less than the target SIR, the UE sent a command to the base
`
`station to increase transmission power. When the reception SIR was greater than
`
`the target SIR, the UE sent a command to the base station to decrease transmission
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`power. Ex. 1001 at 1:26-32.
`
`This traditional response in the prior art to changes in interference levels,
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`however, has undesirable effects. Such undesirable effects stem from the fact that
`
`while reception SIR is often a function of reception quality and the change in
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`transmission power, as measured by the UE, reception SIR sometimes decreases
`
`due to factors other than reception quality and transmission power. Id. at 1:23-26;
`
`1:41-45. One such example is fading, which is the variation of the attenuation of a
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`signal with various variables. Id. at 1:47-49; Ex. 2002 (Vojcic Decl.) at ¶ 25.
`
`Similarly, while target SIR is generally a function of the mobile station’s
`
`environment, largely based on the Frame Error Rate (FER) measured by the base
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`
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`5
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`IPR2018-01473
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`station, similar to reception SIR, the target SIR sometimes increases due to factors
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`other than the FER, such as the transmission rate. Ex. 1001 at 1:46-49.
`
`The diagram below, created by Patent Owner’s expert, Dr. Vojcic, based on
`
`the description of the prior art in the ’676 patent, demonstrates this iterative
`
`process of the traditional approach:
`
`Ex. 2002 (Vojcic Decl.) at ¶ 26.
`
`Using this prior art approach shown by the above diagram could result in the
`
`UE signaling the base station to increase transmission power when it is actually
`
`undesirable to do so. For example, when the reception SIR decreases due to fading,
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`
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`6
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`IPR2018-01473
`Patent 6,611,676
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`and the target SIR increases due to transmission rate, the mobile station will
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`instruct the base station to “considerably increase” the transmission power to bring
`
`the two SIR variables closer. Ex 1001 at 1:50-55. This increase in transmission
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`power is “likely to increase interference with other mobile stations to an intolerable
`
`degree.” Id. As a result, all mobile stations in a similar geographic area will
`
`experience decreased performance. Ex. 2002 (Vojcic Decl.) at ¶ 24.
`
`B. Overview of the ’676 Patent
`
`The ’676 patent teaches a novel solution to these problems wherein the UE’s
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`“transmission rate” is increased or decreased based on a comparison of an average
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`“transmission power” measurement to a predetermined power threshold, as
`
`compared to pin-point measurements and adjustments in the prior art, thereby
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`allowing the apparatus to more effectively and efficiently respond to negative
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`effects from the surrounding environment (e.g. interference). Ex. 1001 at 1:59-64;
`
`16:21-38.
`
`Of the challenged claims, claims 1, 6, 7 are independent, with claims 2-5
`
`dependent from claim 1, and claims 8-11 dependent from claim 7. Claim 7 is
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`illustrative of claims 1 and 6, with claim 7 reading as follows4:
`
`
`4 Claims 1, 6, and 7 have the same substantive claim elements, wherein claim 1 is
`
`written in means plus function terms, claim 6 is a method claim, and claim 7 is a
`
`
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`7
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`IPR2018-01473
`Patent 6,611,676
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`7. A radio communication apparatus having radio transmission circuitry and
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`radio reception circuitry, said apparatus comprising:
`
`a transmission power controller that increases or decreases
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`transmission power of said transmission circuitry according to
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`transmission power control information received by said reception
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`circuitry;
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`average transmission power calculation circuitry that calculates an
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`average value of the transmission power of said transmission
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`circuitry;
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`allowable transmission power holder circuitry that holds a
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`predetermined allowable transmission power value;
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`comparison circuitry that compares the average value with the
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`allowable transmission [p]ower value; and
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`rate change circuitry that changes a transmission rate according to the
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`comparison result in said comparison circuitry.
`
`Ex. 1001 at 16:22-38.
`
`The ’676 patent solves the problems in the prior art by adjusting the
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`transmission rate (instead of the transmission power) based on a set of instructions
`
`
`standard apparatus claim. Ex. 1001 at 15:30-16:61.
`
`
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`8
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`IPR2018-01473
`Patent 6,611,676
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`executed by a comparison circuitry. Specifically, the comparison circuitry
`
`compares the average transmission power value to a threshold transmission power
`
`value. Based on this comparison, the transmission rate is adjusted so that the
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`transmission power value moves to a desired level. Id. at 1:65-2:4; 15:43-44
`
`(Claim 1); 16:20-21 (Claim 6); 16:34-35 (Claim 7).5
`
`All independent claims (and therefore dependent claims) require this feature:
`
`Claim 1
`
`“rate changing means for changing a transmission rate according to
`
`the comparison result in said comparing means” Id. at 15: 45-47.
`
`Claim 6
`
`“changing a transmission rate according to the comparison result”
`
`Id. at 16:20-21.
`
`Claim 7
`
`“rate change circuitry that changes a transmission rate according to
`
`the comparison result in said comparison circuitry” Id. at 36-38.
`
`As noted above, the ’676 patent discloses a method for the base station to estimate
`
`
`5 The specification also describes several other benchmark signals for comparisons
`
`that trigger the claimed rate change. The use of these benchmarks makes the circuit
`
`configuration simplest and allows the use in an environment free of inference
`
`signals. Ex. 1001 at 4:12-14. For example, transmission power can also be
`
`expressed via an SIR value.
`
`
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`IPR2018-01473
`Patent 6,611,676
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`the average transmission power from the TPC signal and use the estimated
`
`transmission power value as the benchmark. Id. at 11:31-36. The ’676 patent
`
`summarizes this process in the flow charts below:
`
`
`
`
`
`Operation of the transmission rate
`controller when reception quality is
`poor
`
`Operation of the transmission rate
`controller when reception quality is
`good
`
`There are multiple benefits to the approach claimed by the ’676 patent, as
`
`compared to the prior art. First, reducing the transmission rate without changing
`
`the transmission power allows for the optimal or fastest transmission as long as the
`
`inference with others is within the allowable range set by the base station. Id. at
`
`11:53-55. Thus, the invention makes it possible to improve the reception quality of
`
`a UE even if the condition of the communication path deteriorates drastically and
`
`not increase the level of interference with others. Id. at 7:16-25. Second, the use of
`
`the TPC signal—information already reported by the UE—for channel estimation
`
`reduces the need for additional control information. Id. at 10:37-41.
`
` In sum, the ’676 patent provides improved overall system capacity that
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`
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`10
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`IPR2018-01473
`Patent 6,611,676
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`enables each UE to transmit successfully at data rates that could not be achieved
`
`without the invention, while still staying below a max transmission rate set by the
`
`base station. Ex. 2002 (Vojcic Decl.) at ¶ 31.
`
`III. Claim Construction
`
`The Board should apply the plain and ordinary meaning of the claim terms
`
`for the ’676 patent because the ’676 patent expired on April 19, 2017, before the
`
`filing date of the Petition. In an IPR of an expired patent, “the Board’s review of
`
`the claims…is similar to that of a district court’s review.” In re Rambus, Inc., 694
`
`F.3d 42, 46 (Fed. Cir. 2012). Under this standard, claim terms are given their
`
`ordinary and customary meaning, as understood by a person of ordinary skill in the
`
`art, at the time of the invention, taking into consideration the language of the
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`claims, the specification, and the prosecution history of record. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005).
`
`The Petition advances numerous claim constructions. Pet. at 8-11. However,
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`it is not necessary for the Board to construe any terms in this proceeding because,
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`as shown below, construction is not necessary to resolve the controversy. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and
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`only to the extent necessary to resolve the controversy.”).
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`Patent 6,611,676
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`IV. The Petition’s Asserted Ground 1
`
`The Petition does not demonstrate a reasonable likelihood of success on
`
`Ground 1, which relies on combining a PCT application by Keskitalo et al.
`
`(“Keskitalo”) with a U.S. Patent to Lindell (“Lindell”). Specifically, the Petition
`
`does not identify any portions in Keskitalo or Lindell that disclose a “rate change
`
`circuitry that changes a transmission rate according to the comparison result in said
`
`comparison circuity.” The Petition also fails to provide a supported motivation to
`
`combine.
`
`A. Overview of Keskitalo (Ex. 1004)
`
`Keskitalo is a patent application titled “method of increasing signal quality
`
`by adjusting the spreading ratio in a CDMA cellular radio system” published under
`
`the Patent Cooperation Treaty (PCT). Ex. 1004 at 1. As discussed below in detail,
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`in the context of the ’676 patent and Keskitalo, power variations are on the scale of
`
`ms. Ex. 2002 (Vojcic Decl.) at ¶¶ 45-46.
`
`In CDMA, the narrow-band data signal of the user is modulated by a
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`pseudorandom sequence called the spreading code, having a broader band than the
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`data signal. Ex. 1004 at 1:29-32. The bit rate of the spreading code is much higher
`
`than that of the data signal. Id. at 2:1-4. The ratio between the bit rate of the
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`spreading code and the bit rate of the data signal is called the spreading ratio. Id. at
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`2:7-9. Keskitalo generally relates to changing the transmission rate by adjusting the
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`spreading ratio “on the basis of signal quality” or “when the quality of the
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`connection is not adequate.” Id. at 4:18-23; 6:8-12; 7:23-28; 10:13-17.
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`The PCT application itself, however, only discloses changing the spreading
`
`ratio in response to three factors:
`
`(1) signal-to-noise ratio measured from the signal received at the base
`
`station,
`
`(2) bit error rate calculated from the signal received at the base station, and
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`(3) signal power measured from the signal received at the base station.
`
`Id. at 11:3-20. Keskitalo, however, does not teach how or when the spreading ratio
`
`is adjusted, as required by the ’676 patent. Indeed, Keskitalo’s specification
`
`discloses two simplified diagrams of the radio transmitter and receiver. Id. at 6:17-
`
`21. The input signal is multiplied and filtered as it moves through the different
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`circuitries so that the output signal has the desired spreading ratio. Id. at 6:22-7:30.
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`The spreading code, highlighted in the two diagrams below, serves as the
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`multiplier that would result in a change in transmission rate. Id. at 6:25-27.
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`13
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`
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`Input and output signals from the simplified transmitter diagram
`
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`Input and output signals from the simplified recevier diagram
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`
`
`Importantly, Keskitalo does not teach what triggers the change in the
`
`spreading code and when that change occurs. Although Keskitalo mentions that
`
`“the base station may use a standard for the quality of the connection,” Keskitalo
`
`does not explain the relationship, if any, between that standard and the spreading
`
`code. Id. at 6:13-16. Keskitalo also suggests that the mobile station can alter the
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`spreading ratio “if the quality of the connection…is not adequate,” but omits the
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`steps of how the system determines the adequacy of the quality. Id. at 7:23-28.
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`B. Overview of Lindell (Ex. 1005)
`
`In light of the deficiencies in Keskitalo, the Petition relies on Lindell in
`
`relation to the elements of the Challenged Claims that relate to adjusting a
`
`transmission rate in response to a comparison between an actual value and an
`
`average value. Pet. at 28-30. Lindell is a U.S. patent titled “Averaged RF Exposure
`
`Control.” Ex. 1005 at 1. Lindell relates to a technology for disabling transmission
`
`to “assur[e] that the average RF-exposure levels from radio transmitters…do not
`
`exceed a predetermined level” over extended periods of time, e.g. “6 or 30
`
`minutes.” Ex. 1005 at 1:1-10 and 1:37-38.
`
`As explained in Lindell, in the years before the Lindell patent was applied
`
`for, there had been an “increasing concern over the environmental effects of radio
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`frequency [RF] radiation.” Id. at 1:11-12. In response, multiple standards setting
`
`bodies such as the IEEE “adopted new standards for RF exposure” for mobile
`
`devices such as UEs. Id. at 12-32. These standards were designed to protect UE
`
`users from exposure to too much RF radiation, and as such set maximum amounts
`
`of radiation users could be exposed to over certain time periods, “e.g. 6 or 30
`
`minutes.” Id.
`
`In response to those then-recently adopted standards, Lindell claimed an
`
`invention that ensures that a transmitter does not exceed the “Maximum
`
`Permissible Exposure” (MPE) over the permitted average time.” Id. at 1:59-61.
`
`
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`IPR2018-01473
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`Important to Lindell was that Lindell taught to measure RF radiation levels over
`
`long periods of time, and to allow the MPE thresholds to be exceeded for relatively
`
`shorter periods of time, so long as the average exposure levels did not exceed the
`
`MPE thresholds over longer periods of time, “e.g. 6 or 30 minutes.” Id. at 1:37-38.
`
`To that end, in Lindell, when the average transmission power exceeds a
`
`certain threshold set by the power controller “for a given averaging time Tave,”
`
`(“e.g., 6 or 30 minutes”), a transmitter disable circuit is activated to disable the
`
`radio transmitter. Id. at 1:36-57; 4:2-3; 4:17-25. This is “analogous[] to a fuse
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`wherein when the maximum power duration is exceeded, the transmission is
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`simply shut-off.” Id. at 3:56-59.
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`As explained by Lindell, disabling transmission power according to
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`Lindell’s disclosures would result in “total loss of communication,” not just
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`“degradation of quality.” Id. at 3:49-52. As such, Lindell recommends disabling
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`transmission power only for radio systems with short, low-duty transmission
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`cycles, for example, Handheld Simplex Radios. Id. at 2:60-64.
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`C. The Petition has not shown a “reasonable likelihood” of success
`on Ground 1, which relies on Keskitalo and Lindell.
`The Petition, including Ground 1, asserts only obviousness – it does not
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`assert anticipation. Pet. at 6. As set out by the Supreme Court, the framework for
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`an obviousness inquiry requires determining “the scope and content of the prior
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`art” and the “differences between the prior art and the claims at issue.” KSR Int’l
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`Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007) (citing Graham v. John Deere
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`Co. of Kansas City, 383 U.S. 1, 17 (1966)). “[O]bviousness requires a suggestion
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`of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
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`1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
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`Further, obviousness determinations must be made without “any hint of hindsight.”
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`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
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`The patent-in-suit may not be used “as a guide through the maze of prior art
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`references, combining the right references in the right way so as to achieve the
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`result of the claims in suit.” In re NTP, Inc., 654 F. 3d 1279, 1299 (Fed. Cir. 2011).
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`The Petition’s Ground 1 fails as a matter of law for two reasons. First, the
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`Petition fails to provide sufficient evidence that Keskitalo and Lindell disclose all
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`elements of the challenged claims. Second, the Petition has not shown a sufficient
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`motivation to modify or combine Keskitalo with Lindell.
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`1. Keskitalo and Lindell, either alone or in combination, fail to
`disclose all elements of the challenged claims.
`Neither Keskitalo nor Lindell, alone or in combination, disclose a “rate
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`changing means for changing a transmission rate according to the comparison
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`result” as required by the Challenged Claims.
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`As discussed in more detail in Section IV.C.1.ii., Keskitalo does not describe
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`the specific timings of a transmission rate change. The Petition cites three
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`examples in Keskitalo that teach a “CDMA transmitter that changes a spreading
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`ratio” to establish this claim element. Pet. at 29. But none of these examples,
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`individually or combined, discloses a rate change circuitry that “changes a
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`transmission rate” “according to the comparison result in said comparison
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`circuitry,” as required by the claims. Ex. 1001 at 16:36-38. Further, as discussed
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`below in Section IV.C.1.iii., Lindell does not disclose a transmission rate switching
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`means or circuitry at all. Institution should be denied accordingly.
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`i. All Challenged Claims requires a “rate changing means
`for changing a transmission rate according to the
`comparison result.”
`Claim 7 requires a “rate change circuitry that changes a transmission rate
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`according to the comparison result in said comparison circuitry.”6 As discussed in
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`6 As noted above, the analysis regarding claim 7 is applicable to all of the
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`Challenged Claims, as all of the Challenged Claims share a common element
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`requiring changing a transmission rate according to the comparison result of the
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`transmission power. Ex. 1001 at 15:48-50 (claim 2), 15:51-54 (claim 3), 16:1-8
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`(claim 5), 16:39-41 (claim 8), 16:42-44 (claim 9), 16:54-61 (claim 11). As such,
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`the Petition’s failure to demonstrate a likelihood of obviousness for claim 7(e),
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`which corresponds to claim 1(e), also applies to all dependent claims in Ground 1.
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`detail in section B above (overview of the ’676 patent), the rate change circuitry in
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`the ’676 patent has two relevant features: (1) it adjusts the transmission rate based
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`on the feedback from the comparison circuitry7 and (2) it can adjust the
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`transmission rate without affecting the transmission power. See, e.g., Ex. 1001 at
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`16:36-38 (“rate change circuitry that changes a transmission rate” and “according
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`to the comparison result in said comparison circuitry”).
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`To teach this element, the Petition cites to a combination of Keskitalo and
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`Lindell – citing Keskitalo for the “rate change circuitry that changes a transmission
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`rate” and “Lindell” for the alleged “average transmission power values.” Pet. at 28-
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`30. The Petition admits that Keskitalo does not teach an “average transmission
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`power” and as such explicitly relies on Lindell to disclose the “average
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`transmission power” missing from the primary reference Keskitalo. Pet. at 29. As
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`shown below, however, neither reference, either alone or in combination, teaches
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`the claimed element.
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`7 The Petition also admits that a rate changing circuitry satisfying this limitation
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`must be “programmed or designed to change a transmission rate according to a
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`comparison between the average transmission power value and the predetermined
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`allowable transmission power value.” Pet. at 28-29.
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`ii. Keskitalo does not teach a “rate change circuitry that
`changes a transmission rate.”
`The Petition relies on Keskitalo to teach a “rate change circuitry that
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`changes a transmission rate.” Pet. at 28-30, 36. At most, however, Keskitalo
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`discloses a method for adjusting transmission rate without affecting the
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`transmission power, but does not disclose adjusting transmission rate based on the
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`result of a comparison circuitry that executes the claimed comparison.
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`To establish this element, the Petition cites to three examples in Keskitalo
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`that teach a “CDMA transmitter that changes a spreading ratio.” Pet. at 29. But
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`none of these examples, individually or combined, discloses a rate change circuitry
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`that “changes a transmission rate” “according to the comparison result in said
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`comparison circuitry.” Ex. 1001 at 16:36-38.
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`The three exam