Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Entered: March 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and
`HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01556
`Patent 7,206,587 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A.
`BENOIT, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Entered: March 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and
`HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01556
`Patent 7,206,587 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A.
`BENOIT, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
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`
`I. INTRODUCTION
`
`A. Background
`HTC Corporation and HTC America, Inc. (collectively “Petitioner”)
`filed a Petition for inter partes review of claims 1–4 of U.S. Patent No.
`7,206,587 B2 (Ex. 1001, “the ’587 patent”). Paper 1 (“Pet.”). INVT SPE
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”).
`Although Petitioner initially sought to include claims 1–3 in its
`challenge, Patent Owner statutorily disclaimed those claims after the
`Petition was filed. See Ex. 2001. For the reasons discussed below, in this
`Decision, we do not regard disclaimed claims 1–3 as claims challenged in
`the Petition, and instead regard claim 4 as the only challenged claim.
`By statute, institution of an inter partes review may not be authorized
`“unless . . . the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition and the Preliminary Response, we
`are not persuaded Petitioner demonstrated a reasonable likelihood of
`prevailing in establishing unpatentability claim 4 of the ’587 patent.
`Accordingly, no trial is instituted.
`B. Related Proceedings
`According to Petitioner, the ’587 patent was originally at issue in
`Inventergy, Inc. v. HTC Corporation and HTC America, Inc., Case No. 17-
`cv-200-VAC-CJB (D. Del.). Pet. 1. Petitioner contends the ’587 patent is
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`at issue in INVT SPE LLC v. HTC Corporation and HTC America, Inc.,
`Case No. 2:17-cv-03740 (D.N.J.). Id.
`C. The ’587 Patent
`The ’587 patent issued on April 17, 2007, from an application filed
`December 18, 2002, and is a continuation of application No. 10/089,605,
`filed on April 1, 2002, now U.S. Patent No. 6,760,590. Ex. 1001, [45],
`[22], and [63].
`The ’587 patent relates to allocating “communication resources . . .
`to communication terminals based on downlink channel quality.” Id. at
`2:37–43. According to the ’587 patent, “among information indicative of
`downlink channel quality, which has a possibility of decreasing the
`downlink throughput when the information is received erroneously in a
`base station, a communication terminal provides such information with less
`susceptibility to errors in the propagation path to transmit.” Id. at 2:44–52.
`In an embodiment, “[the] communication terminal . . . transmits with
`less susceptibility to errors in the propagation path in proportion to
`information for which the amount of change is large within CIR [, i.e.,
`‘desired carrier to interference ratio’] information.” Id. at 19:30–34
`(brackets in original). For example, “[i]f a CIR value is indicated by a
`value with a decimal fraction (such as 8.7 dB),” then “information for
`which the amount of change is large” and “that indicates a broad value”
`refers to “the integer part (here, ‘8’).” Id. at 19:40–45. In such case, “since
`the amount of change per unit of the integer part is 1dB, while the amount
`of change per unit of the fractional part is 0.1 dB, the integer part is
`‘information for which the amount of change is large[.]’” Id. at 19:45–54.
`Therefore, “if an integer part is received erroneously by a base station, the
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`degree of error is large compared with the case where a fractional part is
`received erroneously[.]” Id.
`Figure 15, reproduced below, illustrates a configuration of the CIR
`signal creation section of a communication terminal. Id. at 3:32–34.
`
`
`
`Figure 15 depicts a configuration of CIR signal creation section
`1101, wherein, for a CIR value output from CIR measurement section is
`“8.7 dB,” “upper digit information generation section 1201 outputs the
`value of the integer part, ‘8’, to the 6-bit coding section 1203,” and “lower
`digit information generation section 1202 outputs the value of the fractional
`part, ‘7’, to the 4-bit coding section 1204.” Id. at 20:29–41.
`D. The Challenged Claim
`Independent claim 4 is the remaining challenged claim at issue, and is
`reproduced below:
`
`4
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`A communication terminal apparatus comprising:
`4.
`a measuring device that measures reception quality of a pilot
`signal to output information having a plurality of bits that indicate the
`measured reception quality;
`a coding device that encodes the information to obtain a code
`word; and
`a transmitter that transmits the code word, wherein:
`the coding device encodes the information such that the most
`significant bit of the plurality of bits is less susceptible to errors in a
`propagation path than other bits of the plurality of bits.
`Ex. 1001, 26:20–30.
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–4 are unpatentable based on the
`following specific ground (Pet. 3):
`Reference(s)
`
`Basis Claim(s) Challenged
`
`§ 1033
`
`Padovani1 and Gils2
`
`As discussed above, and for the reasons discussed below, we regard
`claim 4 as the only challenged claim. See Section I.A.
`Petitioner also relies on the declaration of Paul S. Min, Ph.D. (Ex.
`1017) for support. Pet. 3.
`
`1–4
`
`
`1 PCT Publication No. WO 99/23844, published May 14, 1999 (Ex. 1009, “Padovani”).
`2 W. van Gils, “Design of error-control coding schemes for three problems of noisy
`information transmission, storage and processing,” dissertation, Eindhoven Univ. of
`Technology, Eindhoven, the Netherlands, 1988 (Ex. 1010, “Gils”); see Pet. vii (Exhibit
`List).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103.
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`II. ANALYSIS
`A. Claim Construction
`The Board accorded the Petition a filing date of August 22, 2018
`(Paper 4, 1), prior to the effective date of the rule change that replaces the
`broadest reasonable interpretation (“BRI”) standard. See Changes to the
`Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11,
`2018) (“This rule is effective on November 13, 2018 and applies to all IPR,
`PGR and CBM petitions filed on or after the effective date.”). Under that
`standard, and absent any special definitions, we generally give claim terms
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art, at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
`claim terms must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes claim construction for “code word minimum
`distance” and “proportional to the degree of measured downlink channel
`quality” recited in claim 1. Pet. 15–19. Patent Owner points out that “[t]he
`Petition does not assert any term in claim 4 [, which is the only claim at
`issue,] requires construction,” and asserts that Patent Owner “does not
`believe that any claim terms require express construction to deny the
`Petition.” Prelim. Resp. 13.
`To the extent it is necessary to determine whether to institute an inter
`partes review, we discuss claims terms in the context of analyzing the
`asserted ground. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
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`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
`context of an inter partes review).
`B. Principles of Law
`In an inter partes review, “the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied on). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the
`subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which the
`subject matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
`(2007) (stating that a legal conclusion of “obviousness” cannot be “mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support” (quoting In re Kahn, 441 F .3d
`977, 988 (Fed. Cir. 2006))). See also In re Warner, 379 F.2d 1011, 1017
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`(CCPA 1967) (stating that obviousness under 35 U.S.C. § 103 “clearly must
`rest on a factual basis, and these facts must be interpreted without hindsight
`reconstruction of the invention from the prior art”).
`C. Level of Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995) (citation omitted). In that regard, Petitioner’s Declarant, Dr. Min,
`testifies that a person of ordinary skill in the art “would have had a
`bachelor’s degree in electrical engineering, computer engineering,
`mathematics, or a related filed, and one to two years of experience in
`wireless/mobile communications or equivalent education and experience.”
`Pet. 7–8; Ex. 1017 ¶ 55.
`At this juncture, Patent Owner does not dispute Dr. Min’s assessment
`on the level of ordinary skill in the art. See generally Prelim. Resp. Based
`on the current record, we apply Dr. Min’s assessment for purposes of this
`Decision. We also note that the prior art of record currently in the instant
`proceeding is consistent with this level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding
`that absent evidence to the contrary, “the prior art itself [may] reflect[] an
`appropriate level” of ordinary skill in the art).
`
`D. Asserted Obviousness over Padovani, in view of Gils
`Petitioner alleges that claims 1–4 would have been obvious over
`Padovani and Gils, as viewed by a person of ordinary skill in the art. Pet.
`
`8
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`19–73. Patent Owner raise several arguments in response. Prelim. Resp.
`1–44. Below are brief overviews of Padovani and Gils, followed by an
`analysis of the parties’ contentions regarding the challenged claims.
`1.
`Padovani
`Padovani, titled “METHOD AND APPARATUS FOR HIGH RATE
`PACKET DATA TRANSMISSION,” published as an International
`Application under the Patent Cooperation Treaty (PCT) on May 14, 1999,
`with a filing date of November 3, 1998. Ex. 1009, at [54], [43], [22].
`Padovani relates to “high rate packet data transmission” in “a data
`communication system capable of variable rate transmission.” Id. at
`Abstract.
`In Padovani, “[a] mobile station establishes communication with a
`base station,” and in this connected state, “the mobile station can receive
`data and control messages from the base station, and is able to transmit data
`and control messages to the base station.” Id. at 9:5–10. The mobile station
`then “monitors the forward link for transmission from the base stations in
`the active set of the mobile station,” and specifically, “the mobile station
`measures the signal-to-noise-and-interference ratio (C/I) of the forward link
`pilot from the base stations in the active set, as received at the mobile
`station.” Id. at 9:9–14. In particular, “[u]pon decoding the paging
`messages, and for each time slot until the data transmission is completed,
`the mobile station measures the C/I of the forward link signals from the
`base stations in the active set . . . . by measuring the respective pilot
`signals[,]” and “then selects the best base station based on a set of
`parameters” which comprises “the present and previous C/I measurements
`and the bit-error-rate or packet-error-rate.” Id. at 9:34–10:2.
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`“The mobile station then identifies the best base station and transmits
`to the selected base station a data request message [“DRC message”] on the
`data request channel[,]” wherein the DRC message “can contain the
`requested data rate or, alternatively, an indication of the quality of the
`forward link channel (e.g., the C/I measurement itself, the bit-error-rate, or
`the packet-error-rate).” Id. at 10:2–9. The mobile station encodes the DRC
`message with an error correcting code in “a predetermined coding format”
`and then transmits the encoded message to the base station. Id. at 27:35–
`36; 45:15–33, Fig. 6. “Coding of the DRC message is important since the
`error probability of the DRC message needs to be sufficiently low because
`incorrect forward link data rate determination impacts the system
`throughput performance.” Id. at 45:17–22.
`In an exemplary embodiment, a “CRC block encoder . . . encodes the
`3-bit DRC message into an 8-bit code word.” Id. at 45:20–22. “[T]he DRC
`message is transmitted to the selected base station\,” which is “achieved by
`covering the DRC message with the Walsh code which identifies the
`selected base station.” Id. at 45:32–46:5.
`2.
`Gils
`Gils purports to be a Ph.D. thesis entitled “Design of Error-Control
`Coding Schemes for Three Problems of Noisy Information Transmission,
`Storage and Processing,” which Petitioner contends was submitted to
`Eindhoven University of Technology in The Netherlands in 1988. Ex.
`1010, 14; see Prelim. Resp. 15. In data transmission and storage, “a desired
`
`
`4 For clarity, we refer to the exhibit page numbers in the bottom right corner
`of each page, not the dissertation page numbers in the upper corner of each
`page.
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`level of error control can be guaranteed by using error-correcting codes.”
`Ex. 1010, 13. In contrast to error-correcting codes that “can successfully be
`applied . . . where all positions in a message word require equal protection
`against errors,” Gils describes the design of error-control coding for
`“applications . . . in which some message positions are more important than
`others.” Id. at 18. “For example in transmitting numerical data, errors in
`the sign or high-order digits are more serious than are errors in the low-
`order digits.” Id.
`According to Gils, “[l]inear codes that protect some positions in a
`message word against a larger number of errors than other ones are called
`Linear Unequal Error Protection (LUEP) codes.” Id. Gils identifies a
`basic problem with LUEP codes as having “to find an LUEP code with a
`given dimension and separation vector such that its length is minimal and
`hence its information rate is maximal.” Id. at 18–19.
`3.
`Analysis
`Claims 1–3
`a.
`Petitioner alleges that claims 1–3 would have been obvious over
`Padovani and Gils. Pet. 44–73. As noted above, Patent Owner “disclaimed
`claims 1–3 of the ’587 patent[.]” Prelim. Resp. 1 (citing Ex. 2001). Thus,
`according to Patent Owner, “claim 4 (the ‘Challenged Claim’) is the only
`remaining claim challenged by the Petition.” Id. at 2; see also 35 U.S.C. §
`253 (indicating a patentee may disclaim claims).
`We agree with Patent Owner. “A statutory disclaimer under 35
`U.S.C. § 253 has the effect of canceling the claims from the patent and the
`patent is viewed as though the disclaimed claims had never existed in the
`patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing
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`Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477
`(1935)). An inter partes review cannot be instituted on claims that have
`been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter
`partes review will be instituted based on disclaimed claims.”). This
`conclusion is consistent with other panel decisions addressing this issue.
`See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935,
`Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen.
`Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018).
`Accordingly, we treat claims 1–3 as having never been part of the
`’587 patent, and do not institute inter partes review on these claims. As
`discussed above, we regard claim 4 as the only challenged claim. See
`Sections I.A and I.E.
`b
`Claim 4 over Padovani, in view of Gils
`Petitioner argues that claim 4 would have been obvious over
`Padovani and Gils. Pet. 36–44. We have reviewed the parties’ assertions
`and supporting evidence. For the reasons discussed below, Petitioner does
`not demonstrate a reasonable likelihood of prevailing in showing that claim
`4 would have been obvious over Padovani and Gils.
`Petitioner contends “Gils recognizes that greater protection may be
`needed for certain bits, e.g., one or more higher order or more significant
`bits (Pet. 32 (citing Ex. 1010, 6)), and that “Padovani contemplates
`encoding a DRC message that can include actual C/I measurements which
`may be represented in terms of a decimal integer and decimal fraction (like
`the ’587 Patent)” (Pet. 32–33 (citing Ex. 1009, 23:29–24:2)). Citing
`Petitioner’s Declarant, Dr. Min, Petitioner contends, “a POSITA would
`have been motivated to provide greater protection for the decimal integer
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`portion (an error in which would be magnified versus an error in the
`decimal fraction portion).” Pet. 33 (citing Ex. 1017 ¶ 131).
`According to Petitioner, “Padovani contemplates the transmission of
`DRC messages along a forward link, where the DRC messages can be
`represented in binary form, i.e., as a k-bit data or message word.” Pet. 40
`(citing Ex. 1009. 45:15–22). Petitioner contends, “[t]he nature of binary
`numbers (or other base-x number systems) means that the leftmost bit of
`any binary number is the most significant bit.” Pet. 40 (citing Ex. 1017
`¶ 154). According to Petitioner, “to provide greater protection for a
`particular portion (one or more of the bits comprising the 3-bit rate index)
`of a C/I measurement representative of a forward link channel quality,”
`such as that of Padovani, “a POSITA would have been motivated to provide
`greater protection for certain bits by selecting appropriate code words
`generated by one or more of the coding schemes contemplated by Gils,”
`and thus, use “different coding schemes for the different parts.” Pet. 33
`(citing Ex. 1017 ¶ 132).
`We recognize that Gils states that “it is natural to give parts of
`mutually different importance different protection against errors.” See Ex.
`1010, 6. We also recognize that Padovani teaches transmitting a data
`request message (“DRC message”) that can contain “an indication of the
`quality of the forward link channel” (Ex. 1009, 12:3–8), and then
`“encod[ing] the message in accordance with a predetermined coding
`format” (id. at 47:15–31 (emphasis added)). However, neither Gils nor
`Padovani, nor the combination thereof, teaches or suggests encoding
`“information having a plurality of bits” such that “the most significant bit of
`the plurality of bits” is “less susceptible to errors in a propagation path than
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`other bits of the plurality of bits,” wherein “[the] plurality of bits . . .
`indicate the measured reception quality,” as required by claim 4. See claim
`4 (emphasis added).
`Although Petitioner contends “a POSITA would have been motivated
`to provide greater protection for the decimal integer portion (an error in
`which would be magnified versus an error in the decimal fraction portion)”
`in Padovani (Pet. 33), Petitioner does not identify any passage or
`combination of passages in Padovani that teaches or suggests providing, or
`even the need to provide, greater protection for one decimal portion than the
`other decimal portion, let alone by using “different coding schemes for the
`different parts.” Id. As Patent Owner asserts, “Padovani discloses using a
`single code to encode the DRC message[,]” and “does not teach using
`multiple codes to encode different portions of the DRC message.” Prelim.
`Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)).
`We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by
`virtue of Padovani contemplating the use of an (n,k) coding scheme,” the
`POSITA “would have naturally sought out similar coding schemes [as those
`of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156).
`Dr. Min further testifies that “a POSITA would have been motivated to
`provide greater protection for certain bits by selecting appropriate code
`words generated by one or more of the coding schemes contemplated by
`Gils,” and thus, use “different coding schemes for the different parts.” Ex.
`1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately
`why one of ordinary skill in the art would have used together different
`coding schemes from Gils, let alone a separate scheme for certain bits over
`the other bits.
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`As Dr. Min testifies, “a single UEP coding scheme could also be used
`depending upon how a POSITA would have wanted to implement unequal
`error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As
`such, Dr. Min acknowledges that a single unequal error protection coding
`scheme could be used as well as applying different coding schemes to
`different parts of a message. Here, Dr. Min’s testimony that a single
`unequal error protection coding scheme could be used further undermines
`Petitioner’s position that one of ordinary skill in the art would have used the
`different coding schemes for different parts as set forth in Gils.
`Thus, Dr. Min’s testimony does not adequately explain why one of
`ordinary skill in the art would have applied different coding schemes from
`Gils to the DRC message of Padovani, much less in the manner proposed
`by Petitioner, of providing greater protection for the decimal integer portion
`than the decimal fraction portion, especially when Padovani discloses
`“using a single code to encode the DRC message.” See Prelim. Resp. 14
`(citing Ex. 1009, 45:20–22).
`Moreover, Dr. Min’s contention that “[t]he nature of binary numbers
`(or other base-x number systems) means that the leftmost bit of any binary
`number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As
`Patent Owner points out, “Dr Min’s declaration, however, merely repeats
`the allegations of the Petition without any explanation or citation to any
`supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017
`¶ 154). That is, “[t]here is no proffered evidence that it was well
`understood by a POSITA at the time that the leftmost bit in binary numbers,
`and specifically in the DRC message of Padovani, is the ‘most significant
`bit.’” Prelim. Resp. 20.
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`For that reason, we give little weight to Dr. Min’s uncorroborated
`testimony that “the leftmost bit of any binary number is the most significant
`bit.” 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
`2004) (“[T]he Board is entitled to weigh the declarations and conclude that
`the lack of factual corroboration warrants discounting the opinions
`expressed in the declarations[.]”).
`In view of Petitioner’s lack of proffered evidence that it was well
`understood by a POSITA that the leftmost bit in the DRC message of
`Padovani is the “most significant bit” of claim 4, or that the POSITA would
`have used “different coding schemes for the different parts” in Padovani
`(Ex. 1017 ¶¶ 132, 154), Dr. Min’s testimony does not provide sufficient
`support for Petitioner’s contentions that it would have been obvious to
`provide greater protection for the decimal integer portion than the decimal
`fraction portion, in view of Padovani and Gils. That is, although we agree
`with Petitioner that Gils states that “it is natural to give parts of mutually
`different importance different protection against errors” (Ex. 1010, 6), and
`that Padovani teaches transmitting a DRC message that can contain “an
`indication of the quality of the forward link channel” (Ex. 1009, 12:3–8),
`those facts alone are insufficient to support a conclusion of obviousness, as
`set forth in KSR, of claim 4.
`Here, for these reasons discussed above, we conclude that Petitioner
`has not provided sufficient evidence from prior art references or Dr. Min’s
`declaration testimony to support its contention that one of ordinary skill in
`the art would have used Gils’s techniques to encode Padovani’s DRC
`
`16
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`message in the manner required by the claims—such that the most
`significant bit of the plurality of bits is encoded to be less susceptible to
`errors. Petitioner also has not demonstrated articulated reasoning with
`rational underpinning to support the legal conclusion of obviousness. See
`PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir.
`2014). Instead, we conclude that Petitioner used improper hindsight to
`reconstruct the claimed subject matter by using the claims as a guide to
`combine the prior art references. Grain Processing Corp. v. Am. Maize-
`Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to
`avoid hindsight reconstruction by using ‘the patent in suit as a guide
`through the maze of prior art references, combining the right references in
`the right way so as to achieve the result of the claims in suit.’” (citation
`omitted)).
`For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claim 4 would have
`been obvious over Padovani and Gils. See 35 U.S.C. § 316(e) (To prevail
`in an inter partes review that has been instituted, “the petitioner shall have
`the burden of proving a proposition of unpatentability by a preponderance
`of the evidence.”).
`
`
`III. CONCLUSION
`We conclude that Petitioner has not demonstrated a reasonable
`likelihood of prevailing with respect to at least one claim of the ’587 patent
`challenged in the Petition.
`
`
`17
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’587 patent, and no trial is instituted.
`
`PETITIONER:
`Stephen Korniczky
`skorniczky@sheppardmullin.com
`Martin Bader
`mbader@sheppardmullin.com
`Nam Kim
`nkim@sheppardmullin.com
`Ericka Schulz
`eschulz@sheppardmullin.com
`Hector Agdeppa
`hagdeppa@sheppardmullin.com
`
`PATENT OWNER:
`Cyrus Morton
`cmorton@robinskaplan.com
`Bryan Vogel
`bvogel@robinskaplan.com
`Derrick Carman
`dcarman@robinskaplan.com
`Li Zhu
`lzhu@robinskaplan.com
`Shui Li
`sli@robinskaplan.com
`Stephanie Diehl
`sdiehl@robinskaplan.com
`
`
`
`18
`
`
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