UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`___________________
`
`IPR2022-00337
`U.S. Patent No. 10,454,655
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`PATENT OWNER PRELIMINARY RESPONSE
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`

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`Patent Owner Preliminary Response
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`IPR2022-00337
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`TABLE OF CONTENTS
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`Summary of Arguments ...................................................................................... 3
`I.
`II. Summary of the ’655 Patent ................................................................................ 5
`III. Definition of POSITA...................................................................................... 8
`IV. Claim Construction .......................................................................................... 8
`V.
`Petitioner’s Grounds 1A and 1B Fail Because Bao Alone (Ground 1A), and
`Combined with Feuersanger (Ground 1B), Do Not Render Obvious Claims 1-40... 9
`A.
`Summary of Bao ............................................................................................ 9
`B. Summary of Feuersanger ...............................................................................10
`C. Bao Alone (Ground 1A), and Combined with Feuersanger (Ground 1B), Do
`Not Render Obvious Claims 21-40. .....................................................................12
`1.
`Bao alone does not render obvious the claimed requirement for first and
`second LCIDs associated with first and second MAC CE formats with first and
`second bit map sizes, respectively (claim elements [21b], [26d], [31b], and
`[36d]) .................................................................................................................12
`a.
`Bao is consistent across all embodiments that there is one specific
`LCID associated with the activation/deactivation MAC CE.........................13
`b.
`The cited portion of Bao already teaches a solution to indicate the
`length of a MAC CE – that does not involve using different LCIDs. ...........14
`c.
`It would not have been obvious to use different LCIDs for different
`length MAC CEs of the component carrier “activation/deactivation” type. .16
`d.
`The cited portion of Bao does not disclose using
`“activation/deactivation” MAC CEs with bit maps of different sizes. .........18
`Feuersanger does not overcome the deficiencies of Bao with respect to
`2.
`rendering obvious first and second LCIDs associated with first and second
`MAC CE formats with first and second bit map sizes, respectively (claim
`elements [21b], [26d], [31b], and [36d]). ..........................................................20
`3.
`For similar reasons, neither Bao alone, nor Bao combined with
`Feuersanger, renders obvious claim elements [21e] and [26g]. .......................23
`D.
`Petitioner’s Alleged Motivation to Combine Bao and Feuersanger is
`Misleading and Irrelevant to Any Claim Limitation. ...........................................24
`E. Petitioner’s Analysis of Independent Claims 1, 7, 13, and 17 Lacks
`Particularity and is Defective. ..............................................................................26
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`F. Summary ........................................................................................................28
`VI.
`Petitioner’s Ground 2 Fails Because Kwon Does Not Render Obvious
`Claims 1-40. .............................................................................................................29
`A.
`Summary of Kwon ......................................................................................29
`B. Kwon Fails to Render Obvious Claims 21-40. ..............................................31
`1.
`Kwon does not disclose or render obvious the claimed requirement for
`first and second LCIDs associated with first and second MAC CE formats with
`first and second bit map sizes, respectively (claim elements [21b], [26d],
`[31b], and [36d]). ..............................................................................................31
`a.
`LCID is used in Kwon only to identify a MAC CE as an
`activation/deactivation indicator MAC CE, not to indicate a bit map length.
`33
`Petitioner’s focus on other types of LCIDs contradicts its position. ....36
`b.
`Kwon consistently teaches that a wireless communication system uses
`c.
`a fixed-size bit map based on a maximum number of component carriers. ..37
`d.
`Summary – Kwon does not disclose or render obvious first and second
`LCIDs associated with first and second MAC CE formats with first and
`second bit map sizes, respectively. ................................................................39
`For similar reasons, Kwon does not render obvious claim elements [21e],
`2.
`[26g] 40
`C. Petitioner’s Analysis of Claims 1, 7, 13, and 17 Lacks Particularity and Is
`Defective. ..............................................................................................................43
`VII. Even Setting Aside the Merits, The Board Should Use Discretion to Deny
`Ground 2 Based on 35 U.S.C. 325(d). .....................................................................45
`VIII. Conclusions .................................................................................................46
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`PATENT OWNER’S EXHIBIT LIST
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`Ex. 2001 Declaration of Dr. Zygmunt Haas, Ph.D.
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`Ex. 2002 Curriculum Vitae of Dr. Zygmunt Haas
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`1
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`TABLE OF AUTHORITIES
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`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`01469, Paper 6 ......................................................................................................45
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 ................................................... 17, 24
`Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 ..............27
`DeSilva v. DiLeonardi, 181 F.3d 865 ......................................................... 27, 28, 43
`Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375 ..........................13
`Grain Processing Corp. v. American Maize-Products, 840 F. 2d 902 ....................40
`In re Hedges, 783 F.2d 1038 ....................................................................................16
`Unified Patents, LLC v. Ikorongo Tech. LLC et al., IPR2020-01379, Paper 21 .....27
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) .... 9
`Statutes
`§ 314(a) ...................................................................................................................... 4
`37 C.F.R. § 42.65(a) .................................................................................................36
`Other Authorities
`H.R. Rep. No. 112–98, pt. 1, at 40 (2011) ................................................................. 4
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`2
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`I.
`
`Summary of Arguments
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`Telefonaktiebolaget LM Ericsson (“Patent Owner”) respectfully requests that
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`the Patent Trial and Appeal Board (“Board”) deny institution of IPR2022-
`
`00337 because the Petition fails to demonstrate a reasonable likelihood of prevailing
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`for any challenged claim for several reasons.
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`Petitioner has alleged that a POSITA would have understood from Bao (in
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`Ground 1A) that “different formats of MAC CEs having bit map sizes would have
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`different LCID numbers.” Petition, 26. The only explanation for Petitioner’s position is
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`impermissible hindsight because Petitioner ignores teachings of Bao that (1) only one
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`LCID value is used “for indicating the existence of the component carrier MAC CE,”
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`Bao, ¶ [0032] (emphasis added), and (2) the cited portion of Bao presents a solution for
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`indicating length of MAC CEs using a field called an “L field” that is different from
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`LCID. And Petitioner presents no motivation to modify Bao to use the LCID in the
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`manner it proposes. Thus, Bao alone does not render obvious claims 21-40.
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`Furthermore, Petitioner uses Feuersanger (Ground 1B) and Kwon (Ground 2) for
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`the same teachings as existed in the prior art 3GPP standard that are discussed in the
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`’655 Patent. Both references propose using only one specific LCID value to indicate
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`that a MAC CE carries a carrier activation/deactivation type, and a single value cannot
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`indicate two bit map lengths. Kwon even goes so far as to specify the same LCID value
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`that was later used in the prior art 3GPP standard to indicate that the MAC CE contains
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`carrier activation/deactivation information for the downlink. Thus, neither Feuersanger
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`(in Ground B) nor Kwon (in Ground 2) adds anything to Bao that renders claims 21-40
`
`obvious.
`
`With respect to claims 1-20, Petitioner impermissibly forces Patent Owner and
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`the Board to play the role of archeologist to figure out Petitioner’s positions. In an
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`apparent attempt to circumvent word count impacts—or more likely because of the
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`weakness of its substantive arguments, Petitioner presents conclusory arguments for
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`independent claims 1, 7, 13, and 17, citing to its arguments for independent claims 21,
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`26, 31, and 36, which are discredited as discussed above, and fails to specify with the
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`requisite particularity how the prior art demonstrates the claim elements.
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`Moreover, Apple’s Petition is nothing more than a cut-and-paste of a prior
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`Petition filed by Samsung, challenging the same claims of the ’655 Patent with the
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`same arguments. See IPR2021-00447 (filed on Jan. 29, 2021). The ’655 Patent is not
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`currently asserted against Apple in any pending litigation, so Apple’s Petition is not
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`a means for “providing a quick and cost-effective alternative[] to litigation,” which
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`is the purpose of inter partes review, as outlined in the legislative history. H.R. Rep.
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`No. 112–98, pt. 1, at 40 (2011). The use of inter partes review in this manner,
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`particularly where Petitioner has failed to show that it has a reasonable likelihood of
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`prevailing as to any Challenged Claim pursuant to § 314(a), “frustrate[s] the purpose
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`of the section as providing quick and cost-effective alternatives to litigation” and
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`“divert[s] resources from the research and development of inventions.” See, e.g., id.
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`at 40 (2011) (Legislative history establishing inter partes review).1 Here, Apple
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`relies on the same weak arguments challenging the claims of the ’655 Patent.
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`Thus, as explained in further detail below, the Petitioner has failed to carry its
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`burden to show a reasonable likelihood that it would prevail in demonstrating
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`invalidity of any of challenged claims 1-40. Accordingly, the Board should deny
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`institution of the IPR.
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`II.
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`Summary of the ’655 Patent
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`As acknowledged in the Background section of the ’655 Patent, prior to the ’655
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`Patent, the then-existing LTE standard could support up to “5 aggregated carriers,” in
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`which each carrier corresponds to a certain unit of spectral bandwidth, such as 20 MHz.
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`Ex. 1001, 1:43-47. By aggregating spectral carriers, a greater spectral bandwidth can
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`be allocated to an LTE terminal (also known as a User Equipment or UE, Ex. 1001,
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`2:19-21), yielding higher data rates. In other words, the maximum supportable data rate
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`(or throughput) scales with spectral bandwidth, such that increasing spectral bandwidth
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`for transmissions to a UE increases the maximum data rate for such transmissions. Ex.
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`2001, ¶ 23.
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`Referring to a particular prior art 3GPP wireless standards document (TS 36.321
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`v12.3.0, dated September 2014), the ’655 Patent explains that a base station and a UE
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`1 Unless otherwise noted, all emphasis is added by Patent Owner.
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`use Medium Access Control (MAC) Control Elements (CE) to exchange control
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`information, and a Logical Channel Identity (LCID) to identify various MAC CEs. Ex.
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`1001, 2:22-33. The then-existing 3GPP standard included a specific MAC CE, called
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`an “Activation/Deactivation” MAC CE, whose purpose was to indicate the carriers
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`assigned to the UE. Ex. 2001, 24.
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`The ’655 Patent points out the limitation with the then-existing 3GPP standard
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`that “a number of component carriers may be limited,” Ex. 1001, 2:34, such that only
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`“up to 5 aggregated carriers” may be supported, id., 1:43. The ’655 Patent addresses
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`this problem and recognizes that “[a]s the demand on throughput increases in LTE
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`systems, it may be beneficial to support aggregation of more than 5 cells,” or carriers,
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`Id., 7:36-38, thereby increasing the available spectral bandwidth beyond that which was
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`supported in the LTE standard at the time. Ex. 2001, ¶ 25. The ’655 Patent presents a
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`solution in which “MAC CEs may be defined in different versions where the different
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`versions support different numbers of carriers.” Ex. 1001, 7:52-58. In one embodiment,
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`“different versions of the MAC CEs may have different LCIDs.” Id., 7:61-63. By using
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`two different versions of a MAC CE corresponding to different numbers of carriers, the
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`’655 Patent beneficially allows for a greater number of component carriers (“CCs”) to
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`be supported, without requiring the larger bit map size when a smaller number of
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`carriers is supported, “thereby reducing signaling overhead.” Id., 12:25-33; Ex. 2001,
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`¶ 25.
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`In the prior art 3GPP standard, an “activation/deactivation” MAC CE was
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`identified using a single specific LCID value (namely, ‘11011’). See Figure 2B, which
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`is “taken from Table 6.2.1-1 of 3GPP TS 36.321 V12.3.0 (2014-09).” Ex. 1001, 5:1-4.
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`Id., Figure 2B (annotated); Ex. 2001, ¶ 26. By contrast, the solution proposed by the
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`’655 Patent was to modify the standardized methodology so that “different Logical
`
`Channel Identities (LCID) may be used for different MAC CEs of the same type
`
`having different bit map sizes (e.g., … different Activation/Deactivation MAC
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`CEs having different bit map sizes).” Ex. 1011, 17:36-41.2 In other words, unlike
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`what appeared in the 3GPP standard at the time, the ’655 Patent proposes the use of
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`different LCIDs for different MAC CEs of the same type (namely, the
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`Activation/Deactivation MAC CE type) to indicate different bit map sizes for this
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`2 All bold, italics, and underlining appearing in any quotation has been added for
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`emphasis unless otherwise indicated.
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`Patent Owner Preliminary Response
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`type of MAC CE.
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`For example, claim 21 (along with similar claims 26, 31, and 36), which is the
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`main focus of Petitioner’s analysis (Petition, 16-27), and likewise its expert’s analysis
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`(see Ex. 1003, 61-80), relates to a “first format” of a “MAC CE” having a “first bit map
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`size” and associated with a “first LCID,” and a “second format” of the “MAC CE”
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`having a “second bit map size” and associated with a “second LCID.” Claim 21 also
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`relates to a “wireless terminal” “using one of the first and second bit map sizes to
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`activate/deactivate component carriers.”
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`III. Definition of POSITA
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`A person of ordinary skill in the art (“POSITA”) in the field of the ’655 Patent,
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`as of its earliest possible priority date of January 13, 2015, would have been someone
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`knowledgeable and familiar with the networking arts that are pertinent to the ’655
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`Patent. A POSITA would have had a Bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or a related field, and 3-5 years of
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`experience working in the field of wireless communication systems, or the
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`equivalent. Lack of work experience can be remedied by additional education, and
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`vice versa. Patent. Ex. 2001, ¶ 17.
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`IV. Claim Construction
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`Consistent with the legal principle that claims need to be construed only to the
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`extent necessary to resolve the obviousness inquiry, Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), Patent Owner agrees with Petitioner
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`that no claim terms require an express construction for the purposes of this proceeding.
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`See Petition, 6.
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`V.
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`Petitioner’s Grounds 1A and 1B Fail Because Bao Alone (Ground 1A), and
`Combined with Feuersanger (Ground 1B), Do Not Render Obvious Claims
`1-40
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`A. Summary of Bao
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`Bao teaches using one specific MAC CE type as a “component carrier
`
`indication MAC CE” and one corresponding identifier for identifying this MAC CE
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`in the header of a MAC Protocol Data Unit (PDU). Bao, ¶ [0031] (“[T]he eNB adds
`
`one MAC CE, which is referred to as a component carrier indication MAC CE …
`
`and adds an identifier indicating existence of the MAC CE in a MAC head of
`
`the MAC PDU.”). As Bao notes, an LCID is one example of the identifier for
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`identifying the associated MAC CE as a “component carrier indication” MAC CE,
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`and thereby indicating the “existence” of the component carrier indication MAC CE
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`in the MAC PDU. Bao, ¶ [0032] (“[T]he reserved LCID value corresponds to the
`
`component carrier indication MAC CE in the present invention so as to indicate
`
`the existence of the component carrier indication MAC CE.”). Thus, Bao describes
`
`using a single specifically selected LCID value to identify the MAC CE as a
`
`“component carrier indication MAC CE,” and thereby indicate the “existence” of a
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`“component carrier indication MAC CE in the relevant MAC PDU.
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`In one embodiment, Bao explains that “[a]s shown in FIG. 7, the component
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`carrier indication MAC CE may have fixed length, which depends upon the
`
`maximum number N of the aggregated carriers allowable to be supported by the current
`
`cell or the LTE-A system.” Bao, ¶ [0037]. And Bao presents a field different from LCID
`
`to indicate a length of a MAC CE – an “L field.” Bao explains that “An LCID (Logical
`
`Channel ID) field is configured for identifying the type of the MAC CE … and [a]n L
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`field is configured for indicating the length of the corresponding MAC CE or MAC
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`SDU.” Bao, ¶ [0028]. Thus, Bao teaches one solution for indicating the length of a
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`MAC CE, and the solution does not use different LCIDs, as claimed in the ‘655 Patent.
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`Ex. 2001, ¶¶ 35-36.
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`B. Summary of Feuersanger
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`Feuersanger does nothing more than present information that is duplicative of
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`admitted prior art 3GPP TS 36.213 v12.3.0, such as Figures 2A and 2B of the ’655
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`Patent. For example, Petition and Petitioner’s expert repeatedly point to teachings in
`
`paragraphs [0072]-[0074] of Feuersanger. See Petition, 14, 22; Ex. 1003, ¶¶ 71, 77, 78,
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`92, 102, 113. Figures 2A and 2B of the ’655 Patent are placed side-by-side with Tables
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`2 and 3 of Feuersanger to highlight the identical teachings and demonstrate that
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`Feuersanger is no more than a subset of acknowledged prior art.
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`Ex. 2001, ¶ 38.
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`Notably, Fuersanger discloses using the same LCID for all component carier
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`(de)activation MAC CEs. See Feuersanger, ¶ [0211] (“In one exemplary
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`implementation, the component carrier (de)activation message is provided in form of a
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`new MAC control element identified by a specific LCID. This new MAC control
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`element carries the (de)activation information.”). Furthermore, Feuersanger discloses
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`the use of a bit map, just like in prior art acknowledged by the ’655 Patent: “In one
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`exemplary embodiment, the (de)activation information within the component carrier
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`(de)activation message is provided as a bitmap.” Feuersanger, ¶ [0213]. And the size of
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`the bit map is based on an “assumed…maximum of five component carriers in the
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`Patent Owner Preliminary Response
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`downlink,” Feuersanger, [0215], which is equivalent to what is stated in the
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`Background of the ’655 Patent (i.e., at 1:43).
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`C. Bao Alone (Ground 1A), and Combined with Feuersanger (Ground
`1B), Do Not Render Obvious Claims 21-40.
`
`1. Bao alone does not render obvious the claimed requirement for
`first and second LCIDs associated with first and second MAC
`CE formats with first and second bit map sizes, respectively
`(claim elements [21b], [26d], [31b], and [36d])
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`Independent claims 21, 26, 31, and 36 are addressed first because those claims
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`are addressed first by Petitioner. For reference, the claim elements at issue are recited
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`below (using Petitioner’s labels [21b], etc.) with certain portions underlined. As shown,
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`each element relates to a “first format” of a “MAC CE” having a “first bit map size” and
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`associated with a “first LCID,” and a “second format” of the “MAC CE” having a
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`“second bit map size” and associated with a “second LCID.” Each of claims 21, 26, 31,
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`and 36 relates to a MAC CE received by (claims 21 and 26) or transmitted to (claims
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`31 and 36) a “wireless terminal.”
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`[21a-b] receiving a medium access control, MAC, control element, CE, from the
`wireless communication network, wherein the MAC CE has one of a plurality of
`formats, wherein a first format of the plurality of formats has a first bit map size
`and the first format is associated with a first Logical Channel Identity (LCID),
`wherein a second format of the plurality of formats has a second bit map size and
`the second format is associated with a second LCID,
`[26d] wherein the MAC CE has one of a plurality of formats, wherein a first
`format of the plurality of formats has a first bit map size and the first format is
`associated with a first Logical Channel Identity (LCID), wherein a second format
`of the plurality of formats has a second bit map size and the second format is
`associated with a second LCID
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`[31b] wherein the first format [of a MAC CE]3 has a first bit map size and the
`first format is associated with a first Logical Channel Identity (LCID), wherein
`the second format [of the MAC CE] has a second bit map size and the second
`format is associated with a second LCID
`[36d] wherein the first format [of a MAC CE]4 has a first bit map size and the
`first format is associated with a first Logical Channel Identity (LCID), wherein
`the second format [of the MAC CE] has a second bit map size and the second
`format is associated with a second LCID
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`“In an inter partes review, the burden of persuasion is on the petitioner to prove
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`‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that
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`burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.,
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`800 F.3d 1375, 1378 (Fed. Cir., 2015). Petitioner has failed to satisfy that burden in this
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`case, as explained below.
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`a. Bao is consistent across all embodiments that there is one
`specific LCID associated with the activation/deactivation
`MAC CE.
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`As discussed in the Summary of Bao (Section V.A) and explained further below,
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`Bao teaches a single, specific, LCID value to indicate the existence of a component
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`carrier “activation/deactivation” MAC CE in a received MAC PDU.
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`For example, Bao proposes that “the eNB adds one MAC CE, which is referred
`
`to as a component carrier indication MAC CE in the following embodiments and
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`3 See element [31a].
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`4 See element [36c].
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`Patent Owner Preliminary Response
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`bears the instruction and the corresponding CC, into the MAC PDU, and adds an
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`identifier indicating existence of the MAC CE in a MAC head of the MAC PDU.”
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`Bao, ¶ [0031]. As Bao notes, an LCID is one example of the “identifier” for identifying
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`the associated MAC CE as a component carrier indication MAC CE, and thereby
`
`indicating the “existence” of the component carrier indication MAC CE in a received
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`MAC PDU. See Bao, ¶ [0032] (“[T]he LCID in the MAC subheaders is the identifier
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`for indicating the existence of the component carrier indication MAC CE.”).
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`In summary, Bao describes using only one LCID value to identify a MAC CE as
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`a “component carrier indication MAC CE,” and thereby to indicate the “existence” of
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`a component carrier indication MAC CE in a received MAC PDU. There is no
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`disclosure of using two different LCID values in relation to a component carrier
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`indication MAC CEs. Ex. 2001, ¶¶ 41-45
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`b. The cited portion of Bao already teaches a solution to
`indicate the length of a MAC CE – that does not involve
`using different LCIDs.
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`As discussed above, the claims of the ’655 patent recite using two different LCIDs
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`for indicating two different component carrier “activation/deactivation” MAC CEs of
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`different sizes/lengths.5 See Section V.C.1 (discussing independent claims 21, 26, 31,
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`and 36). Bao is explicit that it is not the LCID field but a separate and distinct field, the
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`5 In this context, the size of a MAC CE is often referred to as its length.
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`Patent Owner Preliminary Response
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`IPR2022-00337
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`“L” field, that indicates the length of the MAC CE:
`
`An LCID (Logical Channel ID) field is configured for identifying the
`type of the MAC CE and the logical channel to which a MAC SDU
`belongs. An L field is configured for indicating the length of the
`corresponding MAC CE or MAC SDU. MAC CE is configured for
`bearing a control message.
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`Bao, ¶ [0028]. An LCID field and an L field are identified above as different fields,
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`reinforcing that LCID indicates the type of MAC CE, and the “L field” can indicate
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`length. Similarly, the LCID and L fields are illustrated separately in Figure 4,
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`reinforcing that these are different fields.
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`Bao, Figure 4.
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`Thus, Bao teaches a solution for indicating the length of a MAC CE, but the
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`solution does not involve using different LCIDs. Neither the Petition nor the associated
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`declaration (Ex. 1003) acknowledges that Bao already includes a solution for indicating
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`a length of a MAC CE and that the solution does not involve using different LCIDs.
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`Ex. 2001, ¶¶ 46-47.
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`c. It would not have been obvious to use different LCIDs for
`different length MAC CEs of the component carrier
`“activation/deactivation” type.
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`As explained above, Bao is consistent across all embodiments that there is one
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`specific LCID associated with all component carrier “activation/deactivation” MAC
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`CEs, and Bao also teaches its own solution (use of an “L field”) to indicate the length
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`of a MAC CE that does not involve using different LCIDs. Petitioner has not identified
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`any problem or inefficiency with Bao’s teachings. Thus, it would not have been obvious
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`to use different LCID values to indicate different sizes of bit maps in the disclosed
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`component carrier activation/deactivation MAC CEs. The Federal Circuit has cautioned
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`that “[i]t is impermissible within the framework of section 103 to pick and choose from
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`any one reference only so much of it as will support a given position, to the exclusion
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`of other parts necessary to the full appreciation of what such reference fairly suggests
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`to one of ordinary skill in the art,” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986),
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`yet that is what Petitioner did in this case by ignoring the teachings of Bao regarding
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`the “L field.” Furthermore, Petitioner has presented no reason that would motivate a
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`POSITA to modify Bao so that different LCID values indicate different sizes for the bit
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`map within a particular component carrier activation/deactivation MAC CE when that
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`information is already captured in Bao by the L field.
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`The Petitioner incorrectly conflates a type of MAC CE with a length of a MAC
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`CE of a given type when it alleges that “a POSITA would have understood these
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`different bitmap sizes of component carrier indication MAC CEs to teach different
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`types, or formats, of MAC CEs.” Petition, 21. This conclusory statement regarding
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`different bit map sizes corresponding to different MAC CE types is unsupported by any
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`teaching in Bao.
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`Petitioner extends its flawed logic an additional step, alleging that “a POSITA
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`would have understood that each of these different formats of MAC CEs having
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`different bitmap sizes would have different LCID numbers.” Petition, 22. Petitioner
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`cites to Bao paragraphs [0028], [0032], and [0037] as support, but these paragraphs do
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`not teach different bit map sizes having different respective LCID numbers as discussed
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`above. Furthermore, to the extent that POSITA is proposing to modify Bao so that
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`different bit map sizes have different LCID numbers, there is no motivation provided
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`for making this modification. “[O]bviousness concerns whether a skilled artisan not
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`only could have made but would have been motivated to make the combinations or
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`modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek
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`LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis in original). As noted above, in
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`Bao, the length of the bit map within a component carrier activation/deactivation MAC
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`CE was already captured by the CE’s L field, so there would be no motivation for a
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`POSITA to define new LCIDs for the system of Bao simply to duplicate information
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`that was already captured by the L field.
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`Therefore, Petitioner’s position that different bit map sizes would have different
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`LCID numbers is impermissible hindsight because Petitioner ignores teachings of Bao
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`that:
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`1) only one LCID value is used for indicating the existence of the component
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`carrier MAC CE;
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`2) the embodiment relied upon by Petitioner describes a “fixed length” bit map;
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`and
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`3) even if Petitioner were correct that the embodiment in paragraph [0037]
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`describes a variable-length bit map, Bao presents a MAC subheader field for
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`indicating length of MAC CEs that is different from the LCID field.
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`Accordingly, Petitioner’s inference is false that it would have been obvious from
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`Bao’s disclosure of a component carrier indication MAC CE “that a first LCID indicates
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`a MAC CE of a first format, a second LCID indicates a MAC CE of a second format,
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`and [] the first LCID and the second LCID are different.” Petition, 22. Thus, Bao does
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`not disclose or render obvious claim elements [21b], [26d], [31b], or [36d]. Because
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`Bao does not render these elements of independent claims 21, 26, 31, or 36 obvious,
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`Bao also does not render obvious any of the claims that depend from these claims,
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`meaning that Bao does not render obvious claims 21-40. Ex. 2001, ¶¶48-52.
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`d. The cited portion of Bao does not disclose using
`“activation/deactivation” MAC CEs with bit maps of
`different sizes.
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`The cited portion of Bao does not disclose activation/deactivation MAC CEs of
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`different lengths because it describes MAC CEs of fixed lengths. Petitioner’s expert
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`cites to paragraph [0037] of Bao, see Ex. 1003, ¶ 101, but paragraph [0037] of Bao
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`clearly discloses a “fixed length” MAC CE, whose length is determined by “the
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`maximum number N of the aggregated carriers allowable to be supported by the current
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`cell or the LTE-A system.” In contrast to a “fixed length” MAC CE, each independent
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`claim of the ’655 Patent requires first and second MAC CEs with different bit map
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`lengths.
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`Petitioner does not explain how a MAC CE with a “fixed length” can contain
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`different bit map lengths. Indeed, the Petition and Dr. Buehrer’s declaration
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`conspicuously omit the disclosure of this phrase in Bao. Petitioner carefully selected
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`quotations of Bao to avoid the phrase “fixed length.” For example, Petitioner states that
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`a bit map has a size “which depends upon the maximum number N of the aggregated
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`[component] carriers supported by the current cell or the LTE-A system.” See Petition,
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`19 (quoting Bao, ¶ [0037]). But Petitioner omits the first part of the sentence in Bao,
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`which states that the MAC CE length is “fixed”:
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`As shown in FIG. 7, the component carrier indication MAC CE may
`have fixed length, which depends upon the maximum number N of the
`aggregated carriers allowable to be supported by the current cell or the
`LTE-A system.
`Bao, ¶ [0037]. Petitioner does not reconcile this teaching of Bao with its claim mapping,
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`merely stating in a conclusory manner that “the group of CCs can vary based on the
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`current cell, or base station,