Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Date: September 7, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00337
`Patent 10,454,655 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Date: September 7, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00337
`Patent 10,454,655 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2022-00337
`Patent 10,454,655 B2
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`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–40 in U.S. Patent No. 10,454,655 B2 (Exhibit 1001,
`“the ’655 patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether
`to institute an inter partes review. We may institute an inter partes review
`only if “the information presented in the petition filed under section 311
`and any response filed under section 313 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) (2018). The
`“reasonable likelihood” standard is “a higher standard than mere notice
`pleading” but “lower than the ‘preponderance’ standard to prevail in a final
`written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`Based on the current record and for the reasons explained below,
`Petitioner has shown that there is a reasonable likelihood that it would
`prevail with respect to at least one of the challenged claims. Thus, we
`institute an inter partes review of claims 1–40 in the ’655 patent on all
`challenges included in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 84. Patent
`Owner identifies the following real parties in interest: Telefonaktiebolaget
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`LM Ericsson and Ericsson Inc. Paper 3, 2. The parties do not raise any
`issue about real parties in interest.
`B. Related Matters
`Petitioner and Patent Owner identify the following Board proceeding
`as a related matter involving a challenge to the ’655 patent: Samsung
`Electronics Co. v. Telefonaktiebolaget LM Ericsson, IPR2021-00447 (PTAB
`Jan. 29, 2021). Pet. 85; Paper 3, 2. Petitioner states that this proceeding
`“was dismissed prior to institution, and before the filing of a preliminary
`response.” Pet. 83, 85.
`Petitioner and Patent Owner identify the following civil action as a
`related matter: Ericsson Inc. v. Samsung Electronics Co., 2:20-cv-00380-
`JRG (E.D. Tex. Dec. 11, 2020). Pet. 84–85; Paper 3, 2. Petitioner states
`that this civil action was settled. Pet. 85.
`C. The ’655 Patent (Exhibit 1001)
`The ’655 patent, titled “Wireless Terminals, Nodes of Wireless
`Communication Networks, and Methods of Operating the Same,” issued
`on October 22, 2019, from an application filed on November 28, 2018.
`Ex. 1001, codes (22), (45), (54). The patent identifies that application as the
`latest in a series of continuation applications that started with an application
`filed on November 10, 2015. Id. at 1:8–13, code (63). The patent claims
`priority to two provisional applications, i.e., a provisional application filed
`on January 13, 2015, and a provisional application filed on April 20, 2015.
`Id. at 1:8–16, code (60). The patent states that “[e]mbodiments disclosed
`herein may be generally directed to wireless communications and more
`particularly, directed to medium access control (MAC) control elements
`(CEs) for wireless communications and related wireless terminals and
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`wireless communication network nodes.” Id. at 1:22–26; see id. at
`code (57).
`The ’655 patent explains that “Long Term Evolution (LTE)
`specifications have been standardized to support Component Carrier (CC)
`bandwidths up to 20 MHz.” Ex. 1001, 1:30–32. According to the patent,
`however, “LTE operation with bandwidths wider than 20 MHz may be
`possible” by “means of Carrier Aggregation (CA).” Id. at 1:33–35; see id. at
`4:62–63, 7:32–35, Fig. 1 (illustrating an aggregated bandwidth of 100 MHz
`based on five 20-MHz component carriers). Because the MAC specification
`“has not been designed to support more than five” component carriers or “in
`some cases more than seven” component carriers, the invention endeavors to
`extend support to additional component carriers. Id. at 7:38–58; see id. at
`2:10–18.
`The ’655 patent also explains that the “number of aggregated
`Component Carriers CCs as well as the bandwidth of each individual CC
`may be different for uplink and downlink.” Ex. 1001, 1:48–50. “A number
`of CCs configured in the network may be different from a number of CCs
`seen by a terminal.” Id. at 1:55–57. “A terminal may, for example, support
`and/or be configured with more downlink CCs than uplink CCs, even though
`the network offers the same number of uplink and downlink CCs.” Id. at
`1:57–60.
`The ’655 patent identifies a problem if “a terminal is activated on
`multiple CCs” and “it has to monitor all DownLink DL CCs for PDCCH
`(Physical DownLink Control CHannel) and PDSCH (Physical DownLink
`Shared CHannel)” because that monitoring operation “may require a wider
`receiver bandwidth, a higher sampling rate, etc., resulting in increased power
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`consumption.” Ex. 1001, 2:3–9. To address that problem, the patent
`discloses using medium access control (MAC) control elements (CEs) to
`exchange activation/deactivation information between a base station or
`eNodeB (eNB) and a wireless terminal or user equipment (UE). See id. at
`2:22–59, 7:52–63, code (57). The activation/deactivation information allows
`for individual control of the CCs. See id. at 11:41–12:24.
`For example, the ’655 patent discloses defining two different versions
`of an “activation/deactivation MAC CE” where:
`(1)
`a first version includes a first bit map with bits
`corresponding to the respective component carriers in a
`first group of component carriers, e.g., 7 or 8 component
`carriers; and
`a second version includes a second bit map with bits
`corresponding to the respective component carriers in
`a second group of component carriers, e.g., 31 or 32
`component carriers.
`Ex. 1001, 2:37–59, 7:54–58, 11:23–40, Figs. 6–7. In each bit map, a 0 may
`indicate deactivation of the respective component carrier, while a 1 may
`indicate activation of the respective component carrier. Id. at 11:59–65,
`12:18–24, 12:33–45.
`According to the ’655 patent, a “comprehensive list” of conventional
`MAC CEs “is provided in section 6.1.3 of 3GPP [3d Generation Partnership
`Project] TS [Technical Specification] 36.321 v12.3.0 (2014-09), ‘LTE;
`Evolved Universal Terrestrial Radio Access (E-UTRA); Medium Access
`Control (MAC) protocol specification.’” Ex. 1001, 2:25–29. For each
`MAC CE, an LCID (Logical Channel Identity) “is used as an identifier for
`the MAC CE so that the receiver interprets the MAC CE correctly.” Id. at
`2:29–32.
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`The ’655 patent’s Figure 2A (reproduced below) depicts conventional
`LCID values used by a wireless terminal for uplink to identify various
`MAC CEs sent by the wireless terminal:
`
`
`Figure 2A illustrates LCID values “for an uplink shared channel (UL-SCH)
`taken from Table 6.2.1-2 of 3GPP TS 36.321 V12.3.0 (2014-09).” Ex. 1001,
`4:64–67, Fig. 2A; see id. at 2:25–29. For instance, the LCID value 11100
`identifies a truncated buffer status report (BSR) MAC CE; the LCID value
`11101 identifies a short BSR MAC CE; and the LCID value 11110 identifies
`a long BSR MAC CE. Id. at Fig. 2A.
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`The ’655 patent’s Figure 2B (reproduced below) depicts conventional
`LCID values used by a base station for downlink to identify various
`MAC CEs sent by the base station:
`
`
`Figure 2B illustrates LCID values “for a downlink shared channel (DL-
`SCH) taken from Table 6.2.1-1 of 3GPP TS 36.321 V12.3.0 (2014-09).”
`Ex. 1001, 5:1–4, Fig. 2B; see id. at 2:25–29. For instance, the LCID value
`11011 identifies an activation/deactivation MAC CE. Id. at 11:29–32,
`Fig. 2B.
`The ’655 patent’s Figure 6 (reproduced below) depicts a conventional
`activation/deactivation MAC CE:
`
`
`Figure 6 illustrates “an activation/deactivation medium access control
`(MAC) control element (CE) taken from Table 6.1.3.8-1 of 3GPP TS 36.321
`V12.3.0 (2014-09).” Ex. 1001, 5:20–22, Fig. 6. This activation/deactivation
`MAC CE includes “an 8 bit (1 octet) bit map (also referred to as C-fields) to
`support one primary component carrier and up to 7 configured secondary
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`component carriers (having secondary component carrier indices 1 to 7).”
`Id. at 11:41–45, Fig. 6; see id. at 11:29–33. This activation/deactivation
`MAC CE is “identified by a MAC PDU subheader with LCID” as specified
`in “Table 6.2.1-1 of 3GPP TS 36.321 V12.3.0 (2014-09)” and shown in
`Figure 2B. Id. at 11:29–32, Fig. 2B.
`Because “a primary component carrier must always be configured and
`activated, a first bit of the bit map may be reserved R.” Ex. 1001, 11:46–48.
`Each C bit (C1 to C7) in Figure 6 “corresponds to a possible component
`carrier index for a respective secondary component carrier (e.g., C1 for a
`second[ary] component carrier identified by index 1, C2 for a secondary
`component carrier identified by index 2, . . . , C7 for [a] secondary
`component carrier identified by index 7.” Id. at 11:48–53 (ellipsis in
`original). A particular C bit (Ci) “is 0 if the respective secondary component
`carrier is to be deactivated or 1 if the secondary component carrier is to be
`activated.” Id. at 11:59–65; see id. at 12:34–45.
`The ’655 patent’s Figure 7 (reproduced below) depicts another
`activation/deactivation MAC CE:
`
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`Figure 7 illustrates “an activation/deactivation medium access control
`(MAC) control element (CE) for 32 cells according to some embodiments
`of” the invention. Ex. 1001, 5:23–25, Fig. 7. This activation/deactivation
`MAC CE includes “a 32 bit (4 octet) bit map (also referred to as C-fields) to
`support one primary component carrier and up to 31 configured secondary
`component carriers (having secondary component carrier indices 1 to 31).”
`Id. at 11:66–12:4, Fig. 7.
`Because “a primary component carrier must always be configured and
`activated, a first bit of the bit map may be reserved R.” Ex. 1001, 12:4–6.
`Each C bit (C1 to C31) in Figure 7 “corresponds to a possible component
`carrier index for a respective secondary component carrier (e.g., C1 for a
`second[ary] component carrier identified by index 1, C2 for a secondary
`component carrier identified by index 2, . . . , C31 for [a] secondary
`component carrier identified by index 31.” Id. at 12:6–11 (ellipsis in
`original). A particular C bit (Ci) “is 0 if the secondary component carrier is
`to be deactivated or 1 if the secondary component carrier is to be activated.”
`Id. at 12:18–24; see id. at 12:34–45.
`As Figures 6 and 7 show, “two different versions of the activation/
`deactivation MAC CE may be defined” with “a first version supporting
`fewer” component carriers (e.g., up to 7 or 8) and “a second version
`supporting more” component carriers (e.g., up to 31 or 32). Ex. 1001,
`7:54–58, Figs. 6–7. A base station may use Figure 7’s larger activation/
`deactivation MAC CE “when a highest secondary component carrier index
`for a configured secondary component carrier exceeds a threshold (e.g., a
`highest secondary component carrier for a configured secondary component
`carrier is greater than 7).” Id. at 12:25–30. But a base station may use
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`Figure 6’s smaller activation/deactivation MAC CE “when the highest
`configured component carrier index does not exceed the threshold, thereby
`reducing signaling overhead.” Id. at 12:30–33.
`More generally, “the size of the MAC CE may change based on the
`number of carriers, or more specifically, a number of bits (and therefore
`maybe also the number of octets),” needed to indicate the activation/
`deactivation status of each secondary component carrier. Ex. 1001,
`12:51–55; see id. at 12:56–67, 13:14–16, 14:25–52, Fig. 10. The number of
`octets equals the output of the function CEILING((index+1)/8) where (1) the
`variable index is the highest configured component carrier index and (2) the
`function CEILING(x) outputs “the closest highest integer value of x.” Id. at
`12:62–66.
`The “different versions of the MAC CEs may have the same Logical
`Channel Identity (LCID).” Ex. 1001, 7:58–61; see id. at 11:29–32,
`14:30–32. Alternatively, the “different versions of the MAC CEs may have
`different LCIDs.” Id. at 7:61–63.
`D. The Challenged Claims
`Petitioner challenges the following claims:
`•
`independent method claim 1 for a method of operating
`a wireless terminal;
`• claims 2–6 that depend directly or indirectly from
`claim 1;
`independent apparatus claim 7 for a wireless terminal;
`•
`• claims 8–12 that depend directly or indirectly from
`claim 7;
`independent method claim 13 for a method of operating
`a node of a wireless communication network;
`
`•
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`•
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`•
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`• claims 14–16 that depend directly or indirectly from
`claim 13;
`independent apparatus claim 17 for a node of a wireless
`communication network;
`• claims 18–20 that depend directly or indirectly from
`claim 17;
`independent method claim 21 for a method of operating
`a wireless terminal;
`• claims 22–25 that depend directly or indirectly from
`claim 21;
`independent apparatus claim 26 for a wireless terminal;
`•
`• claims 27–30 that depend directly or indirectly from
`claim 26;
`independent method claim 31 for a method of operating
`a node of a wireless communication network;
`• claims 32–35 that depend directly or indirectly from
`claim 31;
`independent apparatus claim 36 for a node of a wireless
`communication network; and
`• claims 37–40 that depend directly or indirectly from
`claim 36.
`Pet. 1, 7–83.
`Claims 1 and 21 exemplify the challenged claims and read as follows
`(with formatting added for clarity and numbers and letters added for
`reference purposes):1
`
`•
`
`•
`
`
`1 We use the same numbers and letters that Petitioner uses to identify the
`claim language. See Pet. iii–xvi (Listing of Claims).
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`1. [1pre] A method of operating a wireless terminal in
`communication with a wireless communication network, the
`method comprising:
`[1a] receiving a first Medium Access Control (MAC)
`Control Element (CE) from the wireless communication
`network,
`[1b] wherein the first MAC CE includes a first bit map
`having a first bit map size with bits of the first bit map
`corresponding to respective component carriers of a first group
`of component carriers and indicating an activation status of the
`respective component carriers of the first group; and
`[1c] receiving a second MAC CE from the wireless
`communication network,
`[1d] wherein the second MAC CE includes a second bit
`map having a second bit map size with bits of the second bit
`map corresponding to respective component carriers of a
`second group of component carriers and indicating an activation
`status of the respective component carriers of the second group,
`and
`
`[1e] wherein the first bit map size of the first bit map is
`different than the second bit map size of the second bit map.
`21. [21pre] A method of operating a wireless terminal in
`communication with a wireless communication network, the
`method comprising:
`[21a] receiving a medium access control, MAC, control
`element, CE, from the wireless communication network,
`[21b] 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,
`[21c] wherein the first and second bit map sizes are
`different, and
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`and
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`[21d] wherein the first and second LCIDs are different;
`
`[21e] responsive to receiving one of the first and second
`LCIDs together with the MAC CE, applying a bit map of the
`MAC CE using one of the first and second bit map sizes to
`activate/deactivate component carriers of a group of component
`carriers based on the one of the first and second LCIDs received
`together with the MAC CE.
`Ex. 1001, 51:8–28, 54:32–51.
`E. The Asserted References
`For its challenges, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`US 2012/0113811 A1, published May 10, 2012
`Bao
`(based on an application filed Apr. 23, 2010)
`Feuersanger US 2013/0039202 A1, published Feb. 14, 2013
`(based on an application filed Feb. 4, 2011)
`US 8,538,411 B2, issued Sept. 17, 2013
`(based on an application filed Oct. 29, 2010)
`Pet. 7–83. Petitioner asserts that each reference qualifies as prior art under
`§ 102(a)(1). Id. at 7; see 35 U.S.C. § 102(a)(1).
`At this stage of the proceeding, Patent Owner does not dispute that
`each reference qualifies as prior art. See, e.g., Prelim. Resp. 9–45.
`F. The Asserted Challenges to Patentability
`Petitioner asserts the following challenges to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–40
`103
`Bao
`1–40
`103
`Bao, Feuersanger
`1–40
`103
`Kwon
`Pet. 7–83.
`
`Kwon
`
`1004
`
`1005
`
`1006
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`G. Testimonial Evidence
`To support its challenges, Petitioner relies on the declaration of
`R. Michael Buehrer, Ph.D. (Exhibit 1003, “Buehrer Decl.”). Dr. Buehrer
`states, “I have been retained on behalf of” Apple “to offer technical opinions
`relating to” the ’655 patent and prior-art “references relating to its subject
`matter.” Ex. 1003 ¶ 14.
`To support its positions, Patent Owner relies on the declaration of
`Zygmunt J. Haas, Ph.D. (Exhibit 2001, “Haas Decl.”). Dr. Haas states,
`“I have been asked to provide my opinions regarding whether claims 1–40”
`of the ’655 patent “are patentable as they would or would not have been
`obvious to a person having ordinary skill in the art (‘POSITA’) at the time
`of the invention, in light of the prior art.” Ex. 2001 ¶ 3.
`III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d)
`Section 325(d) provides that “[i]n determining whether to institute” an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
`When deciding whether to exercise our discretion under § 325(d), we follow
`the two-part framework set forth in Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB
`Feb. 13, 2020) (precedential) (“Advanced Bionics”).
`Specifically, we must first determine “whether the same or
`substantially the same art previously was presented to the Office or whether
`the same or substantially the same arguments previously were presented to
`the Office.” Advanced Bionics, Paper 6 at 8. That determination involves
`“two separate issues” as follows:
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`“whether the petition presents to the Office the same
`or substantially the same art previously presented to
`the Office”; and
`“whether the petition presents to the Office the same
`or substantially the same arguments previously presented
`to the Office.”
`
`(1)
`
`(2)
`
`Id. at 7.
`If “either condition of first part of the framework is satisfied,” we
`must then determine “whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of challenged claims.”
`Advanced Bionics, Paper 6 at 8. “An example of a material error may
`include misapprehending or overlooking specific teachings of the relevant
`prior art where those teachings impact patentability of the challenged
`claims.” Id. at 8 n.9.
`Under the first part of the Advanced Bionics framework, Patent Owner
`asserts that Kwon “is identical” to U.S. Patent Application Publication No.
`2013/024790 (“Kwon ’790”) cited by the Examiner during the ’655 patent’s
`prosecution. Prelim. Resp. 45.
`Under the second part of the Advanced Bionics framework, Patent
`Owner quotes the following statement from Advanced Bionics: “[i]f
`reasonable minds can disagree regarding the purported treatment of the art
`or arguments, it cannot be said that the Office erred in a manner material
`to patentability.” Prelim. Resp. 46 (alteration by Patent Owner) (quoting
`Advanced Bionics, Paper 6 at 9). Patent Owner then contends that
`(1) “reasonable minds would not even disagree that Petitioner failed to carry
`its burden with respect to Kwon” and (2) “assuming for the sake of argument
`that reasonable minds can disagree, Petitioner’s arguments still fail.” Id.
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`Patent Owner does not assert that Bao or Feuersanger is the same
`or substantially the same as art considered by the Examiner during the
`’655 patent’s prosecution. Prelim. Resp. 45–46.
`As discussed above, the Petition presents three challenges to
`patentability: (1) obviousness over Bao; (2) obviousness over Bao and
`Feuersanger; and (3) obviousness over Kwon. See Pet. 7–83; supra § II.F.
`Patent Owner’s arguments for discretionary denial concern only one of the
`three challenges, i.e., obviousness over Kwon. See Prelim. Resp. 45–46.
`As explained in our patentability analysis below, Petitioner
`demonstrates a reasonable likelihood of prevailing in proving the challenged
`claims unpatentable as (1) obvious over Bao and (2) obvious over Bao and
`Feuersanger. See Pet. 8–48; infra §§ IV.D.2–IV.D.4, IV.E.2–IV.E.4. Under
`these circumstances, § 325(d) is not sufficiently implicated such that its
`statutory purpose would be undermined by instituting on all challenges.
`As also explained in our patentability analysis below, Petitioner
`demonstrates a reasonable likelihood of prevailing in proving the challenged
`claims unpatentable as obvious over Kwon. See Pet. 48–83; infra
`§§ IV.F.2–IV.F.4. In doing so, Petitioner demonstrates that the Examiner
`erred in a manner material to the patentability of challenged claims when
`(1) rejecting the claims only due to obviousness-type double patenting and
`(2) failing to appreciate that Kwon ’790/Kwon teaches the claimed subject
`matter. See Ex. 1002, 134–41 (rejecting the claims only due to obviousness-
`type double patenting and citing Kwon ’790 without explanation), 192–99
`(allowing the claims after terminal disclaimer filed); Ex. 1003 ¶¶ 304–520;
`infra §§ IV.F.2–IV.F.4. Because Petitioner persuasively shows on this
`record that Kwon teaches the claimed subject matter, we determine that
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`Petitioner demonstrates that the Office erred in a manner material to the
`patentability of challenged claims.
`For these reasons, we decline to exercise our discretion under § 325(d)
`to deny institution.
`
`IV. PATENTABILITY ANALYSIS
`A. Legal Principles: Obviousness
`A patent may not be obtained “if the differences between the claimed
`invention and the prior art are such that the claimed invention as a whole
`would have been obvious before the effective filing date of the claimed
`invention to a person having ordinary skill in the art to which the claimed
`invention pertains.” 35 U.S.C. § 103. An obviousness analysis involves
`underlying factual inquiries including (1) the scope and content of the prior
`art; (2) differences between the claimed invention and the prior art; (3) the
`level of ordinary skill in the art; and (4) where in evidence, objective indicia
`of nonobviousness, such as commercial success, long-felt but unsolved
`needs, and failure of others.2 Graham v. John Deere Co., 383 U.S. 1,
`17−18, 35–36 (1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034,
`1047–48 (Fed. Cir. 2016) (en banc). When evaluating a combination of
`references, an obviousness analysis should address “whether there was an
`apparent reason to combine the known elements in the fashion claimed by
`the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`We analyze the obviousness issues according to these principles.
`
`
`2 The record does not include evidence or argument regarding objective
`indicia of nonobviousness.
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`B. Level of Ordinary Skill in the Art
`Factors pertinent to determining the level of ordinary skill in the art
`include (1) the educational level of the inventor; (2) the type of problems
`encountered in the art; (3) prior-art solutions to those problems; (4) the
`rapidity with which innovations are made; (5) the sophistication of the
`technology; and (6) the educational level of workers active in the field.
`Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
`1983). Not all factors may exist in every case, and one or more of these or
`other factors may predominate in a particular case. Id. These factors are not
`exhaustive, but merely a guide to determining the level of ordinary skill in
`the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
`2007). Moreover, the prior art itself may reflect an appropriate skill level.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner asserts that a person of ordinary skill in the art “would
`have had at least a Bachelor’s degree in electrical engineering, computer
`engineering, computer science, or a related field, and 3–5 years of
`experience related to the design or development of wireless communication
`systems, or the equivalent.” Pet. 6. Petitioner also asserts that “[a]dditional
`graduate education could substitute for professional experience, or
`significant experience in the field could substitute for formal education.” Id.
`Dr. Buehrer’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 20.
`Patent Owner asserts that a person of ordinary skill in the art “would
`have had a Bachelor’s degree in electrical engineering, computer
`engineering, computer science, or a related field, and 3–5 years of
`experience working in the field of wireless communication systems, or the
`equivalent.” Prelim. Resp. 8. Patent Owner also asserts that “[l]ack of work
`
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`experience can be remedied by additional education, and vice versa.” Id.
`Dr. Haas’s testimony supports Patent Owner’s assertions. See Ex. 2001
`¶ 17.
`
`The descriptions of an ordinarily skilled artisan articulated by
`Petitioner and Patent Owner differ mainly in the educational level, i.e.,
`“at least a Bachelor’s degree” according to Petitioner and “a Bachelor’s
`degree” according to Patent Owner. Pet. 6; Prelim. Resp. 8; see Ex. 1003
`¶ 20; Ex. 2001 ¶ 17.
`Based on the current record and for purposes of institution, we accept
`Patent Owner’s description of an ordinarily skilled artisan as consistent with
`the ’655 patent and the asserted prior art. If the prior art renders the claimed
`subject matter obvious to a person with less experience and less knowledge,
`then the prior art renders the claimed subject matter obvious to a person with
`more experience and more knowledge. See Tokai Corp. v. Easton Enters.,
`Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
`C. Claim Construction
`We construe claim terms “using the same claim construction
`standard” that district courts use to construe claim terms in civil actions
`under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2022). Under that
`standard, claim terms “are given their ordinary and customary meaning,
`which is the meaning the term would have to a person of ordinary skill in
`the art at the time of the invention.” Power Integrations, Inc. v. Fairchild
`Semiconductor Int’l, Inc., 904 F.3d 965, 971 (Fed. Cir. 2018) (citing Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). The
`meaning of claim terms may be determined by “look[ing] principally to the
`intrinsic evidence of record, examining the claim language itself, the written
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`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`Petitioner contends that “no formal claim constructions are necessary
`in this proceeding.” Pet. 6.
`Patent Owner “agrees with Petitioner that no claim terms require an
`express construction for the purposes of this proceeding.” Prelim. Resp. 9
`(citing Pet. 6).
`Based on the current record, we determine that no claim term requires
`an explicit construction to decide whether Petitioner satisfies the “reasonable
`likelihood” standard for instituting trial. “[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`D. Alleged Obviousness over Bao: Claims 1–40
`Petitioner contends that claims 1–40 are unpatentable under § 103 as
`obvious over Bao. See Pet. 8–48. Below, we provide an overview of Bao,
`and then we consider the obviousness issues raised by the parties. As
`explained below, Patent Owner primarily disputes that Bao teaches
`limitations [21b] and [21e] and the corresponding limitations in the other
`independent claims. As also explained below, Petitioner establishes
`sufficiently for purposes of institution that Bao teaches the subject matter
`of claims 1–40.
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`1. OVERVIEW OF BAO (EXHIBIT 1004)
`Bao is a U.S. patent application publication titled “Method, System
`and Apparatus for Notifying a UE of Monitored Component Carriers,” filed
`on April 23, 2010, and published on May 10, 2012. Ex. 1004, codes (22),
`(43), (54). Bao states that the “invention relates to the field of
`communication technology, in particular to a method, a system and an
`apparatus for notifying [user equipment] UE of component carriers to
`be monitored.” Id. ¶ 1.
`Bao explains that carrier aggregation enables a base station to
`aggregate component carriers “for serving a UE so as to provide the serve
`rates which the UE needs.” Ex. 1004 ¶ 2; see id. ¶¶ 3, 16, Fig. 1. Bao
`describes the problem that monitoring the Physical Downlink Control
`Channel (PDCCH) for each component carrier consumes power
`unnecessarily. See id. ¶ 6. To reduce power consumption, a base station
`may send a monitoring changing instruction to a UE so the UE may activate
`monitoring of a component carrier when appropriate and then deactivate
`monitoring in response to another monitoring changing instruction. Id.
`¶¶ 7–10, 13. A base station may send a monitoring changing instruction
`with a Media Access Control (MAC) layer control command (CC). Id.
`¶¶ 9–10, code (57).
`According to Bao, the invention “introduce[s] a new MAC [protocol
`data unit] PDU for instructing the UE to increase, decrease or change the
`monitored” component carriers. Ex. 1004 ¶ 26; see id. ¶¶ 13, 56, code (57).
`Bao’s Figure 3 (reproduced below) depicts a MAC PDU according to an
`embodiment of the invention:
`
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`Figure 3 illustrates a MAC PDU with a MAC head and a MAC payload.
`Ex. 1004 ¶¶ 18, 28, Fig. 3. As shown in Figure 3, the MAC head includes
`multiple MAC subheaders, and the MAC payload includes multiple MAC
`control elements (CEs), multiple MAC service data units (SDUs), and
`optional padding. Id. ¶ 28, Fig. 3. “The MAC subheaders are configured for
`indicating a type and a length of the corresponding MAC CE or MAC
`SDU.” Id. ¶ 28.
`The MAC subheaders may have two formats, i.e.,
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