Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: September 21, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, GEORGIANNA W. BRADEN, and
`NATHAN A ENGELS, Administrative Patent Judges.
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: September 21, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, GEORGIANNA W. BRADEN, and
`NATHAN A ENGELS, Administrative Patent Judges.
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. filed a Petition requesting an inter partes review of
`claims 1–15 of U.S. Patent No. 10,484,915 B2 (Ex. 1001, “the ’915 patent”).
`Paper 2, 1. Patent Owner filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). Petitioner also submitted the Declaration of Dr. Zhi Ding in
`support of the Petition. Ex. 1003.
`An inter partes review may not be instituted unless it is determined
`that “the information presented in the petition . . . 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 (2018). For the
`reasons set forth below, we conclude that the information presented in the
`Petition fails to establish a reasonable likelihood that Petitioner would
`prevail in showing the unpatentability of any of the challenged claims, and
`we do not institute inter partes review.
`
`B. Real Parties in Interest
`Petitioner states that Apple Inc. is the real party in interest. Pet. 84.
`Patent Owner states that Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`are the real parties in interest. Paper 3, 2.
`
`C. Related Proceedings
`Petitioner states that the ’915 patent was challenged in IPR2021-
`00644, which is now terminated. Pet. 52. Patent Owner states that there are
`no related proceedings. Paper 3, 2.
`
`D. The ’915 Patent (Ex. 1001)
`The ’915 patent is directed to handover methods performed by a
`wireless device for handing over the wireless device from a source cell to a
`
`2
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`target cell. Ex. 1001, code (57). The ’915 patent issued from an application
`filed December 6, 2018 (Ex. 1001, code (22)) and identifies a continuation
`application filed November 3, 2017 (Ex. 1001, code (63)) and a provisional
`application filed November 4, 2016 (Ex. 1001, code (60)).
`
`E. Asserted References
`Ex. 1005: US 2017/0251460, filed Feb. 27, 2017 (“Agiwal”).
`Ex. 1008: TS36.311 v.12.10.0 (2016-06), 3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network,
`Evolved Universal Terrestrial Radio Access (E-UTRA), Radio
`Resource Control (RCC), Protocol specification (Release 12)
`(“TS36.331”).
`Ex. 1009: WO 2014/078676, publ. May 22, 2014 (“Murray”).
`Ex. 1010: US 2018/0115990, filed Oct. 20, 2017 (“Abedini”).
`
`3
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`
`F. Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1–15 of
`the ’915 patent based on the following basis:
`
`Claim(s) Challenged
`1–3, 6
`
`35 U.S.C. §
`1031
`
`References/Basis
`Agiwal, TS36.311
`
`8–10, 13–15
`
`1–5, 7–12, 14, 15
`
`103
`
`103
`
`Agiwal, TS36.311, Murray
`
`Abedini
`
`II. DISCUSSION
`
`A. Priority2
`In an inter partes review, “the petitioner is master of its complaint,”
`and “the petition [is] the center-piece of the proceeding.” SAS Inst., Inc. v.
`Iancu, 138 S.C. 1348, 1355, 1359 (2020). Among other obligations, a
`petitioner carries a burden of production to show in its petition that the
`asserted references qualify as prior art. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (explaining that
`petitioners bear the initial burden to establish that the asserted references
`qualify as prior art).
`
`
`1 The ’915 patent’s earliest priority date falls after the Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), took effect.
`Thus, we apply the AIA version of § 103.
`2 The filing dates of Agiwal and Abedini predate the ’915 patent’s filing
`date. Petitioner did not argue that the references are presumptively prior art.
`Notably, the Petition does not even mention the references’ filing dates, only
`the filing dates of the references’ provisional applications. The Board
`cannot adopt arguments on behalf of Petitioner; “the Board must base its
`decision on arguments that were advanced by a party.” In re Magnum Oil
`Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
`
`4
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`
`Here, Petitioner chose to advance Agiwal and Abedini as prior art
`based on priority claims to each reference’s provisional application. Pet. 1–
`2. Specifically, Petitioner states “each reference pre-dates November 4,
`2016 (‘Critical Date’), which is the earliest date to which the ’915 patent
`claims priority.” Pet. 1. Petitioner further identifies the provisional
`applications’ filing dates in the Petition’s table of references, reproduced
`below.
`
`
`Pet. 2. Petitioner’s table states that Agiwal qualifies as prior art based on the
`date “February 26, 2016” (the filing date of Agiwal’s provisional
`application) and that Abedini qualifies as prior art under § 102(a)(2) based
`
`5
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`on the date “October 21, 2016” (the filing date of Abedini’s provisional
`application). Pet. 2.
`Advancing what it calls a “Dynamic Drinkware analysis,” Petitioner
`states that each reference patent incorporates its provisional application by
`reference and that each provisional application supports claim 1 of the
`reference patent. Pet. 6, 51. Petitioner also provides a limitation-by-
`limitation comparison of claim 1 of each reference patent to its respective
`provisional application. Pet. 7–9, 51–53.
`Fatal to the Petition, though, Petitioner did not establish that the
`subject matter relied upon for prior art was effectively filed in the
`provisional applications. 35 U.S.C. §§ 102(a)(2), 102(d). Under the AIA, a
`provisional application must “describe[] the subject matter” relied upon as
`prior art in the reference patent. 35 U.S.C. §102(d); see also MPEP
`§ 2154.01(b). Petitioner does not assert, much less show, that the
`provisional applications satisfy the subject-matter requirement.
`Accordingly, Petitioner has not shown that Agiwal and Abedini are
`entitled to the priority dates of their provisional applications, and Petitioner
`has not shown a likelihood that it would prevail in its challenges to any
`claims of the ’915 patent.
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`establishes a reasonable likelihood that Petitioner would prevail in its
`challenge to claims 1–15 of the ’915 patent.
`IV. ORDER
`In consideration of the foregoing, it is hereby ordered that the Petition is
`denied, and no trial is instituted.
`
`
`6
`
`
`
`IPR2022-00348
`Patent 10,484,915 B2
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`David L. Holt
`Ayan Roy-Chowdhury
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`tar@fr.com
`holt2@fr.com
`roy-chowdhury@fr.com
`
`For PATENT OWNER:
`
`Peter C. Knops
`Jason Wejner
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipc.com
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
