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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON
`
`Patent Owner
`
`
`
`
`___________________
`
`Case IPR2022-00457
`U.S. Patent No. 9,509,440
`___________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
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`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`B.
`
`C.
`
`D.
`
`B.
`
`V.
`
`Introduction ...................................................................................................... 1
`The ’440 Patent ................................................................................................ 5
`Prosecution History of the ’440 Patent ..........................................................10
`A.
`The Patent Office Considered the Primary Reference
`Cited by Apple During Prosecution ....................................................11
`The Prior Art Cited by Apple is Cumulative to the Art
`Considered by the Patent Office During Prosecution .........................12
`The Examiner Allowed the Challenged Claims in View
`of Marinier ...........................................................................................16
`Lahetkangas Lacks the Very Same Disclosure that
`Resulted in the Allowance of the Issued Claims .................................22
`IV. Applied References ........................................................................................24
`A.
`Lahetkangas—the primary reference applied in Ground
`1—is cumulative to Marinier and does not disclose the
`claimed invention. ...............................................................................25
`LTE TS 36.213 version 10.3 Release 10—a secondary
`reference—likewise fails to disclose the claimed
`invention. .............................................................................................28
`C. Wang—a secondary reference—fails to remedy the
`deficiencies of Lahetkangas and LTE TS 36.213. ..............................29
`The Board Should Exercise Its Discretion and Deny Insitution
`Under 35 U.S.C. §325(d) ...............................................................................29
`A.
`The Becton, Dickinson factors weigh heavily in favor of
`denying institution. ..............................................................................32
`Factors (a), (b), and (d) strongly weigh in favor of
`
`denying institution.....................................................................32
`a)
`Factor (a) – Lahetkangas was previously presented to and
`Considered by the Patent Office During Prosecution. ...33
`Factor (b) – Lahetkangas is Cumulative to Marinier. ....36
`Factor (d) – Arguments Made During Prosecution to
`Distinguish Marinier are Equally Applicable to
`Lahetkangas. ...................................................................50
`
`b)
`c)
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`b)
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`B.
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`B.
`
`C.
`
`Factors (c), (e), and (f) strongly weigh in favor of
`denying institution.....................................................................50
`Advanced Bionics confirms that the Board should deny
`institution because Lahetkangas was previously presented
`to the Office and Apple fails to show that the Office erred
`in its evaluation of that reference. .......................................................53
`VI. Claim Construction is Not Needed to Dispose of the Petition ......................54
`VII. Apple Does Not Establish a Reasonable Likelihood That
`Lahetkangas, LTE TS 36.213, or Wang—Alone or in the
`Alleged Obviousness Combinations—Render Challenged
`Claims 1-32 Unpatentable .............................................................................54
`A. Ground 1: Apple does not establish a reasonable
`likelihood that Lahetkangas renders claims 1-7, 9, 11-17,
`19, 21, 23, 25, and 27 unpatentable. ....................................................55
`Lahetkangas fails to disclose at least Claim
`
`Elements [1.7], [11.5], [21.7], [23.7], [25.6], and
`[27.8]. ........................................................................................55
`a)
`Lahetkangas does not disclose or suggest that “the first
`entry for the lowest modulation order in the first MCS
`table is maintained in the second MCS table as the
`fallback” ..........................................................................56
`Lahetkangas does not disclose or suggest that “an entry
`for the lowest coding rate of the lowest modulation order
`in the first CQI table is maintained in the second CQI
`table as the fallback” ......................................................59
`Lahetkangas fails to disclose claim elements
`[11.5], [21.7], [23.6], [25.6], and [27.8] for the
`same reasons listed above. ........................................................62
`Ground 2: Apple does not establish a reasonable
`likelihood that the combination of Lahetkangas LTE TS
`36.213 render claims 1-7, 9, 11-17, 19, 21, 23, 25, and 27
`unpatentable. ........................................................................................63
`Grounds 3 and 4: Apple does not establish a reasonable
`likelihood that the combinations of Lahetkangas and
`Wang or, in the alternative, Lahetkangas, LTE TS
`36.213 , and Wang render claims 8 and 18 unpatentable. ..................63
`
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`VIII. Conclusion .....................................................................................................64
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6, 7 (PTAB Feb. 13, 2020) .....................................passim
`Becton, Dickinson and Company v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (§ III.C.5 designated
`precedential on August 2, 2019) ..................................................................passim
`Brooke Grp. Ltd. v. Brown & Williamson Tobacco Corp.,
`509 U.S. 209 (1993) ............................................................................................ 52
`Donghee America, Inc. et al. v. Plastic Omnium Advanced Innovation and
`Research,
`IPR2017-01605, Paper 4, 50 (P.T.A.B. December 11, 2018) ............................ 52
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .................................................................... 52, 59
`Upjohn Co. v. Mova Pharm. Corp.,
`225 F.3d 1306 (Fed. Cir. 2000) .......................................................................... 52
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 54
`STATUTES
`35 U.S.C. §102(a)(2) ................................................................................................ 11
`35 U.S.C. § 325(d) ............................................................................................passim
`OTHER AUTHORITIES
`M.P.E.P. § 609.05(b)................................................................................................ 36
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`2001
`
`EXHIBITS LIST
`U.S. Published Patent Application No. 2015/0358111
`(“Marinier”)
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`I.
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
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`Introduction
`Apple’s Petition is nothing more than a cut-and-paste of a prior meritless
`
`petition filed by Samsung challenging the claims of U.S. Patent No. 9,509,440 (“the
`
`’440 patent”) (Ex. 1001). See IPR2021-00509 (filed Feb. 5, 2021). The ’440 patent
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`is not currently the subject of any patent infringement claims against Apple in any
`
`pending litigation, so Apple’s Petition is not a means for “providing a quick and
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`cost-effective alternative[] to litigation,” which is the purpose of inter partes review
`
`as outlined in the legislative history. H.R. Rep. No. 112–98, pt. 1, at 40 (2011). The
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`use of inter partes review in this manner, particularly where Apple has failed to show
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`that it has a reasonable likelihood of prevailing as to any Challenged Claim pursuant
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`to § 314(a), “frustrate[s] the purpose of the section as providing quick and cost-
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`effective alternatives to litigation” and “divert[s] resources from the research and
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`development of inventions.” See, e.g., id. at 40 (2011) (legislative history
`
`establishing inter partes review).1 Here, as Apple admits, it “largely repurposes the
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`Samsung IPR” (Paper 1 at 71) at little or no cost to Apple, relying on the same expert
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`retained by Samsung, and presenting the same weak arguments challenging the
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`claims of the ’440 patent.
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`1 Unless otherwise noted, all emphasis is added by Patent Owner.
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`The Board should exercise its discretion and deny institution under 35 U.S.C.
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`Case IPR2022-00457
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`
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`§ 325(d) because the primary reference Apple asserts in each of its Grounds was
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`already considered by the Patent Office during prosecution. Specifically, Apple
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`asserts WO 2013/123961 A1 (“Lahetkangas”) as the primary reference in each of its
`
`Grounds. However, the Patent Owner provided Lahetkangas to the Patent Office in
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`an Information Disclosure Statement (“IDS”), and Lahetkangas is one of the only
`
`four “Patent Documents” cited on the face of the ’440 Patent. Ex. 1001, Cover
`
`(References Cited). Moreover, the Examiner initialed the reference as having been
`
`considered in an Office Action dated March 1, 2016. Apple acknowledges that the
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`Patent Office was in possession of Lahetkangas during prosecution, but suggests that
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`“the Examiner [n]ever properly considered” its substance or used it as the basis for
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`a rejection. Petition, 17.
`
`The Examiner’s reasoning for not using Lahetkangas as a basis for rejection
`
`is clear, however, because Lahetkangas is merely cumulative to the reference cited
`
`by the Examiner as the basis for the rejection of pending claims, U.S. Published
`
`Patent Application No. 2015/0358111 (“Marinier”) (Ex. 2001). In fact, as shown in
`
`a detailed comparison below, the disclosure in Marinier is more comprehensive than
`
`Lahetkangas, and the Challenged Claims are patentable over Lahetkangas for the
`
`same reasons used to distinguish Marinier during prosecution. The Examiner’s
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`failure to cite Lahetkangas as a basis for rejection was not “material error” in
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`“overlooking” its substance; rather, the Examiner clearly recognized the cumulative
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`nature of Lahetkangas and declined to issue a parallel rejection in view of the breadth
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`of disclosure of the reference cited in rejecting the pending claims—Marinier.
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`Moreover, Apple’s suggestion that the Examiner somehow “overlooked” “TS
`
`36.213’s teachings” (Petition, 18-19) is similarly misplaced because the very same
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`version of TS 36.213 on which Apple relies in its Petition (Version 10.3, from LTE
`
`Release 10) (Ex. 1009) is cited in the “Art Background” of Lahetkangas. For these
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`reasons, Apple has failed to show that any of the Challenged Claims are unpatentable
`
`over cumulative prior art considered by the Examiner and overcome by the Patent
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`Owner during prosecution, and the Board should exercise its discretion and deny
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`institution under § 325(d).
`
`Finally, Apple’s Petition fails on the merits. Lahetkangas, whether considered
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`individually or in combination with the other references cited in the Grounds, fails
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`to disclose the same elements of the independent Challenged Claims that were the
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`basis for the Examiner’s allowance of the pending claims in the ’440 patent.
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`Specifically, none of the references cited in the Grounds disclose or suggest either
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`(1) keeping “the first entry for the lowest modulation order in the first MCS table . . .
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`in the second MCS table as a fallback” or (2) keeping “an entry for the lowest coding
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`rate of the lowest modulation order in the first CQI table . . . in the second CQI table
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`as the fallback.”
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`First. Lahetkangas does not disclose or suggest that “the first entry for the
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`Case IPR2022-00457
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`lowest modulation order in the first MCS table is maintained in the second MCS
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`table as the fallback.” Lahetkangas teaches, at best, “a few common” modulation
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`settings in the “common MCS index area from the low range of the modulation set”
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`that could be used if “channel conditions drop quickly.” But the “low range of the
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`modulation set” is undefined and could include QPSK (Qm=2), 16QAM, (Qm=4), or
`
`64QAM (Qm=6), as shown in Table 1 (e.g., any modulation order less than
`
`256QAM). Ex. 1011, 16. Nothing in this passage shows or suggests that the lowest
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`modulation order (QPSK), much less the first entry for the lowest modulation order
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`in the first MCS table, is used as a “fallback.”
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`Second, Lahetkangas fails to disclose any detail regarding a modified CQI
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`table. While Lahetkangas mentions in passing that the modified “CQI tables may
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`comprise a common subset” of modulation orders, it never teaches or suggests that
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`the “common subset” includes the lowest modulation order from the original CQI
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`table. While Apple’s expert argues that there will be a one-to-one correlation
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`between modified MCS and CQI tables, there is no evidence in the cited art to
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`support this statement. In fact, this notion is contradicted by the prior art cited by the
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`Examiner during prosecution (Marinier). Marinier teaches that while “a first
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`[original] CQI table may have values (0, 1, 2, 3, 4, 5), a second [modified] CQI table
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`. . . may have values (4, 5, 6, 7, 8, 9) . . . .” Accordingly, while Marinier teaches that
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`there may be some overlap between first and second CQI tables, it does not disclose
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`a one-to-one correlation such that the lowest modulation order from the first table is
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`necessarily included in the second table. Lahetkangas lacks the same disclosure, and
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`Apple’s expert is therefore offering nothing more than unsupported, conclusory
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`speculation when opining that “an entry for the lowest coding rate of the lowest
`
`modulation order in the first CQI table is maintained in the second CQI table as the
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`fallback.”
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`These limitations are included in each of the independent claims in the ’440
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`patent. For these reasons, Apple has failed to show a reasonable likelihood that one
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`or more of the Challenged Claims is unpatentable, and the Board should deny
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`institution on the merits.
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`II. The ’440 Patent
`The ’440 patent is directed to a new method and system for enabling higher-
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`order modulation in cellular communications when, for example, the signal and
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`interference to noise ratio (“SINR”) is high. Ex. 1001, Abstract, 2:7-17. At the time
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`of invention, LTE systems were based on adaptive modulation and coding controls
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`in which the modulation rate could be adjusted adaptively based on the quality of
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`radio link connections. Ex. 1001, 1:32-43. In the prior art system, the Modulation
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`and Coding Scheme (“MCS”) was selected based on, at least in part, the channel
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`conditions through Channel Quality Indicator (“CQI”) signaling. Id. Specifically,
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`the UE would typically send a CQI signal to the radio node, and the radio node would
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`then select a modulation scheme from the MCS based in the CQI signal. Ex. 1001,
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`1:44-65.
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`The ’440 patent described existing modulation schemes as follows.
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`In current LTE systems, the set of available modulation schemes
`for both downlink and uplink includes Quadrature Phase-Shift
`Keying, QPSK, 16 Quadrature Amplitude Modulation, QAM,
`and 64QAM, corresponding to two, four and six bits carried per
`modulation symbol, respectively. In this field, the number of bits
`carried per modulation symbol is usually referred to as the
`modulation order, Qm.
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`Ex. 1001, 1:55-61. However, the modulation schemes available for radio
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`communications were limited to the specific schemes included in the original MCS
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`table. “In the current LTE specification, the MCS and CQI tables support modulation
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`schemes up to 64QAM, e.g. as illustrated in FIGS. 2 and 3.” Ex. 1001, 6:33-43.
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`There was no provision for modifying the MCS table to enable the use of higher
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`order modulation (“HOM”) schemes, like 256QAM, if the SINR was high such that
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`the radio network could support higher rates for uplink and downlink.
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`The ’440 patent solved this problem with the novel approach of enabling
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`multiple MCS and CQI tables that provide “flexibility to adopt appropriate
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`MCS/CQI tables based on channel conditions . . . .” Ex. 1001, 6:15-16. The ’440
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`patent discloses a system in which “proposed new MCS and CQI index tables are
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`able to support modulation higher than 64QAM, without necessarily extending the
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`number of bits in the [Downlink Control Information/Uplink Control Information]
`
`formats, or the number of entries in the MCS table and in the CQI table, respectively.
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`In this solution, it is possible to select higher-order modulation schemes e.g. in the
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`high-SINR scenarios or generally when a performance related parameter, such as
`
`SINR, of signals communicated between a radio node and a UE is above a certain
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`threshold.” Ex. 1001, 6:33-43. The ’440 patent thus discloses the ability to expand
`
`upon the existing LTE parameters and extend the specification to encompass higher
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`order modulation schemes for 5G or New Radio (“NR”) systems. This is an
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`important advance in view of the enhanced uplink and downlink speeds made
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`possible in NR systems.
`
`Importantly, another novel aspect of the ’440 patent is the ability of the
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`patented system to adapt to changing radio conditions that could traditionally lead
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`to dropped communications or the need for multiple retransmissions when radio
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`network conditions are degraded. Specifically, the ’440 patent claims recite that the
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`lowest modulation order included in the original MCS and CQI tables is included in
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`the modified tables as a fallback. For example, if the SINR drops and the radio
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`connection is in jeopardy at higher modulation rates, the radio network can use the
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`fallback modulation order to preserve the connection. Ex. 1001, 8:1-31. Figure 1 of
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`the ’440 patent shows a traditional CQI table having a first set of modulation rates
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`(QPSK, 16QAM, and 64QAM).
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`Ex. 1001, Figure 3.
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`Figure 9 of the ’440 patent, reproduced below, shows how some of the lower
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`order modulations rates (“QPSK”) have been removed from the modified CQI table
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`in favor of HOM rates (“256QAM”), such as those used in NR systems.
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`Ex. 1001, Figure 9. Here the lowest modulation order from the original CQI table,
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`QPSK, has been preserved as a fallback even though HOM rates, 256QAM, have
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`been added to the modified table. This helps ensure that a fallback is available in
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`order to maintain the radio connection in the event of signal degradation or an
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`unacceptably high drop in the SINR. The concept of the “fallback” is recited in each
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`of the independent claims of the ’440 patent. Ex. 1001, Claims 1, 11, 21, 23, 25, and
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`27.
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`III. Prosecution History of the ’440 Patent
`The application that issued as the ’440 patent was amended via a Preliminary
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`Amendment filed on October 6, 2014. In that Preliminary Amendment, previously
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`pending claims 1-26 were canceled and new claims 27-52 were added to the
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`application. Ex. 1002, 320. Amended Claim 27 of the application recites as follows:
`
`(New) A method performed by a radio node of a
`27.
`cellular network, the radio node being operable to apply a first
`table configuration
`in
`radio communication with User
`Equipments (UEs), the first table configuration comprising at
`least one of a first Modulation and Coding Scheme (MCS) table
`and a first Channel Quality Indicator (CQI) table, wherein the at
`least one of the first MCS table and the first CQI table support a
`certain maximum modulation order, the method comprising:
`detecting that a higher modulation order, which is higher
`than the maximum modulation order of the first table
`configuration, is potentially possible to use in a radio
`communication between the radio node and a first UE;
`table
`instructing
`the first US
`to apply a second
`configuration in the radio communication, the second table
`configuration comprising at least one of a second MCS table and
`a second CQI table;
`wherein at least one of the second MCS table and the
`second CQI table support the higher modulation order;
`wherein at least one entry for the at least one modulation
`order in the at least one of the first MCS and the first CQI table
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`is maintained in the at least one of the second MCS table and the
`second CQI table as a fallback in case it is desirable to use the at
`least one modulation order in the at least one of the first MCS
`table and the first CQI table when the second CQI table is applied.
`
`Ex. 1002, 321.
`
`During prosecution, pending claims 27-52 were rejected under 35 U.S.C.
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`§102(a)(2) being anticipated by U.S. Published Patent Application No.
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`2015/0358111 (Marinier) (Ex. 2001). As discussed below, the prior art cited as the
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`primary reference in the current Petition is cumulative to the disclosure in Marinier,
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`which was overcome during prosecution, leading to the issuance of the Challenged
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`Claims of the ’440 patent.
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`A. The Patent Office Considered the Primary Reference Cited by
`Apple During Prosecution
`Apple admits in the Petition that Lahetkangas was provided to the Patent
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`Office during the prosecution of the ’440 patent in an IDS filed on November 24,
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`2014. Petition, 17; Ex. 1002, 69; Ex. 1011. While Apple speculates that the
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`Examiner never “properly considered . . . [the] substance” of Lahetkangas, the
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`Prosecution History clearly shows that the Examiner initialed Lahetkangas as being
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`considered during prosecution. Petition, 17; Ex. 1002, 69. Accordingly, Apple offers
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`nothing more than unsupported speculation regarding the Examiner’s alleged
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`“failure to properly consider [the] substance” of Lahetkangas.
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`Importantly, Apple alleges that the Board should not exercise its discretion
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`and deny institution under §325(d) because “Advanced Bionics, Part 1, is not
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`satisfied because the same or substantially the same art or arguments were not
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`previously presented” to the Patent Office. Petition, 18 (citing Advanced Bionics,
`
`LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 7
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`(PTAB Feb. 13, 2020) (precedential)). However, as shown below in great detail, the
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`Patent Office actually considered, and rejected the pending claims, based on a prior
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`art reference with a more extensive disclosure than that included in Lahetkangas.
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`See Sections III.C and V.A.1.b, infra. Moreover, the Examiner allowed the claims
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`of the ’440 patent to issue over that reference, and Petitioner has filed to prove a
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`substantial likelihood that any of the Challenged Claims are unpatentable for the
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`same reasons the Examiner allowed those claims to issue. There was no “material
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`err[or]” as suggested by Petitioner because Lahetkangas is merely cumulative to the
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`art considered during prosecution.
`
`B.
`
`The Prior Art Cited by Apple is Cumulative to the Art Considered
`by the Patent Office During Prosecution
`Marinier is entitled “System and method for Adaptive Modulation,” and its
`
`Abstract is shown below.
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`Systems, methods, and/or techniques for improving downlink
`spectrum efficiency may be disclosed. For example, a higher
`order modulation (HOM) transmission may be provided to a
`device. The higher order modulation transmission may be
`configured to be indicated by the network or a device.
`Additionally, multiple modulation and coding scheme (MCS)
`tables, transport block size (TBS) tables, and/or channel quality
`index (CQI) tables may be provided to support the higher order
`modulation transmission.
`
`Ex. 2001, Abstract. As described in the Abstract, Marinier discloses a system for
`
`using multiple MCS and CQI tables to enable HOM transmissions. Ex. 2001, [0062],
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`[0072]. Marinier’s discussion of the use of multiple MCS and CQI tables is
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`exhaustive and spans a large portion of the specification. See, e.g., Ex. 2001, [0061]-
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`[0092]. Marinier describes that multiple MCS and CQI tables can be used “to take
`
`advantage of channel characteristics of a small cell environment and, in particular,
`
`in the downlink, to improve throughput gains of small cells that may be otherwise
`
`reduced when resources may be consumed by overhead, and the like.” Ex. 2001,
`
`[0061]. Marinier explains that the use of multiple MCS and CQI tables can improve
`
`throughput using HOM when the use of single tables would limit spectrum-
`
`efficiency of the device (e.g., UE) when considering a small cell’s “signal-to-noise-
`
`plus-interference ratio.” Ex. 2001, [0060]. The use of HOM may be desirable, for
`
`example, when the use of legacy (e.g., first) MCS tables that support only up to
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`64QAM modulation may limit spectrum efficiency “compared to what may be
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
`
`possible considering its [high] signal-to-noise-plus-interference ratio,” such as when
`
`a device is “located close to a small cell base station.” Id. Similarly, Marinier
`
`discloses that “association of a legacy MCS table to a common search space may
`
`allow the network to revert [e.g., “fallback”] (e.g., quickly) to a table allowing access
`
`to the most robust modulation and coding schemes in case the radio conditions
`
`suddenly deteriorate,” which could happen if the signal-to-noise-plus-interference
`
`ratio suddenly drops. Id., [0065].
`
`For example, Marinier discloses that a first, or legacy, MCS table may be used
`
`that “may be valid for QPSK, 16QAM, and/or 64QAM (e.g., a first set of modulation
`
`orders or values).” Ex. 2001, [0062]. However, Marinier’s network can also use a
`
`new table “(e.g., a second table or second MCS table) that may be valid for 256QAM
`
`(e.g., a second set of modulation orders or values).” Id. While Marinier, in some
`
`embodiments, discloses 32-element tables for use in radio networks, fewer than 32
`
`elements may be included. Id.
`
`Similarly, Marinier discloses that “[m]ultiple CQI tables may also be provided
`
`and/or used . . . to allow for or enable higher order modulation.”
`
`Multiple CQI tables may also be provided and/or used. For
`example, to allow for or enable higher order modulation, a device
`may use a set of CQI tables. As an example table (e.g., a first
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
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`table or first CQI table), the device may use a 16-element table
`(e.g., the current Rel-11 16-element table) that includes CQI
`values that may be valid for QPSK, 16QAM, and/or 64QAM
`(e.g., a first set of modulation orders or values). As an additional
`or another example table (e.g., a second table or second CQI
`table), a device may use a new 16-element table that includes
`CQI values that may be valid for 256QAM (e.g., a second set of
`modulation orders or values). In an embodiment, the second table
`may keep some values reserved for future expansion.
`Additionally, the second table may be fewer than 16 elements
`and may use fewer bits of signaling. In another or additional
`example, the second table may have values for QPSK, 16QAM,
`64QAM, and/or 256QAM (e.g., the second set of modulation
`orders or values may include the orders or values of the first set
`along with 256QAM).
`
`Ex. 2001, [0072]. Marinier explicitly discloses that overlap may exist between first
`
`and second MCS and CQI tables.
`
`Additionally, in an example, multiple CQI tables may have
`overlapping modulation and coding scheme values and/or
`multiple MCS tables may also have overlapping values. In a
`downlink assignment, use of a value by the network that may
`overlap multiple MCS tables (e.g., the first and second MCS
`tables) may inform the device that for future feedback reports it
`should or may switch CQI tables to another that may have the
`same modulation and coding scheme value (e.g., should select
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
`
`one of the first or second CQI tables based on the indication of
`MCS table such as the first or second MCS tables being used).
`The reverse may also be applicable (e.g., where a device feeding
`back a value that may be overlapping two CQI tables may inform
`the network to switch tables in a future downlink assignment
`grant). As such, in an example, a downlink assignment that may
`be received from the network may include an indication of a
`particular MCS table to be used (e.g., the first or second MCS
`table). Based on that indication, for example, based on the MCS
`table identified by the indication, the device may determine
`which CQI tables to use (e.g., whether to use the first or second
`CQI tables).
`
`Ex. 2001, [0082].
`
`C. The Examiner Allowed the Challenged Claims in View of Marinier
`Importantly, Marinier does not disclose other critical limitations of the claims
`
`that issued with the ’440 patent. Specifically, Marinier does not disclose, either
`
`explicitly or implicitly, that the first entry for the lowest modulation order in the first
`
`MCS table is maintained in a second MCS table as the fallback. Moreover, Marinier
`
`does not disclose that an entry for the lowest coding rate for the lowest modulation
`
`order in the first CQI table is maintained as a fallback in a second CQI table.
`
`The table below shows (in color) limitations that were added to the pending
`
`claims by the Patent Owner in order to overcome the Examiner’s rejections in view
`
`of Marinier. Specifically, during prosecution, the Examiner rejected original Claim
`
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`27 (and the other pending claims of the application) under § 102 as being anticipated
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
`
`by Marinier. Ex. 1002, 53-80. In response to that rejection, the applicant amended
`
`Claim 27 as follows:
`
`Original Claim 27
`27. (Original) A method performed by a
`radio node of a cellular network, the
`radio node being operable to apply a
`first
`table configuration
`in
`radio
`communication with User Equipments
`(UEs), the first table configuration
`comprising at least one of a first
`Modulation and Coding Scheme (MCS)
`table and a first Channel Quality
`Indicator (CQI) table, wherein the at
`least one of the first MCS table and the
`first CQI
`table support a certain
`maximum modulation order,
`the
`method comprising:
`
`Amended Claim 27
`27. (Amended) A method performed by
`a radio node of a cellular network, the
`radio node being operable to apply a
`first
`table configuration
`in
`radio
`communication with User Equipments
`(UEs), the first table configuration
`comprising at least one of a first
`Modulation and Coding Scheme (MCS)
`table and a first Channel Quality
`Indicator (CQI) table, wherein the at
`least one of the first MCS table and the
`first CQI
`table support a certain
`maximum modulation order,
`the
`method comprising:
`
`detecting that a higher modulation
`order, which
`is higher
`than
`the
`maximum modulation order of the first
`table configuration,
`is potentially
`possible
`to
`use
`in
`a
`radio
`
`detecting that a higher modulation
`order, which
`is higher
`than
`the
`maximum modulation order of the first
`table configuration,
`is potentially
`possible
`to
`use
`in
`a
`radio
`
`
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`Case IPR2022-00457
`U.S. Patent No. 9,509,440
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`communication between the radio node
`and a first UE;
`
`communication between the radio node
`and a first UE; and
`
`instructing the first US to apply a second
`table configuration
`in
`the
`radio
`communication,
`the
`second
`table
`configuration comprising at least one of
`a second MCS