Trials@uspto.gov
`571-272-7822
`
`Paper 7
`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.
`
`IPR2022-00457
`Patent 9,509,440 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, GEORGIANNA W. BRADEN, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`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.
`
`IPR2022-00457
`Patent 9,509,440 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, GEORGIANNA W. BRADEN, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00457
`Patent 9,509,440 B2
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–9, 11–19, 21, 23, 25, and 27 of U.S. Patent No. 9,509,440 B2 (Ex.
`1001, “the ’440 patent”). Paper 1 (“Pet.”). Telefonaktiebolaget LM
`Ericsson (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a) (2018). Upon consideration of the Petition, the Preliminary
`Response, and the evidence of record, we determine that Petitioner has
`established a reasonable likelihood of prevailing with respect to the
`unpatentability of at least one claim of the ’440 patent. Accordingly, for the
`reasons that follow, we institute an inter partes review of all challenged
`claims of the ’440 patent.
`
`A. Real Parties in Interest
`Petitioner lists Apple Inc. as the real party-in-interest. Pet. 72.
`Patent Owner lists Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`as the real parties-in-interest. Paper 3 (“Patent Owner’s Mandatory
`Notices”), 2.
`
`B. Related Matters
`The parties indicate that the ’440 patent was the subject of Samsung
`Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00509,
`which has been terminated. Pet. 70–71; Prelim. Resp. 1.
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`C. The ’440 Patent
`The ’440 patent relates to “a radio node of a cellular network, a User
`Equipment, UE and methods therein, for enabling use of a high order
`modulation when communicating radio signals.” Ex. 1001, 1:9–12. Link
`adaptation in systems according to Long Term Evolution (LTE) is based on
`adaptive modulation and coding, “which controls data rate by adaptively
`adjusting the modulation scheme and/or channel coding rate according to the
`radio-link conditions.” Id. at 1:32–36. The Modulation and Coding Scheme
`(MCS) for Physical Downlink Shared Channel (PDSCH) transmission is
`indicated in the downlink MCS signaling by the serving radio node (base
`station) to the UE. Id. at 1:23–24, 1:36–40. Through uplink signaling, the
`UE informs the radio node about the channel quality through Channel
`Quality Indicator (CQI) signaling, including sending CQI reports to the radio
`node. Id. at 1:40–43. However, the “formats or protocols of today do not
`support any modulation with higher order than six bits per symbol, as in
`64QAM [Quadrature Amplitude Modulation].” Id. at 2:16–20.
`The ’440 patent describes enabling higher-order modulation in a radio
`communication with a UE. Id. at code (57). A first table configuration
`comprises a first MCS table and a first CQI table that supports a certain
`maximum modulation order. Id. When the radio node detects that a
`modulation order higher than the maximum modulation order is potentially
`possible to use, the radio node instructs the UE to apply a second table
`configuration which comprises a second MCS table and a second CQI table.
`Id. At least one modulation order entry from the first MCS table is
`maintained in the second MCS table as a fallback in case it is desirable to
`use the modulation order entry from the first MCS table when the second
`MCS table is applied. Id. In one embodiment, “the lowest MCS entry with
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`Patent 9,509,440 B2
`MCS index 0, in the MCS table and/or at least one CQI entry, e.g. the lowest
`CQI entry for the lowest coding rate of the lowest modulation order with
`CQI index 1, in the CQI table is preserved or maintained from the basic
`MCS and/or CQI table.” Id. at 6:58–63. Thus a “fallback is provided in
`case it is only possible or desirable to use a modulation order lower than the
`higher modulation order, e.g. the lowest modulation order, when the second
`table configuration is applied.” Id. at 6:65–7:2.
`
`D. Illustrative Claim
`Petitioner challenges claims 1–9, 11–19, 21, 23, 25, and 27 of the
`’440 patent. Claim 1, reproduced below with bracketed numbering added,1
`is illustrative.
`1. [Preamble] A method performed by a radio mode of a
`cellular network,
`[1.1] the radio node being operable to apply a first table
`configuration in radio communications 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,
`[1.2] wherein the at least one of the first MCS table and
`the first CQI table support a certain maximum modulation order,
`the method comprising:
`[1.3] 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; and
`[1.4] instructing the first UE to apply a second table
`configuration in the radio communication, the second table
`configuration comprising at least one of a second MCS table and
`a second CQI table, wherein the at least one of the second MCS
`
`1 For ease of reference, we adopt the bracketed numbering Petitioner uses in
`the Petition. See Pet. 20–37, 74–75.
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`Patent 9,509,440 B2
`table and the second CQI table support the higher modulation
`order,
`[1.5] wherein at least one entry for at least one modulation
`order in the at least one of the first MCS table and the first CQI
`table 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 table
`configuration is applied; and
`[1.6] wherein the at least one modulation order in the at
`least one of the first MCS table and the first CQI table comprises
`a lowest modulation order of the first table configuration, and
`[1.7] wherein the first entry for the lowest modulation
`order in the first MCS table is maintained in the second MCS
`table as the fallback, and 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.
`Ex. 1001, 15:50–16:21.
`
`E. Asserted Challenges to Patentability
`Petitioner asserts that claims 1–9, 11–19, 21, 23, 25, and 27 would
`have been unpatentable on the following basis (Pet. 5):
`Claims Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–7, 9, 11–17, 19, 21,
`103(a)2
`Lahetkangas3
`23, 25, 27
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Because the ’440 patent has an effective filing date after the effective date of
`the applicable AIA amendments, we refer to the post-AIA version of
`35 U.S.C. § 103.
`3 Patent Cooperation Treaty (PCT) Patent Application Publication No. WO
`2013/123961 A1, published Aug. 29, 2013 (Ex. 1011, “Lahetkangas”).
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`Patent 9,509,440 B2
`Claims Challenged
`1–7, 9, 11–17, 19, 21,
`23, 25, 27
`8, 18
`8, 18
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Lahetkangas, LTE TS 36.2134
`Lahetkangas, Wang5
`Lahetkangas, LTE TS 36.213,
`Wang
`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise our discretion under 35
`U.S.C. § 325(d) to deny institution because Lahetkangas was previously
`considered during prosecution of the patent application that resulted in the
`’440 patent. Prelim. Resp. 2. For the reasons discussed below, we decline
`to exercise such discretion.
`1. Legal Framework
`Under 35 U.S.C. § 325(d), “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). The Board uses a two-part framework in determining
`whether to exercise its discretion under § 325(d), specifically:
`(1) 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;
`and
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`
`
`4 “Evolved Universal Terrestrial Radio Access (E-UTRA);” Physical Layer
`Procedures (3GPP TS 36.213 version 10.3.0 Release 10), published Sept. 25,
`2011 (Ex. 1009, “LTE TS 36.213” or “TS 36.213”).
`5 U.S. Pat. No. US 9,648,601 B2, issued May 9, 2017 (Ex. 1006, “Wang”).
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`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”). In applying the two-part framework, we consider the
`non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017)
`(precedential in relevant part), which “provide useful insight into how to
`apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9.
`Those non-exclusive factors include:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art;
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Becton, Dickson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to
`whether the same or substantially the same art or arguments were previously
`presented to the Office, and factors (c), (e), and (f) relate to whether the
`petitioner demonstrates that the Office erred in a manner material to the
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`patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the
`same or substantially the same art or arguments were previously presented to
`the Office do we then consider whether the petitioner has demonstrated a
`material error by the Office. Id.
`2. Part One of the Advanced Bionics Framework
`Patent Owner asserts that “Lahetkangas was provided to the Patent
`Office during the prosecution of the ’440 patent in an IDS on November 24,
`2014” and “the Examiner initialed Lahetkangas as being considered.”
`Prelim. Resp. 11 (citing Pet. 17; Ex. 1002, 69; Ex. 1011), 33. We agree that
`Lahetkangas was previously presented to the Office during prosecution of
`the ’440 patent. Ex. 1001, code (56); Ex. 1002, 69; see also Pet. 17
`(Petitioner acknowledging that Lahetkangas was cited in an IDS).
`Accordingly, we determine that part one of the Advanced Bionics framework
`is satisfied.
`3. Part Two of the Advanced Bionics Framework
`Patent Owner asserts that Petitioner has failed to show material error
`by the Examiner during prosecution. Prelim. Resp. 51. We disagree. As
`Petitioner points out, although the Examiner considered Lahetkangas in an
`IDS, Lahetkangas was not discussed in any Office Action or Response. Pet.
`17–18. We find that Lahetkangas was not extensively evaluated during
`examination and was not the basis for a rejection. Petitioner has presented a
`sufficient showing that the Examiner overlooked disclosures in Lahetkangas
`that render obvious the challenged claims. See infra. We, therefore, agree
`with Petitioner that the Office erred in a manner material to the patentability
`of the challenged claims. Pet. 18–19.
`
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`4. Conclusion
`Having considered the respective arguments and evidence of the
`parties and the Advanced Bionics framework, we decline to exercise our
`discretion to deny institution under 35 U.S.C. § 325(d).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`Relying on the testimony of Dr. Apostolos Kakaes, Petitioner offers
`an assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill at the time of the ’440 patent. See
`Pet. 3–4 (citing Ex. 1003 ¶ 70). Dr. Kakaes states that a person having
`ordinary skill in the art (POSITA) “would be someone who had a Master’s
`degree in Electrical Engineering, Applied Mathematics, Computer Science,
`Physics or equivalent.” Ex. 1003 ¶ 70. Citing Dr. Kakaes, Petitioner further
`states that the POSITA would have also had “three to five years of
`experience working with wireless digital communication systems” and that
`“[a]dditional education might compensate for less experience, and vice-
`versa.” Id. Patent Owner does not propose an alternative assessment. See
`
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`generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill
`for purposes of this Decision.
`
`D. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`For purposes of this Decision, we need not expressly construe any
`claim term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed.
`Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`E. Asserted Obviousness of Claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27
`over Lahetkangas with or without LTE TS 36.213
`Petitioner contends claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Lahetkangas or “in
`the Alternative Lahetkangas in View of LTE TS 36.213.” Pet. 19–65.
`Specifically, Petitioner asserts, with respect to claim limitation [1.1], “a
`POSITA would have understood the claimed ‘first table configuration’ is the
`Table 7.1.7.1-1 provided in TS 36.213 and expressly referenced in
`Lahetkangas,” but “to the extent Patent Owner contends Lahetkangas does
`not disclose a first table configuration, Ground 2 is provided relying on TS
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`Patent 9,509,440 B2
`36.213.” In support of its showing, Petitioner relies on the declaration of
`Dr. Kakaes. Id. (citing Ex. 1003).
`
`1. Lahetkangas
`Lahetkangas relates to “the field of cellular networks, especially to an
`evolution of LTE networks, and in particular to networks comprising LTE
`networks and evolved LTE networks.” Ex. 1011, 1:12–14.6 In particular,
`Lahetkangas’s “invention is based on the idea to extend the modulation and
`coding scheme table to a higher order modulation while remaining backward
`compatible.” Id. at 2:32–33. “The idea of this method is to introduce a
`higher order modulation while still supporting a modulation and coding
`scheme (MCS) table being introduced for a lower modulation order.” Id.
`at 3:4–6.
`Lahetkangas describes transmission and communication between a
`base station and UE based on MCS. Id. at 11:24–25. The MCS is selectable
`and based on a first MCS table comprising entries corresponding to a
`plurality of MCS with a first maximum modulation order or based on a
`second MCS table comprising entries corresponding to a plurality of MCS
`with a second maximum modulation order. Id. at 11:25–30. “[T]he second
`maximum modulation is higher (for instance up to 256QAM) than the first
`maximum modulation order (for instance up to 64 QAM).” Id. at 11:30–32.
`Lahetkangas further describes that “CQI tables may be selected based on the
`selection of the MCS tables” and “[i]f there is a switch or change from the
`first MCS table to the second MCS table, there may also be change from the
`first CQI table to the second CQI table.” Id. at 7:5–7. “The UE may thus
`
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`6 Citations are to the numbers located on the top of the pages.
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`Patent 9,509,440 B2
`determine the CQI based on a table which corresponds to the selected MCS
`table.” Id. at 7:7–9.
`In one embodiment, Lahetkangas describes that “there may need to be
`a MCS index area common for both tables, which allows data scheduling
`also during the time of uncertainty.” Id. at 14:26–27. “Additionally, there
`may be a few common low modulation / TB sizes in the common MCS
`index area for such situations where extended 256QAM table is in use and
`channel conditions drop quickly.” Id. at 15:1–5. “[S]econd tables for the
`MCS and CQI index tables may be generated corresponding to 36.213 table
`7.1.7-1 but with extension to 256QAM (Qm=8).” Id. at 14:11–12.
`
`2. LTE TS 36.213
`LTE TS 36.213 describes specifying and establishing “the
`characteristics of the physicals layer procedures in the FDD and TDD modes
`of E-UTRA.” Ex. 1009, 6.7 LTE TS 36.213 includes a standard modulation
`and coding scheme table, channel quality index table, and transport block
`size table. Id. at 32–39, 64.
`
`3. Discussion
`Claim 1 recites “[a] method performed by a radio node of a cellular
`network” (preamble). Petitioner contends, to the extent the preamble is
`limiting, that “Lahetkangas discloses a base station (i.e., ‘radio node’) that
`performs a method of communication between a base station and a UE, and
`that provides wireless cellular network access to a UE.” Pet. 20 (citing
`Ex. 1011, 2:20–30, 4:16–23, 8:6–7, Fig. 1; Ex. 1003 ¶ 81).
`
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`7 Citations are to the numbers located on the top of the pages.
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`Claim element 1.1 recites “the radio node being operable to apply a
`first table configuration . . . 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.” Petitioner contends that
`Lahetkangas with or without LTE TS 36.213 teaches element 1.1. Id. at 21–
`27. In particular, Petitioner asserts that Lahetkangas describes a base station
`(radio node) operable to apply a first table configuration as part of
`communication control with UEs. Id. at 21 (citing Ex. 1011, 7:30–33).
`Petitioner contends that the base station controls communication with the
`UE and selects a first MCS table and corresponding first CQI table. Id.
`Petitioner asserts that Lahetkangas teaches the “first configuration
`table,” which is the MCS table contemplated by LTE TS 36,213, Table
`7.1.7.1-1. Id. (citing Ex. 1011, 14:11–15, Table 1). Petitioner contends that
`“Lahetkangas explains the LTE standard includes an MCS index table and a
`CQI table that are used to determine and select the desired modulation and
`coding schemes for communication between a BS and a UE.” Id. at 21–22
`(citing Ex. 1011, 2:1–3, 14:11–12 (referring to LTE TS 36.213 table 7.1.7.1-
`1); Ex. 1003 ¶ 83). Petitioner provides reasons why a POSITA would have
`understood that Lahetkangas uses the first table configuration of LTE TS
`36.213. Id. at 22–24 (citing Ex. 1011, 1:32–2:6, 2:32–36, 3:14–19, 11:16–
`19, 14:11–15; Ex. 1003 ¶¶ 83, 83.A, 85; Ex. 1009, Table 7.1.7.1-1).
`Petitioner alternatively argues that “[t]o the extent Patent Owner
`contends a POSITA would not have understood Lahetkangas teaches the
`first table configuration as Table 7.1.7.1-1 from TS 36.213 as provided for
`Ground 1, Element [1.1], Petitioner submits Ground 2 further relying on
`Ex. 1009, LTE TS 36.213.” Id. at 25. Petitioner contends that TS 36.213
`discloses a first MCS table and a first CQI table. Id. at 25–26 (citing
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`Ex. 1009, Table 7.1.7.1-1, 33, Table 7.2.3-1, 64; Ex. 1003 ¶ 83B). Petitioner
`argues that “[a] POSITA would have found it obvious and been motivated to
`use the configuration tables from TS 36.213 in combination with
`Lahetkangas because that specific table of TS 36.213 is expressly referenced
`in Lahetkangas, and its implementation details were well-known in the art.”
`Id. at 26 (citing Ex. 1003 ¶ 84). Petitioner provides additional reasons for
`combining Lahetkangas and TS 36.213. Id. at 26–27.
`For claim element 1.2 (“wherein the at least one of the first MCS table
`and the first CQI table support a certain maximum modulation order”),
`Petitioner contends that Lahetkangas describes the first MCS table (referring
`to TS 36.213 table 7.1.7-1) “supports a maximum modulation order of
`64QAM (i.e., when Qm = 6).” Id. at 27–28 (citing Ex. 1011, code (57),
`1:32–35, 14:11–59, 11:25–32; Ex. 1003 ¶ 87). Petitioner further contends
`that Lahetkangas meets claim element 1.3 (“detecting that a higher
`modulation order, which is higher than the maximum modulation order of
`the first table configuration, is potentially possible . . .”), because
`Lahetkangas describes the base station determining the actual channel
`conditions between it and the UE to determine a “‘maximum supported
`modulation order’ (up to 256 QAM) for communications.” Id. at 28–29
`(citing Ex. 1011, 4:16–23, 11:30–12:7, 19:19–23, Fig. 4; Ex. 1003 ¶ 88).
`Claim element 1.4 recites
`table
`to apply a second
`instructing
`the first UE
`configuration in the radio communication, the second table
`configuration comprising at least one of a second MCS table and
`a second CQI table, wherein the at least one of the second MCS
`table and the second CQI table support the higher modulation
`order
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`Petitioner contends that Lahetkangas teaches that the base station decides
`when the first UE is to use the second configuration table (256QAM) and
`then instructs the UE to apply a second table configuration as claimed. Id.
`at 29–31 (citing Ex. 1011, 11:30–32, 12:1–7, 13:20–25, 14:11–15, 17:2–3,
`19:19–29, Fig. 4; Ex. 1003 ¶¶ 89–91).
`Claim element 1.5 recites
`wherein at least one entry for at least one modulation order
`in the at least one of the first MCS table and the first CQI table
`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 table configuration
`is applied
`Petitioner contends that Lahetkangas teaches the fist and second table
`configurations have an “index area common for both tables.” Id. at 31
`(citing Ex. 1011, 14:22–36). Petitioner asserts that “Lahetkangas teaches
`that 23 entries from the first MCS table are common to or maintained in the
`second MCS table (note that Element [1.5] only requires one common
`entry).” Id. at 31–32 (citing Ex. 1011, Table 1, 15:1–4, 15:30–32; Ex. 1003
`¶ 92). Petitioner contends that Lahetkangas “teaches that at least some of
`the entries in the second MCS table can be used if channel conditions drop
`quickly and it is desirable to use the less aggressive, lower order modulation
`entries carried over from the first table configuration to the second table
`configuration as a fallback.” Id. at 32–33 (citing Ex. 1011, 7:11–13, 13:33–
`36, 14:26–27, 17:2–3; Ex. 1003 ¶ 93).
`For claim element 1.6 (“wherein the at least one modulation order …
`comprises a lowest modulation order of the first table configuration”),
`Petitioner asserts that “Lahetkangas teaches that modulation order Qm=2 in
`the first MCS table (identified in Lahetkangas’s reference to LTE TS 36.213
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`Table 7.1.7-1) comprises the lowest modulation order of the first table
`configuration.” Id. at 33–34 (citing Ex. 1011, 2:1–2, 14:11–15, Table 1;
`Ex. 1009, Table 7.1.7-1, Table 7.2.3-1).
`At this juncture of the proceeding, Patent Owner does not dispute
`Petitioner’s showing with respect to the above claim 1 limitations.
`See generally Prelim. Resp.
`Claim element 1.7 recites
`wherein the first entry for the lowest modulation order in
`the first MCS table is maintained in the second MCS table as the
`fallback, and 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.
`Petitioner contends that Lahetkangas “teaches MCS Index 0, which is the
`first entry for the lowest modulation order (modulation order 2) in the first
`MCS table (identified in Lahetkangas’s reference to LTE TS 36.213, Table
`7.1.7-1), is maintained in the second MCS table (Lahetkangas, Table 1).”
`Pet. 34–35 (citing Ex. 1011, Table 1, 14:11–15; Ex. 1003 ¶¶ 95–97).
`Petitioner further contends that the first entry for the lowest modulation
`order from the common area in the second table can be used if channel
`conditions drop and it is desirable to use a lower order legacy entry as a
`fallback. Id. at 35–36 (citing Ex. 1011, 13:32–36, 14:26–27; Ex. 1003
`¶¶ 96–98).
`Petitioner further argues “Lahetkangas teaches that a CQI Index
`corresponding to MCS Index 0 (i.e., the lowest coding rate of the lowest
`modulation order) is maintained from a first CQI table to a second CQI
`table.” Id. at 36 (citing Ex. 1003 ¶ 99). Petitioner contends that
`Lahetkangas teaches applying the same technique performed on the MCS
`table to the CQI table, such that “the second CQI table would maintain
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`common legacy entries from the first CQI table consistent with the
`implementation of the MCS table.” Id. at 36–37 (citing Ex. 1011, 2:1–6,
`7:5–9, 7:26–28, 12:33–35, 13:19–30, 17:2–3; Ex. 1003 ¶ 99).
`Patent Owner argues that Lahetkangas teaches, “at best, ‘a few
`common’ modulation settings in the ‘common MCS index area from the low
`range of the modulation set’ that could be used if ‘channel conditions drop
`quickly.’” Prelim. Resp. 57. Patent Owner argues, however, that “the ‘low
`range of the modulation set’ is undefined and could include QPSK (Qm=2),
`16QAM, (Qm=4), or 64QAM (Qm=6), as shown in Table 1,” and that nothing
`in Lahetkangas “suggests that the lowest modulation order (QPSK), much
`less the first entry for the lowest modulation order in the first MCS table,
`is used as a fallback.” Id. (citing Ex. 1011, 13:32–37, 16, Table 1), 58
`(Lahetkangas does not suggest or require a shift to the first entry, or the
`lowest MCS entry in the second table). Patent Owner further argues that
`“the term ‘fallback’ is never used in the specification of Lahetkangas.” Id.
`at 26. Patent Owner concludes that there is no suggestion in Lahetkangas
`that “the first entry for the lowest modulation order in the first MCS table is
`maintained in the second MCS table as the fallback” as claimed. Id. at 57–
`58.
`At this juncture of the proceeding, we determine that Patent Owner’s
`arguments do not undermine Petitioner’s showing because such arguments
`are not commensurate in scope with the claim language. Claim 1 does not
`require that the first entry for the lowest modulation order in the first MCS
`table be used in the second MCS table as the fallback as Patent Owner
`argues. Id. at 57; see also id. at 58 (arguing that Lahetkangas does not
`suggest or require a shift to the first entry, or the lowest MCS entry in the
`second table, when the claims do not require shifting to a first entry). The
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`claims require that “the first entry for the lowest modulation order in the first
`MCS table is maintained in the second MCS table as the fallback,” not that
`the lowest modulation order is ultimately used.
`“[T]he first and second MCS tables disclosed by Lahetkangas” are
`reproduced below. Ex. 1003 ¶ 96; see also Pet. 34–35.
`
`
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`Table 7.1.7.1-1 from LTE TS 36.213 (Ex. 1009, 33) with first entry
`highlighted in red added by Petitioner (Pet. 35) and Table 1 from
`Lahetkangas (Ex. 1011, 16) with first entry highlighted in red added by
`Petitioner (Pet. 35).
`Dr. Kakaes testifies, with reference to the two tables above,
`“Lahetkangas teaches that the lower order entries, including the first entry
`corresponding to the lowest modulation order [shown in red above], are
`maintained in both the first and second table and can be used if channel
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`conditions deteriorate such that their use is desirable as a fallback.”
`Ex. 1003 ¶ 96 (citing Ex. 1011, 13:32–36, 14:26–27, 15:1–3). Patent Owner
`does not discuss the entries in the two tables above in any way. At this
`juncture of the proceeding, we give substantial weight to Dr. Kakaes’s
`testimony that Lahetkangas taches or suggests that “the first entry for the
`lowest modulation order in the first MCS table is maintained in the second
`MCS table as the fallback,” because his testimony is supported by record
`evidence. Id.
`To the extent the disputed limitation should be construed as Patent
`Owner implicitly contends (Prelim. Resp. 57–58), we determine, at this
`juncture of the proceeding that Petitioner has sufficiently shown that it
`would have been obvious to a POSITA to use Lahetkangas’s lowest
`modulation order from the second MCS table. Pet. 36 (citing Ex. 1011,
`13:32–36, 14:26–27; Ex. 1003 ¶¶ 96–98). In particular Petitioner contends,
`and we preliminarily agree, that Lahetkangas “teaches that the first entry for
`the lowest modulation order from the common area in the second table
`(entries common to both the first table and second table) can be used if
`channel conditions drop quickly and it is desirable to use a lower order
`legacy entry as a fallback.” Id. In support of the contention, Dr. Kakaes
`testifies that a POSITA would have understood that when channel conditions
`deteriorate, it would be desirable to change to one of the lower modulation
`orders. Ex. 1003 ¶¶ 96, 98. At this juncture of the proceeding, we give
`substantial weight to his testimony, because Lahetkangas Table 1
`reproduced above shows maintaining the lowest modulation order (first
`entry in red box) that can be used in “situations where extended 256QAM
`table is in use and channel conditions drop quickly.” Ex. 1011, 13:34–36
`(emphasis added). Dr. Kakaes also testifies that “retaining MCS index
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`0/modulation order 2 in the second table would offer the ability to transition
`to the lowest modulation order to maintain communications in the broadest
`range of channel deterioration conditions” and that “a POSITA would have
`understood switching to such a lower modulation order to be a desirable way
`to retain communications between a base station and a UE in deteriorating
`channel conditions.” Ex. 100
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