Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: August 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00464
`Patent 10,193,600 B2
`
`
`
`
`
`
`
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: August 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00464
`Patent 10,193,600 B2
`
`
`
`
`
`
`
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00464
`Patent 10,193,600 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. filed a Petition requesting an inter partes review of claims
`1–28 of U.S. Patent No. 10,193,600 B2 (Ex. 1001, “the ’600 patent”). Paper
`1 (“Pet.”), 1. Patent Owner filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). Petitioner submitted the Declaration of Dr. Apostolos K. Kakaes.
`(Ex. 1003) in support of the Petition, and Patent Owner submitted the
`Declaration of Dr. Muriel Médard (Ex. 2001) in support of the Preliminary
`Response.
`An inter partes review may not be instituted unless it is determined
`that “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 (2018). For the reasons
`provided below and based on the record currently before us, we determine
`that Petitioner has demonstrated a reasonable likelihood that it would prevail
`in showing the unpatentability of at least one of the challenged claims.
`Patent Owner has not persuaded us that we should exercise our discretion to
`deny institution of trial. Accordingly, we institute an inter partes review on
`all grounds set forth in the Petition.
`
`B. Real Parties in Interest
`Petitioner states that Apple Inc. is the real party in interest. Pet. 65.
`Patent Owner states that Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`are the real parties in interest. Paper 5, 1.
`
`
`2
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`
`C. Related Proceedings
`Petitioner states that it “is not aware of any related matters that may
`affect, or may be affected by, decisions in this proceeding.” Pet. 65. Patent
`Owner states that the ’600 patent was challenged in Samsung Electronics
`Co. v. Telefonaktiebolaget LM Ericsson, IPR2021-00730, which was filed
`March 26, 2021 and is now terminated. Paper 5, 2. Patent Owner also states
`that the ’600 patent is the subject of Ericsson Inc. v. Samsung Electronics
`Co., Case No. 2:20-cv-00380 (E.D. Tex.), filed December 11, 2020.
`Paper 5, 2.
`
`D. The ’600 Patent (Ex. 1001)
`The ’600 patent describes systems and methods for wireless
`communications in which nodes in a wireless network (eNodeB) signals a
`codebook subset restriction (“CSR”) to a user’s wireless device (“user
`equipment” or “UE”). Ex. 1001, 6:20–25. The ’600 patent states that the
`UE then sends a channel state information (“CSI”) report back to the
`network suggesting a subset of possible precoders available for
`communication with the UE, with the subset being restricted by the signaled
`CSR configuration. Ex. 1001, 6:25–32.
`Codebook subset restriction can be configured based on the rank of a
`channel, which is the number of spatial streams that can be sent to a
`particular UE. Ex. 1003 ¶ 40. The challenged claims relate to rank-agnostic
`CSR signaling that jointly restricts the precoders in a group without regard
`to the precoders’ transmission rank. Ex. 1001, 3:12–15.
`
`3
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`
`E. Illustrative Claims
`Claims 1, 8, 15, and 22 are independent claims. Claim 1 is illustrative
`and is reproduced below with bracketed labels added to reflect those
`references by Petitioner.
`1. [preamble] A method implemented by a network node for
`signaling to a wireless communication device which precoders in
`a codebook are restricted from being used, the method
`characterized by:
`[1.1] generating codebook subset restriction signaling that, for
`each of one or more groups of precoders, jointly restricts the
`precoders in the group
`[1.2] by restricting a certain component that the precoders in the
`group have in common, wherein the codebook subset restriction
`signaling is rank-agnostic signaling that jointly restricts the
`precoders in a group without regard to the precoders’ transmission
`rank; and
`[1.3] sending the generated signaling from the network node to
`the wireless communication device.
`F. Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1–28 of the
`’600 patent as follows (Pet. 2):
`
`Claim(s) Challenged
`1–28
`
`35 U.S.C. §
`1031
`
`References/Basis
`Novlan2
`
`1–28
`
`103
`
`Novlan, 36.2133
`
`
`1 The ’600 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 US Publication No. 2014/0016549 A1; publ. Jan. 16, 2014. Ex. 1005.
`3 “Evolved Universal Terrestrial Radio Access (E-UTRA); Physical Layer
`Procedures,” 3GPP TS 36.213, Version 12.3.0 (Release 12). Ex. 1006.
`
`4
`
`
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`IPR2022-00464
`Patent 10,193,600 B2
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`
`II. DISCUSSION
`A. Discretionary Denial
`Patent Owner asks the Board to exercise its discretion to deny
`institution under 35 U.S.C. § 325(d). Prelim. Resp. 23–30 (citing Advanced
`Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential); Becton, Dickinson
`& Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB
`Dec. 15, 2017) (precedential)).
`Section 325(d) provides that the Director has discretion to reject a
`petition if “the same or substantially the same prior art or arguments
`previously were presented to the Office.” The Board analyzes this issue
`under a two-part framework:
`(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 Office erred in a
`manner material to the patentability of challenged claims.
`
`Advanced Bionics, Paper 6, 8.
`
`1. Whether the Same or Substantially the Same Art or Arguments
`Were Previously Presented to the Office
`There is no dispute that Novlan was cited during prosecution of the
`’600 patent. Pet. 61–62; Prelim. Resp. 23, 25–27. Petitioner contends
`36.213 was not before the Office during prosecution, but Patent Owner
`argues 36.213 is cumulative of art that was before the Examiner, namely an
`earlier version of the same specification—36.212 v.10.1.0 (Ex. 1007).
`Prelim. Resp. 27–30.
`
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`IPR2022-00464
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`
`For the purposes of the first Advanced Bionics factor, we determine
`the same or substantially the same art was presented to the Office.
`
`2. Whether Petitioner Has Demonstrated That the Office Erred in a
`Manner Material to the Patentability of Challenged Claims
`As noted by Petitioner, the Examiner did not address paragraph 54 of
`Novlan nor otherwise consider “the spatial aspect” on which the Petition
`focuses in arguing that Novlan teaches rank-agnostic CSR signaling. Pet. 62
`(“This [P]etition thus presents a new primary and secondary reference and
`focuses on a different aspect (the spatial aspect) that was either not
`previously considered or was overlooked.”). Patent Owner argues that
`Novlan does not disclose rank-agnostic signaling (Prelim. Resp. 26–27), but
`Patent Owner does not argue that the Examiner considered Novlan’s
`paragraph 54 as teaching rank-agnostic signaling.
`As explained in our patentability analysis below, Petitioner
`demonstrates a reasonable likelihood of prevailing in proving claim 1
`unpatentable as obvious over Novlan. See infra § II.E.1. Petitioner
`sufficiently demonstrates that the Examiner erred in a manner material to the
`patentability of challenged claims by misapprehending or overlooking the
`specific teaching in Novlan’s paragraph 54.
`Based on the facts of record and the parties’ arguments, we decline to
`discretionarily deny the Petition under § 325(d).
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the ’600 patent’s invention would have had “a Master’s degree in
`Electrical Engineering, Applied Mathematics, Computer Science, Physics, or
`equivalent and three to five years of industry experience in wireless digital
`
`6
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`IPR2022-00464
`Patent 10,193,600 B2
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`communication systems.” Pet. 15 (citing Ex. 1003 ¶ 57). Patent Owner
`applies Petitioner’s level of ordinary skill for the purposes of its Preliminary
`Response. Prelim. Resp. 22.
`For purposes of this Decision, we apply Petitioner’s assessment of the
`level of ordinary skill.
`
`C. Claim Construction
`We construe claims using the principles set forth in Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases.
`37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim
`are generally given their “ordinary and customary meaning,” which is the
`meaning the term would have to a person of ordinary skill at the time of the
`invention, in the context of the entire patent including the specification.
`Phillips, 415 F.3d at 1312–13.
`Both parties state that the plain and ordinary meaning applies to all
`claim terms at issue. Pet. 16; Prelim. Resp. 22. Based on the current record,
`we determine that it is not necessary to provide an express interpretation of
`any claim terms at this stage of the proceeding. See Realtime Data, LLC v.
`Iancu, 912 F.3d 1368 (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)).
`
`D. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`
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`IPR2022-00464
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`subject matter pertains.” 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 skill in the art; and (4) where in evidence, objective evidence
`of non-obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior
`art elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–17.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`E. Alleged Obviousness of Claims 1–28 Based on Novlan or Novlan in
`View of 36.213
`Petitioner presents a claim-by-claim, limitation-by-limitation
`comparison of claims 1–28 to Novlan. Pet. 3, 8–17.
`
`1. Claim 1
`[preamble] “A method implemented by a network node for
`signaling to a wireless communication device which
`
`
`4 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
`
`8
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`IPR2022-00464
`Patent 10,193,600 B2
`
`
`precoders in a codebook are restricted from being used, the
`method characterized by:”
`Neither party addresses whether the preamble is limiting, but
`Petitioner contends that Novlan satisfies the preamble with its disclosure of
`an eNodeB (a network node) signaling to a UE (wireless communication
`device) which precoders in a codebook are restricted from being used. Pet.
`21–23 (citing Ex. 1005 ¶¶ 4, 41, 50, 64, 101–102). Patent Owner does not
`address or rebut Petitioner’s contentions regarding the preamble.
`[1.1] “generating codebook subset restriction signaling that,
`for each of one or more groups of precoders, jointly restricts
`the precoders in the group”
`Petitioner contends Novlan satisfies this limitation with its teachings
`of codebook subset restriction signaling that includes identification of a
`group of exclusively permitted precoders that restricts the UE from using
`any precoders in the codebook that are not permitted by the eNodeB. Pet.
`23–24 (citing Ex. 1005 ¶¶ 4–5, 57, 101). Further, Petitioner states that
`Novlan teaches that a UE may only use precoders that are consistent with the
`spatial geometry of the UE’s location, restricting the UE from using any
`other precoders. Pet. 24 (citing Ex. 1005 ¶¶ 54, 76). According to
`Petitioner, “[t]hese restricted precoders that do not correspond to the relevant
`spatial domain constitute a group of precoders, as do the permitted precoders
`that do correspond to the relevant spatial domain.” Pet. 24–25 (citing
`Ex. 1003 ¶ 76). Petitioner also contends Novlan teaches jointly restricting
`the precoders in the group with its teachings that “it is possible to restrict
`several groups of precoders that do not correspond to the relevant spatial
`domain out of a codebook of 16 total precoders using one two-bit signal,
`thereby jointly restricting them from use.” Pet. 25 (citing Ex. 1003 ¶ 77).
`
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`IPR2022-00464
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`
`According to Petitioner, “it would have been obvious to a [person of
`ordinary skill in the art] to apply this joint codebook subset restriction
`signaling to restrict those groups in Table 1 that do not correspond to the
`‘relevant spatial domain.’” Pet. 26 (citing Ex. 1003 ¶ 79). Petitioner states
`that Novlan’s “general method of restriction” taught in paragraph 64 and
`Table 1 “immediately follows” Novlan’s teachings in paragraph 54 to
`restrict those precoders that do not correspond to the “relevant spatial
`domain.” Pet. 26. Petitioner states that a person of ordinary skill “would
`have been motivated to use that method to restrict the use of precoders that
`do not match the relevant spatial domain of a UE, and the ‘relevant spatial
`domain’ would drive the selection of the PMI indication field that is
`associated with the group of precoders that correspond to the most relevant
`spatial domain.” Pet. 26 (citing Ex. 1003 ¶ 79).
`Patent Owner does not directly address this limitation. To the extent
`Patent Owner’s arguments relate to this limitation, we address those below
`with limitation [1.2].
`[1.2] “by restricting a certain component that the precoders
`in the group have in common, wherein the codebook subset
`restriction signaling is rank-agnostic signaling that jointly
`restricts the precoders in a group without regard to the
`precoders’ transmission rank; and”
`Petitioner contends Novlan by itself, or in view of 36.213, discloses or
`renders this limitation obvious. Pet. 27. According to Petitioner, Novlan
`teaches to a person of ordinary skill “restricting a certain component that the
`precoders in the group have in common.” Pet. 27. Petitioner argues that in
`particular, Novlan teaches that the precoders in the group that do not
`correspond to the relevant spatial domain would all have a certain
`component in common, vm, that is associated with a particular elevation
`
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`IPR2022-00464
`Patent 10,193,600 B2
`
`angle that is outside of the relevant spatial domain. Pet. 27. Petitioner states
`that in the case where a particular elevation angle is restricted, for example
`80º and up from horizontal which would be outside the relevant spatial
`domain, all precoders with the same value of vm that correspond to 80º
`would be restricted from use. Pet. 27 (citing Ex. 1005 ¶ 54; Ex. 1003 ¶ 81).
`Petitioner contends this restriction is rank-agnostic because the restriction is
`based on elevation angle ranges, not on rank. Pet. 27 (citing Ex. 1003 ¶ 82).
`Petitioner additionally argues that Novlan teaches codebook subset
`restriction based only on transmission mode, which is rank agnostic. Pet. 28
`(citing Ex. 1005 ¶ 104; Ex. 1003 ¶ 83).
`Petitioner argues Novlan alone or in view of 36.213 also teaches
`Novlan’s restriction teaching is rank agnostic when applied to codebooks of
`multiple different ranks based on elevation angle rather than based on rank.
`Pet. 28 (citing Ex. 1003 ¶ 85). Further, Petitioner contends it would have
`been obvious that when Novlan’s relevant spatial domain restriction is
`applied to Novlan’s rank-1 and 36.312’s rank-2 precoders, which would all
`have vm as a component, the restriction based on angles would be rank
`agnostic. Pet. 30–32.
`Patent Owner argues Petitioner reads Novlan out of context. Prelim.
`Resp. 45. According to Patent Owner, Novlan’s teachings regarding the
`ability to restrict according to the relevant spatial domain does not mean that
`spatial domain is the only factor determining which precoders are restricted
`to the exclusion of rank. Prelim. Resp. 45. Patent Owner contends Novlan
`is silent as to how such restriction is signaled and whether rank is also
`considered in that restriction. Prelim. Resp. 45 (citing Ex. 2001 ¶ 103).
`
`11
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`IPR2022-00464
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`
`Patent Owner contends the broader context of Novlan makes clear that
`rank is needed to perform codebook subset restriction. Prelim. Resp. 45.
`According to Patent Owner, in the portion of Novlan that discusses
`codebook subset restriction, “Novlan teaches separate CSR signaling for
`each rank, such as CSR signaling for a rank-1 codebook (Table 7.2.4-1),
`separate CSR signaling for a rank-2 codebook (Table 7.2.4-2), etc.” Prelim.
`Resp. 46. Patent Owner also argues Novlan’s paragraph 54 is not relevant to
`precoder selection.
`Patent Owner further argues that even if Novlan’s elevation angle is
`rank agnostic, elevation angle is only one part of Novlan’s CSR and “[t]o
`restrict and signal a [CSR] in Novlan, the eNodeB also uses the number of
`vertical precoder matrices (M) as a necessary parameter,” such that Novlan
`requires rank as a parameter. Prelim. Resp. 46–47.
`Regarding Novlan’s teachings of restriction relating to transmission
`mode, Patent Owner contends that in the two paragraphs immediately before
`the paragraph cited by Petitioner, Novlan teaches that restriction signaling is
`rank specific and is a function of rank (v). Prelim. Resp. 49 (citing Ex. 1005
`¶¶ 102–103. Further, Patent Owner contends Novlan teaches restriction
`based on both transmission mode and rank, not transmission mode alone.
`And Patent Owner states that “by defining a rank-specific restriction for
`each and every transmission mode, 36.213 further clarifies restriction
`signaling is not made ‘without regard’ to the precoders’ transmission rank.”
`Prelim. Resp. 49 (citing Ex. 2001 ¶ 110).
`Patent Owner also argues that Novlan describes that bitmap signaling
`is associated with a specific rank. Prelim. Resp. 49–50. According to Patent
`Owner, “[w]hen Novlan states that the number of bits may be configured
`
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`
`‘based on applicable transmission modes and/or the rank of the transmission,
`a [person of ordinary skill in the art] would understand that the ‘and/or the
`rank’ in Novlan means that a variable related to rank could be used instead
`of the rank itself—such as a parameter that is a function of rank (e.g., g(v) or
`f(v)).” Prelim. Resp. 50–51. “Thus, Novlan teaches the opposite of the
`claims.” Prelim. Resp. 51. Further, Patent Owner also contends 36.213
`“further supports that precoders are restricted based on both transmission
`mode and rank.” Prelim. Resp. 51.
`At this stage, we determine Petitioner has adequately shown that
`elevation angle restriction in paragraph 54 of Novlan teaches or suggests
`rank-agnostic restriction. Ex. 1005 ¶ 54; see also Ex. 1001, 11:16–27
`(“[c]odebook subset restriction is applied to restrict beams with pointing
`directions in the zenith interval [85º, 95º]”). As stated by Novlan, “one
`method for improving the efficiency of vertical PMI selection and reducing
`CQI computation complexity is to restrict the UE to searching through the
`codebook only over those precoders that correspond to relevant spatial
`domain.” Ex. 1005 ¶ 54. We encourage the parties to address this issue
`further in future briefing.
`At this stage, we are not persuaded the cited teachings of Novlan
`describe rank-agnostic CSR based on transmission mode. Further, on the
`current record, we are not persuaded that 36.213 adds significantly to
`Novlan.
`
`[1.3] “sending the generated signaling from the network
`node to the wireless communication device.”
`Petitioner contends Novlan discloses or renders obvious this limitation
`because Novlan teaches that the user equipment receives from an eNodeB a
`signaling message having an indication of a restricted subset M of vertical
`
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`precoding matrices. Pet. 32–33 (citing Ex. 1005 ¶¶ 4, 64; Ex. 1003 ¶¶ 93–
`95). Patent Owner does not address Petitioner’s showings for this limitation.
`
`2. Summary for Claim 1
`For the foregoing reasons and based on the record before us,
`Petitioner’s cited evidence and reasoning demonstrates a reasonable
`likelihood that Petitioner would prevail in establishing that claim 1 is
`unpatentable in view of Novlan.
`
`3. Remaining Claims
`We have reviewed Petitioner’s evidence and arguments for claims 2–
`28. Patent Owner does not address these claims beyond the arguments
`addressed above. Based on the current record, we determine Petitioner’s
`cited evidence and reasoning demonstrates a reasonable likelihood that
`Petitioner would prevail in its contentions regarding claims 2–28.
`III. CONCLUSION
`After considering the evidence and arguments presented in the current
`record, we determine that Petitioner has demonstrated a reasonable
`likelihood of success in proving that at least one of the challenged claims of
`the ’600 patent is unpatentable. Patent Owner has not persuaded us to
`exercise our discretion to deny institution of trial. We therefore institute trial
`on all challenged claims and grounds raised in the Petition.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–28 of the ’600 patent is instituted with respect to all
`grounds set forth in the Petition; and
`
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`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’600 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`
`
`
`
`
`
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`15
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`IPR2022-00464
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`
`For PETITIONER:
`
`Adam Seitz
`Paul Hart
`Jennifer Bailey
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Paul.hart@eriseip.com
`Jennifer.bailey@eriseip.com
`
`For PATENT OWNER:
`
`Chad C. Walters
`Jacob McDonald
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`jacob.mcdonald@bakerbotts.com
`
`
`
`16
`
`
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