Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: October 11, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00607
`Patent 10,517,133 B2
`____________
`
`
`Before GEORGIANNA W. BRADEN, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: October 11, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00607
`Patent 10,517,133 B2
`____________
`
`
`Before GEORGIANNA W. BRADEN, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2022-00607
`Patent 10,517,133 B2
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`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–20 (“Challenged Claims”) of U.S. Patent
`No. 10,517,133 B2 (Ex. 1001, “the ’133 patent”). Petitioner identifies itself
`as a real party in interest. Pet. 57. Telefonaktiebolaget LM Ericsson
`(“Patent Owner”) identifies itself and Ericsson Inc. as real parties in interest
`(Paper 3, 2), and timely filed a Preliminary Response to the Petition
`(Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not
`institute an inter partes review “unless . . . 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). The “reasonable
`likelihood” standard is “a higher standard than mere notice pleading” but
`“lower than the ‘preponderance’ standard to prevail in a final written
`decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
`Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`Applying those standards, and upon consideration of the information
`presented in the Petition and Preliminary Response, we determine that
`Petitioner has not demonstrated a reasonable likelihood of prevailing with
`respect to any of challenged claims 1–20 of the ’133 patent. See 35 U.S.C.
`§ 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before
`us, we deny institution of an inter partes review of the ’133 patent.
`
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`II. BACKGROUND
`
`A. Related Matters
`Petitioner indicates that “[t]he ’133 patent was the subject of an IPR
`petition filed by Samsung Electronics Co., LTD. (“Samsung”) in IPR2021-
`00643,” and “Samsung’s petition was dismissed prior to institution.”
`Pet. 57–58 (citing Samsung Elecs. Co. v. Telefonaktiebolaget LM Ericsson,
`IPR2021-00643).
`Petitioner also indicates that “[t]he ’133 patent is in the same family
`as pending U.S. [Patent] Application Serial No. 16/720,733” (Pet. 58),
`which we note is a continuation of the ’133 patent and issued as U.S. Patent
`No. 11,445,565 B2 on September 13, 2022 (“the ’565 patent”).
`Notwithstanding the recently issued ’565 patent, Patent Owner has
`indicated, without update, that “[t]here are no judicial or administrative
`matters that would affect, or be affected by, a decision in this proceeding.”
`Paper 3, 2.1
`
`B. The ’133 Patent
`The ’133 patent is titled “Methods and UE For Resuming a
`Connection With Full Configuration,” and issued December 24, 2019, from
`U.S. Patent Application No. 16/380,844, filed April 10, 2019, and claims
`priority through a PCT application to U.S. Provisional Patent Application
`No. 62/631,467, filed February 15, 2018. Ex. 1001, codes (10), (21), (22),
`(45), (54), (60), (63). The ’133 patent generally relates to “wireless
`
`
`1 See Consolidated Trial Practice Guide at 18 (Nov. 21, 2019)
`(“Administrative matters include every application and patent claiming, or
`which may claim, the benefit of the priority of the filing date of the party’s
`involved patent or application . . . .”).
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`communications and, more particularly, to resum[ing] a connection for a
`wireless device.” Id. at 1:19–21.
`The ’133 patent explains that, in Long Term Evolution (LTE) wireless
`communications, “during a Handover (HO) or re-establishment, the [User
`Equipment (UE)] context is passed from the source to the target [network
`node (e.g., Evolved Node B, known as ‘eNodeB’ or ‘eNB’)],” and “[i]f the
`target eNB does not understand any part of the UE configuration, then it
`triggers full configuration.” Ex. 1001, 6:48–54 (emphasis added), 1:27–30.
`The “full configuration” procedure is specified in Third Generation
`Partnership Project Technical Specification (3GPP TS) 36.331
`section 5.3.5.8,” which is reproduced at least in part in the ’133 patent. Id.
`at 6:55–7:45. According to the ’133 patent, “[t]he full configuration
`procedure . . . is performed by sending an RRCConnectionReconfiguation
`[sic] message with the fullConfig flag set and it is not available for other
`radio reconfiguration messages such as re-establishment and resume.” Id.
`at 8:11–15 (emphasis added). The ’133 patent explains that “one of the
`main aims of the resume procedure is to transit the UE to connected mode as
`fast as possible (with as little signaling as possible), reusing the saved
`configuration of the UE when it got suspended, and thus an additional
`RRCConnectionReconfiguation [sic] is not needed.” Id. at 8:18–23.
`But, “there are scenarios where, during resuming after suspending, the target
`node doesn’t understand the radio configuration of the UE, and since full
`configuration is not supported, the only viable option for the UE to resume
`will be via IDLE mode . . . , which incurs further delays in the service
`continuity at the UE.” Id. at 8:25–31.
`
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`
`The ’133 patent states that it provides solutions to such problematic
`scenarios, and in particular, discloses that a “resume procedure is enhanced
`to support a full configuration (or reconfiguration).” Ex. 1001, 13:59–60
`(emphasis added). According to the ’133 patent, this enhanced resume
`procedure includes:
`send[ing] to a network node a request to resume a connection in
`a communication network; receiv[ing] a resume response
`message from the network node, the message comprising an
`indication to perform a full configuration; and apply[ing] the full
`configuration.
`Id. at code (57). This procedure is depicted generally, for example, in
`Figure 7, reproduced below.
`
`
`
`Figure 7 depicts a signal diagram of a successful Radio
`Resource Control (RRC) connection resume procedure.
`Ex. 1001, 10:51–52, Fig. 7. In this case, the network node (or eNB or
`Evolved Universal Mobile Telecommunications System (UMTS) Terrestrial
`Radio Access Network (EUTRAN)), “sets a flag to the full configuration in
`the RRC [Connection] Resume message,” which “flag” may be referred to
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`as “the fullConfig flag,” and then “sends the RRC [Connection] Resume
`message to the UE with the flag.” Id. at 14:30–37. According to the
`’133 patent, discussing the state of the art at the time of the patent, “[i]n the
`current systems, there is no such flag in the Resume message.” Id. at 14:35–
`36 (emphasis added). The ’133 patent further describes that in response to
`receiving the RRC Connection Resume (or RRCConnectionResume)
`message that contains the fullConfig flag,
`the UE will discard the old bearer configuration and other old
`radio parameters . . . . Then, it will only apply the (new)
`configuration it received in the RRC Resume message. In this
`way, the UE could switch to a new configuration from a network
`node which cannot understand the old configuration. It should
`be noted that some parameters, such as the security keys, will be
`kept in the UE even after receiving the fullConfig flag since the
`encryption and integrity protection is already up and running
`when the network node . . . sends the RRC Resume message.
`Id. at 14:38–49. By structuring the system and messaging in this way,
`according to the ’133 patent, an additional RRC Connection Reconfiguration
`(or RRCConnectionReconfiguration) message is not needed. Id. at 8:11–24.
`
`C. Illustrative Claim
`The ’133 patent includes twenty claims, all of which are challenged.
`Claims 1, 6, and 11 are the challenged independent claims. Claim 1 is
`representative and reproduced below.
`1. A method in a wireless device, the method comprising:
`sending to a network node a request to resume a connection in a
`communication network;
`receiving a resume message from the network node, the message
`comprising an indication to perform a full configuration; and
`applying
`the
`full configuration, without
`receiving a
`reconfiguration message.
`
`6
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`Ex. 1001, 21:65–22:5.
`D. Evidence of Record
`Petitioner relies on the following patent evidence.
`
`Exhibit
`Patent Document
`Name
`1005
`US 2012/0202478 A1
`Van Lieshout
`1006
`US 2016/0278160 A1
`Schliwa-Bertling
`Petitioner also relies on the following non-patent literature evidence.
`Name
`Non-Patent Literature Title
`Author
`Exhibit
`1004
`3rd
`3GPP ’208
`OFFLINE#22 LTE re-
`Generation
`establishment and resume while
`Partnership
`using NR PDCP, Doc. No. R2-
`Project
`1714208, 3GPP TSG-RAN
`(3GPP)
`WG2 Meeting #100, Nov. 27 –
`Dec. 1, 2017
`RRC connection re-
`establishment and resume
`procedures in NR, Doc. No. R2-
`1710279, 3GPP TSG-RAN
`WG2 #99bis, Oct. 9–13, 2017
`
`3GPP ’279
`
`1007
`
`3rd
`Generation
`Partnership
`Project
`(3GPP)
`
`Pet. 1–2. Petitioner also relies upon the Declaration of Robert Akl, D.Sc.
`(Ex. 1003) and the Declaration of Friedhelm Rodermund (Ex. 1010).
`
`E. Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1–20 of
`the ’133 patent on the following bases.
`Claims Challenged
`35 U.S.C. §
`1–20
`1032
`
`Reference(s)/Basis
`Schliwa-Bertling, 3GPP ’279
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because
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`
`1–5
`1–5
`6–20
`
`Pet. 1.
`
`1023
`103
`103
`
`3GPP ’208
`3GPP ’208
`3GPP ’208, Van Lieshout
`
`III. ANALYSIS
`
`A. Applicable Law
`Petitioner challenges the patentability of claims 1–20 of the
`’133 patent on grounds that the claims would have been anticipated under
`35 U.S.C. § 102 or obvious under 35 U.S.C. § 103 in light of various
`references, namely Schliwa-Bertling, 3GPP ’279, 3GPP ’208, and Van
`Lieshout. “In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)) (emphasis added). This burden
`never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
`
`
`the ’133 patent was effectively filed after March 16, 2013, the effective date
`of the relevant amendment, the AIA versions of §§ 102 and 103 apply.
`3 Although Petitioner identifies its challenges to patentability as based only
`on obviousness (Pet. 1 (Grounds 1, 2A, and 2B: “§103 Basis”)), Petitioner
`also refers to anticipation by 3GPP ’208 of claims 1–5 elsewhere in the
`Petition (see Pet. 28 (“3GPP ’208 anticipated and rendered obvious
`Claims 1–5”), 33–34).
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`Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
`(discussing the burden of proof in inter partes review).
`To serve as an anticipatory reference under 35 U.S.C. § 102, “the
`reference must disclose each and every element of the claimed invention,
`whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
`1334 (Fed. Cir. 2009). “The identical invention must be shown in as
`complete detail as is contained in the . . . claim.” Richardson v. Suzuki
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis added).
`The elements must be arranged as required by the claim, “but this is not an
`‘ipsissimis verbis’ test,” i.e., identity of terminology is not required. In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. United
`States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)).
`A claim is unpatentable under 35 U.S.C. § 103 “if the differences
`between the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the effective filing
`date of the claimed invention to a person having ordinary skill in the art to
`which the claimed invention pertains.” 35 U.S.C. § 103; see 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) when
`of record, objective evidence of obviousness or non-obviousness, i.e.,
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). Objective indicia of non-obviousness may include the following:
`
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`“commercial success, long felt but unsolved needs, failure of others, etc.”4
`Id. The totality of the evidence submitted may show that the challenged
`claims would not have been obvious to one of ordinary skill in the art. In re
`Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). 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)).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art, at the time
`of the earliest effective filing date of the ’133 patent:
`would have had a Bachelor’s degree in electrical engineering,
`computer engineering, computer science, or a related field, and
`2-3 years of experience in the design or development of wireless
`communication systems, or the equivalent.
`Pet. 4 (citing Ex. 1003 ¶¶ 18–20).
`Patent Owner does not present an alternative definition at this stage of
`the proceeding. See generally Prelim. Resp.
`We regard Petitioner’s proposed definition as reasonable, and
`consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and
`Interferences did not err in concluding that the level of ordinary skill in the
`
`
`4 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`art was best determined by the references of record). Accordingly, we apply
`the level of skill set forth above, which also is consistent with the testimony
`of Dr. Akl (Ex. 1003 ¶¶ 18–20).
`We note Petitioner adds to its proposed definition that “[a]dditional
`graduate education could substitute for professional experience, or
`significant experience in the field could substitute for formal education”
`(Pet. 4 (citing Ex. 1003 ¶¶ 18–20)), but we find this too vague to reliably
`implement in analyzing patentability, and thus, do not rely herein on this
`additional characterization of the skilled artisan.
`
`C. Claim Construction
`We construe claims “using the same claim construction standard that
`would be used to construe the claim 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); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc).
`In this context, claim terms “are generally given their ordinary and
`customary meaning” as understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips, 415 F.3d at 1312–13;
`see CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002) (There is “a ‘heavy presumption’ that a claim term carries its
`ordinary and customary meaning.”). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
`Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than
`the intrinsic record in determining ‘the legally operative meaning of claim
`language.’” Phillips, 415 F.3d at 1317.
`Only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (stating that “we need only construe 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))).
`Petitioner submits that, “[u]nless otherwise noted, terms should be
`given their plain meaning.” Pet. 4. At this stage of the proceeding, Patent
`Owner does not address claim construction. See generally Prelim. Resp.
`In determining whether Petitioner has demonstrated a reasonable likelihood
`of establishing unpatentability of at least one challenged claim in this case,
`we need not and do not construe expressly any claim terms. See Nidec,
`868 F.3d at 1017.
`
`D. Alleged Obviousness of Claims 1–20 over the Combination of
`Schliwa-Bertling and 3GPP ’279
`Petitioner contends claims 1–20 are unpatentable under 35 U.S.C.
`§ 103 as obvious over the combined teachings of Schliwa-Bertling
`(Ex. 1006) and 3GPP ’279 (Ex. 1007). Pet. 5–28. Patent Owner opposes
`Petitioner’s contentions. Prelim. Resp. 2–17. Based on our review of the
`Petition and Preliminary Response, we determine that Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in showing that
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`any of claims 1–20 is unpatentable as obvious over the combination of
`Schliwa-Bertling and 3GPP ’279, as discussed below. We begin with an
`overview of Schliwa-Bertling and 3GPP ’279.
`
`1. Overview of Schliwa-Bertling (Ex. 1006)
`Schliwa-Bertling relates generally to “handling suspension of a
`connection between the wireless device and a wireless communications
`network.” Ex. 1006, code (57). Schliwa-Bertling discloses that network
`node 211 can command wireless device 240 “to transition into a suspended
`idle mode,” during which the wireless device “behave[s] as in ‘idle mode’,
`but caches a context related to the last connection, for example data related
`to security, such as keys, sequence number etc[.], and data related to bearers,
`such as signaling and data bearers.” Id. ¶ 121; see id. ¶ 125. “When the
`wireless device 240 wants to resume its connection 251 for some reason, e.g.
`due to paging of the wireless device 240, wanting to send data, etc[.], it
`[m]akes contact with the network, i.e. with the first network node 211” (see
`transmission 401 in Figure 4a below). Id. ¶¶ 126–127. “[W]ireless
`device 240 initiates the resumption by transmitting . . . [a] RRC Connection
`Resume Request” (i.e., sending a request to resume a connection) to network
`node 211 (see transmission 403 in Figure 4a below). Id. ¶ 127. If certain
`conditions are met, such as “the stored UE context has not been deleted or
`become too old,” then network node 211 responds to wireless device 240 by
`sending “a control message such as RRC Connection Resume Pending or
`RRC Connection Resume Complete” (see transmissions 404 and 405 in
`Figure 4a below). Id. ¶ 129. Schliwa-Bertling’s Figure 4a, a portion of
`which is reproduced below, depicts this signaling or messaging used in
`resuming a connection.
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`Figure 4a depicts a signaling diagram of a method
`performed in a wireless communications network.
`Id. ¶ 55, Fig. 4a.
`We further discuss below the disclosure of Schliwa-Bertling in
`connection with the parties’ arguments.
`
`2. Overview of 3GPP ’279 (Ex. 1007)
`3GPP ’279 relates generally to RRC connection re-establishment and
`resume procedures in new radio (NR). Ex. 1007, 1. 3GPP ’279 discloses, in
`the context of LTE, a procedure for resuming a RRC connection, as depicted
`in Figure 3, reproduced below.
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`Figure 3 depicts a successful RRC connection
`resume signaling.
`Id. at 2, Fig. 3. As shown in Figure 3 above, the UE transmits to the
`network node (e.g., EUTRAN) a RRCConnectionResumeRequest message,
`which in turn transmits to the UE a RRCConnectionResume message, which
`in turn transmits to the network node a RRCConnectionResumeComplete
`message. Id., Fig. 3. 3GPP ’279 discloses that the “RRC Connection
`Resume kind of message can optionally include the dedicated radio resource
`configuration.” Id. at 3.
`We further discuss below the disclosure of 3GPP ’279 in connection
`with the parties’ arguments.
`
`3. Independent Claim 1: “the [resume] message comprising an
`indication to perform a full configuration”
`Independent claim 1 requires, in relevant part, “the [resume] message
`comprising an indication to perform a full configuration.” Ex. 1001, 22:1–3
`(emphases added). The parties dispute, inter alia, whether Petitioner’s cited
`evidence adequately supports Petitioner’s contention that the combination of
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`Schliwa-Bertling and 3GPP ’279 teaches or suggests this limitation. See,
`e.g., Prelim. Resp. 9–13; Pet. 13–14.
`Petitioner asserts that “3GPP ’279 describes that the ‘RRC
`Connection Resume…message can optionally include the dedicated radio
`resource configuration.’” Pet. 13 (quoting Ex. 1007, 3). Before
`continuing, we note that this is the only and entire disclosure in 3GPP ’279
`that Petitioner relies on for allegedly disclosing or teaching that the resume
`message comprises an indication to perform a full configuration. Petitioner
`argues, “[b]ecause the inclusion of dedicated radio resource configuration
`information in the RRC Connection Resume message is optional, the
`presence of this configuration information is an indication to the UE to
`perform a configuration,” and “[l]ikewise, the absence of this configuration
`information is an indication to the UE not to perform a configuration.”
`Pet. 13 (citing Ex. 1003 ¶ 59). Petitioner also argues that “the LTE ‘full
`configuration’ procedure described in the ’133 patent ‘includes an
`initialization of the radio configuration’ of the wireless device.” Pet. 13
`(citing Ex. 1001, 7:46–47). Petitioner then concludes, based only on the
`foregoing, “[i]t would have been obvious to [the skilled artisan] to
`reinitialize the radio configuration of the wireless device in response to
`receiving the ‘dedicated radio resource configuration’ included in the RRC
`Connection Resume message in 3GPP ’279.” Pet. 13–14 (citing Ex. 1003
`¶ 59; Ex. 1007, 3). Petitioner’s declarant makes these same (conclusory)
`statements verbatim, without more, and with no further explanation or
`additional citations to evidence. See Ex. 1003 ¶ 59; Prelim. Resp. 9
`(“Petitioner’s declarant, Dr. Akl, parrots the Petition and offers nothing
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`more, and his opinion is entitled to no weight.”). We find Petitioner’s
`arguments unpersuasive, as discussed below.
`We give such conclusory, unsupported assertions by Petitioner’s
`expert little or no weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
`1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations.”); Rohm and Haas
`Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (noting that a
`fact finder is not required to “credit the unsupported assertions of an expert
`witness”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”).
`Patent Owner argues that Petitioner’s only cited disclosure
`in 3GPP ’279, namely, that the “RRC Connection Resume . . . message can
`optionally include the dedicated radio resource configuration” (Ex. 1007, 3
`(cited at Pet. 13)), “says nothing about indicating the need for a full
`configuration” via a resume message, as recited in independent claim 1.
`Prelim. Resp. 9–10 (emphases added). Patent Owner asserts that Petitioner’s
`contention that the presence or absence of dedicated radio resource
`configuration information is an “indication” to the UE whether to perform a
`“configuration” (as opposed to “full” configuration) (Pet. 13 (emphasis
`added) is conclusory and unsupported by any evidence of record. Prelim.
`Resp. 10 (“Nothing in the record supports these conclusions.”; “Petitioner’s
`conclusions are pure speculation motivated by hindsight.”). Patent Owner
`then argues that the subject one-sentence disclosure in 3GPP ’279 “says
`nothing about what the dedicated radio resource configuration would
`
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`
`indicate—if anything—to a UE,” and “[does not] disclose what a UE would
`understand by not including the dedicated radio resource configuration.”
`Prelim. Resp. 10.
`Patent Owner further argues that “Petitioner uses a conclusory
`obviousness argument in an attempt to bridge the gap between a
`‘configuration’ and the ‘full configuration’ recited in Claim 1.” Prelim.
`Resp. 11. In particular, Patent Owner argues Petitioner leaps silently, “with
`no support or explanation,” from a disclosure of a resume message
`optionally including a “configuration,” to an alleged disclosure of a resume
`message including an “indication” to perform a “full configuration.” Prelim.
`Resp. 10–12 (citing Pet. 13–14). Patent Owner calls out Petitioner’s
`apparent, but unstated and unsupported, claim construction position that “a
`‘full configuration’ can mean [only] ‘an initialization of the radio
`configuration’ without requiring anything more” (Prelim. Resp. 11), which
`appears where Petitioner identifies that “the LTE ‘full configuration’
`procedure . . . ‘includes an initialization of the radio configuration’ of the
`wireless device,” and Petitioner then uses that “inclusion” to argue that the
`disclosure of an optional dedicated radio resource “configuration” in
`3GPP ’279 somehow teaches a “full configuration” (Pet. 13 (emphases
`added)). Patent Owner argues that the ’133 patent’s summary description of
`a “full configuration” “includ[ing] an initialization of the radio
`configuration” “does not suggest, let alone mandate, that initialization of the
`radio configuration is sufficient for a full configuration.” Prelim.
`Resp. 11–12; see also id. at 13.
`Patent Owner concludes, and we agree for the same reasons discussed
`above, that Petitioner does not explain sufficiently, let alone with
`
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`IPR2022-00607
`Patent 10,517,133 B2
`
`particularity, how or why the skilled artisan would have understood (a) the
`disclosure in 3GPP ’279 of a RRC Connection Resume message optionally
`including a dedicated radio resource configuration, to teach or suggest
`(b) a resume message including an indication to perform a full configuration,
`given the description of “full configuration” in the ’133 patent. See Prelim.
`Resp. 9–13. Petitioner simply does not explain sufficiently the necessary
`inferences and logical steps necessary to traverse from the cited 3GPP ’279
`sentence (Pet. 13) to the subject limitation in independent claim 1.
`In addition, Patent Owner argues Petitioner’s reading of the
`cited 3GPP ’279 sentence (Pet. 13) onto the subject limitation in
`independent claim 1 is fraught with hindsight bias. Prelim. Resp. 9
`(“Petitioner’s analysis rests on hindsight conclusions made without any
`support in the record.”), 10 (“Petitioner’s conclusions are pure speculation
`motivated by hindsight.”), 12–13 (“Lacking any justification, and based
`solely on the hindsight reconstruction of Claim 1, Petitioner’s unsupported
`arguments and apparent attempt to construe ‘initialization of the radio
`configuration’ to constitute the claimed ‘full configuration’ should be
`rejected.”). We agree with Patent Owner that, but for hindsight, neither
`Petitioner nor its expert explains sufficiently, let alone with particularity,
`why the skilled artisan would have understood the cited 3GPP ’279 sentence
`(Pet. 13), which itself does not describe, at least on its face, a resume
`message including any “indication” or performance of a “full” configuration,
`to teach or suggest a resume message including an indication to perform a
`full configuration. See InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on
`the [] patent itself as her roadmap for putting what she referred to as pieces
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`of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d
`1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc.,
`721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of
`the patented invention, when the prior art does not contain or suggest that
`knowledge, is to use the invention as a template for its own reconstruction—
`an illogical and inappropriate process by which to determine patentability.”).
`Although “[a] person of ordinary skill is also a person of ordinary creativity,
`not an automaton” (KSR, 550 U.S. at 421), the Federal Circuit has observed
`that “‘the prejudice of hindsight bias’ often overlooks that the ‘genius of
`invention is often a combination of known elements which in hindsight
`seems preordained.’” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d
`1056, 1068 (Fed. Cir. 2018).
`For the foregoing reasons, and constrained by the Petition, we are not
`persuaded that the cited evidence adequately supports Petitioner’s contention
`that the combination of Schliwa-Bertling and 3GPP ’279 teaches or suggests
`“the [resume] message comprising an indication to perform a full
`configuration” limitation, as recited in independent claim 1.
`
`4. Independent Claims 6 and 11 and Dependent Claims 2–5,
`7–10, and 12–20
`Independent claims 6 and 11 recite the same limitation as at issue with
`independent claim 1, discussed above in Section III.D.3. See Ex. 1001,
`22:22–24 (claim 6: “receive a resume response message from the network
`node, the message comprising an indication to perform a full
`configuration”), 22:46–49 (claim 11: “send a resume response message to
`the wireless device, the message comprising an indication to perform a full
`configuration”). Petitioner submits the same arguments for unpatentability
`
`20
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`against these limitations in claims 6 and 11 as for claim 1. See Pet. 18–19,
`24. Patent Owner likewise submits the same arguments for independent
`claims 1, 6, and 11. See Prelim. Resp. 15–17. Claims 2–5, 7–10, and 12–20
`depend, directly or indirectly, from one of independent claim 1, 6, and 11.
`Accordingly, for the same reasons set forth above in Section III.D.3 for
`claim 1, we are not persuaded that the cited evidence adequately supports
`Petitioner’s contention that the combination of Schliwa-Bertling and
`3GPP ’279 teaches or suggests the subject limitations in any of claims 2–20.
`
`5. Summary
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of success in establishing the
`unpatentability of any of claims 1–20 as obvious over the combination of
`Schliwa-Bertling and 3GPP ’279.
`
`E. Alleged Anticipation and Obviousness of Claims 1–5
`over 3GPP ’208
`Petitioner contends claims 1–
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