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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`TELEFONAKTIEBOLAGET LM ERICSSON.,
`Patent Owner.
`____________________
`
`Case IPR2022-00648
`Patent No. 9,860,044
`____________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2022-00648
`PATENT OWNER’S PRELIMINARY RESPONSE
`TABLE OF CONTENTS
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`
`1
`3
`9
`9
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`Introduction
`I.
`II. Background of the ’044 Patent and the challenged claims
`III. Person of ordinary skill in the art
`IV. Claim construction
`V. The Petition fails to demonstrate that the prior art disclosed or rendered
`obvious receiving on the reserved radio resources recited by limitations
`10
`1.2 and 1.3
`The Petition does not demonstrate that its Grounds meet the reserved
`A.
`resources requirement of limitation 1.2
` 12
`The Petition additionally fails to demonstrate that its Grounds meet
`the reserved resources requirement of limitation 1.3
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`1. Motorola’s Fig. 4 does not disclose limitation 1.3
`2.
`The Petition does not make a prima facie showing of
`obviousness as to its theory that a BS would ensure that only
`certain UEs would calculate certain “m” values under existing
`TS36.211 Formats 1 and 2
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` 24
`The Petition’s “alternative” obviousness theory, which involves
`numerous modifications and unspecified new parameters and
`formulas, fails at multiple levels
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` 28
`35
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`B.
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`22
` 23
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`3.
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`VI. Conclusion
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`Exhibit No.
`2001
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`EXHIBIT LIST
`
`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice
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`I.
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Introduction
`Although the Petition obfuscates its allegations through a complex series of
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`details regarding certain aspects of the technical standards, the Petition ultimately
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`fails to make a prima facie showing of obviousness, and presents no reasonable
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`likelihood of success as to the unpatentability of any challenged claim.
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`All challenged claims require a “reserved” first set of radio resources for the
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`sending of uplink control information from a user terminal receiving downlink
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`transmissions on only a single downlink carrier (a UE not utilizing carrier
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`aggregation), see, e.g., claim 1 limitation [1.2], and a “reserved” second set of
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`radio resources for sending uplink control information from a user terminal
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`receiving downlink transmissions on multiple downlink carriers (a UE utilizing
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`carrier aggregation). See, e.g., claim 1 limitation [1.3].1
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`The Petition does not allege that any prior art it relies upon actually taught
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`or suggested the use of a set of radio resources reserved for a user terminal based
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`on whether that user terminal has been scheduled for single carrier or multi-carrier
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`downlink transmissions, as recited by the challenged claims. Instead, the Petition
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`presents a convoluted series of allegations as to certain general capabilities
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`contained within portions of the technical specifications, and then alleges that it
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`1 Limitation 1.3 also covers an alternative implementation not relevant to this
`proceeding.
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`would have been “obvious” to manipulate numerous base station parameters, and
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`to even add entirely new, previously unspecified parameters and formulas, to arrive
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`at the invention of the challenged claims.
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`The Petition, however, provides no plausible reason why an ordinary artisan
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`would have undertaken the complex series of steps and novel creations the Petition
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`proposes in order to reconfigure a base station in the precise manner necessary to
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`achieve the invention of the challenged claims. Indeed, with respect to multiple
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`aspects of its obviousness theory, the Petition provides no motivation at all, and
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`thus fails for that reason alone. And while the Petition does allege motivations for
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`certain other aspects, those motivations are conclusory and generic, and bear no
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`relationship to the specific modifications the Petition’s theory requires. The
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`Petition’s obviousness allegations thus fail for lack of evidence of a motivation to
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`combine. PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir.
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`2017); In re NuVasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016); In re
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`Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333-34 (Fed. Cir. 2016); Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364-67 (Fed. Cir. 2015);
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`ActiveVideo Networks v. Verizon, 694 F.3d 1312, 1328 (Fed. Cir. 2012).
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`Nor does the Petition provide sufficient evidence to support the conclusion
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`that an ordinary artisan would have had a reasonable expectation of success in
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`undertaking the Petition’s proposed modifications, or that those modifications—
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`which the Petition admits would require defining entirely new parameters and
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`formulas undisclosed in any cited prior art—would have been enabled.
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`In short, the Petition’s allegations are transparently driven by hindsight bias,
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`and fail to present a reasonable likelihood that the challenged claims were obvious
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`at the time of the invention.
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`
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`Accordingly, institution should be denied.
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`II. Background of the ’044 Patent and the challenged claims
`United Stated Patent No. 9,860,044 (the “’044 Patent”), titled PUCCH
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`resource allocation for carrier aggregation in LTE-advanced,” is directed to carrier
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`aggregation in a mobile communication system and, more particularly, to an
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`efficient resource allocation for the physical uplink control channel for carrier
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`aggregation. See Ex. 1001, Technical Field.
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`Carrier aggregation is a feature of LTE Release 10 (LTE-Advanced). While
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`LTE Rel 8 supports bandwidths up to 20 MHz, in LTE-Advanced, bandwidths up
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`to 100 MHz are supported. To maintain backward compatibility with LTE Rel-8
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`user terminals, the available spectrum is divided into Rel-8 compatible component
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`carriers. Id., 1:22-40. The ’044 Patent explains that carrier aggregation “enables the
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`needed bandwidth expansion by allowing user terminals to transmit data over
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`multiple component carriers comprising up to 100 MHz of spectrum.” Id., 1:33-36.
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`The ’044 Patent teaches that one important consideration for carrier
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`aggregation is the appropriate design for transmitting control signals from the user
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`terminal (UE) on the uplink. Id., 1:55-57. Although this can be done on “multiple
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`uplink component carriers associated with different downlink component carriers,”
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`the patent teaches that “this option is likely to result in higher user terminal power
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`consumption and a dependency on specific user terminal capabilities.” Id., 1:63-67.
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`The patent further teaches that that approach may cause implementation issues and
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`lead to higher testing and implementation complexity. Id., 1:67-2:3.
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`The ’044 Patent describes that in a first approach, a set of shared Physical
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`Uplink Control Channel (“PUCCH”) resources, in addition to PUCCH resources
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`according to LTE Rel-8, is allocated for HARQ acknowledgements by user
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`terminals that receive downlink assignments on multiple downlink component
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`carriers, i.e., UEs utilizing carrier aggregation. The resource set and/or the size of
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`the resource set can be transmitted to the user terminal by Radio Resource Control
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`(RRC) signaling. With this approach, the UL (Uplink) PCC contains PUCCH
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`resources according to LTE Rel-8 for HARQ acknowledgements from user
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`terminals assigned resources for downlink transmission on a single downlink
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`component carrier associated with the UL PCC. The shared PUCCH resource
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`would be used by user terminals which receive resource assignments for downlink
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`transmission on multiple downlink component carriers. Id., 9:32-39.
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`According to a second approach, a set of shared PUCCH resources, in
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`addition to PUCCH resources according to LTE Rel-8, is allocated for HARQ
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`acknowledgements by user terminals which receive downlink assignments on at
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`least one downlink component carrier other than the downlink component carrier
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`having associated Rel-8 resources on the UL PCC. The resource set and/or the size
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`of the resource set can be transmitted to the user terminal by RRC signaling. Id.,
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`9:53-62.
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`The ’044 Patent teaches that the assignment of PUCCH resources can be
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`achieved by implicit indication of actual resource block, e.g., utilizing CCE index,
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`number of the downlink component carriers, RNTI or a combination of these
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`parameters. Alternatively, reserved PUCCH resources can be indicated explicitly
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`via signaling to the user terminal (e.g., RRC signaling), or by a combination of
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`implicit and explicit signaling. Additionally, dynamic indication of PUCCH
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`resources for HARQ acknowledgements can be done by using additional relative
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`or explicit dynamic indication to select actual PUCCH resources out of the set of
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`reserved (e.g., semi-statically reserved) resources. Id., 10:21-47.
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`The ’044 patent, as shown below in FIG 10, thus teaches a method
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`implemented by a user terminal for transmission of uplink control signaling to a
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`base station 20. The user terminal 100 receives a radio resource assignment for a
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`downlink transmission from the base station 20 (block 62). If the user terminal 100
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`detects assignments of radio resources for a single downlink component carrier, the
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`user terminal 100 transmits, on a first set of radio resources on an uplink primary
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`component carrier, uplink control information associated with the downlink
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`transmissions (block 64). On the other hand, if the user terminal 100 receives
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`assignments for multiple downlink component carriers, the user terminal 100
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`transmits, on a second set of radio resources on the uplink primary component
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`carrier, uplink control information associated with downlink transmissions (block
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`66). Id.,11:34-48.
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`Exemplary claim 1 of the ‘044 Patent thus recites:
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`Element Claim 1
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`[1.Pre]
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`A method implemented by a base station of receiving control
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`information from a user terminal, the method comprising:
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`[1.1]
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`scheduling downlink transmissions to a first user terminal only
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`on a single downlink component carrier associated with a
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`primary cell and scheduling downlink transmissions to a second
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`user terminal on multiple downlink component carriers or on a
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`downlink component carrier associated with a non-primary cell;
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`[1.2]
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`receiving, on a first set of radio resources, control information
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`associated with the downlink transmissions to the first user
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`terminal, wherein the first set of radio resources is reserved for
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`a user terminal scheduled to receive downlink transmissions
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`only on a single downlink component carrier associated with
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`the primary cell; and;
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`[1.3]
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`receiving, on a second set of radio resources, control
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`information associated with the downlink transmissions to the
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`second user terminal, wherein the second set of radio resources
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`is reserved for a user terminal scheduled to receive downlink
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`transmissions on multiple downlink component carriers or on a
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`downlink component carrier associated with a non-primary cell,
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`the first and second sets of radio resources being on a same
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`uplink component carrier associated with the primary cell.
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`The Petition challenges claims 1-11, 15-27, and 33-41 of the ’044 Patent on
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`two grounds. In Ground 1, the Petition relies on the combination of Motorola (Ex.
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`1007) in view of TS36.211 (Ex. 1009) and further in view of TS36.213 (Ex. 1011).
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`In Ground 2, the Petition relies on the combination of Motorola in view of
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`TS36.211 and further in view of TS36.213 and TR36.912 (Ex. 1021).
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`The Petition’s Grounds are summarized in the table below.
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`References
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`Basis
`Challenged
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`Claims
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`1
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`Motorola (Ex. 1007) in view of
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`Pre-AIA 35
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`1-11, 15-27,
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`TS36.211 (Ex. 1009) and further in
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`U.S.C. §§ 103
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`and 33-41
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`view of TS36.213 (Ex. 1011)
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`2
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`Motorola in view of TS36.211 and
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`Pre-AIA 35
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`1-11, 15-27,
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`further in view of TS36.213 and
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`U.S.C.§ 103
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`and 33-41
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`TR36.912 (Ex. 1021)
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`III. Person of ordinary skill in the art
`For purposes of this Preliminary Response, Patent Owner does not dispute
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`the Petition’s proposed level of skill for a person of skill in the art (“POSA”),
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`because the level of skill in the art is not necessary for addressing any disputes
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`between the parties.
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`IV. Claim construction
`The Board does not construe claim terms that are not in dispute. Shenzhen
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`Liown Electronics Co. v. Disney Enterprises, Inc., IPR2015-01656, Paper 7 at 10
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`(Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999)). The Petition states that “the Board does not need to construe
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`any terms to resolve the arguments presented herein.” Pet. 9. Patent Owner
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`likewise presents no claim construction issues at this time as none are necessary to
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`resolution of the issues presented in this Preliminary Response.
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`V. The Petition fails to demonstrate that the prior art disclosed or
`rendered obvious receiving on the reserved radio resources recited by
`limitations 1.2 and 1.3
`Claim 1 limitation 1.2 requires a base station “receiving, on a first set of
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`radio resources, control information associated with the downlink transmission to
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`the first user terminal, wherein the first set of radio resources is reserved for a
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`user terminal scheduled to receive downlink transmissions only on a single
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`downlink component carrier associated with the primary cell.”
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`Claim 1 limitation 1.3 further requires, in relevant part, “receiving, on a
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`second set of radio resources, control information associated with the downlink
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`transmissions to the second user terminal, wherein the second set of radio
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`resources is reserved for a user terminal scheduled to receive downlink
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`transmissions on multiple downlink component carriers.”2
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`2 All other independent claims contain the same requirements. See limitations
`17.2.a & 17.2.b, Pet. 66; limitations 18.2 and 18.3, Pet. 71; limitations 33.3.a and
`33.3.b, Pet. 76-77. The Petition’s theory as to those requirements in all the other
`independent claims mirrors and simply cites back to its theories regarding
`limitations 1.2 and 1.3. Id. Accordingly, the argument presented in this section
`regarding claim 1 applies equally to all other independent claims, and demonstrates
`the Petition’s inadequacy to warrant institution as to any challenged claim.
`Moreover, as noted previously, limitation 1.3 recites an alternative implementation
`not relevant to this proceeding and not quoted above or discussed below.
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`Together, the requirements of limitations 1.2 and 1.3 require receiving
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`uplink control information from one UE on a “first” set of radio resources reserved
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`for a UE scheduled to receive downlink transmissions on a single carrier, and
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`receiving uplink control information from another UE on a “second” set of radio
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`resources reserved for a UE scheduled to receive downlink transmissions on
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`multiple carriers.
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`The requirements of limitations 1.2 and 1.3 were added through prosecution
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`amendments by the patentee during the examination of the parent patent to the
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`‘044 Patent in order to overcome the prior art. Ex. 1005 at 120, 130. In particular,
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`in response to the Examiner’s rejection based on the Bala reference, the patentee
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`amended the claims “to clarify that the first set of radio resources is reserved for
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`user terminals scheduled to receive downlink transmissions on the first downlink
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`component carrier, and that the second set of radio resources is reserved for user
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`terminals scheduled to receive downlink transmissions on the second downlink
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`component carrier and/or multiple component carriers.” Ex. 1005 at 131.
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`As the patentee further explained, “Bala does not state [ ] that different sets
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`of radio resources are reserved for multi-carrier and single-carrier user terminals,”
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`and Bala thus did not meet the amended claims. Ex. 1005 at 131.
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`The Petition attempts to meet limitations 1.2 and 1.3 by alleging
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`obviousness based on the Motorola reference in view of TS36.211 and TS36.213.
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`Pet. 34-44.3 Under the Petition’s theory, the “first user terminal” is “an LTE Rel-8
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`UE that is not capable of carrier aggregation” or “an LTE-Advanced UE in non-
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`carrier aggregation mode,” Pet. 28 n. 6, such that said first UE could only receive
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`downlink transmissions on a single downlink component carrier. Id. at 28-29. The
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`“second user terminal” is an LTE-Advanced UE “that supports carrier
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`aggregation” and is scheduled by an LTE-Advanced BS to receive downlink
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`transmissions “on multiple DL component carriers.” Pet. 30.
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`As demonstrated in detail below, however, the Petition’s allegations fail to
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`meet or render obvious the requirements of limitations 1.2 and 1.3.
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`A.
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`The Petition does not demonstrate that its Grounds meet the
`reserved resources requirement of limitation 1.2
`With respect to limitation 1.2’s requirement that “the first set of radio
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`resources is reserved for a user terminal scheduled to receive downlink
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`transmissions only on a single downlink component carrier,” the Petition does not
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`rely upon Motorola at all. See Pet. 34-37. Stated otherwise, the Petition makes no
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`allegation that Motorola teaches or suggests the use of a set of radio resources
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`3 The Petition additionally relies on TR36.912 in its Ground 2 for purposes that are
`not at issue with respect to the relevant aspects of limitations 1.2 and 1.3.
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`reserved for uplink control information transmissions from a UE scheduled to
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`receive downlink transmissions on only a single carrier. See Pet. 34-37.
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`Nor does the Petition allege that any reference it relies upon—including
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`TS36.211 and TS36.213—actually taught or suggested the use of a set of radio
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`resources reserved for a UE scheduled to receive downlink transmissions only on a
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`single downlink component carrier, as limitation 1.2 requires. The Petition thus
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`presents no evidence that the requirement of limitation 1.2 was taught or suggested
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`anywhere in the prior art.
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`Instead, the Petition presents a convoluted, multi-step obviousness
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`modification theory that proceeds based on the following allegations:4
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`1. Under TS36.211 and TS36.213, LTE Rel-8 UEs (which do not support
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`carrier aggregation) use Physical Uplink Control Channel (PUCCH) radio
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`resources to send uplink control information to a BS. Pet. 16, 35.
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`2. To do so, each LTE Rel-8 UE identifies the appropriate physical resource
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`blocks (PRBs) for its PUCCH for sending the uplink control information. Pet. 16,
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`35.
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`4 Patent Owner’s summation of the Petition’s allegations below is not an
`expression of any agreement with the substance of those allegations. Rather, Patent
`Owner merely provides the below summary of the Petition’s theory in order to
`demonstrate its shortcomings as it relates to the actual requirements of the
`challenged claims.
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`3. The UE identifies the appropriate PRBs for its PUCCH by calculating an
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`“m” value. The calculated “m” value can be m=0, m=1, m=2, or m=3. Pet. 16-17,
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`35-36. A UE that calculates an “m” value of m=0 will have a PUCCH that is
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`assigned to the PRBs highlighted in red in the Petition’s annotated figure below. A
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`UE that calculates an “m” value of m=1 will have a PUCCH that is assigned to the
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`PRBs highlighted in blue in the annotated figure below.
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`4. TS36.211 specifies that the UE calculates the “m” value using one of two
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`formulas: Format 1 or Format 2. Pet. 17. The Petition provides the below figure to
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`show the formulas for Formats 1 and 2, and their inputs. Pet. 18, 37.
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`5. The parameters the UE uses to calculate its “m” value under Format 1 and
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`Format 2 are provided to it explicitly or implicitly by the BS. The parameters next
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`to the green arrows above are those the BS provides explicitly; the one next to the
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`yellow arrow is provided implicitly. Pet. 18-19.
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`6. The parameter inputs for Formats 1 and 2 are entirely different from one
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`another; there is no overlapping parameter. Pet. 19.
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`7. In the case of Format 2, the BS’s assignment of n(2)PUCCH values in the
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`range of 0-11 will result in m=0; n(2)PUCCH values from 12-23 will yield m=1;
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`n(2)PUCCH values from 24-35 result in m=2; and n(2)PUCCH values from 36-47
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`translate to m=3. Pet. 36 n. 8. The Petition does not specifically explain how
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`particular Format 1 inputs will translate to particular “m” values.
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`8. Any UEs with the same “m” values will share the same uplink radio
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`resources (PRBs). Pet. 36. Thus, for example, any UEs that calculate “m” values of
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`m=0 will share the same set of uplink radio resources, regardless of whether those
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`UEs were scheduled to receive downlink transmissions from a single carrier or
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`multiple carriers. Pet. 36.
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`9. It is the UE itself that selects the appropriate formula (Format 1 or Format
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`2) to calculate its “m” value. Pet. 18 (“In operation, a UE selects an appropriate
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`format (e.g., PUCCH Format 1 or Format 2) to calculate the ‘m’ value [ ] that
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`determines the radio resources used for transmission of its PUCCH.”).
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`10. According to the Petition’s theory, a BS “would ‘reserve’” radio
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`resources for certain groups of UEs by “selectively configuring them with
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`appropriate Format 1 or Format 2 parameters.” As a manufactured example, the
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`Petition states that a BS could “reserve” the uplink radio resources (PRBs)
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`corresponding to m=0 for certain UEs for which it provides n(2)PUCCH (the sole
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`input variable to Format 2) values between 0 to 11. Pet. 36. To illustrate, the
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`Petition provides the following annotated figure from TS36.211. Pet. 35. 5
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`
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`The Petition’s discussion of the “reserved” radio resources requirement of
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`limitation 1.2 ends at this point. Pet. 34-37.
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`Notably missing from the Petition’s theory, however, is any evidence or
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`even the allegation that TS36.211, TS36.213, or any other prior art reference
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`teaches or suggests that a BS actually does “selectively configure[e] [UEs] with
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`appropriate Format 1 or Format 2 parameters” so that the BS receives uplink
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`5 The Petition’s annotation states that the PRBs in this example are shared by UEs
`that compute m=1, but this appears to be a typo as the highlighted values are m=0
`and the Petition’s discussion of its theoretical example also discuss values of m=0.
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`control information transmissions on radio resources reserved for UEs based on the
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`uplink component carriers those UEs have been scheduled on.
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`Stated otherwise, the Petition never even alleges, much less provides
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`evidence to show, that the prior art taught or suggested a BS specifically
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`manipulating the six parameter assignments for the Format 1 and Format 2
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`calculations in order to ensure that certain “groups” of UEs that share some
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`common criteria will end up calculating the same “m” values and thus share the
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`same uplink radio resources.6 The Petition’s discussion of limitation 1.2 thus never
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`even alleges, much less proves, that the prior art taught or suggested a BS
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`specifically assigning certain parameter values to a UE to ensure that that UE
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`would calculate a specific “m” value and utilize a specific set of uplink radio
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`resources reserved for UEs that are only scheduled to receive downlink
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`transmissions on a single carrier, as limitation 1.2 requires.
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`6 Because it is the UE itself that selects the appropriate formula for calculating its
`“m” value (i.e., the UE selects whether to use Format 1 or Format 2), Pet. 18, the
`BS could not simply manipulate the one input for Format 2 to achieve a
`supposedly desired “m” value, but would instead have to manipulate all six of the
`parameter inputs for Format 1 and Format 2 to do so. Thus, although the Petition
`focuses on the n(2)PUCCH parameter in its example, that parameter only relates to
`the Format 2 formula and does not affect the UE’s calculation of an “m” value
`under the Format 1 formula. Since the UE itself decides which formula to use, and
`since the n(2)PUCCH does not play a part in the Format 1 formula, manipulating
`the n(2)PUCCH parameter alone would not suffice to ensure that a UE arrives at
`any specific “m” value.
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`Moreover, the Petition does not provide any explanation as to how the
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`technical specifications and/or any other requirements actually intended for the BS
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`to set the values for the six parameters that are the inputs to the Format 1 and
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`Format 2 formulas. In other words, although the Petition identifies the parameters
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`and formulas for Format 1 and Format 2, it does not explain how those parameters
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`are supposed to be set in normal operation, what purpose they serve, or how the
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`Format 1 and Format 2 formulas are intended to affect the UE’s operation. Thus,
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`although the Petition seems to operate on the assumption that the BS could set
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`those parameter values in any arbitrary manner without any consequence beyond
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`manipulating the UE’s “m” value calculation, the Petition provide no evidence or
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`explanation to support that core assumption.
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`Nor does the Petition’s discussion of limitation 1.2 provide any allegation
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`that it would have been obvious for an ordinary artisan to design or program a BS
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`to specifically manipulate the six parameter values that serve as inputs to the
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`Format 1 and Format 2 formulas to ensure that UEs that do not support carrier
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`aggregation would calculate one or more specific “m” values corresponding to
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`uplink radio resources reserved for such UEs.
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`Stated otherwise, although the Petition creates an example in which certain
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`UEs are assigned input parameters that result in their calculating “m” values of
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`m=0, the Petition’s discussion of limitation 1.2 never demonstrates that any BS
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`was so configured at the time of the invention, or that it would have been obvious
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`for an ordinary artisan to configure a BS to ensure that only single-carrier UEs
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`would calculate m=0 (or any other common “m” value(s)) and thus allegedly use
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`“reserved” uplink resources as required by limitation 1.2.
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`The Petition also fails to provide any reason why a POSA would have been
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`motivated to configure a BS in that highly specific manner. A finding of
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`obviousness based on a combination or modification of prior art elements cannot
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`be found without evidence that “a person of ordinary skill in the art would have
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`been motivated to combine the prior art in the way claimed by the” challenged
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`claims. PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir.
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`2017); In re NuVasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016); In re
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`Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333-34 (Fed. Cir. 2016); Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364-67 (Fed. Cir. 2015).
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`“[G]eneric” evidence of a motivation to combine that “bears no relation to any
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`specific combination of prior art elements” cannot suffice. ActiveVideo Networks
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`v. Verizon, 694 F.3d 1312, 1328 (Fed. Cir. 2012) (emphasis added). Rather, a
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`petitioner must “explain why a person of ordinary skill in the art would have
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`combined elements from specific references in the way the claimed invention
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`does.” Id. (emphasis original) (citing KSR v. Teleflex, 550 U.S. 398, 418 (2007)).
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`When correctly applied, the requirement of a motivation to combine the prior art
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`elements in the specific manner alleged “serves to prevent hindsight bias.”
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (internal
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`citations and quotations omitted).
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`Here, the Petition provides no motivation for an ordinary artisan to have
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`configured a BS to “reserve” a first set of uplink radio resources for single carrier
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`UEs by manipulating the “m” values to be calculated by those UEs. Thus, in
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`addition to its failure to allege any such obviousness theory at all, the Petition
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`additionally fails because it provides no motivation for any such theory.
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`At most, the Petition merely explains how “m” values are calculated, and
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`that it was allegedly possible to configure a BS to allocate specific parameter
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`values to certain UEs such that those UEs would arrive at the same “m” values and
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`thus use the same uplink radio resources (PRBs). That showing is inadequate,
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`however, as a matter of law. Personal Web Tech. v. Apple, 848 F.3d 987, 993-94
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`(Fed. Cir. 2017) (“Obviousness concerns whether a skilled artisan not only could
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`have made but would have been motivated to make the combinations or
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`modifications of prior art to arrive at the claimed invention.”); Belden v. Berk-Tek,
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`805 F.3d 1064, 1073 (Fed. Cir. 2015). The question thus is not “what a skilled
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`artisan would have been able to do”; instead, it is “what a skilled artisan would
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`have been motivated to do at the time of the invention.” Polaris Industries, Inc. v.
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`Arctic Cat, Inc., 882 F.3d 1056, 1068-69 (Fed. Cir. 2018) (emphases original).
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`Indeed, as the Petition’s own allegations state, any UE could calculate any
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`possible “m” value. Pet. 36. There is thus no reason why a single-carrier UE would
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`not share the same uplink radio resources as a multi-carrier UE.
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`In short, while the Petition seeks to obfuscate through complexity, its theory
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`as to limitation 1.2 ultimately fails to demonstrate, or even allege, that the details it
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`presents from the technical specifications with respect to “m” value calculations
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`map onto the uplink resource reservation requirement of limitation 1.2, or that it
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`would have been obvious to make modifications to do so.
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`The Petition thus fails with respect to limitation 1.2 for the same reason the
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`patentee overcame Bala during examination: the Petition “does not state [ ] that
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`different sets of radio resources are reserved for multi-carrier and single-carrier
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`user terminals,” Ex. 1005 at 131, nor does it demonstrate that it would have been
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`obvious to do so.
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`B.
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`The Petition additionally fails to demonstrate that its Grounds
`meet the reserved resources requirement of limitation 1.3
`With respect to limitation 1.3, which requires use of a second set of uplink
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`radio resources reserved for UEs that are scheduled to receive multi-carrier
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`downlink communications, the Petition’s theory becomes even more complex,
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`though no more effective.
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`1. Motorola’s Fig. 4 does not disclose limitation 1.3
`The Petition first alleges that Motorola’s Figure 4 “illustrates the BS
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`‘reserves’ a second set of radio resources of an LTE-Advanced UE (highlighted
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`purple).” Pet. 38.
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`But as the Petition itself admits, Motorola’s Figure 4 simply relates to a UE
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`operating in carrier aggr
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