Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: November 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: November 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–11, 15–27, and 33–41 of U.S. Patent No. 9,860,044 B2
`(Ex. 1001, “the ’044 patent”). Paper 1, 1 (“Pet.”). Petitioner also filed the
`Declaration of Apostolos K. Kakaes, Ph.D. in support of the Petition.
`Ex. 1003. Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed a
`preliminary response. Paper 8 (“Prelim. Resp.”).
`As stated in 35 U.S.C. § 314, an inter partes review may not be
`instituted unless it is determined that “the information presented in the
`petition . . . 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.” For the reasons below, we determine the information presented in
`the Petition shows a reasonable likelihood that Petitioner would prevail in
`showing the unpatentability of at least one claim of the ’044 patent, and we
`institute inter partes review.
`
`B. Real Parties in Interest
`Petitioner states that Apple Inc. is the real party in interest. Pet. 82.
`Patent Owner states that Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`are the real parties in interest. Paper 3, 2.
`
`C. Related Proceedings
`The parties do not identify any related matters. Pet. 82; Paper 3, 2.
`
`D. The ’044 Patent (Ex. 1001)
`The ’044 patent describes systems and methods for implementing
`carrier aggregation in mobile communication systems. Ex. 1001, 1:16–30,
`code (57). In particular, the ’044 patent describes “an efficient resource
`
`2
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`allocation for the physical uplink control channel for carrier aggregation.”
`Ex. 1001, 1:18–19.
`The ’044 patent states that then-current Long Term Evolution
`(“LTE”) technology included LTE Release 8 (“Rel 8”) with bandwidths up
`to 20 MHz using single component carriers, but that a then-proposed LTE
`Release 10 (“LTE-Advanced” or “LTE-A”) would allow aggregation of
`multiple component carriers to achieve bandwidths up to 100 MHz (e.g.,
`five LTE Rel 8 20 MHz component carriers). Ex. 1001, 1:23–30, 8:14–22,
`Fig. 8; Ex. 1003 ¶ 41. “In order to support bandwidths greater than 20 MHz,
`carrier aggregation will be supported in LTE Rel 10. To maintain backward
`compatibility with Rel 8 user terminals . . ., the available spectrum is divided
`into Rel-8 compatible component carriers (e.g., 20 Mhz component
`carriers) . . . .” Ex. 1001, 8:14–18.
`One consideration for carrier aggregation is how to configure the
`physical uplink control channel (“PUCCH”) for uplink (“UL”) control
`signaling from user equipment (“UE”). Ex. 1001, 8:37–39. According to
`some embodiments of the ’044 patent, the PUCCH resources on a single UL
`component carrier are used to support downlink (“DL”) transmissions on
`several downlink component carriers. Ex. 1001, 8:47–50.
`
`E. Representative Claim
`Of the challenged claims, claims 1, 17, 18, and 33 are independent
`claims. Claim 1 is reproduced below, with numbering added to reflect the
`limitation numbering in the parties’ briefs.
`
`1. A method implemented by a base station of receiving
`control information from a user terminal, the method
`comprising:
`
`3
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`[1.1] scheduling downlink transmissions to a first user terminal
`only on a single downlink component carrier associated
`with a primary cell and scheduling downlink
`transmissions to a second user terminal on multiple
`downlink component carriers or on a downlink
`component carrier associated with a non-primary cell;
`[1.2] receiving, on a first set of radio resources, control
`information associated with the downlink transmissions
`to the first user terminal, wherein the first set of radio
`resources is reserved for a user terminal scheduled to
`receive downlink transmissions only on a single
`downlink component carrier associated with the primary
`cell; and
`[1.3] receiving, on a second set of radio resources, control
`information associated with the downlink transmissions
`to the second user terminal, wherein the second set of
`radio resources is reserved for a user terminal scheduled
`to receive downlink transmissions on multiple downlink
`component carriers or on a downlink component carrier
`associated with a non-primary cell, the first and second
`sets of radio resources being on a same uplink component
`carrier associated with the primary cell.
`
`4
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`F. Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1–11, 15–27,
`and 33–41 of the ’044 patent on the following grounds:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`1–11, 15–27, 33–41
`
`1031
`
`1–11, 15–27, 33–41
`
`103
`
`References/Basis
`Motorola,2 TS36.211,3
`TS36.2134
`
`Motorola, TS36.211, TS36.213,
`TR36.9125
`
`II. ANALYSIS
`
`A. Obviousness
`A claim is unpatentable as obvious 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 subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`on underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the prior art and the claims; (3) the
`level of skill in the art; and (4) when in evidence, objective indicia of
`
`
`1 The ’044 patent’s earliest priority date falls before the Leahy-Smith
`America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011),
`took effect. Thus, we apply the pre-AIA version of § 103.
`2 3GPP R1-090792, “Control [Signaling] Design for Supporting Carrier
`Aggregation,” Motorola, RANI#56, February 9–13, 2009. Ex. 1007
`(“Motorola”).
`3 3GPP TS 36.211 v.8.5.0 (2008). Ex. 1009 (“TS36.211”).
`4 3GPP TS 36.213 v.8.5.0 (2008). Ex. 1011 (“TS36.213”).
`5 3GPP TS 36.912 v.9.0.0 (2009). Ex. 1021 (“TS36.912”).
`
`5
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`nonobviousness. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`17–18 (1966).
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of
`ordinary skill would have had a “Master’s degree in Electrical Engineering,
`Applied Mathematics, Computer Science, Physics, or equivalent and three to
`five years of experience working with wireless digital communication
`systems including the physical layer of such systems.” Pet. 7. Petitioner
`also states that additional education might compensate for less experience
`and vice-versa. Pet. 7 (citing Ex. 1003 ¶¶ 61–66).
`At this stage, Patent Owner does not dispute Petitioner’s proposed
`level of ordinary skill. Prelim. Resp. 7. Petitioner’s proposed level of
`ordinary skill appears reasonable and comports with the level evidenced by
`the ’044 patent and the cited prior art. Therefore, we adopt Petitioner’s
`articulation of the level of ordinary skill for the purposes of this Decision.
`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) (2021).
`The parties state, and we agree, that no claim terms require express
`construction at this stage. Pet. 9; Prelim. Resp. 9–10. Realtime Data, LLC
`
`6
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to
`construe ‘only those terms . . . that are in controversy, and only to the extent
`necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. Alleged Obviousness Based on Ground 1 & Ground 2
`Regarding the references of Ground 1, Petitioner states “Motorola is
`being used for limitations directed to what is generally known as an
`asymmetric carrier aggregation (e.g., the receiving of DL transmissions at a
`UE over multiple DL carriers)” and “TS36.211 and TS36.213 are being
`applied for teaching [limitations] directed to non-carrier aggregation of DL
`carriers (i.e., receiving DL transmissions at a UE over a single DL carrier).”
`Pet. 14. Describing the differences between Ground 1 and Ground 2,
`Petitioner states that “[t]o the extent Patent Owner argues that a [person of
`ordinary skill] would not have understood Rel-8’s operation to schedule
`downlink transmissions only on a single downlink component, Ground 2
`applies TS36.912, which expressly teaches such.” Pet. 23.
`Our discussion below applies equally to Petitioner’s Ground 1 and
`Ground 2.
`
`Claim 1
`1.
`[1.] A method implemented by a base station of receiving
`control information from a user terminal, the method
`comprising:
`Petitioner states that to the extent the preamble is limiting, Motorola
`discloses a base station within an LTE-Advanced wireless communication
`system that utilizes a PUCCH transmission scheme to support asymmetric
`carrier aggregation for the reception of control information from a user
`terminal (“UE”). Pet. 27–28 (citing Ex. 1007, 5–7; Ex. 1003 ¶¶ 115–116).
`
`7
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`At this stage, Patent Owner does not rebut Petitioner’s showing for the
`preamble.
`
`[1.1] scheduling downlink transmissions to a first user terminal
`only on a single downlink component carrier associated with a
`primary cell and scheduling downlink transmissions to a
`second user terminal on multiple downlink component carriers
`or on a downlink component carrier associated with a non-
`primary cell;
`Petitioner contends that Motorola teaches an LTE-Advanced base
`station (“BS”) that would interoperate with a legacy LTE Rel-8 UE (the
`“first user terminal”) that does not support carrier aggregation or an LTE-A
`UE operating under non-carrier aggregation mode. Pet. 28. Among other
`things, Petitioner contends Motorola teaches scheduling DL transmission to
`an LTE Rel-8 UE via a single component carrier. Pet. 30 (citing Ex. 1007,
`6; Ex. 1003 ¶ 120). Petitioner also contends Motorola teaches scheduling
`DL transmissions to an LTE-A UE (the “second user terminal”) over two
`component carriers. Pet. 30–32 (citing Ex. 1007, 6, Fig. 4; Ex. 1003 ¶¶ 120–
`124).
`
`At this stage, Patent Owner does not rebut Petitioner’s showing for
`this limitation.
`
`[1.2] receiving, on a first set of radio resources, control
`information associated with the downlink transmissions to the
`first user terminal, wherein the first set of radio resources is
`reserved for a user terminal scheduled to receive downlink
`transmissions only on a single downlink component carrier
`associated with the primary cell; and
`Petitioner contends that an LTE-A BS according to the teachings of
`Motorola that is backward compatible with LTE Rel-8 UEs would receive
`PUCCH uplink control information from the first UE (and from other LTE
`
`8
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`Rel-8 UEs) on a first set of radio resources. Pet. 34–35 & n.7. Petitioner
`contends that “each LTE Rel-8 UE computes an ‘m’ value that identifies the
`physical resource blocks (PRBs) for its PUCCH, using PUCCH Format 1 or
`Format 2 defined in TS36.211.” Pet 35. Citing Dr. Kakaes, Petitioner states
`that “multiple UEs would share the same ‘m’ values and thus the same
`PUCCH radio resources (PRBs).” Pet. 36 (citing Ex. 1003 ¶¶ 130–134).
`Further, Petitioner states that “a BS would ‘reserve’ radio resources (PRBs)
`for use by certain groups of UEs by selectively configuring them with
`appropriate Format 1 or Format 2 parameters.” Pet. 36; accord Ex. 1003
`¶ 131 (Dr. Kakaes stating “a base station ‘reserves’ or ‘assigns’ physical
`radio resources (PRBs) for use by UEs by selectively configuring them with
`appropriate Format 1 or Format 2 parameters”).
`Patent Owner argues that none of the cited references “actually taught
`or suggested the use of a set of radio resources reserved for a UE scheduled
`to receive downlink transmissions only on a single downlink component
`carrier, as limitation 1.2 requires.” Prelim. Resp. 12; accord Prelim.
`Resp. 17–18 (arguing none of the references “teaches or suggests that a BS
`actually does ‘selectively configure[e] [UEs] with appropriate Format 1 or
`Format 2 parameters’ so that the BS receives uplink control information
`transmission on radio resources reserved for UEs based on the uplink
`component carriers those UEs have been scheduled on”). Patent Owner also
`presents “Patent Owner’s summation of the Petition’s allegations” (Prelim.
`Resp. 13–17 & n.4) and argues the Petition never alleges or provides
`evidence to show that the prior art taught a BS specifically manipulating the
`parameter assignments for the Format 1 and Format 2 calculations in order
`to ensure that certain groups of UEs that share some common criteria will
`
`9
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`end up calculating the same “m” values and thus share the same uplink radio
`resources. Prelim. Resp. 18.
`At this stage, and as discussed further below, we understand Petitioner
`to allege that Motorola in combination with TS36.211 and TS36.213 teaches
`or suggests a base station configured to send LTE Rel-8 UEs parameters that
`would result in these UEs arriving at “m” values reserved for groups of UEs
`scheduled to receive downlink transmissions on a single downlink
`component carrier. In particular, Petitioner argues that LTE Rel-8 UE
`computes an “m” value that identifies the PRBs for its PUCCH (Pet. 34–36),
`and that such “m” values would be common to LTE Rel-8 UEs and reserved
`by a LTE-Advanced BS for the LTE Rel-8 UEs. Pet. 36, 41–42 (citing
`Ex. 1003 ¶¶ 130–134, 141–146). Further, Petitioner separately states that a
`person of ordinary skill “would have understood that a [LTE-Advanced] BS
`would reserve a second set of radio resources for either a single or multiple
`LTE-A UEs.” Pet. 38–39 (citing Ex. 1007, 7; Ex. 1003 ¶¶ 131–134, 139).
`Patent Owner also argues that Petitioner fails to explain how the base
`station would actually set the values of the parameters that are inputs to the
`Format 1 and Format 2 formulas, “how those parameters are set in normal
`operation, what purpose they serve, or how the Format 1 and Format 2
`formulas are intended to affect the UE’s operation.” Prelim. Resp. 19.
`According to Patent Owner, “the Petition seems to operate on the
`assumption that the BS could set those parameter values in any arbitrary
`manner without any consequence beyond manipulating the UE’s ‘m’ value
`calculation.” Prelim. Resp. 19.
`At this stage, Petitioner has cited the testimony of Dr. Kakaes in
`support of Petitioner’s position that a person of ordinary skill would have
`
`10
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`understood that a base station can set the parameters to control the “m” value
`calculation, and that the base station uses parameters to “reserve” the PRBs;
`while Patent Owner intimates that there may be a negative consequence to
`certain settings of the parameters which would not allow this use, on the
`present record, we have before us only Petitioner’s details, based on
`Petitioner’s declarant’s testimony, regarding the use of the parameters as
`described. Pet. 16–19, 35–37 (citing Ex. 1003 ¶¶ 77–85, 128–134). Further,
`to the extent Patent Owner’s arguments turn on “[t]he Petition’s discussion
`of limitation 1.2” in isolation (Prelim. Resp. 18 (referring to “[t]he Petition’s
`discussion of limitation 1.2”), 19 (same)), we note that we read the Petition
`as a whole, recognizing context provided in Petitioner’s overall discussion of
`the prior art and claim limitations.
`Patent Owner also argues the Petition merely explains how “m”
`values are calculated and that it was merely theoretically possible to
`configure a BS to allocate specific parameters to arrive at the same “m”
`values and thus use the same PRBs. Prelim. Resp. 21–23. Further, Patent
`Owner argues that any UE could calculate any possible “m” value and that
`there is no reason why a single-carrier UE would not share the same uplink
`radio resources as a multi-carrier UE. Prelim. Resp. 22.
`We note those arguments currently amount to unsupported attorney
`argument and do not rebut effectively Petitioner’s showing on this record.
`See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
`argument in a brief cannot take the place of evidence.”). At this stage, we
`determine Petitioner has made a sufficient showing for this limitation for the
`purposes of institution.
`
`11
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`[1.3] receiving, on a second set of radio resources, control
`information associated with the downlink transmissions to the
`second user terminal, wherein the second set of radio resources
`is reserved for a user terminal scheduled to receive downlink
`transmissions on multiple downlink component carriers or on a
`downlink component carrier associated with a non-primary
`cell, the first and second sets of radio resources being on a
`same uplink component carrier associated with the primary
`cell.
`Petitioner argues the combined teachings of the proffered references
`renders this limitation obvious. Petitioner states that a person of ordinary
`skill “would have understood that a BS would reserve a second set of radio
`resources for either a single or multiple LTE-A UEs.” Pet. 39 (citing
`Ex. 1003 ¶¶ 131–134, 139). According to Petitioner, “[a] BS would reserve
`the second set of radio resources by sending the UEs parameters that would
`result in the UEs arriving at the same ‘m’ values when compared to using an
`appropriate LTE-Advanced PUCCH format.” Pet. 39 (citing Ex. 1003
`¶¶ 131–134, 139). Further, Petitioner states that “[t]he BS has full control of
`those format parameters (regardless of formats, such as PUCCH Format 1
`and Format 2 specified in TS36.211, or other newly defined Formats) and
`thus ensures that only certain LTE-Advanced UEs share the same PRBs by
`sending only to those UEs parameters that result in the same ‘m.’” Pet. 39
`(citing Ex. 1003 ¶¶ 139–140).
`Patent Owner first argues Motorola does not show or explain any
`uplink radio resources reserved specifically for UEs operating in carrier
`aggregation mode as opposed to those operating in single carrier mode.
`Prelim. Resp. 23–24. Further, Patent Owner argues there is no reason that a
`single-carrier UE would not share the same uplink resources shown in
`Motorola’s Figure 4 with multiple UEs and Motorola’s Figure 4 does not
`
`12
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`show or state that different sets of radio resources are reserved for multi-
`carrier and single-carrier user terminals. Prelim. Resp. 24 (citing Ex. 1005,
`131).
`On this record, Patent Owner’s argument that there is no reason
`single-carrier UEs would not share the same uplink resources with multi-
`carrier UEs amounts to attorney argument. Contrary to Patent Owner’s
`argument, citing Dr. Kakaes’s Declaration, Petitioner argues a person of
`ordinary skill “would have understood that a BS would reserve a second set
`of radio resources for either a single or multiple LTE-A UEs.” Pet. 39
`(citing Ex. 1003 ¶¶ 131–134, 139). And as discussed further below,
`Petitioner and Dr. Kakaes advance reasons that a person of ordinary skill
`would have reserved separate pools of “m” values and corresponding PRBs
`for single-carrier UEs and multi-carrier UEs. See Pet. 41–44.
`Patent Owner also argues Petitioner fails to show any motivation for a
`person of ordinary skill to configure a BS such that user equipment arrives at
`the same “m” values reserved for LTE-A UEs. Prelim. Resp. 23–25.
`Further, Patent Owner contends Petitioner’s stated reasons for combining the
`references are generic and merely state what a person of ordinary skill could
`have done, not what a person of ordinary skill would have been motivated to
`do. Prelim. Resp. 26–28. Patent Owner contends Petitioner’s arguments
`relating to new PUCCH formats that do not exist but purportedly would
`have been created by a person of ordinary skill lack adequate motivation for
`such a “highly complex and contorted obviousness modification.” Prelim.
`Resp. 29–35.
`At this stage, we determine Petitioner’s contentions and reasons for
`modifying the references’ combined teachings are adequately supported for
`
`13
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`the purposes of institution. Among other things, Petitioner contends the
`PUCCH structure of LTE Rel-8 is “flexible and extensible” and that
`“PUCCH Format 1 and Format 2 are completely component carrier-
`agnostic” such that “LTE Rel-8 UEs use PUCCH Format 1 or Format 2 to
`determine the PUCCH ‘m’ value when operating in any LTE Rel-8
`compatible component carrier.” Pet. 19. With supporting testimony from
`Dr. Kakaes, Petitioner contends a person of ordinary skill “would have
`understood that a BS would reserve a second set of radio resources for either
`a single or multiple LTE-A UEs” and that a base station has full control of
`the format parameters UEs use to arrive at “m” values. Pet. 39 (citing
`Ex. 1003 ¶¶ 139–140). Similarly, Petitioner argues “to facilitate network
`management, a BS would want to reserve a pool of ‘m’ values (and thus
`corresponding PRBs) for use by UEs operating in non-carrier aggregation
`mode (single DL carrier) and reserve another pool of ‘m’ values for use by
`UEs operating in LTE-Advanced carrier-aggregation mode (multiple DL
`component carriers).” Pet. 41 (citing Ex. 1003 ¶¶ 141–146). Petitioner also
`contends that reserving pools of “m” values would avoid “disruption risks
`using existing tools and techniques” and “facilitates the introduction of new
`tools and techniques into the network to better service more advance UEs
`that operate in the new LTE-Advanced carrier aggregation mode.” Pet. 41–
`42. Petitioner also presents argument and textbook evidence of what
`Petitioner contends are similar configurations to the parameters for
`calculating “m” in PUCCH Format 1 and Format 2. Pet. 42–44 (citing
`Ex. 1003 ¶¶ 89–95, 109–111, 146; Ex. 1015,6 97–98, Fig. 5.19).
`
`
`6 Harri Holma et al., LTE for UMTS – OFDMA and SC-FDMA Based Radio
`Access, John Wiley & Sons (2009).
`
`14
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`At this stage, we determine Petitioner has made a sufficient showing
`for this limitation for the purposes of institution.
`
`Conclusion
`2.
`For the reasons explained above, we determine Petitioner has shown a
`reasonable likelihood that it would prevail in its challenge to the
`patentability of claim 1. The Petition also includes a clam-by-claim,
`limitation-by-limitation comparison of claims 2–11, 15–27, and 33–41 to the
`combined teachings of Motorola, TS36.211, and TS36.213, and in the
`alternative, to the combined teachings of Motorola, TS36.211, TS36.213,
`and TR36.912. Pet. 44–80. Patent Owner does not address Petitioner’s
`showings of those claims beyond the arguments advanced for claim 1,
`addressed above.
`E. Conclusion
`On the current record, we determine Petitioner has shown a
`reasonable likelihood that it will prevail in its challenge to at least one claim
`of the ’044 patent. Accordingly, we institute an inter partes review of
`the ’044 patent.
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1–11, 15–27, and 33–41 of the ’044 patent
`on all grounds asserted in the Petition; and
`
`15
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is given of the institution of a trial, which
`commences on the entry date of this Decision.
`
`
`
`
`
`16
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`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:
`Peter Knops
`Jason Wejnert
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipc.com
`
`17
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
