Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: May 22, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-MOBILE USA, INC., AT&T SERVICES INC.,
`AT&T MOBILITY LLC, AT&T CORPORATION,
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`NOKIA OF AMERICA CORPORATION, AND ERICSSON INC.,
`Petitioner,
`v.
`COBBLESTONE WIRELESS LLC,
`Patent Owner.
`
`IPR2024-00137
`Patent 9,094,888 B2
`
`
`
`
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`
`
`Before BARBARA A. PARVIS, NATHAN A. ENGELS, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: May 22, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-MOBILE USA, INC., AT&T SERVICES INC.,
`AT&T MOBILITY LLC, AT&T CORPORATION,
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`NOKIA OF AMERICA CORPORATION, AND ERICSSON INC.,
`Petitioner,
`v.
`COBBLESTONE WIRELESS LLC,
`Patent Owner.
`
`IPR2024-00137
`Patent 9,094,888 B2
`
`
`
`
`
`
`
`
`
`Before BARBARA A. PARVIS, NATHAN A. ENGELS, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2024-00137
`Patent 9,094,888 B2
`
`
`I.
`INTRODUCTION
`T-Mobile USA, Inc., AT&T Services, Inc., AT&T Mobility LLC,
`AT&T Corporation, Cellco Partnership d/b/a Verizon Wireless, Nokia of
`America Corporation, and Ericsson Inc. (collectively, “Petitioner”) filed a
`Petition (Paper 1 (“Pet.”)) requesting inter partes review of claims 9, 10, 12,
`20, 21, and 23 (“challenged claims”) of U.S. Patent No. 9,094,888 B2
`(Ex. 1001, “the ’888 patent”). Cobblestone Wireless LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). With
`authorization, Petitioner filed a Preliminary Reply (Paper 13 (“Prelim.
`Reply”)), and Patent Owner filed a Preliminary Sur-reply (Paper 14
`(“Prelim. Sur-reply”)).
`We have authority to determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes
`review if “the information presented in the petition . . . and any response . . .
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
`Upon consideration of the contentions and the evidence of record at
`this preliminary stage, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing on at least one of the challenged claims
`of the ’888 patent. Accordingly, we grant Petitioner’s request and institute
`an inter partes review of all challenged claims of the ’888 patent and with
`respect to all grounds set forth in the Petition.
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`II.
`BACKGROUND
`Real Parties in Interest
`A.
`Petitioner identifies T-Mobile USA, Inc., AT&T Services, Inc.,
`AT&T Mobility LLC, AT&T Corporation, Cellco Partnership d/b/a Verizon
`Wireless, Nokia of America Corporation, and Ericsson Inc. Pet. 2–3.
`Petitioner also identifies Samsung Electronics Co., Ltd., because it is named
`as a defendant and its products are accused of infringement in a related
`district court litigation. Id. at 3. Patent Owner names itself as the real party
`in interest. Paper 9, 2.
`
`Related Matters
`B.
`Both parties identify, as matters involving or related to the ’888
`patent, the following district court proceedings: Cobblestone Wireless, LLC
`v. T-Mobile USA, Inc., No. 2:22-cv-00477 (E.D. Tex.) (identified as the
`“LEAD CASE” (Ex. 1012) and referred to herein as the “parallel district
`court case”); Cobblestone Wireless, LLC v. Cellco Partnership d/b/a Verizon
`Wireless, No. 2:22-cv-00478 (E.D. Tex.); Cobblestone Wireless, LLC v.
`AT&T Inc., No. 2:22-cv-00474 (E.D. Tex.); and Cobblestone Wireless, LLC
`v. Samsung Electronics Co., No. 2:23-cv-00285 (E.D. Tex.). Pet. 3–4;
`Paper 9, 2. Also, Samsung Electronics America, Inc. filed a petition on
`December 18, 2023, challenging the ’888 patent in IPR2024-00315.
`
`The ’888 Patent
`C.
`The ’888 patent is titled “Wireless Device Handoff Between Wireless
`Networks.” Ex. 1001, code (54). The ’888 patent describes “example
`methods to be implemented at a first wireless network to handoff a wireless
`device to a second wireless network.” Id. at 1:38–40. One embodiment of a
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`wireless communication system including two wireless networks is
`illustrated in Figure 1A. Id. at 2:59–60.
`
`
`
`Figure 1A, above, illustrates wireless communication system 100 that
`includes wireless networks 110 and 120. Id. at 4:1–2. As shown in Figure
`1A, wireless network 110 includes coverage manager 112 and antenna array
`114. Id. at 4:2–4. Wireless network 120 includes adaption manager 122 and
`antenna array 124. Id. at 4:4–6.
`Wireless network 110 has a coverage area indicated in Figure 1A as
`coverage area 115. Id. at 4:6–8. Antenna array 124 of wireless network 120
`is adaptable via beamforming to enable wireless network 120 to have
`variable coverage areas shown in Figure 1A as coverage area 125-1 and
`coverage area 125-2. Id. at 4:8–12. As a result of the variable coverage
`areas, wireless device 130A is within past coverage area 125-1, but outside
`of current coverage area 125-2. Id. at 5:35–38. Thus, although wireless
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`device 130A is not currently covered by wireless network 120, past coverage
`area 125-1 indicates that network 120 may be capable of providing
`coverage. Id. at 5:38–41.
`Coverage manager 112 is configured to determine whether wireless
`device 130A is capable of being covered by wireless network 120. Id. at
`6:1–4. It may be determined that wireless device 130A and/or wireless
`network 110 would benefit from the handoff of wireless device 130A to
`wireless network 120. Id. at 6:6–9. For example, wireless device 130A may
`obtain a stronger signal from wireless network 120, or wireless device 130A
`may be moving towards wireless network 120 and away from wireless
`network 110. Id. at 6:9–16. Coverage manager 112 transmits a handoff
`request to wireless network 120. Id. at 6:21–24. Adaption manager 122 of
`wireless network 120 receives the handoff request and determines whether
`to adapt antenna array 124 to facilitate coverage of wireless device 130A. Id.
`at 6:26–30. If a determination is made to adapt antenna array 124, adaption
`manager 122 transmits a confirmation to indicate acceptance of the handoff
`request. Id. at 6:30–33. The coverage area for wireless network 120 is now
`similar to coverage area 125-1 and wireless device 130A is then handed off
`from wireless network 110 to wireless network 120. Id. at 6:33–37.
`
`Illustrative Claim
`D.
`Petitioner challenges claims 9, 10, 12, 20, 21, and 23 of the ’888
`patent. Pet. 6. Claims 9 and 20 are the only independent challenged claims.
`Claims 10 and 12 depend directly from claim 9 and claims 21 and 23 depend
`directly from claim 20. Independent claims 9 and 20, reproduced below, are
`illustrative of the claimed subject matter.
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`Patent 9,094,888 B2
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`[9.p1] A method implemented at a first wireless network
`9.
`for a mobile wireless device handoff between a second wireless
`network and the first wireless network, the method comprising:
`[9.a] receiving a handoff request from the second wireless
`network, the handoff request based, at least in part, on a
`determination by the second wireless network that the
`wireless device is not currently covered by the first
`wireless network but is capable of being covered by the
`first wireless network;
`[9.b] based, at least in part, on the handoff request, adapting one
`or more beams of an antenna array to facilitate coverage
`of the wireless device by the first wireless network; and
`[9.c] transmitting a confirmation from the first wireless network
`to the second wireless network to indicate acceptance of
`the handoff request, wherein the wireless device is handed
`off from the second wireless network to the first wireless
`network.
`Ex. 1001, 18:30–49.
`20.
`[20.p] A system for a wireless device handoff between a
`first wireless network and a second wireless network, the system
`comprising:
`[20.a] an antenna array configured to generate one or more
`adaptable beams to modify a coverage area for the first
`wireless network; and
`[20.b] an adaption manager having logic, the logic configured to:
`[20.c] receive a handoff request from the second wireless
`network, the handoff request based, at least in part, on
`a determination by the second wireless network that the
`wireless device is capable of being covered by the first
`wireless network,
`[20.d] cause a beam from among the one or more adaptable
`beams to be adapted in order to enable the wireless
`device to be covered by the first wireless network, and
`
`1 Herein we use Petitioner’s designations for the limitations of claims 9 and
`20. Pet. 25–51, 56–59.
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`[20.e] transmit a confirmation to the second wireless network
`to indicate acceptance of the handoff request, wherein
`the wireless device is handed off from the second
`wireless network to the first wireless network.
`Ex. 1001, 19:59–20:10.
`
`TS 36.300
`
`Evidence
`E.
`Petitioner relies on the prior art references in the table below.
`Name
`Reference
`Exhibit
`Chitrapu
`US 2006/0111149 A1, filed Dec. 22, 2005,
`1003
`published May 25, 2006
`3rd Generation Partnership Project
`(3GPP); Technical Specification (TS)
`36.300 V10.3.0
`Petitioner also relies on the Declaration of Mr. James A. Proctor
`
`(Ex. 1005) to support its contentions that the challenged claims are
`unpatentable. Patent Owner does not rely on declarant testimony at this early
`stage in the proceeding.
`
`1223
`
`Asserted Ground
`F.
`Petitioner asserts that the challenged claims of the ’888 patent are
`unpatentable based on the ground in the table below (Pet. 6):
`Claims Challenged
`35 U.S.C. §2
`Reference/Basis
`9, 10, 12, 20, 21, 23
`103(a)
`Chitrapu, TS 36.300
`
`
`
`III. DISCRETIONARY DENIAL OF THE PETITION
`Patent Owner argues we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review in view of the
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the challenged claims of the ’888 patent have an apparent effective
`filing date before March 16, 2013, the pre-AIA version of § 103 applies.
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`parallel district court case. Prelim. Resp. 23–38; Prelim. Sur-reply. Petitioner
`disagrees. Pet. 61–63; Prelim. Reply. We address the parties’ arguments
`regarding discretionary denial below.
`Under Section 314(a), the Director has discretion to deny institution.
`See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter
`partes review to be instituted unless the Director determines 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”) (emphasis added); SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with
`discretion on the question whether to institute review.” (emphasis omitted));
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to
`institute an IPR proceeding.”).
`
`In determining whether to exercise this discretion based on a related
`litigation, the Board assesses all relevant circumstances, including the
`merits, to balance considerations such as system efficiency, fairness, and
`patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co. v. Intri-
`Plex Techs., Inc., IPR2018-00752, Paper 8, 19–20 (PTAB Sept. 12, 2018)
`(precedential). We consider six factors as part of this balanced assessment
`when determining whether to use our discretion to deny institution:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11, 5–6. In evaluating these factors, we “take[] a holistic view
`of whether efficiency and integrity of the system are best served by denying
`or instituting review.” Id. at 6.
`On June 21, 2022, the Director issued an Interim Procedure for
`Discretionary Denials in AIA Post-Grant Proceedings with Parallel District
`Court Litigation (“Interim Fintiv Guidance”).3 The Interim Fintiv Guidance
`provides “several clarifications” to “the PTAB’s current application of Fintiv
`to discretionary institution where there is parallel litigation” in response to
`comments received from stakeholders in response to a Request for
`Comments. Interim Fintiv Guidance 2.
`In the analysis that follows, we first consider whether Fintiv factors 1–
`5 weigh in favor of exercising our discretion to deny institution. For the
`reasons discussed below, we conclude that Fintiv factors 1–5 weigh in favor
`of denying institution. Because Fintiv factors 1–5 favor denial of institution,
`we must also determine whether the Petition presents compelling merits. See
`
`
`3 The Interim Fintiv Guidance is available at https://www.uspto.gov/sites/
`default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis
`trict_court_litigation_memo_
`20220621_.pdf.
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`CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23, 5
`(PTAB Feb. 27, 2023) (precedential) (“In circumstances where . . . the
`Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board
`shall then assess compelling merits.”). “Compelling, meritorious challenges
`are those in which the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a preponderance of
`the evidence.” Interim Fintiv Guidance 4. “A challenge can only ‘plainly
`lead to a conclusion that one or more claims are unpatentable’ (id.) if it is
`highly likely that the petitioner would prevail with respect to at least one
`challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-
`01064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).
`“[A] determination of ‘compelling’ merits should not be taken as a signal to
`the ultimate conclusion after trial.” Id.
`
`Fintiv Factor 1: Stay in the Parallel Proceeding
`A.
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Fintiv, Paper 11, 6. Patent Owner contends that this factor weighs in favor of
`denial because “no stay of the parallel district court litigation has been
`granted, and a stay is unlikely given the advanced stage of the case.” Prelim.
`Resp. 24. Petitioner argues that neither party has requested a stay in the
`parallel district court case, and this factor should be considered neutral. Pet.
`61.
`
`We will not attempt to predict how the district court in the parallel
`district court case would proceed if a stay is requested because the court may
`determine whether or not to stay any individual case based on a variety of
`circumstances and facts beyond our control and to which the Board is not
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`privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC,
`IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative) (“Sand
`Revolution”). Accordingly, we find that factor 1 is neutral.
`
`Fintiv Factor 2: Trial Date in the Parallel Proceeding
`B.
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11, 6. Petitioner states that trial in the
`parallel district court case “is not set to begin until at least September 23,
`2024.” Pet. 61 (citing Ex. 1012, 1). Petitioner argues it moved to consolidate
`the parallel district court case with a later district court case and that trial in
`the later district court case is set to occur in May 2025. Prelim. Reply 4.
`Petitioner argues that factor 2 weighs “against discretionary denial based on
`the potential for an extended district court schedule and trial date.” Id.
`Patent Owner states that “the district court trial is set to occur over
`eight months before the deadline for a final written decision,” which Patent
`Owner argues “weighs heavily in favor of discretionary denial.” Prelim.
`Resp. 27. Patent Owner also argues that the “timeframe set by the district
`court is consistent with the Federal Court Management Statistics for the
`Eastern District of Texas.” Id.
`Patent Owner argues that Petitioner’s consolidation motion “is
`unlikely to be granted” because “there are no overlapping patents, patent
`families, inventors, or claim construction issues,” “the accused
`functionalities differ,” and “consolidation would result in an eight-month
`trial delay.” Prelim. Sur-reply 1. Patent Owner argues “Judge Gilstrap sua
`sponte consolidated the Carrier 1.0 Cases with one another (Ex. 1230) and
`the Carrier 2.0 Cases with one another (Ex. 1231),” but instead of
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`“consolidat[ing] the Carrier 1.0 and 2.0 Cases,” Judge Gilstrap “issued
`separate scheduling orders with differing trial dates.” Id. at 2.4
`We will not attempt to predict how the district court in the parallel
`district court case will decide the pending consolidation motion. Cf. Sand
`Revolution, Paper 24, 7. Because the deadline for our final written decision
`is approximately eight months after the current trial date in the parallel
`district court case, we find that factor 2 weighs in favor of exercising
`discretion to deny institution.
`
`Fintiv Factor 3: Investment by the Court and the Parties in the
`C.
`Parallel Proceeding
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties.” Fintiv, Paper 11, 6.
`Petitioner argues factor 3 “weighs heavily against discretionary denial”
`because the parallel district court case “is still in the preliminary stages,”
`“Claim Construction is not scheduled until April 30, 2024,” and “a claim
`construction order will not issue prior to the PTAB’s projected institution
`date.” Pet. 61–62. Regarding invalidity, Petitioner acknowledges that
`“invalidity contentions [have been filed].” Id. at 62. Regarding diligence,
`Petitioner argues that it “diligently prepared this Petition and filed well in
`advance of the statutory deadline, which weighs against denying institution.”
`Id.
`
`
`4 The Carrier 1.0 cases are identified as the parallel district court case and
`Cobblestone Wireless, LLC v. Cellco Partnership d/b/a Verizon Wireless,
`No. 2:22-cv-00478 (E.D. Tex.). Ex. 1230. Carrier 2.0 cases are identified as
`Cobblestone Wireless, LLC v. Cellco Partnership d/b/a Verizon Wireless,
`No. 2:23-cv-00382 (E.D. Tex.), Cobblestone Wireless, LLC v. AT&T
`Services Inc., No. 2:23-cv-00380 (E.D. Tex.); and Cobblestone Wireless,
`LLC v. T-Mobile USA, Inc., No. 2:23-cv-00381 (E.D. Tex.). Ex. 1231.
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`Patent Owner argues “the parties and the district court will have
`invested significant time and resources” in the parallel district court case and
`that the case will be “far along” at the time of institution. Prelim. Resp. 32.
`Patent Owner argues, “an order resulting from the May 2, 2024 Markman
`hearing (Ex. 2001) will likely issue” prior to May 29, 2024, and fact
`discovery and the exchange of opening expert reports also will be completed
`prior to May 29, 2024. Id. at 30–31. Regarding invalidity, Patent Owner
`argues that, in view of the schedule of the parallel district court case,
`“[r]ealistically, Patent Owner and its expert will have to begin work on the
`rebuttal report before receiving the institution decision.” Id. at 31. Regarding
`diligence, Patent Owner argues Petitioner “unduly delayed in filing their
`Petition, filing just a month before the statutory deadline.” Id. at 32.
`Because the Markman hearing will be completed prior to the time of
`the institution decision and the parties have invested resources on invalidity,
`including that Patent Owner will have begun work on its rebuttal report on
`invalidity, we find that factor 3 weighs in favor of exercising discretion to
`deny institution.
`
`Fintiv Factor 4: Overlap Between Issues Raised in the Petition
`D.
`and Parallel Proceeding
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11,
`6. The Petition states that “if instituted, Petitioners stipulate that they will
`not pursue invalidity against the asserted claims in the district court using
`the specific combination of prior art references set forth in the grounds
`presented in this Petition for purposes of establishing obviousness.” Pet. 62.
`Patent Owner argues that the fourth Fintiv factor favors institution despite
`Petitioner’s stipulation. Prelim. Sur-reply 5. In particular, Patent Owner
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`asserts that Petitioner’s “limited” stipulation “does not alleviate inefficiency
`concerns.” Prelim. Resp. 35.
`Petitioner’s stipulation that it will not rely on the grounds asserted in
`the Petition in the parallel district court case mitigates to at least some
`degree concerns of duplicative efforts and potentially conflicting decisions.
`See Sand Revolution, Paper 24, 12. Thus, we find that factor 4 weighs
`marginally against exercising discretion to deny institution.
`
`Fintiv Factor 5: Whether Petitioner is the Defendant in the
`E.
`Parallel Proceeding
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11, 6. Petitioner acknowledges “overlapping parties” and argues factor
`5 is neutral. Pet. 62. Patent Owner argues “Petitioners are the defendants and
`intervenors in the parallel litigation” and, therefore, factor 5 weighs in favor
`of exercising discretion to deny institution. Prelim. Resp. 37.
`In light of the Board’s deadline for a Final Written Decision and the
`current trial date in the parallel district court case, we find that factor 5
`weighs in favor of exercising discretion to deny institution.
`
`Fintiv Factor 6: Other Considerations
`F.
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11, 6. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh
`in favor of discretionary denial of institution, and factor 4 weighs marginally
`against discretionary denial. We take “a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.”
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`Id. On balance, we conclude that the evidence of record on factors 1–5
`favors exercising our discretion to deny institution of an inter partes review.
`Following CommScope, where, as here, our analysis of the first five
`Fintiv factors favors denial of institution, we address the merits of the
`Petition to determine whether, on this preliminary record, the merits are
`compelling. CommScope, Paper 23, 4–5; Interim Fintiv Guidance 3–5.
`“Compelling, meritorious challenges are those in which the evidence, if
`unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Interim Fintiv
`Guidance 4. “A challenge can only ‘plainly lead to a conclusion that one or
`more claims are unpatentable’ (id.) if it is highly likely that the petitioner
`would prevail with respect to at least one challenged claim.” OpenSky, Paper
`102, 49–50. As the Director explains in OpenSky, however, this finding
`“should not be taken as a signal to the ultimate conclusion after trial”
`because “all relevant evidence likely will not have been adduced at the point
`of institution [and] trial should produce additional evidence that may support
`a determination in the Final Written Decision that unpatentability has not
`been adequately proven.” Id.
`We determine, on this preliminary record, that the merits here are
`compelling. As discussed in our analysis below, Petitioner presents a
`detailed limitation-by-limitation comparison of independent claim 9 to the
`cited prior art, with extensive citations to the prior art and supporting
`testimony in the Declaration of Mr. Proctor. Pet. 25–51; Ex. 1005 ¶¶ 65,
`100–101, 114–183. Petitioner also provides a compelling, evidence-
`supported rationale for combining the teachings of Chitrapu and TS 36.300.
`See infra § IV.D.3.a. For instance, Petitioner argues that the primary
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`reference “explicitly suggests a POSITA[5] look to 3GPP standards” (Pet.
`25–26 (citing Ex. 1003 ¶ 7; Ex. 1005 ¶ 117)) and the secondary reference is
`a 3GPP Technical Specification (Ex. 1223, 1). Petitioner’s argument is
`supported by Chitrapu and TS 36.300, respectively. See Ex. 1003 ¶ 7
`(describing systems “constructed in accordance with current specifications
`of the 3rd Generation Partnership Program”); Ex. 1223 (describing that
`“[t]his technical Specification has been produced by the 3rd Generation
`Partnership Project”). At this stage, Patent Owner disputes Petitioner’s
`argument for only one limitation of claim 9 (Prelim. Resp. 8–20) and we
`find Patent Owner’s dispute does not undermine Petitioner’s showing on the
`current record. See infra § IV.D.3.c. For these reasons and the reasons
`discussed further below (see § IV.D.3), based on the record before us, we
`determine the Petition presents a compelling, meritorious challenge for
`independent claim 9. We, therefore, determine the facts of this case do not
`warrant discretionary denial.
`
`IV. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person of ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`
`
`5 POSITA means person of ordinary skill in the art.
`
`16
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`Patent 9,094,888 B2
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`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness, i.e., secondary considerations.6 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art
`would have had at least a bachelor’s degree in electrical
`engineering, computer engineering, computer science, physics,
`or the equivalent, and at least two years of experience working
`in the field. Ex. 1005, ¶41. Relevant working experience would
`include experience with telecommunications and networking,
`radio-access network architectures, protocols and signal
`propagation, and including handovers in wireless networks.
`Ex. 1005, ¶41. More education can supplement practical
`experience and vice versa. Ex. 1005, ¶41.
`Pet. 7 (citing Ex. 1005 ¶ 41).
`Petitioner’s proposal is undisputed at this early juncture. Prelim.
`Resp. 6. For purposes of this Decision, and based on the current record, we
`adopt Petitioner’s assessment of the level of skill for one of ordinary skill in
`the art, except we decline to adopt “at least” as that language is vague and
`open-ended. Otherwise, we find, based on the preliminary record before us,
`that Petitioner’s proposed definition is consistent with the level of skill
`reflected in the specification of the ’888 patent and the asserted prior art
`references.
`
`Claim Construction
`C.
`We interpret the challenged 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),
`
`6 Neither party presents objective evidence of nonobviousness at this stage
`of the proceeding.
`
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`
`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). Under this standard, the words of a claim generally
`are given their “ordinary and customary meaning,” which is the meaning the
`term would have had to a person of ordinary skill at the time of the
`invention, in the context of the entire patent including the specification.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`“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 Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`Petitioner states, “[u]nless otherwise indicated in the discussion of the
`limitations below,” Petitioner believes the terms of the ’888 patent “should
`be given their plain and ordinary meaning under the Phillips standard.”
`Pet. 13. Patent Owner states that in its view, “there does not appear to be any
`express claim constructions set out anywhere in the Petition.” Prelim.
`Resp. 7. Patent Owner also states “[f]or purposes of this preliminary
`response only, Patent Owner agrees that no formal claim construction is
`necessary and the plain and ordinary meaning under the Phillips standard
`should apply to all claim terms and phrases.” Id.
`We agree with Patent Owner. For purposes of this decision, we use
`the plain and ordinary meaning of the terms of the claims. Based on the
`record before us at this early juncture, we need not make express
`determinations regarding claim construction to resolve a dispute between the
`parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir.
`
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`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)).
`
`Asserted Obviousness over Chitrapu and TS 36.300
`D.
`Petitioner argues that claims 9, 10, 12, 20, 21, and 23 are unpatentable
`as obvious over Chitrapu and TS 36.300. Pet. 6, 25–60. At this early
`juncture, Patent Owner disputes only Petitioner’s arguments relating to
`limitation 9.a. Prelim. Resp. 8–20. We begin with an overview of Chitrapu
`and TS 36.300 and then turn to the parties’ arguments.
`
`Chitrapu
`1.
`Chitrapu is titled “System and Method Utilizing Dynamic Beam
`Forming for Wireless Communication Signals.” Ex. 1003, code (54).
`Chitrapu “relates to a method and system using dynamic beam forming for
`wireless communication signal transmissions and/or receptions in a wireless
`network.” Id. ¶ 2.
`Chitrapu describes that “[a]s the UE [user equipment] moves, the
`characteristics of the RF [radio frequency] link change and the received
`signal quality at UE and/or the cell tower may be reduced, causing a
`handover consideration process to be triggered.” Id. ¶ 105. Figure 8
`illustrates a UE moving from one cell to another. Id. ¶ 67.
`
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`Figure 8, above, illustrates a handover scenario in which a UE is conducting
`a communication with a base station BS1 in one cell and is moving toward
`an adjacent cell, which is serviced by a different base station BS2. Id. ¶¶ 67,
`105.
`
`One embodiment for a process for conducting a “smart” handover is
`illustrated in Figure 11. Id. ¶ 108.
`
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`Figure 11, above, illustrates a flow chart of a process for conducting a
`“smart” handover with beam forming base stations, which may result in no
`handover being made.
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