Trials@uspto.gov
`$71-272-7822
`
`Paper No. 8
`Date: February 23, 20015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`ov.
`
`INTELLECTUAL VENTURES IT LLC,
`Patent Owner.
`
`Case IPR2014-01330
`Patent 8,310,993 B2
`
`Before BRIAN J. MCNAMARA, DAVID C. McKONE,and
`JASONJ. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`$71-272-7822
`
`Paper No. 8
`Date: February 23, 20015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`ov.
`
`INTELLECTUAL VENTURES IT LLC,
`Patent Owner.
`
`Case IPR2014-01330
`Patent 8,310,993 B2
`
`Before BRIAN J. MCNAMARA, DAVID C. McKONE,and
`JASONJ. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`I.
`
`INTRODUCTION
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`fileda Petition (“Pet.”) for interpartes reviewof claims 1-12 ofU.S. Patent
`No.8,310,993 (“the ’993 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311-
`
`319. Paper 3. Intellectual Ventures II LLC (“Patent Owner’’)filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 6. We havejurisdiction
`
`under 35 U.S.C. § 314, which provides that an inter partes review may be
`
`instituted only if “the information presented in the petition .. . and any
`
`. showsthat there is a reasonable likelihood that the petitioner
`response. .
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Petitioner challenges the patentability of claims 1-12 of the ’993
`patent under 35 U.S.C. §§ 102 and 103. Upon consideration of the Petition
`
`and Preliminary Response, we determinethat Petitioner has demonstrated .
`
`that there is a reasonable likelihood that Petitioner would prevail in showing
`
`that claims 1-12 are unpatentable. Pursuant to 35 U.S.C. § 314, we
`authorize an interpartes review to be instituted as to claims 1—12 of the ’993
`patent.
`
`A.
`The ’993 Patent
`The °993 patentrelates generally to packet data transmission in a
`
`wireless communication system. Ex. 1001, 1:15—19. According to the ’993
`patent, what the patentrefers to as “transfer communication protocol” or
`“TCP” data segments are buffered in downlink (“DL”) TCP transmissions.
`
`Ex. 1001, 4:57-60. The buffered TCP data segments are transmitted from
`
`the buffer to the user equipment (“UE”). Ex. 1001, 4:60—63; Fig. 5. As the
`
`TCP segments are transmitted from the buffer, a counting logic counts a
`
`2
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`IPR2014-01330 —
`Patent 8,310,993 B2
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`numberof transmitted TCP segments that are transmitted to the UE.
`
`Ex. 1001, 5:4~-7. The counting logic ensures that when a second segmentis
`sent,-uplink (“UL”) resources are allocated. Ex. 1001, 5:8—12; Fig. 5. After
`the UL resourcesare allocated and the DL messageis processed, a stand-
`alone acknowledgement (“ACK”)message is transmitted in the UL. Ex.
`1001, 5:36—39; Fig. 5.
`
`Related Matters
`B.
`.
`Petitioner identifies the following related district court proceedings:
`Intellectual Ventures II LLC v. AT&T Mobility LLC, Case No.1-13-
`
`- cv-01668-UNA(D. Del.), filed October 7, 2013. Pet. 1.
`Intellectual Ventures II LLC v. Leap Wireless InternationalInc., Case
`
`No. 1-13-cv-01669-UNA (D.Del.), filed October 7, 2013. Pet. 1.
`Intellectual Ventures II LLC v. Nextel Operations Inc., Case No. 1-13-
`
`cv-01670-UNA (D. Del.), filed October 7, 2013. Pet. 1.
`
`-
`
`Intellectual Ventures II LLC v. T-Mobile USA Inc., Case No. 1-13-cv-
`
`|
`01671-UNA (D.Del.), filed October 7, 2013. Pet. 1.
`Intellectual Ventures IT LLC v. United States Cellular Corp., Case No.
`
`1-13-cv-01672-UNA(D.Del.), filed October 7, 2013. Pet. 1.
`
`C.
`
`Illustrative Claim
`
`Independentclaim 1 is reproduced below:
`
`A wireless network comprising:
`1.
`a circuit
`located in the wireless network, wherein the
`circuit buffers segments of transfer communication
`protocol
`(TCP)
`data
`for
`downlink (DL)
`transmission;
`a transmitter arranged to transmit the buffered segments
`of TCP data to a user equipment (UE);
`5
`
`3
`
`
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`IPR2014-01330
`Patent 8,310,993 B2
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`the circuit is further configured to count a number of
`transmitted segments of TCP data;
`.wherein the circuit is further configured, in response to
`the count exceeding a predetermined number, to
`transmit a message that indicates an allocation of
`uplink resources to transfer an uplink segment and
`the allocation of uplink resources is sufficient to
`have information indicating acknowledgment; and
`wherein the circuit is further configured to receive,
`in
`response to the uplink resources,
`the uplink
`segment which includes the information indicating
`acknowledgment of receipt of the transmitted
`segments of TCP data.
`
`D._Prior Art References Applied by Petitioner
`
`Petitioner challenges the patentability of claims 1—12 on the basis of
`
`the following itemsofpriorart:
`
`US 8,310,993 B2, Applicant’s Admitted Prior Art (Ex. 1001,
`“AAPA”)
`|
`Nov.13, 2012
`
`Aug. 21, 2007
`US 7,260,073 B2 (Ex. 1007, “Sipola”)
`US 2005/0054347 Al (Ex. 1008, “Kakani’’?) Mar. 10, 2005
`US 8,005,481 B2 (Ex. 1009, “Bergstrom”) Aug. 23, 2011
`US 7,706,274 B2 (Ex. 1010, “Koning”’)
`Apr. 27, 2010
`US 8,572,250 B2 (Ex. 1011, “Rinne’’)
`Oct. 29, 2013
`E.
`The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth Petitioner’s
`contentions of unpatentability of claims 1—12 of the °993 patent based on the
`
`following specific grounds (Pet. 10-60):
`
`
`
`Sipola, Bergstrom, and
`
`
`
`
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`IPR2014-01330
`Patent 8,310,993 B2
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`
`
`
`
`_ Sipola, Bergstrom,
`3 and 9
`§ 103(a)
`AAPA,and Rinne
`
`
`AAPA Makanane § 103(a)|1, 2, 4-8, and 10-12
`
`
`
`AAPA’ Bergstrom, and | § 103(a)_|1,2, 4-8, and 10-12
`
`
`
`
`Koning, Bergstrom,
`sAPAandRime”|10%
`
`Sipola, Kakani, AAPA,
`
`19
`
`I.
`ANALYSIS
`Weturn nowto Petitioner’s asserted grounds of unpatentability to
`determine whetherPetitioner has met the threshold standard, under
`
`35 U.S.C. § 314(a), for instituting review.
`A.
`Claim Construction
`
`Asa step in our analysis for determining whetherto institute a review,
`
`we determine the meaning of the claims. In an inter partes review, a claim
`
`in an unexpired patent shall be given its broadest reasonable construction in
`light of the specification of the patent in which it appears. See
`
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`
`claim terms are given their ordinary and customary meaning, as would be
`
`understood by oneofordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). We construe the terms below in accordance with these principles.
`
`Each of independentclaims 1 and7 recite using “transfer
`
`communication protocol (TCP).” Petitioner proposes a claim construction
`
`for “transfer communication protocol (TCP)”as “transmission control
`5
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`
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`‘IPR2014-01330
`Patent 8,310,993 B2
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`protocol.” Pet. 8—9 (citing Ex. 1001, 3:28-29). Patent Ownerdoes not
`
`counter Petitioner’s proposed construction. Prelim. Resp. 13.
`
`Weagree with Petitioner and Patent Owner that TCP commonlyis
`referred to as “transmission control protocol.” Moreover, the ’993 patent
`
`refers to “[RFC 793] for a full description of the TCP protocol.” Ex. 1001,
`3:28-29. The front cover of the ’993 patent refers to RFC 793 as a
`documententitled “Transmission Control Protocol.” Ex. 1001, at [56].
`Accordingly, for purposesofthisDecision, we construe “transfer
`communication protocol (TCP)” to meanalso “transmission control
`
`protocol.”
`
`B.
`
`35 U.S.C. § 102(a), (b), and (e)
`
`Patent Owner contends the Rinne and Bergstrom cannot be considered
`
`under § 102(a) because they were not published or patented prior to the
`priority date of the °993 patent. Prelim. Resp. 11-12. In addition, we also
`note that Petitioner labeled Sipola as § 102(a) and § 102(b) art, but it was not
`
`published or patented prior to the priority date of the’993 patent. Atthis
`
`time, we do not decide whether Rinne and Bergstrom can be considered
`
`under § 102(a) and whether Sipola can be considered under § 102(a) and
`
`§ 102(b). We are persuaded that Rinne, Bergstrom, and Sipola can be
`
`considered under § 102(e).
`
`C.
`Sixty Page Limit
`Patent Owner contends the Board should denythe Petition because
`Petitioner improperly does not double-space tables listed in Related Matters
`under 37 C.F.R. § 42.8(b)(2) and Counsel under 37 C.F.R. § 42.8(b)(3) and
`
`(4); and improperly incorporates by reference significant portions of a ninety
`
`six page declaration of Mark R. Lanning (Ex. 1002 (“Lanning Decl.”)) and
`
`6
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`instead, provides conclusory statements. Prelim. Resp. 13-18. We disagree
`
`with Patent Owner.
`
`The “Related Matters” table on page 1 of the Petition consistsoffive
`single line entries separated by lines in the table. Petitioner’s single spacing
`
`between the lines of counsel’s address is the customary form of an address.
`
`The single spacing in the Related Matters and Counsel tables do not
`
`prejudice Patent Owner.
`Turning to the Declaration of Mr. Lanning, Patent Owner
`distinguishes between “Verbatim Mr. Lanning Confirms Statements,” which
`
`Patent Owner acknowledgesdo notrepresent an attempt to undermine the
`
`page limit and “Conclusory Mr. Lanning Confirms Statements,” which
`
`Patent Ownerargueseffectively add 10 pages to the text of the Petition.
`
`Prelim. Resp. 2. Although Patent Owner arguesthat at least 20 such
`
`“Conclusory Mr. Lanning Confirms Statements” are madein the Petition,
`Patent Ownercites only two specific circumstances, both ofwhich involve
`Petitioner asserting that Mr. Lanning confirms what one ofordinary skill
`would have known. /d. at 2, 16—17 (citing Pet. 19, 24)'. In both cases,
`
`Petitioner supplements the citation to the Lanning Declaration with
`additional text describing the relevant knowledgeof oneof ordinary skill
`
`and descriptions of related subject matter in additional references. Upon
`
`review, we are persuadedthat the testimony of Mr. Lanning provides
`evidentiary support for the arguments madein the Petition and is not itself
`argument improperly incorporated by reference.
`
`' Wenote that Patent Owneralso disputes the adequacy of Mr. Lanning’s
`analysis on these issues. See Prelim. Resp. 26.
`7
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`IPR2014-01330
`Patent 8,310,993 B2
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`Patent Owneralso is not prejudiced by Petitioner’s treatment of “one
`
`of ordinary skill.” Although Petitioner does not repeat Mr. Lanning’s
`
`assertions concerning one of ordinary skill in the Petition, Patent Owner
`
`acknowledges. it is on notice of Mr. Lanning’s opinion. Prelim. Resp. 19
`
`n.4.
`
`Accordingly, we are not persuaded that Petitioner has failed to comply
`
`with the sixty page limit.
`
`D.
`
`Claims 1, 2, 4-8, and 10-12 as Obvious over the Combination
`ofSipola, Bergstrom, and AAPA
`
`Petitioner asserts that claims 1, 2, 4-8, and 10-12 would have been
`
`obviousover Sipola, Bergstrom, and AAPA. In support ofits assertion,
`
`Petitioner presents analyses of Sipola, Bergstrom, and AAPA,as well as the
`Lanning Declaration. Pet. 10-30 (citing Exs. 1001, 1002, 1007, 1009).
`Patent Ownerdisagrees with Petitioner’s assertions. Prelim. Resp. 22-35.
`1.
`Analysis
`
`After carefully consideringthe Petition and Preliminary Response, as
`
`well as all supporting evidencecited in the Petition and Preliminary
`
`Response, we are not persuadedthat, on this record, there is a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1-12 would
`
`have been obviousover the combination of Sipola, Bergstrom, and AAPA.
`
`Asrecited supra, independent claim 1 is drawnto a wireless network
`comprising elements that carry out the recited functions. Independent
`
`claim 7 is a method performed by a network in which steps corresponding
`generally to the functions recited in claim 1 are carried out. The pertinent
`functions/steps include: (1) counting transmitted segments of TCP data;
`
`(2) upon the count exceeding a predetermined number, transmitting a
`
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`IPR2014-01330
`Patent 8,310,993 B2
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`messagethat indicates an allocation of uplink resources to transfer an uplink
`
`segmentsufficient to indicate acknowledgementofreceipt of the transmitted
`segments of TCP data; and (3) receiving an acknowledgement in the uplink
`segment. Moreover, step 1 is a condition precedentto step 2 becauseit is
`
`recited as “in response to the count exceeding a predetermined number.”
`Step 2 is a condition precedentto step 3 becauseit is recited as “in response
`
`to the uplink resources.”
`
`Petitioner is combining improperly features from different
`
`embodimentsofthe cited references. In particular, Sipola’s teaching of a
`
`networkentity (NW) knowing (e.g., counting) only four blocks are to be
`transmitted (Pet. 13-14; Ex. 1007, 8:6-9; 9:18-22)pertains to Fig. 1a, which
`
`Petitioner mapstothe claimedlimitation “the circuit configured to count a
`
`numberof transmitted segments” and “in response to the count exceeding a
`predetermined number.” In contrast, Sipola’s teaching of the NW informing
`a terminal using uplink state flags ofthe availability of uplink resources
`
`prior to the transmission. of blocks (Pet. 14-15; Ex. 1007, 8:48—54) pertains
`
`to Fig. 1b, which Petitioner mapsto the claimedlimitation “transmit a
`message that indicates an allocation of uplink resources.” Fig. la of Sipola
`pertains to a downlink embodiment, whereas Fig. 1b of Sipola pertains to an
`
`opposite uplink embodiment.
`
`Moreover, Fig. 1b of Sipola teaches that transmitting of uplink state
`
`flags (e.g., the alleged allocation of uplink resources) occurs prior to
`
`transmission of segments/blocks, whereas claims 1 and 7 require segments
`
`to be transmitted prior to an allocation of uplink resources. Accordingly,it
`
`follows that Sipola’s uplink state flag (e.g., the alleged allocation of uplink
`
`resources) of Fig. 1b is not in responseto the transmitting of four
`
`9
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`IPR2014-01330
`Patent 8,310,993 B2
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`blocks/segments in the downlink of Fig. la. Thus, Petitioner fails to show
`| persuasively how the cited portions of Sipola teach “in response to the count
`exceeding a predetermined number, to transmit a message that indicates an
`allocation of uplink resources,” (emphasis added)as recited in claim 1 and
`
`similarly recited in claim 7.
`
`Petitioner fails to show persuasively howthe cited portions of
`
`Bergstrom remedy the deficiencies of Sipola. As described supra, claims1
`
`and 7 recite three function or steps, each being a condition precedentto the
`
`next. The cited portions of Bergstrom relied upon by Petitioner do not teach
`
`or suggest a count exceeding a predetermined amount. Pet. 15. Rather, the
`
`cited portions of Bergstrom relied upon by Petitioner merely teach allocation
`
`of uplink resources and an acknowledgement sent in response. Id. (citing
`Ex. 1009, 3:10—-15;3:20-30). Thus, Petitioner has not shown persuasively
`how the cited portions of Bergstrom teach or suggest “in responseto the
`
`count exceeding a predetermined number,to transmit a messagethat
`indicates an allocation of uplink resources,” (emphasis added) as recited in
`claim 1 andsimilarly recited in claim 7.
`|
`|
`
`Petitioner fails to show persuasively howthe cited portions of AAPA
`
`remedy the deficiencies of Sipola and Bergstrom. Specifically, the cited
`
`portions of AAPArelied upon byPetitioner do not teach a count exceeding a
`
`predetermined amount. Pet. 15 (citing Ex. 1001, 4:35-41). Rather, the cited
`
`portions of AAPArelied uponby Petitioner merely teach that user
`equipment305 requests uplink resourcesto transmit an acknowledgement
`message. Jd. In response to the request, AAPA teaches network 310
`transmits a message to user equipment305 to allocate uplink resources, then
`
`the user equipment 305 transmits an acknowledgement message. Jd. Thus,
`
`10
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`Patent 8,310,993 B2
`Petitioner has not shown persuasively howthecited portions ofAAPA teach
`“in response to the count exceeding a predetermined number,to transmit a
`
`messagethat indicates an allocation of uplink resources,” (emphasis added)
`as recited in claim 1 andsimilarly recited in claim 7.
`
`2.
`Conclusion
`For the foregoing reasons, we concludethat Petitioner has not
`demonstrated a reasonablelikelihood that they would prevail on the ground
`
`that claims | and 7 (and their respective dependent claims 2, 4-6, 8, and 10-
`12) wouldhave been obvious over the combination of Sipola, Bergstrom,
`and AAPA.
`
`E.
`
`Claims 3 and 9 as Obvious over the Combination ofSipola,
`Bergstrom, AAPA, and Rinne
`
`Claims 3 and 9 depend from independent claims 1 and7,
`
`respectively. Petitioner asserts that claims 3 and 9 would have been obvious
`_ overSipola, Bergstrom, AAPA, and Rinne. Pet. 30-32 (citing Exs. 1001,
`1002, 1007, 1009, 1011). As set forth above, Petitioner has not shown
`persuasively that the combination of Sipola, Bergstrom, and AAPAteaches
`each and every limitation of independent claims 1 and 7. Moreover,
`
`Petitioner does not cite Rinnein this ground as remedyingthe
`
`aforementioneddeficiencies of the combination of Sipola, Bergstrom, and
`
`AAPAwith respect to underlying independent claims 1 and 7. Accordingly,
`
`we conclude that Petitioner has not showna reasonable likelihood that it
`
`—
`
`would prevail on the ground that claims 3 and 9 would have been obvious
`
`over the combination of Sipola, Bergstrom, and AAPA,and Rinne.
`
`1]
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`F.
`
`Claims 1, 2, 4—8, and 10-12 as Obvious over the Combination
`ofKakani, Sipola, and AAPA
`Petitioner asserts that claims 1, 2, 4-8, and 10-12 would have been
`obvious overthe combination of Kakani, Sipola, and AAPA. In support of
`its assertion, Petitioner presents analysis of Kakani, Sipola, and AAPA,as
`
`well as the Declaration of Mr. Lanning. Pet. 32—46 (citing Exs. 1001, 1002,
`
`1007, 1008). Patent Ownerdisagrees with Petitioner’s assertions. Prelim.
`
`Resp. 37-41.
`
`Claims 1 and 7 Analysis
`1.
`After carefully considering the Petition and Preliminary Response, as
`
`well as all supporting evidencecited in the Petition and Preliminary
`Response, we are persuaded that, on this record, there is a reasonable
`likelihoodthat Petitioner would prevail in showingthat claims 1 and 7,
`whichrecite similar features, would have been obvious over the combination
`
`of Kakani, Sipola, and AAPA.
`
`Weare persuaded byPetitioner, on this record, that Kakani teaches
`
`allocating resources in an uplink of a wireless/cellular communication
`
`system (Pet. 33; Ex. 1008 § 2), which teaches the claimed limitation “a
`
`wireless network,” as recited in the preamble of claim 1.
`
`Weare persuadedbyPetitioner, on this record, that Kakani, AAPA,
`andSipola teach the features recited in claim 1(a).” Pet. 33. In particular,
`weare persuaded that Sipola teaches a packet scheduler controlling a Media
`
`Access Control (MAC)layer to transmit in the uplink and indicate to which
`- mobile station each blockis targeted (Pet. 33; Ex. 1007, 2:1—11), which
`
`’ Theletter indicators, such as “1(a),”“1(b),” “I(c),” etc. are not recited in
`the claim. Rather, Petitioner refers to the claim elements using this notation.
`12
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`IPR2014-01330
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`teaches the claimedlimitation “a circuit located in the a wireless network,”
`as recited in claim 1(a).
`
`Weare persuaded by Petitioner, on this record, that Kakani, AAPA,
`
`and Sipola teach the features recited in claim 1(b). Pet. 33-34. Specifically,
`
`weare persuaded that AAPAteachesat least one TCP segment buffered in a
`
`network’s downlink buffer (Pet. 33; Ex. 1001, 4:23-28; Fig. 3), which
`
`teaches the claimed limitation “wherein the circuit buffers segments of
`
`transfer communication protocol (TCP) data for downlink (DL),”as recited
`
`in claim 1(b).
`
`Weare persuaded byPetitioner, on this record; that Kakani, AAPA,
`
`and Sipola teach the features recited in claim l(c). Pet. 34. Particularly, we
`
`are persuaded that AAPA teaches a TCP segmenttransmitted between a
`
`buffer and a UE and that the TCP segmentis received by the VE after being
`
`buffered (Pet. 34; Ex. 1001, 4:27—32; Fig. 3), which teaches the claimed
`
`limitation “a transmitter arranged to transmit the buffered segments of TCP
`
`data to a user equipment (UE),”as recited in claim 1(c).
`
`Weare persuadedbyPetitioner, on this record, that Kakani, AAPA,
`and Sipola teach the features recited in claim 1(d). Pet. 34-35. More
`
`specifically, we are persuadedthat Sipola teaches a networkentity (e.g.,
`circuit) that knows/detects that four blocks are transmitted (e.g., counting
`
`four blocks) and includes a poll request for an acknowledgementwith the
`
`fourth transmitted block (Pet. 34-35; Ex. 1007, 8:6—9, claim 13), which
`
`teaches the claimed limitation “the circuit is further configured to count a
`
`numberof transmitted segments of TCP data,” as recited in claim 1(d).
`
`Weare persuaded byPetitioner, on this record, that Kakani, AAPA,
`
`and Sipola teach the features recited in claim 1(e). Pet. 34-35. In particular,
`
`13
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`we are persuaded that Sipola teaches detecting a certain numberof packets
`
`have been transmitted, and in response thereto, generating an
`
`acknowledgement message(Pet. 35; Ex. 1007, 4:27-29), which teaches the
`claimed limitation “wherein the circuit is further configured, in response to
`the count exceeding a predetermined number,”as recited in claim I(e).
`
`Weare persuadedbyPetitioner, on this record, that Kakani, AAPA,
`
`and Sipola teach the features recited in claim 1(f-g). Pet. 35-36.
`
`Specifically, we are persuaded that Kakani teaches tracking every data _
`segment transmitted in the downlink, and in response to tracking the data
`segmentin the downlink, transmitting anacknowledgement in the uplink.
`Id. (citing Ex. 1008 4 33). In addition, as described supra, Sipola teaches a.
`
`count exceeding a predetermined number. Moreover, Kakani teaches
`
`allowing uplink resources to be estimated and appropriately allocated (e.g.,
`
`step 2, as described supra) to the mobile station for an acknowledgement
`
`signal (e.g., step 3, as described supra) to be transmitted (Pet. 35-37; Ex.
`
`1008 ¢ 33), which teaches the claimedlimitation, “to transmit a message that
`indicates an allocation of uplink resources .
`.
`. in response to the uplink
`resources, the uplink segment which includesthe information indicating
`
`acknowledgementofreceipt of the transmitted segments of TCP data,” as
`
`recited in claim 1(f—g).
`
`Furthermore, we find persuasive Petitioner’s argument that it would
`
`have been obviousto oneofordinary skill in the art to combine Kakani,
`Sipola, and AAPAsuchthat an acknowledgementis not transmitted after
`
`every block. Pet. 40. Moreover, wecredit the testimony of Mr. Lanning
`that it would have been obvious to combinethe features of Kakani, Sipola,
`
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`and AAPA to comply with RFC 1122 and ensure that an acknowledgement
`
`is transmitted for every data segmentreceived. Pet. 40.
`
`Patent Ownerargues that Sipola merely teaches knowing the number
`
`of transmitted blocks, rather than “counting” the numberof transmitted
`
`segments. Prelim. Resp. 22—24. Moreover, Patent Ownerargues that Sipola
`
`‘fails to teach “detect[ing]” or “count[ing]” blocks transmitted in a downlink
`
`direction. Prelim. Resp. 23. On this record, Patent Owner’s argumentis not
`persuasive. Thecited portions of Sipola relied upon by Petitioner teach
`
`knowing the numberofblocksthat are transmitted (Pet. 34-35; Ex. 1007,
`8:6—9; claim 13), which inherently teaches the claimedlimitation
`“count[ing] a number oftransmitted segments.” Moreover, the cited
`portions of Sipola relied upon by Petitioner explicitly teach detecting a
`numberof packet data transmitted (Pet. 34; Ex. 1007, claim 13), which also
`
`teaches the claimedlimitation “count[ing] a numberof transmitted
`segments.”
`|
`
`As for Patent Owner’s contention (Prelim. Resp. 40-41) that Kakani,
`Sipola, and AAPA would not have been obvious to combine, as explained
`supra,in the discussion of Kakani, Sipola, and AAPA,Petitioner identified a
`teaching to combine or modify components. Pet. 40-41. Thus, Petitioner
`providedarticulated reasoning with rational underpinnings to support the
`motivation to combine the teachings of Kakani, Sipola, and AAPA(see in re
`Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006)).
`
`2.
`Claims 2 and 8 Analysis
`Claims 2 and 8 depend from claims 1 and 7, respectively. Weare
`persuaded by Petitioner, on this record, that Kakani, AAPA,and Sipola
`
`teach the features recited in claims 2 and 8. Pet. 41. In particular, we are
`
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`persuaded AAPA teaches that TCP uses a shared channelin a request and
`allocate wireless system (Pet. 41; Ex. 1001, 4:23—25), which teaches the
`claimed limitation “wherein the allocation of uplink resources are resources
`
`of a shared channel,” as recited in claims 2 and 8.
`
`3.
`
`Claims 4 and 10 Analysis
`
`Claim 4 and 10 depend from claims 1 and 7, respectively. We are
`
`persuadedbyPetitioner that Kakani, AAPA,and Sipola teach the features
`
`recited in claims 4 and 10. Pet. 42-43. Specifically, we are persuadedthat
`
`AAPAteaches TCP responseswith a stand-alone acknowledgmentsent from
`
`the user equipment to the network (Pet. 42-43; Ex. 1001, Figs. 2-3), which
`
`teaches the claimed limitation “wherein the information indicating
`
`acknowledgementof receipt of the transmitted segments of TCP data is a
`
`stand-alone acknowledgement,”as recited in claims 4 and 10.
`4.
`Claims 5 and 11 Analysis
`Claims 5 and 11 depend from claims 1 and 7, respectively. Weare
`persuaded byPetitioner that Kakani, AAPA,and Sipola teach the features
`
`recited in claims 5 and 11. Pet. 42-43. Specifically, we are persuaded that
`
`AAPAteaches piggybacking data with an uplink acknowledgement message
`
`(Pet. 44; Ex. 1001, 3:44-45), which teaches the claimed limitation “wherein
`
`other data is received with the uplink segment,” as recited in claims 5 and
`i
`
`J.
`
`Claims 6 and 12 Analysis
`
`Claims 6 and 12 depend from claims 1 and 7, respectively. We are
`
`persuaded byPetitioner that Kakani, AAPA, and Sipola teach the features
`
`recited in claims 6 and 12. Pet. 45. Specifically, we are persuadedthat
`
`AAPAteachesbasestations that are known as Node-Bs,as well as radio
`
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`
`networkcontrollers that control communications(e.g., transmissions) over
`
`the air (Pet. 45; Ex. 1001, 3:4445), which teachesthe claimed limitation
`
`“wherein at least one of the circuit or the transmitter is includedin at least
`
`oneof a base station, Node-B,or radio network controller (RNC),”as recited
`in claim 6 andsimilarly recited in claim 12.
`6.
`Conclusion
`
`For the foregoing reasons, we conclude, on this record, that there is a
`
`reasonable likelihood that Petitioner would prevail on the groundthat claims
`1, 2, 4-8, and 10-12 would have been obvious over the combination of
`Kakani, Sipola, and AAPA.
`
`G.
`
`Claims 3 and 9 as Obvious over the Combination ofKakani,
`Sipola, AAPA, and Rinne
`
`Petitioner asserts that claims 3 and 9 would have been obvious over
`
`the combination of Kakani, Sipola, AAPA, and Rinne. In support ofits
`assertion, Petitioner presents analysis of Kakani, Sipola, AAPA, and Rinne,
`as well as the Declaration of Mr. Lanning. Pet. 46—48 (citing Exs. 1001,
`
`1002, 1007, 1008, 1011). Patent Ownerdisagrees with Petitioner’s
`
`assertions. Prelim. Resp. 42.
`Claims 3 and 9 Analysis
`0.
`Claims 3 and 9 depend from claims 1 and 7, respectively. Weare
`
`persuaded byPetitioner that Rinne teaches transmitting uplink allocation
`
`information with downlink allocation information (Pet. 46; Ex. 1011, 32:32—
`33), which teaches the claimedlimitation “whereinthe circuit is further
`
`configured to transmit an allocation of downlink resources andan allocation
`of uplink resources at a substantially a same time,” as recited in claim 3(a)
`and similarly recited in claim 9(a).
`
`17
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`
`Although Rinne teachesthat an uplink is delayed with respect to a
`downlink (Pet. 46; Ex. 1011, 32:32—33), Rinne doesnot teach explicitly an
`
`allocation of uplink resources is delayed with respect to the allocation of
`
`downlink resources as recited in claims 3(b) and 9(b). However, in view of
`
`Mr. Lanning’s testimony that it would have been obviousto apply a
`temporal offset between the allocations to account for processing times
`
`(Pet. 48; Ex. 1002 7 159), which wecredit, we are persuaded that Rinne
`teaches the claimed limitation “wherein the allocation of uplink resourcesis
`at a time interval delayed with respect to the allocation ofdownlink
`resources,” as recited in claims 3(b) and 9(b).
`Furthermore, wecredit the testimony of Mr. Lanningthat it would
`have beenobvious to combinethe features ofKakani, Sipola, AAPA, and
`Rinne to reduce signaling overhead to benefit both the base station and
`
`|
`
`terminals. Pet. 47-48; Ex. 1002 4 157; Ex. 1011, 20:2-4.
`Patent Ownercontends (Prelim. Resp. 43-49) that Kakani, Sipola,
`AAPA,and Rinne would not have been obvious to combine becausethis
`
`assertion is conclusory without further evidence or arguments. As explained
`supra, in the discussion ofKakani, Sipola, AAPA, and Rinne,Petitioner
`identified a teaching to combine or modify components. Thus, Petitioner
`provided articulated reasoning with rational underpinnings to support the
`motivation to combine the teachings of Kakani, Sipola, AAPA, and Rinne
`
`(see Kahn, 441 F.3d at 989).
`
`2.
`Conclusion
`For the foregoing reasons, we conclude, onthis record,that there is a
`reasonable likelihood that Petitioner would prevail on the ground that claims
`
`18
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`3 and 9, would have been obviousoverthe combination of Kakani, Sipola,
`
`AAPA,and Rinne.
`
`H.
`
`Claims 1, 2, 4-8, and 10-12 as Obvious over the Combination of
`Koning, Bergstrom, and AAPA
`
`Petitioner asserts that claims 1, 2, 4-8, and 10-12 would have been
`
`obvious over the combination of Koning, Bergstrom, and AAPA. In support
`
`of its assertion, Petitioner presents analysis of Koning, Bergstrom, and
`
`AAPA,as well as the Declaration of Mr. Lanning. Pet. 48—60 (citing
`Exs. 1001, 1002, 1009, 1010). Patent Ownerdisagrees with Petitioner’s
`
`assertions. Prelim. Resp. 43-47.
`
`.
`
`1.
`
`Analysis
`
`After carefully considering the Petition and Preliminary Response, as
`
`well as all supporting evidencecited in the Petition and Preliminary
`
`Response, we are persuadedthat, on this record, there is not a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1, 2, 4-8, and
`
`10-12 would have been obvious over the combination of Koning,
`Bergstrom, and AAPA.
`
`The cited portions of Koning relied upon by Petitioner teach
`
`transmitting multiple packets to a receiver (Pet. 49; Ex. 1010, 5:34—35),
`
`whichPetitioner mapsto the claimedlimitation “transmitter arranged to
`
`transmit buffered segments of TCP data to a user equipment”as recited in
`claim 1. The cited portions of Koning relied upon by Petitioner teach
`comparing and tracking an amountof data acknowledged with an amount of
`
`data originally transmitted in a burst (Pet. 49-50; Ex. 1010, 2:22—24; 9:9—
`
`15), which Petitioner maps to the claimed limitation “in response to the
`
`count exceeding a predetermined number”and “indicating
`
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`acknowledgement.” Moreover, the cited portions of Koningrelied upon by
`
`Petitioner teach controlling the windowsize and increasing the burst size of
`
`TCP packets (Pet. 50; Ex. 1007, 1:32—35; 8:57-61), which Petitioner maps
`
`to the claimed limitation “allocation of uplink resources.”
`
`Asdescribed supra, however, Koning’s receiver correspondsto the
`
`claimed “user equipment.” In addition, the cited portions of Koningrelied
`upon by Petitioner teach that the receiver(e.g., correspondsto the claimed
`“user equipment”) 1s counting every two packets received before sending an
`acknowledgement(Pet. 50; Ex. 1010, 9:50—58), whereas the claimed
`
`limitation requires “the circuit is further configured to count a numberof
`transmitted segments ofTCP data” (emphasis added). Moreover, the
`claimed circuit that counts the numberoftransmitted segments is not met by
`
`a receiver that counts the numberof received segments because transmitted
`segments can be lost in a network due to error. Thus, Petitioner has not
`
`shownpersuasively howthe cited portions of Koning teach or suggest “in
`
`response to the count exceeding a predetermined number, to transmit a
`messagethat indicates an allocation of uplink resources,” (emphasis added)
`
`as recited in claim | and similarly recited in claim 7.
`
`Asdiscussed supra, Bergstrom and AAPAfails to teach or suggest,
`
`“in response to the count exceeding a predetermined number,to transmit a
`
`messagethat indicates an allocation of uplink resources,” (emphasis added)
`as recited in claim 1 andsimilarly recited in claim 7.
`,
`
`2.
`Conclusion
`For the foregoing reasons, we concludethat there is not a reasonable
`likelihood that Petitioner would prevail on the groundthat claims 1 and 7
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`(and their respective dependent claims 2, 4—6, 8, and 10-12) would have
`
`been obvious over the combination of Koning, Bergstrom, and AAPA.
`
`L.
`
`Claims 3 and 9 as Obvious over the Combination ofKoning,
`Bergstrom, AAPA, and Rinne
`
`Claims 3 and 9 depend from claims1 and7, respectively. ‘Petitioner
`
`asserts that claims 3 and 9 would have bee
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