Trials@uspto.gov
`571-272-7822
`
`Paper No. 29
`Date: February 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSONINC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`Vv.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Case IPR2014-01330
`Patent 8,310,993 B2
`
`Before BRIAN J. MCNAMARA, DAVID C. McKONE,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F-R. § 42.73
`
`
`571-272-7822
`
`Paper No. 29
`Date: February 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSONINC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`Vv.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Case IPR2014-01330
`Patent 8,310,993 B2
`
`Before BRIAN J. MCNAMARA, DAVID C. McKONE,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F-R. § 42.73
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`I.
`
`INTRODUCTION
`
`A. Procedural Background
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively
`“Petitioner’”) filed a Petition (“Pet.”’) for inter partes review of claims 1-12
`of U.S. Patent No. 8,310,993 (“the °993 patent”) (Ex. 1001) pursuantto 35
`
`US.C. §§ 311-319. Paper 2. Intellectual Ventures II LLC (‘Patent
`
`Owner’’) filed a Preliminary Response (“Prelim. Resp.”). Paper 6. On
`
`February 23, 2015, we instituted review as to claims 1—12 of the ’993 patent
`
`and instituted trial on two grounds of unpatentability as set forth below.
`
`Paper 8 (“Dec. on Inst.”).
`
`
` EE
`
`
`
`| Grounds: |)" “Reference_
`
`
`
`
`
`1,2,4-8,and|§ 103(a) Kakani'!, Sipola’, and
`
`10-12
`AAPA?
`
`
`3 and 9 § 103(a)|Kakani, Sipola, AAPA,and.
`
`
`Rinne‘
`
`Patent Ownerfiled a Patent Owner’s Response (Paper 14, “PO
`
`Resp.”), and Petitioner filed a Reply (Paper 20, “Reply”). We heard Oral
`
`Argument on November 18, 2015. Paper 28, “Tr.”
`
`' U.S. Patent Publication No. 2005/0054347 published Mar. 10, 2005
`(Ex. 1008, “Kakani’’).
`2 U.S. Patent No. 7,260,073 filed Dec. 2, 2002 (Ex. 1007, “Sipola”).
`3 Petitioner cites to column 1, line 21, through column4,line 4, in the
`Backgroundof the Invention section of the ’993 patent as an admission of
`prior art (Applicant Admitted Prior Art, or “AAPA”). We agree that this
`section is an admission of the scope and content of the prior art and refer to
`AAPAto inform the knowledgeof a person of ordinary skill in the art at the
`time of the invention. Cf Ariosa Diagnostics v. Verinata Health, Inc., 805
`F.3d 1359, 1365 (Fed. Cir. 2015).
`4U.S. Patent No. 8,572,250 B2 filed Feb. 24, 2006 (Ex. 1011, ‘“‘Rinne”).
`
`2
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`B. Related Matters
`
`Petitioner and Patent Owneridentify five related district court
`
`proceedings. Pet. 1; Paper 5, 1.
`
`C. Summary of Conclusions
`
`In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73, we determine that Petitioner has demonstrated by a
`
`preponderanceofthe evidencethat claims 1, 2, 4-8, and 10-12 are
`
`unpatentable.
`
`Il.
`
`THE ’993 PATENT(Ex. 1001)
`
`The °993 patent relates generally to packet data transmission in a
`
`wireless communication system. Ex. 1001, 1:15~-19. According to the ’993
`
`patent, what the patent refers to as “transfer communication protocol”or
`
`“TCP” data segmentsare buffered in downlink (“DL”) TCP transmissions.
`Id. at 4:55-60. The buffered TCP data segments are transmitted from the
`
`buffer to the user equipment (“UE”). Jd. at 4:60-63, Fig. 5. As the TCP
`
`segments are transmitted from the buffer, a counting logic counts a number
`
`of transmitted TCP segmentsthat are transmitted to the UE.
`
`/d. at 5:4—7.
`
`The counting logic ensures that when a second segmentis sent, uplink
`
`(“UL”) resources are allocated. /d. at 5:8-12; Fig. 5. After the UL
`
`resources are allocated and the DL messageis processed, a stand-alone
`
`acknowledgement (““ACK”) messageis transmitted in the UL. Jd. at 5:36—-
`
`39, Fig. 5.
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`Independentclaim 1, reproduced below,is illustrative.
`
`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);
`the circuit is further configured to count a numberof.
`transmitted segments of TCP data;
`wherein thecircuit is further configured, in responseto 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
`responseto the uplink resources, the uplink segment
`which
`includes
`the
`information
`indicating
`acknowledgment of receipt of the transmitted
`segments of TCP data.
`
`Il.
`
`CLAIM CONSTRUCTION
`
`As a 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). We construe the terms below in accordance with these principles.
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`Claim 1 recites a “circuit is further configured to count a numberof
`
`transmitted segments of TCP data” and taking action “in responseto the
`
`count exceeding a predetermined number.” Similarly, claim 7 recites
`
`“counting, by the network, a numberof transmitted segments of TCP data” |
`and taking action “in response to the count exceeding a predetermined
`number.” Patent Owner contends that Webster’s New World Dictionary of
`Computer Terms defines “count” as “the successive increase or decrease of a
`cumulative total of the numberof times an event occurs.” PO Resp. 11-12;
`
`Ex. 2003. Petitioner, in response, contends the prosecution history indicates
`
`that “the count is of a numberof sent segments of TCP datain the
`
`downlink.” Reply 4—6 (citing Ex. 1004, 14:2, 14:16—-17).
`Wenotethat claim 1 recites “count” twice. Ex. 10:26—-29. Claim 1
`
`|
`
`first recites “to count,” which is a verb.° Jd. at 10:26-27. Next, claim 1
`
`recites “the count,” which is a noun.
`
`/d. at 28-29. Claim 7, similarly,first
`
`recites “counting”as a verb, then recites “the count,” a noun. /d. at 61-64.
`We address the verb and noundefinitions of “count”in turn.
`
`Weagree with Patent Owner’s argumentthat “to count,” as recited in
`
`claim 1 (and “counting”as recited in claim 7) means“the successive
`
`increase or decrease of a cumulative total of the numberof times an event
`
`occurs.” This is consistent with the verb form of “count,” as evidenced by
`
`° The expression “to count” actually is an infinitive, which is defined as “a
`verb form normally identical in English with the first person singular that
`performs some functions of a noun andat the same time displays some
`characteristics of a verb and that is used with fo (as in “I asked him to go”)
`except with auxiliary and various other verb (as in “no one saw him /eave).”
`Webster’s New Collegiate Dictionary at 591 (published by G. & C. Merriam
`Co. 1977).
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`Patent Owner’s dictionary definition. Ex. 2003. It also is consistent with
`the Specification, which indicates that “[i]t is therefore possibleto easily
`
`count DL segments (for each TCP flow,if necessary) and then when the
`counter reaches two allocate UL resources accordingly.” Ex. 1001, 8:36-39.
`Weagree with Petitioner’s argumentas to the noun form of “count,”
`
`however, namely that “the count is of a numberof sent segments of TCP
`
`data in the downlink” (emphasis added). This is consistent with the
`Specification’s description (Ex. 1001, 8:36—-39, quoted above)oftaking an
`action whena discrete number of downlink segments is reached by a
`
`counter.
`
`IV. ANALYSIS
`
`A. Obviousness Claims 1, 2, 4-8 and 10-12
`
`A 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 obviousat the time the invention
`was madeto aperson having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousnessonthebasis of
`underlying factual determinations, including: (1) the scope and content of
`the priorart; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness,i.e., secondary considerations. Graham v. John Deere Co.,
`
`.
`383 U.S. 1, 17-18 (1966).
`In an obviousnessanalysis, some reason must be shown as to why a
`
`person of ordinary skill would have combined or modified the priorart to
`
`achieve the patented invention. See Innogenetics, NV. v. Abbott Labs., 512
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`art may be found explicitly or implicitly in market forces; design incentives;
`
`the “interrelated teachings of multiple patents’”; “‘any need or problem
`
`knownin the field of endeavorat the time of invention and addressed by the
`
`patent’”; and the background knowledge,creativity, and commonsense of
`
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`
`F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418-21 (2007)).
`
`1. Level ofSkill in the Art
`
`In determining the level of ordinary skill in the art at the time of the
`invention, various factors may be considered, including “type of problems
`encounteredin the art; prior art solutions to those problems; rapidity with
`
`which innovations are made; sophistication of the technology; and
`educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan
`
`Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). The level of ordinary skill
`
`in the art also is reflected by the prior art of record. See Okajimav.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86,
`91 (CCPA 1978).
`.
`
`Petitioner’s Declarant states that a person of ordinary skill in the art
`
`would have had a Bachelor or Master Degree in computer engineering,
`computer science,electrical engineering or equivalent experience or
`training. Decl. of Mark R. Lanning (“Lanning Decl.”) Ex. 1002 § 37.
`
`Petitioner’s Declarant also states that this person would haveat least three to
`
`five years of industrial or academic experience in communication systems,
`
`such as 3rd Generation Partnership Project and wireless cellular
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`communication systems. Jd. Petitioner’s Declarant states that this person
`would be familiar with Internet Protocol suite of protocols and understand
`
`the functionality of these protocols and interact in different layers of network
`
`topology. Id.
`
`Patent Owner’s Declarant proposes that a person of ordinary skill in
`
`the art would have an undergraduate degree in physics,electrical
`
`engineering, or equivalent and a minimum ofthree years of industrial or
`
`academic experience in 3rd Generation Partnership Project and familiarity
`
`with Internet Protocol suite of protocols. Decl. of Dr. Jonathan Wells
`
`(“Wells Decl.”) Ex. 2002 421). Alternatively, Patent Owner’s Declarant
`
`states that this person would have a Master Degree in the same subjects and
`at least two years of such professional experience. Id.
`—
`Although wedo notfind that proposed definitions of one of ordinary
`
`skill to be significantly different for purposes of this decision, Petitioner’s
`
`statementofthe level of ordinary skill is consistent with Mr. Lanning’s
`
`testimony and the technology described in the ’993 patent and the cited prior
`
`art. Ex. 1002 937. Accordingly, we adopt Petitioner’s statement of the
`
`level of ordinary skill.
`
`2. Scope and Content ofthe Prior Art
`
`a. Kakani (Ex. 1008)
`
`Kakani describes allocating uplink resources. Ex. 1008, Abs. Kakani
`
`also describes sending an acknowledgement packet in an uplink in response
`
`to every TCP data segmentsent in a downlink.
`
`/d. at 33. Kakani further
`
`describes that an amount of uplink data is the amountthat is required to
`
`transmit an acknowledgementsignal, which allows an estimation and
`appropriate allocation of the uplink resources. Jd.
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`b. Sipola (Ex. 1007)
`
`Sipola describes detecting that a number of data packets have been
`
`transmitted, and generating an acknowledgement messagein response.
`
`Ex. 1007, Abs., 4:27—30, claim 13. Figure 1 is reproduced below.
`[ww
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`lon “m
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`jeea al asoe?
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`
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`!
`___9) Uplink.
`'
`Fig. |
`
`_—_—
`Fe
`
`|
`
`™
`
`1
`
`Fig. 1 of Sipola illustrates, on the level of individual blocks, behavior
`
`in the downlink (Fig. 1a) and the uplink (Fig. 1b), respectively. Ex. 1007,
`
`5:27-30. Sipolaillustrates in Figure la “that a certain (sometimes
`
`predetermined) numberofdata packets are transmitted .
`.
`. before an
`acknowledgement procedureis carried out for this number ofpackets.”
`Id. at 6:60-64. Figure 1a furtherillustrates that “[a]s the networkentity
`
`‘knows’ that only four blocks in this example are to be transmitted, the
`
`fourth block blk3 includesa poll, i.e. a request for acknowledgementthat the
`
`blocks were correctly received (Ack) or not (Nack). Uponreceipt ofthe poll
`
`the terminal (MS) returns the acknowledgement message(in uplink)
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`direction to the network entity NW.” /d. at 8:6-13. Figure 1b, which
`
`represents the uplink, illustrates that a network entity “knows... that a
`
`continuous transmission turn includes four packets and may detect/count the
`
`numberof received packets, or the packets themselvesindicate their packet
`numberthereby informing the network entity about the end ofthe
`continuous transmission turn.. . illustrated in Fig. 1b” Jd. at 8:48-61.
`
`c. AAPA (Ex. 1001)
`
`AAPAis a portion of the “Backgroundof the Invention” section of
`
`the °993 patent describing Figures 1-3, each of whichis labeled “priorart.”
`AAPAexplains that it was knownto buffer a TCP segment at a network’s
`downlink buffer. Ex. 1001, 4:23-32, Fig. 3. AAPA discusses VE 305
`
`transmitting a message to network 310 that requests uplink resources for
`
`transmitting an acknowledgement message and“[i]n response thereto, the
`
`network 310 transmits a message to the UE 305 allocating UL resources.”
`
`Id. at 4:35-41. AAPAfurther describes transmitting an acknowledgementin
`
`response to a TCP segmenttransmission. /d. at 3:64—4:1.
`
`3. Comparing the Prior Art and the Claimed Subject Matter; Reason to
`
`Combine
`
`Weare persuadedby Petitioner that Kakani teaches allocating
`resources in an uplink of a wireless/cellular communication system, which
`teaches the claimed limitation “a wireless network,” as recited in claim 1
`
`(and similarly recited in claim 7). Pet. 33 (citing Ex. 1008 { 2).
`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 block is targeted, which teaches the claimed
`
`10
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`limitation “a circuit located in the a wireless network,” as recited in claim 1
`
`(and similarly recited in claim 7). Pet. 33 (citing Ex. 1007, 2:1-11).
`
`Weare persuaded that AAPAteachesat least one TCP segment
`buffered in a network’s downlink buffer, which teaches the claimed
`limitation “wherein the circuit buffers segments of transfer communication
`protocol (TCP) data for downlink (DL),”as recited in claim 1 (and similarly
`recited in claim 7). Pet. 33 (citing Ex. 1001, 4:23-28, Fig.3).
`
`Weare persuaded that AAPA teaches a TCP segmenttransmitted
`
`between a buffer and a UE andthat the TCP segmentis received by the UE
`after being buffered, 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.(and similarly recited in claim 7). Pet. 34 (citing
`
`Ex. 1001, 4:27—32, Fig. 3).
`
`Weare persuadedthat Sipola teaches a networkentity (e.g., circuit)
`
`that detects the numberof transmitted blocks, which teaches the claimed
`
`limitation “the circuit is further configured to count a numberoftransmitted
`
`segments of TCP data,”as recited in claim 1 (and similarly recited in claim
`
`7). Pet. 34-35 (citing Ex. 1007, Abs., claim 13). Patent Owner contests this
`
`limitation. We address Petitioner’s and Patent Owner’s respective
`
`contentionsregarding this limitation in detail below.
`
`Weare persuaded that Sipola teaches detecting that a certain number
`
`of packets have been transmitted, and in response thereto, generating an
`acknowledgement message, which teaches the claimed limitation “wherein
`the circuit is further configured, in response to the count exceeding a
`
`predetermined number,”as recited in claim 1 (and similarly recited in claim
`
`7). Pet. 35 (citing Ex. 1007, 4:27—29). Patent Ownercontests this
`
`11
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`limitation. We address Petitioner’s and Patent Owner’s respective
`contentions regardingthis limitation in detail below.
`Weare persuaded that AAPA’s disclosure of “the network 310
`
`transmits a message to the UE 305 allocating UL resources”to transmit an
`
`acknowledgementteachesthe limitation “to transmit a messagethat
`
`indicates an allocation of uplink resources to transfer an uplink segment and
`
`the allocation of uplink resources is sufficient to have information indicating
`
`acknowledgement”as recited in claim 1 (and similarly recited in claim 7).
`
`Pet. 35-36 (citing Ex. 1001, 4:35-41). Patent Ownercontests this
`
`limitation. We address Petitioner’s and Patent Owner’s respective
`contentions regarding this limitation in detail below.
`|
`
`Weare persuaded that AAPA’s disclosure of “the network 310
`
`transmits a message to the UE 305allocating UL resources... . to implement
`
`the data transfer... which includes an ‘ACK’ message”teaches “wherein
`
`the circuit is further configured to receive, in responseto the uplink
`
`resources, the uplink segment whichincludesthe information indicating
`
`acknowledgementofreceipt of the transmitted segments of TCP data.”
`
`Pet. 36-37 (citing Ex. 1001, 4:35-41).
`
`Weare persuaded that Kakani teaches allowing uplink resourcesto be
`
`estimated and appropriately allocated to the mobile station for an —
`
`acknowledgementsignal to be transmitted, which teaches the claimed
`
`limitation, “indicat[ing] an allocation of uplink resources .
`
`.
`
`. in response to
`
`the uplink resources, the uplink segment which includes the information
`
`indicating acknowledgementofreceipt of the transmitted segments of TCP
`
`data,” as recited in claim | (and similarly recited in claim 7). Pet. 35—37
`
`(citing Ex. 1008 § 33).
`
`
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`IPR2014-01330
`Patent 8,310,993 B2
`
`Furthermore, wefind persuasive Petitioner’s argumentthat it would
`
`have been obviousto one ofordinary skill in the art to combine Kakani,
`
`Sipola, and AAPA “for the purpose of counting the number of TCP packets
`
`sent ‘in the downlink,’ so that ‘[t]he network can allocate uplink resources
`
`accordingly.’” Pet. 39 (citing Ex. 1008 4 40; Ex. 1002 § 123). Moreover,
`
`wefind persuasive Petitioner’s argumentthat it would have been obviousto
`
`combine the features of Kakani, Sipola, and AAPA “to comply with RFC
`
`1122, as noted in AAPA,to ensure ‘an ‘ACK’is transmitted for ‘every
`
`second full-sized data segment’ received.’” Pet. 40 (citing Ex. 1001, 3:59-
`
`61; Ex. 1002 7 128). RFC1122 istitled “Requirements for Internet Hosts —
`
`Communications Layers.” Ex. 1001, at [56]. Both Patent Owner and
`
`Petitioner acknowledge that a person having ordinary skill in the art would
`
`have familiarity with Internet Protocol suite of protocols. Ex. 1002 4 37;
`
`Ex. 2002 4 21. The ’993 patent describes RFC 1122 as oneofthe protocols
`
`of the TCP/IP suite of protocols describing acknowledgment functionality
`
`that a skilled artisan would have been familiar with. Ex. 1001, 3:50-56. We
`
`find that a skilled artisan would have understood that conforming to RFC
`1122 would have made a device morelikely to be compatiblewith the
`
`Internet Protocol (“IP”) suite of protocols. Ex. 1002 4 128. Patent Owner
`
`contests both of these rationales to combine. We address Petitioner’s and
`
`Patent Owner’s respective contentions regarding these rationales to combine
`
`in detail below.
`
`As Petitioner notes, AAPA in the 993 Patent teaches that it is known
`
`in the art for TCP to use a “shared channel” in a request and allocate |
`
`wireless system. Pet. 41-42 (citing Ex. 1001, 4:23-25). Thus, the AAPA in
`
`13
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
`
`the °993 Patent teaches the correspondinglimitations recited in claims 2 and
`
`8.
`
`.
`
`.
`
`AsPetitioner notes, AAPAin the 993 Patent teaches that TCP.
`
`responses with stand-alone acknowledgments sent from the user equipment
`
`to the network are knownin theart. Pet. 42-43 (citing Ex. 1001, Figs. 2-3).
`
`Thus, the AAPA in the ’993 Patent teaches the corresponding limitations
`
`recited in claims 4 and 10.
`As Petitioner notes, AAPA in the °993 Patent teaches that
`“piggyback[ing]” data with an uplink acknowledgement message is known
`
`in the art. Pet. 44 (citing Ex. 1001, 3:44-45). Thus, the AAPA in the ’993
`
`Patent teaches the correspondinglimitations recited in claims 5 and 11.
`
`AsPetitioner notes, AAPA in the ’993 Patent teaches base stations
`
`referred to as Node-Bs, as well as radio network controllers that control
`
`transmission overthe air interface, are knownin the art. Pet. 45 (citing Ex.
`
`1001, 2:24-29). Thus, the AAPAteaches the corresponding limitations
`recited in claim 6 and similarly recited in claim 12.
`
`The parties’ dispute is directed to whether the combination of Kakani,
`
`Sipola, and AAPAin the ’993 Patent teach the limitation “to count” as
`
`recited in claim 1 (and “counting”as recited in claim 7).
`
`Patent Owner advancesfour related arguments, which include: (1) the
`
`priorart fails to teach “in response to [a] count”of “transmitted segments”
`
`as recited in claims 1 and 7; (2) Sipola and Kakanifails to teach
`
`“transmit[ting] a message that indicates an allocation of uplink resources”as
`
`recited in claim | (and similarly recited in claim 7); (3) the priorart fails to
`
`teach “to count a numberof transmitted [downlink] segments of TCP data”
`
`as recited in claim 1 (and similarly recited in claim 7) because the only
`
`
`
`IPR2014-01330
`Patent 8,310,993 B2
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`counting or detecting of received TCP segments taught by thepriorart is on
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`the uplink side; and (4) the “motivations to combine Kakani, Sipola, and
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`AAPAare flawed because”the motivations rely on downlink counting that
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`is not taught in the priorart or the motivations rely on a certain numberof
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`“received packets.” PO Resp. 12-14. We address each of Patent Owner’s
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`four arguments in turn.
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`a. The Prior art Teaches the Limitation “in Response to” as Recited in
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`Claims I and 7
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`Petitioner contends that Sipola’s description of “detecting that a
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`certain numberofpacket data has been transmitted via the transmission
`resource, and in response thereto, generating an acknowledgement message”
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`(Ex. 1007, 4:27—29 (emphasis added)) teaches “a messagethat indicates an
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`allocation of uplink resources”that is “‘in response to [a] count” of
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`“transmitted segments”as recited in claims 1 and 7. Pet. 35. Petitioner
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`notes that the Background ofthe Invention of the ’993 patent Specification
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`quotes RFC 1122, which, accordingto Petitioner, “confirms that it was well
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`knownto utilize a counter/detector for similar purposes, such as ‘measuring
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`the amountof retransmissionsthat has occurred .
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`.
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`. as a count of
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`retransmissions’ to detect ‘[w]hen the numberoftransmissions of the same
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`segmentreachesor exceedsthreshold R1’” (emphasis added). Reply10
`(citing Ex. 2007, 95, 100, 105; Ex. 1001, 3:50-56). Thus, according to
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`Petitioner, a person of ordinary skill would have recognized “that detecting
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`the certain numberof data packets in Sipola would be accomplished by the
`network counting the numberofdata packets transmitted” (emphasis added).
`Id. at 10-11 (citing Ex. 1002 4 120).
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`
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`IPR2014-01330
`Patent 8,310,993 B2
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`Moreover, Petitioner relies on AAPA’s disclosure of UE 305
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`transmitting a message to network 310 that requests uplink resources for
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`transmitting an acknowledgement message and “‘/i]n responsethereto, the
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`network 310 transmits a message to the UE 305 allocating UL resources”
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`(emphasis added) to teach the limitation “a message that indicates an
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`allocation of uplink resources”as recited in claims 1 and 7. Pet. 35-36
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`(citing Ex. 1001, 4:35-41).
`
`In addition, Petitioner cites Kakani, which teaches transmitting data
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`segments in the downlink (similar to Sipola and AAPA)and sending
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`acknowledgement packets.in the uplink (similar to Sipola and AAPA).
`
`Pet. 34-35 (citing Ex. 1008 4 33). Petitioner also relies on Kakani’s
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`disclosure of “the uplink resources[for the uplink acknowledgement] to be
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`estimated and appropriately allocated to the MS” (emphasis added)to teach
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`the limitation “an allocation of uplink resources”as recited in claims 1 and
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`7. Pet. 34-35 (citing Ex. 1008 9 33). Mr. Lanningtestifies that it would
`
`have been obvious to combine Sipola, Kakani, and AAPA for thepurpose of
`“comply[ing] with RFC 1122, as noted in AAPA,to ensure ‘an ‘ACK’is
`transmitted for ‘every secondfull-sized data segment’ received.’” Pet. 40
`
`(citing Ex. 1001, 3:59-61; Ex. 1002 4 128).
`
`Patent Ownerarguesthe Sipolafails to teach “a message that
`
`indicates an allocation of uplink resources”that is “in response to [a] count”
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`of “transmitted segments”as recited in claims 1 and 7 because focusing on
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`individual elements of the claim while ignoring the link between the claim
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`elements does not render the claim obvious. PO Resp. at 14-15. Patent
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`Ownerarguesthat the claimed invention as a whole is not obvious because
`
`the ‘‘in response to” counting nexusis missing from the applied prior art. Jd.
`
`16
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`IPR2014-01330
`Patent 8,310,993 B2
`According to Patent Owner, Sipola links detecting transmissions with an
`acknowledgement message,instead of linking detecting transmissions with a
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`messageallocating resources. PO Resp. 15 (citing Ex. 1007, 4:27-29; Decl.
`
`of Dr. Jonathan Wells (“Wells Decl.”) Ex. 2002 4 46).
`
`Petitioner rebuts Patent Owner’s argument concerning the teachings
`
`of Sipola with persuasive testimony that a skilled artisan, when analyzing
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`Sipola, would have recognized that counting is a straightforward and well
`
`known way of detecting a numberof transmissions. Reply 10-11 (citing
`Ex. 1002 § 120). Sipola’s disclosure of receiving an acknowledgementis
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`“in response thereto” a certain numberof transmitted packets. Ex. 1007,
`
`4:27-29. Asstated infra in Part IV.A.3.c.ii., “counting” is obvious from
`
`Sipola’s “dectect[ing].” In view of this evidence, we find that Sipola renders
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`obviousthe limitation “receiv[ing] .. . acknowledgement”thatis “in
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`responseto [a] count” of “transmitted segments”as recited in claim 1 (and
`
`similarly recited in claim 7).
`
`Patent Ownerargues that AAPA fails to teach the “in response to”
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`link because AAPA’s messageindicating an allocation of uplink resourcesis
`
`made in response to a user equipment request rather than “in response to the
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`count exceeding a predetermined number.” PO Resp. 16 (citing 2002
`
`44).
`
`Patent Ownerfurther argues that Petitioners do not rely on Kakanifor this
`feature and Kakanifails to teach this feature. PO Resp. 16.
`
`Petitioner rebuts Patent Owner’s arguments concerning the AAPA
`
`with evidence that includes the cross-examination of Patent Owner’s
`
`witness, Dr. Wells, (Reply 13-14 (citing Deposition of Dr. Jonathan Wells
`
`(“Wells Deposition”) Ex. 1014, 53:11-15)), which confirms that AAPA’s
`
`disclosure of transmitting a message to UE 305 requesting an allocation of
`
`
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`IPR2014-01330
`Patent 8,310,993 B2 —
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`uplink resources (Ex. 1001, step 345 of Fig. 3) is in response to transmitted
`segments (Ex. 1001, step 325 of Fig. 3). In view ofthis testimony, we find
`that AAPAteachesthe limitation “a message that indicates an allocation of
`
`uplink resources”that is “in response to” “transmitted segments” as recited
`
`in claim 1 (and similarly recited in claim 7).
`
`Petitioner also cites evidence that Kakaniitself describes receiving an
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`“allocat[ion] to the MS”of uplink resourcesthat is in response.to a “data
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`segmentsent in the downlink.” Pet. 34—36 (citing Ex. 1008 § 33). In view
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`of this evidence, we find that paragraph 33 of Kakani, thus, teaches the
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`limitation “an allocation of uplink resources”that is “in response to” a
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`“transmitted segment[]” as recited in claim 1 (and similarly recited in
`
`claim 7).
`
`Weagree with Petitioner because Patent Owner cannot show
`nonobviousness“by attacking references individually” where Petitioner’s
`grounds of unpatentability are based on combinations of references. In re
`Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Jn re Keller, 642
`F.2d413, 426 (CCPA 1981)). In addition, we find that Petitioner’s evidence
`demonstrates that each of Sipola, Kakani, and AAPAteacha triggering
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`eventthat is “in response to” transmitted segments. We agree with
`
`Petitioner’s evidence that one having ordinary skill in the art would have
`
`combinedthe “‘in response to” features taught in Sipola, Kakani, and AAPA
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`“for the purpose of counting the number of TCP packets sent ‘in the
`
`downlink,’ so that ‘[t]he network can allocate uplink resources accordingly’”
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`(Pet. 39) and “to comply with RFC 1122, as noted in AAPA,to ensure ‘an
`
`‘ACK’is transmitted for ‘every second full-sized data segment’ received’”
`(Pet. 40). Thus, the combination of Kakani, Sipola, and AAPAteachesthe
`
`18
`
`
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`IPR2014-01330
`Patent 8,310,993 B2
`
`claim as a whole becausethe “‘in response to” nexus,as recited in claims1
`
`and 7, is taught in the priorart.
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`b. The Prior art Teaches the Limitation “Transmit[ting] a Message that
`
`Indicates an Allocation of Uplink Resources is Sufficient to have Information
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`Indicating Acknowledgement” as Recited in Claim 1 (and similarly recited
`
`in Claim 7)
`Petitioner introduces evidence that includes the cross-examination of
`
`Dr. Wells (Reply 13-14 (citing Ex. 1014, 53:11-15)), which includes “there
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`necessarily must have beenan allocation of uplink resources provided from
`
`the network to the UE prior to the UE transmitting the acknowledgement
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`message” (emphasis addedby Petitioner).
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`Petitioner also introduces evidence that Kakani describes receiving an
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`“acknowledgementsignal” in response to an “allocat[ion] to the MS”of
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`uplink resources. Pet. 34—36 (citing 1008 § 33).
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`Patent Ownerarguesthat Kakanifails to teach “transmit[ting] a
`
`messagethat indicates an allocation of uplink resources to transfer an uplink
`segment and the allocation of uplink resourcesis sufficient to have
`information indicating acknowledgement”as recited in claim 1 (and
`
`similarly recited in claim 7). Specifically, Patent Owner argues that
`paragraph 33 of Kakani does not teach “a message” indicatinguplink
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`resourcesallocation; rather, paragraph 33 of Kakani merely teaches
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`allocating uplink resources. PO Resp. 17 (citing 2002 4 50). In addition,
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`Patent Owner contends that Kakanifails to teach whattriggers the message
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`indicating an allocation and whento transmit the allocation message. PO
`Resp. 18 (citing Ex. 2002 J 51)
`
`19
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`
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`IPR2014-01330
`Patent 8,310,993 B2
`
`Patent Owner’s Declarant, however, confirms that before an
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`acknowledgementis sent, “there necessarily must have beenanallocation of
`uplink resources provided from the networkto the UE prior to the UE
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`transmitting the acknowledgement message” (emphasis added byPetitioner).
`
`Reply 13-14 (citing Ex. 1014, 53:11-15). This argumentis premised on
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`AAPA’s disclosure of transmitting a message to VE 305 requesting an
`allocation of uplink resources that leads to an acknowledgement
`transmission from UE 305 to network 310 (Ex. 1001, step 355 of Fig.3).
`
`Petitioner, thus, relies on AAPA’s disclosure of transmitting a message to
`UE 305 requesting an allocation of uplink resources that leads to an
`acknowledgement transmission from UE 305 to network 310 to teach the
`
`limitation “transmit[ting] a message that indicates an allocation of uplink
`
`resourcesis sufficient to have information indicating acknowledgement”as
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`recited in claim | (and similarly recited in claim 7). Reply 13; Pet. 35-36.
`
`Wefind that column 4, lines 37-41, of AAPApertains to AAPA’s
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`Figure 3 because the element numbersin lines 37-41 correspond to AAPA’s
`
`Figure 3.. Furthermore, in view of Patent Owner’s Declarant testimony and
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`AAPA’s Figure 3, we find that specific steps of AAPA’s Figure 3 teach the
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`limi
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