Trials@uspto. gov
`571-272-7822
`
`Paper 18
`Entered: June 5, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-MOBILE USA,INC., AT&T SERVICESINC.,
`AT&T MOBILITY LLC, AT&T CORPORATION,
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`NOKIA OF AMERICA CORPORATION, AND ERICSSONINC.,
`Petitioner,
`
`V.
`
`COBBLESTONE WIRELESS LLC,
`Patent Owner.
`
`IPR2024-00136
`Patent8,891,347 B2
`
`Before NATHAN A. ENGELS, NORMANH. BEAMER,and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of/nter Partes Review
`35 US.C. $314
`
`
`571-272-7822
`
`Paper 18
`Entered: June 5, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-MOBILE USA,INC., AT&T SERVICESINC.,
`AT&T MOBILITY LLC, AT&T CORPORATION,
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`NOKIA OF AMERICA CORPORATION, AND ERICSSONINC.,
`Petitioner,
`
`V.
`
`COBBLESTONE WIRELESS LLC,
`Patent Owner.
`
`IPR2024-00136
`Patent8,891,347 B2
`
`Before NATHAN A. ENGELS, NORMANH. BEAMER,and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of/nter Partes Review
`35 US.C. $314
`
`
`
`IPR2024-00136
`Patent 8,891,347 B2
`
`A. Background
`
`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 EricssonInc.(collectively, “Petitioner’) filed a
`
`Petition requesting an interpartes review ofclaims 1-4, 6—12, 14-17, and
`
`19-23 of U.S. Patent No. 8,891,347 B2 (Ex. 1001, “the ?347 patent”). Paper
`
`1, 1 (“Pet.”). Cobblestone Wireless LLC (“Patent Owner’)filed a
`
`Preliminary Response. Paper 12 (Prelim. Resp.”).
`
`Aninterpartes review maynotbe instituted unless it 1s determined
`
`that “the information presented in the petition filed under section 311 and
`
`any responsefiled under section 313 showsthat there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 ofthe
`
`claims challengedin the petition.” 35 U.S.C. § 314 (2018); see also
`
`37 C.F.R § 42.4(a) (2021) (“The Boardinstitutes the trialon behalfofthe
`
`Director.”). The reasonable likelihood standard1s “a higher standardthan
`
`mere notice pleading,” but “lower than the ‘preponderance’ standard to
`
`prevail in a final written decision.” Hulu, LLC v. Sound View
`
`Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019)
`
`(precedential).
`
`For the reasons provided below and based on the record before us, we
`
`determinethat it is appropriate for us to exercise our discretion under
`
`35 U.S.C. §314(a) to denyinstitution in this proceeding. Accordingly, we
`
`do not institute an interpartes review based on the Petition.
`
`
`
`IPR2024-00136
`Patent8,891,347 B2
`
`B. Real Parties in Interest
`
`Petitioner identifies T-Mobile USA, Inc., AT&T Services,Inc.,
`
`AT&T Corporation, AT&T Mobility LLC, Cellco Partnership d/b/a Verizon
`
`Wireless, Nokia ofAmerica Corporation, andEricsson Inc. Pet. 2.
`
`Petitioner also identifies Samsung Electronics Co., Ltd., because it is named
`
`as a defendant andits products are accusedof infringementin a related
`
`district court litigation. /d. at 2—3. Patent Ownernamesitself as the real
`
`party in interest. Paper7, 2.
`
`C. RelatedProceedings
`Bothparties identify, as matters involving or relatedto the ’347
`
`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) andreferred 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&TInc., 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; Paper 7,
`
`2. Also, Samsung Electronics America, Inc. filed a petition on December
`
`18, 2023, challenging the 347 patent in IPR2024-003 19.
`
`D. The ’347 Patent (Ex. 1001)
`The ’347patent relates to a method for wireless communication in a
`
`system including a transmitter, a receiver, and multiple propagation paths
`
`formed between the transmitter and the receiver that are capable of carrying
`
`a signal transmitted by the transmitter to the receiver. Ex. 1001, code (57).
`
`The method performs a channelestimation ofa first signal from the
`
`transmitter on one propagation path to obtain parameter information on the
`
`
`
`IPR2024-00136
`Patent 8,891,347 B2
`
`propagation path, predistorting a secondsignalat the transmitter according
`
`to the channel estimation, and transmitting the predistorted signal from the
`
`transmitter to the receiver via the propagation path. Jd.
`
`A schematic representation of a wireless communication system
`
`capable of performing the claimed methodis shownin Figure 1, reproduced
`
`below.
`
`
`
`Figure | is a schematicrepresentation of a wireless communication system
`capable of performing the claimed method. Ex. 1001, Fig. 1, 2:45—47.
`Asthe ’347 patent explains, Figure 1 “illustrates a single-link
`
`communication scenario between a base station whichis configured so as to
`
`act as a transmitter 110 and a mobile station which is configured so as to act
`
`as areceiver 150.” Ex. 1001, 3:23—26. Between transmitter 110 and
`
`receiver 150 “are a numberofbuildings 120—124, whichact as scatterers and
`
`bouncing points of communication signals traveling between the transmitter
`
`110 and the receiver 150 via propagation paths 170, 175, and 180.” /d. at
`
`3:26—30. These propagation paths “are different in delay, direction of
`
`arrival, direction of departure and Doppler frequency,” andthe signals
`
`traveling along these paths “experience different distortions” so that the
`
`
`
`IPR2024-00136
`Patent 8,891,347 B2
`
`same signaltraveling along these paths “mayarrive at the receiver with
`
`different phases.” /d. at 3:47—50, 7:44-46. Asaresult, “[t]heresulting
`
`multiplereplica ofthe originally transmitted signals are addedat the receiver
`
`150, either destructively or constructively.” Jd. at 7:47—49.
`
`The 347 patent explains that “[t]ypically, equalization techniques
`
`knownin theart are used in the receivers 150 to recoverthe original
`
`transmitted signal by removing the distortions.” Ex. 1001, 7:50—52.
`
`“TU|nlike the equalization technique which corrects the distortion at the
`
`receiver 150 after receiving the technique,” the system ofthe ’347 patent
`
`“adds a pseudo ‘distortion’ before the signals are transmitted at the
`
`transmitter 110.” /d. at 7:63-67. “These ‘pre-distorted’ signals,” the °347
`
`patent explains, “are then transmitted in such a way that the signal distortion
`
`can be successfully removed while propagating.” /d. at 7:67—8:3.
`
`The ’347 Patent’s pre-distortion process is shown in more detail in
`
`Figure 4, reproduced below.
`
`
`
`IPR2024-00136
`Patent8,891,347 B2
`
`MiOtsHot? AWAIANAMCALALACALLANNAMAIASLCSONANAINAALACRAASICASANAICAACNLALMANA
`
`riG. 4
`
`As shownin Figure 4, the system first performs a channelestimation ofthe
`
`first signal to obtain path parameter information ofthe propagation path
`
`(step 410). Ex. 1001, Fig. 4, 8:3—7. Next, the transmitter transmits a first
`
`signal to the receiver via a propagation path (step 420).
`
`/d. at Fig. 4, 8:7-9.
`
`The receiverreceivesthefirst signal and performs a channel estimation
`
`algorithm to obtain estimates ofthe delay, Doppler frequency,direction of
`
`arrival, direction of departure, and complex amplitude for each ofthe
`
`propagation paths (step 430).
`
`/d. at Fig. 4, 8:11—16. The receiver then sends
`
`the channel estimation to the transmitter via the propagation path. /d. at Fig.
`
`4,9:1-3. Then, for thenext frameor block to transmit, the transmitter “pre-
`
`distorts” a second signal and generates multiple signal replica with
`
`
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`IPR2024-00136
`Patent 8,891,347 B2
`
`appropriate settings ofthe transmitting time, transmitting pace and
`
`directions, receiving directions, andcomplex weightofthe signal(step 450).
`
`Id. at Fig. 4, 9:6-10. The transmitter sums up and transmits these “pre-
`
`distorted” signal replica (step 460), which are received by the receiver(step
`
`470). Id. at Fig. 4, 9:12—-14.
`
`i. Claim 1
`
`Of challenged claims 1-4, 6—12, 14-17, and 19-23, claims1, 8, 15,
`
`and 19 areindependent. Challenged claim 1 is illustrative, and is
`
`reproducedbelow.
`
`[1.0] A method for wireless communication in a system
`including a transmitter, a receiver, and a plurality of
`propagation paths formed between the transmitter and the
`receiver which are capable of carrying a signal transmitted by
`the transmitter to the receiver, the method comprising:
`
`[1.1] transmittingafirst signal from the transmitter to the
`receiver viaa first propagation path ofthe plurality of
`propagation paths;
`
`[1.2] receivingthefirst signal at the receiver;
`
`[1.3] performing channelestimation basedonthefirst signal
`to obtain path parameterinformation ofthe first
`propagation path;
`[1.4] sendingthe channelestimation that includes the path
`parameter information from the receiver to the transmitter
`via the first propagation path;
`[1.5] predistorting a second signal at the transmitter in a time
`domain, a frequency domain, andaspatial domain,
`according to the channelestimation basedonthefirst
`signal;
`[1.6] transmitting the predistorted secondsignal from the
`transmitter to the receivervia thefirst propagation path;
`and
`
`[1.7] receiving the predistorted second signalat the receiver.
`
`
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`IPR2024-00136
`Patent 8,891,347 B2
`
`Ex. 1001, 16:40—61 (indents and bracketed paragraph identifiers added).
`
`F. AppliedReference
`Petitioner relies upon the following reference:
`
`Stefania Sesia, “LTE: The UMTS Long Term Evolution
`from Theory to Practice,” Second Edition, published by Wiley
`(Ex. 1003, “Sesia”).
`
`Pet. v, 6. Petitioner submits declarations from James A. Proctor (Ex. 1005)
`
`and Sylvia Hall-Ellis (Ex. 1004).
`
`1. Overview ofSesia (Ex. 1003)
`Sesiais a book entitled“LTE—The UMTS Long Term Evolution
`
`From Theory to Practice,” authored by Stefani Sesia, Issam Toufik, and
`
`Matthew Baker, and published by Wiley witha copyright date of2011.
`
`Ex. 1003, 1,5.' Sesia explainsthatit “provides a through, authoritative and
`
`complete tutorial ofthe LTE system, now fully updated and extended to
`
`include LTE-Advanced,” and “gives a detailed explanation ofthe advances
`
`madein our theoretical understanding and the practical techniquesthat will
`
`ensure the success ofthis ground-breaking newradio access technology.”
`
`Id. at 29. One aim ofSesia is “to chart an explanatory course through the
`
`LTEspecifications, to support those who design LTE equipment.” /d. at 32.
`
`Sesia discloses the use of a base station (also referred to as an
`
`eNodeB) in communication with one or more mobile devicesor user
`
`equipment (UE). Ex. 1003, 480. Sesia illustrates in Figure 20.1, reproduced
`
`below,a base station with an omnidirectional antenna that transmitsa signal
`
`along three different propagation paths, shown as Path 1, Path 2, and Path 3.
`
`' The cited pages of Sesia refer to the page numbersaddedbyPetitioner, not
`the original pagesin the book.
`
`
`
`IPR2024-00136
`Patent 8,891,347 B2
`
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`
`Sesia’s Figure 20.1 showsa basestation (right) with an antenna that
`transmits a signal along three propagation paths, Path 1, Path 2, and Path 3.
`Ex. 1003, 480-481.
`
`Sesia explains that, as shownin Figure 20. 1, “[t]he transmitted signal
`
`traverses three paths with different delays.” /d. at 480.
`
`Sesia also explains that LTE “is a coherent communication system,”
`
`meaningthat its detection method “exploits channel knowledge.” Ex. 1003,
`
`207-208. “Coherent detection,” Sesia states, “can make use ofboth
`
`amplitude and phase information carried by the complexsignals, and not of
`
`only amplitude information as with non-coherent detection.” /d. at 207.
`
`“Optimal reception by coherent detection,” according to Sesia, “typically
`
`requires accurate estimation ofthe propagation channel.” /d. “A common
`
`and simple way to estimate the channelis to exploit known signals which do
`
`not carry any data”and, “[i]n order to estimate the channel as accurately as
`
`possible, all correlations between channel coefficients in time, frequency and
`
`space should be taken into account.” /d. at 208. LTE can use reference
`
`signals embedded into a transmitted signal to perform these estimations. /d.
`
`at 208-209.
`
`
`
`IPR2024-00136
`Patent8,891,347 B2
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`Sesia also includes sections describing “frequency-domain channel
`99 66
`
`estimation,”
`
`“time-domain channel estimation,” and “spatial-domain channel
`
`estimation.” Ex. 1003,220—227. Sesia discloses that a user equipment (UE)
`
`can report these channelestimations to an eNodeB using implicit feedback,
`
`which “provides an implicit representation ofthe channel consisting of an
`
`indication ofthe data rate that could be achieved ifthe eNodeB used a
`
`certain precoder.” /d. at 316, 704. This can be compared to “explicit
`
`feedback,” which 1s “not supportedin LTE or LTE-Advanced,” in which “a
`
`UE would insteadexplicitly report a quantized representation ofthe physical
`
`CSI [(ChannelState Information)| without making assumptions about the
`
`nature ofthe eNodeBprecorder.” /d. at 705. Sesia further discloses that
`
`LTE supports beamforming techniques. /d. at 295-298.
`
`G. Asserted GroundofUnpatentability
`Petitioner challenges the patentability of claims 1-4, 6-12, 14-17, and
`
`19-23 of the °347 patent on the following ground:
`
` 1-4, 6-12, 14-17,
`
`Pet. 6.
`
`> The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011)AIA”), included revisions to 35 U.S.C. § 103 that becameeffective
`after the filing ofthe application for the ’136 patent. For purposesofthis
`Decision, we apply the pre-AIA version of 35 U.S.C. § 103.
`
`10
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`
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`IPR2024-00136
`Patent 8,891,347 B2
`
`IW.
`
`DISCUSSION
`
`Patent Ownerasserts that institution should be denied under 35 U.S.C.
`
`§ 314(a), in deference to the parallel district court case. Prelim. Resp. 25.
`
`Weaddressthe parties’ arguments regarding discretionary denial below.
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`
`institution ofreview. See SAS Inst. Inc. v. lancu, 1388. Ct. 1348, 1356
`
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`
`question whetherto 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 committedto the Patent Office’s discretion.”’);
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`
`(“[T]he PTO 1s permitted, but never compelled, to institute an IPR
`
`proceeding.”).
`
`One instance when the Board considers exercising thisdiscretionis
`
`whenthereis an early trial date in relatedlitigation, which the Board
`
`considersas part of assessingall relevant circumstances, including the
`
`merits, to balance considerations such as system efficiency, fairness, and
`
`patent quality. See Apple Inc. v. Fintiv, Inc. , [PR2020-00019, Paper 11
`
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK Spring Co.v.
`
`Intri-Plex Technologies, Inc. , 1PR2018-00752, Paper 8 at 19-20 (PTAB
`
`Sept. 12, 2018) (precedential). The Board evaluates the following six
`
`factors when makingthis assessment:
`
`1. whether the court granted a stay or evidence exists that one
`maybe grantedif a proceedingis instituted;
`
`2. proximity ofthe court’s trial dateto the Board’s projected
`statutory deadlinefor a final written decision;
`
`3. investmentin the parallel proceeding by the court and the
`parties;
`
`11
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`IPR2024-00136
`Patent8,891,347 B2
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`4. overlap betweenissuesraised 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 circumstancesthat impact the Board’s exercise of
`discretion, including the merits.
`
`Fintiv Order at 5—6. In evaluating these factors, we take a holistic view of
`
`whetherefficiency and integrity ofthe system are best served by denying or
`
`instituting review. Fintiv Orderat 6.
`
`On June 21, 2022, the Director issued an Interim Procedure for
`
`Discretionary Denials in AIA Post-Grant Proceedings With Parallel District
`
`Court Litigation (the “Interim Fintiv Guidance”).* The Interim Fintiv
`
`Guidance provides“several clarifications” to “the PTAB’s current
`
`application ofFintiv to discretionary denial wherethereis parallel litigation”
`
`based on comments received from stakeholders in response to a Requestfor
`
`Comments (RFC). Interim Fintiv Guidance at2.
`
`In the analysis that follows, wefirst consider whether Fintiv factors
`
`1—5 weigh in favor of exercising ourdiscretion to denyinstitution. 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 whetherthe Petition presents compelling merits. See CommScope
`
`Techs. LLC v. Dali Wireless, Inc. , 1PR2022-01242, Paper 23 at 5(PTAB
`
`Feb. 27, 2023) (precedential) (“In circumstances where... the Board’s
`
`analysis ofFintiv factors 1—5 favors denial of institution, the Boardshall
`
`> The Interim Fintiv Guidance is available at https://www.uspto.gov/
`sites/default/files/documents/intertmprocdiscretionarydenialsaia_
`paralleldistrictcourtlitigationmemo_20220621_. pdf.
`
`12
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`IPR2024-00136
`Patent 8,891,347 B2
`
`then assess compelling merits.”). “Compelling, meritorious challenges are
`
`those in which the evidence, ifunrebutted in trial, would plainly lead toa
`
`conclusion that one or more claims are unpatentable by a preponderance of
`
`the evidence.” Interim Fintiv Guidance at 4. “A challenge can only ‘plainly
`
`lead to a conclusion that one or moreclaimsare unpatentable’ (id. ) if it is
`
`highly likely that the petitioner would prevail with respectto at least one
`
`challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-
`
`01064, Paper 102 at 49-50 (PTAB Oct. 4, 2022) (precedential) (“OpenSky’).
`
`“[A] determination of ‘compelling’ merits should not be taken as a signal to
`
`the ultimate conclusionaftertrial.” /d. As discussed below,wefind that
`
`Petitioner has not made a sufficient showing of compelling merits based on
`
`the record presented. Thus, wefind that it is appropriate to exercise our
`
`discretion to denyinstitution based on the status ofthe parallel district court
`
`case.
`
`1. Factor 1: whethera stay exists oris likely to be granted ifa
`proceedingis instituted
`Underthe first Fintiv factor, we consider “whether the court granted a
`
`stay or evidence exists that one may be granted ifa proceedingis instituted.”
`
`Fintiv Order at 6. Patent Ownercontendsthat this factor weighsin favor of
`
`denial because “no stay ofthe paralleldistrict court litigation has been
`
`granted, anda stay is unlikely given the advanced stage ofthecase.” Prelim.
`
`Resp. 26. Petitionerarguesthat neither party has requested a stay in the
`
`district court proceeding, and this factor should be considered neutral.
`
`Pet. 67.
`
`Wewill not attempt to predict how thedistrict court in the parallel
`
`district court case would proceed ifa stay is requested because the court may
`
`determine whetheror not to stay any individualcase, including the related
`
`13
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`IPR2024-00136
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`one, based on a variety of circumstances and facts beyond our control and to
`
`whichthe Board 1s not privy. SandRevolution II, LLC v. Cont’l Intermodal
`
`Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
`
`(informative) (“SandRevolution’). Accordingly, we find that factor 1 is
`
`neutral.
`
`2. Factor 2: proximity ofthe court’s trial date to the Board’s
`projected statutory deadline
`
`Underthe secondFintiv factor, we consider the “proximity ofthe
`
`court’s trial date to the Board’s projected statutory deadlinefora final
`
`written decision.” /intiv Order at 6. Petitioner states that the parallel
`
`district court case “is not set to begin until at least September 23, 2024.”
`
`Pet. 61 (citing Ex. 1011, 1). Petitioner argues that it moved to consolidate
`
`the parallel district court case (whichit refers to as the “Carrier 1.0 cases”’)
`
`with a later district court case (which it refers to as the “Carrier 2.0 cases”),
`
`and that trialin the later district court case is set to occur in May 2025.
`
`Prelim. Reply 2—3, 4-5. According to Petitioner, Patent Owner’s analysis
`
`fails to considerthis potential consolidation. /d. at 1-2. Petitioner also
`
`contends that it was “granted a limited intervention in the Samsung Case to
`
`oppose Patent Owner’s attempted modification ofthe Protective Order in
`
`that case” and,“[i]n that opposition, Petitioners pointed out the faults in
`
`Patent Owner’s attempts to prevent consolidation.” /d. at 5.
`
`Patent Ownerstates that “the district court trial is set to occur over
`
`eight months before the deadline for a final written decision,” which Patent
`
`Ownerargues “weighs heavily infavor of discretionary denial.” Prelim.
`
`Resp. 30 (emphasisin original). Patent Owneralso arguesthat the
`
`“timeframeset by the district court is consistent with the Federal Court
`
`ManagementStatistics for the Eastern District of Texas.” /d. at 29.
`
`14
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`Specifically, Patent Ownerasserts that thesestatistics “indicate that, over the
`
`past six years, a civil case in the district was broughtto trial 19.6 months
`
`after filing,” and that thetrial statistics “indicate median timestotrial for
`
`civil cases for the twelve-month period ending in Decemberfor 2018—2023
`
`as 19.0, 17.8, 17.5, 23.0, 19.0,and 21.4.” /d. at 29-30 (citing Ex. 2003
`
`(Trial Statistics)). In the parallel district court case, according to Patent
`
`Owner,“trial is set approximately 21 months after the cases werefiled.” /d.
`
`at 30 (citing Ex. 1011 (Docket Control Order), 1; Exs. 2004—2006(parallel
`
`casesfiled December 15—16, 2022)).
`
`Patent Ownerfurther arguesthat Petitioner’s consolidation motion “is
`
`unlikely to be granted” because “there are no overlapping patents, patent
`
`families, inventors, or claim construction issues,” and consolidation would
`
`result in an eight-month trial delay. Prelim. Surreply 1-2, 4. Accordingto
`
`Patent Owner,“the presiding judge in the district court cases, Judge Gilstrap
`
`sua sponte divided and consolidated the cases pending betweenPetitioners
`
`and Patent Ownerinto two groups: the first group involving the °347 and
`
`other families (Carrier 1.0), and the second group involving an entirely
`
`different family (Carrier 2.0),” which “further suggests Judge Gilstrap1s
`
`unlikely to consolidate Carrier 1.0 and 2.0 cases now.” /d. at 5.
`
`Wewill not attempt to predict how thedistrict court in the parallel
`
`district court case will decide the pending consolidation motion. Cf Sand
`
`Revolution, IPR2019-01393, Paper 24 at 7. Here, as Patent Ownerpoints
`
`out, the deadline for ourfinal written decision is approximately eight months
`
`after the current trial date in the parallel district court case. Additionally, the
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`average time totrial for the Eastern District of Texas for the 12-month
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`period ending December31, 2023, is listed as 21.4 months, whichis very
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`IPR2024-00136
`Patent 8,891,347 B2
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`similar to the21-month period from filing to the trial date set by the district
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`court. See Ex. 2003. Thus, the estimatedtrial date based on the average
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`time to trial statistics 1s very close to thetrial date set by thejudge in the
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`parallel district court case. In light ofthese facts, we find that factor 2
`
`weighs in favor of exercising discretion to denyinstitution.
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`3. Factor 3: investmentin the parallelproceeding by the court and
`parties
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`Underthe third /intiv factor, we consider the “investmentin the
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`parallel proceeding by the court and the parties.” Fintiv Orderat6.
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`Petitioner arguesthat factor 3 “weighs heavily against discretionary denial”
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`because the parallel district court case “‘is still in the very early stages of
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`litigation.” Pet. 67. More specifically, Petitioner asserts that “discovery is
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`still in the preliminary stages,” invalidity contentions werefiled in May
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`2023, “Claim Construction is not scheduled until April 30, 2024,” and“a
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`claim construction order will not issue prior to the PTAB’s projected
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`institution date.” /d. Petitioner further contendsthatit “diligently prepared
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`this Petition and filed well in advance ofthe statutory deadline, which
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`weighs against denying institution.” Jd.
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`Patent Ownerargues“the parties and the district court will have
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`invested significant time and resourcesin the district court litigation by the
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`time the Board reaches an institution decision in this matter.” Prelim.
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`Resp. 35. Patent Owner argues “an order resulting from the May 2, 2024
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`Markman hearing (Ex. 2001) will likely issue prior to the June 11, 2024
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`deadline for the institution decision” and fact discovery and the exchange of
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`opening and rebuttal expert reports also will be completed prior to June 11,
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`2024.
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`/d. at 33-34. Regarding diligence, Patent Ownerargues Petitioner
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`16
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`IPR2024-00136
`Patent 8,891,347 B2
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`“unduly delayed in filing their Petition, filingjust over two weeks before the
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`statutory deadline.” /d. at 36.
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`Because the Markman hearing will be completed priorto the time of
`
`the institution decision and discovery will have proceeded to an advanced
`
`stage (including the close of fact discovery and exchange of opening and
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`rebuttal expert reports) by the time ofthis Decision, wefind that factor 3
`
`weighs in favor of exercising discretion to denyinstitution.
`
`4. Factor 4: overlap betweenissues raisedin the petition andin the
`parallelproceeding
`
`Underthe fourth Fintiv factor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv Orderat
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`6. The Petition states that “if instituted, Petitioner stipulates that it will not
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`pursue invalidity against the asserted claimsin the district court using the
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`specific combinationofprior art referencesset forth in the grounds
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`presented in this Petition for purposesof establishing obviousness(e. g.,
`
`Sesia et al. under § 103).” Pet. 68. Patent Ownerarguesthat the fourth
`
`Fintiv factor favorsinstitution despite Petitioner’s stipulation. Prelim. Resp.
`
`37-40. In particular, Patent Ownerasserts that Petitioner’s “limited”
`
`stipulation “doesnotalleviate inefficiency concems.” Prelim. Resp. 38-39.
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`Petitioner’s stipulation that it will not rely on the groundsasserted in
`
`the Petition in the parallel district court proceeding mitigates to at least some
`
`degree concernsof duplicative efforts and potentially conflicting decisions.
`
`See SandRevolution, Paper 24 at 12. Thus, wefind that factor 4 weighs
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`marginally against exercising discretion to deny institution.
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`17
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`IPR2024-00136
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`5. Factor 5: whetherthepetitioner and the defendantin theparallel
`proceeding are the sameparty
`
`Underthefifth Fintiv factor, we consider “whether the petitioner and
`
`the defendantin the parallel proceeding are the same party.” Fintiv Orderat
`
`6. Petitioner acknowledges “overlapping parties” and arguesfactor 5 is
`
`neutral. Pet.68. Patent Ownerargues “Petitioners are the defendants and
`
`intervenorsin the parallel litigation” and, therefore, factor 5 weighs in favor
`
`of exercising discretion to denyinstitution. Prelim. Resp. 41.
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`In light ofthe fact that the trial date in the parallel district court case
`
`significantly precedes the Board’s anticipated deadline for a Final Written
`
`Decision, wefind that factor 5 weighs in favor of exercising discretion to
`
`deny institution. See Huawei Techs. Co., Ltd. v. WSOUInvs., LLC,
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`IPR2021-00225, Paper 11 at 13-14 (PTAB June 14, 2021) (factor 5 “favors
`
`denial iftrial precedes the Board’s Final Written Decision and favors
`
`institution ifthe opposite is true”).
`
`6. Factor 6: other circumstancesthat impact the Board’s exercise of
`discretion, including the merits
`
`The merits ofthe petition’s challengesare part ofthe “balanced
`
`assessmentofall the relevant circumstances” the Board undertakes in the
`
`Fintiv discretionary denial analysis. Hintiv Order, at 14-16. TheInterim
`
`Fintiv Guidancealso providesthat “compelling, meritorious challenges will
`
`be allowed to proceed at the PTAB even wheredistrict court litigationis
`
`proceeding in parallel.” Interim Fintiv Guidance at 4. The Guidance defines
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`“[c]ompelling, meritorious challenges”as “those in which the evidence,if
`
`unrebuttedat trial, would plainly lead to a conclusion that one or more
`
`claims are unpatentable by a preponderance oftheevidence.” /d.; see
`
`CommScope, IPR2022-01242, Paper 23 at 3. In CommScope, the USPTO
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`18
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`IPR2024-00136
`Patent 8,891,347 B2
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`Director further explained that “[a] challenge can only ‘plainly leadtoa
`
`conclusion that one or more claims are unpatentable’ if it is highly likely that
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`the petitioner would prevail with respect to at least one challenged claim.”
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`CommScopeat 3-4 (quoting OpenSky, IPR2021-01064, Paper 102 at 49).
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`According to CommScope, we should only reach the compelling
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`merits analysis ifwe first determine thatthefirst five Fintiv factors favor
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`discretionary denial. CommsScopeat 4.
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`Thus, in circumstances where the Board determinesthat the
`other Fintiv factors 1—5 do not favordiscretionary denial, the
`Board shall decline to discretionarily deny under /intiv without
`reaching the compelling merits analysis. In circumstances
`where, however, the Board’s analysis ofFintiv factors 1-5
`favors denial of institution, the Board shall then assess
`compelling merits.
`
`Id. at 4-5. In this case, Fintiv factors 1-5 favor denial. Specifically,
`
`weighing factors 1—5 in this case, we find that the approximately 8-month
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`delay between the estimated trial date andthe deadlinefor a final written
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`decision in this IPR (factor 2), the progress of and investment made by the
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`parties and the Court in the parallel district court case (factor 3), and the fact
`
`that Petitioner is also a party in the District Court Litigation (factor 5)
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`outweigh Petitioner’s stipulation mitigating the concernsabout overlap
`
`between the two proceedings(factor 4). Additionally, we find that factor 1
`
`is neutral. Thus, we address whether the merits ofPetitioner’s case are
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`compelling.
`
`Based on the present record, we do notfind that Petitioner has
`
`presented a “compelling, meritorious challenge”as to any ofthe challenged
`
`claims. Amongotherthings, Petitioner bases its arguments on the
`
`construction oftwo claim terms: (1) “path parameter information” and
`
`(2) “predistorting a second signalat the transmitter in a time domain,
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`19
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`IPR2024-00136
`Patent 8,891,347 B2
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`frequency domain, and a spatial domain,” which appear in claim 1 and in the
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`same or similar form in independent claims 8, 15,and 19. Pet. 14-16.
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`Petitioner submits constructionsthat it represents are “Patent Owner’s
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`apparent interpretation of” these terms, although it acknowledgesthat
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`“Patent Ownerhas not formally provided proposed claim constructions.” /d
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`at 13-14. These termsare discussed further below.
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`a)
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`“pathparameter information”
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`Petitioner arguesthat “[i]n the co-pending district court litigation,
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`Patent Ownerinterprets “path parameter information’ broadly to capture any
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`channelstate information feedback, regardless ofwhether that channelstate
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`information is an explicit or implicit channel estimation.” Pet. 14.
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`However, although Petitionerrelies on this construction, Petitioner also
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`criticizes the construction,asserting that “the [’347] patent expressly
`
`excludes implicit estimation from path parameter information”and that
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`Patent Owner’s purported construction “is not consistent with the plain and
`
`ordinary meaning”oftheclaim language. /d. (emphasis added). In
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`discussing claim construction, Petitioner does notoffer alternative
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`constructions, but instead exclusively relies on the construction it ascribes to
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`Patent Owner and criticizes. /d. at 14-15.
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`In the section ofthe Petition applying the priorart to the claims,
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`Petitioner makesclearthat it is relying on Patent Owner’s purported
`
`construction of “path parameter information.” Pet. 34—36. Specifically,
`
`when comparing limitation [1.3]to Sesia, Petitionerasserts that:
`
`Based on Sesia’s disclosure, a [person of ordinary skill in the
`art would understand, under Patent Owner’s apparent
`interpretation ofthe claims, that the informationthat is
`obtained from performing channelestimation on a reference
`signal and subsequently provided to the eNodeB by the UE as
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`IPR2024-00136
`Patent 8,891,347 B2
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`either implicit or explicit feedback corresponds with the
`claimed “path parameter information.” Furthermore, under
`Patent Owner’s apparent interpretation ofthe claims, based
`on Sesia’s disclosure, a [person of ordinary skill in the art]
`would understand that this information is ‘path parameter
`information ofthe first propagation path” given that channel
`estimation attempts to define the channel model ofa
`propagation path.
`
`Pet. 35 (emphasis added) (citing Ex. 1005 4 135). At the endofthe
`
`discussion ofthis claim element, Petitioner states that Sesia discloses or
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`teaches the claim language “undereither Patent Owner’s apparent
`
`interpretation or theplain and ordinary meaning ofthe term,” but
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`Petitioner never explains what the plain and ordinary meaning ofthe term 1s,
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`or how thatplain and ordinary meaningis disclosed by Sesia.
`
`/d. at 36
`
`(emp
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