Trials@uspto.gov
`571-272-7822
`
`|
`
`Paper 7
`Entered: August 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`‘Patent Owner.
`
`IPR2022-00339
`Patent 10,492,179 B2
`
`Before GEORGIANNA W. BRADEN, SHARONFENICK,and
`STEPHENE. BELISLE, AdministrativePatentJudges.
`
`FENICK,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`571-272-7822
`
`|
`
`Paper 7
`Entered: August 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`‘Patent Owner.
`
`IPR2022-00339
`Patent 10,492,179 B2
`
`Before GEORGIANNA W. BRADEN, SHARONFENICK,and
`STEPHENE. BELISLE, AdministrativePatentJudges.
`
`FENICK,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`IPR2022-00339
`Patent 10,492,179 B2
`
`INTRODUCTION
`I.
`A BackgroundandSummary
`Apple Inc. (“Petitioner”) filed apetition for interpartes review
`challenging claims 1-18 (“challenged claims”) ofU.S. Patent 10,492,179 B2
`(Ex. 1001179 patent”)). Paper 2 (“Pet.” or “Petition”).
`.
`Telefonaktiebolaget LM Ericsson(“Patent Owner”) timely filed a
`Preliminary Response. Paper6 (“Prelim. Resp.”). The standardfor
`instituting an interpartesreview is set forthin 35 U.S.C. § 314@), which
`provides as follows:
`(a) THRESHOLD.—TheDirector maynot authorize an inter partes |
`review to be instituted unless the Director determines that the
`information presentedin the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respectto at least 1 ofthe claims challenged in thepetition.
`
`35 U.S.C. § 314(a).
`Petitioner challenges claims 1—18 as unpatentable under 35 U.S.C.
`§ 103. Pet. 1. Patent Ownerarguesthat the Petition should be denied. See
`generally Prelim. Resp. Based on ourreview of the record, we concludethat
`Petitioner is reasonably likely to prevail in demonstratingthat at least one of
`the challenged claims is not patentable.
`Ourfindings of fact and conclusions discussed below are based on the
`evidentiary record developedthus far. This Decisionto institute trial is not a
`finaldecision asto the patentability ofany challenged claim. Any final
`decision will be based on the full record developed duringtrial.
`
`
`
`IPR2022-00339
`Patent 10,492,179 B2
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`B. Real Parties in Interest
`Patent Ownerstates that Telefonaktiebolaget LM Ericsson and
`EricssonInc. are real parties in interest. Paper 4 (Patent Owner’s Mandatory
`Notices),2.
`
`Petitioneridentifies only itself as a real party in interest. Pet. 83.
`C. RelatedMatters
`|
`Patent Ownerand Petitionerindicate the ’179 Patent was challenged
`previously in a petition filed in IPR2021-00587, now terminated. Pet. 83;
`Paper 4, 2. Petitioner notes that the petition was dismissed priorto
`institution and before a preliminary response wasfiled. Pet. 83.
`D. The ’179 Patent
`|
`
`The ’179 patentis titled “Resource Signaling for PUCCH[Physical
`Uplink Control CHannel]”and generally relates to user equipment (UE)in a
`radio access network transmitting acknowledgementsignaling pertaining to
`| downlink data received from a networknode. Ex. 1001, codes (54), (57),
`4 338-57, 15:63. The ’179 patent describes that a UE receives downlink data
`including one or more downlink data elements. Jd. at code (57), 1:39-42,
`1:48-62. The UE transmits,in uplink, acknowledgementsignaling, for
`example, according to an ARQ (Automatic Repeat reQuest) or HARQ
`(Hybrid Automatic Repeat reQuest) process, which represents an
`acknowledgement or non-acknowledgementofcorrect reception of a
`corresponding downlink data element. Jd. at 1:59-66, 3:30-47, 7:5—22.
`The acknowledgementsignaling may have a format comprising one or
`more acknowledgementsubstructures, each ofwhichcarries
`
`acknowledgement information pertaining to a downlink data element. Jd. at
`code (57), 1:62-66, 4:31-35. The mappingofacknowledgement
`substructure to downlink data elementis based on information
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`(acknowledgementposition indication) provided in downlink control
`signaling received by the UE. Id. at code (57), 1:46-49, 1:66-2:3, 4:15-18.
`The acknowledgement position indication may include a resourceselection
`indication, which indicates a resource for transmitting an acknowledgment
`indication, selected from a numberofpossible resources, e.g., ona PUCCH
`uplink channel. Jd. at 4:36—-42, 4:44-49, Additionally, the acknowledgment
`position indication may comprise a timing indication,indicating a timing
`(e.g., a timeintervallike a slot) for transmitting the acknowledgment
`signaling, as well as indicating to which acknowledgment substructure ofa
`resource a data element is mapped. Id. at 4:50-55, 5:6-8.
`Figure 3 of the ’179 patent, reproduced below,is anillustration
`Showing a mappingofsignaling to PUCCH resources. Id. at 8:63-64, 10:1-
`
` Slot-n#i
`
`Slot n+2 —_ ‘Slot n¢3°
`
` eaaancntancimaseaeinatiateadaeensnatitamtiES
`
`{transmittedin stot n+3}
`
`Fig. 3
`
`As seen in Figure 3, in slot n, the downlink transmission contains DCI
`(downlink control information) 0. Id. at9:16-18, 10:1-5. The ACK/NACK
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`timing indicator (T) in DCI0is 3, indicating that feedbackis requested three
`timeslots later, in slot n+3. Id. at 3:59-63, 9:16—-20, 10:22—25, 10:38-44,
`Fig. 3. Similarly, the timingindication T in the DCI of slot n+1 (T=2) and
`slot n+3 (T=0) indicates that feedback for each of these downlink
`|
`transmissionsis also requestedin slot n+3. Jd. Thus, as shown by arrows,
`each DCIpoints to the sameslot for transmitting feedback.
`In each DCI, an ACK/NACK ResourceIndicator (ARI) is a resource -
`selection indicator and indicates a PUCCH resourceto be used to transit
`HARQ feedback. Jd. at 4:36-49, 9:21—22, 9:27-30, 9:42-44. As can be
`seen in Figure 3, each ARI in the DCI for each downlink transmission points
`to the same PUCCHresource(resource 0). Id. at 10:3—5, 10:48-51, Fig. 3.
`“The PUCCHformat must be capable to carry multiple bits in different
`substructures. Accordingly, HARQ feedback ofmultiple DL transmissions
`is transmitted on a single PUCCH transmission/message, respectively is
`Jointly encoded/modulated (PUCCHis completely transmittedin slot n+3).”
`Id. at 10:5-10.
`
`As the timing indicator T and the ARIin each DCIindicates the same
`time slot and PUCCHresource,the timing indicators T mayalso be used for
`a secondpurpose — to indicate which substructure within the PUCCH
`resource shouldbe usedfor transmitting the feedback. Jd. at 4:50-55,
`10:22-29, 10:56—-62, Fig. 4. Thus, fora one-bit HARQ feedback, PUCCH
`resource 0 of slot n+3 could have the HARQfeedbackforslot n in bit
`field 3, for slot n+1 in bit field 2, andforslot n+3in bit field 0. Id. at 10:56—
`60. Bit field 1, which would correspondto a downlink transmission in slot
`n+2, not presentin the examples presented, would be set to NACK.Id.at
`10:60-65, 11:17-18. More generally, feedback may be morethan onebit,
`andthe timing indicator T points to the PUCCH sub-resource within the
`
`~
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`PUCCHresourceindicated by the ARI. Jd. at 10:66~11:11, 11:13-16,
`11:18-28, 11:53-56.
`
`|
`E. Challenged Claims
`Challenged claims 1, 7, and 13 are independent. Challenged
`claims 2-6, 8-12, and 14—18 depend from claims 1, 7, and 13, respectively.
`Challengedclaim 1 is reproducedbelow, with the addition ofbrackets
`correspondingto thelimitation identifiers usedin the Petition.
`1. Amethodofoperating a User Equipment, UE,in a New
`Radio, NR, Radio Access Network,the method comprising:
`[1.a]
`transmitting Hybrid Automatic Repeat Request,
`HARQ,feedback pertaining to downlink data transmitted on a
`Physical Downlink Shared Channel, PDSCH,[1.b] the downlink
`data comprising at least one downlink data element, [1.c] the
`HARQfeedback having an uplink signaling format comprising
`at least one acknowledgement substructure, [1.d] each of the
`substructures carrying acknowledgementinformation pertaining
`to a downlink data element, [1.e] each of the acknowledgment
`substructures being mappedto a different of the downlink data
`elements based on at
`least one acknowledgement position
`indication provided in downlink control signaling received by
`the UE;
`,
`[1.f] the acknowledgmentposition indication comprising
`a timing indication, the timing indication comprisinga timingbit
`pattern of more than one bit explicitly indicating a slot for
`transmitting the HARQ feedback, [1.g] the slot comprising at
`least 14 symboltime intervals;
`[1.h] the acknowledgement position indication further
`comprising a resource selection indication comprising a resource
`bit pattern, the resource bit pattern comprising morethan onebit _
`explicitly
`indicating a Physical Uplink Control Channel,
`PUCCH,resource for transmitting the HARQ feedback, [1.i] the
`resource bit pattern being separate from the timing bit pattem;
`and
`
`[1.j] the PUCCHresource being a time-frequencyresource
`and being selected by the resourceselection indication from a
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`pool of resources configured to the UE to be available for
`transmitting the HARQ feedbackin the slot indicated by the
`- timing indication.
`
`Ex. 1001, 16:2-33.
`
`1005
`
`1007
`
`
`
`F References Relied Upon
`Petitioner relies upon the following prior art references:
`
`
`
`
`Reference ~~ -
`-
`oe
`Exhibit
`
`
`)
`
`
`Kim, US 2017/0289981 A1, published Oct. 5, 2017 (“Kim”
`3GPP R1-1608808, Discussion on subframe design with
`
`
`
`symbollevel alignment, 3GPP TSGRAN WGI
`
`Meeting #86bis.
`(“Fujitsu”
`
`
`
`1012
`Li, et al., US 10,158,461 B2,issuedDec..18, 2018 (“Li”)
`
`
`
`
`Tirola, et al. WO 2018/127628 Al, filed Jan. 3, 2018
`. 1008
`“Nokia”
`
`3GPP R1-1702983, Resource AllocationforPUCCH, 3GPP
`TSGRAN WGI #88. (“Ref3GPP”
`
`
`_| 3GPP TR 38.802 V1.0.0 Technical Specification, 3rd
`
`Generation Partnership Project; Technical Specification
`
`Group Radio Access Network; Study on New Radio (NR)
`
`
`Access Technology PhysicalLayerAspects (Release 14),
`
`
`
`
`1010
`
`1013
`
`
`
`
`
`
`
`Petitioneralso relies on the Declaration of Dr. Zhi Ding. (Ex. 1003).
`G. PriorArt and Asserted Challenges to Patentability
`Petitionerasserts that claims 1-18 are unpatentable on the following
`challenges:
`
`
`
`| Claim(s) Challenged
`
`35 U.S.C.§!
`
`
`
`
`
`
`' Reference(s)/Basis
`
`
`
`
`Kim
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103 for applicationsfiled on
`or after March 16, 2013. The ’179 patent wasfiled after that date and does
`not contain a priority claim to an application filed before that date. See
`
`7
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`2, 5,6, 8,11, 12, 14,
`
`
`
`-Claim(s) Challenged|
`
`
`
`
`2,5, 6, 8, 11, 12, 14,
`
`103
`1-183SSSS=«S Nokia, RefBGPP
`103
`Nokia, Ref3GPP, 3GPP/TS
`
`
`!
`Pet. 1.
`The following subsections provide a brief description ofthe asserted
`prior art references.
`
`
`
`103
`
`
`.35U:S.C.-§!:. |"). -Reference(s)/Basis
`
`Kim, Fujitsu
`.
`.
`
`.
`
`..
`
`.
`
`
`
`
`
`
`
`1. Kim
`
`Kim istitled “Method andApparatus for Transmitting and Receiving
`Feedback in Wireless Communication System,” andrelatesto a terminal that
`receives a downlink subframefrom a basestation and provides HARQ
`feedback related to downlink data according to information contained in
`downlink control information (DCI)in that subframe. Ex. 1005, codes (54),
`(57).
`
`Kim describes a download subframeand an upload subframewith
`reference to Figure 1, whichis anillustration ofa timedivision duplex
`(TDD)framestructure and reproduced immediatelybelow. Id. 99 51, 54
`56.
`
`Ex. 1001, codes (22), (63), 1:6-8. Accordingly, for the purpose of
`institution, we apply the AIA version of 35 U.S.C. § 103.
`
`8
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`FIG.
`
`1
`
`105
`a
`
`106
`107
`108
`109
`rc? a lad
`
`110
`
`101
`Pad
`
`102
`103
`cf a)
`
`108
`
`ce
`
`Figure 1 depicts a TDD framewith ten subframes, and depicts enlarged
`views oftwo subframes, subframe 120, which is a downlink subframe, and
`subframe 130, which is an uplink subframe. Jd. 99 17,51—53. Inthe
`depiction of each subframe,the horizontalaxis is the time domain, which
`may be composed of symbols. Jd. 53. The vertical axis is the frequency
`domain, which may be composedofsubcarriers. Id.
`Downlink subframe 120 includes an xPDCCH(x physical downlink
`control channel) region and an xPDSCH(x physical downlink shared
`channel) region, after which (in the horizontal(time) direction) a guard
`periodis configured to minimize error during a switch from downlink to
`uplink for the xPUCCH(x physical upload control channel) region. Id. q 54.
`The xP DCCHis a downlink control channel, the xPDSCHis a downlink
`data channel, and the xPUCCHis an uplink control channel. Jd. Uplink
`subframe 130 includes a downlink control channel, followed by a guard
`period, followed by xPUSCH(x physical uplink shared channel), whichis
`an uplink data channel, and then an uplink control channel. Id. 755.
`
`
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`IPR2022-00339
`Patent 10,492,179 B2
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`The DCI in a downlink subframe may include information for
`scheduling information for HARQ feedbackrelating to the downlink data in
`that subframe, such as information aboutthe transmission time and
`frequency resourcesofthe uplink control channel (xPUCCH)that will be
`used for feedback. Id. J] 56,57, 59, 60,62. Thus, ifresourcesfor HARQ
`feedback are not predetermined,“information about time and frequency
`resourcesofthe xPUCCHtotransmit the HARQfeedback... may be
`provided through the DCI.” Id. 44 64, 76.
`The DCI in a downlink subframe mayalso include bitmap index
`information (BMI). Jd. {[60, 63. This is information indicating location |
`information in a bitmap, allowing the terminal to update HARQ feedback
`information relating receipt of the data in the downlink data channelin the
`indicated bit in the bitmap. Jd. 64. The bitmap messageis then reported in
`the subframe and frequency resourceindicated as the xPUCCH resource. Id
`If'a plurality of DCIs (from different downlink subframes) indicates the
`same subframe as the xPUCCHresource, the BMI value is different for each
`DCI. Id. Inthis way, ACK/NACKinformation for data receivedin a
`plurality of subframes may be multiplexed in one bitmap message. Id.
`4] 71-72.
`
`The DCI may includean offset numberindicating the subframe in
`which the corresponding xPUCCHcontaining HARQfeedback should be
`transmitted. Jd. 87. For example, the offset (k_offset) may be a value
`between 0 and7, and if the DCIis receivedin the subframeofindex n, the
`xPUCCHwill be transmitted subframe ofindex (n+k_offset). Id. A
`default offset may also be added. Jd. The DCI mayalso include an indexi
`indicating the frequency resource ofthe xPUCCH tobe used. Jd. qq 101-
`103, 112.
`
`LO
`
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`Patent 10,492,179 B2
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`2. Fujitsu
`Fujitsu is adocumentfor discussion/decision in a3GPP (Third
`Generation Partnership Project) technical specification group meeting that
`describes agreements andadditional contributionsrelating to “subframe
`design with symbollevel alignment.” Ex. 1007, 1. Fujitsu describes
`existing agreements as providing that “14 will be one of[the] possible
`numberofsymbols for [a] subframe irrespective of subcarrier spacing.” Id.
`
`at 2.
`
`3. Li
`
`L1 is titled “Uplink Control Information Transmitting Method and .
`Apparatus,” and describes transmitting HARQ acknowledgmentin uplink
`control information. Ex. 1012, codes (54), (57). In Li, UE receives
`configuration signaling in radio resource control (RRC) signaling and
`determines a candidate PUCCHset correspondingto an
`_
`acknowledgement/negative acknowledgementresourceindication (ARI)
`received in the RRC signaling. Jd. at 7:20-28. The UE then receives
`downlink grant signaling and downlink data, and generates HARQbits
`relating to the downlink data. Jd. at 7:34-36. The UE processesfor uplink
`control information (UCI) bits to be transmitted, including the HARQ
`information, determines the PUCCHusedto transmit the UCIbits in the
`candidate PUCCHset accordingto the ARI in the downlink grant signaling,
`and transmits the UCIbits on the determined PUCCH.Jd. at 7:39-43.
`Candidate options may include PUCCHSsin different formats, and the base
`station mayflexibly and dynamically indicate the PUCCH format and
`PUCCHresourceto be used via the ARI in the downlink signaling.
`Id.
`at 15:57-61.
`
`1]
`
`
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`4. Nokia
`
`Nokiais titled “Scalable Feedback Reporting,” and describes a system
`for communicating acknowledgments, such as HARQ acknowledgements,in
`a codebook. Ex. 1008, codes (54), (57), 2:24. This HARQreporting for
`downlink data, according to Nokia, may be performed onuplink in PUCCH.
`Id. at 3:11—12, 3:16-17, 11:21-25. The HARQ codebookis a set of HARQ
`bits ordered in a predetermined mannerandjointly coded. Jd. at 4:18-19.
`Multiple codebooks may be concatenatedinto a single joint codebook. Id.
`at 4:20-—21.
`
`A specific upload slot may be specified by data within a downlink
`grant, including timing offset information, for example by data in a DCI. Jd.
`at 4:23—26, 6:4—5, 9:8-11. Feedback for downloadslots that specify a single
`uploadslot is transmitted in a codebookin that uploadslot. Id. at 5:21-25,
`6:15-16. The downlink grant may include information specifying a starting
`or ending position of a feedback window. Jd. at 12:33-13:1.
`The access node may associate downloadslots with other uploadslots
`even before the end of one feedbackwindow andthe transmission of a
`codebook in a first uploadslot, for example in order to balance codebook
`size between two upload slots. Id. at 5:25-29.
`5. Ref3GPP
`Ref3GPPis adocument for discussion/decision in a 3GPP technical
`specification group meetingthat describes resource allocation for PUCCH.
`Ex. 1010, 1. Ref3GPP describes that dynamicsignaling is used in
`combination with semi-static configuration to determine a PUCCHresource,
`which includes time and frequency domains. Jd.
`Ref3GPP describes thatNewRadio supports multiple PUCCH
`formats for HARQtransmission. Jd. at 2.
`
`12
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`Ref3GPP furtherdescribes that a two-bit “ARO” maybe usedto
`indicate an offset to the PUCCH resourcein order to resolve PUCCH
`
`resource collisions from UEs with downlink data transmitted in different
`
`downlink slots. Id.
`
`Ref3GPPdescribesthatefficient UL resourceutilization and reduced _.
`DLsignaling overhead may beachievedby having oneofpre-configured
`HARQtiming values dynamically indicated by HARQtiming bit in DCI,
`and similarly having one ofa set of frequency/coderesource values
`indicated by ARI/ARO-likebit in DCI. Id.
`6. 3GPP/TS
`
`3GPP/TSis a technical specification study on NR access technology,
`physical layer aspects. Ex. 1013, 1. It describes a slot as 7 or 14 OFDM
`symbols. Id. at 8.
`|
`
`II. PROCEDURAL CONSIDERATIONS- 35 U.S.C. § 325(d)
`Patent Owner contends that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny the Petition, applying ourprecedential decisions
`in AdvancedBionics, LLCv. MED-EL Elektromedizinische Gerdate GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
`Bionics’’) and Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec.15, 2017) (precedential asto § III.C.5,
`first paragraph) (“Becton, Dickinson”), Prelim. Resp. 16-25. Specifically,
`Patent Ownerarguesthat we should notinstitute “because Kim, Nokia, and
`Ref3GPPare cumulative of Seo!*!, which.was specifically considered by the
`
`Seoet al, US 2016/0270066 Al, published Sept. 15, 2016 (“Seo”)
`(Ex. 2001.)
`
`13
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`Examinerand applied against the ’179 Patent in the sole Office Action
`issued against the ’179 Patent.” Jd. at 18. For the reasonsprovided below,
`wedo notexercise our discretion to deny institution under § 325(d).
`A. Applicable Framework
`Section 325(d) provides that, in determining whetherto institute an
`interpartes review,“the Director maytake into account whether, and reject
`the petition or request because, the sameor substantially the samepriorart
`or arguments previously were presented to the Office.” 35 U-S.C. § 325(d)
`(2018). The Board uses a two-part frameworkin determining whetherto
`exercise its discretion under § 325(d), specifically:
`(1) whetherthe same or substantially the same art previously was
`presented to the Office or whether the sameor substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of [the] first part of the frameworkis
`satisfied, whetherthe petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`—
`
`AdvancedBionicsat 8.
`
`In applying the two-part framework, we consider several non-
`exclusive factors from Becton, Dickinson, which provide “usefulinsight into
`how to apply the framework” (AdvancedBionics at 9): (a) the similarities
`and material differences between the asserted art andthepriorart involved
`during examination; (b) the cumulative nature ofthe asserted art and the
`prior art evaluated during examination; (c) the extent to which the asserted
`art was evaluated during examination, including whetherthe prior art was
`the basis for rejection; (d) the extent ofthe overlap betweenthe arguments
`made during examination and the mannerin which Petitionerrelies on the
`
`prior art or Patent Ownerdistinguishes theprior art; (e) whetherPetitioner
`has pointed outsufficiently how the examinererred in its evaluation of the
`
`14°
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`Patent 10,492,179 B2
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`asserted prior art; and (f) the extent to which additional evidence andfacts
`presented in the Petition warrant reconsideration ofthe priorart or
`arguments. Becton, Dickinson at 17-18. If, after review offactors (a), (b),
`and (d), we determinethat the same or substantially the same art or
`argumentspreviously were presentedto the Office, we then review factors
`(c), (e), and (f), which relate to whetherthe petitioner demonstratesthat the
`Office erredin a mannermaterial to the patentability ofthe challenged
`claims. AdvancedBionicsat 10,
`|
`B. Analysis
`Westart our analysis with a review ofthe relevant history of the
`prosecution ofthe 16/284,356 application (“the ’356 application”), which
`issued as the ’179 patent. We then apply the AdvancedBionics two-part
`frameworktothe facts.
`
`I. History ofthe ’179 Patent
`Seo was cited in an IDS submitted by the applicant, and the same IDS
`cited and includedaninternationalsearch report for the PCT application to
`which the ’356 application claimed priority, Ex. 1002, 112-119. The
`examiner then rejected all pending claims asanticipated by Seo in a First
`Action Interview Pilot Program Pre-Interview Communication. Jd. at 102—
`103 (citing, in the rejection ofthen-pendingclaim 1, Seo {f] 6, 201-204,
`227-230, 242-243),
`In response,the applicant submitted an amendment(Ex. 1002, 87-
`91), and arguedthat, in contrast to the then-pending claim 1, which claimed
`“the acknowledgementposition indication indicating a timing representing a
`slot for transmitting the HARQ feedback”pertaining to the downlink data,
`“Seo doesnotindicate both timing and the PUCCHresourceto be used”and °
`“Seo does not teach or even suggest” the acknowledgementposition
`
`15
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`indicating a timing representingaslot for transmitting HARQ feedback. Jd.
`at 96. The applicant argued: “[The] ARI in Seo can only indicate the
`PUCCHresource and doesnotprovide for a dynamic andflexible slot
`timing, as with Applicant’s disclosure.” Jd. The applicant continued:“Seo
`describes that the UL subframeis fixed by the configuration, not by an
`explicit timing bit pattern.” Jd. at 97 (citing Ex. 2001, Fig. 19, 49 221-241).
`After an interview (see Ex. 1002, 75), the applicant submitted
`additional claim amendments (see id. at 49-55) and made the same
`arguments regarding the teachings of Seo with respectto indicating timing
`for HARQ feedback. Ex. 1002, 62-63. The examinerentered the
`
`amendments andindicated the claims to be allowable, after which the
`"179 patent issued. Jd. at 14, 24.
`
`2. Part One ofthe AdvancedBionicsframework
`Underthe first part ofthe AdvancedBionics two-part framework, we
`determine “whether the sameorsubstantially the sameart previously was
`presentedto the Office or whetherthe sameor substantially the same
`arguments previously were presented to the Office.” AdvancedBionicsat 8.
`Welook to Becton, Dickinson factors(a), (b), and (d) to inform our analysis.
`AdvancedBionics at 9-10.
`
`a) Becton, Dickinson Factor(a)
`Factor (a) under the Becton, Dickinson constructlooksat “the
`similarities and material differences betweenthe asserted art andthepriorart
`involved during examination.” AdvancedBionics at 9n.10. Patent Owner
`doesnot contend, nor do wediscern, that the same art wasbefore the
`examiner as is in the Petition. Rather Patent Owner contendsthattheart is
`cumulative. Prelim. Resp. 16, 18. As such, we turn to factor(b).
`
`16
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`—
`b) Becton, Dickinson Factor (b)
`Factor (b) under the Becton, Dickinson construct looksat“the
`cumulative nature ofthe asserted art and the prior art evaluated during
`examination.” AdvancedBionics at9n.10. Patent Ownerarguesthat the
`referencesasserted by Petitioner are cumulative to references previously
`consideredby the Office. Prelim. Resp. 16, 18-25.
`Patent Owneralleges. that Seo teaches transmitting ACK/NACK
`information using a PUCCHformatand resourcein “a single uplink
`subframe.” Id. at 21 (citing Ex. 2001 9] 5—6). Patent Ownerfurther argues
`that Seo teaches an ARI message may be used to determine which one of
`four PUCCHresource candidateswill be used for the ACK/NACK
`transmission. Jd. (citing Ex. 2001 §§ 223, 225), Patent Ownerarguesthat
`Seo’s PUCCH resources “comprise certain frequency components that span
`an entire subframe.” Jd. at 21-23 (citing Ex. 2001, Figs. §§ 16, 18).
`Patent Owner alleges that Kim, Nokia, and Ref3GPP,as well as Seo,
`each disclose “using PUCCHresourceswith a time componentthat is an
`entire subframe for transmitting feedback messages.” Id. at 19-20,24.
`We do notagree. First, it is clear that Kim doesnot disclose a
`PUCCHresource with a time componentthatis an entire subframe. Kim
`discloses downlink and uplink subframesthat each begin (in time) with a
`xPDCCHand ends with an xPUCCH. Ex. 1005,Fig. 1, 99 53 (describing
`the horizontal axis of Figure 1 as“the time domain’’), 54-56. Kim discloses
`that xPUCCH “maybe configured to [sic] the last OFDM symbol ofthe
`subframe.” Jd. 56. Nokia includesa similar description of subframes
`relating to its Figure 1. Ex. 1008, Figure 1, 2:22-27, While Nokia describes
`in the alternative the use of multiplexing “to convey PUCCH in a long
`format covering the entire UL portion oftheslot,”it also describesthat
`
`17
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`IPR2022-00339
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`_“[p]hysical uplink control channel (PUCCH)can be conveyed in the UL
`control symbol(s) located at the end of the slot.” Jd. at 2:24-27. Patent
`Ownerdoesnot appearto contendthat the allegedly cumulativeteachingis
`present in Ref3GPP, and we do not seeit there. See Prelim. Resp. 20.
`Patent Owner moregenerally argues that the Petition relies on these
`references to show a time component ofa PUCCHresourcebeingspecified
`through specification of a subframein which the HARQ information would
`be transmitted in the PUCCH. Jd. at 16, 19-20. But evenif this were so, the
`specification ofa subframefor HARQtransmission does not appearto be
`present in Seo. Seo allowsthe basestation to inform the UE of a PUCCH
`
`resource candidate to use for ACK/NACKtransmission, but does not
`describe the specification by the basestation of a specific UL subframefor
`the transmission of the PUCCH. See generally Ex. 2001 4] 227-230, 235—
`243.
`.
`This is consistent with the arguments madebythe applicant during
`prosecution. As described supra at Section II.B.1, the applicant repeatedly
`argued that, “Seo does notindicate both timing and the PUCCHresourceto
`be used” and “Seo doesnotteach or even suggest” the acknowledgement
`position indicating a timing representing a slot for transmitting HARQ
`feedback. Ex. 1002, 62,96. The applicant then argued: “[The] ARI in Seo
`can only indicate the PUCCHresource and doesnot provide for a dynamic
`andflexible slot timing, as with Applicant’s disclosure.” Jd. The applicant |
`continued: “Seo describes that the UL subframeis fixed by the
`configuration, not by an explicit timing bit pattern.” Jd. at 63, 97 (citing
`Ex. 2001, Fig. 19, [J] 221-241).
`Additionally, the Petitioner uses the references for manyadditional
`teachings, most of which are not cumulative of Seo.
`
`18
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`Accordingly, we determine that none of Kim, Nokia, or Ref3GPP are
`cumulative of Seo.
`
`c) Becton, Dickinson Factor (d)
`Factor (d) under the Becton, Dickinson constructlooksat “the extent
`
`of the overlap between the arguments made during examination and the
`mannerin which Petitionerrelies on the prior art or Patent Owner
`distinguishes the prior art.” AdvancedBionics at 9 n.10.
`Wedeterminethat the previous arguments presentedto the Office do
`not substantially overlap with the arguments in the present Petition. As
`discussed above, the arguments in the prosecution history related to the
`selection of a UL subframe for HARQ feedback, and to whether Seo
`described a timing indication indicating that subframe. See supra § II.B.1.
`Becausethe art is not cumulative, the argumentsin the present
`Petition are not substantially the same as the arguments made with respect to
`Seo.
`|
`
`Accordingly, we determinethat the same orsubstantially the same
`arguments were not in front of the Office.
`3. Part Two ofthe AdvancedBionicsframework
`Because we determine, in our analysis ofpart one, that the same or
`substantially the same art or arguments werenot previously presented to the
`Office, we need not addresspart twoofthe analysis.
`
`4. Conclusion
`Based on our analysis ofthe Becton, Dickinson factors within the
`AdvancedBionics framework, we determinethat discretionary denial under
`§ 325(d) is not appropriate underthe facts before us.
`
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`Il]. UNPATENTABILITY ANALYSIS
`|
`A. LegalStandards
`“Inan [interpartes review] the petitioner has the burden from the
`onset to show with particularity why the patentit challengesis
`unpatentable.” Harmonic Inc.v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [interpartes] review —
`petitions to identify “with particularity .. . the evidencethat supports the
`groundsfor the challenge to eachclaim”)). This burdennevershifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. , 800
`F.3d 1375 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc. , 545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing the burden of
`’ proofin interpartes review).
`Furthermore,Petitioner must explain with particularity how the prior
`art would have rendered the challenged claims unpatentable. 35 U.S.C.
`§ 312(a)(3); 37 C.F.R. § 42. 104 (“Thepetition must specify where each
`elementof the claim is foundin the priorart patents or printed publications
`relied upon.”).
`Acclaim is unpatentable under 35 U.S.C.§ 103 if the differences
`betweenthe subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obviousto a person
`having ordinary skill in the art to which said subject matter pertains. See
`KSR Int'l Co.v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousnessis resolved on thebasis ofunderlying factual determinations,
`including (1) the scope and contentofthepriorart; (2) any differences
`betweenthe claimed subjectmatter and the prior art; (3) the level.ofskill in
`
`_
`
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`the art; and (4) objective evidence of nonobviousness,i.e., secondary
`considerations.* See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`B. Level ofOrdinary Skillin the Art
`Thelevel ofskill in the art is a factual determination that provides a
`| primary guarantee ofobjectivity in an obviousness analysis. AJ-Site Corp. v.
`VSIInt’lInc., 174 F.3d 1308, 1323-1324 (Fed. Cir. 1999) (citing Graham,
`383 U.S. at 17-18; RykoMfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed.
`Cir. 1991).
`—
`|
`Dr. Ding contendsthat, on or before February 13, 2017 (the date of
`the PCT application to which the ’179. patent claimspriority), a person o
`ordinary skill:
`.
`
`would have had a Bachelor’s degree in electrical engineering,
`computer engineering, computer science,or a related field, and
`2-3 yearsofexperiencein the design or developmentofwireless
`communications
`systems/networks,
`or
`the
`equivalent.
`Additional graduate education could substitute for professional
`experience,or significant experiencein thefield could substitute
`for formal education.
`
`Ex. 1003 4214.
`
`* Neither party presents argumentsor evidencerelating to secondary
`considerations. Therefore, secondary considerations do notconstitute part of
`our analysis herein.
`* Petitioner cites this portion ofthe declaration, rather than explicitly stating
`the level of ordinary skill applied. Pet.3n.4. Wecaution Petitioner that
`~ such incorporation by referenceis not permitted and reliance on such
`incorporation by reference mayresult in the testimony not being considered
`by the boa
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