Tria1s@uspto.goV
`571-272-7822
`
`Paper 10
`Date Entered: June 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KYOCERA CORPORATION, and
`
`KYOCERA COMMUNICATIONS INC.,
`
`Petitioner,
`
`V.
`
`ADAPTIX, INC.,
`Patent Owner.
`
`Case IPR2015-00319
`
`Patent 6,947,748 B2
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`SPRINT 1111
`
`
`571-272-7822
`
`Paper 10
`Date Entered: June 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KYOCERA CORPORATION, and
`
`KYOCERA COMMUNICATIONS INC.,
`
`Petitioner,
`
`V.
`
`ADAPTIX, INC.,
`Patent Owner.
`
`Case IPR2015-00319
`
`Patent 6,947,748 B2
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`SPRINT 1111
`
`
`
`IPR2015-00319
`
`Patent 6,947,748 B2
`
`INTRODUCTION
`
`A. Background
`
`Kyocera Corporation and Kyocera Communications Inc. (collectively,
`
`“Petitioner”) filed a Petition for an interpartes review of claims 8, 9, 21, and
`
`22 of U.S. Patent No. 6,947,748 B2 (Ex. 1003, “the ’748 patent”) under 35
`
`U.S.C. §§ 311-319. Paper 1 (“Petition” or “Pet.”). Adaptix, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314, which provides that an interpartes
`
`review may not be instituted unless “the information presented in the
`
`petition .
`
`.
`
`. shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” For the reasons that follow, we institute an interpartes review as
`
`to claims 8, 9, 21 and 22 of the ’748 patent.
`
`B. Related Proceedings
`
`Petitioner indicates that the ’748 patent is involved in numerous
`
`lawsuits pending in Texas and California. Pet. 1-2. The ’748 patent is also
`
`involved in Case IPR2014-01524 (Decision to Institute (Paper 16), April 8,
`
`2015) brought by a different Petitioner.
`
`THE ’748 PATENT
`
`A. The ’748 Patent Invention
`
`The ’748 patent describes an arrangement for selecting and assigning
`
`subcarriers for use by multiple subscribers (e.g., mobile phones) in an
`
`orthogonal frequency division multiple access (OFDMA) system.
`
`Subscribers measure “channel and interference information” for subcarrier
`
`2
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`
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`1PR2015-00319
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`Patent 6,947,748 B2
`
`channels using pilot symbols transmitted by a base station. Ex. 1003,
`
`Abstract. A subscriber selects “candidate subcarriers” and provides
`
`feedback (measurement) information on the candidate subcarriers to the base
`
`station. The base station then selects subcarriers for use by the subscriber
`
`that chose the candidate subcarriers. Id.
`
`B. Illustrative Claims
`
`Of the challenged claims, claims 8 and 21 are independent and are
`
`reproduced below.
`
`8. A method for subcarrier selection for a system
`employing orthogonal frequency division multiple access
`(OFDMA) comprising:
`a subscriber measuring channel and interference
`information for a plurality of subcarriers based on pilot symbols
`received from a base station;
`the subscriber selecting a set of candidate subcarriers;
`the subscriber providing feedback information on the set
`of candidate subcarriers to the base station;
`the subscriber sending an indication of coding and
`modulation rates that the subscriber desires to employ for each
`cluster; and
`the subscriber receiving an indication of subcarriers of
`the set of subcarriers selected by the base station for use by the
`subscriber.
`
`21. An apparatus comprising:
`a plurality of subscribers in a first cell to generate
`feedback information indicating clusters of subcarriers desired
`for use by the plurality of subscribers; and
`a first base station in the first cell, the first base station to
`allocate OFDMA subcarriers in clusters to the plurality of
`subscribers;
`each of a plurality of subscribers to measure channel and
`interference information for the plurality of subcarriers based
`on pilot symbols received from the first base station and at least
`
`3
`
`
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`lPR2015-00319
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`Patent 6,947,748 B2
`
`one of the plurality of subscribers to select a set of candidate
`subcarriers from the plurality of subcarriers, and
`the one subscriber to provide feedback information on
`the set of candidate subcarriers to the base station and to receive
`
`an indication of subcarriers from the set of subcarriers selected
`
`by the first base station for use by the one subscriber,
`wherein the one subscriber sends an indication of coding
`and modulation rates that the one subscriber desires to employ.
`
`C. Assertea’ Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103(a) against claims 8, 9, 21, and 22 (Pet. 3):
`
`8, 9, 21, and 22
`
`Ritterl, Van Neez, and Chuang3
`
`8, 9, 21, and 22
`
`Hashem I4 and Hashem I15
`
`1 The parties refer to Exhibit 1004 as “Ritter,” which is an English
`translation of DE 19800953 C1. The German patent document has been
`entered as Exhibit 1015.
`2 The parties refer to Exhibit 1005 as “Van Nee,” which is an English
`translation of Japanese Unexamined Patent Application Publication H10-
`303849. The Japanese document has been entered as Exhibit 1014.
`3 J. C-I Chuang, N. R. Sollenberger, and D. C. Cox, A Pilot Based Dynamic
`Channel Assignment Schemefor Wireless Access TDMA/FDM4 Systems, 2
`1993 2ND IEEE INT’L CONF. ON UNIVERSAL PERSONAL CoMMC’Ns 706-712
`
`(1993). Exhibit 1006 (“Chuang”).
`4 U.S. Patent No. 6,721,569 B1 — Hashem et al., Exhibit 1007 (“Hashem I”).
`5 U.S. Patent No. 6,701,129 B1— Hashem et al., Exhibit 1008 (“Hashem II”).
`
`4
`
`
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`IPR2015-00319
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`Patent 6,947,748 B2
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`CLAIM CONSTRUCTION
`
`A. Claim Interpretation
`
`In an inter partes review, the Board construes claim terms of an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`
`2012). Petitioner submits constructions for several claim terms (Pet. 8-12).
`
`Patent Owner does not contest Petitioner’s constructions. Prelim. Resp. 7-9.
`
`B. “cluster(s) ” (claims 8 and 21)
`
`The term “cluster(s),” appears in both independent claims 8 and 21.
`
`According to Petitioner, “each cluster,” as used in claim 8, is indefinite
`
`because there is no antecedent basis for “cluster” in the claim. Pet. 16.
`
`Nevertheless, Petitioner asks that we construe “cluster” in the context of
`
`claim 8 as a “set of candidate subcarriers.” Id. Patent Owner does not
`
`propose a construction of the term. We do not find a definition of the term
`
`in the specification. For purposes of this Decision, we adopt Petitioner’s
`
`construction that “cluster” refers to a “set of candidate subcarriers,” which
`
`appears to reflect the plain meaning of the term in context.
`
`C. “pilot symb0Z(s) ” (claims 8 and 21)
`
`In another proceeding involving the ’748 patent, a court construed the
`
`term “pilot symbols” to mean “symbols, sequences, or signals known to both
`
`the base station and subscriber.” Pet. 7; Ex. 1009, 17. The ’748 patent
`
`specification states that “pilot symbols” embrace different types of
`
`5
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`
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`IPR2015-00319
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`Patent 6,947,748 B2
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`sequences and pilot signals. See, e.g., Ex. 1003, 5:28-30. Both Petitioner
`
`and Patent Owner agree with the court’s construction. Pet. 7; Prelim. Resp.
`
`8. According to the ’748 specification,
`
`Referring to FIG. 1B, each base station periodically
`broadcasts pilot OFDM symbols6 to every subscriber
`within its cell (or sector) (processing block 101). The pilot
`symbols, often referred to as a sounding sequence or
`signal, are known to both the base station and the
`subscribers. In one embodiment, each pilot symbol covers
`the entire OFDM frequency bandwidth. The pilot symbols
`may be different for different cells (or sectors). The pilot
`symbols can serve multiple purposes: time and frequency
`synchronization, channel estimation and signal-to-
`interference/noise (SINR) ratio measurement for cluster
`allocation.
`
`Ex. 1003, 5:32-42. For purposes of this decision, we adopt the prior court’s
`
`construction.
`
`CLAIM CHALLENGES
`
`A. Ritter, Van Nee, and Chuang
`
`Petitioner submits that the subject matter of claims 8, 9, 21, and 22
`
`would have been obvious over the combination of Ritter, Van Nee, and
`
`Chuang. Petitioner submits a detailed analysis of each of the claims, applies
`
`the prior art, and relies on the testimony of Professor Nicholas Bambos.
`
`Pet. 13-33; Exhibit 1011.
`
`Patent Owner argues that Ritter, Van Nee, and Chuang do not teach or
`
`suggest the limitation of claim 8 requiring that a subscriber send an
`
`6 We understand that the symbols are transmitted as particular modulations
`of one or more subcarriers.
`
`6
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`
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`IPR2015-00319
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`Patent 6,947,748 B2
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`indication of coding and modulation rates7 that the subscriber desires to
`
`employ for each cluster. Prelim. Resp. 12. According to Patent Owner, in
`
`the Ritter arrangement, the network only knows that for a given user
`
`(subscriber) the quality is relatively better than for other users. Patent
`
`Owner argues that Ritter provides neither channel information (only a
`
`priority list) nor coding and modulation rates, as required by claim 8.
`
`Prelim. Resp. 13.
`
`However, Petitioner relies upon Van Nee for its teaching regarding
`
`the selection of coding and modulation rates. Pet. 16. Van Nee describes a
`
`“remote station” or “mobile unit” containing a “dynamically scalable OFDM
`
`transmitter”, which in turn contains a “dynamic control circuit” sending an
`
`indication of coding and modulation rates “dynamically scaled or adjusted,”
`
`“coding rate,” and “carrier modulation scheme.” Ex. 1005, 7, right col.
`
`Patent Owner further argues that neither Van Nee nor Chuang selects
`
`coding or modulation rates on a “cluster” basis. Prelim. Resp. 13. Per our
`
`construction of “cluster,” adopted for purposes of this Decision, the claims
`
`embrace the Van Nee disclosure.
`
`Patent Owner argues that Ritter, Van Nee, and Chuang do not teach
`
`using pilot symbols to measure channel and interference information as
`
`required by claims 8 and 21. Prelim. Resp. 16. Patent Owner correctly
`
`notes (id. at 16) that neither Ritter nor Van Nee discloses the use of pilot
`
`symbols. Petitioner relies on Chuang for this claim feature. Pet. 14 (citing
`
`Ex. 1006, 3 (lines 12-19)). The cited portion of Chuang describes each
`
`7 E.g., in one embodiment the ’748 patent chooses between quadrature phase
`shift keying (QPSK) and 16 quadrature amplitude modulation (QAM).
`Exhibit 1003, 332412, 7:59-65.
`
`7
`
`
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`IPR2015-00319
`
`Patent 6,947,748 B2
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`“port” transmitting a beacon on a downlink control frequency. “Portables”
`
`measure the signal strength of the beacons to select a port with which to
`
`communicate.
`
`Patent Owner argues (Prelim. Resp. 19) that Chuang does not describe
`
`using pilot symbols from the base station that is carrying out subcarrier
`
`allocation among subscribers. However, Chuang describes a port
`
`transmitting an RF pilot signal at a controlled power to enable all portables
`
`to make measurements corresponding to interference of all possible traffic
`
`channels. Ex. 1006, 3 (“2.3 Pilots”). Chuang further describes portables
`
`making measurements based on pilots corresponding to downlinks on a
`
`“short list” and chooses channels that have the lowest measured interference.
`
`Id. at 3 (“2.4 DCA procedures)”.
`
`For reasons stated above, on the record developed thus far, Petitioner
`
`has demonstrated a reasonable likelihood it would prevail in a challenge to
`
`claims 8, 9, 21 and 22 based on the combined teachings of Ritter, Van Nee,
`
`and Chuang.
`
`B. Hashem I and Hashem 1]
`
`Petitioner submits that the subject matter of claims 8, 9, 21, and 22
`
`would have been obvious over the combination of Hashem I and Hashem II.
`
`Petitioner submits a detailed analysis of each of the claims, applies the prior
`
`art, and relies on the testimony of Professor Nicholas Bambos. Pet. 33-49;
`
`Exhibit 101 1.
`
`Both Hashem I and Hashem 11 describe single user OFDM systems
`
`and not OFDMA systems having multiple subscribers. Hashem I describes
`
`dynamically assigning sub-carriers for transmission of data in a radio
`
`
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`IPR2015-00319
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`Patent 6,947,748 B2
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`communications system. Ex. 1007, Abstract. Hashem II describes adapting
`
`modulation schemes based on changing channel quality. Ex. 1008, Abstract.
`
`Patent Owner argues (Prelim. Resp. 25) that Hashem I is directed to a
`
`“single-user” OFDM system, and not to a multiple-user OFDMA system.
`
`Therefore, according to Patent Owner, Hashem I and Hashem II to not teach
`
`OFDMA. Prelim. Resp. 25. Petitioner recognizes this deficiency and argues
`
`that disclosure of multiple mobile stations is “inherent” in Hashem I because
`
`the interference measured by a Hashem I subscriber would be generated by
`
`other mobile stations. Pet. 40. Petitioner’s inherency argument is
`
`speculative at best. We agree with Patent Owner (Prelim. Resp. 26) that
`
`there are many possible sources of interference.
`
`Petitioner also argues that it would have been obvious to apply
`
`Hashem I to a multiple user system. Pet. 40. In support, Petitioner points to
`
`Hashem I’s statement that the invention can be used with other systems,
`
`which employ multiple sub-carriers simultaneously. Pet. 40 (citing
`
`Ex. 1007, 9: 12-16). However, this portion of the Hashem I specification
`
`merely states that Hashem I is not limited to OFDM systems. No mention is
`
`made of multiple mobile stations. A fair reading does not demonstrate that
`
`Hashem I had multiple users in mind. Patent Owner correctly notes that
`
`there are ways other than OFDMA to employ OFDM (such as used in
`
`Hashem I) in multiple user systems. Prelim. Resp. 27.
`
`Patent Owner argues (Prelim. Resp. 28-34) that Hashem I does not
`
`describe the multiple step process of selecting subcarriers required by claim
`
`8. According to Hashem I, a single remote unit is allocated all subcarriers
`
`that it requests. There is no need for the base station to make a selection of
`
`subcarriers from “candidate” subcarriers requested by a subscriber unit.
`
`9
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`IPR2015-00319
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`Patent 6,947,748 B2
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`Patent Owner further agues (Prelim. Resp. 34-35) that Hashem I and
`
`Hashem II do not describe providing feedback by subscribers in a first cell
`
`regarding desired clusters of subcarriers as required by claim 21. As with
`
`claim 8, Petitioner relies on inherency to adapt Hashem I to a multi-
`
`subscriber environment by arguing that the interference referred to in
`
`Hashem I would have been generated by other subscribers. We are not
`
`persuaded by Petitioner’s inherency argument.
`
`Patent Owner argues that Petitioner’s reliance (Pet. 45416) on
`
`Hashem I as teaching allocating OFDMA subcarriers in clusters as required
`
`by claim 21 is not well-founded. Prelim. Resp. 35-36. Again we note that
`
`Hashem I is a single user system.
`
`Patent Owner further argues that Hashem I and Hashem II fail to
`
`describe the claim 21 limitation that each of the subscribers measures
`
`interference information for the plurality of subscribers. Petitioner’s
`
`reliance on Hashem I (Pet. 46) is misplaced, its inherency argument (Pet. 48)
`
`notwithstanding.
`
`For reasons stated above, Petitioner has not demonstrated a reasonable
`
`likelihood it would prevail in a challenge to claims 8, 9, 21, and 22 based on
`
`the combined teachings of Hashem I and Hashem II.
`
`C. Objective Evidence ofN0n—0bvz'0usness
`
`Patent Owner submits that there are “objective indicia” that
`
`demonstrate non-obviousness of the invention. We address first the
`
`evidence that Patent Owner places under the category of “skepticism of the
`
`experts.” Prelim. Resp. 41-50.
`
`10
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`IPR2015-00319
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`Patent 6,947,748 B2
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`Patent Owner submits Exhibits 2002-2004 to explain consideration by
`
`industry experts contemplating the next Universal Mobile
`
`Telecommunication System standard. Id. at 42. According to Patent Owner,
`
`these documents “explain[] three OFDMA based approaches referred to
`
`collectively as ‘Concept B7” Id. at 44. Patent Owner argues that in
`
`meetings of the European Telecommunication Standards Institute (“ETSI”)
`
`delegates were asked to vote for one of the “four proposed concepts,” which
`
`included Concept B. Prelim. Resp. 45. Concept B received zero percent of
`
`the votes, while votes went to other “approaches” that did not include
`
`OFDM or OFDMA. Id. at 4546.
`
`Patent Owner, however, does not point to evidence that establishes
`
`why Concept [3 was disfavored by the ETSI delegates. Nor does Patent
`
`Owner explain how any of the OFDMA based approaches might relate to the
`
`claimed invention, other than the fact that the claims recite “OFDMA.”
`
`Because Patent Owner characterizes the evidence as showing “skepticism of
`
`the experts,” the evidence is presented, presumably, to demonstrate that the
`
`Concept [3 “OFDMA based approaches” were thought to represent
`
`impossible or impractical technologies as late as the ETSI second meeting,
`
`January 1998 (Ex. 2004, 7). At the time of invention,8 however, OFDMA
`
`was known to be a method that supports multiple access for multiple
`
`subscribers. Ex. 1003, l:26—2:5.
`
`Patent Owner also refers to the Caloyannides Report as demonstrating
`
`commercial success of “4G/LTE based products.” Prelim. Resp. 49. The
`
`8 On this record, the date of invention is the filing date of the ’748 patent
`application, December 15, 2000, or nearly three years after the second ETSI
`meeting.
`
`11
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`IPR2015-00319
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`Patent 6,947,748 B2
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`Caloyannides Report, however, does not refer to any evidence in this record
`
`of commercial success of “4G/LTE based products,” nor does it refer to any
`
`evidence in this record tending to show that limitations from claim 8, which
`
`are reproduced in the Caloyannides Report, were responsible for any
`
`“commercial success.” See Ex. 2001 1] 344 (“Further information and
`
`evidence about the commercial success that has followed the use of these
`
`aspects of the [’748 patent] is provided in my infringement report involving
`
`the same patent[]”). The “infringement report” referenced by Exhibit 2001
`
`has not been provided as an exhibit in this proceeding. Expert testimony
`
`that does not disclose the underlying facts or data on which the opinion is
`
`based is entitled to little or no weight. 37 C.F.R. § 42.65(a).
`
`Moreover, even if commercial success were established, Patent
`
`Owner’s allegations would not support a prima facie case of nexus.
`
`A prima facie case of nexus is generally made out when the
`patentee shows both that there is commercial success, and that
`the thing (product or method) that is commercially successful is
`the invention disclosed and claimed in the patent. When the
`thing that is commercially successful is not coextensive with
`the patented invention—for example, if the patented invention
`is only a component of a commercially successful machine or
`process—the patentee must show prima facie a legally
`sufficient relationship between that which is patented and that
`which is sold.
`
`Demaco Corp. v. F. Van LangsdorflLicensing Ltd., 851 F.2d 1387, 1392
`
`(Fed. Cir. 1988). However, “if the commercial success is due to an
`
`unclaimed feature of the device” or “if the feature that creates the
`
`commercial success was known in the prior art, the success is not pertinent.”
`
`Ormco Corp. v. Align Tech, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
`
`The Caloyannides Report, paragraph 344, alleges that limitations of claim 8
`
`12
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`IPR2015-00319
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`Patent 6,947,748 B2
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`represent, at most, an “essential element” of only one part of “current LTE
`
`networks.” Further, to the extent that OFDMA might contribute to
`
`“commercial success,” OFDMA was known in the prior art and, thus, not
`
`pertinent. See Ex. 1003, 1:26—2:5.
`
`For the foregoing reasons, we find Patent’s Owner’s evidence of
`
`secondary considerations to be entitled to little weight in support of non-
`
`obviousness. Our weighing of the evidence in support of non-obviousness is
`
`for purposes of this Decision only, as we are limited to consideration of the
`
`record that exists at this preliminary stage of the proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, we are persuaded that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail with respect to claims 8, 9, 21, and 22.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims or the construction of any claim terms.
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an interpartes
`
`review of the ’748 patent is hereby instituted on the following asserted
`
`ground: claims 8, 9, 21, and 22, as unpatentable under 35 U.S.C. § 103 over
`
`Ritter, Van Nee, and Chuang;
`
`FURTHER ORDERED that the trial is limited to the ground identified
`
`above and no other grounds are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`13
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`IPR2015-00319
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`Patent 6,947,748 B2
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`commences on the entry date of this Decision.
`
`For PETITIONER:
`
`Marc Weinstein
`
`Quinn Emanuel Urquhart & Sullivan, LLP
`marcweinstein@guinnemanuel.com
`
`For PATENT OWNER:
`
`Amedeo Ferraro
`
`Wesley Meinerding
`Martin & Ferraro, LLP
`aferraro@martinferraro.com
`Wmeinerding@martinferraro.com
`
`14
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