UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`____________
`
`Case No. Unassigned
`Patent 7,412,517
`____________
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 2, 4, 12, 13, and 15
`OF U.S. PATENT NO. 7,412,517
`
`

`

`Petition for IPR of U.S. Patent 5,412,517
`
`I.
`
`IV.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`Summary of Unpatentability Grounds .................................................. 1
`II. MANDATORY NOTICES, STANDING, AND FEES ............................. 1
`Mandatory Notices ................................................................................ 1
`Certification of Grounds for Standing ................................................... 2
`Fees ........................................................................................................ 3
`III. OVERVIEW OF THE ’517 PATENT........................................................ 3
`Subject Matter of the ’517 Patent .......................................................... 3
`The Claims of the ’517 Patent ............................................................... 6
`Priority Date of the ‘517 Patent............................................................. 7
`SUMMARY OF PRIOR ART ..................................................................... 8
`Packet Classification in ATM Networks (Sriram) ................................ 9
`Scheduling Based on QoS in Wireless ATM Networks (Passas-I and
`Pasternak) ............................................................................................13
`Customer Premises Equipment in Wireless Networks (Lin) ..............20
`CLAIM CONSTRUCTION ...................................................................... 21
`The Term “Packet-Centric” in the Preamble of Claim 1 Is Not
`Limiting. ..............................................................................................22
`“Packet-Centric Wireless Point to Multi-Point Telecommunications
`System”................................................................................................23
`“Contents of [the] Packets” .................................................................26
`THERE IS A REASONABLE LIKELIHOOD THAT THE
`VI.
`CHALLENGED CLAIMS ARE UNPATENTABLE ........................................ 27
`Ground 1: The Combination of Passas-I and Sriram Renders Claims 1,
`2, 4, 12, 13, and 15 Obvious Under 35 U.S.C. § 103. .........................27
`Ground 2: The Combination of Passas-I, Sriram, and Lin Renders
`Claims 1, 2, 4, 12, 13, and 15 Obvious Under 35 U.S.C. § 103. ........66
`
`V.
`
`i
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`

`

`Petition for IPR of U.S. Patent 5,412,517
`
`Ground 3: The Combination of Passas-I, Sriram, and Pasternak
`Renders Claims 1, 2, 4, 12, 13, and 15 Obvious. ................................70
`Ground 4: The Combination of Passas-I, Sriram, Pasternak, and Lin
`Renders Claims 1, 2, 4, 12, 13, and 15 Obvious. ................................74
`VII. The Proposed Grounds Are Not Redundant ........................................... 75
`VIII. CONCLUSION ........................................................................................... 76
`
`ii
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`Petition for IPR of U.S. Patent 5,412,517
`
`LIST OF EXHIBITS
`
`U.S. Pat. 7,412,517 to Jorgensen (“the ’517 Patent”)
`
`CV of Zygmunt Haas
`
`Expert Declaration of Zygmunt Haas
`
`U.S. Pat. 5,463,620 (“Sriram”)
`
`Quality of Service-Oriented Medium Access Control for Wireless ATM
`Networks by Nikos Passas et al. (“Passas-I”)
`
`U.S. Pat. 6,157,614 to Pasternak
`
`U.S. Pat. 6,862,622 to Jorgensen
`
`U.S. Pat. 6,640,248 to Jorgensen
`
`U.S. Pat. 4,916,691 to Goodman
`
`U.S. Provisional Patent Application No. 60/092,542
`
`IV Infringement Contentions, Exhibit E.
`
`U.S. Pat. 6,400,701 to Lin
`
`“The Magic WAND Wireless ATM MAC-Final Report” by Passas et
`al. (“Passas-II”)
`
`Expert Declaration of Dr. Sylvia Hall-Ellis
`
`Quality of Service-Oriented Medium Access Control for Wireless ATM
`Networks by Nikos Passas et al. (“Passas-I”) (color copy of Ex. 1005)
`
`Quality of Service-Oriented Medium Access Control for Wireless ATM
`Networks by Nikos Passas et al. (“Passas-I”) (second color copy of Ex.
`1005)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`iii
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`

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`Petition for IPR of U.S. Patent 7,412,517
`
`I. INTRODUCTION
`
`Ericsson
`
`Inc. and Telefonaktiebolaget LM Ericsson
`
`(collectively,
`
`“Petitioners”) request inter partes review (“IPR”) under 35 U.S.C. §§ 311-319 and
`
`37 C.F.R. § 42.100 et seq. of Claims 1, 2, 4, 12, 13, and 15 of U.S. Patent No.
`
`7,412,517 (“the ’517 Patent”).
`
`Petitioners assert that there is a reasonable likelihood that the challenged
`
`claims are unpatentable and request review of, and cancellation of, the challenged
`
`claims under 35 U.S.C. § 103.
`
`2
`
`Summary of Unpatentability Grounds
`Ground
`Summary
`1
`The Combination of Passas-I and Sriram Renders Claims 1, 2, 4,
`12, 13, and 15 Obvious Under 35 U.S.C. § 103
`The Combination of Passas-I, Sriram, and Lin Renders Claims
`1, 2, 4, 12, 13, and 15 Obvious Under 35 U.S.C. § 103.
`The Combination of Passas-I, Sriram, and Pasternak Renders
`Claims 1, 2, 4, 12, 13, and 15 Obvious Under 35 U.S.C. § 103.
`The Combination of Passas-I, Sriram, Pasternak, and Lin
`Renders Claims 1, 2, 4, 12, 13, and 15 Obvious Under 35 U.S.C.
`§ 103.
`II. MANDATORY NOTICES, STANDING, AND FEES
`
`3
`
`4
`
`Mandatory Notices
`Real Party in Interest: The real parties in interest are Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson.
`
`1
`
`

`

`Petition for IPR of U.S. Patent 7,412,517
`
`Related Matters: The ’517 Patent is subject to a pending lawsuit entitled
`
`Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Case No. 2:17-cv-00577-
`
`JRG (E.D. Tex.) (the “Litigation”) in which Petitioners Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson are defendants. In addition, Petitioners have filed
`
`petitions for IPR against other patents held by Patent Owner, including IPR2018-
`
`00727 against U.S. Patent No. 6,628,629; IPR2018-00758 against U.S. Patent No.
`
`RE46,206, and IPR2018-00782 against U.S. Patent No. RE46,206 .
`
`Lead Counsel: Lead Counsel is Brian W. Oaks, Reg. No. 44,981 of Baker
`
`Botts L.L.P., and Back-up Counsel includes Jeffery S. Becker, Reg. No. 68,533 of
`
`Baker Botts L.L.P.
`
`Service Information: Baker Botts L.L.P., 98 San Jacinto Boulevard, Suite
`
`1500, Austin, Texas 78701-4078; Tel. (512) 322-2500; Fax (512) 322-2501; Baker
`
`Botts L.L.P., 2001 Ross Ave., Suite 700, Dallas, Texas 75201; Tel. (214) 953-6500;
`
`Fax (214) 953-6503. Petitioners consent to service by electronic mail at
`
`Ericsson_517IPR@bakerbotts.com. A Power of Attorney is filed concurrently
`
`herewith under 37 C.F.R. § 42.10(b).
`
`Certification of Grounds for Standing
`Petitioners certify that the ’517 Patent is available for IPR. Petitioners are not
`
`barred or estopped from requesting IPR of the ’517 Patent.
`
`2
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`Petition for IPR of U.S. Patent 7,412,517
`
`Fees
`The Office is authorized to charge any fees that become due in connection
`
`with this Petition to Deposit Account No. 02-0384, Ref. No. 017997.1307, as well
`
`as any additional fees that might be due in connection with this Petition.
`
`III. OVERVIEW OF THE ’517 PATENT
`
`Subject Matter of the ’517 Patent
`The ’517 Patent describes a wireless base station and a method for allocating
`
`a shared radio bandwidth between a customer premises equipment (CPE) station
`
`transmitting packets in the uplink and a wireless base station transmitting packets in
`
`the downlink. Ex. 1001, Abstract. The ‘517 Patent describes that a scheduler,
`
`residing within the wireless base station, may decide how to allocate the shared radio
`
`bandwidth using a time-division multiple access (TDMA) time-division duplex
`
`(TDD) technique. Id. at 53:17-20 (“In the embodiment described herein, the type of
`
`TDMA used is TDMA/time division duplex (TDMA/TDD).”).
`
`TDMA was a well-known method before the ‘517 Patent for dividing a
`
`wireless bandwidth into time slots that can be shared between multiple subscribers.
`
`Ex. 1003, ¶ 39-40. Each subscriber may have a need for both uplink and downlink
`
`communications (such as, for example, in a voice conversation). TDD refers to an
`
`implementation where the same frequency carrier is used for uplink and downlink
`
`communications. Id., ¶ 39, 41. Consistently, the ‘517 Patent describes that “[i]n a
`3
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`Petition for IPR of U.S. Patent 7,412,517
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`TDMA/TDD, for one interval of time, transmission is from a CPE station 294 to a
`
`wireless base station 302, and in another instance of time, it is from a wireless base
`
`station 302 to a CPE station.” Ex. 1001, at 53:18-22. According to the ‘517 Patent,
`
`the shared bandwidth is divided into “slots” as in conventional TDMA/TDD
`
`systems. Id. The ‘517 Patent describes a well-known variant of TDMA/TDD
`
`systems, where each slot can be dynamically allocated for use in either uplink or
`
`downlink transmissions by the scheduler. Id. at 53:23-24 (describing that “any
`
`number of slots can be used for the uplink or for the downlink” and “the number of
`
`slots is dynamically assigned for both the uplink and the downlink.”); Ex. 1003, ¶ 41.
`
`In the dynamic TDMA/TDD allocation method described by the ‘517 Patent,
`
`an embodiment of a wireless base station scheduler is illustrated by Figure 13, which
`
`includes “flow scheduler 604, 634 (which is a combination of downlink flow
`
`scheduler 604 and uplink flow scheduler 634).” Ex. 1001, at 58:53-57 (flow
`
`scheduler is shown as the orange box in annotated Figure 13 below).
`
`4
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`Petition for IPR of U.S. Patent 7,412,517
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`As can be seen from the figure above, the ‘517 Patent scheduler purports to
`
`allocate a shared wireless bandwidth (red annotated box above)between downlink
`
`sub-frames (1202) and uplink sub-frames (1204) by (1) making downlink
`
`reservations by classifying downlink packets into queues of Classes 1, 2, and 3 as
`
`shown in the green annotated boxes above and (2) making uplink reservations by
`
`receiving uplink reservation requests from subscriber CPE stations (e.g. Class 1, 2,
`
`and 3 reservation requests shown in the blue annotated boxes above). See also id. at
`
`58:60-59:48.
`
`Downlink packets may be classified according to “packet header field
`
`information 700 which can be used to identify IP flows and the QoS requirements
`
`5
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`Petition for IPR of U.S. Patent 7,412,517
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`of the IP flows,” while uplink reservation requests may include “a request for a
`
`number of slots for a single IP flow with an IP flow identifier # and class of the
`
`flow.” Id. at 52:38-40, 59:40-43. Accordingly, “[f]low scheduler 604 . . . and 634 .
`
`. . uses these downstream reservations and upstream reservation requests to assign
`
`slots to data packets in the next downstream transmission subframe 1202 and
`
`upstream transmission subframe 1204, respectively.” Id. at 59:49-53.1
`
`The Claims of the ’517 Patent
`The ’517 Patent’s claims relate to the concept of allocating a shared wireless
`
`bandwidth between uplink and downlink transmissions for communications between
`
`a wireless base station and a CPE station based on analyzed reservation requests for
`
`packets to be communicated in the uplink direction and based on analyzed contents
`
`of packets to be communicated in the downlink direction. These features of
`
`packetized wireless transmission systems were well known before the ’517 Patent.
`
`Ex. 1003, ¶ 46. For example, techniques for sharing a wireless bandwidth in a
`
`TDMA/TDD system between uplink and downlink transmissions were well known,
`
`including the ability for a wireless base station to dynamically allocate uplink and
`
`1 Notably, while this embodiment is discussed in terms of “IP” packets, the claims
`
`are not so limited. Ex. 1003, ¶ 45.
`
`6
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`Petition for IPR of U.S. Patent 7,412,517
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`downlink time slots based on the QoS requirements of downlink packets and
`
`reservation requests received from the end user device (e.g., a CPE station or mobile
`
`terminal). Id., ¶ 47. Moreover, it was well known and commonly understood that
`
`the QoS requirements for downlink packets could be determined from analyzing the
`
`contents of those packets. Id., ¶ 48 (explaining that ATM was designed to support
`
`QoS using this concept).
`
`The dependent claims add insignificant implementation details to the
`
`independent claims. Id., ¶ 50. For example, Claims 2 and 13 merely state that the
`
`allocation step in the independent claims is “dynamic,” which is shown in the prior
`
`art. Id. Claims 4 and 15 merely require including a quality of service classification
`
`in a reservation request, which was also well-known. Id.
`
`Priority Date of the ‘517 Patent
`The ‘517 Patent claims priority to a provisional application filed July 10, 1998
`
`(the “Provisional”). See Ex. 1010. At least certain of the claimed concepts, however,
`
`are not supported by the Provisional.
`
`For example, independent Claim 1 recites “communicating the assigned slots
`
`to the at least one CPE station in a reservation request acknowledgement section of
`
`a frame.” Independent Claim 12 recites similar limitations. The Provisional does
`
`not mention or otherwise describe how allocated slots are communicated to a CPE
`
`7
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`Petition for IPR of U.S. Patent 7,412,517
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`station. Ex. 1003, ¶ 55-56.
`
`As another example, the independent claims specify a reservation request that
`
`includes a “subscriber identifier” and “at least one other subscriber attribute.” The
`
`method further recites “processing the subscriber identifier and the at least one other
`
`subscriber attribute . . . .” The Provisional does not describe these details. Ex. 1003,
`
`¶ 58-59.
`
`Accordingly, Claims 1 and 12 together with their respective dependent claims
`
`are not entitled to priority to July 10, 1998. At best, the claims priority should be
`
`July 9, 1999.2
`
`IV.
`
`SUMMARY OF PRIOR ART
`
`As explained by Dr. Haas in the attached expert declaration (Ex. 1003), the
`
`aspects of dynamically allocating a shared bandwidth between uplink and downlink
`
`transmissions based on the analyzed contents of reservation requests in the uplink
`
`and the contents of downlink packets, as recited in the claims of the ’517 Patent,
`
`were well known. Ex. 1003, ¶ 61. In addition to the extensive background
`
`2 Petitioners note that because the dates of public availability of the prior art for all
`
`Grounds presented herein are all before July 10, 1998, the obviousness analysis
`
`applies regardless.
`
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`Petition for IPR of U.S. Patent 7,412,517
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`knowledge that a person of ordinary skill in the art (“POSITA”) 3 would have brought
`
`to bear on the subject matter discussed in the ’517 Patent, the following prior art
`
`demonstrates that the challenged claims would have been obvious to a POSITA.
`
`Packet Classification in ATM Networks (Sriram4)
`The claims of the ’517 Patent include the concept of analyzing packets to be
`
`transmitted in a downlink direction and then using those analyzed contents to
`
`allocate resources of a shared wireless bandwidth. See, e.g., Ex. 1001, Claim 1. This
`
`was a basic concept underlying ATM’s well-known ability to provide QoS to
`
`different traffic classes. Ex. 1003, ¶ 48.
`
`Sriram describes methods for bandwidth allocation and transmission
`
`scheduling in ATM networks. Ex. 1004 (Title). Sriram discloses prior art ATM
`
`concepts, including that a field in the ATM cell header is used to identify the virtual
`
`circuit associated with the cell and thereby accomplish traffic classification. Id. at
`
`4:54-63. Sriram also confirms that ATM cells are packets, stating that in ATM,
`
`3 See Ex. 1003, ¶ 35-37.
`
`4 U.S. Pat. 5,463,620 (“Sriram”) was issued in October 1995 and thus is § 102(b)
`
`prior art. Sriram was not considered in prosecution.
`
`9
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`Petition for IPR of U.S. Patent 7,412,517
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`“[i]nformation is transmitted through the network by means of special kinds of
`
`digital information packets known as ATM cells.” Id. at 3:16-18.5 According to
`
`Sriram, an ATM cell includes a 5-octet (i.e., byte) header and a 48 octet (i.e., byte)
`
`information field. Id. at 3:19-23. The header includes a “virtual channel” field (id.
`
`at 3:28-30), as shown in Figure 2 as reproduced below:
`
`According to Sriram, traffic in an ATM network can be classified into one of
`
`several traffic types, including (1) Type 1A delay-sensitive isochronous high-
`
`bandwidth services (such as constant bit rate (CBR) conference video), (2) Type 1B
`
`delay-sensitive non-isochronous high-bandwidth services (such as variable bit rate
`
`(VBR) video), (3) Type 2 delay-insensitive high-bandwidth services (such as data,
`
`5 All emphasis added unless noted otherwise.
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`10
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`Petition for IPR of U.S. Patent 7,412,517
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`documents, images), or (4) Type 3 delay-sensitive low bandwidth services (such as
`
`voice). See id. at 3:56-4:45. Sriram further discloses that these traffic types are also
`
`called “traffic classes.” Id. at 7:8-10.
`
`Sriram discloses that an ATM switch classifies traffic into these traffic classes
`
`at a virtual circuit level using a virtual channel identifier (VCI) within the virtual
`
`channel field of each ATM cell header. See Ex. 1004, at 4:54-63 (“The traffic
`
`classification described here may be accomplished at a virtual circuit level. The
`
`header in each ATM cell may provide virtual channel identifier (VCI) information
`
`in a virtual channel field.”). Specifically, Sriram describes that the call type may be
`
`determined “[b]ased on information obtained from the sending terminal at call setup
`
`time.” Id. “Each ATM switch involved in the call routing can maintain a table
`
`which maps VCIs to call types for all the calls flowing through that switch.” Id. A
`
`POSITA would have understood that each “call types” would be classified into one
`
`of the traffic classes discussed above (e.g., CBR, VBR traffic). Ex. 1003, ¶ 65.
`
`Accordingly, a POSITA would have understood that an ATM switch can maintain a
`
`table of VCI values, allowing the switch to map each incoming ATM cell to its call
`
`type and traffic class. Id.
`
`This is described by Sriram in more detail with respect to Figure 5, which
`
`illustrates a method for allocating bandwidth to the classified ATM cells according
`
`11
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`Petition for IPR of U.S. Patent 7,412,517
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`to the traffic classes discussed above.
`
`In the above figure, each incoming ATM cell is classified into a queue
`
`according to traffic service class. See Ex. 1004, at 5:7-34. Cells are withdrawn from
`
`each queue by dynamic time slice server 48 according to the traffic characteristic
`
`requirements of each cell, including the bandwidth and delay requirements of each
`
`12
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`Petition for IPR of U.S. Patent 7,412,517
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`traffic service class. See id.at 5:34-6:62. A POSITA would have understood that
`
`bandwidth and delay requirements are among the QoS requirements that would be
`
`established for each connection during connection setup. Ex. 1003, ¶ 67.
`
`Scheduling Based on QoS in Wireless ATM Networks (Passas-I and
`Pasternak)
`The inventors of the ‘517 Patent apparently believed that “ATM QoS
`
`mechanisms do not address the unique challenges associated with wireless
`
`communication.” Ex. 1001, at 14:29-30. By the time of the ‘517 Patent, however,
`
`methods for applying ATM QoS mechanisms, such as those described by Sriram
`
`above, to the wireless environment were well understood by a POSITA. Ex. 1003
`
`¶ 68.
`
`1. Passas-I6
`Passas-I discloses systems and methods for providing wireless ATM,
`
`including how to allocate slots in a shared TDD/TDMA wireless bandwidth between
`
`6 “Quality of Service-Oriented Medium Access Control for Wireless ATM
`
`Networks” by Nikos Passas et al. (“Passas-I”) was published in November 1997 by
`
`IEEE and is prior art under § 102(b). Ex. 1014, at 16-21. Even if the ‘517 Patent
`
`were given priority to the Provisional, Passas-I would still be prior art under
`
`§ 102(a). Passas-I was not considered in prosecution.
`
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`Petition for IPR of U.S. Patent 7,412,517
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`uplink and downlink transmissions using a scheduling algorithm that accounts for
`
`the QoS requirements of all traffic. Ex. 1005. Passas-I discloses a wireless ATM
`
`system (called “WAND”) that allocates a shared radio bandwidth using a quality-of-
`
`service oriented medium access control (MAC) and traffic scheduler. Id. at 42-43.
`
`Passas-I’s WAND system includes multiple “[m]obile terminals (MTs), [which are]
`
`the end user equipment,” and “[a]ccess points, [which are] the base stations of the
`
`cellular environment.” Id. The WAND system is illustrated in Figure 1, reproduced
`
`below:7
`
`7 The same text and figures appear in all filed copies of Passas-I (in varying levels
`
`of quality). See Ex. 1005, Ex. 1015, and Ex. 1016. Copies of the figures as presented
`
`herein are from Ex. 1016 for clarity, but have substantially the same content.
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`14
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`Petition for IPR of U.S. Patent 7,412,517
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`Passas-I’s WAND system uses TDMA/TDD to multiplex uplink and
`
`downlink traffic, in which “[s]lot allocation is performed dynamically.” Id. at 44.
`
`Passas-I further discloses a scheduling algorithm to provide “the QoS required by
`
`the individual connections.” Id. “The task of the Scheduler is to determine how the
`
`slots of each time frame are allocated to its associated MTs and to downlink
`
`transmissions. A well-designed scheduling mechanism should allocate the slots in
`
`a way that maintains the agreed QoS to the uplink and downlink ATM connections
`
`sharing the radio bandwidth.” Id. The time frame structure disclosed by Passas-I
`
`includes a variable length frame, and features variable length parts of the UP (uplink)
`
`and DOWN (downlink) periods, as shown by Figure 2, reproduced below:
`
`15
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`Petition for IPR of U.S. Patent 7,412,517
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`“Each period has a variable length, depending on the traffic to be carried on
`
`the wireless channel.” Id. Passas-I’s wireless AP “schedules the transmission of its
`
`uplink and downlink traffic and allocates bandwidth dynamically, based on traffic
`
`characteristics and QoS requirements of all connections.” Id.
`
`Passas-I discloses a detailed Mobile Access Scheme Based on Contention and
`
`Reservation for ATM (MASCARA) scheduling algorithm for allocating slots to
`
`uplink and downlink connections according to the connections’ service class and
`
`QoS requirements. Id. at 43. Details of how the MASCARA scheduling algorithm
`
`uses the analyzed contents of downlink cells and the analyzed uplink reservation
`
`requests to perform TDMA slot assignment are explained below in Ground 1. See
`
`16
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`Petition for IPR of U.S. Patent 7,412,517
`
`Section VI.A, infra.
`
`In the uplink direction, the “current needs of an uplink connection from a
`
`specific MT [Mobile Terminal] are sent to the AP through MT ‘reservation
`
`requests.’ ” Id. at 44. “At the end of a frame, the AP constructs the next frame,
`
`according to the MASCARA scheduling algorithm presented below, taking into
`
`account the reservation requests sent by the MTs, the arriving cells for each
`
`downlink connection, and the traffic characteristics and QoS requirements of all
`
`connections.” Id. The allocation information for each frame is “broadcast to the
`
`MTs in the frame header (FH) period at the beginning of each frame.” Id.
`
`Accordingly, Passas-I discloses the use of reservation requests that include
`
`information sufficient to identify to the AP (1) the current needs of (2) an uplink
`
`connection of (3) a specific MT. Ex. 1003, ¶ 73.8
`
`8 Passas-II is a detailed specification of the WAND system described by Passas-I.
`
`Ex. 1013. Passas-II is relied on by Dr. Haas to corroborate his understanding of
`
`how a POSITA would have understood the disclosure of Passas-I with respect to
`
`the information conveyed in the reservation request. Ex. 1003, ¶ 76. See Comcast
`
`Cable Comm’ns v. Rovi Guides, Inc., IPR2017-01147, 2017 WL 5175527, at *16
`
`(P.T.A.B. Nov. 17, 2017).
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`Petition for IPR of U.S. Patent 7,412,517
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`In the downlink direction, a POSITA with a basic understanding of ATM
`
`concepts (such as those taught by Sriram) would have understood that the scheduler
`
`of Passas-I would know how to identify the “downlink connection” of the “arriving
`
`cells”—by examining the VCI field within the standard ATM cell header, which
`
`identifies the connection and QoS requirements of that cell (as well as the MT the
`
`cell was intended for). Ex. 1004, at 4:54-63; see also Ex. 1005, at 45 (describing
`
`that each connection has “contractual values of QoS and traffic characteristics” and
`
`that the scheduler “takes into account the delay constraints of individual connections
`
`in the allocation of bandwidth”). A POSITA would have understood that Passas-I
`
`relies on the use of the standard ATM cell format for downlink traffic. See id., at 43
`
`(describing the requirement for a MAC protocol to “support ATM traffic classes as
`
`defined by ATM standards.”); see also Ex. 1003, ¶ 74 (confirming that Sriram’s
`
`Figure 2 discloses the standardized ATM cell format).
`
`2. Pasternak9
`Pasternak discloses a wireless ATM network with quality of service
`
`9 U.S. Pat. 6,157,614 (“Pasternak”) was filed on Oct. 22, 1997 and issued on Dec. 5,
`
`2000. Pasternak is prior art under at least § 102(e). Pasternak was not considered
`
`in prosecution.
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`Petition for IPR of U.S. Patent 7,412,517
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`scheduling between a subscriber terminal and wireless base station. Ex. 1006, at
`
`Title. Pasternak discloses a wireless ATM network that, like Passas-I, includes
`
`multiple subscriber terminals (STs) and a base station to provide access to the wired
`
`ATM network, as shown in Figure 1.
`
`Pasternak discloses “MAC layer protocol formats for implementing requests
`
`and grants.” Ex. 1006 at 2:33-34. Pasternak confirms an implementation of uplink
`
`reservation requests as including (1) a subscriber terminal identifier (STI), (2) a
`
`virtual connection identifier (VCI), and (3) the number of grants requested. See id.
`
`at 10:52-65; see also Figure 10 as annotated below.
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`Petition for IPR of U.S. Patent 7,412,517
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`Subscriber
`terminal identifier
`
`Virtual connection
`identifier
`
`Grants requested
`
`Customer Premises Equipment in Wireless Networks (Lin10)
`Whereas the Passas references describe a “mobile” device communicating
`
`with base stations of a wireless network, the challenged claims recite a “customer
`
`premises equipment (CPE) station,” which the ‘517 Patent defines as “devices
`
`residing on the premises of a customer and used to connect to a telephone
`
`network.” Ex. 1001 at Table 1. Lin describes that it was also well-known that
`
`10 U.S. Patent 6,400,701 (“Lin”) was filed on March 31, 1998 and issued on June 4,
`
`2002. Lin is prior art under at least § 102(e). Lin was not considered in prosecution.
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`Petition for IPR of U.S. Patent 7,412,517
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`computers residing at a subscriber’s premises could also communicate with a base
`
`station of a wireless telephone network. Ex. 1012 at 1:30-40; 1:63-66. Lin
`
`illustrates this architecture in Fig. 1, as annotated below:
`
`CPE
`
`Id. Lin illustrates a personal computer (109) residing on a subscriber’s premises that
`
`is wirelessly connected to a telephone network(111) via base station 103.
`
`V. CLAIM CONSTRUCTION
`
`The Phillips standard governs interpretation of the claim terms in the ’517
`
`Patent. Samsung Elecs. Co. v. Promos Techs. Inc., IPR2017-01414, Paper 6 at 9
`
`(P.T.A.B. Nov. 17, 2017) (applying Phillips standard where challenged patent would
`
`expire during pendency of IPR). The ’517 Patent purportedly claims the benefit of
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`Petition for IPR of U.S. Patent 7,412,517
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`a July 9, 1999 non-provisional application and contains a terminal disclaimer over
`
`that patent. The ’517 Patent therefore expires on July 9, 2019. If the PTAB institutes
`
`trial, the ’517 Patent will expire during the pendency of this IPR. Accordingly,
`
`Petitioner has applied the Phillips standard rather than the broadest reasonable
`
`interpretation standard.
`
`The Term “Packet-Centric” in the Preamble of Claim 1 Is Not
`Limiting.
`Claim 1 is directed to a method for “allocating a shared wireless bandwidth in
`
`a packet-centric wireless point to multi-point telecommunications system.” The
`
`Board should find that the phrase “in a packet-centric wireless point to multi-point
`
`telecommunications system” is not limiting. Generally, a claim preamble is not
`
`limiting. In re Wertheim, 541 F.2d 257 (CCPA 1976). “Nonetheless, the preamble
`
`may be construed as limiting if it recites essential structure or steps, or if it is
`
`necessary to give life, meaning, and vitality to the claim.” American Med. Sys., Inc.
`
`v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010); Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (stating that if the “preamble
`
`merely states, for example, the purpose or intended use of the invention . . . then the
`
`preamble is not considered a limitation.”).
`
`Here, the preamble recitation of “in a packet-centric wireless point to multi-
`
`point telecommunications system” does not give vitality to the claim, as the term is
`
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`Petition for IPR of U.S. Patent 7,412,517
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`merely recited as describing the technological environment the claimed method is
`
`intended to be performed in, which is merely a statement of intended use. Moreover,
`
`there is no evidence that the term “packet-centric” was added to overcome prior art
`
`during prosecution. Accordingly, the phrase “in a packet-centric . . . system” should
`
`not limit the claim.
`
`Wireless
`“Packet-Centric
`Telecommunications System”
`As discussed above, the phrase “in a packet-centric wireless point to multi-
`
`Point
`
`to
`
`Multi-Point
`
`point telecommunications system” is recited by the preamble of Claim 1 and is not
`
`limiting. Should the Board conclude that this term limits the claim, the Board should
`
`construe “packet-centric . . . system” to mean “a . . . system that utilizes packets to
`
`transmit information from a sender of the information to a destination of said
`
`information.” This construction is consistent with the specification, which states
`
`that “[p]acket switching breaks a media stream into pieces known as, for example,
`
`packets, cells, or frames. Each packet can then be encoded with address information
`
`for delivery to the proper destination and can be sent through the network.” Ex.
`
`1001, at 30:29-32; see id. at 4:4-8 (“Packet switching breaks up traffic into so-called
`
`packets which can then be transported from a source node to a destination for
`
`reassembly.”). Consistently, a POSITA would have understood that packet-centric
`
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`Petition for IPR of U.S. Patent 7,412,517
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`systems are systems that perform packet-switching, and that ATM is one such
`
`system. Ex. 1003, ¶ 84, 87.11
`
`To the extent that Patent Owner pursues a narrower construction (such as one
`
`that would attempt to exclude packet-centric networks that also happen to be
`
`“circuit-centric”) such a construction should be rejected. For example, while the
`
`specification contrasts “packet-centric” networks with “circuit-centric” networks,
`
`there is no suggestion that those terms are mutually exclusive in aspects of their
`
`operations. See Ex. 1001, at 31:43-53 (describing differences between packet-
`
`centric and circuit-centric protocols). To the contrary, the specification describes
`
`embodiments where certain aspects of the packet-centric and the circuit-centric
`
`concepts are combined. For example, ATM is described by the patent as combining
`
`aspects of both circuit-centric and packet-centric technologies. Id. at 35:45-47
`
`(“When using ATM, longer packets cannot delay shorter packets as in other packet-
`
`switched networks.”); see id. at 33:62-67 (describing data network 142 as “any art-
`
`11 A POSITA would have understood that ATM breaks up large amounts of data into
`
`cells which are then individually switched through various ATM switches to reach
`
`the intended destination. Id.; Ex. 1004 at 3:16-18 (confirming that ATM uses
`
`“packets [that are] known as ATM cells.”).
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`Petition for IPR of U.S. Patent 7,412,517
`
`recognized packet centric data network” including an “ATM circuit centric
`
`network”).
`
`Even to the extent it is argued that “packet-centric” excludes traditional
`
`circuit-switched concepts, ATM differs