DOCKET NO: 500290US
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BLACKBERRY CORP., Petitioner,
v.
OPTIS WIRELESS TECHNOLOGY, LLC, Patent Owner.
_______________
Case IPR2017-______ Patent No. 8,064,919
_______________
PETITION FOR INTER PARTES REVIEW
U.S. Patent 8,064,919 Petition for Inter Partes Review
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TABLE OF CONTENTS
I. INTRODUCTION ........................................................................................... 1
II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ............................. 1
B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 2
D. Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
III. PAYMENT OF FEES ..................................................................................... 2
IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 3
A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 3
1. The Specific Art on Which the Challenge is Based ................... 3
2. The Specific Grounds on Which the Challenge Is Based ........... 5
V. BACKGROUND OF THE ’919 PATENT ..................................................... 6
A. Technology Overview ........................................................................... 6
B. Summary of the ’919 Patent .................................................................. 9
C. Prosecution History of the ’919 Patent ............................................... 10
VI. PERSON OF ORDINARY SKILL IN THE ART ........................................ 10
VII. CLAIM CONSTRUCTION .......................................................................... 11
VIII. GROUNDS OF UNPATENTABILITY ........................................................ 12
A. Claims 1–3, 5, 6, 10–12, 14, and 15 are Anticipated by R1-062771 ................................................................................................. 12
B. Claims 4, 7, 8, 13, 16, and 17 are Obvious over R1-062771 in View of R1-070734 ............................................................................. 29
U.S. Patent 8,064,919 Petition for Inter Partes Review
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C. Claims 9 and 18 are Obvious over R1-062771 in View of R1-063326 ................................................................................................. 37
D. Claims 6, 8, 15, and 17 are Obvious over R1-062771 in View of R1-070734 and R1-071137 ............................................................. 39
IX. CONCLUSION .............................................................................................. 44
U.S. Patent 8,064,919 Petition for Inter Partes Review
1
I. INTRODUCTION
BlackBerry Corp. (“BlackBerry” or “Petitioner”), in accordance with 35
U.S.C. §§ 311–19 and 37 C.F.R. §§ 42.100 et seq., respectfully requests inter
partes review of claims 1–18 of U.S. Patent No. 8,064,919 (“the ’919 patent”) (Ex.
1001) assigned to Optis Wireless Technology, LLC (“Patent Owner”) via
assignment record at Reel/Frame: 032326/0707. This Petition shows by at least a
preponderance of the evidence that there is a reasonable likelihood that Petitioner
will prevail on proving that claims 1–18 of the ’919 patent are unpatentable based
on prior art that the Office did not have before it or did not fully consider during
prosecution.
II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
mandatory disclosures:
A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
Petitioner certifies that BlackBerry Corp. and BlackBerry Limited are the
real parties-in-interest.
B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
The ’919 patent is asserted in at least one currently pending litigation, which
was filed on January 17, 2016 and captioned PanOptis Patent Management, LLC v.
BlackBerry Limited, No. 2:16-cv-00062-JRG-RSP (E. D. Tex.).
U.S. Patent 8,064,919 Petition for Inter Partes Review
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C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
Petitioner provides the following designation of counsel: Lead counsel is
Robert C. Mattson (Reg. No. 42,850) and back-up counsel is Sameer Gokhale
(Reg. No. 62,618) and Thomas C. Yebernetsky (Reg. No. 70,418).
D. Service Information Under 37 C.F.R. § 42.8(b)(4)
Papers concerning this matter should be served in accordance with the
following:
Email: [email protected]; [email protected]; and
Post: Oblon LLP, 1940 Duke Street, Alexandria, VA 22314
Telephone: (703) 412-6466
Fax: (703) 413-2220
Petitioner consents to electronic service at the above email addresses.
III. PAYMENT OF FEES
The undersigned authorizes the Office to charge the fee required by
37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
No. 15-0030. Any additional fees that might be due are also authorized.
U.S. Patent 8,064,919 Petition for Inter Partes Review
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IV. REQUIREMENTS FOR INTER PARTES REVIEW
A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
Petitioner hereby certifies that the ’919 patent is available for inter partes
review and that the Petitioner is not barred or estopped from requesting an inter
partes review challenging the patent claims of the ’919 patent on the grounds
identified herein.
B. Identification of Challenge Under 37 C.F.R. § 42.104(b)
Petitioner requests inter partes review of claims 1–18 of the ’919 patent and
that the Board cancel the same as unpatentable. The ’919 patent claims priority to
U.S. Patent Application No. 12/532,352, which was filed as PCT/JP2008/000675
on March 21, 2008, and three Japanese patent applications: 2007-077502 (filed on
March 23, 2007), 2007-120853 (filed on May 1, 2007), and 2007-211104 (filed on
August 13, 2007). (Ex. 1001, p. 1). The ’919 patent is subject to pre-AIA 35
U.S.C. §§ 102, 103.
1. The Specific Art on Which the Challenge is Based
Petitioner relies upon the following printed publications:
Exhibit 1004 – NEC Group, “Downlink ACK/NACK Mapping for E-UTRA,”
TSG-RAN WG1 Meeting #46bis, Seoul, Korea, October 9–13, 2006 (R1-062771)
(“R1-062771”) was made available to the extent that persons interested and
ordinarily skilled in the subject matter or art, exercising reasonable diligence, could
U.S. Patent 8,064,919 Petition for Inter Partes Review
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locate it by at least October 13, 2006 (see Ex. 1003, ¶¶ 15–20), which is prior to
the earliest filing date claimed by the ’919 patent (March 23, 2007). R1-062771 is
therefore available as prior art under § 102(a). R1-062771 was not considered
during the original prosecution of the ’919 patent.
Exhibit 1005 – Texas Instruments, “ACK/NAK Channel Transmission in E-
UTRA Downlink,” 3GPP TSG RAN WG1 Meeting #48, Saint Louis, USA,
February 12–16, 2007 (R1-070734) (“R1-070734”) was made available to the
extent that persons interested and ordinarily skilled in the subject matter or art,
exercising reasonable diligence, could locate it by at least February 16, 2007 (see
Ex. 1003, ¶¶ 15–20), which is prior to the earliest filing date claimed by the ’919
patent (March 23, 2007). R1-070734 is therefore available as prior art under
§ 102(a). R1-070734 was cited in an IDS but not substantively considered during
the original prosecution of the ’919 patent. Additionally, R1-070734 is presented in
combination with R1-062771, which was not previously considered, and in
combination with the expert declaration of Paul Min, Ph.D.
Exhibit 1006 – NTT DoCoMo, Fujitsu, Mitsubishi Electric, NEC, Sharp, Toshiba
Corporation, “ACK/NACK Signal Structure in E-UTRA Downlink,” 3GPP TSG
RAN WG1 Meeting #47, Riga, Latvia, November 6–10, 2006 (R1-063326) (“R1-
063326”) was made available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable diligence, could locate it
U.S. Patent 8,064,919 Petition for Inter Partes Review
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by at least November 10, 2006 (see Ex. 1003, ¶¶ 15–20), which is prior to the
earliest filing date claimed by the ’919 patent (March 23, 2007). R1-063326 is
therefore available as prior art under § 102(a). R1-063326 was cited in an IDS but
not substantively considered during the original prosecution of the ’919 patent.
Additionally, R1-063326 is presented in combination with R1-062771, which was
not previously considered, and in combination with the expert declaration of Paul
Min, Ph.D.
Exhibit 1007 – CATT, TD-TECH, “LCR TDD: Structure and Coding for E-
HICH,” 3GPP TSG RAN WG1 Meeting #48, Saint Louis, USA, February 12–16,
2007 (R1-071137) (“R1-071137”) was made available to the extent that persons
interested and ordinarily skilled in the subject matter or art, exercising reasonable
diligence, could locate it by at least February 16, 2007 (see Ex. 1003, ¶¶ 15–20),
which is prior to the earliest filing date claimed by the ’919 patent (March 23,
2007). R1-071137 is therefore available as prior art under § 102(a). R1-071137
was not considered during the original prosecution of the ’919 patent.
2. The Specific Grounds on Which the Challenge Is Based
Petitioner respectfully requests cancellation of claims 1–18 of the ’919
patent on the following grounds:
(1) Claims 1–3, 5, 6, 10–12, 14, and 15 are anticipated under 35 U.S.C. §102
by R1-062771;
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(2) Claims 4, 7, 8, 13, 16, and 17 are rendered obvious under 35 U.S.C. §103
by R1-062771 in view of R1-070734; and
(3) Claims 9 and 18 are rendered obvious under 35 U.S.C. §103 by R1-
062771 in view of R1-063326; and
(4) Claims 6, 8, 15, and 17 are rendered obvious under 35 U.S.C. §103 by
R1-062771 in view of R1-070734 and R1-071137.
V. BACKGROUND OF THE ’919 PATENT
A. Technology Overview
Mobile communication systems include base stations and mobile stations,
which are also known as “User Equipment” or “UEs.” (Ex. 1003, ¶¶ 31–32).
Communications from the base station to the mobile station are referred to as
“downlink” or “DL” communications, whereas communications from the mobile
station to the base station are referred to as “uplink” or “UL” communications.
Communications on the DL or UL are limited by the amount of resources (e.g.,
frequency bandwidth and time) available for the stations. In a mobile
communication system that uses a transmission scheme known as “Orthogonal
Frequency-Division Multiplexing” or “OFDM” the time and frequency domain are
divided into chunks of resources known as “resource blocks” or “RBs.” As shown
below, each row in the resource block is a “slot” or “symbol” and each column in
the resource block is “subcarrier”:
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The example provided below schematically shows a 5 MHz UL bandwidth divided
into 12 resource blocks or RBs:
(Ex. 1004, Figure 1, cropped). The available UL resource blocks are assigned to
the various mobile stations by the base station. In order for the mobile station to
known which of the RB(s) it is assigned, the base station sends the mobile station
allocation information, which identifies the RB(s) provided to the mobile station
for use based on the index number(s) of the RB(s).
Base stations send mobile stations “control” information that controls the
communication flow between the base and mobile stations by identifying a variety
of parameters that regulate the communication flow. (Ex. 1003, ¶ 33). One piece of
control information that is sent from the base station to the mobile station is a
Tim
e
Frequency
U.S. Patent 8,064,919 Petition for Inter Partes Review
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response message, which indicates the success or failure of a data transmission
from the mobile station to the base station. The response signal can be either an
“ACK,” which is a positive acknowledgement, or a “NACK,” which is a negative
acknowledgment.
After the mobile station transmits information to the base station on the UL
using its allocated RB(s), it awaits an ACK/NACK response signal from the base
station. (Ex. 1003, ¶ 34). But first, the mobile station must know where to find the
response signal on the DL. As the ’919 admits, it was known in the art to associate
the assigned UL RB number to DL control channels that contain the response
signal in order to efficiently use DL communication resources. (Ex. 1001, 1:33–
42). Specifically, the ’919 patent references R1-010932 (Ex. 1006) as teaching this
method of associating the UL RBs with DL control channels containing the
response signals. (Ex. 1001, 1:49–51). In order to further improve the efficiency of
the DL communication resources, the DL control channels with the response
signals are multiplexed. Multiplexing techniques for DL communication resources,
such as code-division multiplexing (“CDM”) and frequency-division multiplexing
(“FDM”), were well known in the art. See generally, Ex. 1004. The ’919 patent
admits that it was known to use both CDM and FDM, individually or in a hybrid
CDM/FDM scheme, as methods for multiplexing response signals in the DL. (Ex.
U.S. Patent 8,064,919 Petition for Inter Partes Review
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1001, 1:43–48). Specifically, the ’919 patent references R1-070734 (Ex. 1005) as
teaching this method of CDM and FDM response signals. (Ex. 1001, 1:52–54).
The claims of the ’919 patent are a directed to a simple combination of the
above principles.
B. Summary of the ’919 Patent
The ’919 patent is generally directed to a mobile communication system that
performs the well-known practice of providing a response signal to a mobile
station. (Ex. 1001, 1:21–32, 2:46–67). As was well known in the art, the ’919
patent provides an exemplary UL resource that is divided into RBs.
(Ex. 1001, Figure 1). As was also known in the art, the DL response signals for
each UL RB is correlated on a one-to-one relationship to the UL RBs (e.g., DL
response signal #1 is for UL RB#1). (Ex. 1001, Figure 3). The DL response
signals, which are mapped onto DL control channels, are then sent on the DL using
a hybrid CDM/FDM scheme. (Ex. 1001, 7:35–48). Specifically, as seen in figure 6,
consecutive pairs of DL control channels with the response signals are sent via
different frequency bands.
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(Ex. 1001, Figure 6).
C. Prosecution History of the ’919 Patent
The ’919 patent issued on November 22, 2011 from U.S. Patent Application
No. 12/983,770, filed on January 3, 2011, which claims priority to U.S. Patent
Application No. 12/532,352, which was filed as PCT/JP2008/000675 on March 21,
2008, and three Japanese patent applications: 2007-077502 (filed on March 23,
2007), 2007-120853 (filed on May 1, 2007), and 2007-211104 (filed on August 13,
2007). (Ex. 1001, p. 1).
The ’919 patent issued without any office actions or substantive discussion
explaining the reasons of allowance.
VI. PERSON OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is evidenced by the prior art. See In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
U.S. Patent 8,064,919 Petition for Inter Partes Review
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not err in adopting the approach that the level of skill in the art was best
determined by references of record). The prior art discussed herein, and in the
declaration of Paul Min, Ph.D., demonstrates that a person of ordinary skill in the
art in the field of the ’919 patent would have been someone with an undergraduate
degree in electrical engineering, computer science, or computer engineering, or a
related field, and around two years of experience in the design, development,
and/or testing of cellular networks or equivalent combination of education and
experience.
VII. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable interpretation (“BRI”) in view of the
specification in which they appear. 37 C.F.R. § 42.100(b). Thus, as required by the
rules, this Petition uses the BRI standard.
“Hybrid ARQ Indicator Channel (HICH)”
Claims 6, 8, 15, and 17 recite the “hybrid ARQ indicator channel (HICH)”
claim term. The specification describes “hybrid ARQ indicator channel (HICH)”
only once in the specification, where it explains that it is a synonym for
“ACK/NACK channels”:
Further, the downlink control channels for transmitting response
signals used in the explanation of the above embodiments are
U.S. Patent 8,064,919 Petition for Inter Partes Review
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channels for feeding back ACK signals or NACK signals for mobile
stations. For this reason, the downlink control channels for
transmitting response signals may be referred to as “DCCHs
(Dedicated Control Channels),” “ACK/NACK channels,” “response
channels” and “HICH (Hybrid ARQ Indicator Channel).”
(Ex. 1001, 21:63–22:3). This is consistent with the plain and ordinary meaning of
the term “hybrid ARQ indicator channel (HICH).” (Ex. 1003, ¶ 38). Accordingly, a
person of ordinary skill in the art would consider the broadest reasonable
interpretation in light of the specification and prosecution history of “hybrid ARQ
indicator channel (HICH)” to be a downlink control channel for transmitting a
response signal that can also be referred to as a “DCCH (Dedicated Control
Channel),” “ACK/NACK channel,” or “response channel.” (Ex. 1003 ¶38).
VIII. GROUNDS OF UNPATENTABILITY
Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), this section demonstrates that
claims 1–18 of the ’919 patent are unpatentable.
A. Claims 1–3, 5, 6, 10–12, 14, and 15 are Anticipated by R1-062771
As demonstrated by the following element-by-element analysis as well as
the declaration of Paul Min, Ph.D. (Ex. 1003), claims 1–3, 5, 10–12, and 14 of the
’919 patent are anticipated by R1-062771.
R1-062771 is directed to methods of mapping the ACK/NACK response
signals in the DL in association with the UL RB. (Ex. 1004, p. 2). R1-062771
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proposes three methods for mapping the ACK/NACK response signal on the DL:
(1) “FDM Multiplexing of ACK/NACK,” (2) “Scatter Multiplexing of
ACK/NACK,” and (3) “CDM Multiplexing of ACK/NACK.” (Ex. 1004, pp. 1–9).
With reference to the FDM Multiplexing of ACK/NACK scheme, each UL RB’s
response signal is associated with particular subcarriers in the DL resources based
on a disclosed formula. (Ex. 1004, p. 3). Accordingly, each mobile station can
determine the associated response signals based on its UL RBs.
Claim 1[preamble]: “A mobile station apparatus comprising:”
The methods and operations described in R1-062771 necessarily require “[a]
mobile station apparatus.” (Ex. 1003, ¶ 40). R1-062771 discusses the flow of
signals to and from a UE or User Equipment. (Ex. 1004, pp. 1, 2). A person of
ordinary skill in the art would have known that a UE is mobile station. (Ex. 1003,
¶ 40).
Claim 1[a]: “a reception unit configured to receive, from a base station, allocation information indicating one or a plurality of allocated resource block(s) of uplink”
R1-062771 describes “receiv[ing], from a base station, allocation
information indicating one or a plurality of allocated resource block(s) of uplink.”
(Ex. 1003, ¶ 41). R1-062771 states that the DL control channel must contain
“information on the resource allocation.” (Ex. 1004, pp. 1, 2). R1-062771 provides
an example were 12 users are allocated one RB each: “The structure in Figure 1 is
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designed to support a maximum of 12 simultaneous users within 5 MHz (each user
with one chunk) ….” (Ex. 1004, p. 3). Accordingly, the allocation information
provided by the base station to the mobile stations would indicate that each mobile
station is allocated one chunk, or resource block. R1-062771 uses the terms
“chunk” and “resource” block interchangeably. (Ex. 1004, pp. 5–6). As shown
below, a first mobile station’s allocation information would indicate that it is
allocated resource block one (red) and a third mobile stations allocation
information would indicate that it is allocated resource block three (yellow):
(Ex. 1004, Figure 1, cropped).
The methods and operations described in R1-062771 necessarily require “a
reception unit” in the mobile station apparatus. (Ex. 1003, ¶ 42). R1-062771
discusses a downlink control channel that is used to send signals from the base
station to the mobile station. (Ex. 1004, pp. 1, 2). A person of ordinary skill in the
art would have known that a mobile station must contain a reception unit because
the reception unit is necessary for the mobile station to receive both allocation
information and response signals (e.g., ACK/NACK). (Ex. 1003, ¶ 42). Patent
Owner’s own expert agreed that a reception unit is necessary part of a mobile
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station: “Reception units were a fundamental part of wireless devices, as they are
today, since they are needed to receive wireless signals.” (Ex. 1011, ¶ 43). Without
the ability to receive the allocation and response signals from the base station, the
mobile station would be inoperable in the mobile communication system. (Ex.
1003, ¶ 42).
Claim 1[b]: “the resource blocks being consecutive in a frequency domain”
R1-062771’s resource blocks are consecutive in the frequency domain. (Ex.
1003, ¶ 43). R1-062771 shows the entire 5 MHz bandwidth being divided into
consecutive RBs:
(Ex. 1004, Figure 1, cropped, annotated). R1-062771’s RB diagram is nearly
identical to the ’919 patent’s RB diagram, the primary exception being the number
of RBs depicted (12 in R1-062771 versus 8 in the ’919 patent):
Frequency
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(Ex. 1001, Figure 1).
Claim 1[c]: “a determination unit configured to determine a resource of downlink, to which a response signal transmitted from the base station is mapped, from an index of the allocated resource block based on the allocation information”
R1-062771 describes “determin[ing] a resource of downlink, to which a
response signal transmitted from the base station is mapped, from an index of the
allocated resource block based on the allocation information.” (Ex. 1003, ¶ 44). In
R1-062771, the method for determining the resource of DL to which the response
signal is mapped depends on the multiplexing scheme used to transmit the
response signals on the DL. R1-062771 provides three methods for mapping the
ACK/NACK signals in the DL from the base station to the mobile station: (1)
FDM Multiplexing of ACK/NACK, (2) Scatter Multiplexing of ACK/NACK, and
(3) CDM Multiplexing of ACK/NACK. (Ex. 1004, pp. 2–9). With reference to the
first method, FDM multiplexing of ACK/NACK, R1-062771 describes the
relationship between the index of the allocated resource block (i or j) and the
downlink resource (Position) as follows:
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(Ex. 1004, p. 3).
The methods and operations described in R1-062771 necessarily require “a
determination unit” in the mobile station apparatus. (Ex. 1003, ¶ 45). As discussed
above, R1-062771 describes the mobile station as being able to determine where
the ACK/NACK is located in the DL control channels. (Ex. 1004, pp. 2, 3). A
person of ordinary skill in the art would have known that a mobile station must
contain a determination unit because the determination unit is necessary for the
mobile station to be able locate the response signal (e.g., ACK/NACK) from the
base station. (Ex. 1003, ¶ 45). Without the ability to determine the location of the
response signal from the base station, the mobile station would be inoperable in the
mobile communication system. (Ex. 1003, ¶ 45).
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Claim 1[d]: “wherein: the indices of a plurality of the consecutive resource blocks are respectively associated with a plurality of the resources which are different in a frequency domain;”
R1-062771 describes that “the indices of a plurality of the consecutive
resource blocks are respectively associated with a plurality of the resources which
are different in a frequency domain.” (Ex. 1003, ¶ 46). In the depicted example,
R1-062771’s plurality of consecutive RBs includes RBs 6 and 7:
(Ex. 1004, Figure 1, cropped, annotated). As discussed above, the relationship
between the indices of the plurality of resource blocks (i or j) and the plurality of
resources (Position) is as follows:
Resource Block #6
Resource Block #7
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(Ex. 1004, p. 3). The relationship between the indices of resource blocks and the
DL resources results in resources of different frequencies for the respective
resources associated with RBs 6 and 7:
(Ex. 1004, Figure 1, annotated).
Claim 1[e]: “the plurality of the resources are respectively comprised of a plurality of subcarrier groups which are inconsecutive in a frequency domain”
R1-062771 describes that “the plurality of the resources are respectively
comprised of a plurality of subcarrier groups which are inconsecutive in a
frequency domain.” (Ex. 1003, ¶ 47). Specifically, R1-062771’s respective
resources associated with RBs 6 and 7 are comprised of a plurality of subcarrier
groups that are inconsecutive in the frequency domain, as shown below:
Resources Associated with the 7th RB
Resources Associated with the 6th RB
Frequency
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(Ex. 1004, Figure 1, annotated). As seen in the annotated figure above, the
subcarrier groups are inconsistent in the frequency domain because there are gaps
in the subcarrier groups that contain the ACK/NACK signals.
Claim 1[f]: “the response signal is mapped to the subcarrier group”
R1-062771 discloses that “the response signal is mapped to the subcarrier
group.” (Ex. 1003, ¶ 48). R1-062771 shows that the response signal to the sixth
mobile station (brown) and to the seventh mobile station (orange) are mapped to
their respective subcarrier groups as follows:
“SG” = Subcarrier Group
Resources Associated with the 7th RB
Resources Associated with the 6th RB
Frequency
SG GAP
SG GAP
SGGAP
SGGAP
SGGAP GAP
SG
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(Ex. 1004, Figure 1, annotated).
Claim 2[a]: “The mobile station apparatus according to claim 1 further comprising a transmission unit configured to transmit data using the allocated resource block(s) based on the allocation information”
R1-062771 describes “transmit[ing] data using the allocated resource
block(s) based on the allocation information.” (Ex. 1003, ¶ 49). R1-062771
explains that the mobile station has “knowledge of the UL chunks used for the UL
transmission ….” (Ex. 1004, p. 2). R1-062771 explains that the mobile station
transmits data using the “N” number of RBs that it was allocated by the base
station. (Ex. 1004, pp. 2, 3).
The methods and operations described in R1-062771 necessarily require “a
transmission unit” in the mobile station apparatus. (Ex. 1003, ¶ 50). As discussed
Response Signal to the 7th Mobile Station
Response Signal to the 6th Mobile Station
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above, R1-062771 describes the mobile station as transmitting data using the
allocated RB(s) based on the allocation information. (Ex. 1004, pp. 2, 3). A person
of ordinary skill in the art would have known that a mobile station must contain a
transmission unit because the transmission unit is necessary for the mobile station
to be able transmit data, which is the fundamental function of the mobile unit. (Ex.
1003, ¶ 50). Patent Owner’s own expert agreed that a transmission unit is
necessary part of a mobile station: “Transmission units were a fundamental part of
wireless devices, as they are today, since they are needed to transmit signals
wirelessly.” (Ex. 1011, ¶ 43). Without the ability to transmit data, the mobile
station would be inoperable in the mobile communication system. (Ex. 1003, ¶ 50).
Claim 2[b]: “wherein said determination unit determines the resource, to which the response signal is mapped, from an index of the resource block used for transmitting the data”
See supra Section VIII.A, Claim 1[c].
Claim 3: “The mobile station apparatus according to claim 1, wherein the response signal is mapped to a plurality of the resources distributed in the frequency domain”
R1-062771 discloses that “the response signal is mapped to a plurality of the
resources distributed in the frequency domain.” (Ex. 1003, ¶ 52). R1-062771
shows that the response signal to the sixth mobile station (brown) and to the
seventh mobile station (orange) are mapped to a plurality of the resources that are
distributed in the frequency domain as follows:
U.S. Patent 8,064,919 Petition for Inter Partes Review
23
(Ex. 1004, Figure 1, annotated).
Claim 5: “The mobile station apparatus according to claim 1, wherein a plurality of the same response signals are generated with a repetition in the base station, and the plurality of the same response signals are mapped to a plurality of the resources distributed in the frequency domain, respectively.”
R1-062771 discloses that “a plurality of the same response signals are
generated with a repetition in the base station, and the plurality of the same
response signals are mapped to a plurality of the resources distributed in the
frequency domain, respectively.” (Ex. 1003, ¶ 53). R1-062771 shows that the
response signal to the sixth mobile station (brown) and to the seventh mobile
station (orange) are generated with a repetition at the base station and mapped to a
plurality of the resources that are distributed in the frequency domain as follows:
Resources Associated with the 7th RB
Resources Associated with the 6th RB
Frequency
Response Signal to the 7th Mobile Station
Response Signal to the 6th Mobile Station
U.S. Patent 8,064,919 Petition for Inter Partes Review
24
(Ex. 1004, Figure 1, annotated).
Claim 6: “The mobile station apparatus according to claim 1, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and the response signal is mapped to the resource to which the hybrid ARQ indicator channel is mapped.”
R1-062771 discloses that “the response signal is carried on a hybrid ARQ
indicator channel (HICH) in the base station, and the response signal is mapped to
the resource to which the hybrid ARQ indicator channel is mapped.” As discussed
above, a “hybrid ARQ indicator channel (HICH)” is a downlink control channel
for transmitting a response signal and is synonymous with an ACK/NACK
channel. See supra Section VII. R1-062771 specifically describes an ACK/NACK
channel: “The structure in Figure 1 is designed to support a maximum of 12
Resources Associated with the 7th RB
Resources Associated with the 6th RB
Frequency
Response Signal to the 7th Mobile Station
Response Signal to the 6th Mobile Station
U.S. Patent 8,064,919 Petition for Inter Partes Review
25
simultaneous users within 5 MHz (each user with one chunk) with each chunk
being acknowledged by a six subcarrier ACK/NACK channel.” (Ex. 1004, p. 3).
Thus, a person of ordinary skill in the art would consider R1-062771’s
ACK/NACK channel to be a hybrid ARQ indicator channel. (Ex. 1003, ¶ 54). R1-
062771’s response signals (the ACK/NACKs) are mapped to a resource to which
the hybrid ARQ indicator channel (the ACK/NACK channel) is mapped. (Ex.
1004, pp. 2–4). The response signals in R1-062771 are ACK/NACK signals and,
thus, are necessarily carried on ACK/NACK channels in the base station. (Ex.
1003, ¶ 54). R1-062771 shows the response signal being mapped to the resource to
which the hybrid ARQ indicator channel (the ACK/NACK channel) is mapped:
Resources Associated with the 7th RB
“HICH” – ACK/NACK Channel
Response Signal to the 7th Mobile Station
HICH HICH HICH
U.S. Patent 8,064,919 Petition for Inter Partes Review
26
(Ex. 1004, Figure 1, annotated).
Claim 10[preamble]: “A method for determining a response signal resource comprising:”
Claim 10 is directed to a method for performing the functions recited in
claim 1 and is therefore anticipated by R1-062771 for the same reasons.
R1-062771 discloses “A method for determining a response signal
resource.” (Ex. 1003, ¶ 56). R1-062771 describes several methods for determining
the resource of DL to which the response signal is mapped: (1) FDM Multiplexing
of ACK/NACK, (2) Scatter Multiplexing of ACK/NACK, and (3) CDM
Multiplexing of ACK/NACK. (Ex. 1004, pp. 2–9). With reference to the first
method, FDM multiplexing of ACK/NACK, R1-062771 describes the relationship
between the index of the allocated resource block (i or j) and the DL resource
(Position) as follows:
(Ex. 1004, p. 3). Thus, R1-062771 teaches the preamble of claim 10.
U.S. Patent 8,064,919 Petition for Inter Partes Review
27
Claim 10[a]: “receiving, from a base station, allocation information indicating one or a plurality of allocated resource block(s) of uplink”
See supra Section VIII.A, Claim 1[a].
Claim 10[b]: “the resource blocks being consecutive in a frequency domain”
See supra Section VIII.A, Claim 1[b].
Claim 10[c]: “determining a resource of downlink, to which a response signal transmitted from the base station is mapped, from an index of the allocated resource block based on the allocation information”
See supra Section VIII.A, Claim 1[c].
Claim 10[d]: “wherein: the indices of a plurality of the consecutive resource blocks are respectively associated with a plurality of the resources which are different in a frequency domain”
See supra Section VIII.A, Claim 1[d].
Claim 10[e]: “the plurality of the resources are respectively comprised of a plurality of subcarrier groups which are inconsecutive in a frequency domain”
See supra Section VIII.A, Claim 1[e].
Claim 10[f]: “the response signal is mapped to the subcarrier group”
See supra Section VIII.A, Claim 1[f].
U.S. Patent 8,064,919 Petition for Inter Partes Review
28
Claim 11: “The method for determining a response signal resource according to claim 10 further comprising transmitting data using the allocated resource block(s) based on the allocation information, wherein the resource, to which the response signal is mapped, is determined from an index of the resource block used for transmitting the data”
Claim 11 is directed to a method for performing the functions recited in
claim 2. See supra Section VIII.A, Claim 2[a], [b]. Thus, claim 11 is anticipated by
R1-062771 for the same reasons.
Claim 12: “The method for determining a response signal resource according to claim 10, wherein the response signal is mapped to a plurality of the resources distributed in the frequency domain”
Claim 12 is directed to a method for performing the function recited in claim
3. See supra Section VIII.A, Claim 3. Thus, claim 12 is anticipated by R1-062771
for the same reasons.
Claim 14: “The method for determining a response signal resource according to claim 10, wherein a plurality of the same response signals are generated with a repetition in the base station, and the plurality of the same response signals are mapped to a plurality of the resources distributed in the frequency domain, respectively.”
Claim 14 is directed to a method for performing the function recited in claim
5. See supra Section VIII.A, Claim 5. Thus, claim 15 is anticipated by R1-062771
for the same reasons.
U.S. Patent 8,064,919 Petition for Inter Partes Review
29
Claim 15: “The method for determining a response signal resource according to claim 10, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and the response signal is mapped to the resource to which the hybrid ARQ indicator channel is mapped.”
Claim 15 is directed to a method for performing the function recited in claim
6. See supra Section VIII.A, Claim 6. Thus, claim 15 is anticipated by R1-062771
for the same reasons.
B. Claims 4, 7, 8, 13, 16, and 17 are Obvious over R1-062771 in View of R1-070734
As demonstrated by the following detailed analysis as well as the declaration
of Paul Min, Ph.D. (Ex. 1003), claims 4, 7, 8, 13, 16, and 17 of the ’919 patent are
rendered obvious by R1-062771 in view of R1-070734.
R1-062771 does not explicitly discuss combining the CDM and FDM
schemes for providing response signals (ACK/NACKs) on the DL. R1-070734
describes a hybrid CDM/FDM scheme for providing response signals
(ACK/NACKs) on the DL. (Ex. 1005, pp. 1–4). As discussed below, R1-062771 in
view of R1-070734’s hybrid CDM/FDM scheme renders obvious claims 4, 7, 8,
13, 16, and 17 of the ’919 patent.
U.S. Patent 8,064,919 Petition for Inter Partes Review
30
Claim 4: “The mobile station apparatus according to claim 1, wherein the response signal is spread in the base station, and the spread response signal is mapped to the resource.”
R1-070734 explains that “the response signal is spread in the base station,
and the spread response signal is mapped to the resource.” (Ex. 1003, ¶ 69). R1-
070734 describes a “hybrid CDM/FDM” scheme for transmitting downlink
ACK/NACK signals. (Ex. 1005, pp. 1–4). The CDM portion of the hybrid
CDM/FDM transmission scheme uses “Walsh-Hadamard (WH) orthogonal
spreading.” (Ex. 1005, p. 1). Because R1-070734 describes a DL transmission (i.e.,
from the base station to the mobile station) the process of creating the hybrid
CDM/FDM DL transmission is necessarily completed in the base station prior to
transmission on the DL. (Ex. 1003, ¶ 69). The ’919 patent even admits that R1-
070734 teaches spreading the response signal and mapping it to the resource:
Further, studies are conduct for ARQ recently whereby a
response signal is spread and the spread response signal is duplicated
in order to average interference of the response signal from
neighboring cells or sectors and provide frequency diversity gain for
the response signal (e.g. see Non-patent Document 2).
…
Non-patent Document 2: 3GPP RAN WG1 Meeting document, R1-
070734, “ACK/NACK Channel Transmission in E-UTRA
Downlink,” TI, February 2007
(Ex. 1001, 1:43–54).
U.S. Patent 8,064,919 Petition for Inter Partes Review
31
For example, a person of ordinary skill in the art would have understood that
R1-062771 could be modified by the teachings of R1-070734 such that each DL
RB would include 6 code-multiplexed response signals that are responsive to the
first 6 UL RBs. A pictorial representation of R1-062771 as modified by the
teachings of R1-070734 is shown below:
(Ex. 1004, Figure 1, annotated and modified in view of R1-070734).
It would have been obvious to a person of ordinary skill in the art to modify
R1-062771’s FDM scheme with R1-070734’s hybrid CDM/FDM scheme in order
to provide the benefits of both CDM and FDM, while avoiding the shortcomings of
pure a CDM or FDM scheme. (Ex. 1003, ¶ 71). Specifically, R1-070734 explains
the benefits of a hybrid CDM/FDM scheme over a pure FDM scheme:
Modified In View Of R1-070734
U.S. Patent 8,064,919 Petition for Inter Partes Review
32
Hybrid CDM/FDM is recommended for DL ACK/NAK signaling as it
provides all desirable properties (frequency diversity, individual
power adaptation for coverage and enhanced reliability for NAK,
interference averaging and randomization, power balancing per sub-
carrier among multiple ACK/NAK signals, applicability to all E-
UTRA BWs and for any number of ACK/NAK signals) while
avoiding the shortcomings of pure CDM or FDM.
(Ex. 1005, p. 9, underlining in the original). Both R1-062771 and R1-070734
discuss multiplexing techniques for multiple DL ACK/NACK signals and, thus,
are directed to the same field of endeavor and, in fact, originated from the same
series of 3GPP standards-setting meetings. (Ex. 1003, ¶ 71). The methods and
techniques discussed in R1-062771 and R1-070734 were well understood by
persons of ordinary skill in the art and, therefore, could be combined to yield
predictable results. (Ex. 1003, ¶ 71). Accordingly, modifying R1-062771’s FDM
scheme with the teachings of R1-070734 is the “mere application of a known
technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 405 (2007). Additionally, by explicitly reciting the
benefit of providing interference randomization, R1-070734 provides a specific
teaching, suggestion, or motivation for the modification of R1-062771’s FDM
scheme with the teachings of R1-070734. (Ex. 1003, ¶ 71). For all the same
reasons, a person of ordinary skill in the art would have also had a reasonable
U.S. Patent 8,064,919 Petition for Inter Partes Review
33
expectation of success in combining the references. Thus, claim 4 is obvious over
the combination of R1-062771 and R1-070734.
Claim 7: “The mobile station apparatus according to claim 1, wherein a plurality of the response signals are mapped to the resource with code-multiplexed.”
The combination of R1-062771 and R1-070734, as applied in claim 4,
teaches that “a plurality of the response signals are mapped to the resource with
code-multiplexed.” (Ex. 1003, ¶ 72). The apparatus of R1-062771, thus modified,
maps a plurality of the response signals to the resource with code multiplexing as
shown below:
(Ex. 1004, Figure 1, annotated and modified in view of R1-070734). Thus, claim 7
is obvious over the combination of R1-062771 and R1-070734.
Modified In View Of R1-070734
Plurality Of Response Signals
U.S. Patent 8,064,919 Petition for Inter Partes Review
34
Claim 8: “The mobile station apparatus according to claim 1, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and a plurality of the response signals are mapped to the resource, to which a plurality of the hybrid ARQ indicator channels are mapped, with code-multiplexed.”
The combination of R1-062771 and R1-070734, as applied in claim 4,
teaches that “the response signal is carried on a hybrid ARQ indicator channel
(HICH) in the base station, and a plurality of the response signals are mapped to
the resource, to which a plurality of the hybrid ARQ indicator channels are
mapped, with code-multiplexed.” As discussed above, a “hybrid ARQ indicator
channel (HICH)” is simply a DL control channel for transmitting a response signal
and is synonymous with an ACK/NACK channel. See supra Section VII. While
the ACK/NACK “channel” can be a collection of subcarrier channels, as shown
above in reference to claim 6 (see supra Section VIII.A, Claim 6), a person of
ordinary skill in the art would also understand that the ACK/NACK “channel” as a
single subcarrier or CDM-based channel. (Ex. 1003, ¶ 73). Thus, each CDM-based
ACK/NACK channel in R1-062771 in view of R1-070734’s system would be a
hybrid ARQ indicator channel (the ACK/NACK channel). (Ex. 1003, ¶ 73).
Accordingly, the apparatus of R1-062771, as modified in view of R1-070734,
maps a plurality of response signals (ACK/NACK signals) to the resource to which
a plurality of hybrid ARQ indicator channels are mapped with CDM (CDM-based
U.S. Patent 8,064,919 Petition for Inter Partes Review
35
ACK/NACK signals). (Ex. 1003, ¶ 73). The response signals in R1-062771, thus
modified, are ACK/NACK signals and, thus, are necessarily carried on hybrid
ARQ indicator channels (ACK/NACK channels) in the base station. (Ex. 1003,
¶ 73). The apparatus of R1-062771, as modified in view of R1-070734, maps a
plurality of the response signals to the resource, to which a plurality of the hybrid
ARQ indicator channels are mapped, with code-multiplexing:
(Ex. 1004, Figure 1, annotated and modified in view of R1-070734). Thus, claim 8
is obvious over the combination of R1-062771 and R1-070734.
Modified In View Of R1-070734
Plurality Of CDM-Based Response Signals
Plurality Of Hybrid ARQ Indicator Channels
U.S. Patent 8,064,919 Petition for Inter Partes Review
36
Claim 13: “The method for determining a response signal resource according to claim 10, wherein the response signal is spread in the base station, and the spread response signal is mapped to the resource.”
Claim 13 is directed to a method for performing the function recited in claim
4. See supra Section VIII.B, Claim 4. Thus, claim 13 is obvious over R1-062771 in
view of R1-070734 for the same reasons as claim 4.
Claim 16: “The method for determining a response signal resource according to claim 10, wherein a plurality of the response signals are mapped to the resource with code-multiplexed.”
Claim 16 is directed to a method for performing the function recited in claim
7. See supra Section VIII.B, Claim 7. Thus, claim 16 is obvious over R1-062771 in
view of R1-070734 for the same reasons as claim 7.
Claim 17: “The method for determining a response signal resource according to claim 10, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and a plurality of the response signals are mapped to the resource, to which a plurality of the hybrid ARQ indicator channels are mapped, with code-multiplexed.”
Claim 17 is directed to a method for performing the function recited in claim
8. See supra Section VIII.B, Claim 8. Thus, claim 17 is obvious over R1-062771 in
view of R1-070734 for the same reasons as claim 8.
U.S. Patent 8,064,919 Petition for Inter Partes Review
37
C. Claims 9 and 18 are Obvious over R1-062771 in View of R1-063326
As demonstrated by the following detailed analysis as well as the declaration
of Paul Min, Ph.D. (Ex. 1003), claims 9 and 18 of the ’919 patent are rendered
obvious by R1-062771 in view of R1-063326.
R1-062771 does not explicitly discuss modifying the mapping scheme based
on the cell. However, R1-063326 specifically discuss varying the mapping scheme
between cells by performing “FDM with cell-specific frequency mapping for
multiple UEs” to beneficially provide interference randomization. (Ex. 1006, pp.
1–2). As explained below, R1-062771 in combination with R1-063326’s cell-
specific mapping renders obvious claims 9 and 18 of the ’919 patent.
Claim 9: “The mobile station apparatus according to claim 1, wherein the index of the resource block is associated with the resource depending on a cell”
R1-063326 explains that “the index of the resource block is associated with
the resource depending on a cell.” (Ex. 1003, ¶ 79). Specifically, R1-063326
explains an alternative approach to a pure FDM scheme: a “FDM with cell-specific
frequency mapping for multiple UEs.” (Ex. 1006, pp. 1–2). R1-063326’s FDM
with cell-specific frequency mapping scheme would vary the resource block-to-
resource association based on the cell. (Ex. 1006, pp. 1–2). The basic FDM
scheme, without R1-063326’s FDM with cell-specific frequency mapping, would
U.S. Patent 8,064,919 Petition for Inter Partes Review
38
result in an identical mapping of the ACK/NACK response resource to the mobile
station (and hence the mobile station’s resource block) for each cell. (Ex. 1006, p.
2; Ex. 1003, ¶ 79). But, R1-063326’s FDM with cell-specific frequency mapping
would vary the mapping of the ACK/NACK response resource to the associated
mobile station (and hence the mobile station’s resource block) on a cell-by-cell
basis. (Ex. 1003, ¶ 79). As R1-063326 explains, cell-specific frequency mapping
provides “interference randomization,” which improves the mobile station’s ability
to successfully receive DL ACK/NACK signals. (Ex. 1006, p. 2; Ex. 1003, ¶ 79).
It would have been obvious to a person of ordinary skill in the art to modify
R1-062771’s FDM scheme to incorporate R1-063326’s FDM with cell-specific
frequency mapping to provide “interference randomization,” which improves the
quality of the communication network by improving the mobile station’s ability to
successfully receive DL ACK/NACK signals. (Ex. 1003, ¶ 80). Both R1-062771
and R1-063326 discuss multiplexing techniques for multiple DL ACK/NACK
signals and, thus, are directed to the same field of endeavor and, in fact, originated
from the same series of 3GPP standards-setting meetings. (Ex. 1003, ¶ 80). The
methods and techniques discussed in R1-062771 and R1-063326 were well
understood by persons of ordinary skill in the art and, therefore, could be combined
to yield predictable results. (Ex. 1003, ¶ 80). Accordingly, modifying R1-062771’s
FDM multiplexing scheme with the teachings of R1-063326 is the “mere
U.S. Patent 8,064,919 Petition for Inter Partes Review
39
application of a known technique to a piece of prior art ready for the
improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007).
Additionally, by explicitly reciting the benefit of providing interference
randomization, R1-063326 provides a specific teaching, suggestion, or motivation
for the modification of R1-062771’s FDM scheme with the teachings of R1-
063326. (Ex. 1003, ¶ 80). For all the same reasons, a person of ordinary skill in the
art would have also had a reasonable expectation of success in combining the
references.
Thus, claim 4 is obvious over the combination of R1-062771 and R1-
063326.
Claim 18: “The method for determining a response signal resource according to claim 10, wherein the index of the resource block is associated with the resource depending on a cell.”
Claim 18 is directed to a method for performing the function recited in claim
9. See supra Section VIII.C, Claim 9. Thus, claim 18 is obvious over R1-062771 in
view of R1-063326 for the same reasons as claim 9.
D. Claims 6, 8, 15, and 17 are Obvious over R1-062771 in View of R1-070734 and R1-071137
As demonstrated by the following detailed analysis as well as the declaration
of Paul Min, Ph.D. (Ex. 1003), claims 6, 8, 15, and 17 of the ’919 patent are
rendered obvious by R1-062771 in view of R1-070734 and R1-071137.
U.S. Patent 8,064,919 Petition for Inter Partes Review
40
To the extent the Board determines that the ACK/NACK channels of R1-
062771 are not hybrid ARQ indicator channels, R1-071137 explicitly discusses the
use of a “HARQ Acknowledgement Indicator Channel” to carry ACK/NACK
indicators. (Ex. 1007, p. 1). As discussed below, R1-062771 in view of R1-070734
and R1-071137’s explicit hybrid ARQ indicator channels renders obvious claims 6,
8, 15, and 17 of the ’919 patent.
Claim 6: “The mobile station apparatus according to claim 1, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and the response signal is mapped to the resource to which the hybrid ARQ indicator channel is mapped.”
To the extent the Board determines that the ACK/NACK channels of R1-
062771 are not hybrid ARQ indicator channels, R1-071137 explicitly discusses the
use of a “HARQ Acknowledgement Indicator Channel” to carry ACK/NACK
indicators. (Ex. 1007, p. 1). R1-071137 teaches that “The HARQ
acknowledgement indicators are transmitted on a new downlink physical channel
termed E-DCH HARQ Acknowledgement Indicator Channel (E-HICH) ….” (Ex.
1007, p. 1). R1-071137 further teaches that “Multiple users’ ACK/NACK
indicators are code-division-multiplexed on E-HICH.” (Ex. 1007, p. 1). R1-071137
is an “enhanced” version of HICH because it allows for the inclusion of other
control information (transmit power control (TPC) and synchronization shift (SS)
data). (Ex. 1007, p. 1).
U.S. Patent 8,064,919 Petition for Inter Partes Review
41
It would have been obvious to a person of ordinary skill in the art to modify
the combination of R1-062771 and R1-070734 to incorporate R1-071137’s E-
HICH system to allow for inclusion of additional control information in the DL
control channel, which improves the quality of the communication network by
improving the efficiency of the DL control channel. (Ex. 1003, ¶ 86). All three
references R1-062771, R1-071734, and R1-071137 discuss multiplexing
techniques for multiple DL ACK/NACK signals and, thus, are directed to the same
field of endeavor and, in fact, originated from the same series of 3GPP standards-
setting meetings. (Ex. 1003, ¶ 86). The methods and techniques discussed in R1-
062771, R1-0671734, and R1-071337 were well understood by persons of ordinary
skill in the art and, therefore, could be combined to yield predictable results. (Ex.
1003, ¶ 86). As discussed above, the combination of R1-062771 and R1-070734
teaches a mobile station with code multiplexed ACK/NACK response signals. See
supra Section VIII. B, Claim 7. Accordingly, modifying R1-062771 and R1-
070734’s CDM multiplexed system with the teachings of R1-071137 is the “mere
application of a known technique to a piece of prior art ready for the
improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007).
Additionally, by explicitly reciting the benefit of additional control data in the E-
HICH DL channel, R1-071137 provides a specific teaching, suggestion, or
motivation for the modification of the combined R1-062771 and R1-070734
U.S. Patent 8,064,919 Petition for Inter Partes Review
42
system with the teachings of R1-071137. (Ex. 1003, ¶ 86). For all the same
reasons, a person of ordinary skill in the art would have also had a reasonable
expectation of success in combining the references.
Thus, claim 6 is obvious over the combination of R1-062771, R1-070734,
and R1-071137.
Claim 8: “The mobile station apparatus according to claim 1, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and a plurality of the response signals are mapped to the resource, to which a plurality of the hybrid ARQ indicator channels are mapped, with code-multiplexed.”
As discussed above (see supra Section VIII.B, claim 8), the apparatus of R1-
062771, as modified in view of R1-070734, maps a plurality of the response
signals to the resource, to which a plurality of the ACK/NACK channels are
mapped, with code-multiplexing. As discussed above (see supra Section VIII.C,
claim 6), the combined system of R1-062771 and R1-070734, as modified in view
of R1-071137, teaches that the enhanced hybrid ARQ indicator channels are
mapped, with code-multiplexing. Accordingly, the combined system of R1-
062771, R1-070734, and R1-071137 teach that “the response signal is carried on a
hybrid ARQ indicator channel (HICH) in the base station, and a plurality of the
response signals are mapped to the resource, to which a plurality of the hybrid
ARQ indicator channels are mapped, with code-multiplexed”:
U.S. Patent 8,064,919 Petition for Inter Partes Review
43
(Ex. 1004, Figure 1, annotated and modified in view of R1-070734). Thus, claim 8
is obvious over the combination of R1-062771, R1-070734, R1-071137.
Claim 15: “The method for determining a response signal resource according to claim 10, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and the response signal is mapped to the resource to which the hybrid ARQ indicator channel is mapped.”
Claim 15 is directed to a method for performing the function recited in claim
6. See supra Section VIII.D, Claim 6. Thus, claim 15 is obvious over R1-062771 in
view of R1-070734 and R1-071137 for the same reasons as claim 6.
Modified In View Of R1-070734
Plurality Of CDM-Based Response Signals
Plurality Of Enhanced Hybrid ARQ Indicator
U.S. Patent 8,064,919 Petition for Inter Partes Review
44
Claim 17: “The method for determining a response signal resource according to claim 10, wherein the response signal is carried on a hybrid ARQ indicator channel (HICH) in the base station, and a plurality of the response signals are mapped to the resource, to which a plurality of the hybrid ARQ indicator channels are mapped, with code-multiplexed.”
Claim 17 is directed to a method for performing the function recited in claim
8. See supra Section VIII.D, Claim 8. Thus, claim 17 is obvious over R1-062771 in
view of R1-070734 and R1-071137 for the same reasons as claim 8.
IX. CONCLUSION
Substantial, new, and noncumulative technical teachings have been
presented for each of claims 1–18 of the ’919 patent, which claims are rendered
anticipated or obvious for the reasons set forth above. There is a reasonable
likelihood that Petitioner will prevail as to each of these claims. Therefore, inter
partes review of claims 1–18 should be instituted.
Respectfully submitted,
BlackBerry Corp., Petitioner,
By: /Robert C. Mattson /
Robert C. Mattson Reg. No. 42,850
OBLON, McCLELLAND,MAIER &, NEUSTADT, L.L.P.
Customer Number
22850 Tel: (703) 413-3000 Fax: (703) 413 -2220 (OSMMN 07/09)
U.S. Patent 8,064,919 Petition for Inter Partes Review
45
Appendix – List of Exhibits
Exhibit No. Description 1001 U.S. Patent No. 8,064,919 to Fukuoka et al. 1002 Prosecution History of U.S. Patent No. 6,694,034 to Fukuoka et al. 1003 Declaration of Paul Min, Ph.D. 1004 NEC Group, “Downlink ACK/NACK Mapping for E-UTRA,” TSG-
RAN WG1 Meeting #46bis, Seoul, Korea, October 9–13, 2006 (R1-062771) (“R1-062771”)
1005 Texas Instruments, “ACK/NAK Channel Transmission in E-UTRA Downlink,” 3GPP TSG RAN WG1 Meeting #48, Saint Louis, USA, February 12–16, 2007 (R1-070734) (“R1-070734”)
1006 NTT DoCoMo, Fujitsu, Mitsubishi Electric, NEC, Sharp, Toshiba Corporation, “ACK/NACK Signal Structure in E-UTRA Downlink,” 3GPP TSG RAN WG1 Meeting #47, Riga, Latvia, November 6–10, 2006 (R1-063326) (“R1-063326”)
1007 CATT, TD-TECH, “LCR TDD: Structure and Coding for E-HICH,” 3GPP TSG RAN WG1 Meeting #48, Saint Louis, USA, February 12–16, 2007 (R1-071137) (“R1-071137”)
1008 Internet Achieve capture of meeting #46 documents uploaded onto www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_46bis/Docs/
1009 Internet Achieve capture of meeting #47 documents uploaded onto www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_47/Docs/
1010 FTP of meeting #48 documents uploaded onto http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_48/Docs/
1011 Declaration of Richard Gitlin, Sc.d, in Support of Plaintiffs’ Opening Claim Construction Brief, PanOptis v. BlackBerry, 2:16-cv-0062- JRG-RSP, D.I. 88-6 (E.D. Tex. Dec. 7, 2016)
U.S. Patent 8,064,919 Petition for Inter Partes Review
CERTIFICATE OF WORD COUNT
Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
document, excluding the portions exempted under 37 C.F.R. § 42.24(a)(1),
contains 8,014 words, including the words added in annotating the figures, which
is under the limit of 14,000 words set by 37 C.F.R. § 42.24(a)(1)(i).
Dated: January 23, 2017 By: /Robert C. Mattson/ Robert C. Mattson Registration No. 42,850
U.S. Patent 8,064,919 Petition for Inter Partes Review
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
42.105(b) on Patent Owner by UPS overnight delivery of a copy of this Petition for
Inter Partes Review and supporting materials at the correspondence address of
record for the ’919 patent:
NIXON & VANDERHYE, PC 901 North Glebe Road, 11th Floor
Arlington, VA 22203
Eric M. Albritton Shawn A. Latchford Albritton Law Firm 222 North Fredonia
P O Box 2649 - 75606 Longview, TX 75601
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Respectfully submitted, Dated: January 23, 2017 /Robert C. Mattson/ Robert. C. Mattson Reg. No. 42,850