PTAB

IPR2016-00757

ZTE USA Inc v. Evolved Wireless LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Transmitting Uplink Data in a Mobile Communication System
  • Brief Description: The ’236 patent discloses methods and apparatuses for controlling the transmission of "Message 3" (Msg3) data in a Long Term Evolution (LTE) wireless communication system. The invention addresses conditions under which user equipment (UE) should transmit data from its Msg3 buffer upon receiving an uplink (UL) grant signal from a base station.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over 3GPP technical specifications.

  • Prior Art Relied Upon: 300 reference (3GPP TS 36.300 v8.4.0) and 321 reference (3GPP TS 36.321 v8.2.0).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the 300 and 321 references, which are parts of the same LTE standard, taught all limitations of claims 1-6. The 321 reference, a detailed Medium Access Control (MAC) protocol specification, disclosed the specific logical conditions for transmitting data from either the Msg3 buffer or a "multiplexing and assembly" entity based on receiving a UL grant. This included determining if data was in the Msg3 buffer and if the UL grant was received in a Random Access Response. The 300 reference, a higher-level system description, provided the overarching context for the random access procedure, confirming that the UL grant originates from the base station (eNodeB) and that the transmission occurs on an uplink channel (UL-SCH).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of the 300 and 321 references because they are complementary, cross-referenced parts of the same LTE standard. The 300 reference provided the high-level architecture and procedure flow, while the 321 reference provided the specific MAC layer implementation details. A POSITA would need to consult both to implement a functional random access procedure.
    • Expectation of Success: A POSITA would have a high expectation of success, as the references were designed by the 3GPP standards body to be used together to create a working LTE system.
    • Key Aspects: A central part of Petitioner's argument was that the 321 reference contained a potential ambiguity regarding whether Msg3 data could be transmitted in response to a UL grant received outside of a Random Access Response. Petitioner argued that a POSITA would have easily resolved this ambiguity by referring to the clearer, unambiguous procedure outlined in the 300 reference and other well-known documents, which taught that Msg3 transmission occurs only in response to a grant within a Random Access Response.

Ground 2: Claims 7-10 and 12-13 are obvious over 3GPP specifications in view of Ericsson.

  • Prior Art Relied Upon: 300 reference (3GPP TS 36.300 v8.4.0), 321 reference (3GPP TS 36.321 v8.2.0), and Ericsson (Patent 9,204,468).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that the apparatus claims were obvious for reasons similar to Ground 1, with the addition of Ericsson. Petitioner argued that the 300 and 321 references taught all the functional aspects of the claimed user equipment, including the roles of the reception module, transmission module, Hybrid Automatic Repeat Request (HARQ) entity, and Msg3 buffer. The Ericsson patent was introduced to teach the well-known physical structure corresponding to these functions. For example, Ericsson disclosed a transceiver with a "receiver 620" and a "transmit part 630" that perform the functions of the claimed reception and transmission modules.
    • Motivation to Combine: A POSITA, seeking to build a physical device compliant with the functional requirements of the 3GPP standards, would be motivated to consult a reference like Ericsson. Ericsson, a well-known manufacturer, provided a concrete hardware implementation for the very same LTE random access procedure described in the 3GPP specifications. The combination represented the routine pairing of a functional standard with a known structural implementation.
    • Expectation of Success: There would be a high expectation of success in combining the references, as it involved implementing the functions described in the LTE standard using conventional hardware components as disclosed in Ericsson.

4. Key Claim Construction Positions

  • Petitioner argued that the term "if" in the claim phrase "...transmitting the data... if there is data stored in the Msg3 buffer... and the specific message is the random access response message" should be given its plain and ordinary meaning as a sufficient condition.
  • Petitioner contended that this construction should not be narrowed to mean "only if" (a necessary condition), even though an embodiment in the patent used such restrictive language. Petitioner argued that adopting the broader "if" construction was proper, as the applicant chose that specific language. However, Petitioner also asserted that the claims were obvious even under the narrower "only if" construction, as a POSITA would have understood from the prior art that Msg3 transmission was, in fact, restricted to occurring only if the specified conditions were met.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner’s primary technical contention was that a temporary ambiguity in one version of the 321 reference was inconsequential and readily correctable. The ambiguity related to whether a UE could transmit Msg3 data after receiving a UL grant on a channel other than the Random Access Response.
  • Petitioner provided evidence that this was a well-understood procedure and that the ambiguity was quickly identified and corrected by at least two other companies (LG and Qualcomm) in near-simultaneous proposals to the 3GPP working group. This simultaneous development, Petitioner argued, demonstrated that resolving the ambiguity to restrict Msg3 transmission to the proper context was obvious to a POSITA.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 and 12-13 of Patent 7,881,236 as unpatentable under 35 U.S.C. §103.