PTAB

IPR2016-01228

Apple Inc v. Evolved Wireless LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data Transmission Method and User Equipment for the Same
  • Brief Description: The ’236 patent discloses a data transmission method for user equipment (UE) in a wireless communication system. The method addresses issues that can arise during a random access procedure, specifically concerning how and when a UE transmits uplink data (referred to as "message 3") after receiving an uplink (UL) grant signal from a base station.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-4, 6-10, and 12-13 over Kitazoe, AAPA, and 3GPP

  • Prior Art Relied Upon: Kitazoe (Patent 8,180,058), Applicant Admitted Prior Art (AAPA) from the ’236 patent specification, and 3GPP TS-36.321 (a March 2008 technical specification for the LTE standard).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art collectively discloses every limitation of the challenged claims. Kitazoe taught a random access procedure in an LTE system where a UE transmits an unencrypted "message 3" in response to a random access response message and later transmits an encrypted "normal scheduled transmission" (new data) in response to a contention resolution message. Both responses from the base station could contain UL grants. The AAPA, taken from the ’236 patent’s “Discussion of the Related Art,” taught the standard LTE practice of storing data for message 3 in a "Msg3 buffer" and transmitting it if a UL grant is received while data is in the buffer. The 3GPP TS-36.321 specification provided the standard architectural context, describing how a Hybrid Automatic Repeat Request (HARQ) entity within the UE manages transmissions, processes UL grants, and acquires new data from a "multiplexing and assembly entity."
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to ensure interoperability and compliance with industry standards. Petitioner asserted that because Kitazoe, the AAPA, and the 3GPP specification all describe systems implementing the LTE protocol, a POSITA would have been motivated to modify the system in Kitazoe to conform to the "current LTE system standard" as described in the AAPA and standardized in 3GPP. This would involve using a Msg3 buffer and a HARQ entity to manage message processing as taught by the standard.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involves applying standard LTE features (from AAPA and 3GPP) to an LTE-based system (Kitazoe). The common technological foundation would make the integration predictable and straightforward.

Ground 2: Obviousness of Claim 5 over Kitazoe, AAPA, and 3GPP in view of Kitazoe-II

  • Prior Art Relied Upon: Kitazoe (Patent 8,180,058), AAPA (from the ’236 patent), 3GPP TS-36.321, and Kitazoe-II (Application # 2009/0163211).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 and added Kitazoe-II to address the specific limitations of claim 5. Claim 5 requires that the data stored in the Msg3 buffer includes information about a buffer status report (BSR) if the random access procedure was initiated for the BSR. Petitioner argued that the base combination established the use of a Msg3 buffer for message 3 data. Kitazoe-II expressly taught that a UE may send a BSR in "Message 3" during a random access procedure. Therefore, combining Kitazoe-II’s teaching with the primary combination would result in storing BSR data in the Msg3 buffer for transmission.
    • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to incorporate the teachings of Kitazoe-II into the base combination to improve the efficiency of the random access procedure. Kitazoe-II explained that it is desirable to efficiently send additional information, such as a BSR, during the random access process. Implementing this known technique would be a logical step for a POSITA seeking to enhance system performance in an LTE network.
    • Expectation of Success (for §103 grounds): Success would have been predictable, as Kitazoe-II also described its techniques in the context of an LTE wireless network. The modification involved adding a known type of information (a BSR) into an existing message structure (message 3) within the same technological framework, presenting no significant technical hurdles.

4. Key Claim Construction Positions

  • "if there is data stored in the Msg3 buffer...": Petitioner argued this term from independent claim 1 should be given its plain and ordinary meaning under the broadest reasonable interpretation standard. Specifically, the use of "if" means the claimed action (transmitting data from the buffer) occurs when the condition is met, but does not preclude it from occurring at other times, consistent with the claim’s open-ended "comprising" preamble. Petitioner contended that this construction should not be improperly narrowed to the specification's more restrictive "only when" language, which describes a specific embodiment but does not define the full scope of the claim.
  • Means-Plus-Function Terms: For apparatus claim 7, Petitioner noted that terms like "reception module," "transmission module," and "HARQ entity" are presumptively not means-plus-function limitations under 35 U.S.C. §112, paragraph 6. While not challenging this presumption for the IPR, Petitioner identified corresponding structures in the ’236 patent specification that a Patent Owner might allege perform the claimed functions.

5. Arguments Regarding Discretionary Denial

  • Redundancy: Petitioner argued that the grounds presented in the petition were not redundant with those in a second, contemporaneously filed petition. Petitioner asserted that it had made a sufficient threshold showing on each ground and that the use of different references was "rational, narrowly targeted, and not burdensome," warranting consideration of all grounds on their merits.

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-10 and 12-13 of the ’236 patent as unpatentable.