PTAB

IPR2016-01229

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 a random access procedure between user equipment (UE) and a base station in a wireless communication system. The invention focuses on how a UE handles the transmission of uplink data (Message 3) based on whether an uplink (UL) grant is received in a random access response message versus another message type, such as a contention resolution message.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kitazoe, Niu, and 3GPP TS-36.321

Claims 1-4, 6-10, and 12-13 are obvious over Kitazoe in view of Niu and 3GPP TS-36.321.

  • Prior Art Relied Upon: Kitazoe (Patent 8,180,058), Niu (Patent 6,161,160), and 3GPP TS-36.321 (a March 2008 technical specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught every limitation of the challenged claims. Kitazoe taught a random access procedure in an LTE system where the UE selectively transmits an unencrypted "message 3" in response to a UL grant received in a random access response message, and transmits an encrypted "normal scheduled transmission" (new data) in response to a UL grant in a later contention resolution message. To improve efficiency, Niu taught using a "transmit buffer" and a synchronization circuit to asynchronously determine the presence of stored data in response to an event, such as receiving a grant. The 3GPP TS-36.321 standard, which a person of ordinary skill in the art (POSITA) would use to implement an LTE system like Kitazoe's, taught standard components and processes, including the use of a Hybrid Automatic Repeat Request (HARQ) entity, HARQ processes and buffers, and a multiplexing and assembly entity to manage data transmissions. The combination allegedly disclosed the core method of claim 1: upon receiving a UL grant, determining if data is in a Msg3 buffer, and transmitting that data only if the grant was in a random access response message, while transmitting new data if the grant was in a different message.
    • Motivation to Combine: A POSITA would combine Kitazoe with Niu to implement a known and efficient method for buffering data and triggering its transmission upon an event, enabling a "faster, more reliable design." A POSITA would have been motivated to modify Kitazoe’s LTE system to conform to the official 3GPP TS-36.321 standard to ensure interoperability with other LTE components and networks.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because all three references operate within the same technical field of LTE wireless communications. Combining a known buffering technique (Niu) and a standard protocol implementation (3GPP) with a specific random access method (Kitazoe) would have yielded predictable results.

Ground 2: Obviousness over Kitazoe, Niu, and 3GPP TS-36.321, in further view of Kitazoe-II

Claim 5 is obvious over the combination of Ground 1 and Kitazoe-II.

  • Prior Art Relied Upon: Kitazoe (Patent 8,180,058), Niu (Patent 6,161,160), 3GPP TS-36.321 (a March 2008 technical specification), and Kitazoe-II (Application # 2009/0163211).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to specifically address claim 5, which depends from claim 4 and adds the limitation that the data stored in the Msg3 buffer includes information about a buffer status report (BSR). While the primary combination taught storing data in a Msg3 buffer, Petitioner asserted that Kitazoe-II explicitly taught including a BSR within "Message 3" during a random access procedure.
    • Motivation to Combine: Kitazoe-II explained that including a BSR in Message 3 was desirable to "efficiently send... information during random access" in an LTE network. A POSITA implementing the system of the primary combination would have been motivated to incorporate the teachings of Kitazoe-II to increase the data efficiency of the random access procedure and conform the UE to the evolving LTE system standard, which all references address.
    • Expectation of Success: Success would have been predictable as Kitazoe-II described techniques for the same LTE protocol used in the primary combination, making the proposed modification a straightforward implementation of a known technique for a known purpose.

4. Key Claim Construction Positions

  • "if there is data stored..." (Claim 1): Petitioner argued this term should be given its plain and ordinary meaning, indicating that the claimed transmission of data from the Msg3 buffer occurs when the specified conditions are met, but does not preclude the transmission from occurring at other times. Petitioner contended that the Patent Owner might argue for a narrower construction of "if" to mean "only when," based on exemplary language in the patent's specification. Petitioner argued against this, stating that importing such a limitation from the specification is improper, especially under the broadest reasonable interpretation standard, and noted the applicant's choice to use the broader term "if" in the claims while using the narrower "only when" in the specification demonstrated a clear intent for broader claim scope.
  • "reception module," "transmission module," "HARQ entity" (Claim 7): Petitioner argued that these terms, which do not use the word "means," are presumptively not means-plus-function limitations under 35 U.S.C. §112, paragraph 6. For the purposes of the IPR, Petitioner stated these terms should be given their plain meaning as understood under the broadest reasonable interpretation standard, rather than being limited to the specific structures disclosed in the specification.

5. Relief Requested

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