PTAB

IPR2016-01345

Samsung Electronics Co Ltd 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 Wireless Communication System
  • Brief Description: The ’236 patent relates to methods and user equipment for managing data transmission in an LTE wireless communication system. The technology specifically addresses the conditions under which "message 3" data should be transmitted from a user device to a base station after the device receives an uplink grant signal as part of a random access procedure.

3. Grounds for Unpatentability

Ground 1: Obviousness of Method Claims - Claims 1-6 are obvious over the 3GPP 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 321 reference, a detailed specification for the LTE Medium Access Control (MAC) layer, disclosed all functional steps of independent method claim 1. The reference taught that a user equipment (UE) transmits "message 3" data if it has data in its Msg3 buffer and receives an uplink grant in a random access response message. Petitioner asserted that the 321 reference also taught the alternative step of transmitting new data if there is no data in the Msg3 buffer or if the received grant is not part of a random access response. Petitioner further argued that even if the claims were construed more narrowly to require transmission only if the specified conditions are met, the claims would still be obvious. The petition contended that while the 321 reference was potentially ambiguous on this "only if" condition, the higher-level 300 reference unambiguously taught that message 3 transmission depends on a grant conveyed in a random access response, which would have resolved any ambiguity for a skilled artisan.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the 300 and 321 references because they were complementary, contemporaneous parts of the same LTE standard, designed to be used together. The 300 reference provided the high-level system architecture and procedure flow for the random access procedure, while the 321 reference provided the specific MAC layer implementation details. A POSITA would need to consult both specifications to understand and implement the complete procedure.
    • Expectation of Success: A POSITA would have a high expectation of success in using the clear, high-level procedure described in the 300 reference to resolve any potential ambiguity in the more detailed 321 reference, as both documents describe the same standardized system.
    • Key Aspects: The obviousness argument was bolstered by evidence of simultaneous development, where Petitioner showed that two major companies (LG and Qualcomm) independently identified the potential ambiguity in the 321 reference and submitted virtually identical proposals to correct it within three hours of each other, shortly after the reference was published. This was presented as strong evidence that resolving the ambiguity was an obvious fix.

Ground 2: Obviousness of Apparatus Claims - Claims 7-10 and 12-13 are obvious over the 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: Petitioner asserted that this ground targets the apparatus claims, which recite structural elements like a "reception module" and a "transmission module." The argument was that while the 300 and 321 references taught all the functions performed by these modules (as detailed in Ground 1), the Ericsson patent supplied the explicit disclosure for the corresponding physical structures. Ericsson disclosed a conventional UE transceiver comprising a "receiver" and a "transmit part" for performing the exact functions of receiving uplink grants and transmitting data within the same LTE random access context described by the 3GPP standards.
    • Motivation to Combine: A POSITA, having learned the required functions from the 3GPP standards, would be motivated to consult a reference like Ericsson to find a known, conventional hardware implementation for those functions. The Ericsson patent, from a leading cellular equipment manufacturer and concerning the same LTE procedure, represented a predictable and obvious source for these routine structural details. The combination amounted to implementing the standard's functional requirements using well-known hardware.
    • Expectation of Success: A POSITA would have a high expectation of success in implementing the functions described in the 3GPP standard using the conventional hardware components disclosed in Ericsson, as this involves applying known techniques to known devices to yield predictable results.

4. Key Claim Construction Positions

  • Petitioner argued that the term "if" in the claim phrase "...transmitting the data stored in the Msg3 buffer... if there is data stored... and the specific message is the random access response message" should be given its plain and ordinary meaning as a sufficient condition.
  • The petition anticipated that the Patent Owner would argue for a narrower construction where "if" means "only if" (a necessary and sufficient condition). Petitioner argued this would be improper because the applicant chose the broader term "if" in the claims, and any "only if" language in the specification was limited to describing a preferred embodiment, not the invention as a whole. This construction is central to the petition's primary argument that the prior art directly teaches the claimed invention.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-10 and 12-13 of the ’236 patent as unpatentable under 35 U.S.C. §103.