PTAB

IPR2016-01500

APPLE INC. v. Cellular Communications Equipment LLC

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1. Case Identification

2. Patent Overview

  • Title: Implicit Redundancy Version Assignment for System Information
  • Brief Description: The ’022 patent discloses methods and apparatuses for implicitly assigning a sequence of Redundancy Versions (RVs) for transmitting System Information (SI) from a base station to a mobile device in an LTE wireless network. The patent’s allegedly inventive aspect is a specific mathematical equation used to calculate the known optimal RV sequence (0, 2, 3, 1) to improve data reception reliability.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 6 are anticipated under 35 U.S.C. §102 over the Nokia Contribution.

  • Prior Art Relied Upon: Nokia Contribution (3GPP TSG RAN WG1 Written Contribution R1-083717).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the Nokia Contribution, a technical document publicly available before the ’022 patent’s actual filing date, explicitly taught every element of claims 1 and 6. Nokia allegedly disclosed a method for implicit RV determination that starts at the beginning of a System Information window (SI-window), excludes specific non-eligible subframes (uplink, multicast, and subframe #5 in even-numbered radio frames), and ensures the RV sequence is continuous across adjacent radio frames. Critically, Petitioner argued that Nokia disclosed the precise mathematical equation recited in the challenged claims to calculate the RV sequence.
    • Key Aspects: This ground relied on the argument that the ’022 patent is not entitled to its provisional application’s filing date, making the Nokia Contribution, published in September 2008, valid prior art.

Ground 2: Claims 1 and 6 are obvious under 35 U.S.C. §103 over Wang in view of 3GPP TS 36.331.

  • Prior Art Relied Upon: Wang (Application # 2010/0189039) and 3GPP TS 36.331 V8.2.0 Release 8.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wang, which has an effective prior art date of January 2009, taught nearly all limitations of the challenged claims. Wang described a method of implicit RV assignment in an LTE system that uses the identical mathematical equation from the ’022 patent to generate the optimal RV sequence. Wang also taught excluding non-SI subframes (like SIB-1, multicast, and uplink subframes) from the RV assignment process. To the extent Wang did not explicitly teach "detecting the start of a system information message transmission window," Petitioner contended this step was a well-known prerequisite for any LTE-compliant system, as detailed in the 3GPP TS 36.331 standard.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Wang’s LTE-based system would combine its teachings with the 3GPP standard to ensure the system was interoperable and conformed to industry-wide LTE protocols. The 3GPP standard would have been a natural reference to supply routine implementation details, such as detecting the start of the SI-window.
    • Expectation of Success: The combination would have yielded a predictable result, as it involved incorporating a standard, required step (detecting the SI-window start) into an otherwise complete system (Wang) to ensure its proper functioning within the established LTE framework.

Ground 3: Claims 1 and 6 are obvious over Love in view of 3GPP TS 36.331.

  • Prior Art Relied Upon: Love (Patent 8,144,712) and 3GPP TS 36.331 V8.2.0 Release 8.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in the event the ’022 patent was granted its earlier provisional filing date. Love, which predates the provisional filing date, taught implicit RV signaling techniques for LTE systems. One technique ("Transmission Opportunity") involved mapping RVs only to valid transmission subframes, which a POSITA would understand inherently excludes non-transmission subframes like uplink and multicast subframes (as clarified by 3GPP). Another technique ("Subframe Number") used a modulo-based calculation to generate the optimal 0, 2, 3, 1 RV sequence based on subframe numbers.
    • Motivation to Combine: A POSITA would have been motivated to produce the known optimal RV sequence. It would have been obvious to apply the known modulo-based calculation method from Love's "Subframe Number Technique" to its "Transmission Opportunity Technique" to ensure the optimal sequence was mapped only to valid subframes. Petitioner argued the specific equation in the ’022 patent was merely a routine design choice, as the inputs (subframe index within the SI-window), the output (the 0, 2, 3, 1 sequence), and the calculation method (modulo arithmetic) were all well-known in the art.
    • Expectation of Success: Modifying Love’s technique to use a known calculation to achieve a known optimal result would have been a predictable and straightforward task for a POSITA.

4. Key Claim Construction Positions

  • "redundancy version signaling module..." (Claim 6): Petitioner contended this means-plus-function term, for the purposes of an IPR, should be given its broadest reasonable interpretation encompassing "software, hardware, firmware, or a combination thereof for performing the recited function." Petitioner argued that even if the term is construed as a means-plus-function limitation, the prior art disclosed corresponding structure in the form of processors and software configured to perform the claimed functions, rendering claim 6 obvious.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: A central contention of the petition was that the ’022 patent is not entitled to the September 22, 2008, filing date of its provisional application. Petitioner argued the provisional application failed the written description requirement of §112 because it disclosed a completely different mathematical equation for calculating the RV sequence than the one recited in the issued claims. Therefore, the patent's effective filing date was argued to be its non-provisional filing date of September 22, 2009, which makes the Nokia and Wang references available as prior art.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that its challenges were not cumulative or redundant to rejections made during prosecution. Specifically, Challenge #3, which relied on the Love reference that the Examiner had previously considered, was asserted to be distinct because it was based on a different combination of prior art (Love in view of 3GPP) and was supported by a new expert declaration (Dr. Haas) that was unavailable to the Examiner. This was presented to argue against discretionary denial under §325(d).

7. Relief Requested

  • Petitioner requested the Board institute an inter partes review of claims 1 and 6 of the ’022 patent and cancel those claims as unpatentable.