PTAB

IPR2017-01473

Samsung Electronics Co., Ltd. v. Huawei Technologies Co., Ltd.

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1. Case Identification

2. Patent Overview

  • Title: Mobile Station Device and Processing Method Thereof
  • Brief Description: The ’583 patent describes a method and device for managing uplink timing synchronization in wireless communication networks like 3G/4G LTE. The core inventive concept asserted is a mobile station’s ability to selectively ignore timing alignment information received from a base station if the mobile station is already in a "synchronous status," while processing the information if it is in an "asynchronous status."

3. Grounds for Unpatentability

Ground 1: Obviousness over 3GPP Standards - Claims 3, 4, and 7 are obvious over TS 36.300, alone or in combination with Toskala and Dalsgaard.

  • Prior Art Relied Upon: TS 36.300 (3GPP Technical Specification V8.1.0), Toskala (Patent 6,657,988), and Dalsgaard (WO 2007/110483).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that TS 36.300, a foundational 3GPP E-UTRAN standard, discloses all basic elements of the challenged claims, including the contention-based random access procedure, the use of timing alignment information, and the maintenance of an uplink "synchronization status" (i.e., "synchronized" or "non-synchronized"). TS 36.300 also teaches that timing commands are applied on a "per need basis" and that synchronization status can be managed by a "UE-specific timer," as required by dependent claim 4. Petitioner contended that it would have been obvious to a person of ordinary skill in the art (POSA) to use the "synchronized" status taught by TS 36.300 as the condition for ignoring a redundant timing command. To the extent this is not inherent, Toskala teaches using a counter to delay timing adjustments until a certain threshold is met, effectively ignoring initial commands while in a synchronous state. Dalsgaard similarly teaches using a timer to determine if a timing parameter is still valid; if not, it is ignored and a new one is requested.
    • Motivation to Combine: A POSA would combine these references because they all address the same technical problem of uplink timing synchronization within the same 3GPP framework. TS 36.300 provides the E-UTRAN standard, while Toskala (addressing the predecessor UMTS standard) and Dalsgaard (addressing E-UTRAN) provide specific, known methods for managing synchronization status and timing commands. The "per need basis" teaching in TS 36.300 would motivate a POSA to look to well-known 3GPP-related techniques like those in Toskala and Dalsgaard to implement that principle efficiently.
    • Expectation of Success: A POSA would have a high expectation of success, as combining these compatible 3GPP-centric solutions involved applying known principles for managing network resources and device power to a standard-defined procedure.

Ground 2: Obviousness over TS 36.300 and Sun - Claims 3, 4, and 7 are obvious over TS 36.300 in view of Sun.

  • Prior Art Relied Upon: TS 36.300 (3GPP Technical Specification V8.1.0) and Sun (Patent 7,286,841).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presents Sun as an alternative reference teaching the claimed "ignore" functionality. Petitioner asserted that Sun, which was not cited during prosecution, explicitly discloses a mobile station (UE) that maintains a synchronization status via a counter. If the counter has not "overflowed," the UE is considered synchronous and "just ignores the SS [Synchronization Shift] command." When the counter overflows, the UE enters an asynchronous state and re-establishes synchronization via a random access procedure. This directly teaches ignoring a timing command based on a synchronous status managed by a timer (counter), as claimed.
    • Motivation to Combine: A POSA would combine TS 36.300 and Sun because both relate to 3GPP systems. Sun explicitly states its teachings are applicable to "advanced wireless communication systems in 3GPP," which directly includes the E-UTRAN/LTE standard described in TS 36.300. A POSA seeking to implement the "per need basis" timing control of TS 36.300 would be motivated to use the explicit method taught in Sun.
    • Expectation of Success: Success would be expected because Sun provides a complete, working solution for the exact problem of when to apply or ignore synchronization commands within a 3GPP context, making its integration with the TS 36.300 standard straightforward.

Ground 3: Obviousness over TS 36.300 and R1-072197 - Claims 3, 4, and 7 are obvious over TS 36.300 in view of R1-072197.

  • Prior Art Relied Upon: TS 36.300 (3GPP Technical Specification V8.1.0) and R1-072197 (a 3GPP working group document).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relies on R1-072197, a 3GPP contribution from Texas Instruments that was not cited during prosecution. The document addresses the transmission of timing advance (TA) commands "only when needed" and discusses maintaining a "synchronization state of the UE." Critically, it describes a scenario where a UE, already in a synchronous state, receives an erroneous second TA command. In this situation, R1-072197 explicitly teaches that "[t]he UE can ignore the new TA command." Petitioner argued this is a direct and unambiguous teaching of the core claim limitation.
    • Motivation to Combine: A POSA would combine these references because R1-072197 is a 3GPP working group document created for the express purpose of defining the details of the E-UTRA UL operation, which is the exact subject matter of the TS 36.300 specification. A POSA implementing the high-level TS 36.300 standard would naturally look to such contemporaneous working group contributions for implementation details and solutions to known problems.
    • Expectation of Success: A POSA would have a very high expectation of success, as R1-072197 was created as a direct technical proposal for the system described in TS 36.300, ensuring their seamless compatibility.

4. Key Claim Construction Positions

  • "an uplink [a]synchronous status" (claims 3, 4, 7): Petitioner proposed this term be construed to mean "status indicating a state of [a]synchrony between a mobile station device and a base station device." This construction is central to all grounds, as Petitioner argued the prior art (specifically TS 36.300) explicitly discloses the maintenance of such a status. The existence of this status in the prior art, combined with its ordinary meaning, allegedly makes it obvious to use it as the condition for ignoring a redundant command.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inherent Obviousness of Ignoring Redundant Commands: A central theme of the petition is that the claimed invention amounts to nothing more than applying common sense and fundamental engineering principles to a known system. Petitioner argued that once a system (like that in TS 36.300) provides a "synchronized" status, it is an "instinctive addition" and "eminently straightforward and obvious" for a POSA to design the system to ignore unneeded resynchronization commands. This is framed as a basic efficiency measure to conserve network bandwidth and device processing power, concepts fundamental to mobile device engineering.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 3, 4, and 7 of Patent 8,885,583 as unpatentable under 35 U.S.C. §103.