PTAB

IPR2018-00816

Huawei Device Co Ltd v. Optis Cellular Technology LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Scheduling Resources in a Telecommunication System
  • Brief Description: The ’293 patent discloses a method for allocating uplink resources for a mobile terminal to transmit data to a base station in a telecommunications system. The purported invention is a process where, after an initial exchange of a scheduling request and buffer status report, the mobile terminal determines if a "scheduling request triggering event" occurs and, if so, transmits a second scheduling request to the base station.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 10-15, and 19-23 are obvious over Lohr in view of TS 25.309.

  • Prior Art Relied Upon: Lohr (Patent 8,576,784) and TS 25.309 (3GPP Technical Specification 25.309 V6.6.0 (2006-03)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Lohr and TS 25.309 taught every limitation of the challenged claims. Lohr was asserted to disclose the foundational framework of the independent claims: a mobile terminal sends a first scheduling request (SR) upon data arrival, receives a scheduling grant (SG) from the base station, and then transmits detailed "scheduling information" (i.e., buffer status information) in response. Petitioner contended that the only element missing from Lohr was the allegedly novel step of using a subsequent "triggering event" to send a second SR. This missing element, Petitioner argued, was explicitly taught by TS 25.309. TS 25.309, a standard for "Enhanced Uplink" technology, described specific "triggers" for sending updated scheduling information, including when "higher priority data arrives in buffer" or when a periodic timer expires. The combination thereby rendered the methods and systems of the challenged claims obvious.
    • Motivation to Combine (for §103 grounds): Petitioner presented three primary motivations for a person of ordinary skill in the art (POSITA) to combine the references. First, Lohr explicitly discussed improving "Enhanced Uplink" (HSUPA) and the "next major step" in 3G evolution, which is the exact technical field of the TS 25.309 standard. A POSITA seeking to implement or improve upon Lohr's system would have been directly motivated to consult the foundational TS 25.309 standard for established techniques like signaling triggers. Second, the combination represented the application of a known technique (the triggers in TS 25.309) to a known system (the scheduling procedure in Lohr) to solve a known problem (improving signaling efficiency). Third, it would have been obvious to try, as a POSITA would be choosing from a finite number of predictable solutions for managing uplink requests.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references. The combination involved integrating well-understood, standardized triggering mechanisms into a compatible scheduling framework to achieve the predictable result of more efficient and responsive uplink resource allocation without undue experimentation.

4. Key Claim Construction Positions

  • Petitioner adopted several claim constructions from a related district court litigation. The constructions were central to mapping the prior art to the claims.
  • "scheduling request triggering event" (claims 1, 12, 20): Construed as "a predefined condition that triggers a scheduling request." Petitioner argued this construction directly read on the "triggers" disclosed in TS 25.309, such as the arrival of higher-priority data, which is a predefined condition.
  • Means-Plus-Function Terms (claims 20-23): Petitioner adopted agreed-upon constructions for several means-plus-function terms, identifying the function recited in the claim and the corresponding structure in the ’293 patent's specification (e.g., a data processor executing specific software algorithms). Petitioner then argued that Lohr and TS 25.309 disclosed equivalent structures for performing the claimed functions.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the 3GPP standard TS 25.309 qualified as a printed publication and was therefore valid prior art under pre-AIA §102(b).
  • Petitioner provided expert testimony and evidence from the Internet Archive to argue that TS 25.309 was made publicly accessible on the 3GPP website and its public FTP server on April 6, 2006, more than one year before the ’293 patent's priority date of June 19, 2007. This public accessibility was argued to be sufficient to qualify the document as prior art available to a POSITA.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate.
  • The core reason provided was that the Examiner did not consider the asserted ground during prosecution. Specifically, the combination of Lohr and TS 25.309 was not previously before the Office, and the petition included a new expert declaration, presenting arguments and art that were not substantially the same as those previously considered.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 10-15, and 19-23 of Patent 8,437,293 as unpatentable.