Ericsson Inc v. Intellectual Ventures II LLC

1. Case Identification

• Case #: IPR2018-01666
• Patent #: 9,532,330
• Filed: September 6, 2018
• Petitioner(s): Ericsson Inc. and Telefonaktiebolaget LM Ericsson
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 1-3, 7-8, 18-20, and 24-25

2. Patent Overview

• Title: Paging in a Wireless Network
• Brief Description: The ’330 patent discloses systems and methods for paging a user equipment (UE) in a wireless network. The technology involves a network device sending a first signal to indicate a page and a second signal containing the paging message, with the signals transmitted on a shared control channel (SCCH) and a shared channel (SCH).

3. Grounds for Unpatentability

Ground 1: Obviousness over CATT and TR25.813v0.6.0 - Claims 18 and 20 are obvious over CATT in view of TR25.813v0.6.0.

• Prior Art Relied Upon: CATT (a 3GPP contribution R2-060988) and TR25.813v0.6.0 (a 3GPP Technical Report).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that CATT, a proposal for Long-Term Evolution (LTE) networks, taught the core method of claim 18. Specifically, CATT disclosed an eNodeB (a network device) that, upon receiving a paging message from a core network access gateway (aGW), sends a signal on a downlink shared control channel (DSCCH). This signal includes both a "paging indicator" to page the UE and an indication of resources on a downlink physical shared channel (DPSCH) where the actual paging message can be found. Petitioner asserted that the signal's use of a Paging Indicator ID (PI-ID) met the limitation of being derived from a radio network temporary identifier (RNTI).
  • Motivation to Combine: CATT was a 3GPP contribution that explicitly proposed changes to technical report "TR25.813." Petitioner contended a person of ordinary skill in the art (POSITA) would naturally consult a contemporaneous version, TR25.813v0.6.0, to understand the context and implementation details of the system CATT sought to modify, such as the architecture showing the aGW as part of the core network communicating with the eNodeB.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the CATT proposal with the foundational TR25.813v0.6.0 report it references was a predictable step in system design, merely using the report to supply known architectural details for CATT's proposed paging mechanism.

Ground 2: Obviousness over CATT, TR25.813v0.6.0, and Vayanos - Claims 1, 3, 8, and 25 are obvious over CATT, TR25.813v0.6.0, and Vayanos.

• Prior Art Relied Upon: CATT, TR25.813v0.6.0, and Vayanos (Application # 2006/0019641).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground extended the arguments from Ground 1 to cover the apparatus claims (e.g., claim 1). While CATT and TR25.813v0.6.0 provided the overall paging method, Petitioner used Vayanos to supply the conventional hardware elements of a base station. Vayanos taught that a base station includes "circuitry" (e.g., an encoder) to receive data and a "processor" (e.g., a controller) to direct operations, thereby satisfying the hardware limitations of claim 1. For claims 8 and 25, Vayanos taught determining the timing of a paging occasion based on the UE's International Mobile Subscriber Identity (IMSI), meeting the limitation that the signal is sent in a time interval derived from an IMSI.
  • Motivation to Combine: Petitioner argued that a POSITA implementing the paging system of CATT would be motivated to use the conventional base station hardware described in Vayanos as a matter of standard engineering practice. Further, since CATT mentioned "paging occasions" without specifying how they are determined, a POSITA would combine Vayanos's IMSI-based method to efficiently distribute paging opportunities, reduce collisions, and complete the system design.
  • Expectation of Success: The combination was argued to be predictable, as it involved implementing a proposed method (CATT) using well-known hardware and established techniques for managing paging timing (Vayanos).

Ground 7: Obviousness over Ericsson References - Claims 18 and 20 are obvious over Ericsson-092, Ericsson-093, TR25.813v0.3.0, and TS25.212.

• Prior Art Relied Upon: Ericsson-092 (3GPP R1-060092), Ericsson-093 (3GPP R1-060093), TR25.813v0.3.0 (a 3GPP Technical Report), and TS25.212 (a 3GPP Technical Specification).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative invalidity theory based on an entirely different set of 3GPP documents. Ericsson-092 taught an efficient paging method where the shared control channel itself serves as the paging indicator, eliminating the need for a separate indicator channel. A UE recognizes a page by detecting its own identity (or a group identity) on the control channel. TR25.813v0.3.0 provided the network architecture, showing the paging message originates from an aGW. Finally, TS25.212 disclosed a specific method for deriving the signal from an RNTI by masking a Cyclic Redundancy Check (CRC) value with the UE's identity (an H-RNTI).
  • Motivation to Combine: The references were presented as a cohesive set of interrelated 3GPP documents. Ericsson-092 explicitly recommended incorporating the text proposal from its companion document, Ericsson-093. Furthermore, Ericsson-092 described its control channel as "similar to the HS-SCCH," which Petitioner argued would directly motivate a POSITA to consult the relevant standard, TS25.212, for implementation details on HS-SCCH encoding, including the CRC masking technique.
  • Expectation of Success: A POSITA would have expected success because all references pertained to the same evolving LTE standard. Combining them involved using companion documents and following explicit cross-references to implement a complete and efficient network-initiated paging system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations with Kim (Application # 2004/0142706) to teach including an IMSI in the paging message from the core network, and combinations with CATT-990 (a 3GPP contribution) or Rudolf (Application # 2005/0105487) to teach that the control channel carries both uplink and downlink resource allocations.

4. Key Claim Construction Positions

• "network device": Petitioner argued this term is not defined in the specification of the ’330 patent. Based on the patent’s disclosure, which describes NodeBs (base stations) performing the claimed functions of receiving paging messages from a core network and broadcasting signals to UEs, Petitioner proposed that "network device" should be construed as a "device in a network," such as a base station. This construction was central to mapping prior art references disclosing eNodeBs and NodeBs to the challenged claims.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3, 7-8, 18-20, and 24-25 of the ’330 patent as unpatentable.