PTAB

IPR2019-00222

Apple Inc v. Uniloc 2017 LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method for selecting a transport format combination in a communications network
  • Brief Description: The ’487 patent relates to a method within a Universal Mobile Telecommunications System (UMTS) radio network for selecting transport format combinations (TFCs). The purported invention is an optimized selection algorithm that guarantees a "minimum bit rate" for respective logical channels when mapping them to transport channels.

3. Grounds for Unpatentability

Ground 1: Obviousness over 3GPP Standards - Claims 1-6 are obvious over TS25.321 in view of R2-010182 and TS25.302.

  • Prior Art Relied Upon: TS25.321 (3GPP Technical Specification V3.6.0), R2-010182 (Mitsubishi Electric Telecom Change Request), and TS25.302 (3GPP Technical Specification V3.6.0).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these three contemporaneous 3GPP standards renders all challenged claims obvious. The base specification, TS25.321, discloses the fundamental UMTS network architecture claimed in the ’487 patent, including a Medium Access Control (MAC) layer that maps logical channels to transport channels and uses a TFC selection algorithm. However, this algorithm relies on an "absolute priority scheme." The change request, R2-010182, explicitly identifies the drawbacks of this scheme (e.g., potential starvation of low-priority channels) and proposes modifying the TS25.321 algorithm to solve them. Crucially, R2-010182 proposed adding new parameters, including a "MinGBr: Min Guarant[e]ed Bit rate," to the TFC selection process. Petitioner contended this MinGBr parameter directly teaches the "minimum bit rate criteria" limitation, which was the central feature added during prosecution to secure the patent. The combination also allegedly teaches the dependent claims: R2-010182 further proposed a "MaxBr: Max bit rate" parameter (claim 2) and specifies that the UE shall allocate resources by serving channels "in descending order of priority" (claim 3). The physical layer specification, TS25.302, was cited as providing necessary context and standard definitions for concepts like valid TFCs and Transmission Time Intervals (TTIs) that are essential for implementing the MAC layer protocol of TS25.321.
    • Motivation to Combine: A POSITA would combine TS25.321 and R2-010182 because R2-010182 is an explicit change request written to improve the specific TFC selection algorithm detailed in TS25.321. A POSITA would naturally consult TS25.302 because it is a complementary standard for the adjacent physical layer, is explicitly cross-referenced by TS25.321, and defines the essential attributes (e.g., transport formats, TFCs) that the MAC layer manipulates.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the references because R2-010182 presented a specific, engineered solution using well-understood parameters to solve a known and documented problem in the existing TS25.321 standard.

Ground 2: Obviousness over Peisa - Claims 1 and 2 are obvious over Peisa.

  • Prior Art Relied Upon: Peisa (Patent 6,850,540).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Peisa, which was cited but not fully considered during prosecution, independently renders claims 1 and 2 obvious. Peisa discloses packet scheduling algorithms for a UMTS network MAC layer that select TFCs from a permitted set. The core of Peisa's algorithm is a scoring process that explicitly uses a "Guaranteed Rate for each logical channel" as a key input parameter. Peisa's method ensures that if a TFC exists that "transmits at least the guaranteed rate for each flow, then that TFC is chosen." Petitioner argued this "at least the guaranteed rate" condition is a direct and unambiguous teaching of the claimed "minimum bit rate criteria." For dependent claim 2, Petitioner pointed to Peisa's disclosure that its algorithm also considers a "maximum allowed rate for any logical channel" to achieve fairness and optimal throughput, thereby teaching the second key limitation.
    • Motivation to Combine: Not applicable for this single-reference ground.
    • Expectation of Success: Not applicable for this single-reference ground.
    • Key Aspects: Petitioner emphasized that the arguments and portions of Peisa cited in the petition are new and distinct from those considered by the Examiner during original prosecution, who allegedly focused on a less relevant passage and relied on inherency rather than Peisa's express disclosures.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4-6 over Peisa in view of TS25.302, arguing TS25.302 provides standard definitions for physical layer concepts (e.g., Transmission Time Intervals and radio frames) relied upon by Peisa's scheduling algorithm.

4. Arguments Regarding Discretionary Denial

  • Petitioner implicitly argued against discretionary denial under §325(d) for the grounds based on Peisa. It contended that the specific arguments and portions of the Peisa reference presented in the petition were new and substantially different from those considered by the Examiner during the original prosecution. Petitioner argued the Examiner had focused on a less relevant section of Peisa, whereas the petition cited portions that expressly disclosed the purportedly novel features of the ’487 patent.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’487 patent as unpatentable under 35 U.S.C. §103.