PTAB

IPR2021-00908

Honeywell Intl Inc v. 3G Licensing SA

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method of Coding Channel Quality Information
  • Brief Description: The ’718 patent discloses a method for encoding Channel Quality Information (CQI) in cellular communications. The method converts a 5-bit CQI value into a more robust 20-bit codeword using a specific mathematical formula and a predefined 20x5 table of "basis sequences" to improve transmission accuracy and protect the most significant bits from error.

3. Grounds for Unpatentability

Ground 1: Obviousness over Philips46 - Claims 1, 2, 4, 5, and 15-23 are obvious over Philips46.

  • Prior Art Relied Upon: Philips46 (TDoc R1-02-0046, a 3GPP technical document submitted by Philips).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Philips46, a prior art proposal to the same 3GPP working group, discloses a nearly identical method for encoding a 5-bit CQI into a 20-bit codeword. Philips46 taught using the same mathematical formula and a basis sequence table that is identical for 98 out of 100 bits. The only difference is that the last two bits of the final row of the basis sequence table are swapped. This minor change only affects the 20th bit of the final codeword, causing it to represent the most significant bit (MSB) of the CQI in the ’718 patent, versus the second-most significant bit in Philips46.
    • Motivation to Combine (for §103 grounds): This is a single-reference obviousness ground. Petitioner contended that a person of ordinary skill in the art (POSITA), starting with Philips46, would have been motivated to make the minor modification to the basis sequence table. The explicit goal stated in Philips46 and known in the art was to provide "significant extra protection to the MSB." A POSITA would have recognized that swapping the final two bits in the last row was a simple, predictable way to maximize this protection for the MSB, albeit at the minor trade-off of slightly less protection for the second-most significant bit.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the relationship between the basis sequence table and the output codeword was governed by a known, deterministic mathematical equation. Modifying the table to prioritize the MSB was a routine optimization problem with a finite number of predictable solutions.

Ground 2: Obviousness over Philips46 and Nokia - Claims 6, 7, and 9-13 are obvious over Philips46 in view of Nokia.

  • Prior Art Relied Upon: Philips46 (TDoc R1-02-0046) and Nokia (TDoc R1-02-0019, a 3GPP technical document).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets claims directed to a two-step encoding process: generating a 16-bit intermediate codeword from a (16,5) code and then appending a bit four times to create the final 20-bit codeword. Petitioner asserted Nokia taught this general structure, proposing the extension of a 16-bit codeword by appending the "four least reliable information bits." Philips46 provided the context and specific (16,5) Transmit Format Combination Indicator (TFCI) code used as the starting point.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references because both were contemporaneous proposals presented at the same 3GPP meeting to solve the same problem. Philips46 explicitly referenced other "Previous contributions," directing a POSITA to consider related work like Nokia's. While Nokia suggested appending the least significant bits, the overriding goal articulated in Philips46 was to protect the most significant bit (MSB). A POSITA would have been motivated to adopt Nokia's method of extending a 16-bit code but would have chosen to append the MSB four times, as taught by Philips46's focus on MSB protection, to create the claimed codeword.
    • Expectation of Success (for §103 grounds): The combination was a predictable implementation of known techniques. A POSITA would have expected success in applying the MSB-protection principle from Philips46 to the code-extension framework taught by Nokia, as both were well-understood concepts in the field of channel coding.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition should not be discretionarily denied under 35 U.S.C. §325(d) or §314(a).
  • Becton, Dickinson (§325(d)): Petitioner contended that although Philips46 was before the Examiner during prosecution, it was never the basis for a rejection and the record shows the Examiner misapprehended its teachings. Therefore, the Board should reconsider the reference.
  • Fintiv (§314(a)): Petitioner argued that the parallel district court proceedings were in their infancy, with trial dates scheduled well after the deadline for a Final Written Decision in the IPR. Furthermore, some parties had already agreed to stays pending IPR outcomes, suggesting that judicial economy favors institution.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4-7, 9-13, and 15-23 of the ’718 patent as unpatentable.