PTAB

IPR2021-00943

Samsung Electronics Co Ltd v. Evolved Wireless LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Transmitting Uplink Data
  • Brief Description: The ’120 patent discloses methods for managing uplink data transmission in a Long Term Evolution (LTE) wireless communication system. The patent purports to solve an alleged problem in the LTE standard where user equipment (UE) could erroneously transmit "Message 3" (Msg3) buffer data using an uplink (UL) grant not specifically intended for that purpose. The proposed solution is to restrictively transmit Msg3 data only when a UL Grant is received on a specific random access response message.

3. Grounds for Unpatentability

Ground 1: Obviousness over 3GPP Specifications and Ericsson - Claims 1, 5-9, 11-12, 16-20, and 22 are obvious over the 300 reference, the 321 reference, and the Ericsson patent.

  • Prior Art Relied Upon: 300 reference (3GPP TS 36.300 v8.4.0 (Mar. 2008)), 321 reference (3GPP TS 36.321 v8.2.0 (May 2008)), and Ericsson (Patent 9,204,468).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of prior art taught every limitation of the challenged claims. The 3GPP specifications, which defined the then-current LTE standard, described the random-access procedure at issue. The 300 reference provided a high-level overview, while the 321 reference detailed the specific Medium Access Control (MAC) layer logic for handling UL grants and transmitting data from the Msg3 buffer. Petitioner contended that the core inventive concept—transmitting Msg3 data only when the UL grant is received in a random access response—was rendered obvious by these specifications. While the 321 reference contained a potential ambiguity, Petitioner asserted a POSITA would resolve it by consulting the clearer 300 reference and relying on common knowledge of the well-established random access procedure, which required a random access response before Msg3 transmission. The Ericsson patent was argued to supply the routine hardware details, such as transmission and reception modules, necessary to implement the functional procedures described in the 3GPP standards.
    • Motivation to Combine: A POSITA would combine the 300 and 321 references because they were complementary parts of the same LTE standard that must be read together to understand and implement the complete random-access procedure. The 300 reference explicitly referenced the technical specification series that included the 321 reference. A POSITA would combine these specifications with Ericsson because Ericsson was in the same field of endeavor and provided predictable, well-known hardware structures (e.g., a transceiver) to implement the functional requirements of the LTE standard.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved implementing a well-documented industry standard using conventional wireless communication hardware components and known design principles.
    • Key Aspects: Petitioner argued that near-simultaneous and substantively identical proposals by two different companies (LG and Qualcomm) to correct the ambiguity in the 321 reference provided strong evidence that correcting the standard to explicitly require the "only when" condition was obvious to a POSITA.

4. Key Claim Construction Positions

  • Petitioner argued for a specific construction of the "transmitting... Msg3 buffer data when..." limitation found in independent claims 1 and 12.
  • Proposed Construction: The term requires transmitting the Msg3 data only when all three claimed conditions are met: (1) the UL Grant is received on the specific message, (2) the specific message is the random access response message, and (3) there is data in the Msg3 buffer.
  • Importance: This "only when" construction was central to Petitioner's invalidity case, as it defined the allegedly inventive feature. Petitioner supported this construction by analyzing the claim's mutually exclusive transmitting scenarios and citing a Final Written Decision (FWD) for a parent patent ([’236](https://ai-lab.exparte.com/case/ptab/IPR2021-00943/doc/1034) patent) where the Board construed similar "if" language as introducing a necessary, not merely sufficient, condition.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors.
  • Core Argument: A parallel district court action was stayed, weighing against denial. For a parallel ITC proceeding, Petitioner stipulated that it would not assert the same invalidity grounds raised in the IPR, eliminating any overlap of issues. Furthermore, Petitioner argued the merits of the petition were exceptionally strong, pointing to the fact that claims of a parent patent with an identical specification were previously invalidated by the PTAB in a prior IPR (IPR2016-00757) based on the same prior art, a decision affirmed by the Federal Circuit.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 5-9, 11-12, 16-20, and 22 of the ’120 patent as unpatentable.