Apple Inc v. Telefonaktiebolaget LM Ericsson

1. Case Identification

• Case #: IPR2022-00337
• Patent #: 10,454,655
• Filed: February 1, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Telefonaktiebolaget LM Ericsson
• Challenged Claims: 1-40

2. Patent Overview

• Title: Wireless Terminals, Nodes of Wireless Communication Networks, and Methods of Operating the Same
• Brief Description: The 10,454,655 patent discloses methods and systems for managing carrier aggregation in wireless networks. The technology uses Medium Access Control (MAC) Control Elements (CEs) with bitmaps of different sizes, each associated with a unique Logical Channel Identity (LCID), to efficiently activate and deactivate distinct groups of component carriers for a wireless terminal.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bao in view of Feuersanger - Claims 1-40 are obvious over Bao in view of Feuersanger under 35 U.S.C. §103.

• Prior Art Relied Upon: Bao (Application # 2012/0113811) and Feuersanger (Application # 2013/0039202).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bao discloses the core claimed concepts for managing carrier aggregation in an LTE system. Bao teaches using a "component carrier indication MAC CE" to activate or deactivate component carriers (CCs). This MAC CE contains a bitmap whose size depends on the number of aggregated carriers (e.g., 1 byte for ≤8 CCs, 2 bytes for 9-16 CCs) and is identified by a Logical Channel ID (LCID). Bao’s system thus sends MAC CEs of different formats (i.e., different bitmap sizes) with corresponding LCIDs. Petitioner contended that Feuersanger supplements Bao by providing well-known details about LTE systems, such as the distinction between an always-active primary CC and configurable secondary CCs that can be activated/deactivated. This teaching from Feuersanger directly maps to the claims’ requirements for groups of secondary component carriers. The combination therefore discloses receiving a first MAC CE with a first bitmap size and first LCID, and a second MAC CE with a different, second bitmap size and second LCID to control different groups of CCs.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Feuersanger’s teachings with Bao’s system to improve efficiency. Feuersanger’s disclosure of distinguishing primary and secondary CCs allows for more space-efficient signaling, as the always-active primary CC does not need to be included in the activation/deactivation bitmap. This directly addresses the known goal of improving signaling efficiency in LTE systems like the one described in Bao.
  • Expectation of Success: Both references describe mechanisms for standard-compliant LTE networks. A POSITA would have reasonably expected success in combining their compatible teachings, as Feuersanger merely provided specific implementation details for the general system described by Bao.
• Key Aspects: Petitioner also asserted in a separate ground (Ground 1A) that claims 1-40 are obvious over Bao alone, arguing that a POSITA would have found it obvious from Bao’s disclosure to implement the claimed features without needing a secondary reference.

Ground 2: Obviousness over Kwon - Claims 1-40 are obvious over Kwon under 35 U.S.C. §103.

• Prior Art Relied Upon: Kwon (Patent 8,538,411).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kwon, as a single reference, discloses all limitations of the challenged claims. Kwon describes a method for activating and deactivating CCs using an "activation indication MAC control element" that is identified by an LCID and includes a bitmap. Kwon explicitly teaches that the bitmap size can be "determined variously, for example, [to be] 4 bits, 8 bits, etc." and that the system can support different numbers of CCs, requiring different bitmap lengths (e.g., 8 bits, 16 bits, 32 bits). Kwon further discloses that different MAC CE formats (e.g., Truncated, Short, and Long Buffer Status Reports) have distinct LCIDs. Therefore, Petitioner argued Kwon teaches the core inventive concept: using different MAC CEs with different bitmap sizes and different LCIDs to control different groups of component carriers based on network conditions. Kwon also explicitly distinguishes between an implicitly active primary CC and secondary serving cells (SSCs) that are controlled by the bitmap, directly teaching the claims’ limitations regarding groups of secondary component carriers.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under § 325(d) would be inappropriate because the asserted prior art and invalidity arguments were not considered during the original prosecution. Although a parent application to Kwon was cited in a Notice of References, it was never substantively addressed by the examiner, whose sole rejection of the application leading to the ’655 patent was for double patenting. Petitioner asserted that both the Kwon reference and the combination of Bao and Feuersanger present new art and arguments that warrant consideration.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-40 of the ’655 patent as unpatentable.