PTAB

IPR2022-00342

Apple Inc v. Telefonaktiebolaget LM Ericsson

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Transmitter for Transmitting Discovery Signals, A Receiver and Methods Therein
  • Brief Description: The ’204 patent discloses a method and transmitter within a radio communications system for transmitting discovery signals. The method involves transmitting two or more discovery signals over two or more directions, where the carrier bandwidth is separated into sub-bands and each discovery signal is configured to span over one sub-band.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Leabman - Claims 1, 6, 8-10, 15, 17-18, 21, 23-24, 27, and 29 are anticipated and/or obvious over Leabman.

  • Prior Art Relied Upon: Leabman (Application # 2011/0034191).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Leabman, which discloses a data delivery system between an airborne platform and surface base stations, teaches all limitations of the independent claims. Leabman’s system generates a “plurality of directional synchronization beams,” which Petitioner mapped to the claimed “discovery signals.” The core of the argument centered on Leabman’s disclosure of a scalable system that breaks up a larger carrier bandwidth (e.g., 80 MHz) into smaller "N groups" (e.g., four 20 MHz groups) for simultaneous transmission. Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would have understood these frequency "groups" to be the claimed "sub-bands," and that transmitting a synchronization signal for each group constitutes a discovery signal spanning one sub-band, thus anticipating or rendering obvious the key limitations of claim 1.
    • Motivation to Combine (for §103 grounds): Not applicable for anticipation. For the alternative obviousness argument, Petitioner contended that it would have been obvious to a POSITA to equate Leabman’s frequency "groups" with the claimed "sub-bands," as the terms describe the same concept of dividing a larger bandwidth into smaller portions.
    • Expectation of Success (for §103 grounds): Petitioner argued success was expected because this interpretation required only applying a standard industry understanding of bandwidth division to Leabman’s explicit teachings.

Ground 2: Obviousness over Leabman and UMTS-1 - Claims 2-3, 11-12, 19, and 25 are obvious over Leabman in view of UMTS-1.

  • Prior Art Relied Upon: Leabman (Application # 2011/0034191) and UMTS-1 (a 2007 book describing the Universal Mobile Telecommunications System standard).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged claims requiring the transmission of discovery signals "in a single symbol." Petitioner argued that while Leabman taught the core system of transmitting multiple directional signals in separate frequency sub-bands, it was silent on the specific temporal allocation of those signals (e.g., within one symbol or across multiple symbols). UMTS-1, as a well-known telecommunications standard, was introduced to supply this missing detail, as it explicitly discloses transmitting primary (P-SCH) and secondary (S-SCH) synchronization signals within a single symbol period.
    • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine these references because Leabman expressly suggests using "widely known techniques used in mobile telecommunications" to implement its system. Faced with Leabman’s lack of specific timing details, a POSITA would naturally have looked to established, widely-used standards like UMTS-1 to provide a known, working solution for temporal allocation of synchronization signals.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as the combination involved applying a standardized, proven timing protocol (from UMTS-1) to a compatible communication system (Leabman) to achieve the predictable result of efficient synchronization.

Ground 3: Obviousness over Leabman and LTE-1 - Claims 4-5, 13-14, 19-20, and 25-26 are obvious over Leabman in view of LTE-1.

  • Prior Art Relied Upon: Leabman (Application # 2011/0034191) and LTE-1 (a 2011 book describing the Long Term Evolution standard).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground challenged claims requiring the transmission of discovery signals "in two or more symbols." Similar to Ground 2, Petitioner relied on Leabman for the core system but argued it was silent on specific symbol timing. LTE-1 was presented to show a well-known alternative where primary (PSS) and secondary (SSS) synchronization signals are transmitted in different, consecutive symbols within a radio frame. This teaching from the LTE standard directly meets the "two or more symbols" limitation.
    • Motivation to Combine (for §103 grounds): The motivation was analogous to Ground 2. A POSITA implementing Leabman’s system would have recognized that transmitting signals in a single symbol versus multiple symbols represented a finite number of known design choices. To fill the implementation gaps in Leabman, the POSITA would consult prominent standards like LTE-1 for a proven multi-symbol transmission scheme.
    • Expectation of Success (for §103 grounds): Success would have been expected because the combination merely involved selecting another well-known, predictable, and standardized timing protocol from among a few obvious options to complete the design of Leabman’s system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Leabman in view of Malladi (Application # 2008/0095108) and Leabman in view of Zhang (Application # 2008/0013516). These grounds relied on similar theories where Malladi and Zhang provided further examples of well-known techniques for transmitting synchronization signals within single or multiple symbols in mobile communication systems.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial by noting that the ’204 patent was the subject of a prior IPR (IPR2021-00615) filed by Samsung, which was dismissed prior to institution. Petitioner contended that because the Patent Trial and Appeal Board had not previously evaluated the prior art or arguments presented in this petition, the Advanced Bionics test favored institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8-15, 17-21, 23-27, and 29 of the ’204 patent as unpatentable.