PTAB

IPR2022-00464

Apple Inc v. Telefonaktiebolaget LM Ericsson

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Codebook Subset Restriction
  • Brief Description: The ’600 patent relates to methods in 4G LTE wireless networks for restricting a set of available "precoders" (beamforming instructions) that a mobile device can select from a codebook. The purported novelty is applying this restriction in a "rank-agnostic" manner, meaning the restriction is independent of the number of simultaneous data streams (transmission rank) being sent from a base station to a mobile device.

3. Grounds for Unpatentability

Ground 1: Claims 1-28 are obvious over Novlan, or alternatively, Novlan in view of 36.213.

  • Prior Art Relied Upon: Novlan (Application # 2014/0016549) and 36.213 (3GPP Technical Specification TS 36.213, v12.3.0).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Novlan, by itself, renders all challenged claims obvious. Novlan teaches a method for codebook subset restriction where a base station (eNB) signals to a user device (UE) to narrow its search for an optimal precoder. Specifically, Novlan discloses restricting the codebook to only those precoders corresponding to a "relevant spatial domain," such as a realistic range of elevation angles where a UE is likely to be located. Petitioner asserted this angle-based restriction is inherently rank-agnostic because the restriction criterion (physical location/angle) is unrelated to the transmission rank (number of data layers). Novlan also teaches jointly restricting groups of precoders using an efficient signaling method (a PMI indication field) rather than an inefficient one-to-one bitmap, meeting another key limitation. The dependent claims were argued to be obvious as they recite further known aspects of LTE systems also taught by Novlan, such as using Kronecker products and DFT vectors for beamforming.
    • Motivation to Combine (for §103 grounds): To the extent Novlan was not viewed as explicitly applying its restriction to multi-rank scenarios, Petitioner argued a Person of Ordinary Skill in the Art (POSITA) would combine Novlan with the 3GPP standard 36.213. A POSITA implementing the LTE techniques in Novlan would naturally consult the governing 3GPP standards to understand the structure of higher-rank precoders. 36.213 defines rank-2 and higher-rank precoders, showing they share the same fundamental beamforming vector component (vm) found in Novlan's rank-1 precoders. A POSITA would combine the references to improve system performance by applying Novlan's efficient, angle-based restriction to the higher-rank transmissions defined in 36.213. This would prevent the system from wasting power on beams aimed at irrelevant elevation angles, regardless of transmission rank, a predictable improvement.
    • Expectation of Success: A POSITA would have a high expectation of success in this combination. Codebook subset restriction was a well-known technique, and both references operate within the same 4G LTE framework. Applying Novlan's angle-based restriction logic to the higher-rank precoders of 36.213 would involve routine software implementation and was a straightforward extension of the disclosed principles to achieve a predictable result.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the prior art and arguments presented were not the same or substantially the same as those previously considered by the USPTO. Petitioner contended that although the Examiner cited Novlan during prosecution, it was only as a secondary reference for two dependent claims, and the record shows the Examiner did not appreciate Novlan's core teaching on rank-agnostic spatial restriction. Furthermore, the specific version of the 36.213 standard, which is critical for showing the structure of higher-rank precoders, was never before the Examiner.
  • Petitioner also argued against denial under §314(a) (General Plastic factors). It noted that a prior IPR filed by Samsung on the ’600 patent was terminated prior to a preliminary response. Because Apple was not a party to the Samsung IPR, this petition represented Apple's first opportunity to challenge the patent. Petitioner asserted that by repurposing some arguments from the terminated Samsung IPR, it was respecting the Board’s finite resources and allowing it to complete an analysis it had already begun.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-28 of Patent 10,193,600 as unpatentable under 35 U.S.C. §103.