Nokia Solutions Networks Oy v. Godo Kaisha IP Bridge 1

1. Case Identification

• Case #: IPR2022-00755
• Patent #: 8,385,239
• Filed: April 5, 2022
• Petitioner(s): Nokia of America Corporation and Ericsson Inc.
• Patent Owner(s): Godo Kaisha IP Bridge 1
• Challenged Claims: 14-19

2. Patent Overview

• Title: Control Channel Signalling for Triggering the Independent Transmission of a Channel Quality Indicator
• Brief Description: The ’239 patent discloses a reporting scheme for wireless communication where a base station transmits control information to a mobile terminal. The control signal indicates whether the terminal should transmit a channel quality indicator (CQI) report alone (“CQI-only”) or multiplexed with other data, using parameters like the Modulation and Coding Scheme (MCS) Index to make this distinction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kotecha - Claims 14-19 are obvious over Kotecha.

• Prior Art Relied Upon: Kotecha (Patent 7,990,919).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kotecha addresses the identical problem as the ’239 patent: developing an efficient method for a base station to signal to a mobile device whether to send an aperiodic CQI report alone or multiplexed with data. Independent claim 14 requires a base station to transmit a control signal comprising an MCS Index, resource block information, and a CQI trigger, and to conditionally receive a CQI report that is either multiplexed or not multiplexed with data based on the values of the MCS Index and the number of resource blocks. Petitioner asserted that Kotecha discloses a control signal on the Physical Downlink Control Channel (PDCCH) that includes a five-bit MCS field, a thirteen-bit resource block (RB) assignment field, and a one-bit CQI request field (the trigger). Kotecha explicitly proposed using one of the thirty-two MCS values to indicate a “CQI only” request to solve the ambiguity of the CQI trigger alone. Furthermore, Kotecha expressly encouraged a Person of Ordinary Skill in the Art (POSITA) to use other fields, such as the RB assignment field, to create more nuanced signaling for when to send CQI-only reports to improve resource efficiency. This directly maps to the limitations of claim 14. Dependent claims 15-19 were argued to be obvious as they recite known or obvious implementation choices, such as using MCS value 29 (an unused value at the time), indicating a redundancy version, specifying the use of the Physical Uplink Shared Channel (PUSCH), or setting a resource block threshold (e.g., smaller than 10).
  • Motivation to Combine: This ground relies on a single reference. The motivation to arrive at the claimed invention was found directly within Kotecha, which taught a POSITA to use a combination of an MCS value and other available fields (like the resource block assignment) to signal whether a CQI report should be sent alone or with data.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing Kotecha's teachings because it involved reusing existing, well-defined fields within the established LTE control channel structure for a predictable signaling purpose, which is a common practice in standards development.

Ground 2: Obviousness over Kotecha and R1-081126 - Claims 15 and 18 are obvious over Kotecha in view of R1-081126.

• Prior Art Relied Upon: Kotecha (Patent 7,990,919) and R1-081126 (a 3GPP technical contribution document from February 2008).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative for claims 15 and 18. Petitioner argued that while Kotecha teaches the general scheme of using an unused MCS value to signal a CQI-only transmission, R1-081126 provides the specific, publicly known details of the MCS table used in LTE at the time. Claim 15 requires the use of MCS Index value 29. R1-081126 explicitly identified MCS values 29, 30, and 31 as being reserved for retransmissions and not for carrying user data, making them the exact "unused" values a POSITA implementing Kotecha's method would select. Claim 18 requires the MCS Index to indicate redundancy version 1 (RV1). R1-081126 explicitly disclosed that the reserved MCS value 29 was mapped to RV1.
  • Motivation to Combine: A POSITA seeking to implement the LTE-compliant system described in Kotecha would be motivated to consult the contemporary LTE standards documentation and technical contributions, such as R1-081126, to identify the specific MCS values that were available for reuse. Kotecha's suggestion to use an "unused" MCS value would directly lead a POSITA to the reserved values detailed in R1-081126.
  • Expectation of Success: Combining Kotecha's general method with the specific, standardized values from R1-081126 would have a high expectation of success because it leverages the precise, agreed-upon framework of the developing LTE standard.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because Kotecha was never substantively considered by the USPTO. It was merely listed in an Information Disclosure Statement (IDS), among over one hundred other references, during an ex parte reexamination of different claims and was never applied or discussed by the examiner.
• Petitioner further argued that discretionary denial under Fintiv is inappropriate. The petition was filed approximately six months after Petitioners filed their answer in a parallel district court litigation and only one month after receiving the Patent Owner's preliminary election of asserted claims. Petitioner noted that the trial date in the parallel litigation is uncertain and stipulated that it would not pursue invalidity in the district court using the specific prior art combinations presented in the IPR, thereby eliminating overlap.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 14-19 of the ’239 patent as unpatentable.