PTAB

IPR2024-00985

Ericsson Inc v. Active Wireless Technologies LLC

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petition

1. Case Identification

2. Patent Overview

  • Title: Multiple Slot Long Physical Uplink Control Channel (PUCCH) Design for 5th Generation (5G) New Radio (NR)
  • Brief Description: The ’566 patent discloses techniques for improving communication efficiency in 5G wireless systems by defining specific configurations for a long Physical Uplink Control Channel (PUCCH) that spans multiple time slots. The claimed invention involves a base station receiving uplink control information (UCI) with frequency hopping, where the number and location of PUCCH symbols are consistent across the multiple slots.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim and Gao - Claims 8-11, 13, 14, and 16 are obvious over Kim, alone or in combination with Gao.

  • Prior Art Relied Upon: Kim (Application # 2019/0159191) and Gao (Patent 10,951,350).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim discloses the core limitations of independent claims 8 and 16, including a base station (gNB) transmitting signaling to a user equipment (UE) to configure a long PUCCH that spans multiple slots and receives UCI with frequency hopping. Kim’s FIG. 14 allegedly shows a long PUCCH over two slots with inter-slot frequency hopping, and the specification teaches that the number of PUCCH symbols can be constant for all slots. To the extent Kim does not explicitly teach that the location of the symbols is the same in each slot, Gao was introduced. Gao allegedly discloses multi-slot PUCCH transmission where the uplink regions and symbol locations (e.g., PUCCH1 and PUCCH2 in FIG. 7) are the same in each slot.
    • Prior Art Mapping (Dependent Claims): For claim 9, Kim was argued to teach using 4 or more symbols for a long PUCCH, and Gao was cited for determining a reference symbol (RS) pattern on a per-slot basis. For claim 11, Gao was cited for disclosing that UCI encoded bits are rate-matched and that the same coded sequence is repeated in multiple slots. For claims 13 and 14, Kim was argued to teach that frequency hopping can be intra-slot (within each slot) and that its type (inter-slot or intra-slot) can be configured by higher-layer signaling.
    • Motivation to Combine: A POSITA would combine Kim and Gao because they are analogous art addressing the same problem of configuring PUCCH transmissions. Combining Gao’s method for consistent symbol allocation with Kim’s framework would be a predictable way to reduce signaling overhead by avoiding the need to reconfigure symbol locations for each slot.
    • Expectation of Success: A POSITA would have a reasonable expectation of success as the combination involves applying known techniques (e.g., consistent symbol mapping, rate matching) to a known system (multi-slot PUCCH) to achieve predictable results like improved efficiency and reliability.

Ground 2: Obviousness over Kim, Gao, and R1-1710555 - Claim 12 is obvious over Kim and Gao in further view of R1-1710555.

  • Prior Art Relied Upon: Kim (Application # 2019/0159191), Gao (Patent 10,951,350), and R1-1710555 (a 3GPP submission).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targets claim 12, which depends from claim 8 and adds the limitation that frequency hopping is "applied at slot boundaries." Petitioner asserted that while Kim teaches inter-slot hopping generally, the 3GPP contribution R1-1710555 explicitly discloses and illustrates inter-slot frequency hopping that occurs precisely at the boundary between slots (as shown in its FIG. 2(a)) to improve the link budget for a long PUCCH.
    • Motivation to Combine: A POSITA would be motivated to apply the specific hopping-at-the-boundary technique from R1-1710555 to the multi-slot PUCCH system of Kim/Gao. This modification would be a known design choice to achieve the well-understood benefit of increased frequency diversity and improved transmission reliability.
    • Expectation of Success: The combination was presented as predictable because the frequency hopping techniques in R1-1710555 were fully compatible with the inter-slot and intra-slot hopping methods already disclosed in Kim.

Ground 3: Obviousness over Kim, Gao, and Huang - Claim 12 is obvious over Kim and Gao in further view of Huang.

  • Prior Art Relied Upon: Kim (Application # 2019/0159191), Gao (Patent 10,951,350), and Huang (Patent 10,873,435).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground provides an alternative combination for rendering claim 12 obvious. Huang, like R1-1710555, was argued to explicitly disclose inter-slot frequency hopping occurring "across a time slot boundary." Huang’s FIG. 4 illustrates a "Frequency Hop at Time Slot Boundary," directly teaching the limitation added by claim 12.
    • Motivation to Combine: The motivation was similar to Ground 2. A POSITA would be motivated to incorporate Huang’s explicit teaching of hopping at the slot boundary into the system of Kim/Gao to achieve the known benefit of frequency diversity. Huang and Kim were described as compatible art addressing configurable PUCCH in 5G NR systems.
    • Expectation of Success: Success would be expected because implementing Huang’s hopping method is a straightforward application of a known technique to a compatible system, involving no more than routine skill.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a) (Fintiv).
  • §325(d) Arguments: Petitioner asserted that the core prior art references—Kim, Gao, and Huang—were never considered during the prosecution of the ’566 patent. Although R1-1710555 was listed in an IDS, it was not substantively applied in any rejection, which Petitioner characterized as an examiner error material to patentability, weighing against denial.
  • Fintiv Arguments: Petitioner contended that denial under Fintiv is unwarranted because the parallel district court litigation is in its early stages, with a trial date (March 3, 2025) that is after the projected statutory deadline for a Final Written Decision (FWD). Petitioner also noted minimal investment in the parallel case and stipulated that it would not pursue the same invalidity grounds in district court, reducing concerns of overlapping issues.

5. Relief Requested

  • Petitioner requests the Board institute an inter partes review and cancel claims 8-14 and 16 of Patent 10,601,566 as unpatentable.