PTAB

IPR2024-00992

AT&T Services Inc v. ASUS Technology Licensing Inc

Key Events

Petition

petition Intelligence

Title: Method of transmitting a signal in wireless communication
Brief Description: The ’359 patent relates to methods for wireless communication, specifically for a network node transmitting a signal that includes a time duration and a bitmap for a control resource set (CORESET). The invention defines conditions under which the signal is not transmitted to avoid potential configuration errors or overlaps at the user equipment.

Prior Art Relied Upon: Nogami (Patent 10,945,251).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Nogami discloses the core limitations of independent claims 1 and 22, including a network node transmitting a signal indicating a CORESET duration and a corresponding bitmap. The key disputed limitation is claim 1’s requirement of “not allowing to transmit the signal such that an interval between any two bit positions with the value of one... is smaller than the first duration.” Petitioner argued that Nogami explicitly identifies this problematic scenario as an "overlap" between adjacent monitoring occasions.
- Motivation to Combine (for §103 grounds): This ground is asserted as a single-reference obviousness challenge based on the knowledge of a person of ordinary skill in the art (POSITA). Petitioner contended that while Nogami teaches that a user equipment (UE) is “not expected to be configured” to handle such an overlap, a POSITA would find it obvious to modify Nogami’s system by proactively preventing the network node from transmitting such overlap-causing configurations in the first place. This would be a predictable and simple design choice to avoid wasting bandwidth and prevent potential confusion at the UE.
- Expectation of Success: A POSITA would have a high expectation of success because preventing the transmission of a known problematic signal configuration is a straightforward solution.

Prior Art Relied Upon: Nogami (Patent 10,945,251), Chatterjee (Patent 11,025,456), and NTT (a 3GPP working group meeting document, R1-1718834).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses claims that preclude transmitting a signal when it would cause a monitoring occasion to extend beyond a slot boundary. Petitioner argued Nogami provides the foundational system of a CORESET with a duration and bitmap. Chatterjee was cited for its explicit teaching that "allocated symbols do not cross the slot-boundary" and that such transmissions may need to be postponed. NTT, another 3GPP document, was cited for disclosing the "need of some restrictions on particular cases (e.g., whether a CORESET can span a slot boundary)."
- Motivation to Combine: Petitioner argued that a POSITA implementing Nogami's 3GPP-based system would be motivated to consult analogous art to solve known industry problems. Chatterjee and NTT directly address the issue of scheduling resources across slot boundaries, providing a clear reason to combine their teachings with Nogami to create a more robust system.
- Expectation of Success: A POSITA would have a high expectation of success, as Chatterjee and NTT provide explicit guidance on avoiding or postponing transmissions that would cross a slot boundary, directly addressing the problem solved by the challenged claims.

Prior Art Relied Upon: Nogami (Patent 10,945,251) and 3GPP-Specification (3GPP TS 38.213 v15.2.0).
Core Argument for this Ground:
- Prior Art Mapping: This ground serves as an alternative to Ground 1. Petitioner argued that to the extent Nogami alone is insufficient, the formal 3GPP-Specification provides the missing element. The Specification explicitly states that a UE "does not expect any two PDCCH monitoring occasions... to be separated by a non-zero number of symbols that is smaller than the [CORESET] duration." This directly maps to the claim limitation of not allowing transmission when the interval between monitoring occasions is too small.
- Motivation to Combine: A POSITA implementing the system in Nogami, which explicitly refers to 3GPP standards, would be directly motivated to consult the official 3GPP-Specification for implementation rules and constraints. The Specification provides the exact rule needed to render the claims obvious.
- Expectation of Success: A POSITA would have a high expectation of success because this combination involves applying a clear, mandatory rule from the governing technical standard to the base system described in Nogami.

"interval": Petitioner argued the term "interval," recited in all independent claims, should be construed as "the difference between two bit positions or the number of bits between two bit positions."
- This construction is based on the patent's specification and is supported by dependent claims that recite each option separately.
- Petitioner contended this construction is critical because the patent's provisional application only disclosed the "number of bits" option, not the "difference" option. Therefore, under this construction, the challenged claims are not entitled to their earliest priority date, making the 3GPP-Specification, which was published after the provisional filing but before the non-provisional filing, available as prior art.

Petitioner presented extensive arguments that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate.
- Petitioner argued the district court litigation is in a very early stage with minimal investment, as fact discovery is nascent and no claim construction has occurred.
- Petitioner stipulated that, if the IPR is instituted, it will not pursue the same invalidity grounds in the parallel district court litigation, which it argued weighs heavily against denial by mitigating concerns of overlapping efforts.
- Petitioner asserted that the petition presents compelling merits, as the cited prior art was not before the Examiner and allegedly discloses precisely the limitations the Examiner found lacking in the art of record during prosecution.

Petitioner requests institution of an IPR and cancellation of claims 1-4, 6-9, 11-14, 16-19, and 21-23 of the ’359 patent as unpatentable.