Tesla Inc v. Intellectual Ventures II

1. Case Identification

• Case #: IPR2025-00219
• Patent #: 9,706,500
• Filed: November 26, 2024
• Petitioner(s): Tesla, Inc.
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 11-22

2. Patent Overview

• Title: Uplink Power Control in a Wireless Communication System
• Brief Description: The ’500 patent discloses methods for uplink power control in a wireless communication system, describing a combination of open-loop and closed-loop techniques. The challenged claims are directed to user equipment (UE) configured to receive scheduling information and a multi-level transmit power control (TPC) command on a single physical channel and transmit an uplink signal accordingly.

3. Grounds for Unpatentability

Ground 1: Obviousness over Andersson/Khan - Claims 11, 15-17, and 21-22 are obvious over Andersson in view of Khan.

• Prior Art Relied Upon: Andersson (Patent 6,334,047) and Khan (Application # 2004/0190485).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Andersson discloses a CDMA communication system with combined open and closed-loop power control, including the use of multi-level TPC commands with different "step sizes" to adjust UE transmit power. However, Andersson does not explicitly detail how uplink resources are scheduled. Khan remedies this by teaching a method to improve power control and scheduling where both scheduling information (an allocation of an uplink resource) and TPC commands are transmitted together on a single physical channel.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Khan’s efficient signaling method with Andersson’s power control system to improve performance. Placing Khan's scheduling grant onto Andersson’s dedicated physical control channel alongside the TPC command was argued to be a predictable use of prior art elements to reduce system complexity and latency.
  • Expectation of Success: Success would be expected because Andersson explicitly omits detailed descriptions of "well-known...signaling techniques," such as those taught by Khan for allocating uplink resources. Andersson’s channel format includes "other bits" that a POSITA would have recognized could be used for a scheduling grant, making the integration straightforward.

Ground 2: Obviousness over Andersson/Khan/Baker - Claims 12-13 and 18-19 are obvious over Andersson in view of Khan and Baker.

• Prior Art Relied Upon: Andersson (Patent 6,334,047), Khan (Application # 2004/0190485), and Baker (Application # 2001/0036238).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Andersson/Khan combination to address dependent claims requiring an "indication as to whether accumulation of TPC commands is enabled." While Andersson teaches a generic "power control indicator" flag to select between different power control adjustments, Baker explicitly discloses a Power Control Algorithm (PCA) bit that signals to a UE whether to enable or disable TPC command accumulation.
  • Motivation to Combine: A POSITA would incorporate Baker's specific implementation of an accumulation-enable/disable flag into Andersson's more general framework. This represents a simple substitution of a known element (Baker's specific flag) for a generic one (Andersson's indicator) to provide a more versatile and beneficial power adjustment option, such as a non-accumulation mode for slow-changing channel conditions.
  • Expectation of Success: The combination was predictable because Baker states its technique is suitable for any system with a variable power control step size, which describes Andersson's system. Integrating this feature into Andersson’s flexible framework would have been a straightforward modification with a high expectation of success.

Ground 4: Obviousness over Zeira/Khan/Tong - Claims 11, 15-17, and 21-22 are obvious over Zeira in view of Khan and Tong.

• Prior Art Relied Upon: Zeira (Patent 6,600,772), Khan (Application # 2004/0190485), and Tong (Patent 6,529,741).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Zeira, like the challenged patent, discloses a combined closed/open loop power control system where TPC commands are sent on a dedicated channel. To the extent Zeira’s command might not be considered "multi-level," Tong teaches using multi-bit TPC commands to signal multiple, variable power step sizes. As in Ground 1, Khan supplies the teaching of multiplexing scheduling grants and TPC commands on the same single physical channel.
  • Motivation to Combine: A POSITA would combine Tong’s multi-level TPC capability with Zeira's system to improve performance in dynamic environments, a known benefit of using variable step sizes to minimize power overshoot. A POSITA would also incorporate Khan's single-channel signaling technique into the combined Zeira/Tong system to gain the known benefits of reduced latency and complexity in resource allocation.
  • Expectation of Success: The combination would have been predictable. Integrating Tong’s multi-level TPC commands was a known technique to address issues like rapid fading. Combining this with Khan’s well-known scheduling message transmission method represented the application of established techniques to yield predictable results.
• Additional Grounds: Petitioner asserted further obviousness challenges based on combinations including Andersson/Khan/Dick (Ground 3), Zeira/Khan/Tong/Baker (Ground 5), and Zeira/Khan/Tong/Dick (Ground 6), relying on similar motivations to add teachings for uplink shared channels (Dick) and accumulation indicators (Baker).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Regarding 35 U.S.C. §325(d), Petitioner contended that the asserted prior art and grounds were not substantively considered during prosecution, as the Examiner made no prior art-based rejections.
• Regarding discretionary denial under Fintiv, Petitioner argued that the parallel district court litigation is in a very early stage. The proposed trial date is well after the projected date for a Final Written Decision in the inter partes review (IPR), minimal investment has occurred in the litigation, and the petition was filed promptly, all factors weighing strongly against denial.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 11-22 of Patent 9,706,500 as unpatentable.