Trials@uspto.gov Paper 7

Tel: 571-272-7822 Entered: July 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,

Petitioner,

v.

CELLULAR COMMUNICATIONS EQUIPMENT LLC,

Patent Owner.

Case IPR2015-00578

Patent 8,055,820 B2

Before JENNIFER S. BISK, GREGG I. ANDERSON and

ROBERT J. WEINSCHENK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review

37 C.F.R. 42.108

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INTRODUCTION

A. Background

Petitioner, Apple Inc., filed a Petition (Paper 2, Pet.) requesting an

inter partes review of claims 1 24 (the challenged claims) of U.S. Patent

No. 8,055,820 B2 (Ex. 1001, the 820 patent). Patent Owner, Cellular

Communications Equipment LLC, filed a Preliminary Response. Paper 6

(Prelim. Resp.).

We have authority to determine whether to institute an inter partes

review. 35 U.S.C. 314(b); 37 C.F.R. 42.4(a). The standard for

instituting an inter partes review is set forth in 35 U.S.C. 314(a), which

provides that an inter partes review may not be instituted unless the

Director determines . . . there is a reasonable likelihood that the petitioner

would prevail with respect to at least 1 of the claims challenged in the

petition.

After considering the Petition and Preliminary Response, we

determine that Petitioner has not established a reasonable likelihood of

prevailing in showing the unpatentability of the challenged claims.

Accordingly, we decline to institute inter partes review.

B. Related Matters

The parties indicate that the 820 patent is the subject of several

concurrent proceedings in the United States District Court for the Eastern

District of Texas. Pet. 23; Paper 5, 23.

Another party filed a petition seeking inter partes review of the 820

patent. Case No. IPR2014-01136. We issued a decision denying institution.

Case No. IPR2014-01136 (PTAB Jan. 28, 2015) (Paper 10).

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C. The Asserted Grounds of Unpatentability

Petitioner contends that claims 1 24 of the 820 patent are

unpatentable under 35 U.S.C. 102, 103 based on the following grounds

(Pet. 34, 2259):1

Statutory Ground Basis2 Challenged Claims

102 Malkamaki 124

103 Malkamaki 124

103 Malkamaki and Pederson 124

103 Malkamaki and Ye 124

D. The 820 Patent

The 820 patent relates to managing the resources used to send data

over a communications network. Specifically, the 820 patent describes

increasing the efficiency of communicating, from user equipment to a

network device, the status of user-equipment buffers. Ex. 1001, Abstract.

These buffers hold data ready to be sent over the network. Reporting the

status of these buffers to a network device allows the device to efficiently

manage communications, but also requires communication overhead. Id. at

1:4750. The 820 patent describes embodiments that use more than one

message format for reporting buffer status: a long buffer status reporting

format and a short buffer reporting format. Id. at 1:5255. The different

formats may be chosen in such a way as to reduce overhead on the network.

Id. at 1:4750. Figure 5 of the 820 patent is reproduced below.

1 Petitioner also provides a declaration from Dr. Thomas F. La Porta. Ex.

1003 (the La Porta Declaration). 2 U.S. Patent Pub. No. 2006/0143444 A1 (Ex. 1012) (Malkamaki); U.S.

Patent Pub. No. 2007/0201369 A1 (Ex. 1027) (Pederson); U.S. Patent No. 8,031,655 B2 (Ex. 1005) (Ye).

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Figure 5, above, illustrates one example of a short buffer status reporting

format. Id. at 8:4042. This format includes radio bearer group identity 510

(which indicates the buffer whose status is being reported) and buffer size

520. Id. at 8:4247. Figure 6 of the 820 patent is reproduced below.

Figure 6, above, illustrates one example of a long buffer status reporting

format. Id. at 8:5153. This format includes an entry for the buffer size of

each of four radio bearer groups, 610, 620, 630, and 640. Id. at 8:5357.

Each of the four groups in the long buffer status reporting format is

comprised of six bits. Id. at 8:5758.

In one exemplary embodiment, user-equipment buffers are monitored

until at least one buffer contains data to be communicated. Id. at 8:1720.

If only one of the monitored buffers contains data, the short form buffer

status format is used. Id. at 2224. If more than one of the monitored

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buffers contains data, the current uplink capacity is determined, and if the

capacity is sufficient to send a long buffer status reporting message, the long

format is used. Id. at 8:2531. If there is not sufficient uplink capacity to

send the long format, the short buffer status reporting format can be used by

sending status information only of the user-equipment buffer with the

highest designated priority. Id. at 8:2024, 3139.

E. Illustrative Claim

Of the challenged claims in the 820 patent, claims 1, 12, 23, and 24

are independent. Claim 1 is illustrative and recites:

1. A method, comprising:

monitoring a usage of a plurality of buffers;

detecting one of a plurality of pre-selected conditions

corresponding to the plurality of buffers;

designating one of a plurality of buffer status reporting formats

comprising a long buffer status reporting format and a short

buffer status reporting format depending on the pre-selected

condition detected; and

communicating a buffer status report to a network device in

accordance with the buffer status reporting format designated,

wherein the designating designates the long buffer status

reporting format when there is sufficient uplink bandwidth to

communicate using the long buffer status reporting format.

ANALYSIS

A. Claim Construction

We interpret claims of an unexpired patent using the broadest

reasonable construction in light of the specification of the patent in which

they appear. See 37 C.F.R. 42.100(b); Office Patent Trial Practice Guide,

77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,

LLC, No. 2014-1301, slip op. at 1619 (Fed. Cir. July 8, 2015). On this

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record, and for purposes of this decision, we determine that only the claim

terms addressed below require express construction.

1. long buffer status reporting format and short buffer status reporting format

Petitioner and Patent Owner agree that the broadest reasonable

construction of long and short buffer status reporting formats are

formats for reporting buffer status information, with the long version

being longer than the short version, without requiring any particular

lengths. Pet. 1214; Prelim. Resp. 45. Petitioner and Patent Owner

additionally emphasize that both terms include the word format, which

refers to a particular method of organizing data, and, therefore, the term

reporting format refers to how information is arranged. Pet. 13 (quoting

Ex. 1026, 3); Prelim. Resp. 5.

Patent Owner adds that, although it does not alter the proposed

construction, the buffer status reporting format terms should not be read so

broadly as to include information that is not related to data buffers. Prelim.

Resp. 6. Patent Owner bases this assertion on language in the 820 patent

that expressly distinguishes between scheduling information, buffer

status, and power headroom reports. Id. (quoting Ex. 1001, 12329).

This distinguishing between types of data, however, does not persuade us

that the information contained in a buffer status reporting format must

contain exclusively information related to buffer status. Although we agree

that at least some information relating to buffer status must be included in a

buffer status reporting format, we are not persuaded that it excludes other

information.

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Accordingly, for purposes of this decision, we are persuaded that the

broadest reasonable construction of long and short buffer status

reporting formats are formats for reporting buffer status information

including at least some information about buffer statuswith the long

version being longer than the short version, without requiring any

particular lengths.

2. designating one of a plurality of buffer status reporting formats . . . depending on the pre-selected condition detected . . . wherein the designating designates the long buffer status reporting format when there is sufficient uplink bandwidth . . .

Petitioner asserts that the broadest reasonable interpretation of this

termthe designating limitationis designating a buffer status

report[ing] format from the set of long and short buffer status report[ing]

formats based in part on the detection of a pre[-]selected condition. Pet. 15.

Patent Owner does not explicitly agree to this proposed construction (Prelim.

Resp. 6), but during its analysis, Patent Owner appears to agree that the

designating limitation designates the buffer status reporting format based, at

least in part, on the detection of a pre-selected condition (Prelim. Resp. 21

22). For example, Patent Owner argues that the claim requires first

detecting a particular pre-selected condition (of a plurality of conditions)

corresponding to the buffers, and then designating one of a plurality of

buffer status report formats depending on the particular condition detected

and, in some instances, uplink bandwidth. Prelim. Resp. 22 (emphasis

added).

We agree with both parties that the plain language of the designating

limitation requires designating a buffer status reporting format based at least

in part on the detection of a pre-selected condition corresponding to the

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buffers. For purposes of this decision, we need not elaborate further on the

construction of the designating limitation.

B. Grounds Based on Malkamaki

1. Overview of Malkamaki

Malkamaki describes a method for communicating scheduling

information (SI) from user equipment (UE) to a base station (Node B)

in a Wideband Code Division Multiple Access (WCDMA) wireless

network system. Ex. 1012, Title, [0006]. Malkamakis UE stores data

packets in buffers for uplink to the network in fixed size transport blocks,

which require padding bits to be added whenever the data to be sent is

smaller than the defined block size. Id. at [0006], [0019]. For efficiency

purposes, Malkamaki describes replacing these unused padding bits with

SIexamples of SI include, how full the UE buffer is and power status

information. Id. at [0006], [0010], [0019]. The length of the SI field can

vary depending on the scheduling information being reported. Id. at

[0022]. Thus, Malkamaki states that the information reported in the SI

field depends on the size of the padding: the larger the padding, the more the

information. Id.

2. Anticipation

Petitioner asserts that claims 124 of the 820 patent are anticipated

by Malkamaki. Pet. 3044.

Independent claims 1, 12, 23, and 24 all require the designating

limitation designating one of a plurality of buffer status reporting formats

. . . depending on the pre-selected condition detected . . . wherein the

designating designates the long buffer status reporting format when there is

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sufficient uplink bandwidth . . . .3 Petitioner asserts that Malkamaki meets

the designating limitation by disclosing that, when one or more buffers has

data above a zero threshold (or above a non-zero threshold), a buffer status

report is designated and subsequently communicated. Pet. 33 (citing Ex.

1012 7, 20, 60; Ex. 1003 167).

We do not agree that Petitioner cites any disclosure from Malkamaki

that expressly meets our construction of the designating limitation

designating a buffer status reporting format based at least in part on the

detection of a pre-selected condition corresponding to the buffers. In fact,

Petitioners argument, and each of the relied upon paragraphs of Malkamaki,

exclusively discusses using the buffer data threshold (the pre-selected

condition) solely as a trigger for sending buffer status information, not for

selecting one of several buffer status reporting formats to use for the

transmittal of that information. In other words, according to Malkamaki, the

pre-selection condition is used expressly to decide whether or not to send

buffer status information to the base station. Ex. 1012 7, 20. Malkamaki,

however, does not disclose expressly that the pre-selection condition is also

used to decide whether to use a long or short reporting format for that

transmission. Id. Instead, Malkamakis only discussion of deciding the

length of the buffer status reporting format takes place in the context of

determining the available space in the transport block. Id. 60.

Petitioner points to Malkamakis statement that the size of the SI

data item/fieldi.e. the SI field lengthcan vary depending on the

3 Each of claims 1, 12, 23, and 24 recites slightly different wording for the

designating limitation, but both parties agree the claimed subject matter is

equivalent for purposes of this analysis. See, e.g., Pet. 14, Prelim. Resp. 8.

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scheduling information being reported, and in particular there could be

different SI field lengths for (sets of) different scheduling information. Pet.

33 (citing Ex. 1012 [0022]). This portion of Malkamaki only discloses

that the SI field length may vary for different types of scheduling

information. This disclosure, however, does not state expressly that the size

of the SI data item/field may vary for a particular type of scheduling

information, i.e., it does not disclose that the field length may vary if the

only scheduling information being reported is buffer status information. Nor

does it state expressly that the different SI field length is chosen based on a

pre-condition corresponding to the buffers. This portion of Malkamaki,

therefore, does not disclose the designating limitation. Moreover, Petitioner

has not argued or shown that Malkamaki necessarily functions in

accordance with, or includes, the designating limitation, as required under

the principals of inherency. Perricone v. Medicis Pharm. Corp., 432 F.3d

1368, 137576 (Fed. Cir. 2005); Pet. 3233.

In the cited declaration testimony, Dr. La Porta simply repeats the

arguments contained in the Petition, stating that when one or more buffers

has data above some threshold, a buffer status report is designated and

subsequently communicated. Ex. 1003 167 (citing Ex. 1012 7, 10, 22,

25, 27, 60). Based on this determination, Dr. La Porta concludes that

Malkamaki discloses the designating limitation. Id. at 168. Like the

Petition, Dr. La Porta fails to explain how Malkamaki expressly discloses

the designating limitation and fails to even assert that the designating

limitation is inherently disclosed by Malkamaki.

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We, therefore, are not persuaded that Petitioner has shown a

reasonable likelihood of prevailing in its assertion that claims 124 of the

820 patent are anticipated by Malkamaki.

3. Obviousness

a. Malkamaki

Petitioner asserts that claims 124 of the 820 patent are obvious over

Malkamaki. Pet. 4755.

(1) Claims 14, 615, and 1724

Here, Petitioner does not assert that a person of ordinary skill would

have found the designating limitation obvious. Id. Instead, Petitioner

asserts that to the extent Patent Owner may argue Malkamaki does not

explicitly disclose detecting one of a plurality of pre-selected conditions

corresponding to the plurality of buffers, (the detecting limitation) it

would have been obvious to include in the scheme of Malkamaki. Id. at 45;

see also Ex. 1003 155168 (Dr. La Porta testifying on the obviousness of

the detecting limitation, but not of the designating limitation). Petitioner,

with this ground, therefore, does not cure sufficiently the deficiency in the

prior groundthat Malkamaki does not disclose designating a buffer status

reporting format based at least in part on the detection of a pre-selected

condition corresponding to the buffers.

(2) Claims 5 and 16

Claims 5 and 16 further limit the designating limitation such that it

designates the long buffer status reporting format when multiple buffers for

different radio bearer groups store data beyond a pre-selected threshold.

Petitioner states that one of ordinary skill in the art would know that it is

possible and desirable to detect and report in a buffer status report when

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multiple buffers store data beyond a pre-selected threshold.4 Pet. 48.

Although Petitioner, thus, addresses a portion of the designating limitation in

this obviousness ground, Petitioners logic is directed solely to the

characteristics of the pre-selected conditions. Petitioner does not discuss

whether it would have been obvious to use such a pre-selected condition to

designate the buffer status reporting format. Thus, Petitioner does not

address the deficiency we noted with respect to anticipation of the

designating limitation by Malkamaki.

(3) Conclusion

For the same reasons discussed above regarding anticipation of claims

124 by Malkamaki, we are not persuaded that Petitioner has shown a

reasonable likelihood of prevailing in its assertion that claims 124 would

have been obvious over Malkamaki.

b. Malkamaki and Pederson

Petitioner asserts that claims 124 of the 820 patent are obvious over

the combination of Malkamaki and Pederson. Pet. 55. Here, Petitioner does

not apply Pederson in an attempt to cure the deficiency (discussed above) of

Malkamaki not disclosing expressly the designating limitation. Id. Instead,

similar to the asserted ground of obviousness over Malkamaki, Petitioner

incorporates certain teachings from Pederson into Malkamaki in order to

meet the detecting limitation. Id. Thus, for the same reasons regarding

4 It is unclear whether this section of the brief addresses obviousness over

Malkamaki by itself, as expressed in the heading (Pet. 47), or obviousness

over a combination of Malkamaki and Pederson or some other reference.

See Pet. 4748 (One of ordinary skill in the art would be motivated to combine this aspect of the TBSR references with the invention of

Malkamaki. . .).

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anticipation and obviousness of claims 124 by Malkamaki, we are not

persuaded that Petitioner has shown a reasonable likelihood of prevailing in

its assertion that claims 124 would have been obvious over Malkamaki and

Pederson.

c. Malkamaki and Ye

Petitioner asserts that claims 124 of the 820 patent are obvious over

the combination of Malkamaki and Ye. Pet. 5559.

Here, Petitioner asserts that, to the extent Patent Owner may argue

Malkamaki does not disclose wherein the designating designates the long

buffer status reporting format when there is sufficient uplink bandwidth to

communicate using the long buffer status reporting format, it would be

obvious to modify the scheme of Malkamaki to designate the long buffer

status reporting format when there is sufficient uplink bandwidth in view of

Ye. Pet. 56. Although this assertion addresses a portion of the designating

limitation, it does not address the portion of the limitation that we have

determined to be lacking in Malkamaki. Specifically, instead of explaining

how Ye cures the deficiency that Malkamaki does not disclose designating a

long or short buffer status based at least in part on a pre-selected condition

corresponding to the buffers, Petitioner only addresses why it would have

been obvious to designate a certain format based on the condition of the

uplink bandwidth. Pet. 5557; see also Ex. 1003 166176 (Dr. La Porta

testifying on the obviousness of the communicating limitation (in which

Petitioner includes the wherein clause of the designating limitation), but

not of the portion of the designating limitation related to the pre-selected

conditions).

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Thus, for the same reasons regarding anticipation and obviousness of

claims 124 by Malkamaki, we are not persuaded that Petitioner has shown

a reasonable likelihood of prevailing in its assertion that claims 124 would

have been obvious over Malkamaki and Ye.

CONCLUSION

Upon consideration of the Petition and Preliminary Response, we are

not persuaded that there is a reasonable likelihood that Petitioner will prevail

on at least one alleged ground of unpatentability with respect to the 820

patent. We, therefore, decline to institute inter partes review on any of the

asserted grounds as to any of the challenged claims. 37 C.F.R. 42.108.

ORDER

It is ordered that the Petition is denied as to all challenged claims, and

no trial is instituted.

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PETITIONER:

Joseph Micallef

iprnotices@sidley.com

Jeffrey Kushan

iprnotices@sidley.com

Howard Levin

hlevin@mavllp.com

PATENT OWNER:

Barry Bumgardner

barry@nelbum.com

Steven Latimer

brannon@nelbum.com

Amedeo Ferraro

CCE-IPR@martinferraro.com