Apple Inc.v.Cellular Communications Equipment LLC

Patent Trial and Appeal Board

Jul 21, 2015

12289825 (P.T.A.B. Jul. 21, 2015)

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. 2–3; Paper 5, 2–3.
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. 3–4, 22–59):
1

Statutory Ground Basis
2
Challenged Claims
§ 102 Malkamaki 1–24
§ 103 Malkamaki 1–24
§ 103 Malkamaki and Pederson 1–24
§ 103 Malkamaki and Ye 1–24
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
1:47–50. 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 1:52–55. The different
formats may be chosen in such a way as to reduce overhead on the network.
Id. at 1:47–50. 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 8:40–42. This format includes radio bearer group identity 510
(which indicates the buffer whose status is being reported) and buffer size
520. Id. at 8:42–47. Figure 6 of the ’820 patent is reproduced below.

Figure 6, above, illustrates one example of a long buffer status reporting
format. Id. at 8:51–53. This format includes an entry for the buffer size of
each of four radio bearer groups, 610, 620, 630, and 640. Id. at 8:53–57.
Each of the four groups in the long buffer status reporting format is
comprised of six bits. Id. at 8:57–58.
In one exemplary embodiment, user-equipment buffers are monitored
until at least one buffer contains data to be communicated. Id. at 8:17–20.
If only one of the monitored buffers contains data, the short form buffer
status format is used. Id. at 22–24. 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 8:25–31. 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 8:20–24, 31–39.
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 16–19 (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. 12–14; Prelim. Resp. 4–5. 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, 123–29).
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 status—with 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
term—“the designating limitation”—is “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]. Malkamaki’s 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
SI—examples 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 1–24 of the ’820 patent are anticipated
by Malkamaki. Pet. 30–44.
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,
Petitioner’s 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, Malkamaki’s 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 Malkamaki’s statement that “the size of the SI
data item/field—i.e. the SI field length—can 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, 1375–76 (Fed. Cir. 2005); Pet. 32–33.
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 1–24 of the
’820 patent are anticipated by Malkamaki.
3. Obviousness
a. Malkamaki
Petitioner asserts that claims 1–24 of the ’820 patent are obvious over
Malkamaki. Pet. 47–55.
(1) Claims 1–4, 6–15, and 17–24
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 ¶¶ 155–168 (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 ground—that 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, Petitioner’s 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
1–24 by Malkamaki, we are not persuaded that Petitioner has shown a
reasonable likelihood of prevailing in its assertion that claims 1–24 would
have been obvious over Malkamaki.
b. Malkamaki and Pederson
Petitioner asserts that claims 1–24 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. 47–48 (“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 1–24 by Malkamaki, we are not
persuaded that Petitioner has shown a reasonable likelihood of prevailing in
its assertion that claims 1–24 would have been obvious over Malkamaki and
Pederson.
c. Malkamaki and Ye
Petitioner asserts that claims 1–24 of the ’820 patent are obvious over
the combination of Malkamaki and Ye. Pet. 55–59.
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. 55–57; see also Ex. 1003 ¶¶ 166–176 (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 1–24 by Malkamaki, we are not persuaded that Petitioner has shown
a reasonable likelihood of prevailing in its assertion that claims 1–24 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