Apple Inc.v.Cellular Communications Equipment LLCDownload PDFPatent Trial and Appeal BoardJul 21, 201512289825 (P.T.A.B. Jul. 21, 2015) Copy Citation 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 IPR2015-00578 Patent 8,055,820 B2 2 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). IPR2015-00578 Patent 8,055,820 B2 3 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”). IPR2015-00578 Patent 8,055,820 B2 4 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 IPR2015-00578 Patent 8,055,820 B2 5 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 IPR2015-00578 Patent 8,055,820 B2 6 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. IPR2015-00578 Patent 8,055,820 B2 7 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 IPR2015-00578 Patent 8,055,820 B2 8 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 IPR2015-00578 Patent 8,055,820 B2 9 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. IPR2015-00578 Patent 8,055,820 B2 10 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. IPR2015-00578 Patent 8,055,820 B2 11 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 IPR2015-00578 Patent 8,055,820 B2 12 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. . .”). IPR2015-00578 Patent 8,055,820 B2 13 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). IPR2015-00578 Patent 8,055,820 B2 14 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. IPR2015-00578 Patent 8,055,820 B2 15 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 Copy with citationCopy as parenthetical citation