Dali Wireless, Inc.

Patent Trials and Appeals Board

Nov 16, 2021

IPR2021-00842 (P.T.A.B. Nov. 16, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Entered: November 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CORNING OPTICAL COMMUNICATIONS LLC,
Petitioner,
v.
DALI WIRELESS INC.,
Patent Owner.

IPR2021-00842
Patent 10,433,261 B2

Before MELISSA A. HAAPALA, Vice Chief Administrative Patent Judge,
and KARL D. EASTHOM and SHARON FENICK, Administrative Patent
Judges.
FENICK, Administrative Patent Judge.
DECISION

Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Petitioner Corning Optical Communications LLC filed a Petition
(Paper 2, “Pet.”) requesting inter partes review of claims 1–3 and 8–11 (the
“challenged claims”) of U.S. Patent No. 10,433,261 B2 (“the ’261 patent”).
Patent Owner Dali Wireless Inc. filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). Patent Owner disagrees with Petitioner’s contentions
regarding the unpatentability of the challenged claims. Prelim. Resp. 6–16.
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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.”
For the reasons that follow, we do not institute an inter partes review.
II. BACKGROUND
A. Real Parties in Interest
Petitioner identifies itself, Corning Inc., and Corning Research &
Development Corp. as real parties in interest. Pet. 1. Patent Owner
identifies itself as the real party in interest. Paper 3 (Patent Owner’s
Mandatory Notices), 1.
B. Related Matters
Petitioner identifies Dali Wireless, Inc. v. Corning Optical
Communications LLC, No. 3:20-cv-06469-EMC (N.D. Cal.) (“the related
litigation”) as a related matter. Pet. 1 & n.1. Patent Owner also identifies a
case with the same case number. Paper 3, 1; see Prelim. Resp. v, 17.
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C. The ’261 Patent (Ex. 1001)
The ’261 patent is titled “Self-Optimizing Distributed Antenna
System Using Soft Frequency Reuse,” and generally relates to determining
carrier power for distributed antennas in a distributed antenna system (DAS)
in order to maximize the number of satisfied users and the capacity of
satisfied users. Ex. 1001, code (57), 1:51–55, 1:61–64.
A DAS network transports radio signals from a central facility where
base station processing is performed to a set of distributed antennas
connected to the central facility by a high-bandwidth network. Id. at 3:53–
59. The area to be served may be divided into cells that are served by
several antennas, including a central antenna and other antennas. Id. at
1:44–49, 2:3–7.
The system quality of service (QoS) is a function of the number of
satisfied users, that is, users for which the system has provided at least a
minimum throughput. Id. at 4:60–62. However, certain frequency reuse
schemes and power settings for antennas meant to reduce inter-cell
interference can cause issues for users at the center of the cell, or for users at
the cell edge. Id. at 4:15–34, 4:63–5:1.
Thus, the ’261 patent presents a way for to dynamically allocate
power to maximize the number of satisfied users and capacity for those
users. Id. at 8:17–19. This is done via a “power self-optimization” (PSO)
technique, a decentralized algorithm performed at each cell. Id. at 12:12–15.
The method sets a power differential (ΔP) between carriers transmitted by an
antenna in order to provide improved performance on key performance
indicators. Id. at code (57), 1:19–33, 2:13–16, 13:19–22, 14:19–34, 13:36–
37, 14:39–49.
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Two key performance indicators (KPIs) are used: KPISU, the number
of satisfied users; and KPICSU, the capacity of satisfied users. Id. at 1:61–64,
10:4–43, 13:19–21. Figure 4 of the ’261 patent, reproduced below, is a
block diagram of the self-optimization algorithm for setting the power
differential. Id. at 2:33–35, 12:16–25.

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Figure 4 illustrates an algorithm in which the transmission power is adjusted
by comparing the current KPI, calculated at the end of current phase, and the
last KPI, calculated at the end of last phase. Id. at 12:26–29.
The algorithm uses a parameter t, which can take two values, 1 and -1.
Id. at 12:60. A value of 1 indicates an incremental increase in the power
differential and a value of -1 indicates a decrease in the power differential.
Id. at 12:60–62. The algorithm additionally uses a parameter c, which is
used to cause the algorithm to end, rather than continuously oscillating
around optimal power differential. Id. at 12:63–65. A parameter p is used,
which provides the value of power differential increments (or decrements) in
the iterations of the algorithm, and parameters pmax, and pmin are maximum
and minimum values of power differentials, providing boundaries for the
algorithm. Id. at 12:30–33, 12:66–13:3, 13:25–26.
As shown in Figure 4, the algorithm starts by setting t, c, and ΔP to
zero and establishing values for p, pmax, and pmin. Id. at 13:24–26. When ΔP
is set to zero, this indicates that there is initially no difference between the
power level at which different carriers are transmitted. Id. at 13:36–37.
KPISU and KPICSU are evaluated and their values are assigned to
KPI*SU and KPI*CSU respectively. Id. at 13:36–42. Next, the power
differential is modified by the value of t (positive for an increment in the
previous power differential, negative for a decrement in the previous power
differential) times p (power differential increment). Id. at 12:1–13:1, 13:43–
46. As long as certain boundary conditions are not exceeded, the KPISU after
the new power differential is determined is compared to the stored previous
value KPI*SU. Id. at 13:59–61. If the change in power differential that has
just occurred has reduced the KPISU then the right-hand loop changes t to –t
(which will result in reversing a previous increase or decrease in ΔP) and
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increments c by 1 and a new iteration will begin. Id. at 13:61–65, Fig. 4. If
KPISU is greater than KPI*SU, indicating a positive change in the number of
satisfied users due to the last iteration, a new iteration begins without a
change in sign for t, and ΔP will be further increased (or decreased if the
previous iteration decreased it). Id. at 13:1–3, 13:66–14:7, Fig. 4. If the
number of satisfied users is the same as in the prior iteration (KPISU is equal
to KPI*SU), then the capacity metric KPICSU is used to determine if capacity
for those users was increased by the previous change in ΔP, and if it was,
then another iteration of the increment or decrement is performed. Id. at
13:3–7, 14:8–18.
D. Illustrative Claim
Claim 1 is only challenged independent claim of the ’261 patent.
Claim 1 is reproduced below:
1. A method of determining a transmission power of a digital
remote unit (DRU) in a distributed antenna system (DAS), the
method comprising:
a) setting a transmission power level for the DRU;
b) determining a key performance indicator related to a
number of satisfied users at the transmission power;
c) iteratively adjusting a transmission power level for the
DRU to increase the key performance indicator related to the
number of satisfied users; and
d) setting the transmission power level for the DRU at an
iterated power level.
Ex. 1001, 18:21–31.
A. Prior Art Relied Upon
Petitioner relies on the following reference (Pet. 1):
Venkatraman et al., US 2011/0244914 A1, pub. Oct. 6, 2011 (Ex.
1005) (“Venkatraman”).
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B. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the claims on the following
grounds, relying on a Declaration from James A. Proctor Jr. (Ex. 1003). Pet.
3, 23–43.
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1–3, 8–11 103 Venkatraman
III. ANALYSIS
A. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [inter partes] review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden never shifts to
Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
proof in inter partes review). Furthermore, Petitioner must explain with
particularity how the prior art would have rendered the challenged claims

1 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 for applications filed on
or after March 16, 2013. Petitioner argues that August 17, 2010 is the
earliest possible effective date of the ’508 patent, and its expert uses this
date in his analysis. Pet. 9, 18; Ex. 1003 ¶¶ 30, 32, 33; see Ex. 1001, code
(60). In the related litigation, Patent Owner similarly argues that the priority
date for the ’508 patent is August 17, 2010. Ex. 2009, 2; Ex. 2010, 12.
Accordingly, for the purpose of institution, we apply the pre-AIA version of
35 U.S.C. § 103. Our analysis and determination remain the same under
either the pre- or post-AIA versions of 35 U.S.C. § 103.
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unpatentable. 35 U.S.C.A. § 312(a)(3); 37 C.F.R. § 42.104 (“The petition
must specify where each element of the claim is found in the prior art
patents or printed publications relied upon.”).
Under 35 U.S.C. § 103(a), a claimed invention is unpatentable if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR, 550 U.S. at 406. The question of obviousness
is resolved on the basis of underlying factual determinations, including (1)
the scope and content of the prior art; (2) any differences between the
claimed subject matter and the prior art; (3) the level of skill in the art; and
(4) objective evidence of nonobviousness, i.e., secondary considerations.
See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Relying on the testimony of Mr. Proctor, Petitioner contends that
a person of ordinary skill in the art at the time of the applications
of the patents-in-suit (“POSA”) would have had at least: (1) a
bachelor’s degree in electrical engineering; and (2) a minimum
of 3–4 years of industry experience in wireless communications
networks and engineering. However, an individual with an
advanced degree in electrical engineering would require less
industry experience (e.g., 1–2 years).
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Pet. 12 (citing Ex. 1003 ¶¶ 25–28 (Mr. Proctor’s discussion of level of
ordinary skill “at the time the claimed invention was made”)). Patent Owner
does not offer an alternate proposed level of ordinary skill in the art or
comment on Petitioner’s proposal. Prelim. Resp.
For purposes of this Decision on Institution, we adopt Petitioner’s
proposed level of ordinary skill in the art. This level of skill comports with
the teachings of the ’261 patent and the asserted prior art.
C. Claim Construction
In an inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b), including construing the claims in
accordance with the ordinary and customary meaning of such claims as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. 37 C.F.R. § 42.100(b). We apply the claim
construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc).
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
Only those terms that are in controversy need be construed, and only
to the extent necessary to resolve the controversy. Nidec Motor Corp., 868
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F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)).
Petitioner requests construction of three terms: “key performance
indicator related to a number of satisfied users at the transmission power”
(claim 1 and all challenged claims by dependency), “a second key
performance indicator related to a capacity for the number of satisfied users”
(claim 8 and claims 9 and 10 by dependency), and “digital remote unit
(DRU)” (claim 1 and all challenged claims by dependency). Pet. 14–19.
Patent Owner addresses these arguments. Prelim. Resp. 6–10.
With respect to the construction of “key performance indicator related
to a number of satisfied users at the transmission power,” Petitioner and
Patent Owner each set forth a proposed construction:
Petitioner’s Proposed Construction Patent Owner’s Proposed
Construction
“a key performance indicator
defining the percent of users that
can achieve the targeted service bit
rate.”
“a key performance indicator related
to a number of users that can achieve
a targeted service bitrate.”
Pet. 14–16; Prelim. Resp. 7–8.
Petitioner argues that the concept of a “key performance indicator”
within this claim term does not require construction. Pet. 14–15. Patent
Owner’s construction also uses “key performance indicator.” Prelim. Resp.
7–8. On the present record, we agree that “key performance indicator” does
not require an explicit construction. See Nidec, 868 F.3d at 1017.
With respect to a KPI being “related to a number of satisfied users,”
Petitioner contends that the specification provides an explicit definition, that
the KPI “defin[es] a percent of satisfied users,” where satisfied users are
“users that can achieve the targeted service bit rate.” Pet. 15–16 (quoting
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Ex. 1001, 10:4–24). Petitioner argues that the capitalization of the initial
letters of “Number of Satisfied Users” in the specification “make[s] it
unambiguous that [the patentees] were defining this term.” Id. at 15. Patent
Owner argues that this definition is non-limiting, that no clear intention is
evident to restrict the invention to the embodiment in which KPISU is
expressed as percentage of users, and notes that the district court in the
related litigation found no clear intent to restrict the term to the disclosed
embodiment. Id. at 7–8 (citing Ex. 2002 (claim construction order in the
related litigation), 24).
We are not persuaded by Petitioner’s arguments that the specification
provides an explicit definition for “number of satisfied users,” but rather
agree with Patent Owner’s construction. Other portions of the specification
discuss “the number of satisfied users” without further definition or
reference to the definition Petitioner cites. See Ex. 1001, 5:6–7, 8:15–17.
The portion of the specification that uses percentage of satisfied users as the
value KPISU for continues to provide a calculation of a quality of service
function as a weighted combination of KPISU and KPICSU; in this calculation
the use of a percentage for KPISU allows calculation of a QoS independent of
the number of users. Id. at 10:4–11:7. However, claim 1 does not use a
calculated QoS, but rather only compares values of KPISU over time
increments. For these reasons, we determine that the proper construction of
“a key performance indicator defining the percent of users that can achieve
the targeted service bit rate” is not limited to a percentage, and we adopt
Patent Owner’s suggested construction of “a key performance indicator
related to a number of users that can achieve a targeted service bitrate.”
We note that the construction we adopt is broader than and
encompasses Petitioner’s proposed construction. See Pet. 29 (describing
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Patent Owner’s construction as applied “broadly to include any
measurement of signal quality”); Ex. 1010, 20 (Patent Owner’s opening
claim construction brief) (describing Patent Owner’s construction as “not
limited to any specific metric such as ‘percent’”). Thus, our determination
that Petitioner does not show a likelihood of success under our construction
would not change were we to have adopted Petitioner’s proposed
construction.
With respect to “a second key performance indicator related to a
capacity for the number of satisfied users” and “digital remote unit (DRU),”
specifically discussed by the parties, and with respect to all other claim
terms recited in the challenged claims, we determine that construction is not
necessary to resolve the controversy. See Nidec, 868 F.3d at 1017.
D. Asserted Obviousness of Claims 1–3 and 8–11 over Venkatraman
Petitioner argues that claims 1–3 and 8–11 would have been obvious
over Venkatraman. Pet. 23–43. Patent Owner asserts certain deficiencies in
Petitioner’s obviousness case. Prelim. Resp. 1, 10–16.
1. Venkatraman
Venkatraman is titled “System and Method for Performance
Enhancement in Heterogeneous Wireless Access Network Employing
Distributed Antenna System,” and describes dynamic optimization of power
levels in a distributed antenna system in order to enhance performance of the
system. Ex. 1005, codes (54), (57). Venkatraman describes a DAS system
that includes a service module and multiple remote antenna units in different
locations, for example, on different floors of a building and/or in different
locations on one floor of a building. Id. ¶¶ 31–32, Fig. 1. The remote
antenna units transmit downlink signals to user equipment (UE). Id. ¶ 32,
Fig. 1. “Each of the remote antenna units transmits downlink signals within
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an interior that travel multiple paths before reaching the UE.” Id. ¶ 33. As a
result, a UE may receive multiple copies of the transmitted signals, which
may result in interference, or receive signals through a wall or other
obstruction, which affects the quality of service provided to the user of the
UE. Id. ¶¶ 33–34.
In order to address interference, Venkatraman describes a way to
optimize the transmission power level of the DAS by varying the gains of
remote antenna units by analyzing feedback information from UEs relating
to downlink rate or channel quality for each DAS cluster serving a given
area. Id. ¶¶ 7–12, 35. Optimization of the power level for only one antenna
unit or a subset of antenna units may also occur. Id. at code (57), ¶¶ 8, 12,
16. In one embodiment, the downlink transmission power from each remote
antenna unit is increased in steps from an initial power setting, and the
algorithm adjusts power until the cluster capacity saturates. Id. ¶¶ 35, 37,
38. Figure 2 of Venkatraman, reproduced below, illustrates an exemplary
process for optimizing the downlink transmission power of the remote
antenna units within a DAS. Id. ¶ 36.
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As seen in Figure 2, an exemplary process for setting Ptx (transmission
power) is depicted. In “initialize” step 212, Ptx is set to an initial value,
Pinitial. Id. at ¶ 37. Additionally, in step 212, an initial average capacity
value for the system is set at 0. Id. In steps 214 and 216, signal information
is collected from UEs, and a new average capacity Ci of the system for the
current iteration is calculated. Id. at ¶¶ 36, 37. In a decision step 218, the
average capacity Ci is compared to the prior average capacity Ci-1, and if the
average capacity of the system has improved, step 220 is performed, in
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which Ptx is increased by ΔP. Id. At step 222 Ptx is evaluated to make sure it
is not set at more than a predetermined max Pmax, and if it is not, the process
is iterated starting again at step 214. Id. If the max has been exceeded (step
222 “NO” branch), or when at some point a change in Ptx occurs that reduces
the average capacity of the system such that the capacity for the current
iteration is less than the average capacity for the prior iteration (step 218
“NO” branch), in step 224 the prior change in Ptx is reverted by subtracting
ΔP from Ptx. Id. at ¶ 37. In other embodiments, reducing downlink
transmission power may provide an improved quality of service. Id. at ¶ 38.
2. Claim 1
Petitioner contends that the method of claim 1 would have been
obvious over Venkatraman. Pet. 23–33. Patent Owner presents arguments
countering certain aspects of these contentions. Prelim. Resp. 10–16.
a) Preamble and First Recited Method Step
Petitioner asserts that, to the extent the preamble is limiting,
Venkatraman teaches a method of determining a transmission power for a
digital remote unit in its disclosure of a method that sets the power from
remote antenna units. Pet. 23–24 (citing Ex. 1005 ¶¶ 7, 15, 18).
Petitioner cites the initial setting of a transmission power Ptx as
teaching the first step of claim 1, “setting a transmission power level for the
DRU.” Id. at 24–26 (citing Ex. 1005, code (57), ¶¶ 11, 12, 16, 31, 36, 37,
claims 18, 19, Fig. 1; Ex. 1003 ¶¶ 73–74). With respect to the claimed
“DRU,” Petitioner argues that one of ordinary skill would recognize that
Venkatraman’s disclosure would apply to analog or digital units, and that
under the proposed constructions, a remote unit of Venkatraman would teach
the DRU of this limitation. Id. at 24–25 (citing Ex. 1005, code (57), ¶¶ 11,
12, 16, 31, 36, claims 18, 19, Fig. 1; Ex. 1003 ¶¶ 73–74).
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b) Second Recited Method Step: “determining a key performance
indicator related to a number of satisfied users at the transmission power”
With respect to the second recited step of the method of claim 1,
“determining a key performance indicator related to a number of satisfied
users at the transmission power,” Petitioner argues that Venkatraman teaches
this step in its disclosure of “collecting signal information from UEs to
estimate average capacity (Ci).” Pet. 26 (citing Ex. 1005 ¶¶ 35–37).
Petitioner cites Venkatraman’s disclosure that feedback information from
UEs is obtained and analyzed “to determine average data rate in the served
cluster.” Id. at 26 (quoting Ex. 1005 ¶ 35).
Petitioner asserts that “Venkatraman’s disclosures are aimed at
maximizing the same aspects of a DAS that are disclosed in the ’261 patent
as the goal of the alleged invention.” Id. at 27 (citing Ex. 1001, 1:55–56,
1:61–64). Petitioner argues that “the number of satisfied users as well as the
capacity of satisfied users” are the KPIs described in the ’261 patent. Id. at
27 (quoting Ex. 1001, 1:61–64). However, while both of these KPIs may be
discussed in the ’261 patent, claim 1’s “key performance indicator,” as we
have construed it, is “a key performance indicator related to a number of
users that can achieve a targeted service bitrate.” See § III.C.
Patent Owner asserts that, because Venkatraman discloses average
data rate, rather than number of satisfied users, Venkatraman does not teach
or suggest this limitation. Prelim. Resp. 11–13. Petitioner argues that, in the
’261 patent, the presence of the variable Cth in the calculation of KPISU
shows “[t]he equivalence of capacity and targeted service bitrate.” Pet. 28
(citing Ex. 1001, 10:25–26, 18:61–63; Ex. 1003 ¶¶ 80–82). However, Cth is
used to determine, for each user in a set of users, whether the capacity for
that user has exceeded a threshold capacity, thus obtaining a value for the
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number of such users, which may then be divided by the number of total
users to obtain a percent of satisfied users. Ex. 1001, 10:9–29. In contrast,
Petitioner admits that average bitrate over all mobile devices in the cluster is
being evaluated in Venkatraman. Pet. 27–28 (citing Ex. 1005, Fig. 2). We
agree with Patent Owner that the cited teachings of Venkatraman disclose
average data rate, rather than an indicator related to a number of satisfied
users. Prelim. Resp. 11–13; Pet. 27–28. Therefore, as Patent Owner argues,
these cited portions do not teach or suggest the disputed limitation. Prelim.
Resp. 11–13. Even if capacity and targeted service bitrate may arguably be
the same, Petitioner does not adequately show how a calculation of an
average capacity over all users in Venkatraman teaches or suggests a key
performance indicator related to a number of satisfied users, each achieving
a targeted service bitrate.
Petitioner additionally argues that, if maximizing average capacity is
not considered to teach the recited key performance indicator of claim 1, “it
would have been obvious to one of ordinary skill in the art to set a lower
threshold value in view of the data and information collected in
Venkatraman.” Id. at 28–29 (emphasis added) (citing Ex. 1003 ¶ 82).
However, Petitioner does not explain this assertion, or assert that setting a
lower threshold value would cause a calculation of average capacity to teach
or suggest a determination of a number of satisfied users. The cited portions
of Venkatraman discuss the comparison of a calculated average capacity in a
cluster to a prior calculation of average capacity in a cluster. Ex. 1005 ¶ 37,
Fig. 2 (step 218). Venkatraman does not discuss a comparison to a threshold
value except for a maximum power level, which does not appear to be
relevant, and Petitioner does not explain what threshold value in
Venkatraman it proposes to set to a lower value, the reason that one of
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ordinary skill would make such a change, or how the effect would teach or
suggest the claim limitation.
Petitioner also cites Venkatraman’s teaching that signal information
from UEs is collected, including “the number of UEs having a QOS . . .
exceeding a QOS threshold.” Pet. 29 (quoting Ex. 1005 ¶ 37), 30.
Petitioner argues that a person of ordinary skill (POSA) “would readily
understand that, in addition to using the average capacity to define the KPI, a
POSA could easily use the ‘number of UEs having a QOS . . . exceeding a
QOS threshold.’” Id. (quoting Ex. 1005 ¶ 37; citing Ex. 1003 ¶ 82)
(emphasis added). However, Petitioner’s arguments regarding what a person
of ordinary skill “could easily” have done do not address whether one of
ordinary skill would have had a reason to make the proposed change.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (“[O]bviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed invention.”). Petitioner does not provide any reasoning to
support the use of Venkatraman’s collected data relating to the number of
UEs having a QOS exceeding a threshold in place of the key performance
indicator described in Venkatraman, average capacity over all UEs. See Pet.
28–30.
c) Conclusion – Claim 1
For the reasons above, we determine that Petitioner has not shown a
reasonable likelihood of prevailing in showing claim 1 would have been
obvious over Venkatraman.
3. Claims 2, 3, and 8–11
Petitioner’s arguments regarding the unpatentability of claims 2, 3,
and 8–11 rely on the arguments made with respect to claim 1. See Pet. 34–
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43. Therefore, for the same reasons, we determine that Petitioner has not
shown a reasonable likelihood of prevailing in showing claims 2, 3, and 8–
11 would have been obvious over Venkatraman.
IV. CONCLUSION
After considering the evidence and arguments presented in the
Petition and the Preliminary Response, we determine that Petitioner has not
demonstrated a reasonable likelihood that it would prevail with respect to its
unpatentability challenges. Accordingly, we do not institute an inter partes
review.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’261 patent; and
FURTHER ORDERED that no inter partes review is instituted.

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PETITIONER:

Christopher Douglas
Ross Barton
Caleb Bean
ALSTON & BIRD LLP
chirstopher.douglas@alston.com
ross.barton@alston.com
caleb.bean@alston.com

PATENT OWNER:

David Schumann
Sang Hui Kim
FOLIO LAW GROUP PLLC
david.schumann@foliolaw.com
michael.kim@foliolaw.com