Post on 05-May-2018
UNITED STATES PATENT AND TRADEMARK OFFICE
___________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________________
SAMSUNG ELECTRONICS CO., LTD.
Petitioner
v.
HUAWEI TECHNOLOGIES CO., LTD.
Patent Owner
___________________
Case IPR2017-1465
Patent No. 8,885,587
___________________
PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 8,885,587
UNDER 35 U.S.C §312 AND 37 C.F.R. § 42.104
Mail Stop “PATENT BOARD”
Patent Trial and Appeal Board
U.S. Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
U.S. Patent No. 8,885,587
Petition for Inter Partes Review
- i -
`
TABLE OF CONTENTS
I. INTRODUCTION ........................................................................................... 1
II. MANDATORY NOTICES ............................................................................. 1
A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1)) ...................................... 1
B. Related Matters (37 C.F.R. §42.8(b)(2)) ............................................... 2
C. Lead and Backup Counsel and Service Information (37 C.F.R.
§42.8(b)(3)-(4)) ..................................................................................... 2
III. GROUNDS FOR STANDING ........................................................................ 3
IV. PAYMENT OF FEES ..................................................................................... 3
V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 3
VI. OVERVIEW OF THE TECHNOLOGY ......................................................... 4
A. Third Generation Partnership Project (“3GPP”) ................................... 4
B. Network Architecture for 3GPP Wireless Telephony ........................... 6
C. Downlink Scheduling ............................................................................ 7
D. Hybrid Automatic Repeat Request (“HARQ”) ..................................... 8
E. Carrier Aggregation ............................................................................... 9
VII. THE ’587 PATENT .......................................................................................11
A. Overview .............................................................................................11
B. Level of Ordinary Skill in the Art .......................................................13
VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS .............................14
A. “system-linked-downlink component carrier” (Claims 3-5, 9-11) .....14
U.S. Patent No. 8,885,587
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B. “non-system-linked downlink component carrier” (Claims 3, 9) .......15
IX. OVERVIEW OF THE PRIOR ART REFERENCES ...................................16
A. Baldemair ............................................................................................16
B. TS 36.213 .............................................................................................20
C. Damnjanovic .......................................................................................22
X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ..........23
A. Ground 1: Baldemair renders obvious claims 3-5 and 9-11 ..............24
B. Ground 2: Baldemair in view of TS 36.213 renders obvious claims 3-
5 and 9-11 ............................................................................................42
C. Ground 3: Damnjanovic in view of Baldemair renders obvious claims
3-5 and 9-11 .........................................................................................51
XI. SECONDARY CONSIDERATIONS ...........................................................69
XII. CONCLUSION ..............................................................................................69
U.S. Patent No. 8,885,587
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EXHIBIT LIST
No. Short Name Exhibit
1001 ’587 Patent U.S. Patent No. 8,885,587 to Chen et al.
1002 ’587 File History File History of U.S. Patent No. 8,885,587
1003 Lyon Decl. Declaration of David Lyon, Ph.D.
1004 Baldemair U.S. Patent No. 8,472,368 to Baldemair et al.
1005 Baldemair ’962 Provisional Application No. 61/250,962 to
Baldemair et al.
1006 TS 36.213
3GPP TS 36.213 V8.5.0 (2008-12)
3rd Generation Partnership Project; Technical
Specification Group Radio Access Network;
Evolved Universal Terrestrial Radio Access (E-
UTRA); Physical layer procedures (Release 8),
available at
https://portal.3gpp.org/desktopmodules/Specifi
cations/SpecificationDetails.aspx?specificationI
d=2427 (last accessed 5/8/2017)
1007 Damnjanovic U.S. Patent Application Publication
2009/0245194 A1 to Damnjanovic et al.
1008 Huawei District
Court Complaint
Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,
Ltd. et al., Case No. 3:16-cv-02787, Dkt. 1
(N.D. Cal. May 24, 2016)
1009
Joint Claim
Construction
Statement
Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,
Ltd. et al., Case No. 3:16-cv-02787, Dkt. 124
(N.D. Cal. Apr. 7, 2017)
1010 Lyon CV Curriculum Vitae of Dr. David Lyon
1011 ’587 Infringement
Contentions
Huawei Infringement Contentions for the ’587
Patent
1012 Yaqub Decl. Declaration of Raqiz Yaqub, Ph.D.
U.S. Patent No. 8,885,587
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1013 Dahlman
ERIK DAHLMAN ET AL., 3G EVOLUTION, HSPA
AND LTE FOR MOBILE BROADBAND (2nd Ed.
2008)
1014 About 3GPP
About 3GPP Home, 3GPP: A Global Initiative,
available at http://www.3gpp.org/about-
3gpp/about-3gpp (last accessed 5/17/2017)
1015 Dahlman 4G
ERIK DAHLMAN ET AL., 4G LTE/LTE-
ADVANCED FOR MOBILE BROADBAND (2011)
(“Dahlman 4G”)
1016 R1-074408
3GPP TDoc R1-074408, Ack/Nack repetition
and Implicit Resource Allocation for PUCCH,
(Shanghai, China, Oct. 8-12, 2007), available
at
http://www.3gpp.org/DynaReport/TDocExMtg-
-R1-50b--26482.htm (last accessed 5/8/2017)
1017 Yaqub CV Curriculum Vitae of Dr. Raqiz Yaqub
1018 TR 21.900
3GPP TR 21.900 V8.0.0 (2007-09) 3rd
Generation Partnership Project; Technical
Specification Group Services and System
Aspects; Technical Specification Group
working methods (Release 8), available at
http://www.3gpp.org/ftp/Specs/archive/21_seri
es/21.900/21900-800.zip (last accessed May
23, 2017)
1019 R1-081711
R1-081711, Final Report of 3GPP TSG RAN
WG1 #52bis, available at
http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TS
GR1_53/Docs/R1-081711.zip (last accessed
May 23, 2017)
1020
Oct. 23, 1999
WayBack Machine
3GPP TSG RAN
Webpage
WayBack Machine records for 3GPP’s TSG
RAN landing page on October 23, 1999
U.S. Patent No. 8,885,587
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ACRONYM GLOSSARY
Acronym Term
2G/3G/4G Second/Third/Fourth Generation
3GPP 3rd Generation Partnership Project
LTE Long Term Evolution (4G)
UE User Equipment
LTE-A Long Term Evolution Advanced
UMTS Universal Mobile Telecommunications Systems (3G)
CC Component Carrier
ARI ACK Resource Indication
DCI Downlink Control Information
PUCCH Physical Uplink Control Channel
PDCCH Physical Downlink Control Channel
TPC Transmit Power Control
ETSI European Telecommunications Standards Institute
U.S. Patent No. 8,885,587
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I. INTRODUCTION
U.S. Patent No. 8,885,587 (“the ’587 Patent”) is directed towards feeding
back acknowledgment information (i.e., ACK/NACK information) for carrier
aggregation. The exchange of acknowledgement information from a mobile device
to a base station is well known and has been used for decades in cellular radio
technologies. It was recognized very early by the 3GPP cellular standards body
that a more flexible approach to scheduling of resources would be required for
handling ACK/NACK feedback from mobile devices to 4G/LTE base stations. As
a result and well before the earliest priority date of the ’587 Patent, participants in
the 3GPP working groups, to which the Patent Owner was a member, had already
conceived of the mechanisms described in the ’587 Patent. The ’587 Patent
merely restates these well known principles for allocating uplink resources for
feeding back acknowledgement information by reusing and adapting these existing
procedures for LTE-Advanced (LTE-A).
II. MANDATORY NOTICES
A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1))
The real parties in interest for Petitioner are (1) Samsung Electronics Co.,
Ltd., (2) Samsung Electronics America, Inc., and (3) Samsung Research America
(collectively “Samsung”).
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B. Related Matters (37 C.F.R. §42.8(b)(2))
The ’587 Patent is at issue in Huawei Techs. Co., Ltd. v. Samsung Elecs.
Co., Ltd. et al., Case No 3:16-cv-02787 (N.D. Cal.). On May 24, 2016, Huawei
sued Samsung in the U.S. District Court for the Northern District of California,
claiming that Samsung products compliant with the 3GPP standards infringe the
’587 patent (and ten other patents).
C. Lead and Backup Counsel and Service Information (37 C.F.R.
§42.8(b)(3)-(4))
The designations of counsel and address for service are:1
LEAD COUNSEL BACKUP COUNSEL
Kevin P.B. Johnson
Reg. No. 38927
kevinjohnson@quinnemanuel.com
Postal and Hand Delivery Address:
Quinn Emanuel Urquhart & Sullivan
555 Twin Dolphin Drive, 5th Floor
Redwood City, CA 94065
Tel: (650) 801-5000
Fax: (650) 801-5100
Marissa Ducca
Reg. No. 59807
marissaducca@quinnemanuel.com
Deepa Acharya
Reg. No. 64648
deepaacharya@quinnemanuel.com
Jared Newton
Reg. No. 65818
jarednewton@quinnemaneul.com
Postal and Hand Delivery Address:
777 6th Street NW, 11th Floor
Washington, DC 20001
Tel: (202) 538-8000
Fax: (202) 538-8100
Brian Mack
Reg. No. 57189
brianmack@quinnemanuel.com
Postal and Hand Delivery Address:
Quinn Emanuel Urquhart & Sullivan
1 Petitioner consents to electronic service.
U.S. Patent No. 8,885,587
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50 California St, 22nd Floor
San Francisco, CA 94111
Tel: 415.875.6300
Fax: 415.875.6700
III. GROUNDS FOR STANDING
Petitioner certifies that the ’587 Patent is available for inter partes review,
and that Petitioner is not barred or estopped from requesting an IPR challenging
claims 3-5 and 9-11 on the grounds identified in this Petition.
IV. PAYMENT OF FEES
The required fees are submitted herewith. Petitioner authorizes the Patent
Office to charge Deposit Account No. 000505708 for any additional fees required
for this filing.
V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
Petitioner challenges claims 3-5 and 9-11 of the ’587 Patent and request that
these claims be found unpatentable in view of the following references:
1. U.S. Patent No. 8,472,368 to Baldemair et al. (“Baldemair”; Ex.
1004), filed on Apr. 1, 2010 and claims priority to U.S. Provisional
App. No. 61/250,962, filed October 13, 2009.
2. 3GPP TS 36.213 V8.5.0 (2009-02); LTE; Evolved Universal
Terrestrial Radio Access (E-UTRA); Physical Layer Procedures;
Release 8 (“TS 36.213”; Ex. 1006).
3. U.S. Patent Application Publication 2009/0245194 A1 to
Damnjanovic et al. (“Damnjanovic”; Ex. 1007), filed on March 12,
2009 and claims priority to U.S. Provisional Ap. No. 61/040,609, filed
March 28, 2008, and was published on October 1, 2009.
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Pursuant to §§ 42.22(a)(1) and 42.22(b)(1)-(2), Petitioner requests
cancellation of claims 3-5 and 9-11 of the ’587 Patent on the following grounds:
Ground 1: Claims 3-5 and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over Baldemair.
Ground 2: Claims 3-5 and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over Baldemair in view of TS 36.213.
Ground 3: Claims 3-5 and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over Damnjanovic in view of Baldemair.
Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), an explanation of how the
challenged claims of the ’587 Patent are unpatentable under the above grounds and
the supporting evidence relied upon to support those challenges are set forth in
detail below in Section X, infra.
VI. OVERVIEW OF THE TECHNOLOGY
A. Third Generation Partnership Project (“3GPP”)
As cellular telecommunications technology developed in the late eighties
and nineties, network operators realized that standardization was necessary to
ensure subscriber mobility. Ex. 1012 at ¶17. 3GPP was formed to coordinate and
facilitate the development of standards for GSM (“2G”) and its later variations,
such as Universal Mobile Telecommunications Systems (“UMTS” or “3G”), Long
Term Evolution (“LTE” or “4G”), and Long Term Evolution Advanced (“LTE-
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A”). Id. at ¶19; Ex. 1013 at 21-23. 3GPP develops a set of rules, in the form of
technical specifications, that inter alia govern communication between a network
base station and a user’s mobile device, including how the base station must
exchange user data and system control messages with the mobile device.
The development of specifications by 3GPP is an ongoing, collaborative
effort involving hundreds of engineers from many companies. Ex. 1013 at 19.
3GPP captures updates in different releases, each building on each other. For
example, TS 36.213 Release 8 is an earlier version of the standard than TS 36.213
Release 10. LTE was first fully specified in Release 8 and the releases following
Release 8 include enhanced technology to LTE. LTE-A was introduced in Release
10. Ex. 1012 at ¶23.
The reason the standards build on each other is simple and relates to the
need for long term investment and backwards compatibility in common
infrastructure and mobile user equipment. For example, infrastructure (i.e., base
stations and other network components) serving millions of user terminals with
different characteristics all need to communicate together. Ex. 1013 at 35-37; Ex.
1012 at ¶24. If a newer standard were to completely overhaul the required
technology, the infrastructure currently in the market would become obsolete—
people and companies would have to purchase and develop new technology with
each new version of the standard. This backward compatibility requirement puts
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constraints on the technology that LTE and LTE-A can and cannot consider. For
example, the physical layer fundamentals need to be preserved in LTE and future
standards as it was for earlier releases, such as UMTS. Ex. 1013 at 36. Therefore,
many of the basic concepts remain the same and are available for use in newer
standards. See Ex. 1013 at 38-55; Ex. 1012 at ¶24.
B. Network Architecture for 3GPP Wireless Telephony
Wireless networks are composed of base stations, which communicate with
mobile devices wirelessly by transmitting and receiving RF signals. The base
station is commonly referred to as the eNodeB (LTE) and the mobile device is
commonly referred to as the user equipment or “UE.” A single base station
connects to multiple mobile devices in its cellular coverage area. Ex. 1003 at ¶51.
There are two directional types of wireless communication: communication
from a base station to the mobile device (“downlink”), and communication from
the mobile device to a base station (“uplink”). When a mobile device
communicates with the base station, it is unaware of other mobile devices in the
same cell region communicating with the same base station. On the other hand,
when the base station communicates, it must control both the downlink and uplink
communications such that the intended mobile device can exchange the digital
information with the base station efficiently, with as little interference from/to
other mobile devices as possible. Ex. 1003 at ¶¶52-53.
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C. Downlink Scheduling
When a mobile device wants to transmit information to the base station, the
mobile device requests the base station to establish a schedule for using the uplink
communication channel. Since there may be multiple mobile devices that want to
communicate with the base station at the same time, the base station performs
scheduling to accommodate all the mobile devices. The operation of the base
station scheduler in LTE technologies is similar in principle and operation to the
scheduler in UMTS technologies. Ex. 1013 at 46; Ex. 1003 at ¶¶57-58.
To schedule a UE transmission, the base station transmits scheduling
assignment information which is formatted as Downlink Control Information
(“DCI”) over a Physical Downlink Control Channel (“PDCCH”), which contains
scheduling information needed by the UE for transmission of the PUCCH
(Physical Uplink Control Channel), the PUSCH (Physical Uplink Shared Channel),
or for the reception by the UE of the PDSCH (Physical Downlink Shared
Channel). The use of DCI, PDCCH, PUCCH, PUSCH, and PDSCH were defined
and used in LTE technologies and later used in LTE-A technologies. Ex. 1013 at
51-52. The DCI includes various control information, including the transmission
power control (“TPC”) command, which the mobile device can use to adjust
transmission power of the uplink carrier transmissions. Ex. 1003 at ¶¶54, 59-60.
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D. Hybrid Automatic Repeat Request (“HARQ”)
Transmissions over wireless channels are subject to errors, for example, due
to variations in the received signal quality. When data is transmitted wirelessly,
the mobile device and base station need a way to determine whether the
transmission it sent was received correctly, and if not, whether it needs to send the
transmission again. Ex. 1003 at ¶61.
A retransmission scheme, known as hybrid automatic repeat request
(“HARQ”), is used to relay whether or not a transmission was sent correctly. The
HARQ retransmission scheme proposed and adopted into the LTE and LTE-A
standards is similarly designed and serves a similar purpose as it did in the UMTS
standards. Ex. 1013 at 47-49; Ex. 1003 at ¶62. When the base station sends
information to the mobile device, the mobile device determines whether the
transmitted information was received correctly or contains errors. If the mobile
device successfully received the data, the mobile device will send a positive
acknowledgement (“ACK”) to the base station. If the mobile device did not
successfully receive the data, the mobile device will send a negative
acknowledgement (“NACK”) to the base station. If the base station receives a
NACK, it may resend the same portion of data to the mobile device. These
acknowledgement messages are sent from the mobile device to the base station on
the PUCCH utilizing scheduled transmissions over what are referred to as HARQ-
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ACK resources—a well known concept in LTE and LTE-A. Ex. 1013 at 51-52;
Ex. 1003 at ¶¶63-64. The base station is able to control various characteristics
about the way mobile devices transmit ACK/NACK messages to the base station
by using commands in the DCI, such as an ACK Resource Indicator (“ARI”). See,
e.g., Ex. 1006 at 65; see also, e.g., Ex. 1015 at 42-46, 97-99; Ex. 1003 at ¶65.
E. Carrier Aggregation
In 3GPP systems, information is sent between base station and mobile
device on RF “carriers.” In standard LTE systems, the network assigns only one
carrier in the uplink and one carrier in the downlink to a given base station serving
a particular UE. However, in order to offer higher data rates for transmissions,
3GPP introduced a new feature in LTE-A systems, known as “carrier aggregation.”
In carrier aggregation technology, the capacities of two or more carriers are
aggregated together to achieve higher data rates. Mobile devices using carrier
aggregation technology are then capable of simultaneously sending and receiving
data over multiple carriers, thus increasing the available digital transmission rates
to and from the user devices. structure of each carrier in LTE-A follows a
structure that is very similar to the carrier structure in LTE. Ex. 1003 at ¶67. The
In carrier aggregation, each aggregated carrier is referred to as a “component
carrier” (“CC”). There is one “primary component carrier” (“PCC”) in both uplink
and downlink directions, that is responsible for handling the initial connection
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between the mobile device and the network. The remaining carriers are
“secondary component carriers” (“SCC”), which are configured after the initial
connection is established. Ex. 1003 at ¶¶68-69.
When multiple component carriers are simultaneously assigned to a mobile
device, each of the PDCCH’s associated with the respective component carrier are
capable of carrying a DCI control message, including the TPC command.
However, if the uplink control information related to the different component
carriers are to be transmitted on different physical uplink control channels, this
would result in higher power consumption by the mobile device. To address this
problem, the 3GPP participants agreed that for carrier aggregation, all uplink
control information should be semi-statically mapped onto one specific uplink
component carrier—the uplink primary component carrier. Therefore, only a
single downlink TPC command is necessary to control the transmission power for
the uplink signals. Any DCI messages beyond the one that necessarily must carry
the TPC command to the UE can have its “TPC command” bits reassigned. Ex.
1003 at ¶71. The nature of the concepts at issue in the ’587 Patent is the
substitution of ARI bits in place of TPC bits in those additional DCI messages.
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VII. THE ’587 PATENT
A. Overview
The ’587 Patent, titled “Method, Base Station, and User Equipment for
Feeding Back ACK/NACK Information for Carrier Aggregation,” was filed on
June 2, 2012 and issued on November 11, 2014. See Ex. 1001. The ’587 Patent
claims priority to a foreign application number CN 2009 1 0251390, filed
December 3, 2009.
The ’587 Patent is related to feeding back acknowledgment information (i.e.,
ACK/NACK information) for carrier aggregation. In standard LTE systems when
the eNodeB is sending data to the UE using dynamic (non-persistent) scheduling,
uplink ACK channel resources are assigned dynamically to mobile devices and the
mobile device determines which resource from an assigned group of uplink
resources to use at a given time to send acknowledgement information. Rather
than signal to the mobile device explicitly which resource to use, the mobile device
uses an implicit mapping between the information transmitted in the DCI and the
uplink ACK channel. Since the network assigns only one carrier in the uplink and
one carrier in the downlink to the mobile device, when the mobile device transmits
ACK/NACK information, the base station knows to which carrier information the
ACK/NACK information corresponds. Ex. 1001 at 1:44-2:7; Ex. 1003 at ¶71.
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In LTE-A systems that use carrier aggregation, a mobile device accesses
multiple downlink component carriers simultaneously, and ACK/NACK
information corresponding to the data transmissions of every downlink component
carrier is fed back over the uplink ACK channel. Ex. 1001 at 2:19-23. When a
downlink component carrier is not implicitly mapped to an uplink component
carrier, a problem arises when a mobile device has to feed back ACK/NACK
information corresponding to information the base station transmitted. In the
scenario where the mobile device receives information on multiple downlink
component carriers, when the mobile device feeds back ACK/NACK information,
the base station has no way to know to which downlink carrier information the
ACK/NACK information corresponds. Ex. 1001 at 2:23-29; Ex. 1003 at ¶72.
The ’587 Patent proposes adding an ACK resource indication (“ARI”)
command field to the DCI carried by the PDCCH to explicitly signal which of the
group of high-level assigned uplink ACK channel resources is currently used. Ex.
1001 at 2:47-57. Since only a single TPC command is necessary to control the
transmit power level of the uplink component carrier(s) assigned to the mobile
device, the TPC command field in DCIs sent in other component carriers are no
longer needed to transmit a TPC command and can be now be used to convey other
control information, such as the ARI. The ’587 Patent proposes using the existing
TPC command field as a common field to transmit the TPC command for one
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PDCCH but also the ARI command for the other PDCCHs when the DCI needs to
include an ARI command field. The ’587 Patent states that this approach
eliminates the need to create any new fields in the DCI for the ARI command and
allows for backwards compatibility with the existing LTE framework. Ex. 1001 at
Abstract, 10:22-30; Ex. 1003 at ¶¶73-74.
The ’587 patent proposes that the DCI in one of the downlink component
carriers, known as the “system-linked downlink component carrier,” carries the
TPC command, and the DCI in another downlink component carrier, known as a
“non-system linked component carrier,” carries an ARI command. A downlink
and an uplink carrier are system-linked if an uplink ACK channel resource is
implicitly reserved (as opposed to being explicitly signaled, e.g., via an ARI) on
the uplink carrier for transmissions on the downlink carrier. Ex. 1001 at Fig. 2,
7:3-16, 7:24-39; Ex. 1003 at ¶¶75-78.
B. Level of Ordinary Skill in the Art
A person of ordinary skill in the art at the time of the alleged invention of
the ’587 Patent would have at least (1) a Master’s degree in electrical engineering,
computer science, or a related field and (2) at least two years experience working
with cellular communication systems. Ex. 1003 at ¶18. Each of the arguments
below is made from the standpoint of a person of ordinary skill in the art in the
field of the ’587 Patent (“POSITA”) in the 2009 timeframe.
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VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS2
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable interpretation (“BRI”) in view of the
specification in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses
BRI because, among other reasons, the patentee has the opportunity to amend its
claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,764 (Aug. 14, 2012). As required by the applicable rules, this
Petition uses the BRI standard. Petitioner reserves all rights to take a different
position with respect to claim construction in any other proceeding that does not
rely on the BRI standard.
A. “system-linked-downlink component carrier” (Claims 3-5, 9-11)
Under the BRI standard, a “system-linked downlink component carrier”
should be construed to mean “a downlink component carrier which has an uplink
ACK channel resource implicitly mapped from a PDCCH and reserved on one
uplink component carrier.” The specification of the ’587 Patent supports this
proposed BRI. For example, the specification states “if an uplink ACK channel
resource implicitly mapped from a PDCCH is reserved on one uplink component
2 Petitioner reserves the right to pursue different claim constructions, including that
certain claim terms are indefinite, during this and related proceedings and in
litigation, at least because of the different standards of claim interpretation used by
the Patent Trial and Appeal Board and district courts.
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carrier for a certain downlink component carrier, the downlink component carrier
is described as a ‘system-linked downlink component carrier’ of the uplink
component carrier.” See Ex. 1001 at 7:10-15. In the district court case, the Patent
Owner contends that the construction should be “a downlink component carrier for
which an uplink ACK channel resource implicitly mapped from a PDCCH is
reserved on one uplink component carrier is a ‘system linked downlink component
carrier’ of the uplink component carrier.” See Ex. 1009 at 48. For purposes of this
Petition, the Patent Owner’s proposed construction falls within the BRI as set forth
above.
B. “non-system-linked downlink component carrier” (Claims 3, 9)
Under the BRI standard, a “non-system-linked downlink component carrier”
should be construed to mean “a downlink component carrier which does not have
its uplink ACK channel resource implicitly reserved on one uplink component
carrier.” The specification of the ’587 Patent supports the proposed BRI. For
example, the specification provides a definition for a “system-linked downlink
component carrier”: “if an uplink ACK channel resource implicitly mapped from a
PDCCH is reserved on one uplink component carrier for a certain downlink
component carrier, the downlink component carrier is described as a ‘system-
linked downlink component carrier’ of the uplink component carrier.” See Ex.
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1001 at 7:10-15. A non-system-linked downlink component carrier is the converse
of a system-linked downlink component carrier.
IX. OVERVIEW OF THE PRIOR ART REFERENCES
The earliest effective filing date for the ’587 Patent is December 3, 2009.
Any art published before December 3, 2009 is prior art under §102(b). See 35
U.S.C. § 102 (pre-AIA). In the underlying litigation, Patent Owner identified
earlier conception dates in a mandatory patent rule disclosure that Patent Owner
marked confidential. Although Petitioner does not concede that Patent Owner is
entitled to these conception dates, all of the prior art cited herein predates the
conception dates identified in the confidential document and is prior art under
either §102(b) or §102(e).
A. Baldemair
Baldemair was filed on April 1, 2010 and issued on June 25, 2013.
Baldemair claims priority to Provisional Application No. 61/250,962 (“Baldemair
’962”), filed on October 13, 2009 (Ex. 1005). Therefore, Baldemair is prior art to
the ’587 Patent under pre-AIA 35 U.S.C. § 102(e) as a patent granted on an
application filed in the United States before the invention of the ’587 Patent.
Baldemair discloses operating in a carrier aggregation system that involves
substituting ARI bits for TPC bits in the DCIs related to all but one of the
downlink CCs to convey the HARQ-ACK bits of the corresponding downlink
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shared channel transmissions. See Ex. 1004 at Abstract, Figs. 9, 11, and 13, 7:12-
41. Baldemair addresses the same problem as the ’587 Patent—transmitting an
indication of uplink resources used to convey hybrid-ARQ bits in a carrier
aggregation system. However, Baldemair, like the ’587 Patent, acknowledges that
a constraint to developing a solution is that it is important to maintain backwards
compatibility with the existing structure of the downlink messaging in standard
LTE systems. Ex. 1004 at 2:28-3:2. Therefore, adding fields to transmit the
additional control information, thereby changing the carrier structure, would not be
practical in this technological environment.
To address this problem, Baldemair proposes using the existing LTE carrier
structure by using the TPC command field to transmit other control information
when the network does not need to transmit power control information:
An insight of great value is thus that when multiple CCs
are assigned to a UE, the control bits normally used for
TPC-commands related to all but one CC could be used
to convey other relevant control information. One
PDCCH would still need to carry the true TPC-
command.
Ex. 1004 at 7:32-36. Baldemair also discloses that this “other relevant control
information” that can be transmitted in the TPC command field can be PUCCH or
PUSCH resources to convey the hybrid-ARQ bits of the corresponding downlink
shared channel transmissions (i.e., the ARI):
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There are several alternatives to what these freed format
TPC-bits could be used for. For example, these bits
could be used to signal which PUCCH or PUSCH
resources that should be used to convey the hybrid-ARQ
bits of the corresponding downlink shared channel
transmissions.
Ex. 1004 at 7:37-41, 12:64-13:15. Baldemair explains that the benefit of this
approach is that “overhead is reduced, since the total number of transmitted bits is
kept constant while the amount of payload is increased.” Ex. 1004 at 13:15-18.
1. Baldemair ’962
Baldemair is entitled to claim priority to Baldemair ’962, because Baldemair
’962 discloses (1) support for the relevant asserted claims in Baldemair and (2) all
the relevant subject matter that Petitioner relies on to prove that claims 3-5 and 9-
11 of the ’587 Patent are invalid over Baldemair, as disclosed herein. Ex. 1003 at
¶¶91-94.
Just like Baldemair, Baldemair ’962 discloses a carrier aggregation system
that involves substituting ARI bits for TPC bits in the DCIs related to all but one of
the downlink CCs for identifying which physical uplink channel resources will be
used to convey the HARQ-ACK bits of the corresponding downlink shared
channel transmissions:
In case the terminal receives downlink assignments on
multiple CC, the TPC bit field transmitted on one
PDCCH is used to transmit a true TPC command.
* * *
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The TPC field in the other PDCCH is used to convey
other information. One possibility is to use these bits to
signal the PUCCH or PUSCH resources that should be
used to convey the hybrid-ARQ bits of the corresponding
downlink shared channel transmissions.
Ex. 1005 at 15; see also id. at 11-12, FIG. 1.
Therefore, according to the basic idea of embodiments of
the present invention, TPC bit fields are transmitted in all
DCI messages containing downlink assignments,
whereby only the TPC bits transmitted within one
PDCCH contains a true TPC commands. The other TPC
bit fields are used to signal some other relevant
information.
Ex. 1005 at 12. The above disclosures in Baldemair ’962 provides support for the
relevant claims in Baldemair, such as claim 1 in Baldemair.
Baldemair ’962, like Baldemair, makes it clear that the TPC field is part of
the DCI:
Scheduling of the CC is done on the Physical Downlink
Control Channel (PDCCH) via downlink assignments.
Control information on the PDCCH is formatted as a
Downlink Control Information (DCI) message. DCI
messages for downlink assignments contain among other
resource block assignment, modulation and coding
scheme related parameters, hybrid-ARQ redundancy
version, etc. In addition to those parameters that relate to
the actual downlink transmission most DCI formats for
downlink assignments also contain a bit field for
Transmit Power Control (TPC).
Ex. 1005 at 10-11. Accordingly, Baldemair ’962 provides the necessary support
for Baldemair, and therefore, Baldemair can claim priority to Baldemair ’962.
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B. TS 36.213
As described in the Yaqub Decl., TS 36.213 was available on the 3GPP
website as of December 22, 2008. See Ex. 1012 at ¶¶51, 53-54 (“the date stamp
for each specification or standard can be relied upon to indicate when the upload
occurred”). The Yaqub Decl. establishes the public storage and availability of TS
36.213, and describes in detail how a member of the public would access such
documents, including through searches using readily available search engines like
Google. See Ex. 1012 at ¶¶25-48. By navigating 3GPP’s public website, any
member of the public could have downloaded any available version of TS 36.213
without restriction. See Ex. 1012 at ¶42-43, 47-48, 51, 53-54; see also LG Elecs. v.
Core Wireless Licensing S.A.R.L., IPR2015-01988, Paper 7, at 12-14 (PTAB Apr.
1, 2016) (instituting IPR based on prior art that included 3GPP draft specifications
and proposals). Accordingly, TS 36.213 constitutes prior art under at least 35
U.S.C. §102(b) as a printed publication more than one year prior to the invention
of the ’587 Patent.
TS 36.213 sets forth the physical layer standards for the LTE system. In its
infringement contentions to Samsung in Huawei Techs. Co., Ltd. v. Samsung Elecs.
Co., Ltd. et al., Case No 3:16-cv-02787 (N.D. Cal.), Huawei relies on TS 36.213 v.
10.2.0, a later version of TS 36.213, to set forth its infringement allegations. See
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Ex. 1011. By complying with TS 36.213 v. 10.2.0, Huawei alleges that Samsung’s
products infringe claims 3-5 and 9-11 of the ’587 Patent. Id.
TS 36.213 describes a UE procedure for determining physical uplink control
channel assignment and the feedback of ACK/NACK information:
The parameter Simultaneous-AN-and-CQI provided by
higher layers determine if a UE can transmit a
combination of CQI and HARQ-ACK on PUCCH in the
same subframe.
For TDD, two ACK/NACK feedback modes are
supported by higher layer configuration.
- ACK/NACK bundling using PUCCH format 1a or 1b,
which is the default mode
- ACK/NACK multiplexing using PUCCH format 1b
with channel selection
Ex. 1006 at Section 10.1. TS 36.213 also discloses a DCI field that is used for
scheduling:
A UE shall validate DCI formats 0, 1, 1A, 2, 2A received
for which the CRC is scrambled by the Semi-Persistent
C-RNTI and where the new data indicator field, in case
of DCI formats 2 and 2A for the enabled transport block,
is set to “0” by verifying that all the conditions for the
respective used DCI format according to Table 9.2-1 are
met. In case not all these conditions are met, the received
DCI format shall be considered by the UE as having been
received with a non-matching CRC.
Ex. 1006 at Section 9.2. TS 36.213 also discloses that the DCI includes a TPC
command field and that this TPC command can be used “as an index to one of the
four PUCCH resource indices configured by higher layers . . . .” Ex. 1006 at
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Section 9.2. This language in TS 36.213 Section 9.2 is similar to the language that
Huawei relies on to show infringement in the related case. See Ex. 1011 at 9 (“The
TPC field in the DCI format of the corresponding PDCCH shall be used to
determine the PUCCH resource values from one of the four resource values
configured by higher layers . . . .”). The primary use of the PUCCH is for sending
ACK/NACK information. Ex. 1006 at 66-70. Therefore, TS 36.213 discloses the
use of bits in the TPC field to send acknowledgement resource information, which
was known and used in the 3GPP standards as early as Release-8.
C. Damnjanovic
Damnjanovic was filed on March 12, 2009 and issued as US Patent
9,036,564 on May 19, 2015. Damnjanovic claims priority to U.S. Provisional
Application No. 61/040,609, filed on March 28, 2008, and was published on
October 1, 2009. Therefore, Damnjanovic is prior art to the ’587 Patent under pre-
AIA 35 U.S.C. § 102(b) as a printed publication more than one year prior to the
invention of the ’587 Patent.
Damnjanovic discloses re-using the TPC command fields in the DCI to carry
ACK resource assignment in a LTE system. Ex. 1007 at Abstract, [0008].
Damnjanovic discloses that the LTE system may support dynamic scheduling and
semi-persistent scheduling. Ex. 1007 at [0007]. For dynamic scheduling, a
scheduling message may be sent with each transmission of data and may convey
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parameters and resources used for that transmission of data. For semi-persistent
scheduling, a scheduling message sent once may be applicable for multiple
transmissions of data. Ex. 1007 at [0025]. For semi-persistent scheduling, it is
unnecessary to transmit all of the command fields with each scheduling message,
so Damnjanovic discloses re-using at least one of the existing fields that would
normally be used to carry commands for dynamic scheduling, such as the TPC
command field, to carry an ACK resource assignment. Ex. 1007 at [0039].
In yet another design, an ACK resource assignment may
be sent in the TPC command field. Two bits are
available in the TPC command field. Hence, up to four
ACK resources may be configured and assigned indices
of 0 to 3. A 2-bit ACK resource index for one of up to
four configured ACK resources may be sent in the
TPC command field to the UE.
Ex. 1007 at [0050] (emphasis added).
X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY
As explained below pursuant to 37 C.F.R. § 42.104(b), the cited prior art
renders obvious the challenged claims of the ’587 Patent. The principal references
disclose the use of the claimed technology in the context of the 3GPP LTE (TS
36.213 and Damnjanovic) and LTE-A (Baldemair) standards prior to the earliest
effective filing date for the ’587 Patent. Pursuant to Rule 42.104(b)(4)-(5), specific
grounds for finding the claims invalid are identified below and discussed in the
Lyon Declaration (Ex. 1003).
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A. Ground 1: Baldemair renders obvious claims 3-5 and 9-11
As described below, Baldemair renders obvious claims 3-5 and 9-11 of the
’587 Patent.3 Ex. 1003 at ¶105.
1. Claim 3
a) Preamble: “A method for feeding back
Acknowledgement/Negative acknowledgement
(ACK/NACK) information for carrier aggregation”
Baldemair teaches the preamble.4 Baldemair discloses a system supporting
carrier aggregation:
Methods and arrangements in the network node and
mobile terminal, respectively, in a wireless
communication system supporting aggregation of
component carriers.
Ex. 1004 at Abstract (emphasis added); see also id. at Fig. 7, 2:41-54; Ex. 1003 at
¶¶108-109. Baldemair further discloses feeding back ACK/NACK information for
carrier aggregation:
An insight of great value is thus that when multiple CCs
are assigned to a UE, the control bits normally used for
PTC-commands related to all but one CC could be used
to convey other relevant control information. One
PDCCH would still need to carry the true PTC-
command.
3 To provide support that Baldemair properly claims priority to Baldemair ’962,
Petitioner cites to Baldemair ’962 alongside the cites to Baldemair for each ’587
claim limitation. Further support, however, can be found in the Lyon Decl. (Ex.
1003) at Section IX.A.
4 Petitioner retains the right to establish that the preambles of the claims are not
limiting, but nonetheless shows herein how the prior art teaches the preambles.
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There are several alternatives to what these freed former
TPC-bits could be used for. For example, these bits
could be used to signal which PUCCH to PUSCH
resources that should be used to convey the hybrid-
ARQ bits of the corresponding downlink shared
channel transmissions.
Ex. 1004 at 7:32-41 (emphasis added); Ex. 1003 at ¶¶110-113; see Ex. 1005 at 8,
5-6, 9 (disclosing support in Baldemair ’962 for this limitation). These excerpts
from Baldemair illustrate that ACK/NACK information is fed back in a carrier
aggregation system.
b) [3A]: “receiving downlink control information (DCI)
which is sent by a base station and transmitted by a
downlink component carrier”
Baldemair teaches receiving DCI sent by a base station and transmitted by a
downlink component carrier (i.e., PDCCH):
Downlink transmission are dynamically scheduled in
LTE, i.e., in each subframe, a base station transmits
control information concerning which mobile terminals
data is transmitted to, and upon which resource blocks
the data is transmitted in the current downlink subframe.
Ex. 1004 at 1:30-34 (emphasis added).
Scheduling of a CC is done on the Physical Downlink
Control Channel (PDCCH) via downlink assignments.
Control information on the PDCCH is formatted as a
Downlink Control Information (DCI) message comprising predetermined bit fields for different types of
control information.
Ex. 1004 at 2:55-59 (emphasis added); Ex. 1003 at ¶¶114-116; see Ex. 1005 at 10-
11 (disclosing support in Baldemair ’962 for this limitation).
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c) [3B]: feeding back ACK/NACK information according
to a command indicated by a common field present in
the DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, and the common field is
indicative of one of a transmission power control (TPC)
command and an ACK resource indication (ARI)
command”
Baldemair discloses using a common field that can indicate the TPC
command or the ARI command:
An insight of great value is thus that when multiple CCs
are assigned to a UE, the control bits normally used for
TPC-commands related to all but one CC could be used
to convey other relevant control information. One
PDCCH would still need to carry the true TPC-
command.
There are several alternatives to what these freed former
TPC-bits could be used for. For example, these bits
could be used to signal which PUCCH or PUSCH
resources that should be used to convey the hybrid-ARQ
bits of the corresponding downlink shared channel
transmission.
Ex. 1004 at 7:32-41; Ex. 1003 at ¶¶118-120. As disclosed above, Baldemair
teaches that the TPC field is the “common field,” which can be used to send the
TPC-command or the uplink channel resources that the mobile device uses to
convey hybrid-ARQ bits of the corresponding downlink transmission (i.e., “ARI
command”). Id.; see Ex. 1005 at 11-12, 15 (disclosing support in Baldemair ’962
for this limitation)
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Baldemair discloses feeding back ACK/NACK information according to a
command indicated by a common field present in the DCI. For example,
Baldemair discloses that the bits in a common field “could be used to signal which
PUCCH or PUSCH resources [i.e., ARI command] that should be used to convey
the hybrid-ARQ bits of the corresponding downlink shared channel transmissions.”
Ex. 1004 at 7:37-41; Ex. 1003 at ¶¶121-122; see Ex. 1005 at 8, 11-12, 15
(disclosing support in Baldemair ’962 for this limitation).
Finally, Baldemair discloses that the common field is configured as a TPC-
command or ARI-command according to a type of a downlink component carrier
transmitting the DCI. For example, Baldemair discloses that in the case where
multiple component carriers are assigned to a UE, “the control bits normally used
for TPC-commands related to all but one CC could be used to convey other
relevant control information. One PDCCH would still need to carry the true
TPC-command.” Ex. 1004 at 7:32-36. Furthermore, at Figure 9, Baldemair
teaches a procedure for transmitting other control information in a wireless
communication system supporting aggregation of component carriers:
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Ex. 1004 at Fig. 9 (emphasis added). At steps 906 and 908, the network node
configures the TPC-command field (i.e., common field) to contain the TPC-
command bits on the PDCCH of one downlink component carrier and other
control info on the PDCCH of other downlink component carriers. Ex. 1004 at
Fig. 9, 8:62-9:7. Baldemair makes it clear that one downlink component carrier
will carry the TPC-command and the other downlink component carriers carry
other control information, such as the ARI. Ex. 1004 at Fig. 9, 8:62-9:7, 7:37-41;
Ex. 1003 at ¶¶123-125; see Ex. 1005 at 13-15 (disclosing support in Baldemair
’962 for this limitation).
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When a downlink component carrier in a carrier aggregation system includes
the TPC-command in the common field to indicate power control, there is no
explicit indication for the location of the uplink ACK resource, and therefore, in
order for the mobile device to know how to transmit ACK/NACK information, it
utilizes implicit mapping of the uplink carrier, otherwise, the mobile device will
not know which resource to use to transmit the ACK/NACK information. The
’587 Patent refers to this as the “system-linked downlink component carrier.”
Conversely, when a downlink component carrier in a carrier aggregation system
includes an ARI-command, i.e., an explicit mapping to an uplink component
carrier, the mobile device uses this explicit mapping to transmit the ACK/NACK
information. The ’587 Patent refers to this as the “non-system-linked downlink
component carrier.” One of skill in the art would understand that Baldemair
discloses configuring the common field as a TPC-command when the downlink
component carrier is implicitly mapped to an uplink component carrier (system-
linked downlink component carrier), and configuring the common field as an ARI-
command when the downlink component carrier needs to be explicitly mapped to
an uplink component carrier (non-system-linked downlink component carrier). Ex.
1003 at ¶¶126-127.
Furthermore, Baldemair discloses that “all uplink control information for a
UE should be semi-statically mapped onto one specific uplink component carrier, a
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so called ‘anchor carrier’ or uplink primary component carrier.” Ex. 1004 at 7:15-
19 (emphasis added). To set up a communication, one of skill in the art
understands that the mobile device must transmit uplink control information to the
base station and the base station needs to transmit downlink control information,
including the TPC-command, to the mobile device. Ex. 1003 at ¶128. As
disclosed in Baldemair, this uplink control information is transmitted on an “uplink
primary component carrier.” Ex. 1004 at 7:15-19; Ex. 1003 at ¶128. Conversely,
the downlink control information, including the TPC-command, must be
transmitted on a downlink primary component carrier, which is the same as the
’587 Patent’s disclosure of a system-linked downlink component carrier. Ex. 1003
at ¶128. Once this connection is done, other downlink and uplink component
carriers (non-primary component carriers or non-system-linked component
carriers) can be assigned to the UE, and these component carriers can then be used
to convey additional control information, such as the ARI-command. Ex. 1003 at
¶128.
Therefore, one of skill in the art would understand that it would be obvious
to configure the common field disclosed in Baldemair as a TPC-command or ARI-
command according to a type of downlink component carrier (i.e., system-linked
downlink component carrier or non-system-linked downlink component carrier)
transmitting the DCI. Ex. 1003 at ¶129.
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d) [3C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
As disclosed in claim element [3B] above, one of skill in the art would
understand that Baldemair discloses configuring the common field as a TPC-
command or an ARI-command according to a type of downlink component carrier
(i.e., system-linked or non-system-linked). As explained in detail above for claim
element [3B], one of skill in the art would also understand that Baldemair discloses
that the type of downlink component carrier can be “system-linked downlink
component carrier” or a “non-system-linked downlink component carrier.” Ex.
1003 at ¶¶130-131.
As disclosed above for claim element [3B], a downlink primary component
carrier is one in which the TPC-command is transmitted in the DCI and its ACK
channel resource is implicitly mapped. This is the same as a “system-linked
downlink component carrier.” As the ’587 Patent explains, “if an uplink ACK
channel resource implicitly mapped from a PDCCH is reserved on one uplink
component carrier for a certain downlink component carrier, the downlink
component carrier is described as a ‘system-linked downlink component carrier’ of
the uplink component carrier.” See Ex. 1001 at 7:10-15. Therefore, for the same
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reasons set forth above for claim element [3B], one of skill in the art would
understand that Baldemair discloses a system-linked downlink component carrier
on which the TPC-command in the common field is transmitted. Ex. 1003 at ¶132.
Conversely, downlink secondary component carrier is one in which the ACK
channel resource (i.e., ARI-command) is explicitly mapped from the corresponding
PDCCH, via the common field—the ARI-command indicates an ACK channel
resource that the mobile device should use to transmit ACK/NACK information in
the uplink. This is the same as a “non-system-linked downlink component
carrier.” A non-system linked downlink component carrier is the converse of the
definition of a system-linked downlink component carrier—ACK channel resource
is explicitly mapped instead of implicitly mapped. Therefore, for the same reasons
set forth above for claim element [3B], one of skill in the art would understand that
Baldemair discloses a non-system-linked downlink component carrier on which
the ARI-command in the common field is transmitted. Ex. 1003 at ¶133; see Ex.
1005 at 8, 11-12, 15 (disclosing support in Baldemair ’962 for this limitation).
2. Claim 4
Claim 4 depends from claim 3, and further requires “wherein the at least one
piece of DCI transmitted by a system-linked downlink component carrier
comprises DCI corresponding to physical downlink shared channel (PDSCH)
transmission of a downlink primary component carrier.”
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Baldemair teaches that at least one piece of the DCI transmitted by the
system-linked downlink component carrier comprises DCI corresponding to a
PDSCH transmitted on that carrier. For example Baldemair teaches that the DCI
in a CC carries downlink resource block assignments, which one of the skill in the
art understands corresponds to resource block assignments of the PDSCH which
carries user data over that CC:
Scheduling of a CC is done on the Physical Downlink
Control Channel (PDCCH) via downlink assignments.
Control information on the PDCCH is formatted as a
Downlink Control Information (DCI) message
comprising predetermined bit fields for different types of
control information. DCI messages for downlink
assignments contain, among other things, resource block
assignment, modulation and coding scheme related
parameters, hybrid-ARQ redundancy version, etc.
Ex. 1004 at 2:55-63; Ex. 1003 at ¶¶134-135.
Figure 3 in Baldemair discloses a PDSCH as a downlink channel in LTE:
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Ex. 1004 at Fig. 3 (emphasis added), 5:54-55. Furthermore, Baldemair discloses
that
[t]here are several alternatives to what these freed former
TPC-bits could be used for. For example, these bits
could be used to signal which PUCCH or PUSCH
resources that should be used to convey the hybrid-ARQ
bits of the corresponding downlink shared channel
transmission.
Ex. 1004 at 7:32-41 (emphasis added); Ex. 1003 at ¶¶136-138; see Ex. 1005 at 15
(disclosing support in Baldemair ’962 for this limitation).
Finally, one of skill in the art would understand that the disclosure in
Baldemair teaches a downlink primary component carrier. As disclosed in claim
element [3B], Baldemair discloses that “all uplink control information for a UE
should be semi-statically mapped onto one specific uplink component carrier, a so
called ‘anchor carrier’ or uplink primary component carrier.” Ex. 1004 at 7:15-19;
Ex. 1003 at ¶139. To set up a communication, one of skill in the art understands
that the mobile device must transmit uplink control mapping information to the
base station and the base station needs to transmit downlink control information,
including the TPC-command, to the mobile device. Ex. 1003 at ¶139. As
disclosed in Baldemair, this uplink control information is transmitted on an “uplink
primary component carrier.” Ex. 1004 at 7:15-19; Ex. 1003 at ¶139; see Ex. 1005
at 13-15 (disclosing support in Baldemair ’962 for this limitation). Conversely,
one of skill in the art would understand that the downlink control information,
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including the TPC-command, must be transmitted on a downlink primary
component carrier. Ex. 1003 at ¶139.
3. Claim 5
Claim 5 depends from claim 3, and further requires “wherein one piece of
DCI transmitted by a system-linked downlink component carrier comprises at least
one piece of DCI transmitted by a downlink primary component carrier.” As
disclosed in claim [4] above, one of skill in the art would understand that
Baldemair teaches this limitation. Ex. 1003 at ¶¶140-141.
4. Claim 9
a) Preamble: “A user equipment”
Baldemair teaches the preamble.5 Baldemair discloses a user equipment:
The procedure in a mobile terminal could also be
described as follows:
When a received assignment is determined to concern
resources on at least two component carriers, the bits in a
certain bit field in a message received over a first
PDCCH are interpreted as power control bits, and the bits
in a corresponding bit field in a message received over a
second PDCCH are interpreted as other relevant control
information, i.e. other than power control. Examples of
such other control information is: an indication or part of
an indication of PUCCH or PUSCH resources to be used
for conveying e.g. H-ARQ related information; an
indication or part of an indication of resource block
assignment’s on a DL component carrier being assigned
5 Petitioner retains the right to establish that the preambles of the claims are not
limiting, but nonetheless shows herein how the prior art teaches the preambles.
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to the mobile terminal; and an indication of to which
component carrier the PDCCH carrying the indication is
associated.
Ex. 1004 at 12:64-13:12 (emphasis added); see also id. at 15:26-54; Fig. 9. Figure
11 illustrates steps executed in a mobile terminal and Figure 12 illustrates an
embodiment of an arrangement in a mobile terminal:
Ex. 1004 at Fig. 11; see also id. at 10:34-49.
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Ex. 1004 at Fig. 12; see also id. at 10:50-11:24; see Ex. 1005 at 15 (disclosing
support in Baldemair ’962 for this limitation); Ex. 1003 at ¶¶142-148.
b) [9A]: “a receiving module, configured to receive
downlink control information (DCI) that is sent by a
base station and transmitted by a downlink component
carrier”
Baldemair teaches this limitation as described above for claim element [3A].
Furthermore, Figure 12 illustrates that the mobile terminal contains a “receiving
unit” that is “adapted to receive control messages comprising downlink resource
assignments.” Ex. 1004 at 10:50-55.
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Ex. 1004 at Fig. 12 (emphasis added); 10:50-11:24; see also id. at Fig. 11. By way
of further example, Baldemair discloses a mobile terminal with a receiving module
that is responsible for performing the claimed functionality:
[w]hen a received assignment is determined to concern
resources on at least two component carriers, the bits in a
certain bit field in a message received over a first
PDCCH are interpreted as power control bits, and the bits
in a corresponding bit field in a message received over a
second PDCCH are interpreted as other relevant control
information, i.e. other than power control. Examples of
such other control information is: an indication or part of
an indication of PUCCH or related information; an
indication or part of an indication of resource block
assignments on a DL component carrier being assigned
to the mobile terminal; and an indication of to which
component carrier the PDCCH carrying the indication is
associated.
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Ex. 1004 at 12:64-11:15; see Ex. 1005 at 15 (disclosing support in Baldemair ’962
for this limitation); Ex. 1003 at ¶¶149-152.
c) [9B]: “a feedback module, configured to feed-back
Acknowledgement/Negative-acknowledgement
(ACK/NACK) feedback information according to a
command indicated by a common field preset in the
DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, the common field is
indicative of one or a transmission power control
(TPC) command and an ACK resource indication (ARI)
command”
Baldemair teaches this limitation as described above for the preamble of
claim 3 and claim element [3B]. Furthermore, Figure 12 illustrates that the mobile
terminal contains a “transmitting unit” that is “adapted to transmit, e.g., reports
related to the downlink channel conditions, to other network entities,” such as
feeding back ACK/NACK feedback information. Ex. 1004 at Fig. 12, 11:7-17.
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Ex. 1004 at Fig. 12 (emphasis added). Baldemair teaches that the transmitting unit
is responsible for feeding back ACK/NACK feedback information:
The arrangement further comprises a utilizing unit 1208,
adapted to use said obtained other relevant control
information not related to power control for locating
information related to downlink or uplink transmissions.
The locating of information could involve e.g.
indicating certain PUCCH or PUSCH resources;
extending resource block assignments or indicating
which component carrier that is addressed by a certain
PDCCH. The arrangement may further comprise a
transmitting unit 1210, adapted to transmit, e.g., reports
related to the downlink channel conditions, to other
network entities.
Ex. 1004 at 11:7-17 (emphasis added); Ex. 1003 at ¶¶153-156; see Ex. 1005 at 8
(disclosing support in Baldemair ’962 for this limitation).
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d) [9C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
Baldemair teaches this limitation as described above for claim element [3C].
Ex. 1003 at ¶157.
5. Claim 10
Claim 10 depends from claim 9, and further requires “wherein the at least
one piece of DCI transmitted by a system-linked downlink component carrier
comprises DCI corresponding to physical downlink shared channel (PDSCH)
transmission of a downlink primary component carrier.” Baldemair teaches this
claim as described above for claim [4]. Ex. 1003 at ¶¶158-159.
6. Claim 11
Claim 11 depends from claim 9, and further requires “wherein the at least
one piece of DCI transmitted by a system-linked downlink component carrier
comprises at least one piece of DCI transmitted by a downlink primary component
carrier.” Baldemair teaches this claim as described above for claim [5]. Ex. 1003
at ¶¶160-161.
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B. Ground 2: Baldemair in view of TS 36.213 renders obvious claims
3-5 and 9-11
As described below, Baldemair in view of TS 36.213 renders obvious claims
3-5 and 9-11 of the ’587 Patent. Ex. 1003 at ¶163.
1. Motivation to Combine Baldemair and TS 36.213
A person of ordinary skill in the art would have combined the teachings in
Baldemair and TS 36.213 to render claims 3-5 and 9-11 of the ’587 Patent invalid.
Ex. 1003 at ¶164. Both references are concerned with LTE cellular technology—
Baldemair with LTE-A (Ex. 1004 at 2:43-54) and TS 36.213 with LTE (Ex. 1006
at 74). And both references address issues related to feeding back ACK/NACK
information in LTE networks. Ex. 1004 at 1:38-46; Ex. 1006 at Section 10.1; Ex.
1003 at ¶¶165-167.
Baldemair explicitly references LTE Release 8, which is the same LTE
standard release to which TS 36.213 sets forth standards.6 Baldemair teaches that
it is important for features in LTE-A to ensure backwards compatibility with LTE
Release 8. For example, Baldemair discloses that
[t]he LTE Release-8 standard supports bandwidths up to
20 MHz. In order to meet the IMT-Advanced
requirements, bandwidths larger than 20 MHz nee to be
supported. However, one important requirement is to
assure backwards compatibility with LTE Release-8 for
6 TS 36.213 is titled “Generation Partnership Project; Technical Specification
Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-
UTRA); Physical layer procedures (Release 8).” Ex. 1006 at 1 (emphasis added).
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legacy terminals. This should also include spectrum
compatibility with LTE Release-8 for legacy terminals.
This should also include spectrum compatibility. That
would imply that an LTE-Advanced carrier should
appear as a number of LTE carriers to an LTE Release-
8/9 terminal. Each such carrier can be referred to as a
component carrier (CC).
Ex. 1004 at 2:32-40. Even in the context of carrier aggregation in LTE-A,
Baldemair makes it clear that the structure of these carriers needs to be same as the
carrier structure set forth in Release-8:
Carrier aggregation implies that an LTE-Advanced
terminal can receive multiple CCs, where each CC has,
or is at least able to have, the same structure as a Release-
8 carrier.
Ex. 1004 at 2:52-54. As shown in Baldemair, a single carrier in LTE Release 8
and the component carrier in LTE-A Release 10 must have the same or similar
structure—LTE-A expands the single carrier framework to multiple carriers, which
each contain the LTE Release 8 carrier structure. Id. Baldemair specifically
teaches utilizing Release-8 standards in developing solutions to feeding back
ACK/NACK information in LTE-A. Id. Therefore, the interdependent nature of
these references was recognized by Baldemair and one of skill in the art would
understand how to combine the disclosure in Baldemair, which discloses multiple
carriers, to the single carrier structure in TS 36.213. Ex. 1003 at ¶¶168-171.
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Accordingly, a person of ordinary skill in the art would have been motivated
to combine the teachings of Baldemair and TS 36.213 to fully describe a known
solution to a known problem. Ex. 1003 at ¶172.
2. Claim 3
a) Preamble: “A method for feeding back
Acknowledgement/Negative acknowledgement
(ACK/NACK) information for carrier aggregation”
Baldemair and TS 36.213 disclose or render obvious in combination the
preamble. As explained above, Baldemair teaches the preamble. TS 36.213
teaches feeding back Acknowledgement/Negative acknowledgement
(ACK/NACK) information in LTE systems:
The parameter Simultaneous-AN-and-CQI provided by
higher layers determine if a UE can transmit a
combination of CQI and HARQ-ACK on PUCCH in the
same subframe.
For TDD, two ACK/NACK feedback modes are
supported by higher layer configuration.
- ACK/NACK bundling using PUCCH format 1a or 1b,
which is the default mode
- ACK/NACK multiplexing using PUCCH format 1b
with channel selection
Ex. 1006 at Section 10.1; Ex. 1003 at ¶¶175-176.
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b) [3A]: “receiving downlink control information (DCI)
which is sent by a base station and transmitted by a
downlink component carrier”
Baldemair and TS 36.213 disclose or render obvious in combination claim
element [3A]. As explained above, Baldemair teaches claim element [3A]. TS
36.213 teaches receiving DCI sent by a base station and transmitted by a downlink
component carrier. For example, TS 36.213 discloses that
A UE shall validate DCI formats 0, 1, 1A, 2, 2A received
for which the CRC is scrambled by the Semi-Persistent
C-RNTI and where the new data indicator field, in case
of DCI formats 2 and 2A for the enabled transport block,
is set to ‘0’ by verifying that all the conditions for the
respective used DCI format according to Table 9.2-1 are
met. In case not all these conditions are met, the received
DCI format shall be considered by the UE as having been
received with a non-matching CRC.
Ex. 1006 at Section 9.2. TS 36.213 discloses the fields within the various DCI
formats:
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Ex. 1006 at Table 9.2-1.
A UE shall upon detection of a PDCCH with DCI format
1, 1A, 1B, 1C, 1D, 2 or 2A intended for the UE in a
subframe, decode the corresponding PDSCH in the same
subframe.
Ex. 1006 at Section 7.1. TS 36.213 discloses receiving the DCI information in the
downlink from a base station:
In case of validation, the UE shall consider the received
DCI information as a valid semi-persistent
assignment/grant. In addition, for the case that the DCI
format indicates a downlink assignment, the TPC
command for PUCCH field shall be used as an index to
one of the four PUCCH resource indices configured by
higher layers, with the mapping defined in Table 9.2-2.
Ex. 1006 at Section 9.2 (emphasis added). The base station is responsible for
transmitting information to the UE in the downlink. Ex. 1003 at ¶¶177-179.
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c) [3B]: feeding back ACK/NACK information according
to a command indicated by a common field present in
the DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, and the common field is
indicative of one of a transmission power control (TPC)
command and an ACK resource indication (ARI)
command”
Baldemair and TS 36.213 disclose or render obvious in combination claim
element [3B]. As explained above, Baldemair teaches or renders obvious based on
the knowledge of one of skill in the art claim element [3B]. Ex. 1003 at ¶180. TS
36.213 illustrates that re-using the TPC field bits to indicate an ARI-command was
already used and incorporated into the Release-8 LTE standard before the ’587
patent:
In case of validation, the UE shall consider the received
DCI information as a valid semi-persistent
assignment/grant. In addition, for the case that the DCI
format indicates a downlink assignment, the TPC
command for PUCCH field shall be used as an index
to one of the four PUCCH resource indices configured
by higher layers, with the mapping defined in Table 9.2-
2.
Ex. 1006 at Section 9.2 (emphasis added). The primary use of the PUCCH
(physical uplink control channel) is for sending ACK/NACK information. Ex.
1003 at ¶181. Therefore, the “PUCCH resource indices” identified above in TS
36.213 indicates that the concept of transmitting ACK resource indication
information in place of the TPC command in the DCI was taught and used in
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Release-8. As explained above, since backwards compatibility with LTE Release-
8 was an important aspect of developing LTE-A technology and it was important
to use the Release-8 carrier structure, as disclosed in Baldemair (Ex. 1004 at 2:32-
54), it would have been obvious to one skilled in the art to extend this Release-8
feature of re-using TPC bits to send ACK resource indication information for the
newer LTE-A system proposed in Baldemair. Ex. 1003 at ¶¶182-183.
d) [3C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
As explained above, Baldemair teaches or renders obvious based on the
knowledge of one of skill in the art claim element [3C]. Ex. 1003 at ¶184.
3. Claim 4
Claim 4 depends from claim 3. As explained above, Baldemair teaches or
renders obvious based on the knowledge of one of skill in the art claim 4. Ex.
1003 at ¶185.
4. Claim 5
Claim 5 depends from claim 3. As explained above, Baldemair teaches or
renders obvious based on the knowledge of one of skill in the art claim 5. Ex.
1003 at ¶186.
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5. Claim 9
a) Preamble: “A user equipment”
Baldemair and TS 36.213 disclose or render obvious in combination the
preamble. As explained above, Baldemair teaches the preamble. TS 36.213
teaches a user equipment (i.e., “UE”):
Ex. 1006 at Section 3.2.
A UE shall validate DCI formats 0, 1, 1A, 2, 2A
received for which the CRC is scrambled by the Semi-
Persistent C-RNTI and where the new data indicator
field, in case of DCI formats 2 and 2A for the enabled
transport block, is set to ‘0’ by verifying that all the
conditions for the respective used DCI format according
to Table 9.2-1 are met. In case not all these conditions are
met, the received DCI format shall be considered by the
UE as having been received with a non-matching CRC.
Ex. 1006 at Section 9.2 (emphasis added).
In case of validation, the UE shall consider the received
DCI information as a valid semi-persistent
assignment/grant. In addition, for the case that the DCI
format indicates a downlink assignment, the TPC
command for PUCCH field shall be used as an index to
one of the four PUCCH resource indices configured by
higher layers, with the mapping defined in Table 9.2-2.
Ex. 1006 at Section 9.2 (emphasis added); Ex. 1003 at ¶¶187-190.
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b) [9A]: “a receiving module, configured to receive
downlink control information (DCI) that is sent by a
base station and transmitted by a downlink component
carrier”
Baldemair and TS 36.213 disclose or render obvious in combination this
limitation as described above for claim element [3A]. Ex. 1003 at ¶191.
c) [9B]: “a feedback module, configured to feed-back
Acknowledgement/Negative-acknowledgement
(ACK/NACK) feedback information according to a
command indicated by a common field preset in the
DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, the common field is
indicative of one or a transmission power control
(TPC) command and an ACK resource indication (ARI)
command”
Baldemair and TS 36.213 disclose or render obvious in combination this
limitation as described above for the preamble of claim 3 and claim element [3B].
Ex. 1003 at ¶192.
d) [9C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
Baldemair teaches or renders obvious this limitation based on the knowledge
of one of skill in the art as described above for element [3C]. Ex. 1003 at ¶193.
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6. Claim 10
Claim 10 depends from claim 9. Baldemair teaches or renders obvious
claim 10 based on the knowledge of one of skill in the art as described above for
claim 4. Ex. 1003 at ¶194.
7. Claim 11
Claim 11 depends from claim 9. Baldemair teaches or renders obvious
claim 11 based on the knowledge of one of skill in the art as described above for
claim 5. Ex. 1003 at ¶195.
C. Ground 3: Damnjanovic in view of Baldemair renders obvious
claims 3-5 and 9-11
1. Motivation to Combine Damnjanovic and Baldemair
A person of ordinary skill in the art would have combined the teachings in
Damnjanovic and Baldemair to render claims 3-5 and 9-11 of the ’587 Patent
invalid. Ex. 1003 at ¶196. First, both references are concerned with LTE cellular
technology—Damnjanovic with LTE (Ex. 1007 at [0023]) and Baldemair with
LTE-A (2:43-54). As explained above and in Baldemair, LTE-A builds on the
LTE technology and backwards compatibility with LTE was an important
consideration for engineers developing the LTE-A technology. See infra Section
VI; Ex. 1004 at 2:32-54. As explained above, Baldemair explicitly references LTE
Release 8, which is the same LTE standard release to which Damnjanovic
discloses technology (i.e., standard LTE). Id. And as explained above, even in the
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context of carrier aggregation in LTE-A, Baldemair makes it clear that the
structure of these carriers needs to be same as the carrier structure set forth in
Release-8. Ex. 1004 at 2:52-54. Baldemair specifically teaches utilizing Release-
8 standards in developing solutions to feeding back ACK/NACK information in
LTE-A. Id. As shown in Baldemair, the single carrier in LTE Release 8 and the
component carrier in LTE-A must have the same or similar structure—LTE-A
expands the single carrier framework to multiple carriers, which each contain the
LTE Release 8 carrier structure. Therefore, the interdependent nature of these
references was recognized by Baldemair and one of skill in the art would
understand how to combine the disclosure in Baldemair, which discloses multiple
carriers, to the single carrier structure in Damnjanovic. Ex. 1003 at ¶203.
Second, both references are directed to addressing the same problem—
sending additional control information, such as an ACK resource indication
command, without changing the Release-8 messaging structures. For example,
Damnjanovic explains the problems it is set out to solve in LTE:
[t]he Node B may send a transmission of data to the UE.
The UE may decode the transmission of data and may
send acknowledgment (ACK) information to the Node B.
The ACK information may indicate whether the
transmission of data was decoded correctly or in error by
the UE. The Node B may determine whether to send a
retransmission of data or a new transmission of data to
the UE based on the ACK information. It may be
desirable to efficiently assign ACK resource to the UE
for use to send the ACK information.
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Ex. 1007 at [0006]. Similarly, Baldemair discloses the same problem it set out to
solve in LTE-A:
[i]t would be desirable to enable conveyance of
additional control information without increasing
resource waste, causing insufficient addressing or
increasing the burden of blind detection in a receiver.
Ex. 1007 at 3:65-4:1; Ex. 1003 at ¶199.
Third, both references disclose the same solution, one in LTE
(Damnjanovic) and one in LTE-A (Baldemair)—reusing TPC-command bits from
the DCI to send ACK resource indication information when the TPC-command
does not need to transmit power control information. Damnjanovic discloses that
the LTE system may support dynamic scheduling and semi-persistent scheduling.
Ex. 1007 at [0007]. For dynamic scheduling, a scheduling message may be sent
with each transmission of data and may convey parameters and resources used for
that transmission of data. For semi-persistent scheduling, a scheduling message
sent once may be applicable for multiple transmissions of data. Ex. 1007 at
[0025]. For semi-persistent scheduling, Damnjanovic discloses re-using at least
one of the existing fields of a scheduling message that would normally be used to
carry scheduling information for dynamic scheduling to instead carry an ACK
resource assignment for semi-persistent scheduling. Ex. 1007 at [0039].
Damnjanovic also discloses that the re-used field may be the TPC command field:
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In yet another design, an ACK resource assignment may
be sent in the TPC command field. Two bits are
available in the TPC command field. Hence, up to four
ACK resources may be configured and assigned indices
of 0 to 3. A 2-bit ACK resource index for one of up to
four configured ACK resources may be sent in the TPC
command field to the UE.
Ex. 1007 at [0050]; Ex. 1003 at ¶¶200-201. Similarly, Baldemair discloses that
one PDCCH “associated with a first one of said at least two downlink component
carriers” (Ex. 1004 at 8:50-59) would carry the TPC-command information but the
remaining component carriers assigned to the UE can carry other control
information in the TPC-command field, such as the ARI:
An insight of great value is thus that when multiple CCs
are assigned to a UE, the control bits normally used for
TPC-commands related to all but one CC could be used
to convey other relevant control information. One
PDCCH would still need to carry the true TPC-
command.
There are several alternatives to what these freed format
TPC-bits could be used for. For example, these bits
could be used to signal which PUCCH or PUSCH
resources that should be used to convey the hybrid-ARQ
bits of the corresponding downlink shared channel
transmissions.
Ex. 1004 at 7:32-41, 8:36-9:41 and Figure 9; Ex. 1003 at ¶202.
Accordingly, a person of ordinary skill in the art would have been motivated
to combine the teachings of Damnjanovic and Baldemair to fully describe a known
solution to a known problem. Ex. 1003 at ¶204.
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2. Claim 3
a) Preamble: “A method for feeding back
Acknowledgement/Negative acknowledgement
(ACK/NACK) information for carrier aggregation”
Damnjanovic and Baldemair disclose or render obvious in combination the
preamble. For example, Damnjanovic discloses feeding back ACK/NACK
information:
In an aspect, at least one field of a scheduling message,
which is normally used to carry scheduling information
for dynamic scheduling, may be re-used to carry an ACK
resource assignment for semi-persistent scheduling. In
one design, a UE may receive a scheduling message
carrying a semi-persistent assignment and may obtain an
assignment of ACK resource from the at least one field
of the scheduling message. The UE may receive a
transmission of data sent in accordance with the semi-
persistent assignment, determine ACK information
for the transmission of data, and send the ACK
information with the ACK resource.
Ex. 1007 at Abstract (emphasis added). While Damnjanovic does not explicitly
disclose carrier aggregation, for the reasons stated above, it would have been
obvious for one of skill in the art to combine Damnjanovic’s disclosure of feeding
back ACK/NACK information in LTE technology with Baldemair’s disclosure of
feeding back ACK/NACK information in LTE-A technology using carrier
aggregation. Ex. 1003 at ¶¶206-207. As explained above, Baldemair teaches the
preamble.
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b) [3A]: “receiving downlink control information (DCI)
which is sent by a base station and transmitted by a
downlink component carrier”
Damnjanovic and Baldemair disclose or render obvious in combination
claim element [3A]. Ex. 1003 at ¶208. Damnjanovic teaches receiving DCI sent
by a base station and transmitted by a downlink component carrier (i.e., PDSCH):
The Node B may send a transmission of one or more
transport blocks on the PDSCH in subframe t1. The
Node B may send the transport block(s) in one or more
resource blocks and in accordance with parameters
conveyed by the semi-persistent assignment. The UE
may receive the semi-persistent assignment from the
PDCCH and may process the transmission on the
PDSCH in accordance with the semi-persistent
assignment to recover the transport block(s) sent by the
Node B.
Ex. 1007 at [0036] (emphasis added). Damnjanovic further teaches receiving DCI:
FIG. 4A shows a scheduling message 410 in accordance
with Formats 1 and 1A defined by LTE. Formats 1 and
1A may be used to schedule transmission of one transport
lock on the PDSCH. Message 410 includes a resource
block assignment field, an HARQ process number
field, a modulation and coding scheme (MCS) field, a
new data indicator field, a redundancy version field,
and a transmit power control (TPC) command field.
The redundancy version field and the new data indicator
field may be considered as belonging in a retransmission
sequence number field.
Ex. 1007 at [0041]; see also id. at Figs. 4A, 4B. Damnjanovic discloses a table
that provides a short description of each field in the scheduling message (i.e.,
DCI):
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Ex. 1007 at Table 1. Ex. 1003 at ¶¶209-212. As explained above, Baldemair
teaches claim element [3A].
While Damnjanovic does not explicitly disclose a downlink component
carrier, Damnjanovic does disclose transmitting Message 410 on the PDSCH, the
physical downlink shared control channel. Applying this technology to LTE-A, it
would have been obvious for one of skill in the art to transmit Message 410 on a
downlink component carrier. Further, it would have been obvious for one of skill
in the art to combine Damnjanovic’s disclosure of feeding back ACK/NACK
information in LTE technology with Baldemair’s disclosure of feeding back
ACK/NACK information in LTE-A technology using carrier aggregation. Ex.
1003 at ¶212.
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c) [3B]: feeding back ACK/NACK information according
to a command indicated by a common field present in
the DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, and the common field is
indicative of one of a transmission power control (TPC)
command and an ACK resource indication (ARI)
command”
Damnjanovic and Baldemair disclose or render obvious in combination
claim element [3B]. Ex. 1003 at ¶213. Damnjanovic discloses feeding back
ACK/NACK information according to a command (i.e., ACK resource
assignment) indicated by a common field present in the DCI. For example,
Damnjanovic discloses that
In an aspect, at least one field of a scheduling message,
which is normally used to carry scheduling
information for dynamic scheduling, may be re-used
to carry an ACK resource assignment for semi-
persistent scheduling. In one design, a UE may receive a
scheduling message carrying a semi-persistent
assignment and may obtain an assignment of ACK
resource from the at least one field of the scheduling
message. The UE may receive a transmission of data
sent in accordance with the semi-persistent
assignment, determine ACK information for the
transmission of data, and send the ACK information
with the ACK resource.
Ex. 1007 at Abstract (emphasis added).
Damnjanovic discloses that the common field is indicative of one of a
transmission power control (TPC) command and an ACK resource indication
(ARI) command. For example, Damnjanovic discloses that
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At least one field of message 410 or 420 may be used
to send an ACK resource assignment. In general, any
field(s) may be used to send the ACK resource
assignment. However, it may be desirable to select a
field that is not relevant (or not as relevant) for semi-
persistent scheduling. For example, a field that may be
less applicable for the first transmission of data and/or
may have little adverse effect on performance may be
selected. The number of fields to select may be
dependent on the number of bits needed to send the ACK
resource assignment.
In one design, an ACK resource assignment may be
sent in the new data indicator field, the redundancy
version field, and the TPC command field.
* * *
In yet another design, an ACK resource assignment
may be sent in the TPC command field. Two bits are
available in the TPC command field. Hence, up to four
ACK resources may be configured and assigned indices
of 0 to 3. A 2-bit ACK resource index for one of up to
four configured ACK resources may be sent in the TPC
command field to a UE.
Ex. 1007 at [0046], [0047], [0050] (emphasis added); see also id. at Claims 1, 3,
and 4; Ex. 1003 at ¶¶214-215.
Damnjanovic also discloses that the common field is configured as one
command according to a type of a downlink component carrier transmitting the
DCI. For example, Damnjanovic discloses configuring the common field based on
the type of downlink scheduling transmitted by the Node B—the common field
may be configured as a TPC-command for dynamic scheduling and as an ACK
resource assignment for semi-persistent scheduling:
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For dynamic scheduling, message 410 or 420 may be
used to send scheduling information for a
transmission of data. A suitable scheduling message
may be selected based on whether one or multiple
transport blocks are send and/or other considerations.
For semi-persistent scheduling, message 410 or 420
may be used to send a semi-persistent assignment
with the first transmission of data. At least one field
of message 410 or 420 may be used to send an ACK
resource assignment. In general, any field(s) may be
used to send the ACK resource assignment. However, it
may be desirable to select a field that is not relevant (or
not as relevant) for semi-persistent scheduling. For
example, a field that may be less applicable for the first
transmission of data and/or may have little adverse effect
on performance may be selected. The number of fields to
select may be dependent on the number of bits needed to
send the ACK resource assignment.
Ex. 1007 at [0046]; see also id. at Figs 4A and 4B (illustrating the fields in the
scheduling message, including the 2-bit TPC-command used for dynamic
scheduling); Ex. 1003 at ¶216.
To the extent this limitation is not explicitly disclosed in Damnjanovic, it
would have been obvious to combine the disclosures of Damnjanovic with the
knowledge of one of skill in the art to disclose this limitation. Ex. 1003 at ¶217.
Damnjanovic discloses sending TPC-command information or ACK resources
assignment based on the type of scheduling message the Node B must transmit to
the UE. Ex. 1003 at ¶217. It would have been obvious to one of skill in the art to
use this disclosure in the context of carrier aggregation to configure the common
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field based on the type of downlink component carrier, as opposed to the type of
scheduling message. Ex. 1003 at ¶217.
For the reasons stated above, it also would have been obvious to combine
the disclosures of Damnjanovic with Baldemair to disclose this limitation. As
explained above, Baldemair teaches claim element [3B]. Ex. 1003 at ¶218.
d) [3C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
Damnjanovic alone or in combination with Baldemair render obvious claim
element [3C]. Ex. 1003 at 219. As disclosed above for claim element [3B],
Damnjanovic discloses configuring the common field based on the type of
scheduling message the Node B transmits to the UE——the common field may be
configured as a TPC-command for dynamic scheduling and as an ACK resource
assignment for semi-persistent scheduling. Ex. 1007 at [0046].
It would have been obvious to combine the disclosures in Damnjanovic with
the knowledge of one of skill in the art to disclose configuring the common field
based on whether the downlink component carrier was system-linked or non-
system-linked in carrier aggregation technology. Ex. 1003 at ¶221. As explained
above, when a downlink component carrier is “system-linked,” its ACK channel
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resource is implicitly mapped to an uplink carrier. Similarly in the LTE
technology disclosed in Damnjanovic, for dynamic scheduling, the ACK channel
resource is implicitly mapped, on the uplink carrier. Ex. 1007 at [0025], [0033]
(stating that “[f]or dynamic scheduling, the ACK resource may be linked to the
first CCE (Control Channel Element) carrying the scheduling information . . . The
ACK resource may thus be implicitly conveyed via the scheduling information . .
.”).
As explained above, when a downlink component carrier is “non-system-
linked,” its ACK channel resource is not implicitly mapped to an uplink carrier.
Ex. 1003 at ¶222. Similarly in the LTE technology disclosed in Damnjanovic, for
semi-persistent scheduling, the ACK channel resource is explicitly mapped, and
because for semi-persistent scheduling, downlink control information (such as the
TPC command) may be sent once and may be applicable for multiple
transmissions of data the same command field can instead be used to send the
acknowledgement resource assignment. Ex. 1007 at [0025], [0046], and [0050].
Therefore, it would have been obvious for one of skill in the art to extend the
disclosures of Damnjanovic to carrier aggregation technology to disclose this
limitation. Ex. 1003 at ¶222.
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For the reasons stated above, it also would have been obvious to combine
the disclosures of Damnjanovic with Baldemair to disclose this limitation. As
explained above, Baldemair teaches claim element [3C]. Ex. 1003 at ¶223.
3. Claim 4
Claim 4 depends from claim 3. Damnjanovic and Baldemair disclose or
render obvious in combination claim 4. Ex. 1003 at ¶224. Damnjanovic discloses
a DCI corresponding to a PDSCH transmission of a downlink primary component
carrier. For example, Damnjanovic discloses that
[t]he Node B may send a transmission of one or more
transport blocks on the PDSCH in subframe t1. The
Node B may send the transport block(s) in one or more
resource blocks and in accordance with parameters
conveyed by the semi-persistent assignment. The UE
may receive the semi-persistent assignment from the
PDCCH and may process the transmission on the
PDSCH in accordance with the semi-persistent
assignment to recover the transport block(s) sent by the
Node B.
Ex. 1007 at [0036] (emphasis added).
FIG. 4A shows a scheduling message 410 in accordance
with Formats 1 and 1A defined by LTE. Formats 1 and
1A may be used to schedule transmission of one
transport lock on the PDSCH. Message 410 includes a
resource block assignment field, an HARQ process
number field, a modulation and coding scheme (MCS)
field, a new data indicator field, a redundancy version
field, and a transmit power control (TPC) command field.
The redundancy version field and the new data indicator
field may be considered as belonging in a retransmission
sequence number field.
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Ex. 1007 at [0041] (emphasis added).
To the extent this limitation is not explicitly disclosed in Damnjanovic, for
the reasons stated above, it would have been obvious to combine the disclosures of
Damnjanovic with Baldemair to disclose this limitation. As explained above,
Baldemair teaches claim 4. Ex. 1003 at ¶¶225-226.
4. Claim 5
Claim 5 depends from claim 3. As disclosed in claim 4 above, Damnjanovic
and Baldemair disclose or render obvious in combination claim 5. Ex. 1003 at
¶227.
5. Claim 9
a) Preamble: “A user equipment”
Damnjanovic and Baldemair disclose or render obvious in combination the
preamble. Damnjanovic teaches a user equipment (i.e., “UE”):
In an aspect, at least one field of a scheduling message,
which is normally used to carry scheduling information
for dynamic scheduling, may be re-used to carry an ACK
resource assignment for semi-persistent scheduling. In
one design, a UE may receive a scheduling message
carrying a semi-persistent assignment and may obtain
an assignment of ACK resource from the at least one
field of the scheduling message. The UE may receive a
transmission of data sent in accordance with the semi-
persistent assignment, determine ACK information for
the transmission of data, and send the ACK information
with the ACK resource.
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Ex. 1007 at Abstract (emphasis added). Damnjanovic also discloses the process a
UE takes for receiving data with semi-persistent scheduling:
Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-11, [0006],
[0036], [0058]-[0072]. As explained above, Baldemair also teaches the preamble.
Ex. 1003 at ¶¶230-231.
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b) [9A]: “a receiving module, configured to receive
downlink control information (DCI) that is sent by a
base station and transmitted by a downlink component
carrier”
Damnjanovic and Baldemair disclose or render obvious in combination
claim element [9A] as described above for claim element [3A]. Ex. 1003 at ¶232.
In addition, Damnjanovic discloses a receiving module configured to receive DCI
sent by the base station and transmitted by a downlink component carrier:
Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-9, Abstract,
[0036], [0058]-[0059], [0062]-[0064], [0068]; Ex. 1003 at ¶233.
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c) [9B]: “a feedback module, configured to feed-back
Acknowledgement/Negative-acknowledgement
(ACK/NACK) feedback information according to a
command indicated by a common field preset in the
DCI, wherein the common field is configured as one
command according to a type of a downlink component
carrier transmitting the DCI, the common field is
indicative of one or a transmission power control
(TPC) command and an ACK resource indication (ARI)
command”
Damnjanovic and Baldemair disclose or render obvious in combination
claim element [9B] as described above for the preamble of claim 3 and claim
element [3B]. Ex. 1003 at ¶234. In addition, Damnjanovic discloses a feed back
module to feed-back ACK/NACK feedback information according to a command
indicated by a common field:
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Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-9, Abstract,
[0058], [0061]-[0062], [0064]; Ex. 1003 at ¶235.
d) [9C]: “wherein the common field is configured by
configuring the common field in at least one piece of
DCI transmitted by a system-linked downlink
component carrier as a TPC command and configuring
the common field in at least one piece of DCI
transmitted by a non-system-linked downlink
component carrier as an ARI command.”
Damnjanovic and Baldemair disclose or render obvious in combination
claim element [9C] as described above for claim element [3C]. Ex. 1003 at ¶236.
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6. Claim 10
Claim 10 depends from claim 9. Damnjanovic and Baldemair disclose or
render obvious in combination claim 10 as described above for claim 4. Ex. 1003
at ¶237.
7. Claim 11
Claim 11 depends from claim 9. Damnjanovic and Baldemair disclose or
render obvious in combination claim 11 as described above for claim 5. Ex. 1003
at ¶238.
XI. SECONDARY CONSIDERATIONS
The Patent Owner has not identified any evidence of secondary
considerations, either in the prosecution history or in the related district court
litigation. Petitioner is not aware of any evidence of secondary considerations
supporting a finding of non-obviousness and reserves the right to present rebuttal
evidence if and when the Patent Owner presents such evidence.
XII. CONCLUSION
Petitioner has established a reasonable likelihood that the challenged claims
of the ’587 Patent will be found unpatentable. Petitioner therefore respectfully
requests that inter partes review of the ’587 Patent be granted, and that claims 3-5
and 9-11 be held unpatentable on Grounds 1, 2, and 3.
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Respectfully submitted,
Date: May 24, 2017
/s/ Marissa R. Ducca
Kevin P.B. Johnson
(Reg. No. 38927)
kevinjohnson@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN LLP
555 Twin Dolphin Drive, 5th Floor
Redwood City, CA 94065
Tel: (650) 801-5000
Fax: (650) 801-5100
Marissa R. Ducca
(Reg. No. 59807)
marissaducca@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN LLP
777 6th Street NW, 11th Floor
Washington, DC 20001
Tel: (202) 538-8000
Fax: (202) 538-8100
Attorneys for Petitioner Samsung Elecs.
Co., Ltd.
U.S. Patent No. 8,885,587
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`
CERTIFICATION UNDER 37 C.F.R. §42.24
Under the provisions of 37 C.F.R. §42.24, the undersigned hereby certifies
that the word count for the foregoing Petition for inter partes review totals 13,791
words, which is less than the 14,000 allowed under 37 C.F.R. §42.24(a)(i).
Date: May 24, 2017
/s/ Marissa R. Ducca
Marissa R. Ducca (Reg. No. 59807)
U.S. Patent No. 8,885,587
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CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), the undersigned hereby certifies
service on the Patent Owner of a copy of this Petition and its respective exhibits at
the official correspondence address for the attorney of record for the ’587 Patent as
shown in USPTO PAIR via EXPRESS MAIL:
SLATER MATSIL, LLP
17950 PRESTON ROAD, SUITE 1000
DALLAS, TX 75252
and
MICHAEL J. BETTINGER
SIDLEY AUSTIN LLP
555 CALIFORNIA STREET, #2000
SAN FRANCISCO, CA 94104
Date: May 24, 2017
/s/ Marissa R. Ducca
Marissa R. Ducca (Reg. No. 59807)