Ericsson Incv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Feb 24, 2015

09349482 (P.T.A.B. Feb. 24, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Entered: February 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
Petitioners,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-01331
Patent 6,640,248 B1

Before BRIAN J. MCNAMARA, DAVID C. MCKONE, and
BETH Z. SHAW, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 6,640,248 B1

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I. INTRODUCTION
Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively,
“Petitioner”) filed a Petition (“Pet.”) to institute an inter partes review of
claims 1–20 of Patent 6,640,248 B1 (“the ’248 patent”) pursuant to
35 U.S.C. § 311–319. Paper 2. Patent Owner Intellectual Ventures I LLC
(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”) to the
Petition. We have jurisdiction under 35 U.S.C. § 314, which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a).
After considering the Petition and Preliminary Response, we
determine that Petitioner has not established a reasonable likelihood of
prevailing on any of the claims challenged in the Petition. Accordingly, we
do not institute an inter partes review.

A. The ’248 Patent (Ex. 1001)
The ’248 patent is entitled “Application-Aware, Quality of Service
(QoS) Sensitive, Media Access Control (MAC) Layer.” Ex. 1001, Title.
According to the ’248 patent, delivering data in a reliable and timely manner
depends on the nature of the traffic being delivered. Id. at 12:41–44. For
example, poor quality in streaming multimedia applications can result from
high jitter or large variations in latency. Id. at 12:28–35. The ’248 patent
describes a mechanism that is application-specific rather than circuit-
specific, to conserve wireless bandwidth so that bandwidth is allocated
where needed. Id. at 22:8–12.
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The ’248 patent describes using a MAC layer that provides an
application switching function in an IP-centric wireless environment. Id. at
22:16–19. The ’248 patent describes a resource allocator in the MAC layer
that allocates resources (e.g., bandwidth) for communication on a packet-
switched network. Id. at Abstract, 3:34–51. The MAC layer allocates
bandwidth to an IP flow associated with a software application based on the
IP QoS requirements of the software application so that the IP flows of each
application can be switched to appropriate destinations in a proper priority
order. Id. at 22:20–24.
In some cases, “application-level information about the nature of the
application can be used by the system to assign appropriate QoS mechanism
parameters to the IP stream,” while in others, “information about the IP
streams for use in configuring the appropriate QoS mechanism parameters
can be extracted from packet headers.” Id. at 22:27–32. In particular, the
’248 patent explains that packet header information—such as IP header
fields, including source and destination IP addresses—can be used to
identify IP flows and the QoS requirements of the IP flows. Id. at 53:18–27.
The ’248 patent states that these header fields are helpful in providing
“application aware” resource allocation. Id. The application information is
communicated vertically in the protocol stack model from the application
layer to the MAC layer for bandwidth reservation and application switching
purposes. Id. at 22:32–37.

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B. Illustrative Claims
Independent claims 1 and 20 of the ’248 patent are illustrative and
recite:
1. An application aware, quality of service (QoS) sensitive,
media access control (MAC) layer comprising:
an application-aware resource allocator at the MAC
layer, wherein said resource allocator allocates bandwidth
resource to an internet protocol (IP) flow associated with a
software application of a user based on IP QoS requirements of
said software application, wherein said resource allocator
allocates said bandwidth resource in a packet centric manner
that is not circuit-centric and does not use asynchronous
transfer mode (ATM).

20. An application-aware media access control (MAC) layer
for optimizing end user application internet protocol (IP)
quality of service (QoS) to IP flows comprising:
identifying means for identifying an application type of a
software application associated with an IP flow; and
allocating means for allocating resources to said IP flow,
responsive to said identifying means, so as to optimize end user
application IP QoS requirements of said software application,
wherein said resource allocating means allocates resources in a
packet-centric manner that is not circuit-centric and does not
use asynchronous transfer mode (ATM).

C. The Prior Art
Petitioner relies on the following prior art references as its basis for
challenging claims 1–20 of the ’248 patent.
1

Reference Patent Exhibit
Ganz et al. US Patent 6,049,549 Ex. 1004 (“Ganz”)
Haddock et al. US Patent 6,104,700 Ex. 1005 (“Haddock”)

1
Petitioner also proffers the Declaration of Mark R. Lanning. See Ex. 1003.
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D. The Asserted Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 4):
Statutory Ground Basis Challenged Claims
§ 102(e) Ganz 1–7, 9–14, 16, 17, and 20
§ 103 Ganz 1–7, 9–14, 16, 17, and 20
§ 103 Ganz and Haddock 1–20

E. Claim Interpretation
Consistent with the statute and legislative history of the America
Invents Act (AIA), the Board interprets claims using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Neither Petitioner nor Patent Owner proposes a claim construction for
any specific claim terms of independent claim 1. Accordingly, for purposes
of this decision, we construe the claims using the broadest reasonable
construction in light of the specification of the ’248 patent.

II. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in its Preliminary Response to determine whether
Petitioner has met the threshold standard of 35 U.S.C. § 314(a).

A. Independent Claim 20
Petitioner argues, and Patent Owner does not dispute, that claim 20
recites limitations with “means-plus-function” language. Pet. 8; Prelim.
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Resp. 7–11. Thus, claim 20 is to be construed to cover the corresponding
structure described in the specification and equivalents. See 35 U.S.C.
§ 112, ¶ 6.
2
By rule, Petitioner is required to identify the corresponding
structure in its Petition. See 37 C.F.R. § 42.104(b)(3) (“Where the claim to
be construed contains a means-plus-function or step-plus-function limitation
. . . the construction of the claim must identify the specific portions of the
specification that describe the structure, material, or acts corresponding to
each claimed function.”) (emphasis added).
Patent Owner asserts that Petitioner fails to identify the corresponding
structure for the “identifying means” limitation of claim 20, as required by
37 C.F.R. § 42.104(b)(3). In particular, Patent Owner asserts that Petitioner
states that the specification of the ’248 patent “does not disclose an
algorithm for the Claim 20 ‘identifying means’ . . . as required for these
computer-implemented means-plus-function limitations.” Prelim. Resp. 12
(citing Pet. 9).
We agree with Patent Owner that Petitioner states that the ’248 patent
does not disclose an algorithm for the identifying means. Pet. 9. As such,
Petitioner fails to identify corresponding structure for the identifying means,

2
Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
§ 112(f). Because the ’248 patent has a filing date before September 16,
2012 (effective date of the statute), we will refer to the pre-AIA version of
35 U.S.C. § 112.
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and therefore fails to comply with 37 C.F.R. § 42.104(b)(3). Accordingly,
the Petition as to claim 20 is denied.
3

B. Anticipation Based on Ganz (Ex. 1004)
Petitioner challenges claims 1–7, 9–14, 16, 17, and 20
4
as anticipated
by Ganz. Pet. 11. Petitioner does not propose a specific claim construction
for the “application-aware resource allocator at the MAC layer,” as recited
in claim 1. Pet. 7.
With respect to the application-aware resource allocator at the MAC
layer, required by claims 1–7, 9–14, 16, and 17, Petitioner points to Ganz’s
disclosure of “providing support for QoS requirements at the MAC layer,
and a resource manager that allocates network resources to support
sessions.” Pet. 16. Petitioner also points to language in Ganz stating:
Support for QoS requirements is more easily provided at the
MAC layer than at higher layers or the protocols. In particular,
an adaptive MAC polling approach in combination with a
resource manager provide efficient use of limited and time
varying communication resources while satisfying QoS
requirements, if possible.
Pet. 11–12 (emphasis by Petitioner) (quoting Ex. 1004, col. 2, ll. 2–7).
According to Petitioner, Ganz “discloses that the resource manager of an

3
Although Petitioner also alleges that dependent claim 17 recites limitations
with means-plus-function language (see Pet. 8–9), which Patent Owner
disputes (see Prelim. Resp. 8–10), we do not reach this issue with respect to
claim 17 because, as discussed in more detail below, the Petition is denied as
to independent claim 1, from which claim 17 depends.
4
As discussed above, the Petition as to independent claim 20 is denied.
Therefore, we do not discuss claim 20 further in this Decision.
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arbiter station provides admission control and bandwidth allocation based in
part on whether a session is a QoS session or a non-QoS session.” Pet. 18.
Figure 3 of Ganz is reproduced below:

Figure 3 depicts software modules that execute on a wireless station.
Ex. 1004, 3:48–49.
Petitioner identifies resource manager 322 as “said resource
allocator.” Pet. 12. Neither Petitioner, nor the testimony of Mr. Lanning
that Petitioner points to, however, explains anything more about how the
cited portions of Ganz disclose how the resource manager of Ganz is “at the
MAC layer,” as required by claim 1. Pet. 16; Ex. 1003 ¶ 48. For example,
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the portion of Mr. Lanning’s Declaration identified by Petitioner states “the
MAC layer, which is responsible for allocation of resources along with other
media control modules” (Pet. 16; Ex. 1003 ¶ 48) (emphasis added), also
does not explain how resource manager 322 of Ganz, which is shown as part
of “media control modules 222” in Figure 3, and separate from MAC 320, is
“at the MAC layer.”
Moreover, the testimony of Mr. Lanning states that the “media
control modules [which include MAC layer 320] are able to differentiate
between QoS and non-QoS sessions.” Ex. 1003 ¶ 75 (emphasis and brackets
in original); Ex. 1003, Appendix 2 at 7 & 12. Here, Mr. Lanning identifies
MAC 320 out of the plurality of components in media control modules 222
as the MAC layer. Thus, the testimony of Mr. Lanning illustrates that he
considers MAC 320 of Ganz, rather than the media control modules
(including resource manager 322) more generally, to be a MAC layer. In
contrast, neither the Petition, nor the testimony of Mr. Lanning, explains
how the resource manager of Ganz is at this MAC layer.
Patent Owner asserts Petitioner does not identify any disclosure of
Ganz to explain, or even suggest, that the resource manager of Ganz is in the
MAC layer. Prelim. Resp. 19–20. We agree with Patent Owner that
Petitioner also at times refers to Ganz’s MAC 320 as the MAC layer.
Prelim. Resp. 21. We also agree with Patent Owner that Figure 3 of Ganz
shows that resource manager 322 is separate and distinct from MAC 320.
Id.
We are not persuaded that Petitioner has identified or explained
sufficiently how the portions of Ganz relied upon by Petitioner disclose that
resource manager 322 is at MAC 320, or at any MAC layer. Rather,
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Figure 3 of Ganz simply depicts that resource manager 322 is part of media
control modules 222. Petitioner, however, has not explained persuasively
how resource manager 322 or media control modules 222 reside at the MAC
layer.

Nor does Petitioner point to persuasive testimony from Mr. Lanning
explaining that resource manager 322 of Ganz is at the MAC layer. Further,
Petitioner does not point to persuasive evidence that such a limitation is
inherently disclosed by Ganz. Thus, we deny Petitioner’s challenge that
Ganz anticipates claim 1, or dependent claims 2–7, 9–14, 16, and 17.

C. Obviousness over Ganz Alone
Petitioner also challenges claims 1–7, 9–14, 16, and 17 as obvious
over Ganz. Pet. 11. Petitioner does not provide additional evidence or
explanation, beyond its discussion with respect to the asserted anticipation of
claim 1 by Ganz, as to why claim 1 is obvious over Ganz. For essentially
the same reasons discussed above with respect to anticipation, we determine
that there is not a reasonable likelihood that Petitioner will prevail in
showing that claims 1–7, 9–14, 16, and 17 would have been obvious over
Ganz.

D. Obviousness over Ganz and Haddock (Ex. 1005)
Petitioner challenges claims 1–19 as unpatentable over Ganz and
Haddock. Pet. 38. Petitioner refers to “Ground 1, Claim 1 chart above,
referring to Ex. 1004 [Ganz]” as disclosing the “application-aware resource
allocator at the MAC layer.” Pet. 39. Accordingly, Petitioner does not
allege that Haddock remedies the deficiencies of Ganz with respect to the
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“application-aware resource allocator at the MAC layer” requirement of
claim 1 discussed above. Therefore, Petitioner has not demonstrated that
there is a reasonable likelihood that Petitioner will prevail in showing that
claims 1–19 of the ’248 patent are unpatentable as obvious over Ganz and
Haddock.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not shown
a reasonable likelihood that it would prevail in demonstrating that any of the
challenged claims of the ’248 patent are unpatentable on at least one
challenged ground.

IV. ORDER
ORDERED that an inter partes review of U.S. Patent No. 6,640,248 is
not instituted based on this Petition.

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PETITIONER:

J. Robert Brown, Jr.
Charles J. Rogers
Amy LaValle
rbrown@dfw.conleyrose.com
crogers@conleyrose.com
alavalle@dfw.conleyrose.com

PATENT OWNER:

Herbert Hart
David Petty
James Hietala
Tim Seeley
Andrew Karp
hhart@mcandrews-ip.com
deptty@mcandrews-ip.com
jhietala@intven.com
tim@intven.com
akarp@mcandrews-ip.com