IPCom GmbH & Co. KG

Patent Trials and Appeals Board

Aug 12, 2021

IPR2021-00507 (P.T.A.B. Aug. 12, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: August 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ERICSSON INC. and NOKIA OF AMERICA CORPORATION,
Petitioner,
v.
IPCOM GMBH & CO. KG,
Patent Owner.

IPR2021-00507
Patent 7,006,463 B2

Before JONI Y. CHANG, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Ericsson Inc. and Nokia of America Corporation (collectively,
“Petitioner”) filed a Petition for inter partes review of claims 6–18 of U.S.
Patent No. 7,006,463 B2 (Ex. 1001, “the ’463 patent”). Paper 3 (“Pet.”).
IPCom GmbH & Co. KG (“Patent Owner”) filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). Patent Owner also filed a statutory disclaimer of
claims 7, 10–12, 14, 17, and 18 of the ’463 patent. Ex. 2023 (statutory
disclaimer filed May 18, 2021); see Prelim. Resp. 1.
Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
institute an inter partes review if “the information presented in the
petition . . . and any response . . . shows that 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, the Preliminary Response, and the evidence of record, we conclude
the information presented does not show there is a reasonable likelihood that
Petitioner would prevail in establishing the unpatentability of at least one of
claims 6, 8, 9, 13, 15, and 16 of the ’463 patent, which are the claims
remaining for consideration after Patent Owner’s statutory disclaimer.
Accordingly, we do not institute an inter partes review.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies Ericsson Inc., Telefonaktiebolaget LM Ericsson
Inc., and Nokia of America Corporation as real parties-in-interest. Pet. 2.
Patent Owner identifies IPCom GmbH & Co. KG as a real party-in-interest.
Paper 5, 2 (Patent Owner’s Mandatory Notices).
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B. Related Matters
The parties identify the following district court proceedings involving
the ’463 patent: IPCom GmbH & Co. KG v. Sprint Spectrum L.P., No. 2-20-
cv-00321 (E.D. Tex.); IPCom GmbH & Co. KG v. AT&T Inc., No. 2-20-cv-
00322 (E.D. Tex.); IPCom GmbH & Co. KG v. Verizon Communications
Inc., No. 2-20-cv-00323 (E.D. Tex.). Pet. 2; Paper 5, 2. The parties also
identify several matters pending before the Board involving patents asserted
in the same district court proceedings. Pet. 3; Paper 5, 2–3.
C. Overview of the ’463 Patent
The ’463 patent, titled “CDMA Communication System and Its
Transmission Power Control Method,” describes a transmission power
control method for use in a code division multiple access (CDMA) mobile
communication system. Ex. 1001, code (54), 1:13–15. More specifically,
the ’463 patent describes a method for uplink channel transmission power
control in a CDMA mobile communication system that provides one-way
data communication on uplink traffic channels. Id. at code (57). The
’463 patent explains that in a CDMA mobile communication system, it is
important to limit transmission power received at a base station to a
minimum necessary power in order to minimize interference and maximize
the number of channels capable of being communicated by the base station.
Id. at 1:19–39.
As background, the ’463 patent describes an uplink transmission
power control method incorporated into the TIA/EIA/IS-95 CDMA standard
for digital cellular phones adopted in North America. Id. at 1:40–2:23. A
base station and a mobile terminal communicate using an uplink traffic
channel (i.e., transmission from mobile terminal to base station) and a
downlink traffic channel (i.e., transmission from base station to mobile
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terminal). Id. at 1:46–53.1 The base station measures the reception power of
data transmitted from each mobile terminal and generates a transmission
power control signal based on the measured reception power. Id. at 1:54–57.
The transmission power control signal is a “1” if the reception power is
greater than a target and a “0” if the reception power is smaller than the
target. Id. at 1:57–63. The base station inserts the generated transmission
power control signal into data to be transmitted on the downlink traffic
channel to the mobile terminal. Id. at 1:63–2:23, Fig. 12.
The ’463 patent explains that for one-way data communication (e.g.,
uplink traffic from mobile terminals to base station), it is inefficient to
provide for each mobile terminal a downlink channel that is used to carry
only the uplink transmission power control signal for that mobile terminal
transmitted from the base station. Id. at 2:48–52. To address this
inefficiency problem, the ’463 patent describes a method for use in a CDMA
packet data communication system in which a base station controls the
transmission power of each of a plurality of mobile terminals by using a
single downlink channel that is common for all mobile terminals. Id. at
2:53–57.

1 “Uplink” communication also is referred to as “reverse link,” and
“downlink” communication also is referred to as “forward link.” See
Ex. 1003 ¶ 37 (Declaration of Dr. Michael Kotzin); Ex. 1006, 2:36–42.
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The ’463 patent describes a transmission power control method in the
context of a CDMA communication system using reservation-based access
control, as shown below in Figure 2:

Figure 2 above is a timing diagram illustrating a CDMA communication
system with reservation-based access control in which each mobile terminal
in a given area has an uplink traffic channel for transmitting data to the base
station, and the mobile terminals share a reservation channel (uplink), an
answer channel (downlink), and a pilot channel (downlink). Id. at 3:58–65.
In typical operation, a mobile terminal having a data transmission request
transmits a reservation packet to the base station on the reservation channel,
and the base station generates a corresponding answer packet containing
scheduling information and transmits it on the answer channel.
Id. at 4:1–22.
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The transmission power control method described in the ’463 patent
uses the answer channel to transmit power control signals to mobile
terminals. Id. at 5:45–53, 7:34–39. In a disclosed embodiment, the base
station measures the received level of each uplink traffic channel, compares
the received level with a target reception level, and generates a transmission
power control signal for each uplink traffic channel. Id. at 5:25–39. The
base station produces a common transmission power control signal
comprising the transmission power control signals generated by the base
station for each traffic channel. Id. at 5:45–53, Fig. 7.
Figure 9 below illustrates further operations of the base station and
mobile terminals:

As shown in Figure 9 above, the base station inserts common transmission
power control signals 142a, 142b, 142c between answer packets transmitted
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on the answer channel. Id. at 5:45–53, 7:34–39. Each mobile terminal that
communicates with the base station derives from each common transmission
power control signal the individual transmission power control signal for the
uplink traffic channel in use by that mobile terminal. Id. at 7:39–44.
D. Illustrative Claim
Claims 6 and 13 are independent; claims 7–12 depend directly or
indirectly from claim 6; and claims 14–18 depend directly or indirectly from
claim 13. Claim 6 is illustrative:
6. A transmission power control method for a CDMA
communication system having a base station and a
plurality of mobile terminals, wherein:
a plurality of traffic channels, each of said plurality of traffic
channels for communication between said base station
and one of said plurality of mobile terminals, and a
common CDMA channel shared by said plurality of
mobile terminals are formed between said base station
and said plurality of mobile terminals, and
said base station generating at least two transmission power
control signals, each of which is for one of said plurality
of mobile terminals, spreading said transmission power
control signals, modulating said spread transmission
power control signals, and transmitting said modulated
transmission power control signals via said common
CDMA channel.
Ex. 1001, 10:10–25.
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E. Asserted Grounds of Unpatentability
Petitioner asserts that claims 6–18 are unpatentable based on the
following grounds (Pet. 13):
Claims Challenged 35 U.S.C. §2 References
6, 8–10, 12, 13, 15, 16, 18 103(a) Komara,
3 Saints,4
Gilhousen5
7, 11, 14, 17 103(a) Komara, Saints, Gilhousen, Lynk6

III. DISCUSSION
A. Statutory Disclaimer
Under Board rules, a “patent owner may file a statutory disclaimer
under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter,
disclaiming one or more claims in the patent. No inter partes review will be
instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e) (2020). After
Petitioner filed the Petition in this case, Patent Owner filed a statutory
disclaimer of claims 7, 10–12, 14, 17, and 18 of the ’463 patent. Ex. 2023
(statutory disclaimer filed May 18, 2021); see Prelim. Resp. 1. Accordingly,
for purposes of determining whether to institute an inter partes review, we
consider only Petitioner’s unpatentability contentions with respect to the

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’463 patent has an
effective filing date earlier than the effective date of the applicable AIA
amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
3 U.S. Patent No. 5,926,747, filed Sept. 5, 1996, issued July 20, 1999
(Ex. 1005, “Komara”).
4 U.S. Patent No. 5,903,554, filed Sept. 27, 1996, issued May 11, 1999
(Ex. 1006, “Saints”).
5 U.S. Patent No. 5,103,459, issued Apr. 7, 1992 (Ex. 1008, “Gilhousen”).
6 U.S. Patent No. 5,025,442, issued June 18, 1991 (Ex. 1015, “Lynk”).
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remaining challenged claims of the ’463 patent, i.e., obviousness of claims
6, 8, 9, 13, 15, and 16 over the combined teachings of Komara, Saints, and
Gilhousen.
B. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) when in evidence, objective indicia of
non-obviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. An obviousness
determination requires finding “both ‘that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted);
see KSR, 550 U.S. at 418 (holding that in an obviousness analysis, “it can be

7 With respect to the fourth Graham factor, the parties do not present
arguments or evidence regarding objective indicia of non-obviousness.
Therefore, the obviousness analysis in this Decision is based on the first
three Graham factors.
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important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does”). Further, “[t]o satisfy its burden of proving
obviousness, a petitioner cannot employ mere conclusory statements. The
petitioner must instead articulate specific reasoning, based on evidence of
record, to support the legal conclusion of obviousness.” In re Magnum Oil
Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
C. Level of Ordinary Skill in the Art
Citing the Declaration of Dr. Michael Kotzin, Petitioner contends that
a person of ordinary skill in the art at the time of the invention “would have
had a bachelor’s degree in electrical engineering, computer engineering,
computer science or similar field, and two years of experience in cellular
communications and/or wireless networking,” and that a person with more
technical education but less experience also could meet the relevant
standard. Pet. 12 (citing Ex. 1003 ¶¶ 18–21). Patent Owner and its
declarant adopt Petitioner’s proposed definition for purposes of their
analysis at this stage of the proceeding. Prelim. Resp. 12; Ex. 2001 ¶ 20
(Declaration of Ray Nettleton, Ph.D.)
To the extent necessary, and for purposes of this Decision, we adopt
Petitioner’s assessment of the level of ordinary skill in the art because it is
consistent with the ’463 patent and the asserted prior art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
D. Claim Construction
In this inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b).
37 C.F.R. § 42.100(b) (2020). In applying this standard, we generally give
claim terms their ordinary and customary meaning as would be understood
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by a person of ordinary skill in the art at the time of the invention and in the
context of the entire patent disclosure. See id.; Phillips v. AWH Corp.,
415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
The parties both contend that no claim terms require express
construction and the claims should be given their ordinary and customary
meaning. Pet. 12–13; Prelim. Resp. 18. We agree that for purposes of this
Decision, no claim terms require construction. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(holding that only claim terms in controversy need to be construed, and only
to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
E. Asserted Obviousness over Komara, Saints, and Gilhousen
Petitioner contends that claims 6, 8, 9, 13, 15, and 16 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Komara, Saints, and Gilhousen.
Pet. 14–49, 54–60. Petitioner relies on the declaration testimony of
Dr. Kotzin in support of its showing. Id. (citing Ex. 1003). Patent Owner
opposes and relies on the declaration testimony of Dr. Nettleton. Prelim.
Resp. 18–41 (citing Ex. 2001). For the reasons discussed below, we
conclude that Petitioner has not demonstrated a reasonable likelihood it
would prevail in showing that claims 6, 8, 9, 13, 15, and 16 are unpatentable
on this asserted ground.
1. Overview of Komara
Komara, a U.S. patent titled “Method and Apparatus for Dynamically
Optimizing the Forward-Link Transmit Power of a Broadband Multi-Carrier
Radio Signal,” is directed to a method for forward-link (i.e., downlink)
transmission power control. Ex. 1005, code (54). Komara describes “a way
of optimizing the forward-channel transmission power [in a mobile
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communication system] even for protocols in which the mobile station does
not report [to the base station] the received forward-channel power.”
Id. at 1:66–2:1. “Instead of having the mobile station monitor the
forward-channel transmission power, . . . the base station infer[s] the proper
forward-channel transmission power from the power that it receives from the
corresponding reverse channel.” Id. at 2:2–6. Komara explains that “the
base station takes advantage of [a] relationship [between the average channel
attenuations of forward and reverse channels] to optimize the power with
which it transmits into the forward channel.” Id. at 2:16–18.
Komara describes its forward-link transmission power control method
in the context of a frequency-division multiple access (FDMA) cellular
communication system, in which different channels occupy different
non overlapping frequency bands. Id. at 1:8–10, 1:22–24, 3:5–29, 4:20–37.
Komara explains that because mobile unit battery power is typically at a
premium, conventional protocols require the base station to monitor
reverse channel power and request mobile units to transmit only at the power
level actually needed. Id. at 2:7–12, 4:53–65. In Komara’s forward-link
transmission power control method, the base station determines an
appropriate forward-channel transmit power based on the monitored
reverse channel transmit power, typically by adding an offset. Id.
at 2:19–26, 6:50–56.8

8 Komara’s forward-link transmission power control is “open loop,” which,
according to Dr. Kotzin, does not rely on feedback and was understood by a
person of ordinary skill in the art “as using the received signal at a device to
indicate how that device’s transmit power level should be adjusted.”
Ex. 1003 ¶ 81 & n.5 (citing Ex. 1007, 1:40–58).
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Komara further details how a base station’s forward-channel power
circuitry and reverse-channel power circuitry cooperate to achieve the proper
forward-channel transmit power. Id. at 4:51–7:25. With regard to
reverse-channel power control, Komara discloses that the base station
monitors received reverse-channel power levels from each mobile unit and
determines for each reverse channel a power level at which the associated
mobile unit should transmit. Id. at 4:61–65.9 The base station then sends
requests to the various mobile units to increase or decrease transmission
power levels “by way of a common forward control channel, which all
mobile units monitor, or by in-band signaling over the dedicated voice
channel.” Id. at 4:65–5:6.
2. Overview of Saints
Saints, a U.S. patent titled “Method and Apparatus for Measuring
Link Quality in a Spread Spectrum Communication System,” describes an
improved method for providing a received signal quality metric used for
forward-link transmission power control. Ex. 1006, codes (54), (57),
2:30–33, 2:36–39. Saints discloses its method in the context of a spread
spectrum (i.e., CDMA) communication system, but states that it is equally
applicable to other types of communication systems. Id. at 2:33–36. Saints
also states that its disclosed method may be used for reverse-link
transmission power control. Id. at 2:39–42.

9 Komara’s reverse-link transmission power control is “closed loop,” which,
according to Dr. Kotzin, relies on feedback and was understood by a person
of ordinary skill in the art “as involving both a transmitting device and a
corresponding receiving device, with the receiving device providing
feedback to the transmitting device to control the transmitting device’s
transmit power.” Ex. 1003 ¶ 80 & n.4 (citing Ex. 1007, 1:59–6:1).
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Saints describes two methods for estimating the signal to noise ratio
on the forward-link traffic channel based on information that is transmitted
from the base station to the mobile unit. Id. at 3:41–7:64. In the pilot
fraction method, the base station transmits a pilot fraction message that
mobile units use when estimating the signal to noise ratio. Id. at 4:45–64.
This message may be combined with data on the forward-link traffic channel
or, because the value is the same regardless of the mobile station to which
communications are being transmitted, the information may be provided on
a common channel that is monitored by all mobile stations in
communication with the base station. Id. at 4:46–48, 4:59–64. After
determining the signal to noise ratio by either the pilot fraction method or
the pilot scatter method, the mobile station prepares a one-bit power control
message that it sends to the base station in a user data packet, on a signaling
channel, or on a dedicated power control channel. Id. at 7:3–25.
3. Overview of Gilhousen
Gilhousen describes the use of CDMA spread spectrum techniques in
a mobile telephone system and is incorporated by reference into Saints.
Ex. 1008, 1:8–13; Ex. 1006, 1:29–34. Gilhousen details how different
channels in a CDMA system are assigned different spreading sequences.
See, e.g., Ex. 1008, 3:54–57, Fig. 4a.
4. Analysis
Petitioner contends that Komara combined with Saints teaches or
suggests every limitation of independent claims 6 and 13 and additionally
contends that Komara combined with Saints and Gilhousen teaches or
suggests certain limitations of claims 6 and 13. Pet. 24–45 (claim 6
analysis); id. at 54–58 (claim 13 analysis referring back to claim 6 analysis
of substantively identical limitations and accounting for minor differences in
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claim language). Petitioner further contends a person of ordinary skill in the
art would have found it obvious to combine Komara with Saints to achieve
the claimed invention and to supplement Saints with the teachings of
Gilhousen. Id. at 17–24.
Petitioner generally relies on Komara for teaching a base station
transmitting uplink transmission power control signals to mobile terminals
over a common channel and relies on Saints and Gilhousen for teaching the
CDMA aspects of the independent claims. For instance, Petitioner contends
that Komara teaches both forward-link and reverse-link power control, and
therefore teaches “[a] transmission power control method for a . . .
communication system having a base station and a plurality of mobile
terminals,” as recited in the preamble of claim 6. Id. at 24–26 (citing
Ex. 1005, 1:8–10, 2:40–42, 4:56–61, Fig. 4; Ex. 1003 ¶¶ 90–92). Petitioner
also contends that Komara teaches the following subject matter recited in
claim 6: a plurality of traffic channels between the base station and mobile
terminals (id. at 28–29 (citing Ex. 1005, 2:46–52, 3:5–10, 4:20–28, 4:56–65;
Ex. 1003 ¶¶ 97–99)), a common channel formed between the base station
and mobile terminals that is shared by the mobile terminals (id. at 31 (citing
Ex. 1005, 5:3–5; Ex. 1003 ¶ 104)), the base station generating at least two
transmission power control signals, each of which is for one mobile terminal
(id. at 35–36 (citing Ex. 1005, 4:61–5:2; Ex. 1003 ¶¶ 110–112)), and the
base station transmitting modulated power control signals via the common
channel (id. at 43 (citing Ex. 1005, 2:48–52, 5:3–5; Ex. 1003 ¶¶ 127–128)).
Petitioner further contends it would have been obvious to implement
Komara’s transmission power control method in a CDMA communication
system, such as the one Saints describes. Id. at 26–27 (citing, e.g., Ex. 1006,
1:14–22; Ex. 1003 ¶ 94). In the combination of Komara with Saints and
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Gilhousen, Petitioner contends the traffic channels recited in claim 6 would
be implemented as CDMA traffic channels, which are separated using
different spreading codes rather than different frequencies. Id. at 29–30
(citing Ex. 1006, 4:45–67; Ex. 1008, 3:54–57; Ex. 1003 ¶¶ 100–101).
Similarly, Petitioner contends that in the combination of Komara with Saints
and Gilhousen, Komara’s common channel would be implemented as a
common CDMA channel, as recited in claim 6. Id. at 32–35 (citing
Ex. 1006, 4:59–64; Ex. 1008, Fig. 4a; Ex. 1003 ¶¶ 105–108). Petitioner
asserts that “Saints contemplates that its CDMA base station may generate a
‘common channel,’” and Gilhousen also illustrates “sync” and “paging”
channels that are common to all mobile stations. Id. at 32–34 (citing
Ex. 1006, 4:59–64; Ex. 1008, Fig. 4a; Ex. 1003 ¶¶ 107–108). In addition,
Petitioner contends that in the combined system, the base station would be
implemented as a CDMA base station and would spread the transmission
power control signals, modulate the spread signals, and transmit the
modulated signals, all steps required by claim 6 and commonly performed
by wireless CDMA transmitters. Id. at 36–45 (citing Ex. 1006, 1:35–37,
4:53–57, 4:65–67; Ex. 1008, 25:15–18, Figs. 4a–4c; Ex. 1003 ¶¶ 113–130).
We turn now to Petitioner’s reasoning for the proposed combination
of references. Petitioner argues it would have been obvious to combine the
teachings of Komara and Saints “to provide the obvious, beneficial, and
predictable result of implementing Komara’s teachings in a CDMA cellular
system . . . to achieve the many known benefits of CDMA system[s] over
FDMA systems, such as the FDMA system in Komara.” Id. at 17 (citing
Ex. 1003 ¶ 71). First, Petitioner argues that although Komara presents its
teachings in the context of an FDMA system, Komara is “not limited to its
specific FDMA implementation.” Id. at 18 (citing Ex. 1005, 2:57–3:4 (“The
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prese[n]t invention is not concerned with the type of initial processing 20
that the system employs . . . .”), 1:8–10 (“The present invention is directed to
cellular communications systems and in particular to ways of controlling
such systems’ wireless-transmission power.”); Ex. 1003 ¶¶ 72–73); see id.
at 26 (repeating argument). Moreover, Petitioner argues, Saints teaches that
“power control systems may have applicability to a variety of types of
systems, including spread spectrum systems.” Id. at 18 (citing Ex. 1006,
code (57)); see id. at 27 (repeating argument).
Next, Petitioner argues that at the time of the invention in the
mid-1990s, a person of ordinary skill in the art “would have been well aware
of both FDMA and CDMA systems as well as trade-offs associated with
implementing each of the methods for defining channels within the available
spectrum.” Id. at 18 (citing Ex. 1003 ¶ 75). Relying on Dr. Kotzin’s
testimony, Petitioner contends that advantages of CDMA over FDMA and
time-division multiple access (TDMA) include providing frequency
diversity, path diversity, simplified planning of frequency spectrum reuse
among adjacent cells, and an overall increase in system capacity. Id. at 19
(citing Ex. 1003 ¶ 76 (citing Exs. 1006, 1008)). Thus, according to
Petitioner and Dr. Kotzin, it would have been obvious to implement
Komara’s teachings regarding multiple device power control in a CDMA
communication system, such as the one in Saints, “to take advantage of the
benefits provided by CDMA of frequency diversity and multipath diversity
to combat signal fading as well as simplified cellular design and increased
system capacity.” Id. at 19–20 (citing Ex. 1003 ¶ 76).
Petitioner also argues that a person of ordinary skill in the art “would
have had a reasonable expectation of success of implementing Komara’s
power control teachings in Saints because FDMA and CDMA are simply
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alternative techniques for allowing multiple users to access wireless
resources in a cellular communication system.” Id. at 20. Petitioner
contends that “FDMA and CDMA are simply two alternative ways to
provide channels to different mobile devices so that the devices can share
system resources,” and, therefore, “it would have been straightforward to
implement the wireless channels of Komara’s FDMA system as
corresponding wireless channels in a CDMA system such as that presented
in Saints, yielding predictable results.” Id. (citing Ex. 1003 ¶ 79).
Furthermore, Petitioner contends that “CDMA, FDMA, and TDMA
represent a finite number of identified, predictable solutions for providing
multiple access in wireless systems, so it would have at least been obvious to
try implementing Komara’s closed-loop reverse link power control in a
CDMA system.” Id. at 20–21 (citing Ex. 1003 ¶ 85).
Petitioner further contends that both Komara and Saints use
closed-loop power control for reverse links, and thus “the teachings of
Komara regarding closed-loop power control in the reverse link align with
the CDMA teachings of Saints regarding the use of closed-loop power
control.” Id. at 21 (citing Ex. 1003 ¶¶ 80–82). Citing Saints’s description of
a pilot fraction message that may be provided on a common channel, as well
as the potential of carrying power control information on a signaling channel
or dedicated power control channel, Petitioner asserts that “Saints is flexible
in terms of the types of CDMA channels that may exist for carrying control
information and data and explicitly contemplates providing a ‘common
channel.’” Id. at 21–22 (citing Ex. 1006, 4:45–64, 7:14–25; Ex. 1003
¶¶ 82–84).
Petitioner contends a person of ordinary skill in the art would have
been motivated to combine the teachings of Komara and Saints in various
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ways. Id. at 22–23. For example, Petitioner contends it would have been
obvious to implement Komara’s FDMA channels as CDMA channels, with
both the forward-link and reverse-link power control mechanisms of Komara
implemented in Saints’s CDMA system. Id. at 23 (citing Ex. 1003 ¶ 85).
As another example, Petitioner contends it would have been obvious to
implement Komara’s FDMA channels in Saints’s CDMA system, with
Komara’s reverse-link power control mechanism implemented in Saints and
using Saints’s “more robust but more complex” closed-loop forward-link
power control mechanism. Id. (citing Ex. 1003 ¶ 85). In either scenario,
Petitioner contends, it would have been obvious to implement Komara’s
“common forward control channel” as a CDMA channel. Id. (citing
Ex. 1005, 5:3–5; Ex. 1003 ¶ 85).
Petitioner also contends that Gilhousen confirms many of the
advantages of CDMA over FDMA, including frequency diversity, path
diversity, and an increase in system user capacity. Id. at 23 (citing Ex. 1008,
1:34–45, 3:8–28; Ex. 1003 ¶ 86). Petitioner notes that Saints incorporates
Gilhousen by reference and “provides explicit motivation to combine” by
referring to Gilhousen for detailed descriptions of modulators and
demodulators disclosed in Saints. Id. at 24 (citing Ex. 1006, 4:54–57,
7:28–30, 7:37–40; Ex. 1003 ¶¶ 87–88).
In its Preliminary Response, Patent Owner argues that Petitioner has
failed to demonstrate that a person of ordinary skill in the art would have
been motivated to combine Komara with Saints and Gilhousen to arrive at
the claimed invention. Prelim. Resp. 18–41. For the reasons discussed
below, we agree that Petitioner has not explained adequately, for purposes of
instituting an inter partes review, why a person of ordinary skill in the art
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would have combined the teachings of the references in the manner
proposed.
First, contrary to Petitioner’s argument that Komara’s teachings are
not limited to an FDMA implementation, Patent Owner, with the support of
Dr. Nettleton’s testimony, persuasively shows that the portion of Komara
that Petitioner cites actually demonstrates that Komara is limited to FDMA.
See Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 84–85). The cited language stating
that the invention in Komara “is not concerned with the type of initial
processing 20 that the system employs” refers to initial processing block 20,
whose “typical output is a digital analytic baseband signal,” which is fed into
“subsequently employed hardware, such as that which performs the function
of a combiner 24.” Ex. 1005, 2:62–3:4; see id. at Fig. 1. Thus, as Patent
Owner and Dr. Nettleton point out, initial processing block 20 produces a
baseband signal inside the base station and has nothing to do with the
multiple-access scheme that the base station and mobile units use to
communicate with each other. Prelim. Resp. 19; Ex. 2001 ¶ 84. As Patent
Owner and Dr. Nettleton further explain, it is the next block, combiner 24,
that performs the multiple-access operation to transmit outgoing signals into
their respective wireless channels, and it does so “using a strictly
FDMA-based multiple-access scheme.” Prelim. Resp. 19–20 (emphasis
omitted) (citing Ex. 1005, 3:9–16 (“[T]he combiner frequency-translates
each of the (relatively low-sample-rate) individual channel processing-unit
output signals by a different frequency offset so that their spectra do not
overlap, interpolates those signals to a sample rate great enough to contain
all the channels’ information, and adds the different channels’ interpolated
signals together to produce a single high-sample-rate digital output
sequence . . . .”)); Ex. 2001 ¶ 85.
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Nor are we persuaded by Petitioner’s citation to brief passages in
Komara and Saints regarding the applicability of power control systems to
different types of cellular communications systems. See Pet. 18 (citing
Ex. 1005, 1:8–10; Ex. 1006, code (57)). Although transmission power
control may be desirable in a variety of systems, Petitioner does not explain
sufficiently how those general statements in Komara and Saints demonstrate
that a person of ordinary skill in the art would have used Komara’s specific
FDMA reverse-link transmission power control method in a CDMA system.
With the understanding that Komara only describes transmission
power control in an FDMA system, we turn to Petitioner’s primary
argument—that a person of ordinary skill in the art would have implemented
Komara’s teachings, including a common channel for reverse-link
transmission power control signals, within a CDMA communication system,
like that in Saints, and would have had a reasonable expectation of success
in doing so. We are persuaded by Patent Owner’s contention, supported by
Dr. Nettleton, that Petitioner’s analysis “[i]gnor[es] the fundamental
differences between CDMA and FDMA systems.” Prelim. Resp. 20 (citing
Ex. 2001 ¶ 87). Dr. Nettleton explains in detail the differences between
CDMA and FDMA. Ex. 2001 ¶¶ 86, 88–89; see also id. ¶¶ 33–35
(describing FDMA); id. ¶¶ 36–48 (describing CDMA). For example,
CDMA and FDMA differ completely in their underlying signaling methods
and manner in which spectrum is divided among users. Id. ¶¶ 86, 88
(“CDMA is a ‘spread spectrum’ technology which distinguishes different
users’ signals by modulating them with different spreading signals, or codes,
which allows the entire available bandwidth to be used simultaneously by
different users.” (citing Ex. 2006, 72; Ex. 1001, 1:19–21; Ex. 2004, 14)), 89
(“Unlike CDMA, the way that an FDMA [system] distinguishes between
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incoming signals is by dividing up the available frequency spectrum into
completely different and non-overlapping frequencies for the different users
such that there is no interference between the respective user channels.”
(emphasis omitted)); see Prelim. Resp. 25–26.
Importantly, Patent Owner and Dr. Nettleton explain that CDMA and
FDMA have significantly different power control requirements. Prelim.
Resp. 26–29 (citing Ex. 2001 ¶¶ 35, 39–44, 96–104). As the ’463 patent
itself explains, failure to control reverse-link transmission power increases
interference and decreases the signal to noise ratio for mobile units farther
away from the base station, thus decreasing the capacity of the system or
rendering it unusable. See Ex. 1001, 1:21–31; Prelim. Resp. 26 (citing
Ex. 2001 ¶¶ 39–40, 98; Ex. 2003, 196–197). Dr. Nettleton testifies, with
evidentiary support, that CDMA systems therefore require precise and fast
reverse-link power control with a wide dynamic range. Ex. 2001 ¶ 100
(citing Ex. 2003, 202, 204; Ex. 1001, 5:54–67; Ex. 1008, 23:66–67); see
Prelim. Resp. 26–27 (citing Ex. 2001 ¶¶ 40–44, 100). In contrast, according
to Dr. Nettleton, power control in FDMA systems is optional, slow, and
imprecise, and serves mainly to achieve power savings (e.g., battery power
in mobile units). Ex. 2001 ¶¶ 35, 101 (citing Ex. 1005, 1:60–63, 2:7–12,
7:25–32; Ex. 2005, 1:16–26); see Prelim. Resp. 26 (citing Ex. 1005,
1:41–45).
In view of the substantial technical differences between CDMA and
FDMA, we are not persuaded, on the record before us, that implementing
Komara’s FDMA wireless channels as CDMA channels instead would have
been “straightforward” or would have yielded “predictable results,” as
Petitioner argues. See Pet. 20. Even if a person of ordinary skill in the art at
the time of the invention would have recognized CDMA has some
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advantages over FDMA, a proposition that Patent Owner disputes (see
Prelim. Resp. 23–24), Petitioner does not explain sufficiently why such a
person, looking at Komara’s transmission power control scheme, would
have chosen to implement it in a CDMA system rather than an FDMA
system. Among other things, Petitioner does not address adequately the
different roles of power control mechanisms in CDMA and FDMA systems.
Nor does Petitioner explain why a person of ordinary skill would have had
reason to use the specific power control teaching of Komara on which it
relies (i.e., use of a common channel for reverse-link power control signals
from the base station) in a CDMA system, such as the one Saints describes.
Ultimately, we credit the well-supported testimony of Dr. Nettleton
that the fundamental differences between CDMA and FDMA are so great
that CDMA and FDMA are not simply interchangeable alternatives with
respect to application of the reverse-link transmission power control method
described in Komara. Petitioner’s failure to address these differences
sufficiently further undermines its position.
In addition, Petitioner’s “obvious to try” argument is misplaced. KSR
provides that “[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp,” and the resulting combination would have been
“obvious to try.” 550 U.S. at 421. Petitioner seems to argue that CDMA,
FDMA, and TDMA represent a finite number of solutions to solve the
problem of providing multiple access in wireless systems. Pet. 20–21. Even
assuming those are the only ways of providing multiple access in a wireless
system, Petitioner does not show why a person of ordinary skill in the art,
presented with Komara’s reverse-link power control method, would have
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understood there was a design need or market pressure to apply it to multiple
access systems other than the FDMA system described in Komara.
We further agree with Patent Owner that Saints and Gilhousen do not
“fill the gaps” in Petitioner’s contentions that a person of ordinary skill in
the art would have had reason to combine the references as asserted. See
Prelim. Resp. 34–37. First, we are not persuaded by Petitioner’s argument
that the teachings of Saints and Komara regarding closed-loop reverse-link
power control “align” in any meaningful way. See Pet. 21. Saints describes
an improved signal quality metric used for forward-link transmission power
control in a CDMA system. Ex. 1006, code (57). Although Saints states
that its invention is equally applicable to reverse-link power control, Patent
Owner correctly points out that Saints provides no guidance as to how its
forward-link power control could be implemented in the reverse link.
Prelim. Resp. 34 (citing Ex. 1006, 2:39–42; Ex. 2001 ¶¶ 114–115). Even if
Saints suggests that a CDMA system could use reverse-link power control,
Petitioner fails to explain sufficiently why a person of ordinary skill in the
art would have looked to Komara’s teachings regarding power control in an
FDMA system.
Finally, we are not persuaded by Petitioner’s suggestion that
disclosures of “common channel[s]” in Saints and Gilhousen would have led
a person of ordinary skill in the art to implement Komara’s common
transmission power control channel in the CDMA system of Saints. Saints
refers to a common channel on which a pilot fraction message may be
transmitted. Ex. 1006, 4:45–64. As Patent Owner argues, however, that
common channel is used for an entirely different purpose than the common
channels in the ’463 patent and Komara—it communicates only the pilot
fraction, which is the same for all mobile stations (unlike the reverse-link
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power control signals in Komara), and is not intended to be used for
reverse-link transmission power control. See Prelim. Resp. 16, 36 (citing
Ex. 2001 ¶¶ 69, 116–117). Saints also describes the possibility of carrying a
single power control bit on a dedicated channel, but this also is different
from the channel used for the transmission control signal in Komara because
it is for forward-link, not reverse-link, transmission control, it sends data
from the mobile unit to the base station rather than in the other direction, and
it carries information for one device (the base station) rather than a plurality
of mobile units. See id. at 16 (citing Ex. 2001 ¶ 73). As for Gilhousen,
Petitioner argues that the spreading techniques used to create sync and
paging channels illustrate that Komara’s common channel could be
implemented as a CDMA channel, but Petitioner does not explain why a
person of ordinary skill in the art would have done so. See Pet. 34–35;
Prelim. Resp. 36–37.
For at least these reasons, based on the record before us, we determine
that Petitioner has not adequately shown that a person of ordinary skill in the
art would have combined the teachings of Komara, Saints, and Gilhousen in
the manner asserted to achieve the claimed invention. Therefore, we
conclude the information presented does not demonstrate a reasonable
likelihood that Petitioner would prevail in establishing that claims 6, 8, 9,
13, 15, and 16 of the ’463 patent are unpatentable under 35 U.S.C. § 103(a)
for obviousness over the combination of Komara, Saints, and Gilhousen.
IV. CONCLUSION
After considering the parties’ evidence and arguments, we determine
that the information presented does not show a reasonable likelihood that
Petitioner would prevail in establishing that at least one of claims 6, 8, 9, 13,
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15, and 16 of the ’463 patent is unpatentable on the grounds asserted in the
Petition.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted.

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FOR PETITIONER:

Clint Wilkins
J. Andrew Lowes
Andrew Fowles
HAYNES AND BOONE LLP
clint.wilkins.ipr@haynesboone.com
andrew.lowes.ipr@haynesboone.com
adam.fowles.ipr@haynesboone.com

John D. Haynes
Wesley C. Achey
ALSTON & BIRD LLP
john.haynes@alston.com
wes.achey@alston.com

FOR PATENT OWNER:

Jeffrey B. Plies
Michael A. Fisher
Robert W. Ashbrook Jr.
DECHERT LLP
jeffrey.plies@dechert.com
michael.fisher@dechert.com
robert.ashbrook@dechert.com