IPCom GmbH & Co. KGDownload PDFPatent Trials and Appeals BoardAug 12, 2021IPR2021-00507 (P.T.A.B. Aug. 12, 2021) Copy Citation 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 IPR2021-00507 Patent 7,006,463 B2 2 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). IPR2021-00507 Patent 7,006,463 B2 3 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 IPR2021-00507 Patent 7,006,463 B2 4 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. IPR2021-00507 Patent 7,006,463 B2 5 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. IPR2021-00507 Patent 7,006,463 B2 6 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 IPR2021-00507 Patent 7,006,463 B2 7 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. IPR2021-00507 Patent 7,006,463 B2 8 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”). IPR2021-00507 Patent 7,006,463 B2 9 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. IPR2021-00507 Patent 7,006,463 B2 10 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 IPR2021-00507 Patent 7,006,463 B2 11 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 IPR2021-00507 Patent 7,006,463 B2 12 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). IPR2021-00507 Patent 7,006,463 B2 13 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). IPR2021-00507 Patent 7,006,463 B2 14 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 IPR2021-00507 Patent 7,006,463 B2 15 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 IPR2021-00507 Patent 7,006,463 B2 16 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 IPR2021-00507 Patent 7,006,463 B2 17 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 IPR2021-00507 Patent 7,006,463 B2 18 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 IPR2021-00507 Patent 7,006,463 B2 19 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 IPR2021-00507 Patent 7,006,463 B2 20 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. IPR2021-00507 Patent 7,006,463 B2 21 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 IPR2021-00507 Patent 7,006,463 B2 22 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 IPR2021-00507 Patent 7,006,463 B2 23 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 IPR2021-00507 Patent 7,006,463 B2 24 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 IPR2021-00507 Patent 7,006,463 B2 25 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, IPR2021-00507 Patent 7,006,463 B2 26 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. IPR2021-00507 Patent 7,006,463 B2 27 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 Copy with citationCopy as parenthetical citation