Uniloc 2017 LLC

Patent Trials and Appeals Board

May 19, 2020

IPR2019-01283 (P.T.A.B. May. 19, 2020)

Trials@uspto.gov Paper 15 571-272-7822 Entered: May 19, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE, INC., BLACKBERRY CORP.,1 LG ELECTRONICS INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG ELECTRONICS AMERICA, INC. Petitioner, v. UNILOC 2017 LLC Patent Owner. ____________ IPR2019-00252 Patent 7,167,487 B2 ____________ Before JOSIAH C. COCKS, ROBERT J. WEINSCHENK, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) 1 BlackBerry Corp., who filed a petition in IPR2019-01283, has been joined as a petitioner to this proceeding. IPR2019-00252 Patent 7,167,487 B2 2 I. INTRODUCTION A. Background Apple Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. (“Petitioner”)2,3 filed a Petition requesting inter partes review of claims 11-13 (“the challenged claims”) of U.S. Patent No. 7,167,487 B2 (Ex. 1001, “the ’487 patent”). Paper 5 (“Pet.”), 4. Uniloc 2017 LLC (“Patent Owner”), filed a Preliminary Response. Paper 9. Upon consideration of the Petition and Preliminary Response, we instituted inter partes review of all challenged claims on all grounds raised. Paper 11 (“Dec. Inst.). Patent Owner filed a Response to the Petition (Paper 14, “PO Resp.”), Petitioner filed a Reply (Paper 16, “Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper 17, “PO Sur-Reply”). An oral hearing was held on March 3, 2020, and the hearing transcript is included in the record. See Paper 27 (“Tr.”). We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set forth below, we find Petitioner has shown by a preponderance of evidence that claims 11-13 of the ’487 patent are unpatentable. B. Related Matters Petitioner and Patent Owner identify various matters between Uniloc USA, Inc. or Uniloc 2017 LLC, and Apple, Inc., Blackberry Corp., HTC 2 Petitioner identifies LG Electronics U.S.A., Inc. and LG Electronics Mobilecomm U.S.A. Inc. as real parties-in-interest. See Pet. 72. 3 BlackBerry Corp., which has been joined as a party to this proceeding, is also a Petitioner in this proceeding. See Paper 15. IPR2019-00252 Patent 7,167,487 B2 3 America, Inc., Huawei Device USA, Inc., LG Electronics USA, Inc., Microsoft Corp., Motorola Mobility, LLC, Samsung Electronics America, Inc., or ZTE (USA), in various Federal District Courts, including District Courts for the Eastern, Western, and Northern Districts of Texas, the Central and Northern Districts of California, the District of Delaware, and the Western District of Washington, as matters that can affect or be affected by this proceeding. See Pet. 72; Paper 7, 2. C. Evidence Relied Upon4 References Effective Date 5 Exhibit MAC protocol specification (Release 1999), 3rd Generation Partnership Project, 3GPP TS 25.321 V3.6.0 (2000-12) (“TS 25.321”). Dec. 10, 2000 1007 Corrections to logical channel priorities in MAC protocol, 3rd Generation Partnership Project, 3GPP TSG-RAN WG2 Meeting #18 (“R2-010182”). Jan. 23, 2001 1008 Services provided by the physical layer (Release 1999), 3rd Generation Partnership Project, 3GPP TS 25.302 V3.6.0 (2000-09) (“TS 25.302”). Oct. 16, 2000 1009 Peisa US 6,850,540 B1 Feb. 25, 20006 1013 4 Petitioner also relies upon the Declarations of R. Michael Buehrer, Ph.D., FIEEE (Exs. 1002, 1019) and Craig Bishop (Exs. 1006, 1018). 5 Petitioner relies upon the Bishop Declaration to establish the public availability of TS25.302, TS25.321, and R2-010182, and their respective publication dates. See Pet. 9, 12, 16; Pet. Reply 1-16. 6 Petitioner relies on the U.S. filing date of Peisa to establish its availability as prior art under 35 U.S.C. § 102(e). See Pet. 19. IPR2019-00252 Patent 7,167,487 B2 4 D. Instituted Grounds of Unpatentability We instituted review on the following grounds of unpatentability: Claims Challenged 35 U.S.C § Reference(s)/Basis 11-13 103(a) TS 25.321, TS 25.302, R2-010182 11-13 103(a) Peisa II. ANALYSIS A. The ’487 Patent The ’487 patent “relates to a network with a first plurality of logic channels with which is associated a second plurality of transport channels . . . for the transmission of transport blocks formed from packet units of the logic channels.” Ex. 1001, 1:4-8. According to the ’487 patent, “[s]uch a network is known from the 3rd Generation Partnership Project (3GPP); Technical Specification Group (TSG) RAN; Working Group 2 (WG2); Radio Interface Protocol Architecture; TS 25.302 V3.6.0.” Id. at 1:9-12. The ’487 patent describes the 3GPP network architecture disclosed in TS 25.302 V3.6.0 as follows: A physical layer offers transport channels or transport links to the MAC [Media Access Control] layer. The MAC layer makes logic channels or logic links available to an RLC layer (RLC=Radio Link Control). The packet units formed in the RLC layer are packed in transport blocks in the MAC layer, which blocks are transmitted from the physical layer through physical channels to a terminal, or the other way about, by the radio network control. Apart from such a multiplex or demultiplex function, the MAC layer also has the function of selecting suitable transport format combinations (TFC). A transport format combination represents a combination of transport formats for each transport channel. The transport format combination describes inter alia how the transport IPR2019-00252 Patent 7,167,487 B2 5 channels are multiplexed into a physical channel in the physical layer. Id. at 1:14-28. This architecture is illustrated in in Figure 2 of the ’487 patent, which is reproduced below. Figure 2 is a “layer model” illustrating the various functions of a terminal or radio network controller in a 3GPP wireless network. Id. at 4:63-64, 6:9- 16. The “layer model” includes a physical layer (PHY), a data connection layer (MAC and RLC), and a radio resource control layer (RRC). Id. at 6:16-19. The RRC layer is responsible for signaling between a wireless terminal and a base station’s radio network controller (RNC), and “controls the layers MAC and PHY via control lines 10 and 11.” Id. at 6:22-27. The RLC layer receives data in the form of packet units from application channels 14. Id. at 6:32-35. The MAC layer makes logic channels 13 IPR2019-00252 Patent 7,167,487 B2 6 available to the RLC layer. Id. at 6:30-32. The PHY layer makes transport channels 12 available to the MAC layer. Id. at 6:29-30. The MAC layer packs RLC layer packet units into transport blocks that are transmitted from a base station’s radio network controller to a mobile terminal, or vice versa, through a radio channel. Id. at 6:34-37. It does so by selecting a suitable transport format combination from a set of transport format combinations. Id. at 6:37-40. Each transport format combination describes “how the transport channels are multiplexed into a physical channel in the physical layer (time multiplex).” Id. at 6:42-45. The MAC layer selection is performed by a selection algorithm that can be implemented in hardware or software, and in a mobile station or radio network controller. Id. at 7:43-47. The selection algorithm selects a transport format combination based on MAC logic channel priorities (MLPs), RLC layer data buffer occupancies (BOs), and transport channel transmission time intervals (TTIs). Id. at 7:15-22. The ’487 patent is directed toward “an optimized selection process for selecting a suitable transport format combination.” Id. at 1:29-31. The optimized selection process integrates into the MAC selection algorithm “the condition that a minimum bit rate can be guaranteed suitable for the respective logic channels.” Id. at 1:61-65. B. Illustrative Claims Claim 13 of the ’487 patent is an independent and representative claim, and is reproduced below. 13. A method of controlling a network with a first plurality of logic channels with which is associated a second plurality of transport channels, which transport channels are provided for transmitting IPR2019-00252 Patent 7,167,487 B2 7 transport blocks formed from packet units of the logic channels, wherein a plurality of valid transport format combinations is allocated to the transport channels, which combinations indicate the transport blocks provided for transmission on each transport channel, wherein a selection algorithm is provided for selecting the transport format combinations, and wherein the selection algorithm uses a minimum bit rate criteria applicable to the respective logic channel. Ex. 1001, 16:54-65. Claim 11 is an independent claim that recites a radio network controller for a network having the properties of the network controlled in claim 13. Compare id. at 16:26-40, with id. at 16:54-65. Claim 12 is an independent claim that recites a terminal for a network having the properties of the network controlled in claim 13. Compare id. at 16:41-53, with id. at 16:54-65. C. Level of Ordinary Skill in the Art The Petition itself does not set forth the qualifications of a person of ordinary skill in the art, but instead cites to paragraphs 24 through 26 of the Buehrer Declaration. See Pet. 15 n.3 (citing Ex. 1002 ¶¶ 24-26). According to Dr. Buehrer, a person of ordinary skill in the art would have had “a Bachelor’s Degree (or higher degree) in an academic area emphasizing telecommunications systems with two or more years of work experience in telecommunications systems” or “at least a Master of Science Degree in an academic area emphasizing telecommunications systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree) with a concentration in telecommunications systems.” Ex. 1002 ¶ 25. Patent Owner does not dispute this definition or offer an alternative. See PO Resp. IPR2019-00252 Patent 7,167,487 B2 8 14. We find Dr. Buehrer’s opinion regarding the qualifications of a person of ordinary skill in the art reasonably reflects the level of skill evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt it as our own. D. Claim Construction In an inter partes review filed before November 13, 2018, claim terms of an unexpired patent are given their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); 83 Fed. Reg. 51,340. Under the broadest reasonable interpretation standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither Petitioner nor Patent Owner propose any construction for any claim term. See Pet. 21-22; PO Resp. 15. Rather, both parties agree that no claim term requires express construction, and that all terms should be understood to have their broadest reasonable interpretation in light of the specification. See Pet. 21-22; PO Resp. 15. We did not construe any claim term in our Institution Decision, and neither party disputes that decision. See Dec. Inst. 7-8; PO Resp. 15, Pet. Reply 1-26. Accordingly, we construe all claim terms to have their plain and ordinary meaning, and do not expressly construe any claim terms. IPR2019-00252 Patent 7,167,487 B2 9 E. Public Availability of R2-010182 R2-010182 is a 3GPP change request entitled “Corrections to logical channel priorities in MAC protocol,” and proposes a modification to TS 25.321 affecting both the UE and RAN. Ex. 1008, 1, 4. Petitioner argues R2-010182 is a printed publication that is prior art under 35 U.S.C. § 102(a) because it was “discussed during meeting #18 of the working group (WG2) of 3GPP TSG RAN, held on January 15-19, 2001, and was publicly available on the 3GPP file server no later than January 23, 2001.” Pet. 12 (citing Ex. 1006 §§ IV, VII). According to Petitioner’s declarant, Mr. Bishop, R2-010182 (Ex. 1008) is a true and correct copy of a Microsoft Word document dated January 16, 2001, that is contained in the compressed file R2-010182.zip that was uploaded to the 3GPP FTP (File Transfer Protocol) server on January 23, 2001. Ex. 1006 ¶ 35. Once the compressed file was uploaded, R2-010182 was available to any member of the public because “[n]o password is needed to access any information on the 3GPP Web site, all information is openly published.” Id. ¶ 24 (quoting Appx. B, 7) (emphasis omitted).7 Mr. Bishop further testifies that a version of R2-010182, differing in editorial but not technical content, was emailed to over 1000 subscribers of the 3GPP RAN WG2 email distribution list on January 11, 2001. Id. 7 Mr. Bishop identifies Appendix B as the 3GPP FAQ (Frequently Asked Questions) web page. Ex. 1006 ¶ 23. Although Mr. Bishop cites page 8 of the web page, the quoted material appears at the bottom of page 7. We correct the citation here. We also note that Mr. Bishop alternates between citing the pages of the Appendices to his declaration, as he does here, to citing the pages of the declaration itself. For example, page 7 of Appendix B is page 59 of the Bishop Declaration. IPR2019-00252 Patent 7,167,487 B2 10 ¶¶ 27-30, 39-40 (citing Appx. G).8 Once emailed, the technical content of R2-010182 was “effectively in the public domain, since membership of the exploder [i.e., email distribution list] is open to all and is (almost) unpoliced.” Id. ¶¶ 29, 40 (quoting Appx. B, 8). Finally, Mr. Bishop testifies that (a) meeting # 18 of 3GPP RAN WG2 was held in January 2001 and attended by 95 people, (b) R2-010182 was discussed at the meeting, and that (c) as a result, R2-010182 was disseminated to “RAN2 # 18 meeting participants no later than the last day of the meeting which was January 19, 2001.” Id. ¶ 41 (citing Appx. H, 94-95).9 Mr. Bishop further testifies that it was the customary practice of 3GPP to place no restrictions on how “meeting participants dispose of the documents” presented at a meeting. Id. ¶ 40 (citing Appx. B, 4, 8). Patent Owner argues Petitioner has failed to establish the public accessibility of R2-010182 for several reasons. PO Resp. 16-20. First, Patent Owner argues that Petitioner has failed to demonstrate “the 3GPP file server is indexed or searchable in any meaningful way.” Id. at 17. Second, Patent Owner argues that R2-010182 “could not have been disseminated at a meeting held from January 15th to 19th,” as Petitioner contends, because “[t]here is no evidence . . . that [R2-010182] was created prior to January 23, 8 Mr. Bishop identifies Appendix G as a true and correct copy of R2-0100xx, a Microsoft Word document having the same technical content as R2- 010182 and contained in the compressed file R2-0100xx.zip that was attached to an email sent to the 3GPP RAN WG2 email distribution list on January 11, 2001. Ex. 1006 ¶ 39. 9 Mr. Bishop identifies Appendix H as “[t]he approved meeting report from RAN WG2 [meeting] # 18,” and cites to the pages of his declaration rather than to the pages of Appendix H itself. Ex. 1006 ¶ 41. IPR2019-00252 Patent 7,167,487 B2 11 2001.” Id. at 18. Third, Patent Owner argues that any discussion of R2- 010182 at the January 2001 meeting is evidence of “what was ‘known . . . by others . . . rather than what was described in a printed publication,” and cannot be used as prior art in an inter partes review. Id. at 19. Fourth, Patent Owner argues that Mr. Bishop does not have personal knowledge that 95 people attended the January 2001 meeting and provides no testimony indicating how many people attended the session at which R2-010182 was discussed. Id. Fifth, Patent Owner argues that Petitioner has failed to produce any evidence that R2-010182 was actually “shown to anyone” at the meeting or that anyone “accessed the document.” Id. Sixth, and finally, Patent Owner argues that even if R2-010182 had been disseminated at the January 2001 meeting, there is no evidence that anyone other than 3GPP members accessed the document, and access by 3GPP members alone “does not show accessibility of the type of skilled artisans interested in the subject matter that qualify for public accessibility.” Id. at 20 (citing Samsung Elecs. Co. v. Infobridge Pte, Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019). Petitioner, in its Reply, addresses each of Patent Owner’s objections via some combination of Mr. Bishop’s original declaration (Ex. 1006), Mr. Bishop’s supplemental declaration (Ex. 1018), and citations to public accessibility case law. See Pet. Reply 1-16. For example, Petitioner reiterates that R2-010182 was made publicly accessible because it was discussed at the 3GPP TSG RAN WG2 meeting in January 2001. Id. at 1 (citing Ex. 1006 ¶ 41). Petitioner adds that 95 people attended this meeting, including delegates from Mitsubishi, Qualcomm, Ericsson, and Philips, and Mitsubishi’s delegate presented R2-010182 for discussion at the meeting. Id. at 1-2 (citing Ex. 1006 ¶ 41; Ex. 1018 ¶¶ 15, 19, 20). IPR2019-00252 Patent 7,167,487 B2 12 Patent Owner, in its Sur-Reply, argues any public accessibility evidence or argument presented in Petitioner’s Reply should not be considered because the Reply amounts to “16 pages of entirely new arguments . . . and an additional over 100 pages of new Declaration and documents.” PO Sur-Reply 2-3. Patent Owner argues the evidence and arguments are new because “the terms ‘printed publication’ and ‘public accessibility’ do not appear in the Petition” and “none of the Court of Appeals case law relating to the standard of public accessibility . . . appears in the Petition.” Id. at 5. Whether a reference “qualifies as a ‘printed publication’ under § 102 is a legal conclusion based on underlying factual determinations.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Public accessibility is “the touchstone in determining whether a reference constitutes a ‘printed publication.’” In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986). It “is determined on a case-by-case basis, and based on the ‘facts and circumstances surrounding the reference's disclosure to members of the public.’” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “[A] variety of factors may be useful in determining whether a reference was publicly accessible.” Id. One such factor is whether a party intended to make the reference public. See In re Wyer, 655 F.2d 221, 227 (CCPA 1981). Other factors include the length of time the reference was displayed, the expertise of the audience to which it was displayed, whether the displaying party had a reasonable expectation that the reference would not be copied, efforts made to prevent copying, and the ease or simplicity with which the reference could have been copied. Klopfenstein, 380 F.3d at 1350-51. IPR2019-00252 Patent 7,167,487 B2 13 “Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.” Constant v. Advanced Micro- Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988). Upon consideration of the evidence and arguments presented, we find Petitioner has demonstrated by a preponderance of evidence that R2-010182 was publicly accessible. R2-010182 was presented at meeting #18 of 3GPP RAN WG2, which was attended by ninety-five people, and was discussed at that meeting. See Ex. 1006 ¶¶ 41-42 (citing Appx. H, 94-95). The customary practice of 3GPP was to place no restrictions on how “meeting participants dispose of the [meeting] documents,” and there is no evidence that 3GPP diverged from that practice with respect to R2-010182. Id. ¶ 40 (citing Appx. B, 4, 8). Moreover, the 3GPP members who were present at meeting # 18 and participated in the discussion of R2-010182 were representatives of various commercial entities (e.g., Qualcomm, Ericsson, and Philips) interested in the development of mobile communications, and were skilled in the relevant art. Id. at 94-95 (Appx. H).10 Together, these facts lead us to conclude that Mitsubishi Electric, the author of R2-010182, intended to and did distribute R2-010182 to skilled artisans who were interested in its technical content, with no restrictions on their ability to freely copy and distribute R2-010182.11 Thus, R2-010182 10 We cite to the underlying evidence in the Bishop declaration (i.e., to the documents attached as Appendices to the Bishop declaration) by citing to the pages of the Bishop declaration and parenthetically indicating the Appendix to which the pages belong. 11 Indeed, just prior to meeting # 18, Mitsubishi emailed, without restriction, a draft document having the same technical content as R2-010182 to over 1000 members of the 3GPP RAN WG2 distribution list, which was open to IPR2019-00252 Patent 7,167,487 B2 14 was made publicly accessible by its disclosure at meeting # 18. See Klopfenstein, 360 F.3d 1347, 1352 (finding a fourteen-slide presentation was made publicly accessible when presented at a meeting of the American Association of Cereal Chemists and printed onto poster boards that were displayed without restriction for 2.5 days); see also Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1108-09 (Fed. Cir. 1985) (“MIT”) (finding a paper was made publicly accessible when it was presented to 50- 500 cell culturists at the First International Cell Culture Congress and distributed without restriction to as many as six cell culturists). We are not persuaded by Patent Owner’s numerous arguments that Petitioner failed to demonstrate the public accessibility of R2-010182.12 First, the evidence shows that R2-010182 existed before meeting # 18 of 3GPP RAN WG2, and was discussed at that meeting. See Ex. 1006 ¶ 35 (Mr. Bishop’s testimony that the R2-010182.zip file “contain[s] a Microsoft the public. Ex. 1006 ¶¶ 28-29, 39-40. This further evidences Mitsubishi’s intent to disseminate the technical content of R2-010182 to the public. See In re Wyer, 655 F.2d at 227 (finding “intent to make public” an aid in determining whether a document is a printed publication). To be clear, we do not rely on Mitsubishi’s email distribution as an independent basis for finding that R2-010182 was publicly accessible. Rather, we rely on the email distribution as further evidence of Mitsubishi’s intent to publicly disseminate R2-010182 at meeting # 18. 12 We conclude that R2-010182 was made publicly accessible solely on the theories and evidence presented in the Petition and Mr. Bishop’s first declaration. Patent Owner acknowledged at the oral hearing that there is no prejudice to Patent Owner if we rely only on the evidence submitted with the Petition. Tr. 55:24-56:16. Thus, we do not address the merits of Patent Owner’s argument regarding the propriety of Petitioner’s Reply and Mr. Bishop’s second declaration. IPR2019-00252 Patent 7,167,487 B2 15 Word document, ‘R2-010182.doc’, with a date stamp of ‘1/16/2001.’”); id. at 94-95 (Appx. H) (official minutes of 3GPP RAN WG2 meeting # 18 indicating R2-010182 was discussed at that meeting). Second, the public accessibility of R2-010182 does not depend on whether it was actually distributed to or accessed by anyone at meeting # 18. Its presentation, without restriction, to persons skilled in the art at the meeting is sufficient to establish its public accessibility. See Klopfenstein, 380 F.3d at 1347 (finding a document presented at a meeting was publicly accessible even though “no copies of the presentation were disseminated.”); see also Constant, 848 F.2d at 1569 (“If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.”). Third, Mr. Bishop’s personal knowledge is not needed to prove R2-010182 was presented at meeting # 18. The documentary evidence cited by Petitioner and generated as part of 3GPP’s routine business practice is uncontested and demonstrates that R2-010182 was presented at the meeting. See Constant 848 F.2d at 1568-69 (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”). Lastly, we are not persuaded by Patent Owner’s argument that Mitsubishi’s disclosure of R2-010182 to “other members of 3GPP who attended the meeting does not show accessibility by the type of skilled artisans interest in the subject matter that qualify for public accessibility.” PO Resp. 20. As discussed above, Mitsubishi disclosed R2-010182, without restriction, to 3GPP members who were employees and representatives of various commercial entities that competed with Mitsubishi in the mobile communications market, including representatives from Qualcomm, Ericsson, and Philips. See Ex. 1006, 94-95 (Appx. H). The disclosure of a IPR2019-00252 Patent 7,167,487 B2 16 document to interested members of the relevant public, without restriction on the subsequent dissemination of the document, is sufficient to establish the public accessibility of the document, even when the disclosure is made in a private setting. See, e.g., GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 695 (Fed. Cir, 2018) (finding dissemination of a document to trade show attendees who were interested in the art, without restriction, made the document publicly accessible even though the trade show was not open to the public); see also Klopfenstein, 360 F.3d at 1347, 1352 (finding the unrestricted disclosure of a document at a meeting of the American Association of Cereal Chemists made the document publicly accessible); see also Garret Corp. v. U.S., 422 F.2d 874, 865 (Ct. Cl. 1970) (finding that although distribution of a government report “to government agencies and personnel alone may not constitute publication . . . distribution to commercial companies without restriction on use clearly does.”) (emphasis added).13 We disagree with Patent Owner’s argument that Infobridge stands for the opposite proposition, i.e., that the unrestricted disclosure of R2-010182 to members of 3GPP does not evidence a public disclosure. The facts presented in Infobridge are readily distinguishable from the facts presented here. First, the Infobridge petitioner did not argue, and in fact waived any argument, that a contested “reference was publicly accessible because it was discussed at a [first] meeting or disseminated at [a second] meeting” of a 13 The Federal Circuit has adopted “the holdings of the Court of Claims and the Court of Customs and Patent Appeals announced before the close of business on September 30, 1982.” South Corp. v. U.S., 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc). IPR2019-00252 Patent 7,167,487 B2 17 standardization body. Infobridge, 929 F.3d at 1370. By contrast, Petitioner argues that R2-010182 was made publicly accessible because it was discussed at a standardization body meeting, i.e., at meeting # 18 of 3GPP RAN WG2. See Pet. 12. Second, the Infobridge petitioner could not have shown that presenting the contested document at a standardization group meeting made the document publicly accessible prior art because the evidence showed the contested document “was not created until after the [first] meeting” and any disclosure at the second meeting “occurred after the relevant critical date.” Infobridge, 929 F.3d at 1370. By contrast, the evidence presented by Petitioner sufficiently demonstrates that R2-010182 was created on January 16, 2001, which is before the January 17, 2001 start date of the portion of meeting # 18 dedicated to non-release 4 contributions, and that R2-010182 was discussed at meeting #18 sometime between January 17 and 19, 2001, which is before the critical date of May 21, 2001.14 See Ex. 1006 ¶¶ 35, 41 (citing Appx. H, 94-95). For the reasons discussed above, we find Petitioner has demonstrated by a preponderance of evidence that R2-010182 is prior art under 35 U.S.C. § 102(a) because it was disclosed without restriction at meeting # 18 of 3GPP RAN WG2 in January 2001 and discussed at that meeting by interested representatives of competing commercial companies. Moreover, because we find this disclosure sufficiently demonstrates the public 14 Meeting # 18 of 3GPP TSG RAN WG2 was held between January 15 and 19, 2001. Ex. 1006, 66 (Appx. D). However, “[d]uring the 15th and 16th January 2001 only Release 4 contributions” were discussed at the meeting. Id. R2-010182 is dated January 17-19, 2001, i.e., for discussion during the non-release 4 portion of meeting # 18. Ex. 1008, 1. IPR2019-00252 Patent 7,167,487 B2 18 accessibility of R2-010182, we need not consider whether the subsequent uploading of R2-010182 to the 3GPP FTP server on January 23, 2001, also made the document publicly accessible. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on a single dispositive issue). F. The TS25.321, R2-010182, and TS25.302 challenge Petitioner argues claims 11-13 are unpatentable as obvious over the combination of TS 25.321, R2-010182, and TS 25.302. Pet. 22-45; Pet. Reply 16-21. Patent Owner disputes this. PO Resp. 20-23; PO Sur-Reply 11-16. For the reasons discussed below, Petitioner demonstrates by a preponderance of evidence that claims 11-13 are unpatentable over TS 25.321, R2-010182, and TS 25.302. 1. TS 25.321 TS 25.321 is a specification of the UMTS (Universal Mobile Telephone System) MAC layer protocol. Ex. 1007, 6. The specification describes, inter alia, the architecture, channel structure, functions, protocol data units (PDUs), formats, and parameters of the MAC layer. Id. The channel structure includes transport channels between the MAC layer and Layer 1 (e.g., Forward Access Channel or FACH), and logical channels between the MAC and RLC layers (e.g., Broadcast Control Channel or BCCH). Id. at 15-16. The MAC layer functions to map logical channels to transport channels, select transport formats for each transport channel, handle data flow priorities, and multiplex PDUs from higher protocol layers into transport blocks delivered to physical layer transport channels (and vice-versa). Id. at 17-18. IPR2019-00252 Patent 7,167,487 B2 19 A mobile terminal or user equipment (UE) MAC architecture is illustrated in Figure 4.2.3.1.1 of TS 25.321, which is reproduced below. Figure 4.2.3.1.1 of TS 25.321 is a schematic illustration of the MAC layer on the UE side of the network. Id. at 11. The figure illustrates the mapping of logical channels (e.g., BCCH) to transport channels (e.g., FACH), which “depends on the multiplexing that is configured by RRC.” Id. at 9. In particular, RRC maps logical channels to transport channels by generating a set of transport format combinations (TFCs), and the MAC layer selects one of these TFCs to fit PDUs from the RLC layer into available transport blocks on the transport channels. Id. at 9-10. TS 25.321 discloses another function of the MAC layer-handling different priorities for different UE data flows. Id. at 17. In particular, the RRC assigns a priority value-MLP or MAC Logical channel Priority- between 1 and 8 for each logical channel, and the MAC layer selects a TFC “according to the priorities between logical channels indicated by RRC.” Id. IPR2019-00252 Patent 7,167,487 B2 20 at 30, 38. The logical channel priorities are absolute, allowing the MAC to “maximize the transmission of high priority data.” Id. In addition to disclosing the UE MAC layer architecture and functionality, TS 25.321 discloses the RNC (Radio Network Controller) MAC layer architecture and functionality, which exists on the UTRAN (UMTS Terrestrial Radio Access Network) side of the network. See id. at 12-15. The RNC MAC layer architecture and functionality is “similar to the UE case with the exception that there will be one MAC-d for each UE and each UE (MAC-d) that is associated with a particular cell may be associated with that cell’s MAC-c/sh.” Id. at 12. Moreover, the “MAC-c/sh is located in the controlling RNC while MAC-d is located in the serving RNC.” Id. 2. R2-010182 R2-010182 is a change request, entitled “Corrections to logical channel priorities in MAC protocol,” that proposes a modification to TS 25.321 affecting both the UE and RAN. Ex. 1008, 1, 4. R2-010182 introduces “new parameters to characterise MAC logical channels for TFC selection,” and modifies the TFC selection algorithm “to take into account these new parameters.” Id. The new parameters, i.e., MinGBr, MaxBr, and TW “complete the current MLP for representing logical channel priorities.” Id. at 1. R2-010182 identified several problems with “the current algorithm proposed for TFC selection in MAC . . . because of its absolute priority scheme.” Id. One problem was that the absolute priority algorithm provided “only one way to represent the quality of service at logical channel level (MLP),” which was “not sufficient to characterise all the applications foreseen for UMTS.” Id. Another problem was that the absolute priority IPR2019-00252 Patent 7,167,487 B2 21 algorithm systematically prevented low priority logical channels from transmitting data because “[l]ogical channels of higher MLP [lower priority] can never preempt lower MLP [higher priority] logical channels.” Id. at 2. R2-010182 proposed introducing three “new parameters completing MLP to express accurately the needs of different applications in term[s] of bit rate.” Id. The new parameters are “TW” representing “the time period on which the allocated bit rate for the logical channel is estimated” based on a number of previous TTI (transmission time intervals); “MinGBr” representing the minimum guaranteed bit rate or “basic needs of the logical channel,” and “MaxBr” representing the maximum bit rate or “nominal needs of the logical channel.” Id. R2-010182 assigns separate values to the MLP, TW, MinGBr, and MaxBr parameters to characterize each of the logical channels in the proposed TFC selection algorithm. Id. This is shown in the table provided on page 2 of R2-010182, which is reproduced below. The Table shows how separate values of MLP, TW, MinGBr, and MaxBr are assigned to logical channels LC1 and LC2. Id. In particular, logical channel LC1 is assigned a priority (MLP) of 1, a minimum guaranteed bit rate (MinGBr) of 100 bits/TW measured over a time window (TW) of 3 TTI, and a maximum bit rate (MaxBr) of 200 bits/TW measured over the 3 TTI IPR2019-00252 Patent 7,167,487 B2 22 time window. Id. It also shows that logical channel LC2 is assigned a priority (MLP) of 2, a minimum guaranteed bit rate (MinGBr) of 100 bits/TW measured over a time window (TW) of 4 TTI, and a maximum bit rate (MaxBr) of 200 bits/TW measured over the 4 TTI time window. Id. The proposed algorithm tries “to reach the MinGBr for each logical channel in . . . descending order of priority,” and upon achieving that goal tries “to reach the MaxBr for each logical channel in . . . descending order of priority,” and upon achieving that goal tries “to serve the logical channels which still have remaining data (best effort), still in . . . descending order of priority.” Id. 3. TS 25.302 TS 25.302 is “a technical specification of the services provided by the physical layer of UTRA [UMTS Terrestrial Radio Access] to upper layers.” Ex. 1009, 7. TS 25.302 discloses that “[t]he physical layer offers data transport services to higher layers . . . . through the use of transport channels via the MAC sub-layer.” Id. at 10. The physical layer operates “according to the L1 radio frame timing,” and the transport blocks or “the data accepted by the physical layer to be jointly encoded . . . . is then tied exactly to this L1 frame timing.” Id. TS 25.302 discloses that transport blocks are transmitted as transport block sets “exchanged between L1 and MAC at the same time instance using the same transport channel.” Id. at 17. Transport block sets are “transferred by the physical layer on the radio interface” over a transmission time interval (TTI) “defined as the inter-arrival time of Transport Block Sets” that is “always a multiple of the minimum interleaving period (e.g., 10ms, the IPR2019-00252 Patent 7,167,487 B2 23 length of one Radio Frame).” Id. This is illustrated in Figure 6 of TS 25.302, which is reproduced below. Figure 6 of TS 25.302 is a schematic illustration of “an example where Transport Block Sets, at certain time instances, are exchanged between MAC and L1 via three parallel transport channels [DCH1-DCH3].” Id. “Each Transport Block Set consists of a number of Transport Blocks,” transmitted over a transmission time interval (TTI), which is “the time between consecutive deliveries of data between MAC and L1.” Id. TS 25.302 defines a transport format as “a format offered by L1 to MAC (and vice versa) for the delivery of a Transport Block Set during a Transmission Time Interval on a Transport Channel.” Id. at 18. TS 25.302 also defines a number of terms that are used to explain how the MAC layer selects a Transport Format to deliver a Transport Block Set on a Transport Channel. First, a Transport Format set “is defined as the set of Transport IPR2019-00252 Patent 7,167,487 B2 24 Formats associated to a Transport Channel.” Id. Next, a Transport Format Combination is defined as “an authorised combination of the combination of currently valid Transport Formats that can be submitted simultaneously to the layer 1 for transmission on a Coded Composite Transport Channel.” Id. at 19. Lastly, a transport format combination set “is defined as a set of Transport Format Combinations on a Coded Composite Transport Channel.” Id. TS 25.302 discloses: The Transport Format Combination Set is what is given to MAC for control. However, the assignment of the Transport Format Combination Set is done by L3. When mapping data onto L1, MAC chooses between the different Transport Format Combinations given in the Transport Format Combination Set. Id. 4. The TS 25.321, TS 25.302, and R2-010182 combination Petitioner argues a person of ordinary skill in the art would have combined the teachings of TS 25.302 and TS 25.321 because they “describe features and functions of adjacent layers of the UMTS network architecture-TS25.321 describes the MAC protocol specification while TS25.302 describes the services provided by the physical layer, which is below the MAC layer and provides services to the MAC layer.” Pet. 17 (citing Ex. 1002 ¶ 92). Petitioner further argues that “TS25.321 relies on several features corresponding to the physical layer, such as transport channels, transport format, and TFCs, which are defined in TS25.302,” and that TS 25.321 cites to TS 25.302 for “provisions which, through reference in [TS 25.321] text, constitute provisions of the present [TS25.321]” document. Id. at 17-19 (quoting Ex. 1007 § 2) (alteration in original). Relying on the testimony of Dr. Buehrer, Petitioner argues that a person of IPR2019-00252 Patent 7,167,487 B2 25 ordinary skill in the art, looking “to fully understand the specification of the MAC layer protocol in TS25.321, or to obtain a comprehensive view of the UMTS network, or both” would have “look[ed] at the two references together, combining their teachings” because “they are complementary technical specifications directed towards adjacent layers of the same UMTS protocol stack.” Id. at 18 (citing Ex. 1002 ¶¶ 101, 103). Petitioner further argues that a person of ordinary skill in the art would have combined TS 25.321 and R2-010182 because the latter “explicitly notes that it is a change request (CR) for TS25.321,” and “copies verbatim § 11.4 of TS 25.321, marking the TFC selection algorithm in that section to show changes proposed by R2-010182.” Id. at 15 (citing Ex. 1008, 4-5). Relying on the testimony of Dr. Buehrer, Petitioner argues that a person of ordinary skill in the art “with knowledge of TS25.321 and considering possible limitations to its contents, such as the TFC selection algorithm, would have looked to routine 3GPP contributions (and change requests) like R2-010182,” and “would have understood that R2-010182 applies directly to TS25.321, and suggests improvements ‘to solve the problems encountered in the absolute priority scheme’ of TS25.321’s TFC selection algorithm.” Id. at 15-16 (citing Ex. 1002 ¶¶ 86-87). Patent Owner does not dispute Petitioner’s reasoning to combine the teachings of TS 25.321, TS 25.302, and R2-010182. See PO Resp. 2-27. We find Petitioner has articulated sufficient reasoning with rational underpinning to combine the teachings of TS 25.321, TS 25.302, and R2- 010182 in the manner proposed. TS 25.321 and TS 25.302 are technical specifications for the MAC and PHY layers of the UMTS protocol, respectively, which are adjacent layers of the UMTS protocol stack designed IPR2019-00252 Patent 7,167,487 B2 26 to interoperate and pass data between them. Ex. 1002 ¶¶ 92-93. R2-010182 is a change request for TS 25.321 that proposes a specific change to the TFC selection algorithm described in TS 25.321. Ex. 1008, 4-5. 5. Claim 13 Claim 13 recites a method of controlling a network with a first plurality of logic channels associated with a second plurality of transport channels. Ex. 1001, 16:54-56. Petitioner demonstrates how TS 25.321 teaches this limitation. Pet. 23-29 (citing/quoting Ex. 1007 §§ 3.2-6.1, Figs. 4.2.3.1-4.2.4.2.1; Ex. 1002 ¶¶ 182-187). TS 25.321 is a technical specification for a Radio Access Network’s MAC layer, and describes the functions of the MAC layer on either side of the radio network (i.e., UE and RNC). Ex. 1007 §§ 3.2-4.2.4. The UE MAC layer controls “access to . . . transport channels,” “mapping between logical and transport channels,” “scheduling / priority handling . . . based on logical channel priorities,” and “transport format and transport format combination selection according to [a] transport format combination set.” Id. §§ 4.2.3-4.2.3.2, Figs. 4.2.3.1.1, 4.2.3.2.1. Likewise, the RNC MAC controls “Scheduling - Priority handling,” “mapping between logical and transport channels,” and “TFC selection [] in the downlink.” Id. §§ 4.2.4.1, 4.2.4.2, Figs. 4.2.4.1.1, 4.2.4.2.1. Petitioner further demonstrates, through an annotated version of Figure 4.2.3.1 that is reproduced below, how TS 25.321 teaches the MAC layer maps logical channels to transport channels. IPR2019-00252 Patent 7,167,487 B2 27 The Figure is a Petitioner-annotated version of Figure 4.2.3.1 shown in section 4.2.3 of TS 25.321. Pet. 25. TS 25.321 discloses how various logical channels (e.g., PCCH (paging control channel) CCCH (common control channel), and DCCH (dedicated control channel)) are mapped to various transport channels (e.g., RACH (random access channel), FACH (forward access channel), and PCH (paging channel)). Ex. 1007 §§ 4.3.1- 4.3.3. Patent Owner does not dispute Petitioner’s contentions regarding this claim limitation. See PO Resp. 16-23. Claim 13 further recites the transport channels are provided for transmitting blocks formed from packet units of logic channels. Ex. 1001, 16:56-58. Petitioner demonstrates how TS 25.321 teaches this limitation. See Pet. 29-30 (citing Ex. 1007 § 3.2-6.1; Ex. 1002 ¶ 189). TS 25.321 teaches transport channels are defined between the MAC and PHY layers, IPR2019-00252 Patent 7,167,487 B2 28 logical channels are defined between the MAC and RLC layers, and the RLC layer “provides RLC-PDUs to the MAC, which fit into the available transport blocks on the transport channels.” Ex. 1007 §§ 4.2.3.1, 4.3. TS 25.321 further teaches the MAC layer is responsible for “multiplexing/ demultiplexing higher layer PDUs into/from transport blocks delivered to/from the physical layer.” Id. § 6.1. According to the unrebutted testimony of Dr. Buehrer, a person skilled in the art would have understand PDUs or Protocol Data Units to be “packet units of higher layers.” Ex. 1002 ¶ 189. Patent Owner does not dispute Petitioner’s contentions regarding this claim limitation. See PO Resp. 16-23. Claim 13 further recites a plurality of valid transport format combinations allocated to the transport channels that indicate the transport blocks provided for transmission on each transport channel. Ex. 1001, 16:58-61. Petitioner demonstrates how TS 25.302 teaches this limitation by defining several of the terms used in a manner that expresses the recited relationships (e.g., that a transport format combination indicates the transport blocks provided for transmission on a transport channel). See Pet. 31-33 (citing/quoting Ex. 1009 §§ 7.1.2-7.1.9, Fig. 6; Ex. 1002 ¶¶ 199- 201). For example, TS 25.302 defines a Transport Format Combination Set as “a set of Transport Format Combinations on a Coded Composite Transport Channel,” where a Transport Format Combination is “a list of transport formats (Transport Format Set) which are applicable” to the Transport Channel. Ex. 1009 §§ 7.1.8, 7.1.9. TS 25.302 defines a Transport Format as a format “for the delivery of a Transport Block Set during a Transmission Time Interval on a Transport Channel” having dynamic IPR2019-00252 Patent 7,167,487 B2 29 attributes that include Transport Block Size15 and Transport Block Set Size.16 Id. § 7.1.6. TS 25.302 defines a Transport Block Set as “a set of Transport Blocks, which are exchanged between L117 and MAC at the same time instance using the same transport channel.” Id. § 7.1.2. Thus, TS 25.302 discloses that a transport format combination includes a list of transport formats, where each transport format includes a set of transport blocks that are provided to transmit data over a transport channel. Moreover, TS 25.302 teaches that only valid transport format combinations are allocated to transport channels because “a Transport Format Combination Set need not contain all possible Transport Format Combinations that can be formed by Transport Format Sets of the corresponding Transport Channels. It is only the allowed combinations that are included,” where the allowed combinations contain only “Transport Formats . . . [that] do not correspond to high bit rates simultaneously.” Id. § 7.1.9. Petitioner’s annotation of Figure 6 of TS 25.302, which is reproduced below, illustrates the meaning of some of these terms. 15 The Transport Block Size is “the number of bits in a Transport Block,” and is “fixed within a given Transport Block Set.” Ex. 1009 § 7.1.3. 16 The Transport Block Set Size is “the number of bits in a Transport Block Set.” Ex. 1009 § 7.1.4. 17 L1 refers to the physical or PHY protocol layer. See Ex. 1009 § 3.2. IPR2019-00252 Patent 7,167,487 B2 30 The Figure is a Petitioner-annotated version of Figure 6 of TS 25.302. See Pet. 33. Annotated Figure 6 illustrates the transmission of different Transport Block Sets on different Transport Channels (DCH1-DCH3) during different transmission time intervals (TTIs). Ex. 1009 § 7.1.5. The Transport Block Sets that are shown differ in the number of transport blocks they contain, the length or size of the transport blocks they contain, and the number of TTIs over which they are transmitted. Patent Owner does not dispute Petitioner’s contentions regarding this claim limitation. See PO Resp. 16-23. Claim 13 further recites a selection algorithm for selecting the transport format combinations. Ex. 1001, 16:61-63. Petitioner demonstrates how TS 25.321 teaches this limitation. See Pet. 34-36 (citing/quoting Ex. 1007 § 4.2.3.1, 11.4; Ex. 1002 ¶¶ 183-184, 204-206). TS 25.321 teaches the MAC layer performs “transport format and transport format combination selection according to the transport format combination IPR2019-00252 Patent 7,167,487 B2 31 set . . . configured by [the] RRC [layer].” Ex. 1007 § 4.2.3.1. TS 25.321 teaches each logical channel is assigned a priority value between 1 and 8 and “[t]he selection of TFC in the UE shall be done according to the priorities between logical channels indicated by RRC. Logical channels have absolute priority i.e. the UE shall maximize the transmission of high priority data.” Id. § 11.4. Patent Owner does not dispute Petitioner’s contentions regarding this claim limitation. See PO Resp. 16-23. Lastly, claim 13 recites the selection algorithm uses a minimum bit rate criteria applicable to the respective logic channel. Ex. 1001, 16:63-65. The parties dispute whether this limitation is met. See Pet. 37-40; Pet. Reply 16-21; PO Resp. 20-23; PO Sur-Reply 11-16. Petitioner argues the limitation is met because R2-010182 proposes a modification to the TFC selection algorithm described in § 11.4 of TS 25.321 by adding “new parameters . . . for MAC TFC selection,” including a minimum guaranteed bit rate (MinGBr) parameter. Pet. 37 (quoting Ex. 1008, 1, 5) (emphasis omitted). Petitioner argues MinGBr is the “minimum bit rate criteria” of claim 1 because it is integrated into the TFC selection algorithm and represents “the basic [(e.g., minimum)] needs of the logical channel,” which is consistent with the ’487 patent’s teaching of “integrating into the selection algorithm[] the condition that a minimum bit rate can be guaranteed suitable for the respective logical channels.” Id. at 38-39 (quoting Ex. 1001, 1:61- 65; Ex. 1008, 2) (emphasis omitted) (alteration in original). Patent Owner argues the limitation is not met because the “minimum bit rate criteria” of claim 13 is a relative parameter that must be “applicable to the respective logical channel” and “must pertain specifically to that channel.” PO Resp. 21 (emphasis omitted). By contrast, Patent Owner IPR2019-00252 Patent 7,167,487 B2 32 argues, “MinGBr [is] a global rate criteria applicable to all logic channels” because it describes “the basic needs of the logical channel” and the amount of data that will be “transmitted with an absolute priority scheme.” Id. at 22 (quoting Ex. 1008, 2). Patent Owner further argues that the TFC selection algorithm in R2-010182 performs a single step for each logical channel, “and that step is to ‘try to reach the MinGBr,’” which is a single parameter “without any indication that it depends on the channel being considered.” Id. at 23. Patent Owner argues the Table on page 2 of R2-010182, which shows “the same value for MinGBr and MaxBr for both [logical] channels” LC1 and LC2, confirms that MinGBR is a global parameter. Id. This is evident from the Table, Patent Owner argues, because logical channels LC1 and LC2 can have different values for other parameters, such as MLP and TW. See PO Sur-Reply 13. Petitioner counters that a person skilled in the art would have understood that R2-010182 “teaches that each logical channel has its own MinGBr parameter,” i.e., that R2-010182 modifies the TFC selection algorithm described in TS 25.321 to use a MinGBr “applicable to the respective logical channel” as required by claim 13. Pet. Reply 17 (citing Ex. 1002 ¶ 135). This is so, Petitioner argues, because MinGBr, MaxBr, and TW are introduced to “complete the current MLP [absolute priority scheme] for representing Logical channel[] priorities,” and TS 25.321 teaches assigning MLP on a per channel basis. Id. at 18 (quoting Ex. 1008, 1; citing Ex. 1007 § 11.2.1; Ex. 1019 ¶ 10) (alteration in original). Moreover, Petitioner argues, R2-010182 introduces MinGBr, MaxBr, and TW to “express accurately the needs of different applications in terms of bit rate,” and “[a] global minimum bit rate for all logical channels is inconsistent with IPR2019-00252 Patent 7,167,487 B2 33 [this] objective.” Id. at 17-18 (quoting Ex. 1008, 2; citing Ex. 1019 ¶ 8). Petitioner further argues that both the ’487 patent and R2-010182 refer to the same 3GPP document, TS 23.107 (albeit different versions), to explain their minimum bit rate criteria. Id. at 19 (citing Ex. 1001, 2:1-6; Ex. 1008, 1; Exs. 1020-21). Finally, Petitioner argues that although the Table in R2- 010182 shows two logical channels having the same MinGBr (i.e., 100 bits/TW), the two logical channels measure those bit rates over different TWs (i.e., 3 vs. 4 TTI) and so have different minimum guaranteed bit rates when measured in bits/sec. Id. at 21 (citing Ex. 1019 ¶¶ 11-13). Lastly, both parties argue we should ignore the other parties’ arguments. See Pet. Reply 17 (arguing that Patent Owner’s arguments that MinGBr is a global parameter are “only attorney arguments that should be given no weight.”); PO Sur-Reply 12-13 (arguing that “Petitioners seek to introduce the entirely new theory that the value of MinGBr of R2-010182 is variable. . . . the Board is respectfully requested not to consider Petitioners’ arguments.”). Upon consideration of the evidence and arguments presented by the parties, summarized above, we find the combination of TS 25.321, TS 25.302, and R2-010182 teaches a TFC selection algorithm that “uses a minimum bit rate criteria applicable to the respective logical channel” as recited in claim 13. First, we disagree with Patent Owner’s contention that we should ignore Petitioner’s Reply for seeking “to introduce the entirely new theory that the value of MinGBr is variable.” See PO Sur-Reply 12-13. The Petition identifies MinGBr as “read[ing] on the ‘minimum bit rate criteria’ recited in claim [13].” Pet. 38. Thus, the arguments and evidence presented in Petitioner’s Reply, i.e., that MinGBr is a “local” rather than a IPR2019-00252 Patent 7,167,487 B2 34 “global” parameter, were presented in response to Patent Owner’s arguments to the contrary. See PO Resp. 20-21. Petitioner is “not barred from elaborating on arguments on issues previously raised.” Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019). Second, in our Institution Decision, we made a preliminary finding, that: although claim 1 requires each logical channel to have its own respective minimum bit rate that does not imply or require the minimum bit rate for every logical channel must be different from the minimum bit rate for every other logical channel. For example, logical channels a, b, and c can have respective minimum bit rates of (1) 100, 150, and 200, (2) 100, 100, and 200, or (3) 100, 100, and 100. In each case, logical channels a, b, and c have their own respective minimum bit rates, even though some or all of the logical channels may have the same minimum bit rate. In other words, claim 1 does not require the minimum bit rate for each logical channel to differ from the minimum bit rate for any or every other logical channel; it simply requires each logical channel to have its own or respective minimum bit rate that is independent of, though not necessary different from, the respective minimum bit rates for the other logical channels. Dec. Inst. 40-41. Both parties agree with that preliminary finding, which we maintain here. See Tr. 24:19-25:5 (Petitioner’s agreement); id. at 72:15- 73:3 (Patent Owner’s agreement). TS 25.321 teaches a TFC selection algorithm that uses a single parameter (MLP) assigned to each logical channel to represent that logical channel’s priority. See Ex. 1007 § 11.2.1 (disclosing “each involved logical channel is assigned a MAC Logical channel Priority (MLP) in the range 1,…,8.”) (emphasis added). R2-010182 proposes modifying that TFC selection algorithm by introducing new parameters MinGBr, MaxBr, and IPR2019-00252 Patent 7,167,487 B2 35 TW to “complete the current MLP for representing Logical channels priorities.” Ex. 1008, 1 (emphasis added). R2-010182 teaches these new parameters are needed to “complet[e] MLP to express accurately the needs of different applications in term[s] of bit rate” because without these parameters “[t]here is only one way to represent the quality of service at logical channel level (MLP)” and the single MLP parameter “is not sufficient to characterise all the applications foreseen for UMTS.” Id. at 1- 2 (emphasis added). R2-010182’s explanation that MinGBr is needed to “complete the current MLP” in order to accurately express “the needs of different applications” indicates that MinGBr (like MLP) can have different values assigned for different logical channels. Id. at 2 (emphasis added). Thus, MinGBr, MaxBR, and TW (like MLP) are parameters that “characterise MAC logical channels for TFC selection.” Id. at 4 (emphasis added). This is expressly shown in the Table provided on page 2 of R2- 010182, which is reproduced below. The Table shows two logical channels, LC1 and LC2, and the values assigned to the parameters MPL, TW, MinGBr, and MaxBr for each logical channel. Ex. 1008, 2. Logical channel LC1 is assigned an MLP of 1, a MinGBr of 100 bits/TW measured over a time window (TW) of 3 TTI, and a IPR2019-00252 Patent 7,167,487 B2 36 MaxBr of 200 bits/TW measured over the 3 TTI time window. Id.18 Logical channel LC2 is assigned an MLP of 2, a MinGBr of 100 bits/TW measured over a 4 TTI time window, and a MaxBr of 200 bits/TW measured over the 4 TTI time window. Id. Significantly, the Table shows logical channels LC1 and LC2 have separately assigned values for MLP, TW, MinGBr, and MaxBr, even though the MinGBr parameter for both channels is assigned the same value when that value is expressed as bits per TW (i.e., 100 bits/TW). However, as discussed above, claim 13 does not require the minimum guaranteed bit rates for LC1 and LC2 to be different; only to be independent or separately assigned. Moreover, even though the Table shows LC1 and LC2 have the same MinGBr expressed in bits/TW, the Table also shows that LC1 and LC2 have different MinGBr’s expressed in the more physical terms of bits/TTI or bits/sec. When measured in bits/TTI, LC1 has a MinGBr of 33.3 bits/TTI and LC2 has a MinGBr of 25 bits/TTI.19 Assuming a TTI of 10 ms, LC1 has a MinGBr of 3.33 kbits/sec (33.3 bits/10 ms) and LC2 has a MinGBr of 2.5 kbits/sec (25 bits/10 ms).20 18 R2-010182 discloses that both MinGBr and MaxBr are measured in “units [of] Bits/TW.” Ex. 1008, 2. 19 LC1 and LC2 are both assigned a MinGBr of 100 bits/TW measured over time windows (TWs) of 3 TTI and 4 TTI, respectively. See Ex. 1008, 2. Thus, LC1 has a MinGBr of 33.3 bits/TTI (100 bits/3 TTI) and LC2 has a MinGBr of 25 bits/TTI (100 bits/4 TTI). 20 TTI is “defined as the inter-arrival time of Transport Block Sets” and is “always a multiple of the minimum interleaving period (e.g., 10 ms, the length of one Radio Frame).” Ex. 1009 § 7.1.5. IPR2019-00252 Patent 7,167,487 B2 37 For the reasons discussed above, we find Petitioner has demonstrated by a preponderance of evidence that the combination of TS 25.321, TS 25.302, and R2-010182 teaches all the limitations of claim 13, and that a person of ordinary skill in the art would have combined the teachings of these references in the manner suggested. Therefore, Petitioner has demonstrated that claim 13 is unpatentable over the combination of TS25.321, R2-010182, and TS25.302. 6. Claim 11 Claim 11 is an independent claim, and recites a radio network controller (RNC) for a network having the properties of the network controlled by the method recited in claim 13. Compare Ex. 1001, 16:26-40, with id. at 16:54-65. For example, where claim 13 recites a method for controlling a network provided with “transport channels . . . for transmitting transport blocks formed from packet units of the logic channels,” claim 11 recites an RNC “for forming transport bl[o]cks from packet units of the logic channels and for transmitting the transport blocks through the transport channels.” Compare id. at 16:28-31, with id. at 16:56-58. Similarly, where claim 13 recites a method for controlling a network provided with “a selection algorithm . . . for selecting the transport format combinations . . . [that] uses a minimum bit rate criteria,” claim 11 recites the “selection algorithm is provided in the radio network controller for selecting the transport format combinations . . . while taking into account a minimum bit rate.” Compare id. at 16:35-40, with id. at 16:61-65. Given the similarity between claims 11 and 13, Petitioner largely relies on its analysis of claim 13 to demonstrate how the combination of TS 25.321, TS 25.302, and R2-010182 teaches the limitations of claim 11. IPR2019-00252 Patent 7,167,487 B2 38 See Pet. 40-45. For example, Petitioner relies on its analysis of claim 13 to demonstrate how TS 25.321 teaches a UMTS network having an RNC that includes a MAC layer that maps logical channels onto transport channels. Id. at 40-42; see also id. at 25-29. Petitioner then demonstrates how TS 25.321 teaches “the MAC-c/sh entity in the controlling RNC receives RLC- PDUs from its RLC and ‘fit[s] [these RCL-PDUs] into the available transport blocks on the transport channels.” Id. at 42-43 (quoting Ex. 1007 §§ 4.2.4, 4.2.4.1; citing Ex. 1002 ¶¶ 227-228) (emphasis omitted). Petitioner also relies on its analysis of claim 13 to demonstrate how TS 25.302 teaches the RNC’s MAC layer allocates a number of valid transport format combinations to the transport channels that indicate the transport blocks for transmission on each transport channel. Id. at 44; see also id. at 30-34. Finally, Petitioner relies on its analysis of claim 13 to demonstrate how TS 25.321 teaches the RNC’s MAC layer includes a TFC selection algorithm, and how R2-010182 proposes modifying that algorithm so that it “relies on the minimum guaranteed bit rate of the logical channels . . . to select the TFCs.” Id. at 44-45 (emphasis omitted); see also id. at 34-40. Patent Owner argues that claim 11 is patentable over the combination of TS 25.321, TS 25.302, and R2-010182 for the same reasons as claim 13. See PO Resp. 20-23; PO Sur-Reply 11-16. For the reasons discussed in §§ II.F.4 and II.F.5, supra, having considered all the evidence and arguments presented by Petitioner and Patent Owner, we find Petitioner has demonstrated by a preponderance of evidence that claim 11 is unpatentable over the combination of TS 25.321, TS 25.302, and R2-010182. IPR2019-00252 Patent 7,167,487 B2 39 7. Claim 12 Claim 12 is an independent claim, and recites a terminal for a network having the properties of the network controlled by the method recited in claim 13. Compare Ex. 1001, 16:41-53, with id. at 16:54-65. For example, where claim 13 recites a method for controlling a network provided with “transport channels . . . for transmitting transport blocks formed from packet units of the logic channels,” claim 12 recites a terminal “for transmitting transport blocks formed from packet units of the logic channels.” Compare id. at 16:43-45, with id. at 16:56-58. Similarly, where claim 13 recites a method for controlling a network provided with “a selection algorithm . . . for selecting transport format combinations . . . [that] uses a minimum bit rate criteria,” claim 12 recites a terminal provided with “a selection algorithm . . . for selecting transport format combinations . . . [where] the selection of the transport format combinations is carried out while taking into account a minimum bit rate.” Compare id. at 16:48-53, with id. at 16:61-65. Given the similarity between claims 12 and 13, Petitioner largely relies on its analysis of claim 13 to demonstrate how the combination of TS 25.321, TS 25.302, and R2-010182 teaches the limitations of claim 12. See Pet. 41-45. For example, Petitioner relies on its analysis of claim 13 to demonstrate how TS 25.321 teaches a UMTS network having a UE (terminal) that includes a MAC layer that maps logical channels onto transport channels. Id. at 41-42. Petitioner then demonstrates how TS 25.321 teaches the UE’s MAC layer transmits transport blocks formed from packet units of the logic channels. Id. at 43-44. In particular, Petitioner demonstrates how TS 25.321 teaches an RLC layer in the UE “provides IPR2019-00252 Patent 7,167,487 B2 40 RLC-PDUs to the MAC, which fit into the available transport blocks on the transport channels.” Id. at 29-30 (quoting Ex. 1007 § 4.2.3.1) (emphasis omitted). Petitioner also relies on its analysis of claim 13 to demonstrate how TS 25.302 teaches the UE’s MAC layer allocates a number of valid transport format combinations to the transport channels that indicate the transport blocks for transmission on each transport channel. Id. at 44. Finally, Petitioner relies on its analysis of claim 13 to demonstrate how TS 25.321 teaches the UE’s MAC layer includes a TFC selection algorithm, and how R2-010182 proposes modifying that algorithm so that it “relies on the minimum guaranteed bit rate of the logical channels . . . to select the TFCs.” Id. at 44-45 (emphasis omitted); see also id. at 34-40. Patent Owner argues that claim 12 is patentable over the combination of TS 25.321, TS 25.302, and R2-010182 for the same reasons as claim 13. See PO Resp. 20-23; PO Sur-Reply 11-16. For the reasons discussed in §§ II.F.4 and II.F.5, supra, having considered all the evidence and arguments presented by Petitioner and Patent Owner, we find Petitioner has demonstrated by a preponderance of evidence that claim 12 is unpatentable over the combination of TS 25.321, TS 25.302, and R2-010182. G. The Peisa challenge Petitioner argues claims 11-13 are unpatentable over Peisa. See Pet. 46-69; Pet. Reply 21-26. Patent Owner disputes this. See PO Resp. 24-27; PO Sur-Reply 16-18. For the reasons discussed below, Petitioner demonstrates by a preponderance of evidence that claims 11-13 are unpatentable over Peisa. IPR2019-00252 Patent 7,167,487 B2 41 1. Peisa Peisa discloses a UMTS network that includes a number of RNCs and a number of UEs, such as mobile terminals. Ex. 1013, 1:66-2:16. “User and signaling data may be carried between an RNC 140 and a UE 110 using Radio Access Bearers (RABs).” Id. at 4:28-30. UEs may be “allocated one or more RABs, each of which is capable of carrying a flow of user or signaling data” and each of which is “mapped onto respective logical channels.” Id. at 4:31-34. The UE includes a MAC layer that maps “a set of logical channels . . . onto a transport channel.” Id. at 4:34-36. The transport channel is then “mapped at the physical layer onto a [physical channel] for transmission over the air interface.” Id. at 4:43-47. Figure 3 of Peisa, which is reproduced below, discloses the layer 2 or MAC protocol layer of Peisa’s UMTS network. IPR2019-00252 Patent 7,167,487 B2 42 Figure 3 of Peisa “illustrates a simplified UMTS layer 2 protocol structure which is involved in the communication between mobile stations . . . or more broadly UEs 110, and Radio Network Controllers (RNCs) 140.” Id. at 6:31-37. The protocol structure “includes a set of Radio Access Bearers (RABs) 305 that make available radio resources (and services) to user applications.” Id. at 6:41-44. Data flowing from RABs 305 “are passed to respective Radio Link Control (RLC) entities 310 . . . [that] buffer the received data,” and map RABs 305 “onto respective logical channels 315.” Id. at 6:45-50. MAC 320 “receives data transmitted in the logical channels 315 and further maps the data from the logical channels 315 onto a set of transport channels 325.” Id. at 6:50-54. “The transport channels 325 are finally mapped to a single physical transport channel 330, which has a total bandwidth . . . allocated to it by the network.” Id. at 6:54-57. Although MAC 320 “performs scheduling of outgoing data packets” buffered by RLC 310, a Radio Resource Controller (RRC) “sets a limit on the maximum amount of data that can be transmitted from each flow by assigning a set of allowed Transport Format Combinations” to MAC 320. Id. at 10:19-25. A Transport Format Combination is a set of “all possible TFs [transport formats] for a given transport channel.” Id. at 7:17-20. RRC 335 defines the set of all possible TFs for a transport channel in terms of TB (Transport Block) sizes and TBS (Transport Block Set) sizes. Id. at 7:2-13. The TB size “tells the MAC entity what packet sizes it can use to transport data to the physical layer,” and the TBS size tells the MAC entity “the total number of bits [it] can transmit to the physical layer in a single transmission time interval (TTI).” Id. at 7:4-11. MAC 320 “independently decide[s] how IPR2019-00252 Patent 7,167,487 B2 43 much data is transmitted from each flow by choosing the best available Transport Format Combination (TFC) from the TFCS.” Id. at 10:25-28. Peisa discloses a number of algorithms by which MAC 320 selects the best available TFC from a set of TFCs to schedule data transmissions. For example, Figure 4 is a “method in flowchart form for allocating bandwidth resources to data flow streams between entities in the exemplary second layer architecture of FIG. 3.” Id. at 3:49-54. Figures 6 and 8 are similarly “method[s] in flowchart form for scheduling data flows.” Id. at 3:55-57, 3:61-63. Figure 8 of Peisa is reproduced below. Figure 8 is an illustration of “the scheduling process in the MAC layer [that] includes the selection of a TFC from a TFCS using a two-step scoring process.” Id. at 18:29-34. At step 805, “several parameters are obtained for IPR2019-00252 Patent 7,167,487 B2 44 each logical channel.” Id. at 18:35-36, Fig. 8. For example, “[t]he QoS Class for each logical channel may be obtained from the corresponding RAB parameter,” and “[t]he Guaranteed Rate for each logical channel may also be obtained from the corresponding RAB parameter.” Id. at 18:36-43. At step 810, a logical channel score and a logical channel bonus score are calculated for each logical channel. Id. at 18:60-67, Fig. 8. At step 815, for each TFC in the TFCS, a score is calculated by summing all of the logical channel scores and a bonus score is calculated by summing all of the logical channel bonus scores for all of the logical channels in the TFC. Id. at 19:1-6, Fig. 8. At step 820, the MAC selects the TFC with the largest score, or the TFC with the largest bonus score if two or more TFCs have the same score. Id. at 19:7-10, Fig. 8. This algorithm “ensures that if there is a TFC that transmits at least the guaranteed rate for each flow, then that TFC is chosen.” Id. at 19:10-13. 2. Claim 13 Claim 13 recites a method of controlling a network with a first plurality of logic channels associated with a second plurality of transport channels. Ex. 1001, 16:54-56. Petitioner demonstrates how Peisa teaches this limitation. See Pet. 46-48 (citing Ex. 1013, 1:64-2:17, 2:48-51, 6:41- 65, 9:30-35, Fig. 1). Peisa discloses a UMTS cellular network having a plurality of RNCs and UEs. Ex. 1013, 1:64-2:17, Fig. 1. The UEs and RNCs execute several processes to control the UMTS network, including “packet scheduling in accordance of quality of service (QoS) constraints for data flows.” Id. at 2:48-51, 9:30-34. The UEs and RNCs have a MAC layer that “receives data transmitted in the logical channels 315 and further maps the data from the logical channels 315 onto a set of transport channels IPR2019-00252 Patent 7,167,487 B2 45 325.” Id. at 6:41-65. This is shown, for example, in a Petitioner-annotated version of Figure 3 of Peisa, which is reproduced below. The Figure above is a Petitioner-annotated version of Figure 3 of Peisa. See Pet. 49. The Figure discloses a simplified, exemplary, layer 2 protocol structure that is involved in communications between UEs 110 and RNCs 140 in Peisa’s UMTS network 100. Ex. 1013, 6:28-37. Peisa teaches that the entities shown in Figure 3, including the RABs, RLCs, and MAC and RRC layers are located in both the UE and RNC. Id. at 6:31-37, 17:62-65, Figs. 3, 7. Patent Owner does not dispute that Peisa teaches this limitation. See PO Resp. 24-27. Claim 13 further recites the transport channels are provided for transmitting blocks formed from packet units of the logic channels. IPR2019-00252 Patent 7,167,487 B2 46 Ex. 1001, 16:56-58. Petitioner demonstrates how Peisa teaches this limitation.21 See Pet. 49-52 (quoting/citing Ex. 1013, 4:31-34, 6:41-55, 10:29-56, Fig. 3). Peisa teaches that data flows from “RABs 305 are passed to respective Radio Link Control (RLC) entities 310,” which “buffer the received data” and map the RABs “onto respective logical channels 315.” Ex. 1013, 6:45-50. MAC entity 320 “receives data transmitted in the logical channels 315 and further maps the data from the logical channels 315 onto a set of transport channels 325.” Id. at 6:50-54. MAC entity 320 selects a Transport Format Combination (TFC) that includes transport channels 325, and RLCs 310 deliver the buffered data flows from RABs 305 as “packets to the MAC entity [320],” which schedules delivery of the “packets in accordance with the selected TFC.” Id. at 10:45-53. Patent Owner does not dispute that Peisa teaches this limitation. See PO Resp. 24-27. Claim 13 further recites a plurality of valid transport format combinations allocated to the transport channels that indicate the transport blocks provided for transmission on each transport channel. Ex. 1001, 16:58-61. Petitioner demonstrates how Peisa teaches this limitation. See Pet. 52-56 (citing/quoting Ex. 1013, 7:2-16, 7:25-8:2, 10:15-29). Peisa teaches that for each transport channel 325, RRC 335 defines transport block 21 As noted above, Peisa teaches that the various entities, including the RABs, RLCs, and MAC and RRC layers are implemented in both UEs and RNCs. Ex. 1013, 6:31-37, 17:62-65, Figs. 3, 7. Moreover, Peisa teaches the entities have the same functionality in the UEs and RNCs. Id. at 9:30- 35, 18:17-18. Thus, we limit our discussion to Petitioner’s evidence demonstrating the existence and functionality of these elements in UEs, but find Petitioner has also demonstrated that these elements exist in and have the same functionality in RNCs. See Pet. 58 (quoting Ex. 1013, 9:30-35, 18:17-18). IPR2019-00252 Patent 7,167,487 B2 47 parameters (TB size and TBS size) that “together with some additional information . . . form a TF [Transport Format].” Ex. 1013, 7:2-13. Peisa further teaches that the combination of “all possible TFs for a given transport channel . . . is called a Transport Format Combination.” Id. at 7:17-20. However, not all Transport Format Combinations are allowed because RRC 335 “has to ensure that the total transmission capability on all transport channels 325 does not exceed the transmission capability of physical channel 330.” Id. at 7:30-33. Thus, RRC 335 provides “MAC entity 320 a Transport Format Combination Set (TFCS), which contains the allowed Transport Format Combinations [TFCs] for all transport channels.” Id. at 7:33-36 (emphasis added). That is, Peisa teaches a plurality of valid TFCs, where valid TFCs are those that are allowed because they do not exceed the transmission capability of physical channel 330. See Pet. 54 (citing Ex. 1002 ¶¶ 293-297). Patent Owner does not dispute that Peisa teaches this limitation. See PO Resp. 24-27. Claim 13 further recites a selection algorithm for selecting the transport format combinations. Ex. 1001, 16:61-63. Petitioner demonstrates how Peisa teaches this limitation. See Pet. 56-59 (citing/quoting Ex. 1013, 9:9-16, 11:43-47, 18:29-34, Figs. 4, 8). Peisa teaches “a method of allocating transmission resources at a Media Access Control (MAC) entity,” including by “selecting a Transport Format Combination (TFC) from a TFC Set.” Ex. 1013, 9:9-16. Peisa discloses several TFC selection algorithms, including the algorithms shown in Figures 4 and 8. Id. at 11:43-47, 18:29-34, Figs. 4, 8. Patent Owner does not dispute that Peisa teaches this limitation. See PO Resp. 24-27. IPR2019-00252 Patent 7,167,487 B2 48 Lastly, claim 13 requires the selection algorithm to use a minimum bit rate criteria applicable to the respective logic channel. Ex. 1001, 16:61-65. The parties dispute whether this limitation is met. See Pet. 59-61; Pet. Reply 23-26; PO Resp. 24-27; PO Sur-Reply 16-18. Petitioner argues Peisa teaches this limitation because the TFC selection algorithm of Figure 4 “[s]chedules packets by optimizing the throughput while still keeping the fairness (i.e., guaranteed rates).” Pet. 59 (quoting/citing Ex. 1013, 11:43-49, Fig. 4) (emphasis omitted, alteration in original). Petitioner further argues Peisa teaches this limitation because the TFC selection algorithm shown in Figure 8 “uses a two-step scoring process, relying on logical channel parameters that include the ‘Guaranteed Rate for each logical channel.’” Id. (quoting Ex. 1013, 18:29-57) (emphasis omitted). Relying on the testimony of Dr. Beuhrer, Petitioner argues a person skilled in the art would have understood “that Peisa’s FIG. 8 flowchart corresponds to a selection algorithm that uses a minimum bit rate criteria” because it “selects a TFC that satisfies ‘at least the guaranteed rate for each flow,’ where a flow corresponds to a logical channel.” Id. at 61 (citing Ex. 1002 ¶¶ 306-309; Ex. 1013 19:10-13) (emphasis omitted). Patent Owner argues that Petitioner has failed to establish that the TFC selection algorithms shown in Figures 4 and 8 of Peisa use “a minimum bit rate criteria.” See PO Resp. 24-27. Regarding Figure 4, Patent Owner argues Petitioner fails to explain how (a) “maintaining so-called ‘fairness (i.e. guaranteed rates),’” (b) “calculating a fair MAC bandwidth share for each input flow,” or (c) selecting a TFC that “most closely matches the adjusted fair shares” teaches or suggests using a minimum bit rate criteria. Id. at 25. Moreover, Patent Owner argues, rather than teaching a minimum IPR2019-00252 Patent 7,167,487 B2 49 bit rate criteria, “Peisa describes the ‘fairness’ calculation of Figure 4 as applying ‘the maximum allowed rate for any logical channel.’” Id. (quoting Ex. 1013, 11:9-10). Regarding Figure 8, Patent Owner argues Petitioner “fails to explain why the ‘Guaranteed Rate’ . . . necessarily constitutes” a minimum bit rate criteria, and further argues that a TFC selection that “meets or exceeds a guaranteed rate . . . does not necessarily mean that a different minimum rate is not also applicable.” Id. at 26-27. Petitioner, again relying on the testimony of Dr. Buehrer, responds that a person skilled in the art “would have understood that Peisa teaches . . . selecting TFCs based on a minimum bit rate criteria.” Pet. Reply 23 (citing Ex. 1002 ¶¶ 95-98, 257-260). Petitioner further argues that the term “guaranteed rate” is a term of art “well known in the context of QoS constraints of data flows to reflect a minimum resource requirement for the data flows.” Id. at 23-24 (citing Ex. 1019 ¶¶ 22-23). Petitioner argues the ’487 patent itself recognizes this by defining “minimum bit rate” in terms of 3GPP’s QoS specification, TS23.107, which “does not mention a ‘minimum bit rate,’ but only defines a ‘guaranteed bitrate’ QoS attribute” as a “[m]inimum resource requirement.” Id. at 24 (citing Ex. 1001, 2:1-6; quoting Ex. 1020 § 6.4.3.2) (alteration in original, emphasis omitted). Regarding Peisa’s Figure 4 algorithm, Petitioner argues it “achieves the fair rate over time, thus providing a minimum rate over time” by providing each flow “at least their determined fair rate.” Id. at 25 (quoting Ex. 1013, 11:29-32) (emphasis omitted). Petitioner further argues the inclusion and use of a maximum rate as an upper limit in the Figure 4 algorithm “does not conflict with the understanding that the fair rate corresponds to a minimum rate or lower limit over time.” Id. (citing Ex. IPR2019-00252 Patent 7,167,487 B2 50 1019 ¶ 26). Regarding Peisa’s Figure 8 algorithm, Petitioner reiterates that a person skilled in the art would have understood that a “guaranteed rate corresponds to a minimum bit rate” because the algorithm selects “a TFC that satisfies ‘at least the guaranteed rate’ for each flow (logical channel), where the phrase ‘at least’ indicates a lower limit (i.e., minimum) requirement.” Id. (quoting Ex. 1013, 19:10-13; citing Ex. 1002 ¶¶ 259- 260). Moreover, Peisa teaches the Figure 8 algorithm “provide[s] the guaranteed rate transfer rate to all service classes” by “providing a minimum level of service to all flows.” Id. (quoting Ex. 1013, 20:9-32) (emphases omitted). In Sur-Reply, Patent Owner argues “Petitioner[] seek[s] to introduce evidence that Peisa would have used the terms ‘fairness’ and ‘guaranteed rate[]’ to mean a guaranteed bit rate as used in TS 23.107” but should have presented this information in the Petition rather than in the Reply. PO Sur- Reply 17. Patent Owner further argues that Petitioner’s explanation of the “fairness” of Peisa’s Figure 4 algorithm and of the “guaranteed bit rate” of Peisa’s Figure 8 algorithm fails to demonstrate how either algorithm teaches using a “minimum bit rate criteria.” Id. at 17-18. Upon consideration of the evidence and arguments presented by the parties, summarized above, we find Peisa teaches a TFC selection algorithm that “uses a minimum bit rate criteria applicable to the respective logical channel.” Peisa teaches each logical channel is assigned its own or respective guaranteed bit rate. For example, the Figure 4 TFC selection algorithm “[s]chedules packets by optimizing the throughput . . . while still keeping the fairness (i.e., guaranteed rates).” Ex. 1013, 11:47-49. Similarly, the Figure 8 TFC selection algorithm schedules packets based on IPR2019-00252 Patent 7,167,487 B2 51 scores calculated using an array, GuarRateVect[lch], that is indexed by the logical channel variable “lch.” Id. at 19:18-20:8. The Figure 8 algorithm is reproduced below. Figure 8 of Peisa, is a flowchart “for scheduling data flows.” Id. at 18:29- 31. The scheduling algorithm obtains “several parameters . . . for each logical channel,” including a guaranteed rate “obtained from [a] corresponding RAB parameter.” Id. at 18:35-43. The algorithm calculates (a) two scores for each logical channel using that logical channel’s guaranteed rate (step 810), (b) two scores for each TFC in a set of TFCs, where each TFC score adds one of the two logical channel scores for all of the logical channels in the TFC (step 815), and selects (c) one of the TFCs in IPR2019-00252 Patent 7,167,487 B2 52 the set of TFCs based on the two TFC scores calculated for each TFC.22 See id. at 18:29-19:10. According to the unrebutted testimony of Dr. Beuhrer, a person skilled in the art would have understood “Peisa’s TFC selection algorithm uses a minimum bit rate criteria . . . that corresponds to the guaranteed rate of the logical channel, since the algorithm of FIG. 8 selects a TFC that satisfies ‘at least the guaranteed rate for each flow,’ where a flow corresponds to a logical channel.” Ex. 1002 ¶ 260 (quoting Ex. 1013, 19:10-13). That is, a person skilled in the art would have understood Peisa’s algorithm uses “a minimum bit rate criteria of logical channels in performing TFC selection, since the algorithm attempts to satisfy at least (i.e., lower limit requirement) the guaranteed rate for each logical channel.” Id. Although Patent Owner disputes Petitioner’s contention that Peisa’s fair or guaranteed rates are minimum bit rates, Patent Owner offers no evidence to counter Dr. Beuhrer’s opinion that a person skilled in the art would have understood that they are. See PO Resp. 24-27; see also Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”). Moreover, Petitioner’s Reply provides additional evidence supporting Dr. Beuhrer’s opinion. See Pet. Reply 24 (citing Ex. 1021 § 6.4.3.2; Ex. 1019 ¶¶ 22-24). For example, in a 22 The TFC selection is based on the Score and Bonus_score calculated for each TFC. See Ex. 1013, 19:7-10. Score is the sum of the scores (Score- _lch) and Bonus_score is the sum of the bonus scores (Bonus_score_lch) calculated for each of the logical channels in the TFC. Id. at 18:60-19:6. Score_lch and Bonus_score_lch are calculated for each logical channel, and are a function of each logical channel’s Guaranteed Rate. Id. at 18:35-43, 18:60-57; FIG 8. IPR2019-00252 Patent 7,167,487 B2 53 section entitled “UMTS Bearer Service Attributes” and a subsection entitled “Attributes discussed per traffic class,” TS 23.107 teaches the guaranteed bitrate is “used for resource allocation in UMTS” and that a “[m]inimum resource requirement is determined by [the] guaranteed bitrate.” Ex. 1021 §§ 6.4.3, 6.4.3.2 (emphasis added). Although Patent Owner argues that we should not consider this additional evidence because it could have been presented in the Petition, we find it has been properly presented in response to Patent Owner’s argument that Peisa’s “fair rate” or “guaranteed rate” is not a minimum bitrate. See PO Resp. 25-26. The Petition cites Peisa for equating a “fair rate” with a “guaranteed rate,” and cites Dr. Buerher’s declaration for testimonial evidence that a person skilled in the art would have understood Peisa’s “guaranteed rate” to be a “minimum bit rate.” See Pet. 59, 61 (quoting Ex. 1013, 11:43-49; citing Ex. 1002 ¶¶ 306-309). Thus, the evidence presented in Petitioner’s Reply that persons skilled in the art understood “guaranteed rates” to be “minimum bit rates” or “minimum resource requirements” is (a) consistent with arguments raised in the Petition, and (b) responsive to arguments raised in Patent Owner’s Response. Accordingly, they are appropriately made in Petitioner’s Reply. See 37 C.F.R. § 42.23(b); see also Chamberlain Grp., 944 F.3d at 925 (Fed. Cir. 2019) (finding a party is “not barred from elaborating on arguments on issues previously raised.”). For all of the reasons discussed above, we find Petitioner has demonstrated that Peisa discloses a TFC selection algorithm that uses a minimum bit rate criteria applicable to the respective logic channel. Accordingly, for the reasons discussed above, we find Petitioner has demonstrated by a preponderance of evidence that a person skilled in the art IPR2019-00252 Patent 7,167,487 B2 54 would have understood Peisa to teach or suggest all the limitations of claim 13. Therefore, Petitioner has demonstrated by a preponderance of evidence that claim 13 is unpatentable over Peisa. 3. Claim 11 Claim 11 recites a radio network controller (RNC) for a network having the properties of the network controlled by the method recited in claim 13. Compare Ex. 1001, 16:26-40, with id. at 16:54-65. For example, where claim 13 recites a method for controlling a network provided with “transport channels . . . for transmitting transport blocks formed from packet units of the logic channels,” claim 11 recites an RNC “for forming transport bl[o]cks from packet units of the logic channels and for transmitting the transport blocks through the transport channels.” Compare id. at 16:28-31, with id. at 16:56-58. Similarly, where claim 13 recites a method for controlling a network provided with “a selection algorithm . . . for selecting the transport format combinations . . . [that] uses a minimum bit rate criteria,” claim 11 recites the “selection algorithm is provided in the radio network controller for selecting the transport format combinations . . . while taking into account a minimum bit rate.” Compare id. at 16:35-40, with id. at 16:61-65. Given the similarity between claims 11 and 13, Petitioner largely relies on its analysis of claim 13 to demonstrate how Peisa teaches the limitations of claim 11. See Pet. 62-64, 67-69. For example, Petitioner relies on its analysis of claim 13 to demonstrate how Peisa teaches a UMTS network having an RNC that includes a MAC layer that maps logical channels 315 onto transport channels 325. Id. at 62-64 (quoting Ex. 1013, 1:64-2:17, 6:24-65, 9:30-34, 18:17-18, Fig. 3). Petitioner then relies on its IPR2019-00252 Patent 7,167,487 B2 55 analysis of claim 13 to demonstrate how Peisa teaches the RNC’s MAC layer schedules the transmission of data packets by mapping packets in logical channels to transport blocks transmitted through transport channels. Id. at 67. Next, Petitioner relies on its analysis of claim 13 to demonstrate how Peisa teaches the RNC’s MAC layer allocates a number of valid transport format combinations to the transport channels that indicate the transport blocks for transmission on each transport channel. Id. at 68-69. Finally, Petitioner relies on its analysis of claim 13 to demonstrate how Peisa teaches the RNC’s MAC layer includes a selection algorithm for selecting transport format combinations while taking into account a minimum bit rate. Id. at 69. Patent Owner argues that claim 11 is patentable over Peisa for the same reasons as claim 13. See PO Resp. 24-27; PO Sur-Reply 16-18. For the reasons discussed in § II.G.2, supra, having considered all the evidence and arguments presented by Petitioner and Patent Owner, we find Petitioner has demonstrated by a preponderance of evidence that claim 11 is unpatentable over Peisa. 4. Claim 12 Claim 12 recites a terminal for a network having the properties of the network controlled by the method recited in claim 13. Compare Ex. 1001, 16:41-53, with id. at 16:54-65. For example, where claim 13 recites a method for controlling a network provided with “transport channels . . . for transmitting transport blocks formed from packet units of the logic channels,” claim 12 recites a terminal “for transmitting transport blocks formed from packet units of the logic channels.” Compare id. at 16:43-45, with id. at 16:56-58. Similarly, where claim 13 recites a method for controlling a network provided with “a selection algorithm . . . for selecting IPR2019-00252 Patent 7,167,487 B2 56 transport format combinations . . . [that] uses a minimum bit rate criteria,” claim 12 recites a terminal provided with “a selection algorithm . . . for selecting transport format combinations . . . [where] the selection of the transport format combinations is carried out while taking into account a minimum bit rate.” Compare id. at 16:48-53, with id. at 16:61-65. Given the similarity between claims 12 and 13, Petitioner largely relies on its analysis of claim 13 to demonstrate how Peisa teaches the limitations of claim 12. See Pet. 64-69. For example, Petitioner relies on its analysis of claim 13 to demonstrate how Peisa teaches a UMTS network having a UE (terminal) that includes a MAC layer that maps logical channels 315 onto transport channels 325. Id. at 64-66 (quoting Ex. 1013, 1:64-2:17, 6:24-65, 9:30-34, 18:17-18, Fig. 3). Petitioner also relies on its analysis of claim 13 to demonstrate how Peisa teaches the UE’s MAC layer transmits transport blocks formed from packets of logical channels. Id. at 68. Petitioner further relies on its analysis of claim 13 to demonstrate how Peisa teaches the UE’s MAC layer allocates a number of valid transport format combinations to the transport channels that indicate the transport blocks for transmission on each transport channel. Id. at 68-69. Finally, Petitioner relies on its analysis of claim 13 to demonstrate how Peisa teaches the UE’s MAC layer includes a selection algorithm for selecting transport format combinations while taking into account a minimum bit rate. Id. at 69. Patent Owner argues that claim 12 is patentable over Peisa for the same reasons as claim 13. See PO Resp. 24-27; PO Sur-Reply 16-18. For the reasons discussed in § II.G.2, supra, having considered all the evidence and arguments presented by Petitioner and Patent Owner, we find IPR2019-00252 Patent 7,167,487 B2 57 Petitioner has demonstrated by a preponderance of evidence that claim 12 is unpatentable over Peisa. III. CONCLUSION We have reviewed the Petition, Patent Owner Response, Petitioner Reply, and Patent Owner Sur-Reply. We have considered all of the evidence and arguments presented by Petitioner and Patent Owner, and have weighed and assessed the entirety of the evidence as a whole. We determine, on this record, that Petitioner has demonstrated by a preponderance of evidence that claims 11-13 of the ’487 patent are unpatentable over TS 25.321, TS 25.302, and R2-010182. 23 We further determine that Petitioner has demonstrated by a preponderance of evidence that claims 11-13 of the ’487 patent are unpatentable over Peisa. 23 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). Claims 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatentable Claims Not Shown Unpatentable 11-13 103 TS 25.321, TS 25.302, R2-010182 11-13 11-13 103 Peisa 11-13 IPR2019-00252 Patent 7,167,487 B2 58 IV. ORDER It is hereby: ORDERED that claims 11-13 of the ’487 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over TS 25.321, TS 25.302 and R2- 010182; FURTHER ORDERED that claims 11-13 of the ’487 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Peisa; and FURTHER ORDERED that this Decision is final, and a party to this proceeding seeking judicial review of the Decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. Overall Outcome 11-13 IPR2019-00252 Patent 7,167,487 B2 59 PETITIONER: W. Karl Renner Roberto J. Devoto Ayan Roy-Chowdhury FISH & RICHARDSON PC axf-ptab@fr.com devoto@fr.com roy-chowdhury@fr.com Robert Mattson MATTSON IP PLC rmattson@mattsonip.com Timothy Maier Christopher Maier MAIER & MAIER, PLLC tjm@maierandmaier.com cjm@maierandmaier.com PATENT OWNER: Ryan Loveless Brett Mangrum James Etheridge Jeffrey Huang ETHERIDGE LAW GROUP ryan@etheridgelaw.com brett@etheridgelaw.com jim@etheridgelaw.com jeff@etheridgelaw.com