WSOU Investments, LLC d/b/a Brazos Licensing and Development

Patent Trials and Appeals Board

Oct 5, 2021

IPR2021-00694 (P.T.A.B. Oct. 5, 2021)

Trials@uspto.gov Paper 10
571.272.7822 Date: October 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE CORPORATION; ZTE (USA), INC.; and ZTE (TX), INC.,
Petitioner,

v.

WSOU INVESTMENTS LLC
D/B/A BRAZOS LICENSING AND DEVELOPMENT,
Patent Owner.
____________

IPR2021-00694
Patent 7,489,929 B2
____________

Before BRIAN J. McNAMARA, ROBERT J. WEINSCHENK, and
JOHN D. HAMANN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
ZTE Corporation; ZTE (USA), Inc.; and ZTE (TX), Inc. (collectively
“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
review of claims 1–15 of U.S. Patent No. 7,489,929 B2 (Ex. 1001, “the ’929
patent”) pursuant to 35 U.S.C. § 311. WSOU Investments, LLC d/b/a/
Brazos Licensing and Development (“Patent Owner”) filed a Patent Owner
Preliminary Response (Paper 6, “Prelim. Resp.”). With our authorization,1
Petitioner filed a Preliminary Reply to the Preliminary Response (Paper 7)
relating to discretionary denial under 35 U.S.C. § 314(a), and Patent Owner
filed a Preliminary Sur-Reply in response to the Preliminary Reply
(Paper 8).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes
review may be instituted if “the information presented in the petition filed
under section 311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
Upon consideration of the papers, we determine that the information
presented in the Petition does not demonstrate a reasonable likelihood that
Petitioner would prevail in establishing that at least one challenged claim is
unpatentable. Accordingly, we deny the Petition and do not institute inter
partes review.

1 We authorized a preliminary reply to address the Fintiv factors and a
preliminary sur-reply in response. Ex. 3001, 1. We do not reach these
papers, however, nor do we reach the issue of discretionary denial pursuant
to § 314(a) because we determine that Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing that at least one claim
of the ’929 patent is unpatentable.
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A. Real Parties-in-Interest
Petitioner identifies themselves as real parties-in-interest. Pet. 95.
Patent Owner identifies itself as a real party-in-interest. Paper 4, 1.
B. Related Matter
The parties collectively identify the following judicial proceedings in
which the ’929 patent is asserted and which may affect, or be affected by, a
decision in this proceeding: WSOU Investments, LLC v. ZTE Corp.,
6-20-cv-00488 (W.D. Tex.) and ZTE (USA) Inc. v. WSOU Investments, LLC,
3:21-cv-02128 (N.D. Tex.). Pet. 1 n.1; Paper 4, 2; Paper 9, 1.
C. The Challenged Patent
The ’929 patent relates to “wireless communication systems.”
Ex. 1001, 1:7–9. The ’929 patent discloses that “[t]ypical systems include a
plurality of base stations arranged to serve specific geographic areas or
cells,” and that “[a]n individual can use a mobile station to communicate
through the wireless communication system as their mobile station
communicates with a base station serving the cell in which they are currently
located.” Id. at 1:14–19. According to the ’929 patent, “[a]s a mobile
station moves from one cell to another cell, the communications for that
mobile station are transferred from the base station serving the one cell to
the base station serving the other cell.” Id. at 1:22–25. The ’929 patent
discloses that “[t]he process of transferring communications for a mobile
station between base stations is known as ‘handoff,’” and that the new “base
station is often called a target base station.” Id. at 1:25–27, 1:36–37.
According to the ’929 patent, “[o]ne type of wireless communication
system is known as a Code Division Multiple Access (CDMA) system.” Id.
at 1:45–46. The ’929 patent discloses that “[h]andoffs used in CDMA
systems are known as ‘soft’ handoffs,” which “establish communication
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with a target base station before terminating communication with an existing
or currently serving base station.” Id. at 1:46–51. In other words, “[d]uring
a soft handoff procedure, a mobile station is in simultaneous communication
with more than one base station.” Id. at 1:51–53. The ’929 patent discloses
that “[t]he sets of base stations typically maintained by a mobile station in a
CDMA system include an active set,” which “is the set of base stations
through which active communication is established.” Id. at 1:63–2:1. The
’929 patent discloses that “[e]ventually, the handoff process transfers
communication to only one of the base stations in the active set,” and “[a]t
that point, the mobile station has one communication link with the one base
station within the active set.” Id. at 2:54–57. “Such a communication link is
also referred to as a ‘leg.’” Id. at 2:57–58.
According to the ’929 patent, “[t]here is a need for an improved
technique for completing handoffs in CDMA systems,” and that “[i]t would
be beneficial to be able to avoid the use of resources required for soft
handoff procedures,” while “[a]t the same time, any hard handoff procedure
should be reliable enough to avoid dropped calls.” Id. at 3:39–43. To that
end, the ’929 patent discloses embodiments that “provide[] a
make-before-break hard handoff that does not use soft combining in a
mobile station.” Id. at 3:56–59.
Figure 3, shown below, “illustrate[s] an example handoff procedure
designed according to an embodiment of” the ’929 patent. Id. at 5:4–5.
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Figure 3 “is a timing diagram schematically showing various portions of an
example handoff procedure,” in accordance with the ’929 patent’s teachings.
Id. at 4:36–37. At 52, “the wireless network (i.e., a radio network controller)
receives a measurement report from [a] mobile station 40 over the existing
link (i.e., with [a] serving base station 38) as the mobile station 40 is in” its
cell. Id. at 5:6–10. The ’929 patent discloses that “[d]epending on the
conditions at that time, the measurement report may include a handoff
request from the mobile station.” Id. at 5:10–12. At 54, “the network
receives the measurement report from the mobile station 40 over the existing
link through the serving base station 38.” Id. at 5:12–14. “At 56, the
network determines whether a handoff is desired.” Id. at 5:15–16. The ’929
patent discloses that “[o]nce a handoff decision is made, the network
communicates with a target base station (i.e., base station 32, for example)
to setup a new link between the target base station 32 and the mobile station
40.” Id. at 5:20–23. “Such communication is schematically shown at 58 in
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F[igure] 3 to represent communications between the network components
and the target base station.” Id. at 5:23–25. “At 62, the new link achieves
uplink synchronization,” and “[a]t 64, the mobile station 40 receives the
active set update message, updates the active set to replace the existing link
with the new link and transmits an active set update confirmation message to
the network over the new link.” Id. at 5:49–53. The ’929 patent discloses
that “[a]t 68, the active set update confirmation from the mobile station 40 is
received by the network,” and “[s]ignaling between the network and the old
link for releasing the old link is schematically shown at 70.” Id. at 5:60–63.
“At 72, the existing link has been released and no longer receives or
transmits any communications between the network and the mobile station
40.” Id. at 5:63–65.
According to the ’929 patent, “[b]y not releasing the old link until
after receiving a confirmation message regarding the new link . . . , the hard
handoff process . . . includes making the new link connection before
breaking the existing link connection.” Id. at 5:66–6:3. “This represents an
improvement over other hard handoff procedures where the making and
breaking of the new and existing links occurred simultaneously,” according
to the ’929 patent. Id. at 6:3–6:5. “At the same time, however, the mobile
station 40 . . . only maintains one member in its active set at all times” (i.e.,
“the mobile station 40 replaces the existing link with the new link in the
active set”). Id. at 6:5–9.
D. The Challenged Claims
Petitioner challenges claims 1–15 of the ’929 patent. Claim 1 is the
sole independent claim. Claim 1 is reproduced below:
1. A method of communicating between a mobile station, a
serving base station and a target base station comprising:
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establishing a new link between the target base station and
the mobile station before releasing an existing link between the
mobile station and the serving base station while having only the
existing link in an active set for the mobile station before
releasing the existing link by
(A) determining if a handoff is desired between the serving
base station and the target base station;
(B) initiating the new link between the mobile station and
the target base station;
(C) transmitting an active set update message to the mobile
station using the existing link between the serving base station
and the mobile station;
(D) achieving uplink synchronization for the target base
station to communicate with the mobile station;
(E) receiving at least one signal over the new link
indicating that the mobile station has processed the transmitted
active set update message; and
(F) releasing the existing link responsive to the at least one
signal of step (E).
Ex. 1001, 7:27–47.
E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:

Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1–3, 6, 8–10, 12,
13, 15
1022 Hwang3
4, 5 103 Hwang, Kim,4 TS25.3015

2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
the ’929 patent issued from an application filed before March 16, 2013, we
apply the pre-AIA version of the statutory basis for unpatentability.
3 US 2002/0045451 A1, published Apr. 18, 2002 (Ex. 1005, “Hwang”).
4 WO 2004/102848 A3, published Nov. 25, 2004 (Ex. 1006, “Kim”).
5 3rd Generation Partnership Project, Tech. Spec. Group (TSG) RAN;
Working Group 2; Radio Interface Protocol Architecture TS 25.301 V3.2.0
(1999-10) (Ex. 1008, “TS25.301”).
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Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
7 103 Hwang, Kim
11, 14 103 Hwang, Miklos6

Pet. 26–90. Petitioner submits the Declaration of Stephen Gray (Ex. 1003)
in support of its arguments.
II. LEVEL OF ORDINARY SKILL IN THE ART
To determine whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
17 (1966). In assessing the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
Petitioner argues that one of ordinary skill in the art at the time of the
invention of the ’929 patent would have had “a bachelor’s degree in
telecommunication, electrical engineering, computer engineering, or a
related engineering discipline and two or more years of industry experience
in the field of telecommunications, or equivalent experience, education, or

6 US 2008/0280611 A1, published Nov. 13, 2008 (Ex. 1007, “Miklos”).
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both.” Pet 23 (citing generally Ex. 10037). Petitioner adds that “[t]he person
would also have [had] knowledge or familiarity with telecommunication.”
Id. Patent Owner does not identify a level of skill in the art that one would
have had at the time of the invention of the ’929 patent. See Prelim. Resp.
22–24.
For purposes of this Decision, and based on the current record, we
adopt Petitioner’s assessment of the level of skill for one of ordinary skill in
the art. Pet. 23. This definition is consistent with the ’929 patent and the
asserted prior art, and we apply it in our analysis below. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
III. CLAIM CONSTRUCTION
Because the Petition was filed after November 13, 2018, we construe
the challenged claims by applying the standard used in federal courts, in
other words, the claim construction standard that would be used to construe
the claim in a civil action under 35 U.S.C. § 282(b), which is articulated in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
§ 42.100(b) (2020). Under Phillips, the words of a claim are generally given
their “ordinary and customary meaning,” which is the meaning they would
have to a person of ordinary skill in the art at the time of the invention, in
light of the specification and prosecution history. See Phillips, 415 F.3d at
1312–13.

7 We treat Petitioner’s reference to Ex. 1004 (Mr. Gray’s curriculum vitae)
as a typographical error. See Pet. 23. One can readily ascertain that
Petitioner intends to cite the declaration testimony of Mr. Gray, and in
particular, paragraph 41 of Mr. Gray’s declaration. See Ex. 1003 ¶ 41; see
also id. at i (Table of Contents, which shows the level of ordinary skill
discussion starts at page 11).
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Petitioner argues that “[n]o claim terms need to be construed by the
Board at this time.” Pet. 23. Patent Owner does not identify any claim
terms for construction. Prelim. Resp. 24–25.
Accordingly, we determine that no express constructions are needed
for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy,
and only to the extent necessary to resolve the controversy.’”).
IV. PRINCIPLES OF LAW
A claim is unpatentable under 35 U.S.C. § 102 “if each and every
[claim] limitation is found either expressly or inherently in a single prior art
reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the
prior art if it is necessarily present in the prior art, not merely probably or
possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite,
Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time of the invention to a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
of underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
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of non-obviousness, if present.8 See Graham, 383 U.S. at 17–18. When
evaluating a claim for obviousness, we also must “determine whether there
was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
V. ALLEGED ANTICIPATION BY HWANG
Petitioner argues that Hwang anticipates claims 1–3, 6, 8–10, 12, 13,
and 15. Pet. 26–73. We have reviewed the parties’ arguments and the
evidence of record. For the reasons that follow, we determine that Petitioner
does not demonstrate a reasonable likelihood that it would prevail in
showing that at least one of these claims of the ’929 patent is anticipated by
Hwang.
A. Hwang
Hwang “relates to a mobile communication system and, more
particularly, to a method of controlling a handover by combining both a soft
handover and a hard handover in an uplink synchronous transmission
scheme (USTS).” Ex. 1005 ¶ 2. According to Hwang, an USTS “is used to
reduce multiple access interferences using orthogonality, by controlling
reception timing between mobile stations and a base station in a closed loop
timing control manner.” Id. ¶ 4.
Figure 6, shown below, is a flow chart illustrating a preferred
embodiment of Hwang. Id. ¶ 50.

8 Patent Owner does not present arguments or evidence of such objective
evidence of non-obviousness. See generally Prelim. Resp.
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Figure “6 is a flow chart illustrating the procedure of controlling the signal
timing of the mobile station when the soft handover is performed according
to a preferred embodiment of” Hwang’s invention. Id. ¶ 53. And Figure 6
“further illustrates a method of controlling the handover by combining a soft
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handover with a hard handover for controlling a transmission signal timing
of a mobile station in an uplink.” Id.
Hwang discloses that “[i]nitially, the mobile station is positioned in
the service area of the source base station, alone[, and t]herefore, the
communication channel of the mobile station is connected only to the source
base station.” Id. ¶ 54. “If the mobile station enters into an area overlapped
by the cell areas of the source base station and [a] target base station, thereby
initiating the handover (step 451), the mobile station measures strengths of
pilot signals received from both the source base station and the target base
station (step 453).” Id. And, according to Hwang, “the mobile station
judges whether the pilot strength measured in the target base station is
greater than a predetermined pilot reference value (step 455).” Id.
“If the intensity of the pilot signal of the target base station exceeds
the threshold, based on the predetermined pilot reference value, then the
communication data are transmitted to the target base station.” Id.
“Meanwhile, the target base station receives the first handover message from
the radio network controller (step 457) and sets up the communication
channel with the mobile station according to the first handover message
(step 459),” as disclosed by Hwang. Id. ¶ 55. “Consequently, both the
source base station and the target base station have established the
communication channel with the mobile station” (i.e., “the source base
station is set up as a USTS mode, while the target base station is set up with
a NON-USTS mode”). Id. ¶ 56.
Hwang discloses that “[m]eanwhile, the radio network controller
compares the radio link quality transmitted from the mobile station and
determines whether to perform the timing adjustment and the
reconfiguration operations using the target base station, based on the
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comparison result (step 461).” Id. ¶ 57. “The determination process can be
performed using the link quality and the numbers of the mobile stations.”
Id.
Hwang discloses that “[i]f the target base station is selected for
performing the timing adjustment and the reconfiguration operations as a
result of step 461, the target base station performs the operation using the
second handover message, after receiving the handover control command
from the radio network controller (step 463).” Id. ¶ 60. “[T]he radio
network controller [also] transmits the second handover message to the
source base station and, thereby, the source base station performs the timing
adjustment and the reconfiguration based on the second handover message
(step 465).” Id. “Consequently, the source base station is converted into the
NON-USTS mode and the target base station is converted into the USTS
mode.” Id.
Hwang discloses that “[m]eanwhile, the mobile station periodically
measures the pilot strength of the source base station (step 467) and
determines whether the pilot strength of the source base station is enough
(step 469).” Id. ¶ 61. “The mobile station transmits the pilot strength
measurement message to the radio network controller according to the
results.” Id. “Thereafter, the mobile station receives the third handover
message from the radio network controller (step 471),” and “[t]hen the
mobile station deletes the source base station from the actual communication
list, according to the third handover message, and transmits the handover
completion message to the radio network controller (step 473).” Id.
B. While Having Only the Existing Link in an Active Set
Petitioner argues that Hwang discloses “establishing a new link
between the target base station and the mobile station before releasing an
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existing link between the mobile station and the serving base station while
having only the existing link in an active set for the mobile station before
releasing the existing link,” as recited in independent claim 1. Pet. 28–33.
We focus on the latter part of this limitation, namely that the establishing of
the claimed new link occurs “while having only the existing link in an active
set for the mobile station before releasing the existing link.” Ex. 1001,
7:29–33. We agree with Patent Owner that Petitioner fails to show that
Hwang discloses this limitation for several reasons, as discussed below. See
Prelim. Resp. 25–31.9
First, Petitioner argues that “Hwang discloses a synchronous and
deleting multi-step process for the handover procedure resulting in only one
radio link in an active set.” Pet. 32. In particular, Petitioner argues that
“Hwang discloses that ‘the hard handover of the uplink synchronous timing
is used instead of the soft handover, since only one of the base stations is
selected, because synchronizing the uplink synchronous timing for the
source base station and the target base station cannot occur at the same
time.’” Id. (quoting Ex. 1005 ¶ 30) (color emphasis omitted).
We find that this sentence from Hwang is unavailing. Simply put, this
sentence fails to disclose anything about how Hwang manages a mobile
station’s active set with respect to establishing a new link. Ex. 1005 ¶ 30.
Instead, this sentence explicitly discloses that a hard handover is used for the
uplink synchronous timing procedure, but does not disclose that a hard

9 Patent Owner sometimes argues that “the Petition fails to establish it is
more likely than not” that Hwang discloses the disputed limitation. See, e.g.,
Prelim. Resp. 25. This is not the standard, however, for deciding whether to
institute an inter partes review. See 35 U.S.C. 314(a). Rather, we apply
here a reasonable likelihood standard in evaluating the Petition. Id.
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handover is used for establishing a new link. Id. Notably, the sentence
Petitioner relies upon is immediately preceded by the following sentence:
“[I]n order to improve the method of controlling the handover, a hard
handover means of the uplink synchronous timing essentially required in the
uplink synchronous transmission scheme should be added together with the
related art soft handover method.” Id. (emphasis added). In other words,
Hwang discloses using both soft and hard handovers. See, e.g., id. at code
(57), ¶¶ 30, 53, 64. Hwang characterizes its use of both soft and hard
handovers for its data flow procedure of a preferred embodiment as follows:
The data flow shown in F[igure] 7 can be classified into 1) a soft
handover procedure for setting the radio link in the target base
station 333 as shown in step 501, 2) a hard handover procedure
for converting the synchronous mode, and 3) a soft handover
procedure for releasing the radio link of the source base station
335 as shown in step 539.
Id. ¶ 64. Similarly, the sentence Petitioner quotes from paragraph 30
discloses using Hwang’s hard handover procedure for converting the
synchronous mode, and using Hwang’s soft handover procedures for setting
and releasing radio links. Compare id. ¶ 30, with id. ¶ 64.
We also find inapposite Hwang’s disclosure that only one of the base
stations is selected for synchronizing the uplink synchronous timing. Id.
¶ 30. This disclosure merely recognizes that “synchronizing the uplink
synchronous timing for the source base station and the target base station
cannot occur at the same time.’” Id.; see also id. ¶ 71 (“[O]ne mobile station
cannot operate with two base stations in the USTS mode at the same time
and the uplink synchronous transmission timing is synchronized with only
one base station.”). And again, Petitioner does not show how the disclosure
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of paragraph 30 relates to how Hwang manages a mobile station’s active set
with respect to establishing a new link. Pet. 32.
Second, Petitioner argues that “Hwang also discloses that ‘the radio
link is established either between the mobile station and the source base
station or between the mobile station and the target base station,’ indicating
that there is only one radio link in an active set during the handover
procedure.” Id. (quoting Ex. 1005 ¶ 56). “And when the new link between
the mobile station and the target base station is not completely established
and thus the existing link is not ready to be released, there is only one
existing link in an active set,” according to Petitioner. Id.
We find that this disclosure from Hwang’s paragraph 56 is unavailing.
Like above, this sentence also fails to disclose anything about how Hwang
manages a mobile station’s active set with respect to establishing a new link
(e.g., a new link between the mobile station and the target base station).
Ex. 1005 ¶ 56. Moreover, Petitioner fails to address the beginning of
paragraph 56 which discloses that “both the source base station and the
target base station have established the communication channel with the
mobile station,” where “the source base station is set up as a USTS mode,
while the target base station is set up with a NON-USTS mode.” Id. Nor
does Petitioner address Hwang’s subsequent disclosure that:
[m]eanwhile, the mobile station periodically measures the pilot
strength of the source base station (step 467) and determines
whether the pilot strength of the source base station is enough
(step 469). The mobile station transmits the pilot strength
measurement message to the radio network controller according
to the results. Thereafter, the mobile station receives the third
handover message from the radio network controller (step 471).
Then the mobile station deletes the source base station from the
actual communication list, according to the third handover
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message, and transmits the handover completion message to the
radio network controller (step 473).
Id. ¶ 61 (emphasis added). In other words, Hwang discloses not deleting the
source base station from the actual communication list (active set) until the
pilot strength of the source base station is insufficient (e.g., when the mobile
station moves further away from the source base station). Id.
In addition, Petitioner does not address Hwang’s paragraph 65, which
describes in detail Hwang’s soft handover procedure for setting the radio
link in the target base station 333. Id. ¶ 65. Paragraph 65 reads as follows:
First, the soft handover procedure for setting the radio link in the
target base station 333 will be explained. If the mobile station
337 enters into a handover area, i.e., entering from the cell area
of the current source base station 335 to the target base station
333, the soft handover is initiated as illustrated in step 420 of
F[igure] 5, thereby setting the radio link of the target base station
333 (step 501). Here, the setting of the radio link is achieved as
the radio network controller 331 requests for setting up the radio
link to the target base station 333. And when the message
indicating that the radio link setup has been successively
accomplished is received from the target base station 333, the
radio network controller 331 sends a request for an update of an
active setup to the mobile station 337. The process is completed
when a response indicating that the target base station 333 has
been added onto the active set by the mobile station 337 is
received by the radio network controller 331.
Id. (emphasis added). In other words, Hwang discloses first adding the
target base station to the mobile station’s active set, which occurs before
Hwang’s disclosure of using a hard handover procedure for converting the
synchronous mode, and before releasing the radio link for the source base
station, if the mobile station moves out of the handover area. See id. ¶¶ 65–
77. In sum, Petitioner does not show that Hwang’s paragraph 56 discloses
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establishing the claimed new link “while having only the existing link in an
active set for the mobile station before releasing the existing link.” Pet. 32.
Third, Petitioner argues that another example of having only one
existing link in the active set before releasing the existing link, is Hwang’s
purported disclosure of adding the new link to an active set while removing
the existing link from the active set. Id. In particular, Petitioner argues that
“Hwang discloses that ‘the mobile station 329 can add the DRNS-base
station 327 to an active set on the basis of the active set update command
message (step 429),’ . . . and ‘mobile station 329 removes the radio link
established on the present SRNS-base station from the active set.’” Id. at
32–33 (quoting Ex. 1005 ¶¶ 24, 26) (color emphases omitted). “Thus, there
is only the existing link in an active set during Hwang’s handover procedure
before releasing the existing link,” according to Petitioner. Id. at 33.
We find that these disclosures from Hwang are unavailing. In fact, we
find that these portions of Hwang disclose a related art soft handover
procedure, which is contrary to what is claimed. See, e.g., Ex. 1005, Fig. 5,
¶ 19. For example, Hwang discloses that “the mobile station 329 can add
the DRNS-base station 327 [(target base station)] to an active set on the
basis of the active set update command message (step 429).” Id. ¶¶ 21, 24.
Hwang discloses that next, “if the mobile station 329 moves away from the
handover area and enters a cell area of the DRNS-base station 327, the
SRNC 321 decides whether to remove . . . a communication channel
between the SRNS-base station 325 and the mobile station 329.” Id. ¶ 25.
Hwang discloses that “in the case of removing the radio link established on
the SRNS-base station 325, . . . [t]he mobile station 329 removes the radio
link established on the present SRNS-base station from the active set.” Id.
¶ 26. Hence, Hwang discloses that before mobile station 329 moves away
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Patent 7,489,929 B2
20
from the handover area, both the radio link established from SRNS-base
station 325 to mobile station 329 and the radio link established from DRNS-
base station 325 to mobile station 329 are part of the active set. See, e.g., id.
¶¶ 24–26, Fig. 5. Thus, Petitioner does not show that these portions of
Hwang disclose “establishing a new link . . . while having only the existing
link in an active set for the mobile station before releasing the existing link.”
Id.; Pet. 32–33.
Accordingly, Petitioner has not demonstrated a reasonable likelihood
of success in challenging independent claim 1 as being anticipated by
Hwang. In addition, the Petition does not present any information with
respect to dependent claims 2, 3, 6, 8–10, 12, 13, and 15 that addresses the
deficiencies discussed above. Pet. 55–73. Thus, Petitioner has not
demonstrated a reasonable likelihood of success in challenging claims 2, 3,
6, 8–10, 12, 13, and 15 as being anticipated by Hwang.
VI. REMAINING GROUNDS
Petitioner argues that the combination of (i) Hwang, Kim, and
TS25.301 renders dependent claims 4 and 5 obvious; (ii) Hwang and Kim
renders dependent claim 7 obvious; and (iii) Hwang and Miklos renders
dependent claims 11 and 14 obvious. Pet. 73–90. For these grounds,
Petitioner relies on its showing for independent claim 1 from which claims
4, 5 7, 11, and 14 depend. Id. As we find above, however, the Petition fails
to show a reasonable likelihood that Hwang teaches independent claim 1.
See supra Section V(B). Petitioner’s showing for the remaining grounds do
not cure the deficiencies discussed above. See Pet. 73–90. Accordingly, we
determine that Petitioner has not demonstrated a reasonable likelihood of
success in challenging these dependent claims as being obvious over these
additional grounds.
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Patent 7,489,929 B2
21
VII. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not demonstrate a reasonable likelihood that
Petitioner would prevail in establishing the unpatentability of any of the
challenged claims of the ’929 patent on any asserted ground of
unpatentability.
VIII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.
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Patent 7,489,929 B2
22
PETITIONER:

Lionel Lavenue
Cory Bell
Bradford C. Schulz
Mingji Jin
R. Maxwell Mauldin
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
lionel.lavenue@finnegan.com
cory.bell@finnegan.com
bradford.schulz@finnegan.com
mingji.jin@finnegan.com
r.maxwell.mauldin@finnegan.com

PATENT OWNER:

Ryan Loveless
Jeffrey A. Stephens
Brett Mangrum
James Etheridge
Brian Koide
Jeffrey Huang
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
jstephens@eitheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
brian@etheridgelaw.com
jeff@etheridgelaw.com