before the patent trial and appeal board … district court complaint huawei techs. ... umts...

UNITED STATES PATENT AND TRADEMARK OFFICE

___________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

___________________

SAMSUNG ELECTRONICS CO., LTD.

Petitioner

v.

HUAWEI TECHNOLOGIES CO., LTD.

Patent Owner

___________________

Case IPR2017-1465

Patent No. 8,885,587

___________________

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 8,885,587

UNDER 35 U.S.C §312 AND 37 C.F.R. § 42.104

Mail Stop “PATENT BOARD”

Patent Trial and Appeal Board

U.S. Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

U.S. Patent No. 8,885,587

Petition for Inter Partes Review

- i -

`

TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES ............................................................................. 1

A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1)) ...................................... 1

B. Related Matters (37 C.F.R. §42.8(b)(2)) ............................................... 2

C. Lead and Backup Counsel and Service Information (37 C.F.R.

§42.8(b)(3)-(4)) ..................................................................................... 2

III. GROUNDS FOR STANDING ........................................................................ 3

IV. PAYMENT OF FEES ..................................................................................... 3

V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 3

VI. OVERVIEW OF THE TECHNOLOGY ......................................................... 4

A. Third Generation Partnership Project (“3GPP”) ................................... 4

B. Network Architecture for 3GPP Wireless Telephony ........................... 6

C. Downlink Scheduling ............................................................................ 7

D. Hybrid Automatic Repeat Request (“HARQ”) ..................................... 8

E. Carrier Aggregation ............................................................................... 9

VII. THE ’587 PATENT .......................................................................................11

A. Overview .............................................................................................11

B. Level of Ordinary Skill in the Art .......................................................13

VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS .............................14

A. “system-linked-downlink component carrier” (Claims 3-5, 9-11) .....14



- ii -

B. “non-system-linked downlink component carrier” (Claims 3, 9) .......15

IX. OVERVIEW OF THE PRIOR ART REFERENCES ...................................16

A. Baldemair ............................................................................................16

B. TS 36.213 .............................................................................................20

C. Damnjanovic .......................................................................................22

X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ..........23

A. Ground 1: Baldemair renders obvious claims 3-5 and 9-11 ..............24

B. Ground 2: Baldemair in view of TS 36.213 renders obvious claims 3-

5 and 9-11 ............................................................................................42

C. Ground 3: Damnjanovic in view of Baldemair renders obvious claims

3-5 and 9-11 .........................................................................................51

XI. SECONDARY CONSIDERATIONS ...........................................................69

XII. CONCLUSION ..............................................................................................69



- iii -

EXHIBIT LIST

No. Short Name Exhibit

1001 ’587 Patent U.S. Patent No. 8,885,587 to Chen et al.

1002 ’587 File History File History of U.S. Patent No. 8,885,587

1003 Lyon Decl. Declaration of David Lyon, Ph.D.

1004 Baldemair U.S. Patent No. 8,472,368 to Baldemair et al.

1005 Baldemair ’962 Provisional Application No. 61/250,962 to

Baldemair et al.

1006 TS 36.213

3GPP TS 36.213 V8.5.0 (2008-12)

3rd Generation Partnership Project; Technical

Specification Group Radio Access Network;

Evolved Universal Terrestrial Radio Access (E-

UTRA); Physical layer procedures (Release 8),

available at

https://portal.3gpp.org/desktopmodules/Specifi

cations/SpecificationDetails.aspx?specificationI

d=2427 (last accessed 5/8/2017)

1007 Damnjanovic U.S. Patent Application Publication

2009/0245194 A1 to Damnjanovic et al.

1008 Huawei District

Court Complaint

Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,

Ltd. et al., Case No. 3:16-cv-02787, Dkt. 1

(N.D. Cal. May 24, 2016)

1009

Joint Claim

Construction

Statement

Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,

Ltd. et al., Case No. 3:16-cv-02787, Dkt. 124

(N.D. Cal. Apr. 7, 2017)

1010 Lyon CV Curriculum Vitae of Dr. David Lyon

1011 ’587 Infringement

Contentions

Huawei Infringement Contentions for the ’587

Patent

1012 Yaqub Decl. Declaration of Raqiz Yaqub, Ph.D.



- iv -

1013 Dahlman

ERIK DAHLMAN ET AL., 3G EVOLUTION, HSPA

AND LTE FOR MOBILE BROADBAND (2nd Ed.

2008)

1014 About 3GPP

About 3GPP Home, 3GPP: A Global Initiative,

available at http://www.3gpp.org/about-

3gpp/about-3gpp (last accessed 5/17/2017)

1015 Dahlman 4G

ERIK DAHLMAN ET AL., 4G LTE/LTE-

ADVANCED FOR MOBILE BROADBAND (2011)

(“Dahlman 4G”)

1016 R1-074408

3GPP TDoc R1-074408, Ack/Nack repetition

and Implicit Resource Allocation for PUCCH,

(Shanghai, China, Oct. 8-12, 2007), available

at

http://www.3gpp.org/DynaReport/TDocExMtg-

-R1-50b--26482.htm (last accessed 5/8/2017)

1017 Yaqub CV Curriculum Vitae of Dr. Raqiz Yaqub

1018 TR 21.900

3GPP TR 21.900 V8.0.0 (2007-09) 3rd

Generation Partnership Project; Technical

Specification Group Services and System

Aspects; Technical Specification Group

working methods (Release 8), available at

http://www.3gpp.org/ftp/Specs/archive/21_seri

es/21.900/21900-800.zip (last accessed May

23, 2017)

1019 R1-081711

R1-081711, Final Report of 3GPP TSG RAN

WG1 #52bis, available at

http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TS

GR1_53/Docs/R1-081711.zip (last accessed

May 23, 2017)

1020

Oct. 23, 1999

WayBack Machine

3GPP TSG RAN

Webpage

WayBack Machine records for 3GPP’s TSG

RAN landing page on October 23, 1999



- v -

ACRONYM GLOSSARY

Acronym Term

2G/3G/4G Second/Third/Fourth Generation

3GPP 3rd Generation Partnership Project

LTE Long Term Evolution (4G)

UE User Equipment

LTE-A Long Term Evolution Advanced

UMTS Universal Mobile Telecommunications Systems (3G)

CC Component Carrier

ARI ACK Resource Indication

DCI Downlink Control Information

PUCCH Physical Uplink Control Channel

PDCCH Physical Downlink Control Channel

TPC Transmit Power Control

ETSI European Telecommunications Standards Institute



- 1 -

I. INTRODUCTION

U.S. Patent No. 8,885,587 (“the ’587 Patent”) is directed towards feeding

back acknowledgment information (i.e., ACK/NACK information) for carrier

aggregation. The exchange of acknowledgement information from a mobile device

to a base station is well known and has been used for decades in cellular radio

technologies. It was recognized very early by the 3GPP cellular standards body

that a more flexible approach to scheduling of resources would be required for

handling ACK/NACK feedback from mobile devices to 4G/LTE base stations. As

a result and well before the earliest priority date of the ’587 Patent, participants in

the 3GPP working groups, to which the Patent Owner was a member, had already

conceived of the mechanisms described in the ’587 Patent. The ’587 Patent

merely restates these well known principles for allocating uplink resources for

feeding back acknowledgement information by reusing and adapting these existing

procedures for LTE-Advanced (LTE-A).

II. MANDATORY NOTICES

A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1))

The real parties in interest for Petitioner are (1) Samsung Electronics Co.,

Ltd., (2) Samsung Electronics America, Inc., and (3) Samsung Research America

(collectively “Samsung”).



- 2 -

B. Related Matters (37 C.F.R. §42.8(b)(2))

The ’587 Patent is at issue in Huawei Techs. Co., Ltd. v. Samsung Elecs.

Co., Ltd. et al., Case No 3:16-cv-02787 (N.D. Cal.). On May 24, 2016, Huawei

sued Samsung in the U.S. District Court for the Northern District of California,

claiming that Samsung products compliant with the 3GPP standards infringe the

’587 patent (and ten other patents).

C. Lead and Backup Counsel and Service Information (37 C.F.R.

§42.8(b)(3)-(4))

The designations of counsel and address for service are:1

LEAD COUNSEL BACKUP COUNSEL

Kevin P.B. Johnson

Reg. No. 38927

[email protected]

Postal and Hand Delivery Address:

Quinn Emanuel Urquhart & Sullivan

555 Twin Dolphin Drive, 5th Floor

Redwood City, CA 94065

Tel: (650) 801-5000

Fax: (650) 801-5100

Marissa Ducca

Reg. No. 59807

[email protected]

Deepa Acharya

Reg. No. 64648

[email protected]

Jared Newton

Reg. No. 65818

[email protected]


777 6th Street NW, 11th Floor

Washington, DC 20001

Tel: (202) 538-8000

Fax: (202) 538-8100

Brian Mack

Reg. No. 57189

[email protected]


Quinn Emanuel Urquhart & Sullivan

1 Petitioner consents to electronic service.



- 3 -

50 California St, 22nd Floor

San Francisco, CA 94111

Tel: 415.875.6300

Fax: 415.875.6700

III. GROUNDS FOR STANDING

Petitioner certifies that the ’587 Patent is available for inter partes review,

and that Petitioner is not barred or estopped from requesting an IPR challenging

claims 3-5 and 9-11 on the grounds identified in this Petition.

IV. PAYMENT OF FEES

The required fees are submitted herewith. Petitioner authorizes the Patent

Office to charge Deposit Account No. 000505708 for any additional fees required

for this filing.

V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED

Petitioner challenges claims 3-5 and 9-11 of the ’587 Patent and request that

these claims be found unpatentable in view of the following references:

1. U.S. Patent No. 8,472,368 to Baldemair et al. (“Baldemair”; Ex.

1004), filed on Apr. 1, 2010 and claims priority to U.S. Provisional

App. No. 61/250,962, filed October 13, 2009.

2. 3GPP TS 36.213 V8.5.0 (2009-02); LTE; Evolved Universal

Terrestrial Radio Access (E-UTRA); Physical Layer Procedures;

Release 8 (“TS 36.213”; Ex. 1006).

3. U.S. Patent Application Publication 2009/0245194 A1 to

Damnjanovic et al. (“Damnjanovic”; Ex. 1007), filed on March 12,

2009 and claims priority to U.S. Provisional Ap. No. 61/040,609, filed

March 28, 2008, and was published on October 1, 2009.



- 4 -

Pursuant to §§ 42.22(a)(1) and 42.22(b)(1)-(2), Petitioner requests

cancellation of claims 3-5 and 9-11 of the ’587 Patent on the following grounds:

Ground 1: Claims 3-5 and 9-11 are unpatentable under 35 U.S.C. § 103(a)

over Baldemair.


over Baldemair in view of TS 36.213.


over Damnjanovic in view of Baldemair.

Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), an explanation of how the

challenged claims of the ’587 Patent are unpatentable under the above grounds and

the supporting evidence relied upon to support those challenges are set forth in

detail below in Section X, infra.

VI. OVERVIEW OF THE TECHNOLOGY

A. Third Generation Partnership Project (“3GPP”)

As cellular telecommunications technology developed in the late eighties

and nineties, network operators realized that standardization was necessary to

ensure subscriber mobility. Ex. 1012 at ¶17. 3GPP was formed to coordinate and

facilitate the development of standards for GSM (“2G”) and its later variations,

such as Universal Mobile Telecommunications Systems (“UMTS” or “3G”), Long

Term Evolution (“LTE” or “4G”), and Long Term Evolution Advanced (“LTE-



- 5 -

A”). Id. at ¶19; Ex. 1013 at 21-23. 3GPP develops a set of rules, in the form of

technical specifications, that inter alia govern communication between a network

base station and a user’s mobile device, including how the base station must

exchange user data and system control messages with the mobile device.

The development of specifications by 3GPP is an ongoing, collaborative

effort involving hundreds of engineers from many companies. Ex. 1013 at 19.

3GPP captures updates in different releases, each building on each other. For

example, TS 36.213 Release 8 is an earlier version of the standard than TS 36.213

Release 10. LTE was first fully specified in Release 8 and the releases following

Release 8 include enhanced technology to LTE. LTE-A was introduced in Release

10. Ex. 1012 at ¶23.

The reason the standards build on each other is simple and relates to the

need for long term investment and backwards compatibility in common

infrastructure and mobile user equipment. For example, infrastructure (i.e., base

stations and other network components) serving millions of user terminals with

different characteristics all need to communicate together. Ex. 1013 at 35-37; Ex.

1012 at ¶24. If a newer standard were to completely overhaul the required

technology, the infrastructure currently in the market would become obsolete—

people and companies would have to purchase and develop new technology with

each new version of the standard. This backward compatibility requirement puts



- 6 -

constraints on the technology that LTE and LTE-A can and cannot consider. For

example, the physical layer fundamentals need to be preserved in LTE and future

standards as it was for earlier releases, such as UMTS. Ex. 1013 at 36. Therefore,

many of the basic concepts remain the same and are available for use in newer

standards. See Ex. 1013 at 38-55; Ex. 1012 at ¶24.

B. Network Architecture for 3GPP Wireless Telephony

Wireless networks are composed of base stations, which communicate with

mobile devices wirelessly by transmitting and receiving RF signals. The base

station is commonly referred to as the eNodeB (LTE) and the mobile device is

commonly referred to as the user equipment or “UE.” A single base station

connects to multiple mobile devices in its cellular coverage area. Ex. 1003 at ¶51.

There are two directional types of wireless communication: communication

from a base station to the mobile device (“downlink”), and communication from

the mobile device to a base station (“uplink”). When a mobile device

communicates with the base station, it is unaware of other mobile devices in the

same cell region communicating with the same base station. On the other hand,

when the base station communicates, it must control both the downlink and uplink

communications such that the intended mobile device can exchange the digital

information with the base station efficiently, with as little interference from/to

other mobile devices as possible. Ex. 1003 at ¶¶52-53.



- 7 -

C. Downlink Scheduling

When a mobile device wants to transmit information to the base station, the

mobile device requests the base station to establish a schedule for using the uplink

communication channel. Since there may be multiple mobile devices that want to

communicate with the base station at the same time, the base station performs

scheduling to accommodate all the mobile devices. The operation of the base

station scheduler in LTE technologies is similar in principle and operation to the

scheduler in UMTS technologies. Ex. 1013 at 46; Ex. 1003 at ¶¶57-58.

To schedule a UE transmission, the base station transmits scheduling

assignment information which is formatted as Downlink Control Information

(“DCI”) over a Physical Downlink Control Channel (“PDCCH”), which contains

scheduling information needed by the UE for transmission of the PUCCH

(Physical Uplink Control Channel), the PUSCH (Physical Uplink Shared Channel),

or for the reception by the UE of the PDSCH (Physical Downlink Shared

Channel). The use of DCI, PDCCH, PUCCH, PUSCH, and PDSCH were defined

and used in LTE technologies and later used in LTE-A technologies. Ex. 1013 at

51-52. The DCI includes various control information, including the transmission

power control (“TPC”) command, which the mobile device can use to adjust

transmission power of the uplink carrier transmissions. Ex. 1003 at ¶¶54, 59-60.



- 8 -

D. Hybrid Automatic Repeat Request (“HARQ”)

Transmissions over wireless channels are subject to errors, for example, due

to variations in the received signal quality. When data is transmitted wirelessly,

the mobile device and base station need a way to determine whether the

transmission it sent was received correctly, and if not, whether it needs to send the

transmission again. Ex. 1003 at ¶61.

A retransmission scheme, known as hybrid automatic repeat request

(“HARQ”), is used to relay whether or not a transmission was sent correctly. The

HARQ retransmission scheme proposed and adopted into the LTE and LTE-A

standards is similarly designed and serves a similar purpose as it did in the UMTS

standards. Ex. 1013 at 47-49; Ex. 1003 at ¶62. When the base station sends

information to the mobile device, the mobile device determines whether the

transmitted information was received correctly or contains errors. If the mobile

device successfully received the data, the mobile device will send a positive

acknowledgement (“ACK”) to the base station. If the mobile device did not

successfully receive the data, the mobile device will send a negative

acknowledgement (“NACK”) to the base station. If the base station receives a

NACK, it may resend the same portion of data to the mobile device. These

acknowledgement messages are sent from the mobile device to the base station on

the PUCCH utilizing scheduled transmissions over what are referred to as HARQ-



- 9 -

ACK resources—a well known concept in LTE and LTE-A. Ex. 1013 at 51-52;

Ex. 1003 at ¶¶63-64. The base station is able to control various characteristics

about the way mobile devices transmit ACK/NACK messages to the base station

by using commands in the DCI, such as an ACK Resource Indicator (“ARI”). See,

e.g., Ex. 1006 at 65; see also, e.g., Ex. 1015 at 42-46, 97-99; Ex. 1003 at ¶65.

E. Carrier Aggregation

In 3GPP systems, information is sent between base station and mobile

device on RF “carriers.” In standard LTE systems, the network assigns only one

carrier in the uplink and one carrier in the downlink to a given base station serving

a particular UE. However, in order to offer higher data rates for transmissions,

3GPP introduced a new feature in LTE-A systems, known as “carrier aggregation.”

In carrier aggregation technology, the capacities of two or more carriers are

aggregated together to achieve higher data rates. Mobile devices using carrier

aggregation technology are then capable of simultaneously sending and receiving

data over multiple carriers, thus increasing the available digital transmission rates

to and from the user devices. structure of each carrier in LTE-A follows a

structure that is very similar to the carrier structure in LTE. Ex. 1003 at ¶67. The

In carrier aggregation, each aggregated carrier is referred to as a “component

carrier” (“CC”). There is one “primary component carrier” (“PCC”) in both uplink

and downlink directions, that is responsible for handling the initial connection



- 10 -

between the mobile device and the network. The remaining carriers are

“secondary component carriers” (“SCC”), which are configured after the initial

connection is established. Ex. 1003 at ¶¶68-69.

When multiple component carriers are simultaneously assigned to a mobile

device, each of the PDCCH’s associated with the respective component carrier are

capable of carrying a DCI control message, including the TPC command.

However, if the uplink control information related to the different component

carriers are to be transmitted on different physical uplink control channels, this

would result in higher power consumption by the mobile device. To address this

problem, the 3GPP participants agreed that for carrier aggregation, all uplink

control information should be semi-statically mapped onto one specific uplink

component carrier—the uplink primary component carrier. Therefore, only a

single downlink TPC command is necessary to control the transmission power for

the uplink signals. Any DCI messages beyond the one that necessarily must carry

the TPC command to the UE can have its “TPC command” bits reassigned. Ex.

1003 at ¶71. The nature of the concepts at issue in the ’587 Patent is the

substitution of ARI bits in place of TPC bits in those additional DCI messages.



- 11 -

VII. THE ’587 PATENT

A. Overview

The ’587 Patent, titled “Method, Base Station, and User Equipment for

Feeding Back ACK/NACK Information for Carrier Aggregation,” was filed on

June 2, 2012 and issued on November 11, 2014. See Ex. 1001. The ’587 Patent

claims priority to a foreign application number CN 2009 1 0251390, filed

December 3, 2009.

The ’587 Patent is related to feeding back acknowledgment information (i.e.,

ACK/NACK information) for carrier aggregation. In standard LTE systems when

the eNodeB is sending data to the UE using dynamic (non-persistent) scheduling,

uplink ACK channel resources are assigned dynamically to mobile devices and the

mobile device determines which resource from an assigned group of uplink

resources to use at a given time to send acknowledgement information. Rather

than signal to the mobile device explicitly which resource to use, the mobile device

uses an implicit mapping between the information transmitted in the DCI and the

uplink ACK channel. Since the network assigns only one carrier in the uplink and

one carrier in the downlink to the mobile device, when the mobile device transmits

ACK/NACK information, the base station knows to which carrier information the

ACK/NACK information corresponds. Ex. 1001 at 1:44-2:7; Ex. 1003 at ¶71.



- 12 -

In LTE-A systems that use carrier aggregation, a mobile device accesses

multiple downlink component carriers simultaneously, and ACK/NACK

information corresponding to the data transmissions of every downlink component

carrier is fed back over the uplink ACK channel. Ex. 1001 at 2:19-23. When a

downlink component carrier is not implicitly mapped to an uplink component

carrier, a problem arises when a mobile device has to feed back ACK/NACK

information corresponding to information the base station transmitted. In the

scenario where the mobile device receives information on multiple downlink

component carriers, when the mobile device feeds back ACK/NACK information,

the base station has no way to know to which downlink carrier information the

ACK/NACK information corresponds. Ex. 1001 at 2:23-29; Ex. 1003 at ¶72.

The ’587 Patent proposes adding an ACK resource indication (“ARI”)

command field to the DCI carried by the PDCCH to explicitly signal which of the

group of high-level assigned uplink ACK channel resources is currently used. Ex.

1001 at 2:47-57. Since only a single TPC command is necessary to control the

transmit power level of the uplink component carrier(s) assigned to the mobile

device, the TPC command field in DCIs sent in other component carriers are no

longer needed to transmit a TPC command and can be now be used to convey other

control information, such as the ARI. The ’587 Patent proposes using the existing

TPC command field as a common field to transmit the TPC command for one



- 13 -

PDCCH but also the ARI command for the other PDCCHs when the DCI needs to

include an ARI command field. The ’587 Patent states that this approach

eliminates the need to create any new fields in the DCI for the ARI command and

allows for backwards compatibility with the existing LTE framework. Ex. 1001 at

Abstract, 10:22-30; Ex. 1003 at ¶¶73-74.

The ’587 patent proposes that the DCI in one of the downlink component

carriers, known as the “system-linked downlink component carrier,” carries the

TPC command, and the DCI in another downlink component carrier, known as a

“non-system linked component carrier,” carries an ARI command. A downlink

and an uplink carrier are system-linked if an uplink ACK channel resource is

implicitly reserved (as opposed to being explicitly signaled, e.g., via an ARI) on

the uplink carrier for transmissions on the downlink carrier. Ex. 1001 at Fig. 2,

7:3-16, 7:24-39; Ex. 1003 at ¶¶75-78.

B. Level of Ordinary Skill in the Art

A person of ordinary skill in the art at the time of the alleged invention of

the ’587 Patent would have at least (1) a Master’s degree in electrical engineering,

computer science, or a related field and (2) at least two years experience working

with cellular communication systems. Ex. 1003 at ¶18. Each of the arguments

below is made from the standpoint of a person of ordinary skill in the art in the

field of the ’587 Patent (“POSITA”) in the 2009 timeframe.



- 14 -

VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS2

In an inter partes review, claim terms in an unexpired patent are interpreted

according to their broadest reasonable interpretation (“BRI”) in view of the

specification in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial

Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses

BRI because, among other reasons, the patentee has the opportunity to amend its

claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed.

Reg. 48,756, 48,764 (Aug. 14, 2012). As required by the applicable rules, this

Petition uses the BRI standard. Petitioner reserves all rights to take a different

position with respect to claim construction in any other proceeding that does not

rely on the BRI standard.

A. “system-linked-downlink component carrier” (Claims 3-5, 9-11)

Under the BRI standard, a “system-linked downlink component carrier”

should be construed to mean “a downlink component carrier which has an uplink

ACK channel resource implicitly mapped from a PDCCH and reserved on one

uplink component carrier.” The specification of the ’587 Patent supports this

proposed BRI. For example, the specification states “if an uplink ACK channel

resource implicitly mapped from a PDCCH is reserved on one uplink component

2 Petitioner reserves the right to pursue different claim constructions, including that

certain claim terms are indefinite, during this and related proceedings and in

litigation, at least because of the different standards of claim interpretation used by

the Patent Trial and Appeal Board and district courts.



- 15 -

carrier for a certain downlink component carrier, the downlink component carrier

is described as a ‘system-linked downlink component carrier’ of the uplink

component carrier.” See Ex. 1001 at 7:10-15. In the district court case, the Patent

Owner contends that the construction should be “a downlink component carrier for

which an uplink ACK channel resource implicitly mapped from a PDCCH is

reserved on one uplink component carrier is a ‘system linked downlink component

carrier’ of the uplink component carrier.” See Ex. 1009 at 48. For purposes of this

Petition, the Patent Owner’s proposed construction falls within the BRI as set forth

above.

B. “non-system-linked downlink component carrier” (Claims 3, 9)

Under the BRI standard, a “non-system-linked downlink component carrier”

should be construed to mean “a downlink component carrier which does not have

its uplink ACK channel resource implicitly reserved on one uplink component

carrier.” The specification of the ’587 Patent supports the proposed BRI. For

example, the specification provides a definition for a “system-linked downlink

component carrier”: “if an uplink ACK channel resource implicitly mapped from a

PDCCH is reserved on one uplink component carrier for a certain downlink

component carrier, the downlink component carrier is described as a ‘system-

linked downlink component carrier’ of the uplink component carrier.” See Ex.



- 16 -

1001 at 7:10-15. A non-system-linked downlink component carrier is the converse

of a system-linked downlink component carrier.

IX. OVERVIEW OF THE PRIOR ART REFERENCES

The earliest effective filing date for the ’587 Patent is December 3, 2009.

Any art published before December 3, 2009 is prior art under §102(b). See 35

U.S.C. § 102 (pre-AIA). In the underlying litigation, Patent Owner identified

earlier conception dates in a mandatory patent rule disclosure that Patent Owner

marked confidential. Although Petitioner does not concede that Patent Owner is

entitled to these conception dates, all of the prior art cited herein predates the

conception dates identified in the confidential document and is prior art under

either §102(b) or §102(e).

A. Baldemair

Baldemair was filed on April 1, 2010 and issued on June 25, 2013.

Baldemair claims priority to Provisional Application No. 61/250,962 (“Baldemair

’962”), filed on October 13, 2009 (Ex. 1005). Therefore, Baldemair is prior art to

the ’587 Patent under pre-AIA 35 U.S.C. § 102(e) as a patent granted on an

application filed in the United States before the invention of the ’587 Patent.

Baldemair discloses operating in a carrier aggregation system that involves

substituting ARI bits for TPC bits in the DCIs related to all but one of the

downlink CCs to convey the HARQ-ACK bits of the corresponding downlink



- 17 -

shared channel transmissions. See Ex. 1004 at Abstract, Figs. 9, 11, and 13, 7:12-

41. Baldemair addresses the same problem as the ’587 Patent—transmitting an

indication of uplink resources used to convey hybrid-ARQ bits in a carrier

aggregation system. However, Baldemair, like the ’587 Patent, acknowledges that

a constraint to developing a solution is that it is important to maintain backwards

compatibility with the existing structure of the downlink messaging in standard

LTE systems. Ex. 1004 at 2:28-3:2. Therefore, adding fields to transmit the

additional control information, thereby changing the carrier structure, would not be

practical in this technological environment.

To address this problem, Baldemair proposes using the existing LTE carrier

structure by using the TPC command field to transmit other control information

when the network does not need to transmit power control information:

An insight of great value is thus that when multiple CCs

are assigned to a UE, the control bits normally used for

TPC-commands related to all but one CC could be used

to convey other relevant control information. One

PDCCH would still need to carry the true TPC-

command.

Ex. 1004 at 7:32-36. Baldemair also discloses that this “other relevant control

information” that can be transmitted in the TPC command field can be PUCCH or

PUSCH resources to convey the hybrid-ARQ bits of the corresponding downlink

shared channel transmissions (i.e., the ARI):



- 18 -

There are several alternatives to what these freed format

TPC-bits could be used for. For example, these bits

could be used to signal which PUCCH or PUSCH

resources that should be used to convey the hybrid-ARQ

bits of the corresponding downlink shared channel

transmissions.

Ex. 1004 at 7:37-41, 12:64-13:15. Baldemair explains that the benefit of this

approach is that “overhead is reduced, since the total number of transmitted bits is

kept constant while the amount of payload is increased.” Ex. 1004 at 13:15-18.

1. Baldemair ’962

Baldemair is entitled to claim priority to Baldemair ’962, because Baldemair

’962 discloses (1) support for the relevant asserted claims in Baldemair and (2) all

the relevant subject matter that Petitioner relies on to prove that claims 3-5 and 9-

11 of the ’587 Patent are invalid over Baldemair, as disclosed herein. Ex. 1003 at

¶¶91-94.

Just like Baldemair, Baldemair ’962 discloses a carrier aggregation system

that involves substituting ARI bits for TPC bits in the DCIs related to all but one of

the downlink CCs for identifying which physical uplink channel resources will be

used to convey the HARQ-ACK bits of the corresponding downlink shared

channel transmissions:

In case the terminal receives downlink assignments on

multiple CC, the TPC bit field transmitted on one

PDCCH is used to transmit a true TPC command.

* * *



- 19 -

The TPC field in the other PDCCH is used to convey

other information. One possibility is to use these bits to

signal the PUCCH or PUSCH resources that should be

used to convey the hybrid-ARQ bits of the corresponding

downlink shared channel transmissions.

Ex. 1005 at 15; see also id. at 11-12, FIG. 1.

Therefore, according to the basic idea of embodiments of

the present invention, TPC bit fields are transmitted in all

DCI messages containing downlink assignments,

whereby only the TPC bits transmitted within one

PDCCH contains a true TPC commands. The other TPC

bit fields are used to signal some other relevant

information.

Ex. 1005 at 12. The above disclosures in Baldemair ’962 provides support for the

relevant claims in Baldemair, such as claim 1 in Baldemair.

Baldemair ’962, like Baldemair, makes it clear that the TPC field is part of

the DCI:

Scheduling of the CC is done on the Physical Downlink

Control Channel (PDCCH) via downlink assignments.

Control information on the PDCCH is formatted as a

Downlink Control Information (DCI) message. DCI

messages for downlink assignments contain among other

resource block assignment, modulation and coding

scheme related parameters, hybrid-ARQ redundancy

version, etc. In addition to those parameters that relate to

the actual downlink transmission most DCI formats for

downlink assignments also contain a bit field for

Transmit Power Control (TPC).

Ex. 1005 at 10-11. Accordingly, Baldemair ’962 provides the necessary support

for Baldemair, and therefore, Baldemair can claim priority to Baldemair ’962.



- 20 -

B. TS 36.213

As described in the Yaqub Decl., TS 36.213 was available on the 3GPP

website as of December 22, 2008. See Ex. 1012 at ¶¶51, 53-54 (“the date stamp

for each specification or standard can be relied upon to indicate when the upload

occurred”). The Yaqub Decl. establishes the public storage and availability of TS

36.213, and describes in detail how a member of the public would access such

documents, including through searches using readily available search engines like

Google. See Ex. 1012 at ¶¶25-48. By navigating 3GPP’s public website, any

member of the public could have downloaded any available version of TS 36.213

without restriction. See Ex. 1012 at ¶42-43, 47-48, 51, 53-54; see also LG Elecs. v.

Core Wireless Licensing S.A.R.L., IPR2015-01988, Paper 7, at 12-14 (PTAB Apr.

1, 2016) (instituting IPR based on prior art that included 3GPP draft specifications

and proposals). Accordingly, TS 36.213 constitutes prior art under at least 35

U.S.C. §102(b) as a printed publication more than one year prior to the invention

of the ’587 Patent.

TS 36.213 sets forth the physical layer standards for the LTE system. In its

infringement contentions to Samsung in Huawei Techs. Co., Ltd. v. Samsung Elecs.

Co., Ltd. et al., Case No 3:16-cv-02787 (N.D. Cal.), Huawei relies on TS 36.213 v.

10.2.0, a later version of TS 36.213, to set forth its infringement allegations. See



- 21 -

Ex. 1011. By complying with TS 36.213 v. 10.2.0, Huawei alleges that Samsung’s

products infringe claims 3-5 and 9-11 of the ’587 Patent. Id.

TS 36.213 describes a UE procedure for determining physical uplink control

channel assignment and the feedback of ACK/NACK information:

The parameter Simultaneous-AN-and-CQI provided by

higher layers determine if a UE can transmit a

combination of CQI and HARQ-ACK on PUCCH in the

same subframe.

For TDD, two ACK/NACK feedback modes are

supported by higher layer configuration.

- ACK/NACK bundling using PUCCH format 1a or 1b,

which is the default mode

- ACK/NACK multiplexing using PUCCH format 1b

with channel selection

Ex. 1006 at Section 10.1. TS 36.213 also discloses a DCI field that is used for

scheduling:

A UE shall validate DCI formats 0, 1, 1A, 2, 2A received

for which the CRC is scrambled by the Semi-Persistent

C-RNTI and where the new data indicator field, in case

of DCI formats 2 and 2A for the enabled transport block,

is set to “0” by verifying that all the conditions for the

respective used DCI format according to Table 9.2-1 are

met. In case not all these conditions are met, the received

DCI format shall be considered by the UE as having been

received with a non-matching CRC.

Ex. 1006 at Section 9.2. TS 36.213 also discloses that the DCI includes a TPC

command field and that this TPC command can be used “as an index to one of the

four PUCCH resource indices configured by higher layers . . . .” Ex. 1006 at



- 22 -

Section 9.2. This language in TS 36.213 Section 9.2 is similar to the language that

Huawei relies on to show infringement in the related case. See Ex. 1011 at 9 (“The

TPC field in the DCI format of the corresponding PDCCH shall be used to

determine the PUCCH resource values from one of the four resource values

configured by higher layers . . . .”). The primary use of the PUCCH is for sending

ACK/NACK information. Ex. 1006 at 66-70. Therefore, TS 36.213 discloses the

use of bits in the TPC field to send acknowledgement resource information, which

was known and used in the 3GPP standards as early as Release-8.

C. Damnjanovic

Damnjanovic was filed on March 12, 2009 and issued as US Patent

9,036,564 on May 19, 2015. Damnjanovic claims priority to U.S. Provisional

Application No. 61/040,609, filed on March 28, 2008, and was published on

October 1, 2009. Therefore, Damnjanovic is prior art to the ’587 Patent under pre-

AIA 35 U.S.C. § 102(b) as a printed publication more than one year prior to the

invention of the ’587 Patent.

Damnjanovic discloses re-using the TPC command fields in the DCI to carry

ACK resource assignment in a LTE system. Ex. 1007 at Abstract, [0008].

Damnjanovic discloses that the LTE system may support dynamic scheduling and

semi-persistent scheduling. Ex. 1007 at [0007]. For dynamic scheduling, a

scheduling message may be sent with each transmission of data and may convey



- 23 -

parameters and resources used for that transmission of data. For semi-persistent

scheduling, a scheduling message sent once may be applicable for multiple

transmissions of data. Ex. 1007 at [0025]. For semi-persistent scheduling, it is

unnecessary to transmit all of the command fields with each scheduling message,

so Damnjanovic discloses re-using at least one of the existing fields that would

normally be used to carry commands for dynamic scheduling, such as the TPC

command field, to carry an ACK resource assignment. Ex. 1007 at [0039].

In yet another design, an ACK resource assignment may

be sent in the TPC command field. Two bits are

available in the TPC command field. Hence, up to four

ACK resources may be configured and assigned indices

of 0 to 3. A 2-bit ACK resource index for one of up to

four configured ACK resources may be sent in the

TPC command field to the UE.

Ex. 1007 at [0050] (emphasis added).

X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY

As explained below pursuant to 37 C.F.R. § 42.104(b), the cited prior art

renders obvious the challenged claims of the ’587 Patent. The principal references

disclose the use of the claimed technology in the context of the 3GPP LTE (TS

36.213 and Damnjanovic) and LTE-A (Baldemair) standards prior to the earliest

effective filing date for the ’587 Patent. Pursuant to Rule 42.104(b)(4)-(5), specific

grounds for finding the claims invalid are identified below and discussed in the

Lyon Declaration (Ex. 1003).



- 24 -

A. Ground 1: Baldemair renders obvious claims 3-5 and 9-11

As described below, Baldemair renders obvious claims 3-5 and 9-11 of the

’587 Patent.3 Ex. 1003 at ¶105.

1. Claim 3

a) Preamble: “A method for feeding back

Acknowledgement/Negative acknowledgement

(ACK/NACK) information for carrier aggregation”

Baldemair teaches the preamble.4 Baldemair discloses a system supporting

carrier aggregation:

Methods and arrangements in the network node and

mobile terminal, respectively, in a wireless

communication system supporting aggregation of

component carriers.

Ex. 1004 at Abstract (emphasis added); see also id. at Fig. 7, 2:41-54; Ex. 1003 at

¶¶108-109. Baldemair further discloses feeding back ACK/NACK information for

carrier aggregation:



PTC-commands related to all but one CC could be used


PDCCH would still need to carry the true PTC-

command.

3 To provide support that Baldemair properly claims priority to Baldemair ’962,

Petitioner cites to Baldemair ’962 alongside the cites to Baldemair for each ’587

claim limitation. Further support, however, can be found in the Lyon Decl. (Ex.

1003) at Section IX.A.

4 Petitioner retains the right to establish that the preambles of the claims are not

limiting, but nonetheless shows herein how the prior art teaches the preambles.



- 25 -

There are several alternatives to what these freed former


could be used to signal which PUCCH to PUSCH

resources that should be used to convey the hybrid-

ARQ bits of the corresponding downlink shared

channel transmissions.

Ex. 1004 at 7:32-41 (emphasis added); Ex. 1003 at ¶¶110-113; see Ex. 1005 at 8,

5-6, 9 (disclosing support in Baldemair ’962 for this limitation). These excerpts

from Baldemair illustrate that ACK/NACK information is fed back in a carrier

aggregation system.

b) [3A]: “receiving downlink control information (DCI)

which is sent by a base station and transmitted by a

downlink component carrier”

Baldemair teaches receiving DCI sent by a base station and transmitted by a

downlink component carrier (i.e., PDCCH):

Downlink transmission are dynamically scheduled in

LTE, i.e., in each subframe, a base station transmits

control information concerning which mobile terminals

data is transmitted to, and upon which resource blocks

the data is transmitted in the current downlink subframe.

Ex. 1004 at 1:30-34 (emphasis added).

Scheduling of a CC is done on the Physical Downlink



Downlink Control Information (DCI) message comprising predetermined bit fields for different types of

control information.

Ex. 1004 at 2:55-59 (emphasis added); Ex. 1003 at ¶¶114-116; see Ex. 1005 at 10-

11 (disclosing support in Baldemair ’962 for this limitation).



- 26 -

c) [3B]: feeding back ACK/NACK information according

to a command indicated by a common field present in

the DCI, wherein the common field is configured as one

command according to a type of a downlink component

carrier transmitting the DCI, and the common field is

indicative of one of a transmission power control (TPC)

command and an ACK resource indication (ARI)

command”

Baldemair discloses using a common field that can indicate the TPC

command or the ARI command:






command.

There are several alternatives to what these freed former





transmission.

Ex. 1004 at 7:32-41; Ex. 1003 at ¶¶118-120. As disclosed above, Baldemair

teaches that the TPC field is the “common field,” which can be used to send the

TPC-command or the uplink channel resources that the mobile device uses to

convey hybrid-ARQ bits of the corresponding downlink transmission (i.e., “ARI

command”). Id.; see Ex. 1005 at 11-12, 15 (disclosing support in Baldemair ’962

for this limitation)



- 27 -

Baldemair discloses feeding back ACK/NACK information according to a

command indicated by a common field present in the DCI. For example,

Baldemair discloses that the bits in a common field “could be used to signal which

PUCCH or PUSCH resources [i.e., ARI command] that should be used to convey

the hybrid-ARQ bits of the corresponding downlink shared channel transmissions.”

Ex. 1004 at 7:37-41; Ex. 1003 at ¶¶121-122; see Ex. 1005 at 8, 11-12, 15

(disclosing support in Baldemair ’962 for this limitation).

Finally, Baldemair discloses that the common field is configured as a TPC-

command or ARI-command according to a type of a downlink component carrier

transmitting the DCI. For example, Baldemair discloses that in the case where

multiple component carriers are assigned to a UE, “the control bits normally used

for TPC-commands related to all but one CC could be used to convey other

relevant control information. One PDCCH would still need to carry the true

TPC-command.” Ex. 1004 at 7:32-36. Furthermore, at Figure 9, Baldemair

teaches a procedure for transmitting other control information in a wireless

communication system supporting aggregation of component carriers:



- 28 -

Ex. 1004 at Fig. 9 (emphasis added). At steps 906 and 908, the network node

configures the TPC-command field (i.e., common field) to contain the TPC-

command bits on the PDCCH of one downlink component carrier and other

control info on the PDCCH of other downlink component carriers. Ex. 1004 at

Fig. 9, 8:62-9:7. Baldemair makes it clear that one downlink component carrier

will carry the TPC-command and the other downlink component carriers carry

other control information, such as the ARI. Ex. 1004 at Fig. 9, 8:62-9:7, 7:37-41;

Ex. 1003 at ¶¶123-125; see Ex. 1005 at 13-15 (disclosing support in Baldemair

’962 for this limitation).



- 29 -

When a downlink component carrier in a carrier aggregation system includes

the TPC-command in the common field to indicate power control, there is no

explicit indication for the location of the uplink ACK resource, and therefore, in

order for the mobile device to know how to transmit ACK/NACK information, it

utilizes implicit mapping of the uplink carrier, otherwise, the mobile device will

not know which resource to use to transmit the ACK/NACK information. The

’587 Patent refers to this as the “system-linked downlink component carrier.”

Conversely, when a downlink component carrier in a carrier aggregation system

includes an ARI-command, i.e., an explicit mapping to an uplink component

carrier, the mobile device uses this explicit mapping to transmit the ACK/NACK

information. The ’587 Patent refers to this as the “non-system-linked downlink

component carrier.” One of skill in the art would understand that Baldemair

discloses configuring the common field as a TPC-command when the downlink

component carrier is implicitly mapped to an uplink component carrier (system-

linked downlink component carrier), and configuring the common field as an ARI-

command when the downlink component carrier needs to be explicitly mapped to

an uplink component carrier (non-system-linked downlink component carrier). Ex.

1003 at ¶¶126-127.

Furthermore, Baldemair discloses that “all uplink control information for a

UE should be semi-statically mapped onto one specific uplink component carrier, a



- 30 -

so called ‘anchor carrier’ or uplink primary component carrier.” Ex. 1004 at 7:15-

19 (emphasis added). To set up a communication, one of skill in the art

understands that the mobile device must transmit uplink control information to the

base station and the base station needs to transmit downlink control information,

including the TPC-command, to the mobile device. Ex. 1003 at ¶128. As

disclosed in Baldemair, this uplink control information is transmitted on an “uplink

primary component carrier.” Ex. 1004 at 7:15-19; Ex. 1003 at ¶128. Conversely,

the downlink control information, including the TPC-command, must be

transmitted on a downlink primary component carrier, which is the same as the

’587 Patent’s disclosure of a system-linked downlink component carrier. Ex. 1003

at ¶128. Once this connection is done, other downlink and uplink component

carriers (non-primary component carriers or non-system-linked component

carriers) can be assigned to the UE, and these component carriers can then be used

to convey additional control information, such as the ARI-command. Ex. 1003 at

¶128.

Therefore, one of skill in the art would understand that it would be obvious

to configure the common field disclosed in Baldemair as a TPC-command or ARI-

command according to a type of downlink component carrier (i.e., system-linked

downlink component carrier or non-system-linked downlink component carrier)

transmitting the DCI. Ex. 1003 at ¶129.



- 31 -

d) [3C]: “wherein the common field is configured by

configuring the common field in at least one piece of

DCI transmitted by a system-linked downlink

component carrier as a TPC command and configuring

the common field in at least one piece of DCI

transmitted by a non-system-linked downlink

component carrier as an ARI command.”

As disclosed in claim element [3B] above, one of skill in the art would

understand that Baldemair discloses configuring the common field as a TPC-

command or an ARI-command according to a type of downlink component carrier

(i.e., system-linked or non-system-linked). As explained in detail above for claim

element [3B], one of skill in the art would also understand that Baldemair discloses

that the type of downlink component carrier can be “system-linked downlink

component carrier” or a “non-system-linked downlink component carrier.” Ex.

1003 at ¶¶130-131.

As disclosed above for claim element [3B], a downlink primary component

carrier is one in which the TPC-command is transmitted in the DCI and its ACK

channel resource is implicitly mapped. This is the same as a “system-linked

downlink component carrier.” As the ’587 Patent explains, “if an uplink ACK

channel resource implicitly mapped from a PDCCH is reserved on one uplink

component carrier for a certain downlink component carrier, the downlink

component carrier is described as a ‘system-linked downlink component carrier’ of

the uplink component carrier.” See Ex. 1001 at 7:10-15. Therefore, for the same



- 32 -

reasons set forth above for claim element [3B], one of skill in the art would

understand that Baldemair discloses a system-linked downlink component carrier

on which the TPC-command in the common field is transmitted. Ex. 1003 at ¶132.

Conversely, downlink secondary component carrier is one in which the ACK

channel resource (i.e., ARI-command) is explicitly mapped from the corresponding

PDCCH, via the common field—the ARI-command indicates an ACK channel

resource that the mobile device should use to transmit ACK/NACK information in

the uplink. This is the same as a “non-system-linked downlink component

carrier.” A non-system linked downlink component carrier is the converse of the

definition of a system-linked downlink component carrier—ACK channel resource

is explicitly mapped instead of implicitly mapped. Therefore, for the same reasons

set forth above for claim element [3B], one of skill in the art would understand that

Baldemair discloses a non-system-linked downlink component carrier on which

the ARI-command in the common field is transmitted. Ex. 1003 at ¶133; see Ex.

1005 at 8, 11-12, 15 (disclosing support in Baldemair ’962 for this limitation).

2. Claim 4

Claim 4 depends from claim 3, and further requires “wherein the at least one

piece of DCI transmitted by a system-linked downlink component carrier

comprises DCI corresponding to physical downlink shared channel (PDSCH)

transmission of a downlink primary component carrier.”



- 33 -

Baldemair teaches that at least one piece of the DCI transmitted by the

system-linked downlink component carrier comprises DCI corresponding to a

PDSCH transmitted on that carrier. For example Baldemair teaches that the DCI

in a CC carries downlink resource block assignments, which one of the skill in the

art understands corresponds to resource block assignments of the PDSCH which

carries user data over that CC:

Scheduling of a CC is done on the Physical Downlink



Downlink Control Information (DCI) message

comprising predetermined bit fields for different types of

control information. DCI messages for downlink

assignments contain, among other things, resource block

assignment, modulation and coding scheme related

parameters, hybrid-ARQ redundancy version, etc.

Ex. 1004 at 2:55-63; Ex. 1003 at ¶¶134-135.

Figure 3 in Baldemair discloses a PDSCH as a downlink channel in LTE:



- 34 -

Ex. 1004 at Fig. 3 (emphasis added), 5:54-55. Furthermore, Baldemair discloses

that

[t]here are several alternatives to what these freed former





transmission.

Ex. 1004 at 7:32-41 (emphasis added); Ex. 1003 at ¶¶136-138; see Ex. 1005 at 15


Finally, one of skill in the art would understand that the disclosure in

Baldemair teaches a downlink primary component carrier. As disclosed in claim

element [3B], Baldemair discloses that “all uplink control information for a UE

should be semi-statically mapped onto one specific uplink component carrier, a so

called ‘anchor carrier’ or uplink primary component carrier.” Ex. 1004 at 7:15-19;

Ex. 1003 at ¶139. To set up a communication, one of skill in the art understands

that the mobile device must transmit uplink control mapping information to the

base station and the base station needs to transmit downlink control information,

including the TPC-command, to the mobile device. Ex. 1003 at ¶139. As

disclosed in Baldemair, this uplink control information is transmitted on an “uplink

primary component carrier.” Ex. 1004 at 7:15-19; Ex. 1003 at ¶139; see Ex. 1005

at 13-15 (disclosing support in Baldemair ’962 for this limitation). Conversely,

one of skill in the art would understand that the downlink control information,



- 35 -

including the TPC-command, must be transmitted on a downlink primary

component carrier. Ex. 1003 at ¶139.

3. Claim 5

Claim 5 depends from claim 3, and further requires “wherein one piece of

DCI transmitted by a system-linked downlink component carrier comprises at least

one piece of DCI transmitted by a downlink primary component carrier.” As

disclosed in claim [4] above, one of skill in the art would understand that

Baldemair teaches this limitation. Ex. 1003 at ¶¶140-141.

4. Claim 9

a) Preamble: “A user equipment”

Baldemair teaches the preamble.5 Baldemair discloses a user equipment:

The procedure in a mobile terminal could also be

described as follows:

When a received assignment is determined to concern

resources on at least two component carriers, the bits in a

certain bit field in a message received over a first

PDCCH are interpreted as power control bits, and the bits

in a corresponding bit field in a message received over a

second PDCCH are interpreted as other relevant control

information, i.e. other than power control. Examples of

such other control information is: an indication or part of

an indication of PUCCH or PUSCH resources to be used

for conveying e.g. H-ARQ related information; an

indication or part of an indication of resource block

assignment’s on a DL component carrier being assigned

5 Petitioner retains the right to establish that the preambles of the claims are not

limiting, but nonetheless shows herein how the prior art teaches the preambles.



- 36 -

to the mobile terminal; and an indication of to which

component carrier the PDCCH carrying the indication is

associated.

Ex. 1004 at 12:64-13:12 (emphasis added); see also id. at 15:26-54; Fig. 9. Figure

11 illustrates steps executed in a mobile terminal and Figure 12 illustrates an

embodiment of an arrangement in a mobile terminal:

Ex. 1004 at Fig. 11; see also id. at 10:34-49.



- 37 -

Ex. 1004 at Fig. 12; see also id. at 10:50-11:24; see Ex. 1005 at 15 (disclosing

support in Baldemair ’962 for this limitation); Ex. 1003 at ¶¶142-148.

b) [9A]: “a receiving module, configured to receive

downlink control information (DCI) that is sent by a

base station and transmitted by a downlink component

carrier”

Baldemair teaches this limitation as described above for claim element [3A].

Furthermore, Figure 12 illustrates that the mobile terminal contains a “receiving

unit” that is “adapted to receive control messages comprising downlink resource

assignments.” Ex. 1004 at 10:50-55.



- 38 -

Ex. 1004 at Fig. 12 (emphasis added); 10:50-11:24; see also id. at Fig. 11. By way

of further example, Baldemair discloses a mobile terminal with a receiving module

that is responsible for performing the claimed functionality:

[w]hen a received assignment is determined to concern

resources on at least two component carriers, the bits in a

certain bit field in a message received over a first

PDCCH are interpreted as power control bits, and the bits

in a corresponding bit field in a message received over a

second PDCCH are interpreted as other relevant control

information, i.e. other than power control. Examples of

such other control information is: an indication or part of

an indication of PUCCH or related information; an

indication or part of an indication of resource block

assignments on a DL component carrier being assigned

to the mobile terminal; and an indication of to which

component carrier the PDCCH carrying the indication is

associated.



- 39 -

Ex. 1004 at 12:64-11:15; see Ex. 1005 at 15 (disclosing support in Baldemair ’962

for this limitation); Ex. 1003 at ¶¶149-152.

c) [9B]: “a feedback module, configured to feed-back

Acknowledgement/Negative-acknowledgement

(ACK/NACK) feedback information according to a

command indicated by a common field preset in the

DCI, wherein the common field is configured as one


carrier transmitting the DCI, the common field is

indicative of one or a transmission power control

(TPC) command and an ACK resource indication (ARI)

command”

Baldemair teaches this limitation as described above for the preamble of

claim 3 and claim element [3B]. Furthermore, Figure 12 illustrates that the mobile

terminal contains a “transmitting unit” that is “adapted to transmit, e.g., reports

related to the downlink channel conditions, to other network entities,” such as

feeding back ACK/NACK feedback information. Ex. 1004 at Fig. 12, 11:7-17.



- 40 -

Ex. 1004 at Fig. 12 (emphasis added). Baldemair teaches that the transmitting unit

is responsible for feeding back ACK/NACK feedback information:

The arrangement further comprises a utilizing unit 1208,

adapted to use said obtained other relevant control

information not related to power control for locating

information related to downlink or uplink transmissions.

The locating of information could involve e.g.

indicating certain PUCCH or PUSCH resources;

extending resource block assignments or indicating

which component carrier that is addressed by a certain

PDCCH. The arrangement may further comprise a

transmitting unit 1210, adapted to transmit, e.g., reports

related to the downlink channel conditions, to other

network entities.

Ex. 1004 at 11:7-17 (emphasis added); Ex. 1003 at ¶¶153-156; see Ex. 1005 at 8




- 41 -








Baldemair teaches this limitation as described above for claim element [3C].

Ex. 1003 at ¶157.

5. Claim 10

Claim 10 depends from claim 9, and further requires “wherein the at least

one piece of DCI transmitted by a system-linked downlink component carrier

comprises DCI corresponding to physical downlink shared channel (PDSCH)

transmission of a downlink primary component carrier.” Baldemair teaches this

claim as described above for claim [4]. Ex. 1003 at ¶¶158-159.

6. Claim 11

Claim 11 depends from claim 9, and further requires “wherein the at least

one piece of DCI transmitted by a system-linked downlink component carrier

comprises at least one piece of DCI transmitted by a downlink primary component

carrier.” Baldemair teaches this claim as described above for claim [5]. Ex. 1003

at ¶¶160-161.



- 42 -

B. Ground 2: Baldemair in view of TS 36.213 renders obvious claims

3-5 and 9-11

As described below, Baldemair in view of TS 36.213 renders obvious claims

3-5 and 9-11 of the ’587 Patent. Ex. 1003 at ¶163.

1. Motivation to Combine Baldemair and TS 36.213

A person of ordinary skill in the art would have combined the teachings in

Baldemair and TS 36.213 to render claims 3-5 and 9-11 of the ’587 Patent invalid.

Ex. 1003 at ¶164. Both references are concerned with LTE cellular technology—

Baldemair with LTE-A (Ex. 1004 at 2:43-54) and TS 36.213 with LTE (Ex. 1006

at 74). And both references address issues related to feeding back ACK/NACK

information in LTE networks. Ex. 1004 at 1:38-46; Ex. 1006 at Section 10.1; Ex.

1003 at ¶¶165-167.

Baldemair explicitly references LTE Release 8, which is the same LTE

standard release to which TS 36.213 sets forth standards.6 Baldemair teaches that

it is important for features in LTE-A to ensure backwards compatibility with LTE

Release 8. For example, Baldemair discloses that

[t]he LTE Release-8 standard supports bandwidths up to

20 MHz. In order to meet the IMT-Advanced

requirements, bandwidths larger than 20 MHz nee to be

supported. However, one important requirement is to

assure backwards compatibility with LTE Release-8 for

6 TS 36.213 is titled “Generation Partnership Project; Technical Specification

Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-

UTRA); Physical layer procedures (Release 8).” Ex. 1006 at 1 (emphasis added).



- 43 -

legacy terminals. This should also include spectrum

compatibility with LTE Release-8 for legacy terminals.

This should also include spectrum compatibility. That

would imply that an LTE-Advanced carrier should

appear as a number of LTE carriers to an LTE Release-

8/9 terminal. Each such carrier can be referred to as a

component carrier (CC).

Ex. 1004 at 2:32-40. Even in the context of carrier aggregation in LTE-A,

Baldemair makes it clear that the structure of these carriers needs to be same as the

carrier structure set forth in Release-8:

Carrier aggregation implies that an LTE-Advanced

terminal can receive multiple CCs, where each CC has,

or is at least able to have, the same structure as a Release-

8 carrier.

Ex. 1004 at 2:52-54. As shown in Baldemair, a single carrier in LTE Release 8

and the component carrier in LTE-A Release 10 must have the same or similar

structure—LTE-A expands the single carrier framework to multiple carriers, which

each contain the LTE Release 8 carrier structure. Id. Baldemair specifically

teaches utilizing Release-8 standards in developing solutions to feeding back

ACK/NACK information in LTE-A. Id. Therefore, the interdependent nature of

these references was recognized by Baldemair and one of skill in the art would

understand how to combine the disclosure in Baldemair, which discloses multiple

carriers, to the single carrier structure in TS 36.213. Ex. 1003 at ¶¶168-171.



- 44 -

Accordingly, a person of ordinary skill in the art would have been motivated

to combine the teachings of Baldemair and TS 36.213 to fully describe a known

solution to a known problem. Ex. 1003 at ¶172.

2. Claim 3




Baldemair and TS 36.213 disclose or render obvious in combination the

preamble. As explained above, Baldemair teaches the preamble. TS 36.213

teaches feeding back Acknowledgement/Negative acknowledgement

(ACK/NACK) information in LTE systems:

The parameter Simultaneous-AN-and-CQI provided by

higher layers determine if a UE can transmit a

combination of CQI and HARQ-ACK on PUCCH in the

same subframe.

For TDD, two ACK/NACK feedback modes are

supported by higher layer configuration.

- ACK/NACK bundling using PUCCH format 1a or 1b,

which is the default mode

- ACK/NACK multiplexing using PUCCH format 1b

with channel selection

Ex. 1006 at Section 10.1; Ex. 1003 at ¶¶175-176.



- 45 -




Baldemair and TS 36.213 disclose or render obvious in combination claim

element [3A]. As explained above, Baldemair teaches claim element [3A]. TS

36.213 teaches receiving DCI sent by a base station and transmitted by a downlink

component carrier. For example, TS 36.213 discloses that

A UE shall validate DCI formats 0, 1, 1A, 2, 2A received

for which the CRC is scrambled by the Semi-Persistent

C-RNTI and where the new data indicator field, in case

of DCI formats 2 and 2A for the enabled transport block,

is set to ‘0’ by verifying that all the conditions for the

respective used DCI format according to Table 9.2-1 are

met. In case not all these conditions are met, the received

DCI format shall be considered by the UE as having been

received with a non-matching CRC.

Ex. 1006 at Section 9.2. TS 36.213 discloses the fields within the various DCI

formats:



- 46 -

Ex. 1006 at Table 9.2-1.

A UE shall upon detection of a PDCCH with DCI format

1, 1A, 1B, 1C, 1D, 2 or 2A intended for the UE in a

subframe, decode the corresponding PDSCH in the same

subframe.

Ex. 1006 at Section 7.1. TS 36.213 discloses receiving the DCI information in the

downlink from a base station:

In case of validation, the UE shall consider the received

DCI information as a valid semi-persistent

assignment/grant. In addition, for the case that the DCI

format indicates a downlink assignment, the TPC

command for PUCCH field shall be used as an index to

one of the four PUCCH resource indices configured by

higher layers, with the mapping defined in Table 9.2-2.

Ex. 1006 at Section 9.2 (emphasis added). The base station is responsible for

transmitting information to the UE in the downlink. Ex. 1003 at ¶¶177-179.



- 47 -








command”

Baldemair and TS 36.213 disclose or render obvious in combination claim

element [3B]. As explained above, Baldemair teaches or renders obvious based on

the knowledge of one of skill in the art claim element [3B]. Ex. 1003 at ¶180. TS

36.213 illustrates that re-using the TPC field bits to indicate an ARI-command was

already used and incorporated into the Release-8 LTE standard before the ’587

patent:





command for PUCCH field shall be used as an index

to one of the four PUCCH resource indices configured

by higher layers, with the mapping defined in Table 9.2-

2.

Ex. 1006 at Section 9.2 (emphasis added). The primary use of the PUCCH

(physical uplink control channel) is for sending ACK/NACK information. Ex.

1003 at ¶181. Therefore, the “PUCCH resource indices” identified above in TS

36.213 indicates that the concept of transmitting ACK resource indication

information in place of the TPC command in the DCI was taught and used in



- 48 -

Release-8. As explained above, since backwards compatibility with LTE Release-

8 was an important aspect of developing LTE-A technology and it was important

to use the Release-8 carrier structure, as disclosed in Baldemair (Ex. 1004 at 2:32-

54), it would have been obvious to one skilled in the art to extend this Release-8

feature of re-using TPC bits to send ACK resource indication information for the

newer LTE-A system proposed in Baldemair. Ex. 1003 at ¶¶182-183.








As explained above, Baldemair teaches or renders obvious based on the

knowledge of one of skill in the art claim element [3C]. Ex. 1003 at ¶184.

3. Claim 4

Claim 4 depends from claim 3. As explained above, Baldemair teaches or

renders obvious based on the knowledge of one of skill in the art claim 4. Ex.

1003 at ¶185.

4. Claim 5

Claim 5 depends from claim 3. As explained above, Baldemair teaches or

renders obvious based on the knowledge of one of skill in the art claim 5. Ex.

1003 at ¶186.



- 49 -

5. Claim 9


Baldemair and TS 36.213 disclose or render obvious in combination the

preamble. As explained above, Baldemair teaches the preamble. TS 36.213

teaches a user equipment (i.e., “UE”):

Ex. 1006 at Section 3.2.

A UE shall validate DCI formats 0, 1, 1A, 2, 2A

received for which the CRC is scrambled by the Semi-

Persistent C-RNTI and where the new data indicator

field, in case of DCI formats 2 and 2A for the enabled

transport block, is set to ‘0’ by verifying that all the

conditions for the respective used DCI format according

to Table 9.2-1 are met. In case not all these conditions are

met, the received DCI format shall be considered by the

UE as having been received with a non-matching CRC.

Ex. 1006 at Section 9.2 (emphasis added).





command for PUCCH field shall be used as an index to

one of the four PUCCH resource indices configured by

higher layers, with the mapping defined in Table 9.2-2.

Ex. 1006 at Section 9.2 (emphasis added); Ex. 1003 at ¶¶187-190.



- 50 -




carrier”

Baldemair and TS 36.213 disclose or render obvious in combination this

limitation as described above for claim element [3A]. Ex. 1003 at ¶191.










command”

Baldemair and TS 36.213 disclose or render obvious in combination this

limitation as described above for the preamble of claim 3 and claim element [3B].

Ex. 1003 at ¶192.








Baldemair teaches or renders obvious this limitation based on the knowledge

of one of skill in the art as described above for element [3C]. Ex. 1003 at ¶193.



- 51 -

6. Claim 10

Claim 10 depends from claim 9. Baldemair teaches or renders obvious

claim 10 based on the knowledge of one of skill in the art as described above for

claim 4. Ex. 1003 at ¶194.

7. Claim 11

Claim 11 depends from claim 9. Baldemair teaches or renders obvious

claim 11 based on the knowledge of one of skill in the art as described above for

claim 5. Ex. 1003 at ¶195.

C. Ground 3: Damnjanovic in view of Baldemair renders obvious

claims 3-5 and 9-11

1. Motivation to Combine Damnjanovic and Baldemair

A person of ordinary skill in the art would have combined the teachings in

Damnjanovic and Baldemair to render claims 3-5 and 9-11 of the ’587 Patent

invalid. Ex. 1003 at ¶196. First, both references are concerned with LTE cellular

technology—Damnjanovic with LTE (Ex. 1007 at [0023]) and Baldemair with

LTE-A (2:43-54). As explained above and in Baldemair, LTE-A builds on the

LTE technology and backwards compatibility with LTE was an important

consideration for engineers developing the LTE-A technology. See infra Section

VI; Ex. 1004 at 2:32-54. As explained above, Baldemair explicitly references LTE

Release 8, which is the same LTE standard release to which Damnjanovic

discloses technology (i.e., standard LTE). Id. And as explained above, even in the



- 52 -

context of carrier aggregation in LTE-A, Baldemair makes it clear that the

structure of these carriers needs to be same as the carrier structure set forth in

Release-8. Ex. 1004 at 2:52-54. Baldemair specifically teaches utilizing Release-

8 standards in developing solutions to feeding back ACK/NACK information in

LTE-A. Id. As shown in Baldemair, the single carrier in LTE Release 8 and the

component carrier in LTE-A must have the same or similar structure—LTE-A

expands the single carrier framework to multiple carriers, which each contain the

LTE Release 8 carrier structure. Therefore, the interdependent nature of these

references was recognized by Baldemair and one of skill in the art would

understand how to combine the disclosure in Baldemair, which discloses multiple

carriers, to the single carrier structure in Damnjanovic. Ex. 1003 at ¶203.

Second, both references are directed to addressing the same problem—

sending additional control information, such as an ACK resource indication

command, without changing the Release-8 messaging structures. For example,

Damnjanovic explains the problems it is set out to solve in LTE:

[t]he Node B may send a transmission of data to the UE.

The UE may decode the transmission of data and may

send acknowledgment (ACK) information to the Node B.

The ACK information may indicate whether the

transmission of data was decoded correctly or in error by

the UE. The Node B may determine whether to send a

retransmission of data or a new transmission of data to

the UE based on the ACK information. It may be

desirable to efficiently assign ACK resource to the UE

for use to send the ACK information.



- 53 -

Ex. 1007 at [0006]. Similarly, Baldemair discloses the same problem it set out to

solve in LTE-A:

[i]t would be desirable to enable conveyance of

additional control information without increasing

resource waste, causing insufficient addressing or

increasing the burden of blind detection in a receiver.

Ex. 1007 at 3:65-4:1; Ex. 1003 at ¶199.

Third, both references disclose the same solution, one in LTE

(Damnjanovic) and one in LTE-A (Baldemair)—reusing TPC-command bits from

the DCI to send ACK resource indication information when the TPC-command

does not need to transmit power control information. Damnjanovic discloses that

the LTE system may support dynamic scheduling and semi-persistent scheduling.

Ex. 1007 at [0007]. For dynamic scheduling, a scheduling message may be sent

with each transmission of data and may convey parameters and resources used for

that transmission of data. For semi-persistent scheduling, a scheduling message

sent once may be applicable for multiple transmissions of data. Ex. 1007 at

[0025]. For semi-persistent scheduling, Damnjanovic discloses re-using at least

one of the existing fields of a scheduling message that would normally be used to

carry scheduling information for dynamic scheduling to instead carry an ACK

resource assignment for semi-persistent scheduling. Ex. 1007 at [0039].

Damnjanovic also discloses that the re-used field may be the TPC command field:



- 54 -

In yet another design, an ACK resource assignment may

be sent in the TPC command field. Two bits are




four configured ACK resources may be sent in the TPC

command field to the UE.

Ex. 1007 at [0050]; Ex. 1003 at ¶¶200-201. Similarly, Baldemair discloses that

one PDCCH “associated with a first one of said at least two downlink component

carriers” (Ex. 1004 at 8:50-59) would carry the TPC-command information but the

remaining component carriers assigned to the UE can carry other control

information in the TPC-command field, such as the ARI:






command.

There are several alternatives to what these freed format





transmissions.

Ex. 1004 at 7:32-41, 8:36-9:41 and Figure 9; Ex. 1003 at ¶202.

Accordingly, a person of ordinary skill in the art would have been motivated

to combine the teachings of Damnjanovic and Baldemair to fully describe a known

solution to a known problem. Ex. 1003 at ¶204.



- 55 -

2. Claim 3




Damnjanovic and Baldemair disclose or render obvious in combination the

preamble. For example, Damnjanovic discloses feeding back ACK/NACK

information:

In an aspect, at least one field of a scheduling message,

which is normally used to carry scheduling information

for dynamic scheduling, may be re-used to carry an ACK

resource assignment for semi-persistent scheduling. In

one design, a UE may receive a scheduling message

carrying a semi-persistent assignment and may obtain an

assignment of ACK resource from the at least one field

of the scheduling message. The UE may receive a

transmission of data sent in accordance with the semi-

persistent assignment, determine ACK information

for the transmission of data, and send the ACK

information with the ACK resource.

Ex. 1007 at Abstract (emphasis added). While Damnjanovic does not explicitly

disclose carrier aggregation, for the reasons stated above, it would have been

obvious for one of skill in the art to combine Damnjanovic’s disclosure of feeding

back ACK/NACK information in LTE technology with Baldemair’s disclosure of

feeding back ACK/NACK information in LTE-A technology using carrier

aggregation. Ex. 1003 at ¶¶206-207. As explained above, Baldemair teaches the

preamble.



- 56 -




Damnjanovic and Baldemair disclose or render obvious in combination

claim element [3A]. Ex. 1003 at ¶208. Damnjanovic teaches receiving DCI sent

by a base station and transmitted by a downlink component carrier (i.e., PDSCH):

The Node B may send a transmission of one or more

transport blocks on the PDSCH in subframe t1. The

Node B may send the transport block(s) in one or more

resource blocks and in accordance with parameters

conveyed by the semi-persistent assignment. The UE

may receive the semi-persistent assignment from the

PDCCH and may process the transmission on the

PDSCH in accordance with the semi-persistent

assignment to recover the transport block(s) sent by the

Node B.

Ex. 1007 at [0036] (emphasis added). Damnjanovic further teaches receiving DCI:

FIG. 4A shows a scheduling message 410 in accordance

with Formats 1 and 1A defined by LTE. Formats 1 and

1A may be used to schedule transmission of one transport

lock on the PDSCH. Message 410 includes a resource

block assignment field, an HARQ process number

field, a modulation and coding scheme (MCS) field, a

new data indicator field, a redundancy version field,

and a transmit power control (TPC) command field.

The redundancy version field and the new data indicator

field may be considered as belonging in a retransmission

sequence number field.

Ex. 1007 at [0041]; see also id. at Figs. 4A, 4B. Damnjanovic discloses a table

that provides a short description of each field in the scheduling message (i.e.,

DCI):



- 57 -

Ex. 1007 at Table 1. Ex. 1003 at ¶¶209-212. As explained above, Baldemair

teaches claim element [3A].

While Damnjanovic does not explicitly disclose a downlink component

carrier, Damnjanovic does disclose transmitting Message 410 on the PDSCH, the

physical downlink shared control channel. Applying this technology to LTE-A, it

would have been obvious for one of skill in the art to transmit Message 410 on a

downlink component carrier. Further, it would have been obvious for one of skill

in the art to combine Damnjanovic’s disclosure of feeding back ACK/NACK

information in LTE technology with Baldemair’s disclosure of feeding back

ACK/NACK information in LTE-A technology using carrier aggregation. Ex.

1003 at ¶212.



- 58 -








command”


claim element [3B]. Ex. 1003 at ¶213. Damnjanovic discloses feeding back

ACK/NACK information according to a command (i.e., ACK resource

assignment) indicated by a common field present in the DCI. For example,

Damnjanovic discloses that


which is normally used to carry scheduling

information for dynamic scheduling, may be re-used

to carry an ACK resource assignment for semi-

persistent scheduling. In one design, a UE may receive a

scheduling message carrying a semi-persistent

assignment and may obtain an assignment of ACK

resource from the at least one field of the scheduling

message. The UE may receive a transmission of data

sent in accordance with the semi-persistent

assignment, determine ACK information for the

transmission of data, and send the ACK information

with the ACK resource.

Ex. 1007 at Abstract (emphasis added).

Damnjanovic discloses that the common field is indicative of one of a

transmission power control (TPC) command and an ACK resource indication

(ARI) command. For example, Damnjanovic discloses that



- 59 -

At least one field of message 410 or 420 may be used

to send an ACK resource assignment. In general, any

field(s) may be used to send the ACK resource

assignment. However, it may be desirable to select a

field that is not relevant (or not as relevant) for semi-

persistent scheduling. For example, a field that may be

less applicable for the first transmission of data and/or

may have little adverse effect on performance may be

selected. The number of fields to select may be

dependent on the number of bits needed to send the ACK

resource assignment.

In one design, an ACK resource assignment may be

sent in the new data indicator field, the redundancy

version field, and the TPC command field.

* * *

In yet another design, an ACK resource assignment

may be sent in the TPC command field. Two bits are




four configured ACK resources may be sent in the TPC

command field to a UE.

Ex. 1007 at [0046], [0047], [0050] (emphasis added); see also id. at Claims 1, 3,

and 4; Ex. 1003 at ¶¶214-215.

Damnjanovic also discloses that the common field is configured as one

command according to a type of a downlink component carrier transmitting the

DCI. For example, Damnjanovic discloses configuring the common field based on

the type of downlink scheduling transmitted by the Node B—the common field

may be configured as a TPC-command for dynamic scheduling and as an ACK

resource assignment for semi-persistent scheduling:



- 60 -

For dynamic scheduling, message 410 or 420 may be

used to send scheduling information for a

transmission of data. A suitable scheduling message

may be selected based on whether one or multiple

transport blocks are send and/or other considerations.

For semi-persistent scheduling, message 410 or 420

may be used to send a semi-persistent assignment

with the first transmission of data. At least one field

of message 410 or 420 may be used to send an ACK

resource assignment. In general, any field(s) may be

used to send the ACK resource assignment. However, it

may be desirable to select a field that is not relevant (or

not as relevant) for semi-persistent scheduling. For

example, a field that may be less applicable for the first

transmission of data and/or may have little adverse effect

on performance may be selected. The number of fields to

select may be dependent on the number of bits needed to

send the ACK resource assignment.

Ex. 1007 at [0046]; see also id. at Figs 4A and 4B (illustrating the fields in the

scheduling message, including the 2-bit TPC-command used for dynamic

scheduling); Ex. 1003 at ¶216.

To the extent this limitation is not explicitly disclosed in Damnjanovic, it

would have been obvious to combine the disclosures of Damnjanovic with the

knowledge of one of skill in the art to disclose this limitation. Ex. 1003 at ¶217.

Damnjanovic discloses sending TPC-command information or ACK resources

assignment based on the type of scheduling message the Node B must transmit to

the UE. Ex. 1003 at ¶217. It would have been obvious to one of skill in the art to

use this disclosure in the context of carrier aggregation to configure the common



- 61 -

field based on the type of downlink component carrier, as opposed to the type of

scheduling message. Ex. 1003 at ¶217.

For the reasons stated above, it also would have been obvious to combine

the disclosures of Damnjanovic with Baldemair to disclose this limitation. As

explained above, Baldemair teaches claim element [3B]. Ex. 1003 at ¶218.








Damnjanovic alone or in combination with Baldemair render obvious claim

element [3C]. Ex. 1003 at 219. As disclosed above for claim element [3B],

Damnjanovic discloses configuring the common field based on the type of

scheduling message the Node B transmits to the UE——the common field may be

configured as a TPC-command for dynamic scheduling and as an ACK resource

assignment for semi-persistent scheduling. Ex. 1007 at [0046].

It would have been obvious to combine the disclosures in Damnjanovic with

the knowledge of one of skill in the art to disclose configuring the common field

based on whether the downlink component carrier was system-linked or non-

system-linked in carrier aggregation technology. Ex. 1003 at ¶221. As explained

above, when a downlink component carrier is “system-linked,” its ACK channel



- 62 -

resource is implicitly mapped to an uplink carrier. Similarly in the LTE

technology disclosed in Damnjanovic, for dynamic scheduling, the ACK channel

resource is implicitly mapped, on the uplink carrier. Ex. 1007 at [0025], [0033]

(stating that “[f]or dynamic scheduling, the ACK resource may be linked to the

first CCE (Control Channel Element) carrying the scheduling information . . . The

ACK resource may thus be implicitly conveyed via the scheduling information . .

.”).

As explained above, when a downlink component carrier is “non-system-

linked,” its ACK channel resource is not implicitly mapped to an uplink carrier.

Ex. 1003 at ¶222. Similarly in the LTE technology disclosed in Damnjanovic, for

semi-persistent scheduling, the ACK channel resource is explicitly mapped, and

because for semi-persistent scheduling, downlink control information (such as the

TPC command) may be sent once and may be applicable for multiple

transmissions of data the same command field can instead be used to send the

acknowledgement resource assignment. Ex. 1007 at [0025], [0046], and [0050].

Therefore, it would have been obvious for one of skill in the art to extend the

disclosures of Damnjanovic to carrier aggregation technology to disclose this

limitation. Ex. 1003 at ¶222.



- 63 -

For the reasons stated above, it also would have been obvious to combine

the disclosures of Damnjanovic with Baldemair to disclose this limitation. As

explained above, Baldemair teaches claim element [3C]. Ex. 1003 at ¶223.

3. Claim 4

Claim 4 depends from claim 3. Damnjanovic and Baldemair disclose or

render obvious in combination claim 4. Ex. 1003 at ¶224. Damnjanovic discloses

a DCI corresponding to a PDSCH transmission of a downlink primary component

carrier. For example, Damnjanovic discloses that

[t]he Node B may send a transmission of one or more

transport blocks on the PDSCH in subframe t1. The

Node B may send the transport block(s) in one or more

resource blocks and in accordance with parameters

conveyed by the semi-persistent assignment. The UE

may receive the semi-persistent assignment from the

PDCCH and may process the transmission on the

PDSCH in accordance with the semi-persistent

assignment to recover the transport block(s) sent by the

Node B.


FIG. 4A shows a scheduling message 410 in accordance

with Formats 1 and 1A defined by LTE. Formats 1 and

1A may be used to schedule transmission of one

transport lock on the PDSCH. Message 410 includes a

resource block assignment field, an HARQ process

number field, a modulation and coding scheme (MCS)

field, a new data indicator field, a redundancy version

field, and a transmit power control (TPC) command field.

The redundancy version field and the new data indicator

field may be considered as belonging in a retransmission

sequence number field.



- 64 -


To the extent this limitation is not explicitly disclosed in Damnjanovic, for

the reasons stated above, it would have been obvious to combine the disclosures of

Damnjanovic with Baldemair to disclose this limitation. As explained above,

Baldemair teaches claim 4. Ex. 1003 at ¶¶225-226.

4. Claim 5

Claim 5 depends from claim 3. As disclosed in claim 4 above, Damnjanovic

and Baldemair disclose or render obvious in combination claim 5. Ex. 1003 at

¶227.

5. Claim 9


Damnjanovic and Baldemair disclose or render obvious in combination the

preamble. Damnjanovic teaches a user equipment (i.e., “UE”):


which is normally used to carry scheduling information

for dynamic scheduling, may be re-used to carry an ACK

resource assignment for semi-persistent scheduling. In

one design, a UE may receive a scheduling message

carrying a semi-persistent assignment and may obtain

an assignment of ACK resource from the at least one

field of the scheduling message. The UE may receive a

transmission of data sent in accordance with the semi-

persistent assignment, determine ACK information for

the transmission of data, and send the ACK information

with the ACK resource.



- 65 -

Ex. 1007 at Abstract (emphasis added). Damnjanovic also discloses the process a

UE takes for receiving data with semi-persistent scheduling:

Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-11, [0006],

[0036], [0058]-[0072]. As explained above, Baldemair also teaches the preamble.

Ex. 1003 at ¶¶230-231.



- 66 -




carrier”


claim element [9A] as described above for claim element [3A]. Ex. 1003 at ¶232.

In addition, Damnjanovic discloses a receiving module configured to receive DCI

sent by the base station and transmitted by a downlink component carrier:

Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-9, Abstract,

[0036], [0058]-[0059], [0062]-[0064], [0068]; Ex. 1003 at ¶233.



- 67 -










command”


claim element [9B] as described above for the preamble of claim 3 and claim

element [3B]. Ex. 1003 at ¶234. In addition, Damnjanovic discloses a feed back

module to feed-back ACK/NACK feedback information according to a command

indicated by a common field:



- 68 -

Ex. 1007 at Figs. 6 and 7 (emphasis added); see also id. at Figs. 8-9, Abstract,

[0058], [0061]-[0062], [0064]; Ex. 1003 at ¶235.









claim element [9C] as described above for claim element [3C]. Ex. 1003 at ¶236.



- 69 -

6. Claim 10


render obvious in combination claim 10 as described above for claim 4. Ex. 1003

at ¶237.

7. Claim 11


render obvious in combination claim 11 as described above for claim 5. Ex. 1003

at ¶238.

XI. SECONDARY CONSIDERATIONS

The Patent Owner has not identified any evidence of secondary

considerations, either in the prosecution history or in the related district court

litigation. Petitioner is not aware of any evidence of secondary considerations

supporting a finding of non-obviousness and reserves the right to present rebuttal

evidence if and when the Patent Owner presents such evidence.

XII. CONCLUSION

Petitioner has established a reasonable likelihood that the challenged claims

of the ’587 Patent will be found unpatentable. Petitioner therefore respectfully

requests that inter partes review of the ’587 Patent be granted, and that claims 3-5

and 9-11 be held unpatentable on Grounds 1, 2, and 3.



- 70 -

Respectfully submitted,

Date: May 24, 2017

/s/ Marissa R. Ducca

Kevin P.B. Johnson

(Reg. No. 38927)

[email protected]

QUINN EMANUEL URQUHART &

SULLIVAN LLP

555 Twin Dolphin Drive, 5th Floor

Redwood City, CA 94065

Tel: (650) 801-5000

Fax: (650) 801-5100

Marissa R. Ducca

(Reg. No. 59807)

[email protected]

QUINN EMANUEL URQUHART &

SULLIVAN LLP

777 6th Street NW, 11th Floor

Washington, DC 20001

Tel: (202) 538-8000

Fax: (202) 538-8100

Attorneys for Petitioner Samsung Elecs.

Co., Ltd.



- 1 -

`

CERTIFICATION UNDER 37 C.F.R. §42.24

Under the provisions of 37 C.F.R. §42.24, the undersigned hereby certifies

that the word count for the foregoing Petition for inter partes review totals 13,791

words, which is less than the 14,000 allowed under 37 C.F.R. §42.24(a)(i).

Date: May 24, 2017


Marissa R. Ducca (Reg. No. 59807)



- 2 -

CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), the undersigned hereby certifies

service on the Patent Owner of a copy of this Petition and its respective exhibits at

the official correspondence address for the attorney of record for the ’587 Patent as

shown in USPTO PAIR via EXPRESS MAIL:

SLATER MATSIL, LLP

17950 PRESTON ROAD, SUITE 1000

DALLAS, TX 75252

and

MICHAEL J. BETTINGER

SIDLEY AUSTIN LLP

555 CALIFORNIA STREET, #2000

SAN FRANCISCO, CA 94104

Date: May 24, 2017


Marissa R. Ducca (Reg. No. 59807)

before the patent trial and appeal board … district court complaint huawei techs. ... umts...

Documents