Sisvel International S.A.

Patent Trials and Appeals Board

Jan 12, 2021

IPR2020-01069 (P.T.A.B. Jan. 12, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: January 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CRADLEPOINT, INC., DELL INC., SIERRA WIRELESS, INC.,
THALES DIS AIS DEUTSCHLAND GMBH, ZTE CORPORATION,
and ZTE (USA) INC.,
Petitioner,
v.
SISVEL INTERNATIONAL S.A.,
Patent Owner.

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Before BARBARA A. PARVIS, AMANDA F. WIEKER, and
MONICA S. ULLAGADDI, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
I. INTRODUCTION
Cradlepoint, Inc., Dell Inc., Sierra Wireless, Inc., Thales DIS AIS
Deutschland GmbH, ZTE (USA) Inc., and ZTE Corporation (collectively
“Petitioner”) filed a Petition (Paper 6 (“Pet.”)) requesting an inter partes
review of claims 1–5, 7, 17–19, 21, and 22 of U.S. Patent No. 7,751,803 B2
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(Ex. 1001, “the ’803 Patent”) pursuant to 35 U.S.C. §§ 311–319, along with
the supporting Declaration of Dr. Paul S. Min (Ex. 1004). Sisvel
International S.A. (“Patent Owner”) filed a Preliminary Response. Paper 10
(“Prelim. Resp.”), along with the supporting Declaration of Mr. Stuart
Lipoff (Ex. 2001).1
The standard for institution is set forth in 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted unless the
information presented in the Petition and the Preliminary Response shows
that “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314
(2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf
of the Director.”). Upon consideration of the parties’ contentions and the
evidence of record, we conclude Petitioner has not established a reasonable
likelihood of prevailing in demonstrating the unpatentability of any
challenged claim of the ’803 Patent. Accordingly, we do not grant
Petitioner’s request and do not institute an inter partes review.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies as the real parties-in-interest the following:
Cradlepoint, Inc., Dell Inc., Sierra Wireless, Inc., Thales DIS AIS
Deutschland GmbH, ZTE (USA) Inc., ZTE Corporation, Denali
Intermediate Inc., Dell Technologies Inc., Dell Products L.P., Dell
Marketing L.P., Sierra Wireless America, Inc., and Thales DIS AIS USA,

1 We do not find it necessary to rely on Mr. Lipoff’s testimony in
determining whether Petitioner has demonstrated a reasonable likelihood
that it would prevail in showing the challenged claims are unpatentable.
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LLC. Pet. viii. Patent Owner names itself as the real party-in-interest.
Paper 7, 1.
B. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
matter that would affect, or be affected by, a decision in this proceeding. In
particular, the parties inform us that the ’803 Patent is asserted in the
following proceedings: Sisvel International SA v. ZTE (USA), Inc., 3-19-cv-
01694 (N.D. Tex. filed July 15, 2019); Sisvel International SA v. Dell Inc.,
1-19-cv-01247 (D. Del. filed Jul. 01, 2019); Sisvel International SA v.
AnyData Corporation, 1-19-cv-01140 (D. Del. filed Jun. 20, 2019); Sisvel
International SA v. BLU Products, Inc., 1-19-cv-01141 (D. Del. filed
Jun. 20, 2019); Sisvel International SA v. Cradlepoint, Inc., 1-19-cv-01142
(D. Del. filed Jun. 20, 2019); Sisvel International SA v. Honeywell
International, Inc., 1-19-cv-01143 (D. Del. filed Jun. 20, 2019); Sisvel
International SA v. Verifone Systems, Inc., 1-19-cv-01144 (D. Del. Jun. 20,
2019); Sisvel International SA v. Xirgo Technologies, LLC, 1-19-cv-01145
(D. Del. filed Jun. 20, 2019); Sisvel International SA v. Tesla, Inc., 1-19-cv-
02288 (D. Del. filed Dec. 17, 2019); and Sisvel International S.A. v. Blu
Products, Inc., 1-20-cv-20813 (S.D. Fla. transferred Feb. 25, 2020). Pet. viii;
Paper 7, 1–2.
C. The ’803 Patent
The ’803 Patent describes technology for re-establishing a lost radio
connection between a mobile terminal and a base station in cellular radio
systems. Ex. 1001, 1:9–11. The ’803 Patent describes the invention with
reference to Universal Mobile Telecommunications System (UMTS)
specified in technical specifications produced by the European
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Telecommunications Standards Institute (ETSI) 3rd Generation Partnership
Project (3GPP). Id. at 1:45–48, 1:66–2:5.
The ’803 Patent describes, “[a]ccording to the invention there are
defined separate timers or some higher layer monitoring arrangements for
different categories of radio bearers.” Id. at 4:19–21. Exemplary categories
of radio bearers include audio, video, and e-mail. Id. at 4:26–27. According
to the ’803 Patent, real time (RT) services are used for time-critical
applications like speech and real time video, whereas non-real time (NRT)
applications usually convey data like e-mails or downloaded files. Id. at
1:51–55.
More detail is provided in Figure 2a, which is reproduced below.

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Figure 2a, above, illustrates schematically some aspects of communication
in a cellular radio system including UMTS Terrestrial Radio Access
Network (UTRAN) 102 and user equipment (UE) 103. Id. at 7:7–9.
Time runs from top to bottom in FIG. 2a. Id. at 7:9–10. Throughout
period 201 UE 103 communicates with UTRAN 102 through a set of radio
bearers including one active radio bearer for providing real time services and
one active radio bearer for providing non-real time services. Id. at 7:10–15.
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At time 204, a radio link failure cuts the radio connection between
UE 103 and UTRAN 102. Id. at 7:19–21. The ’803 Patent describes the
following:
In the embodiment illustrated in FIG. 2a the UE and the
UTRAN both start at least two timers: at least one concerning the
reestablishment of the radio connection in respect of the RT-
related radio bearers and at least one more concerning the re-
establishment of the radio connection in respect of the NRT-
related radio bearers. We expect that the UE does not find itself
to be on an “in service area,” because such a finding would
initiate the transmission of messages that aim at re-establishing
the lost connections. The RT timer(s) in the UE expire at a certain
later time instant 206, which is not very much after the time
instant 204 which meant the failure of the radio link—as we
noted in the description of prior art, typical expiry times for RT
re-establishment timers is in the order of seconds.
Correspondingly, the RT timer(s) in the RNC expire at a time
instant 207, which is slightly later than the time instant 206.
Id. at 7:32–47.
D. Illustrative Claims
Petitioner challenges claims 1–5, 7, 17–19, 21, and 22 of the ’803
Patent. Pet. 1. Claims 1, 17, and 21 are the independent claims. Claims 2–5
and 7 depend directly from claim 1. Claims 18 and 19 depend directly from
claim 17. Claim 22 depends directly from claim 21. Independent claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. [Element 1[A]]2 A method for determining an expiry time
for a period during which a re-establishment of a lost radio
connection between a mobile station and a network node of a
cellular network is allowable, said radio connection having a

2 We use Petitioner’s designations of to refer to the claim elements. Pet. 19–
20, 27–28.
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plurality of active radio bearers belonging to a radio resource
control connection, said method comprising:
[Element 1[B]] determining a first expiry time for a period
during which the re-establishment of the lost radio
connection in respect of said radio bearers that are used to
provide a service or services of a first category is allowable,
[Element 1[C]] determining a second expiry time for a period
during which the re-establishment of the lost radio,
connection in respect of said radio bearers used to provide a
service or services of a second category is allowable;
[Element 1[D]] wherein said second category of service is
different than said first category of service, and said second
expiry time is different than said first expiry time; and
[Element 1[E]] wherein the mobile station and said network
node attempt to re-establish the lost radio connection before
the first expiry time in respect of a radio bearer used to
provide a service or services of the first category or before
the second expiry time in respect of a radio bearer used to
provide a service or services of the second category.
Ex. 1001, 12:8–30.
E. Evidence
Petitioner relies on the patent document references summarized in
Table 1 below.

Name Patent Document Exhibit
Rappaport US 6,477,373 B1 1005
Eriksson US 6,061,559 1006

Table 1 above summarizes Patent Documents relied on by Petitioner.

Petitioner relies on the non-patent literature references summarized in
Table 2 below.
Name Non-Patent Literature Title Author Exhibit
Toh Wireless ATM and Ad-hoc C-K Toh 1007
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Networks Protocols and
Architectures
TS
25.331
Universal Mobile
Telecommunications System
(UMTS);
RRC Protocol Specification
(3G TS 25.331 version 3.1.0
Release 1999)
ETSI 3GPP 1008

Table 2 above summarizes Non-patent Literature relied on by Petitioner.
Petitioner also relies on description in the Background of the
Invention of the ’803 Patent, specifically at column 1, line 37 through
column 2, line 56 (“Admitted 3G Art”).
F. Asserted Grounds
Petitioner asserts that claims 1–5, 7, 17–19, 21, and 22 of the ’803
Patent are unpatentable based on the following grounds summarized in
Table 3 below:
Claims Challenged 35 U.S.C. § References/Basis
1–5, 7, 17–19, 21, 22 103(a)3 Admitted 3G Art, Rappaport
1–5, 7, 17–19, 21, 22 103(a) Admitted 3G Art, Eriksson
1–5, 7, 17–19, 21, 22 103(a) Admitted 3G Art, Eriksson, Toh
17–19 103(a) Admitted 3G Art, Rappaport, TS 25.331
17–19 103(a) Admitted 3G Art, Eriksson, TS 25.331
17–19 103(a) Admitted 3G Art, Eriksson, Toh, TS 25.331
Table 3 above summarizes the Grounds Asserted by Petitioner.

3 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’803 Patent has an
effective filing date before the effective date of the applicable AIA
amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
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III. ANALYSIS
A. Legal Standards
A patent 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 the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art the time of
the invention would have had “a bachelor’s degree in electrical engineering
or a similar discipline, with at least 3 years of relevant industry or research
experience (or additional education), including experience with cellular
telecommunication systems, including experience designing or
implementing user equipment or network equipment or signaling protocols
therefor.” Pet. 13 (citing Ex. 1004 ¶¶ 24–28). Petitioner also asserts that the
person of ordinary skill in the art’s skill set “would have included designing
and configuring user and network equipment to enable re-establishment of
radio communications therebetween.” Id. at 13–14 (citing Ex. 1004 ¶ 27).

4 Patent Owner does not present objective evidence of nonobviousness at
this stage of the proceeding.
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Patent Owner disagrees, arguing instead that a person of ordinary skill
in the art would have had “a bachelor’s degree in electrical engineering,
computer sciences, or telecommunications, along with three to five or more
years of practical experience in the field,” where “[a] combination of more
experience in the field and less education or more education and less
experience in the field would also suffice.” Prelim. Resp. 7–8. Patent Owner
also asserts that the person of ordinary skill in the art “would not have
needed to have been a member of a standards organization such as 3GPP.”
Id. at 8 (citing Ex. 2001 ¶ 20).
In determining 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)
(citation omitted). The level of ordinary skill in the art is also reflected by
the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001).
Considering the subject matter of the ’803 Patent, the background
technical field, and the asserted prior art, we preliminarily agree with
Petitioner’s proposed qualifications for an ordinary level of skill. Our view
is that a bachelor’s degree in electrical engineering or a similar discipline
would have provided sufficient educational background in light of the
technology at issue in the ’803 Patent and asserted prior art. Patent Owner
does not argue that a person having ordinary skill in the art would have
lacked understanding of what would have been considered a discipline
“similar” to a bachelor’s degree in electrical engineering. Prelim. Resp. 7–8;
Ex. 2001 ¶¶ 18–21.
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Further, we preliminarily agree that having three years of relevant
industry or research experience (or additional education), including
experience with cellular telecommunication systems, including experience
designing or implementing user equipment or network equipment or
signaling protocols and designing and configuring user and network
equipment to enable re-establishment of radio communications is
commensurate with the scope of the patent at issue and the asserted prior art.
Patent Owner’s proposal asserts merely that the skilled artisan would have
had “practical experience in the field,” but “would not have needed to have
been a member of a standards organization such as 3GPP.” Prelim. Resp. 7–
8 (citing Ex. 2001 ¶ 20). Patent Owner’s proposal does not set forth
sufficient details as to what constitutes “practical experience” and Patent
Owner’s statement regarding that lack of a requirement for membership does
not reflect that the skilled artisan would have had knowledge regarding
certain 3GPP standards, as described in the background of the ’803 Patent.
Ex. 1001, 1:45–48, 1:66–2:5. Regarding Petitioner’s proposal, however, we
do not adopt “at least” three years of relevant industry or research
experience because “at least” is vague.
Regarding Patent Owner’s assertion that the person of ordinary skill in
the art “would not have needed to have been a member of a standards
organization such as 3GPP” (Prelim. Resp. 8 (citing Ex. 2001 ¶ 20)),
Petitioner does not assert that membership would have been required.
Pet. 13–14; Ex. 1004 ¶¶ 24–28. Nonetheless, based on the record before us,
we determine that membership in a standards organization would not have
been necessary.
With that, based on the current record, we preliminarily adopt
Petitioner’s proposal that a person of ordinary skill in the art would have had
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a bachelor’s degree in electrical engineering or a similar discipline, with
three years of relevant industry or research experience (or additional
education), including experience with cellular telecommunication systems,
including experience designing or implementing user equipment or network
equipment or signaling protocols and the person of ordinary skill in the art’s
skill set would have included designing and configuring user and network
equipment to enable re-establishment of radio communications. Pet. 13–14
(citing Ex. 1004 ¶¶ 24–28).5
C. Claim Construction
For cases like this one, where the petition for inter partes review was
filed after November 13, 2018, we interpret claim terms in accordance with
the standard used in federal district court in a civil action involving the
validity or infringement of a patent. See 37 C.F.R. § 42.100(b) (2019). As
required by 37 C.F.R. § 42.104(b)(3), Petitioner provides claim construction
contentions that identify the specific portions of the specification that
describe the structure, material, or acts corresponding to each claimed
function for the means-plus-function terms recited in claims 17–19. Pet. 14–
18. Petitioner states “[a]ll claim terms not specifically addressed below are
construed according to their ordinary and customary meaning.” Id. at 14.
Patent Owner responds “[o]ther than the term ‘means for detecting a
failure in a radio connection,’ discussed below, Patent Owner takes no
position regarding Petitioners’ proposed constructions.” Prelim. Resp. 9. For
the term “means for detecting a failure in a radio connection,” Patent Owner
states that it agrees that the claimed function is “detecting a failure in a radio
connection.” Id. at 10. Patent Owner, however, argues that “Petitioner[’]s

5 Our conclusions herein do not turn on which definition is selected.
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construction of the structure is overly narrow and inconsistent with the
specification and prosecution history.” Id.
Claims that include the language “means” or “means for” are
presumed to invoke 35 U.S.C. § 112, ¶ 6. See Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part)
(“[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6
applies.”).6 Because the issues before us turn on elements of the claim other
than the disputed structural element for the term “means for detecting a
failure in a radio connection,” we need not make a determination regarding
that term. For the other means-plus-function terms recited in claim 17, we
use Petitioner’s constructions (Pet. 15–16), which are not disputed by Patent
Owner (Prelim. Resp. 8–9).
In view of the issues we address below, we determine that it is not
necessary to provide an express interpretation of any other claim term. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
D. Obviousness over the Admitted 3G Art and Rappaport
Petitioner asserts that claims 1–5, 7, 17–19, 21, and 22 are
unpatentable as obvious over the combination of the Admitted 3G Art and
Rappaport. Pet. 12. In our discussion below, we first provide a brief
overview of the asserted prior art, and then we address the parties’
contentions in turn.

6 The ’803 Patent’s filing date is before the effective date set for the AIA’s
changes to § 112. AIA § 4(e).
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1. Admitted 3G Art
The ’803 Patent describes as background re-establishment procedures
defined in the 3GPP “specification numbers TS25.331, TS25.302, TS25.321
and TS25.322.” Ex. 1001, 1:66–2:3. More, specifically, the ’803 Patent
describes the following:
According to said prior art document, when a mobile
terminal (or a UE: user equipment) loses the radio connection
due to e.g. radio link failure while it is in a so-called CELL_DCH
state, the mobile terminal may initiate a new cell selection by
transiting into a so-called CELL_FACH state and requesting re-
establishment of an RRC connection. The acronyms DCH and
FACH come from Dedicated CHannel and Forward Access
CHannel and said states are characterized by that the mobile
terminal uses primarily these channels. After having detected the
loss of a radio connection the mobile terminal starts a timer
which in said prior art document is referred to as the timer T314,
or the re-establishment timer. If the mobile terminal finds itself
to be within an “in service area”, where connection re-
establishment is possible, it stops the timer T314 and transmits a
message known as the RRC CONNECTION
RE_ESTABLISHMENT REQUEST on the uplink CCCH or
Common Control CHannel. However, if the timer T314 makes it
to expiry before the mobile terminal finds itself to be within an
“in service area”, the mobile terminal must enter an RRC-idle
mode where active communication with base stations is not
possible.
The value of the timer T314 may be anything between 0
and 4095 seconds.
Id. at 2:7–29.7

7 Because Petitioner fails to satisfy its institution burden for other reasons,
we need not consider whether the Petition comports with the guidance
reflected in the August 18, 2020, Memorandum regarding the Treatment of
Statements of the Applicant in the Challenged Patent in Inter Partes
Reviews under § 311. Available at
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2. Rappaport
Rappaport describes a system and method for controlling admission to
a mobile communications system that maintains mobile user connectivity
between mobile platforms and the communication network by automatically
and transparently attempting to reconnect disrupted links. Ex. 1005, 1:20–
27. More specifically, Rappaport describes that when the physical
connection between a mobile terminal and the network fails, the session is
suspended and the mobile terminal will attempt to reconnect by successive
reconnection requests made at random time intervals. Id. at 6:65–7:1. If a
reconnection has not been secured after maximum number of reconnection
attempts, N, is reached, the session fails and the call is cleared from the
system. Id. at 7:1–7.
Rappaport further describes that upon the suspension of a session, a
timer is also set in the supporting network. Id. at 7:10–11. If communication
is not resumed before the expiration of the timer, the network resources
reserved for the session will be released for use by other call sessions. Id. at
7:11–14.
3. Independent Claim 1
The parties’ dispute pertains to the second expiry time and Petitioner’s
asserted reasoning to combine the Admitted 3G Art and Rappaport. Prelim.
Resp. 20–23. The term “second expiry time” is recited in Element 1[C] and
is further defined in Element 1[D], which are reproduced below.
[Element 1[C]:] determining a second expiry time for a period
during which the re-establishment of the lost radio,

https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_
memo.pdf.
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connection in respect of said radio bearers used to provide a
service or services of a second category is allowable;
[Element 1[D]:] wherein said second category of service is
different than said first category of service, and said second
expiry time is different than said first expiry time;
Ex. 1001, 12:18–24 (emphases added).
Petitioner acknowledges “[t]he Admitted 3G Art does not explicitly
provide a second value for a second timer to determine a different expiry
time for re-establishment of a radio bearer for non-real-time services.”
Pet. 20. Petitioner relies on Rappaport for this teaching. Id. at 20–27. We
discuss the parties’ contentions below.
a) Elements 1[C] and [1D]—“second expiry time . . . in respect of said
radio bearers used to provide a service or services of a second
category” and “wherein said second category of service is different
than said first category of service”
Petitioner asserts that Rappaport teaches “[a] first call (session) type”
that “may be a ‘real-time voice’ call that includes ‘time-sensitive stream
traffic.’” Pet. 21 (citing, e.g., Ex. 1005, 2:44–58, 4:66–5:16, 6:33–6:63;
Ex. 1004 ¶ 169). Petitioner also asserts that Rappaport teaches “[a] second
[call (session) type] may be a ‘data session’ that includes ‘time-insensitive
data calls’ such as ‘[m]obile computing sessions and delay-insensitive data
communications.’” Id. (citing, e.g., Ex. 1005, 2:44–58, 4:66–5:16, 6:33–
6:63; Ex. 1004 ¶ 169).
Even assuming Petitioner’s assertion (id. at 21–22) is correct that
Rappaport teaches two call types and Rappaport’s real-time voice services
and data sessions correspond to the Admitted 3G Art’s real-time services
and non-real-time services, respectively, Rappaport’s description is no more
than that of the Admitted 3G Art. Ex. 1001, 1:49–56. Indeed, the ’803 Patent
describes the problem it solves as follows: “[t]he problem with the prior art
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arrangement is its inflexibility regarding different service types, e.g., real
time vs. non-real time services.” Id. at 2:39–42.
Petitioner also points to Rappaport’s teachings of maintaining
connectivity by reconnecting suspended sessions due to wireless link failure.
Pet. 22–23 (citing, e.g., Ex. 1005, 5:8–9, 6:33–7:24, 8:47–52, 8:58–60,
11:22–60, 26:57–59, 27:37–52, 28:4–19, 29:1–30:12, 36:40–41, 37:8–28,
Figs. 2, 6, 8; Ex. 1004 ¶¶ 170–171). For instance, Petitioner points to
Rappaport’s teaching that “[t]he number of reconnection attempts is set by
the network and may be set to any desired value.” Id. at 23 (citing, e.g.,
Ex. 1005, 6:33–7:24, 11:22–60, 27:37–52, 29:1–30:12, 37:8–28, Figs. 6, 8;
Ex. 1004 ¶ 172). Also, relying on the testimony of Dr. Min, Petitioner
asserts that a person having ordinary skill in the art “would have understood
from Rappaport that the maximum number of reconnection attempts for a
data call could and would be set higher than the maximum number of
reconnection attempts for a voice call.” Pet. 23 (citing Ex. 1004 ¶ 173).
Dr. Min testifies as follows:
Rappaport recognizes that disconnected voice calls are
immediately perceptible to a user while disconnected data calls
are not, for example, based on the different nature of the
exchange of information for voice calls and data calls, and thus
teaches treating time-sensitive real-time calls differently than
time-insensitive non-real-time calls for purposes of reconnecting
following a failed connection. Ex. 1005 at 1:59–63, 2:44–58,
4:66–5:16, 6:33–63, 29:20–24, 30:1–2, 37:17–28; Ex. 1011 at
7:1–31, 11:2–19, 40:5–8, 41:26–27, 48:25–28. It is my opinion
that a PHOSITA would have understood from Rappaport that the
maximum number of reconnection attempts for a data call could
and would be set higher than the maximum number of
reconnection attempts for a voice call, since link interruptions to
data calls can be transparent to a user. Id. Indeed, in one
embodiment, Rappaport explicitly expresses the desirability of
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allowing multiple reconnection attempts for disconnected data
calls while preferably not allowing any reconnection attempts for
disconnected voice calls. Ex. 1005 at 6:64–7:14, 7:44–67, 29:1–
30:12, Fig. 1; Ex. 1011 at 40:1–41:32, Fig. 1A.
Ex. 1004 ¶ 173.
We agree with Petitioner that Rappaport teaches that the maximum
allowable reconnection attempts need not be the same in every network. See,
e.g., Ex. 1005, 27:37–40 (“The other important parameter is the number, N,
of maximum allowable of reconnection attempts. As this parameter is
increased, a session is less likely to be terminated.”). Contrary to Petitioner’s
assertions and Dr. Min’s testimony, however, Rappaport’s reconnection
procedures involve only a single expiry time or a single maximum number
of reconnection attempts. See, e.g., Ex. 1005, 7:1–9 (“A maximum number
of reconnection attempts, N, is allowed”), 7:9–11 (“In another embodiment
of the present invention, upon the suspension of a session, a timer is also set
in the supporting network”), 29:30–36 (“Preemptive priority is used to
guarantee transparency for voice sessions” and “[d]ata calls that are
preempted or disconnected during the hand-off process, are allowed a fixed
number of reconnection attempts”), Fig. 1 (describing admitting a call and
only one “Maximum Number of Reconnection Attempts”), Fig. 2
(describing only “N” as the number used for comparison to force
termination).
Importantly, Rappaport further teaches not allowing reconnection of
voice sessions. In particular, Rappaport states “[s]ince voice sessions must
be transmitted or received on a real time basis, reconnection attempts for
voice sessions are preferably not allowed.” Ex. 1005, 7:49–53 (emphasis
added); see also id. at 30:1–2 (“Since voice sessions must be transmitted or
received on a real time basis, reconnection attempts are not allowed.”).
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Additionally, certain of Rappaport’s teachings relied upon by
Petitioner relate to admission control procedures for setting up voice or data
communication. For instance, Rappaport states, “[i]n a network that employs
an admission control protocol according to the present invention, voice calls,
for example (or other time-sensitive stream traffic) may preempt resources
of time-insensitive data calls, which result in suspended sessions that do not
result in session failures.” Id. at 2:44–58. Rappaport’s teachings in that
regard, however, are consistent with Rappaport’s teachings that reconnection
attempts for voice sessions are not allowed.
Dr. Min’s testimony that a person having ordinary skill in the art
would have understood from Rappaport that the maximum number of
reconnection attempts for a data call could and would be set higher than the
maximum number of reconnection attempts for a voice is not supported
sufficiently by the evidence of record. We, therefore, accord that testimony
little to no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight.”).
Petitioner’s contentions for Element 1[D] reference back and rely
entirely on Petitioner’s contentions and evidence for Element 1[C]. Pet. 27–
28. Petitioner’s contentions for Element 1[D], therefore, do not remedy the
aforementioned deficiencies.
Accordingly, we have reviewed the record and determine that
Petitioner has not provided sufficient evidence that Rappaport teaches
Element 1[C] or Element 1[D].
b) Reasoning to Combine
Relying on the testimony of Dr. Min, Petitioner asserts the following:
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A PHOSITA would have understood that increasing the
maximum number of reconnection attempts for data (non-real-
time) sessions increases the period of time during which
reconnection is possible (e.g., based on the average time between
attempts and a total number of allowable attempts). Ex. 1005,
8:47–52, 26:57–59, 28:4–19, 36:40–41; Ex. 1011, 34:21–22,
43:36–39, 47:30–31; Ex. 1004, ¶ 174. Further, a PHOSITA
would have understood that Rappaport’s beneficial increase in
time for reconnection of non-real-time calls as opposed to real-
time calls could and would have been equivalently implemented
in the Admitted 3G Art simply by setting a corresponding timer
value for a timer paired to the specific call type, rather than
dictating a certain number of reconnection attempts. Ex. 1004,
¶ 174. A PHOSITA would have therefore applied Rappaport’s
teaching — treating real-time and non-real-time calls differently
with respect to number of reconnection attempts and therefore
amount of time allowed — to the Admitted 3G Art by
determining a first timer value setting a first period of time
during which reconnection of a suspended voice session is
allowable (already taught by the Admitted 3G Art) and
determining a second timer value setting a second period of time
during which reconnection of a suspended data session is
allowable. Id.
Pet. 24–25.
Patent Owner asserts “[c]ontrary to Petitioners’ hindsight arguments,
Rappaport actually teaches away from the ’803 patent by disclosing that
voice calls should not be subject to reconnection procedures at all, thus
obviating the need for two separate timers.” Prelim. Resp. 22 (citing
Ex. 1005 at 7:52–53). We agree with Patent Owner that Rappaport discloses
that voice calls should not be subject to reconnection procedures and,
therefore, Petitioner’s reasoning is deficient.
As discussed above (see supra § III.D.3.a), Rappaport’s reconnection
procedures involve only a single expiry time or a single maximum number
of reconnection attempts and Rappaport further teaches that reconnection of
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voice should not be allowed. In particular, Rappaport states expressly
“[s]ince voice sessions must be transmitted or received on a real time basis,
reconnection attempts for voice sessions are preferably not allowed.”
Ex. 1005, 7:51–53 (emphasis added); see also id. at 30:1–2 (“Since voice
sessions must be transmitted or received on a real time basis, reconnection
attempts are not allowed.”). Petitioner’s assertion that Rappaport teaches a
“beneficial increase in time for reconnection of non-real-time calls as
opposed to real-time calls” (Pet. 24 (emphasis added)) is not consistent with
Rappaport’s description limiting reconnection to one service type and stating
that reconnection attempts for voice should not be allowed. See Ex. 1005,
7:51–53, 30:1–2.
Dr. Min’s testimony is substantially the same as Petitioner’s assertion,
except Dr. Min additionally testifies that Rappaport teaches use of a timer.
Compare Ex. 1004 ¶ 174, with Pet. 24–25. Dr. Min’s testimony is deficient
for the same reasons given for Petitioner’s assertion.
Petitioner also asserts “[a] PHOSITA would have understood that the
proposed combination would have improved the Admitted 3G Art’s re-
establishment procedures so that the reestablishment of each category of
service is tailored specifically to its characteristics.” Pet. 26 (citing Ex. 1004
¶ 176). However, Rappaport teaches that voice sessions should not be
reconnected. As such, we are not persuaded that a person of ordinary skill in
the art would have been motivated to “tailor[] specifically” a disfavored
reconnection attempt. Also, tailoring voice such that reconnection is not
allowed as taught in Rappaport would not have resulted in a combination
having a second expiry time, as recited in claim 1. Dr. Min’s testimony is the
same as Petitioner’s assertion and is deficient for the same reasons. Compare
Ex. 1004 ¶ 176, with Pet. 26.
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Additionally, we determine that Petitioner’s rationale to combine the
teachings of the Admitted 3G Art and Rappaport appears to be based on
impermissible hindsight reconstruction. Claim 1 is directed to a method
requiring determining a first expiry time for re-establishment of a service of
a first category and determining a second expiry time for re-establishment of
a service of a second category. Ex. 1001, 12:8–30. It appears that Petitioner
used the aforementioned disclosure in the ’803 Patent as a guide to modify
the teachings of the Admitted 3G Art’s system using disparate teachings in
Rappaport and an incorrect characterization of those teachings to arrive at
the claimed subject matter. Pet. 20–27. Petitioner relies on Rappaport’s
disparate teachings relating to (1) experimental results generated for setting
a single reconnection parameter for data (see, e.g., Ex. 1005, 26:52–27:41),
and (2) a stated goal of having a network support voice and data (id. at 2:44–
58), and asserts those teachings provide reasoning to combine even though
the cited teachings are silent with respect to a second expiry timer.
Furthermore, Petitioner incorrectly characterizes Rappaport’s teachings as
relating to treating voice differently, but Rappaport teaches not allowing
reconnection attempts for voice. See Ex. 1005, 7:51–53, 30:1–2. Petitioner’s
reasoning to combine is precisely the type of impermissible hindsight
reconstruction that we have been cautioned to avoid. See Grain Processing
Corp. v. Am.-Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir.
1983) (“Care must be taken to avoid hindsight reconstruction by using ‘the
patent in suit as a guide through the maze of prior art references, combining
the right references in the right way so as to achieve the result of the claims
in suit.’”)).
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Accordingly, based on the record before us, we agree with Patent
Owner’s argument that Petitioner does not present a sufficient rationale to
combine the teachings of the Admitted 3G Art and Rappaport in the manner
required by independent claim 1.
c) Conclusion—Claim 1
For the reasons given, we determine that the information presented in
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claim 1 would have been
obvious over the Admitted 3G Art and Rappaport.
4. Independent Claims 17 and 21
Petitioner acknowledges that claims 17 and 21 include substantially
the same recitations that were disputed in claim 1. Pet. 36–38, 42–43. For
claim 17, Petitioner points to an algorithm in the Asserted 3G Art and asserts
“the same algorithm would be performed for both the first and second expiry
values.” Pet. 38 (citing Ex. 1004 ¶ 210). Petitioner, however, acknowledges
that the Admitted 3G Art “does not explicitly provide a second value for a
second timer.” Id. at 20. Petitioner’s further assertion regarding the Admitted
3G Art, therefore, does not remedy the deficiencies discussed with respect to
claim 1. See supra § III.D.3.
Petitioner also asserts that a person having ordinary skill in the art
would have understood that the value for the second expiry time would have
been stored and read from Rappaport’s memory. Pet. 37 (citing Ex. 1005,
5:53–6:2). Rappaport’s teachings relied upon by Petitioner, however, also do
not remedy the aforementioned deficiencies. For instance, Rappaport teaches
simply that its system “is preferably implemented as an application
comprising program instructions that are tangibly embodied on a program
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storage device.” Ex. 1005, 5:56–58. Rappaport also provides exemplary
program storage devices and explains its examples are not limiting. Id. at
5:53–6:2. Rappaport’s teachings do not discuss the details of the
implementation and do not resolve the deficiencies discussed with respect to
claim 1. See supra § III.D.3.
Petitioner does not supplement further its contentions for claims 17
and 21 in a meaningful way and, instead, relies on the same evidence that we
determined is deficient with respect to claim 1. Pet. 36–38, 42–43. For the
reasons given, we determine that the information presented in the Petition
does not establish a reasonable likelihood that Petitioner would prevail in
showing that the subject matter of claims 17 and 21 would have been
obvious over the Admitted 3G Art and Rappaport.
5. Dependent Claims 2–5, 7, 18, 19, and 22
Each of claims 2–5, 7, 18, 19, and 22 depends directly from claim 1,
17, or 21. Petitioner does not present arguments or evidence with respect to
those dependent claims that remedy the deficiencies identified above. See
Pet. 29–34, 39–41, 43.
Accordingly, for the same reasons we discuss above with respect to
the independent claims, we determine that the information presented in the
Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claims 2–5, 7, 18, 19, and 22
would have been obvious over the Admitted 3G Art and Rappaport.
E. Obviousness over (1) the Admitted 3G Art and Eriksson and
(2) the Admitted 3G Art, Eriksson, and Toh
Petitioner asserts that claims 1–5, 7, 17–19, 21, and 22 are
unpatentable as obvious over (1) the combination of the Admitted 3G Art
and Eriksson and (2) the combination of the Admitted 3G Art, Eriksson, and
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Toh. Pet. 12. In our discussion below, we first provide a brief overview of
the asserted prior art, and then we address the parties’ contentions in turn.
1. Eriksson
Eriksson describes a system and method for automatically
reconnecting disconnected low priority calls. Ex. 1006, 1:2–10. Eriksson’s
mobile telecommunications network 200 embodying preemption system 50
operates based on the Global System for Mobile Communications (GSM)
specification. Id. at 3:11–25. Preemption system 50 includes controller 306
that is used to determine whether or not an available traffic channel was
located within a predetermined amount of time. Id. at 4:37–45. The
particular duration of time is set at a level so that users will hardly notice
upon reconnection, if at all, that their low priority call 304 was temporarily
disconnected. Id. at 5:55–59.
2. Toh
Toh describes wireless Asynchronous Transfer Mode (ATM).
Ex. 1007, 1, 5. Toh describes a connectivity-aware mobile application that
supports real-time multi-media applications. Id. at 22. Toh also describes
that with a neighbor-aware mobile application spontaneous networks can be
formed and deformed to support nomadic collaborative computing. Id.
Toh further describes the following:
Cell delay variation or jitter is defined as the variance of the
transmission delay of a connection. A common method to
compensate for jitter is to use larger buffers at the receivers.
Hence, arriving cells are stored and delayed before sending out
again. In this manner, the inter-exit time of ATM cells at the
receiver is similar to those at the source [113]. Given the end-to-
end delay requirement, it may not always be possible to use
receiver buffers to compensate for jitter. Under such
circumstances, it may be desirable to discard delayed ATM cells.
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Considering the handovers of voice traffic, the jitter should not
exceed 130ms [113] and this can be removed by buffering. If the
additional amount of cell delay as a result of mobile handovers
is too large, then the quality of voice services will be affected and
jitter compensation using buffers is no longer useful. Hence, the
traffic disruption time during a handover affects the cell delay
variation directly. On the other hand, delay jitter for data traffic
is not a major issue since synchronisation and constant play-out
(as in voice) are not required at the receiver. Finally, for video
traffic, the jitter requirement can be more stringent, especially for
HDTV (High Definition TV) video.
Id. at 34.
3. Independent Claim 1
Again, the parties’ dispute pertains to whether the asserted art teaches
Elements 1[C] and 1[D] and, in particular, a different expiry time for a
different service category. Prelim. Resp. 24–29. The parties also dispute
whether Petitioner has provided sufficient reasoning to combine the asserted
prior art. Id. We discuss the parties’ contentions below.
a) Elements 1[C] and [1D]—“a second expiry time . . . in respect to
radio bearers used to provide a service or services of a second
category” and “wherein said second category of service is different
than said first category of service”
As discussed with respect to the first ground (see supra § III.D.3),
Petitioner acknowledges that the Admitted 3G Art does not teach a second
expiry time. Pet. 44. Petitioner relies on Eriksson’s reconnection of low
priority calls in a mobile network. Id. at 44–45 (citing, e.g., Ex. 1006, 1:2–
10, 2:52–55, 3:11–25, 4:36–67, 5:15–30). Petitioner asserts that the calls in
Eriksson’s network may be for providing different types of services
including data and voice. Id. at 45 (citing, e.g., Ex. 1006, 2:1–22, 2:40–47,
5:15–30, 6:66–67).
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Patent Owner argues that Eriksson “does not disclose using multiple
timers for different service categories during reconnection attempts,” but
instead, Eriksson teaches “reconnecting only a single group of ‘low priority’
calls.” Prelim. Resp. 25 (citing, e.g., Ex. 1006, 2:26–29). We agree with
Patent Owner.
Eriksson states the following:
The preemption system 50 further includes a controller
306 that interfaces with the queue 302. The controller 306 is used
to determine whether or not the available traffic channel was
located by the MSC/VLR 230 within a predetermined amount of
time. The available channel should be located within the
predetermined amount of time so that the users (e.g., subscribers)
would not notice or hardly notice that their disconnected low
priority call 304 was reconnected in the first place. The
predetermined amount of time is generally a predefined
parameter which is set at the cell level. Furthermore, there may
be several parameter(s) having different durations associated
with each of the disconnected low priority call(s) 304.
Ex. 1006, 4:36–49 (emphasis added).
Eriksson also states the following:
As mentioned earlier, the particular duration of the
predetermined amount of time may be different for each of the
disconnected low priority calls 304. Generally the particular
duration of time is set at a level so that users (e.g., subscribers)
upon reconnection will hardly notice, if at all, that their low
priority call 304 was temporarily disconnected in the first place.
Id. at 5:54–56 (emphasis added); see also id. at 7:5–8, 7:61–64, 8:42–44
(describing an adjustable predetermined amount of time).
Although Eriksson teaches different durations of the predetermined
amount of time (id. at 4:36–49, 5:54–56), Eriksson does not teach that the
different durations are set based on service type. See generally id. Instead,
Eriksson teaches reconnecting only one group of low priority calls. See, e.g.,
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id. at 2:26–29 (“The present invention is a method and system used in a
mobile telecommunications network for reconnecting at least one of a
plurality of low priority calls that have been disconnected due to preemption
by high priority call(s).”). Eriksson teaches that the single “low priority”
group includes both data transmissions and voice calls. See, e.g., id. at 6:66–
67. Eriksson, however, does not indicate any preference based on category
within that “low priority” group and, instead, explains that its system
“includes a queue 302 for arranging the low priority call(s) 304” and that
“[t]he disconnected low priority call(s) 304 are typically inserted and
removed from the queue 302 in a first-in-first-out order.” Id. at 4:8–13
(emphasis added). Indeed, rather than setting the duration by category,
Eriksson teaches different durations “for each of the disconnected low
priority calls 304.” Id. at 5:54–56 (emphasis added); see also id. 4:36–49
(describing that the different durations are “associated with each of the
disconnected low priority call(s) 304”).
Petitioner relies on the testimony of Dr. Min. Pet. 44–49 (citing
Ex. 1004 ¶¶ 241–249, 254). Dr. Min testifies as follows:
Eriksson also teaches that the low priority calls may be of
different types, including data transmission calls and voice calls.
Ex. 1006 at 2:1–22, 40–47, 6:19–31, claims 4, 11–13, 21–22. A
PHOSITA would have understood that voice calls and data
transmission calls within at least the cellular communication
context represent different categories of services. Thus, in
providing different timers for different low priority calls, a
PHOSITA would have appreciated that Eriksson teaches the
situation in which a low priority voice call is assigned a different
time period for reconnection than a low priority data call. In other
words, Eriksson’s teaching of multiple types of calls in
conjunction with its description of different reconnection
durations for different calls includes a first predetermined
amount of time parameter for a voice call, and a second
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predetermined amount of time parameter for a data transmission
call. Eriksson further teaches that data transmission calls should
not be terminated if at all possible because of the desire to avoid
having to resend data from the beginning in a second call.
Ex. 1006 at 2:1–22, 40–47, 6:19–31, claims 5, 16, 25. This
suggests having a longer reconnection period for data calls, so as
to avoid their termination. Accordingly, the second
predetermined amount of time for reconnecting a data
transmission call teaches “a second expiry time for a period
during which the re-establishment of the lost radio, connection
in respect of said radio bearers used to provide a service or
services of a second category is allowable.” Id.
Ex. 1004 ¶ 245 (emphasis added).
Dr. Min’s testimony that Eriksson teaches multiple types of calls “in
conjunction with” different reconnection durations (id.) is not supported
sufficiently by the evidence of record. Eriksson simply states that different
durations may be associated with each of disconnected low priority
calls 304, without mentioning “in conjunction with” the multiple call types.
Ex. 1006, 4:36–49, 5:54–56. We also determine that Dr. Min’s testimony
that a person having ordinary skill in the art would have appreciated that
Eriksson teaches that a low priority voice call is assigned a different time
period for reconnection than a low priority data call (Ex. 1004 ¶ 245) is not
sufficiently supported by cited evidence or explanation. Eriksson simply
states that the time is set so that subscribers will hardly notice the temporary
disconnection. Ex. 1006, 4:36–49, 5:54–56. We, therefore, accord Dr. Min’s
testimony (Ex. 1004 ¶ 245) little to no weight. See 37 C.F.R. § 42.65(a).
Petitioner also relies on the combination of Eriksson and Toh for
Element 1[C]. Pet. 48–49. In particular, Petitioner asserts “[i]f Patent Owner
argues that Eriksson does not explicitly teach different treatment for
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different categories of calls, Toh does so.” Id. (citing Ex. 1007, 22, 34–36;
Ex. 1004 ¶¶ 250–253).
Toh’s teachings, however, pertain to compensating for cell delay
variation or jitter by using “larger buffers at the receivers.” Ex. 1007, 34. For
instance, Toh teaches “[c]onsidering the handovers of voice traffic, the jitter
should not exceed 130ms [] and this can be removed by buffering,” whereas
“delay jitter for data traffic is not a major issue since synchronisation and
constant play-out (as in voice) are not required at the receiver.” Id. Toh also
teaches “the types of traffic to be supported also govern the design of the
handover protocol.” Id. at 36. Toh’s short discussion regarding the design of
the handover protocol, however, does not provide sufficient detail regarding
the proposed design to teach using first and second expiry times for first and
second categories of service, respectively, as recited in claim 1.
We have reviewed the record and determine that Petitioner has not
provided sufficient evidence that Eriksson alone or in combination with Toh
teaches Element 1[C] or Element 1[D].
b) Reasoning to Combine the Admitted 3G Art and Eriksson
Relying on the testimony of Dr. Min, Petitioner asserts that a person
having ordinary skill in the art would have combined the Admitted 3G Art
and Eriksson to improve the user’s experience. Pet. 47–48 (citing Ex. 1001,
1:59–2:27; Ex. 1006, 2:1–22, 2:44–55, 4:7–5:30, 5:55–59, Fig. 4; Ex. 1004
¶ 249). Dr. Min testifies as follows:
It is further my opinion that a PHOSITA would also have
found the above noted combination of the Admitted 3G Art and
Eriksson to be obvious as the use of a known technique to
improve similar devices in the same way. As an initial matter,
the Admitted 3G Art and Eriksson teach similar methods—
reconnection procedures for re-establishing disconnected calls in
a mobile telecommunications environment—and similar
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devices, i.e., cellular mobile terminals with reconnection timers.
Ex. 1001 at 1:59–2:27; Ex. 1006 at 4:7–5:30, Fig. 4.
Accordingly, a PHOSITA would have applied Eriksson’s known
technique of using different reconnection time parameters for
different calls to the Admitted 3G Art re-establishment protocols
in the same fashion as Eriksson’s automatic reconnection system.
Moreover, Eriksson’s reconnection technique furthers
Eriksson’s stated goal that “the particular duration of time is set
at a level so that users . . . will hardly notice, if at all, that their
low priority call 304 was temporarily disconnected in the first
place.” Ex. 1006 at 5:55–59, 2:52–55, 4:41–49. As noted above,
Eriksson explicitly describes differential reconnection treatment
between voice and data calls, suggesting that data calls be
allowed additional (i.e., longer amount) time to reconnect to
avoid having to reinitiate data transmissions from the beginning.
Id. at 2:1–22, 44–47. With voice calls, on the other hand,
Eriksson expresses a concern that users are inclined to hang up
more quickly upon detecting disruption. Id. at 5:15–30. This
would suggest to a PHOSITA that a reconnection timer for voice
calls should be shorter in duration. This is practically the same
problem called out by the ’803 patent with respect to the
Admitted 3G Art re-establishment protocols. Ex. 1001 at 2:39–
55. Accordingly, a PHOSITA would have recognized that using
Eriksson’s multiple re-establishment time parameters for
different types of calls would have improved the Admitted 3G
Art re-establishment procedure’s ability to address the differing
needs and priorities of various types of calls, as it did in Eriksson.
A PHOSITA would have further understood that the use of
Eriksson’s technique would have improved the user experience,
given that users are more sensitive to disruption in real-time
calls.
Ex. 1004 ¶ 249.
Above, Dr. Min testifies that Eriksson “explicitly describes
differential reconnection treatment between voice and data calls.” Ex. 1004
¶ 249 (citing Ex. 1006, 2:1–22, 2:44–47). Eriksson, however, teaches
automatically reconnecting a preemption-initiated disconnect and a data
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transmission, but does not teach different treatment for voice and data.
Ex. 1006, 2:1–22, 2:44–47.
Dr. Min also testifies that Eriksson expresses a concern that voice
users are inclined to hang up more quickly upon detecting disruption.
Ex. 1004 ¶ 249 (citing Ex. 1006, 5:15–30). Eriksson, however, simply states
that a user may be informed “to remain on-line and not hang-up.” Ex. 1006,
5:15–30. That statement does not teach treating voice and data differently
with respect to reconnection times.
Dr. Min’s testimony (Ex. 1004 ¶ 249) is premised on Eriksson
teaching two different expiry times, one for data and one for voice. Id. For
the reasons given with respect to Element 1[C] and Element 1[D] (see supra
§ III.E.3.a), we determine Petitioner’s contentions and Dr. Min’s testimony
are deficient in that regard. Because Dr. Min’s testimony (Ex. 1004 ¶ 249) is
not supported sufficiently by the evidence of record, we accord that
testimony little to no weight. See 37 C.F.R. § 42.65(a).
Accordingly, based on the record before us, we determine that
Petitioner does not present a sufficient rationale to combine the teachings of
the Admitted 3G Art and Eriksson in the manner required by independent
claim 1.
c) Reasoning to Combine the Admitted 3G Art, Eriksson, and Toh
Relying on the testimony of Dr. Min, Petitioner asserts that a person
having ordinary skill in the art would have combined the teachings of the
Admitted 3G Art, Eriksson, and Toh because the combinations are suggested
by the art itself. Pet. 48–49 (citing, e.g., Ex. 1004 ¶ 250–254). Dr. Min
testifies as follows:
Given Toh’s teachings of using different protocols for
different types of calls, a PHOSITA would have been motivated
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to modify the aforementioned combination of the Admitted 3G
Art and Eriksson such that each of the multiple timers were
associated to a different service type or category of services.
Specifically, in the Admitted 3G Art-Eriksson-Toh combination,
the multiple reconnection timers would include a real-time
service timer having a smaller re-establishment duration, and
another timer for non-real-time services with a greater duration.
To a PHOSITA, the combination of the Admitted 3G Art,
Eriksson and Toh would have been the mere application of a
known technique (distinguishing between voice and data
services because of the different sensitivities to disruption of
each) to a known device (the Admitted 3G Art-Eriksson
combination’s MS using different reconnect timers for different
calls) ready for improvement to yield predictable results (one
timer applies to real-time calls, a second applies to non-real-time
calls). Ex. 1001 at 1:49–58; Ex. 1007 at 32, 36. To the extent the
Admitted 3G Art-Eriksson combination’s re-establishment
procedure would apply a longer reconnection time to non-real-
time calls, it was clearly ready for improvement (Ex. 1001 at
1:49–58, 2:40–56; Ex. 1006 at 5:55–59, 2:52–55, 4:41–49), and,
as discussed in Toh, adopting different traffic handling protocols
for real-time, non-real-time and voice communications was a
known technique to address the varying sensitivities of different
types of services to communication delays and breaks. Ex. 1007
at 22, 36.
Ex. 1004 ¶ 252.
Dr. Min’s testimony is premised on Toh suggesting modifying
Eriksson’s multiple timers such that each is associated with a different
service type or category of services. Id. That testimony is not supported by
Toh. First, Toh teaches that “connectivity-aware” applications require “an
on-going communication path.” Ex. 1007, 22. That teaching is contrary to
Dr. Min’s testimony that a timer should be set to allow for reconnection of
voice communications. Toh also teaches “the types of traffic to be supported
also govern the design of the handover protocol.” Id. at 36. Toh provides no
indication that voice traffic should be reconnected and does not teach or
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suggest setting two timers. Because Dr. Min’s testimony (Ex. 1004 ¶ 252) is
not supported sufficiently by the evidence of record, we accord that
testimony little to no weight. See 37 C.F.R. § 42.65(a).
Dr. Min also testifies as follows:
A PHOSITA would have been further motivated to
combine the Admitted 3G Art, Eriksson and Toh to adopt
different re-establishment timers for different types of services
by simply reading the teachings of the Admitted 3G Art and
Eriksson. That is, Eriksson specifically acknowledges the need
to “automatically reconnect . . . in a manner where each user
will hardly notice that there was a disconnection in the first
place.” Ex. 1006 at 2:52–55, 4:41–49 (emphasis added). Erikson
teaches different reconnection time periods for different calls,
and also teaches that data calls in particular should not be
terminated, which suggests a longer reconnection duration for
those calls. Id. at 2:1–22, 2:40–47, 6:19–31. The Admitted 3G
art teaches that delays in speech calls are immediately noticeable
(Ex. 1001 at 1:55–58) as does Eriksson, since it teaches
providing a delay notification only for speech calls to avoid hang
ups by the user during reconnection. Ex. 1006, 5:26–30. These
suggest having a shorter reconnection time for speech calls.
Importantly, Eriksson is evidence that the Admitted 3G Art
issues noted in the ’803 patent were well-known issues in the art
before the time of the alleged invention of the ’803 patent, and
both Eriksson and Toh taught ways to address those issues.
Accordingly, a PHOSITA would have found clear motivation
from the teachings in the prior art to treat real-time service calls
and non-real-time service calls differently in light of the
differences in disruption sensitivity, as discussed in Eriksson and
explicitly taught in Toh. Ex. 1006 at 2:52–55, 4:41–49; Ex. 1007
at 22, 34–36. A PHOSITA would have found using a different
(shorter) re-establishment time period for real-time services, as
compared to non-real-time services, as an obvious way to apply
more a stringent traffic handling protocol that would result in a
better user experience, for both real-time and non-real-time
service calls.
Ex. 1004 ¶ 253.
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Dr. Min’s testimony above relies on the following: (1) Eriksson’s
teaching of automatically reconnecting “in a manner where each user will
hardly notice that there was a disconnection in the first place” (id. (citing
Ex. 1006, 2:52–55, 4:41–49)); (2) Eriksson’s teaching that data calls should
not be terminated (id. (citing Ex. 1006, 2:1–22, 2:40–47, 6:19–31)); (3) the
Admitted 3G art’s teaching that delays in speech calls are immediately
noticeable (id. (citing Ex. 1001, 1:55–58)); (4) Eriksson’s teaching of
providing a delay notification only for speech calls to avoid hang ups by the
user during reconnection (id. (citing Ex. 1006, 5:26–30)); and (5) Eriksson’s
and Toh’s teachings of treating real-time service calls and non-real-time
service calls differently (id. (citing Ex. 1006, 2:52–55, 4:41–49; Ex. 1007,
22, 34–36)). Except for the fourth, i.e., Eriksson’s delay notification, each of
the teachings relied upon by Dr. Min is no better than the Admitted 3G Art
in which reconnection was performed for only data transmissions and
involved using only a single expiry timer. Eriksson’s teaching of providing a
delay notification for speech calls to avoid hang ups by the user during
reconnection (citing Ex. 1006, 5:26–30) is silent with respect to how
reconnection is performed. Because Dr. Min’s testimony (Ex. 1004 ¶ 253) is
not supported sufficiently by the evidence of record, we accord that
testimony little to no weight. See 37 C.F.R. § 42.65(a).
Also, Petitioner’s rationale to combine the teachings of the Admitted
3G Art, Eriksson, and Toh appears to be based on impermissible hindsight
reconstruction. It appears that Petitioner used claim 1 as a guide to modify
not only the Admitted 3G Art’s system having one re-establishment timer,
but also Eriksson’s teaching of parameters having different durations such
that the modified system resulting from the combination of the asserted art
includes more than the references together teach, i.e., determining a second
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expiry time for a second category of service. Pet. 47–49. Petitioner’s
reliance on Toh is misplaced because Toh teaches that “connectivity-aware”
applications require “an on-going communication path” (Ex. 1007, 22),
which is contrary to Petitioner’s assertion. Pet. 47–49. Petitioner’s proposed
modification appears to be based on only impermissible hindsight
reconstruction.
Accordingly, based on the record before us, we determine that
Petitioner does not present a sufficient rationale to combine the teachings of
the Admitted 3G Art, Eriksson, and Toh in the manner required by
independent claim 1.
d) Conclusion—Claim 1
For the reasons given, we determine that the information presented in
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claim 1 would have been
obvious over (1) the combination of the Admitted 3G Art and Eriksson and
(2) the combination of the Admitted 3G Art, Eriksson, and Toh.
4. Independent Claims 17 and 21
Petitioner acknowledges that claims 17 and 21 include substantially
the same recitation that was disputed in claim 1. Pet. 55–57, 59–61.
Petitioner relies on and references back to its contentions for claim 1 for
claims 17 and 21. Id. Petitioner also refers back to its contentions for
obviousness over the Admitted 3G Art and Rappaport for claims 17 and 21.
Id. Petitioner does not supplement further its contentions for claims 17 and
21 in a meaningful way.
We discussed the deficiencies in Petitioner’s contentions with respect
to claims 1, 17, and 21 and obviousness over the Admitted 3G Art and
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Rappaport (see supra §§ III.D.3, III.D.4) and Petitioner has not remedied
those deficiencies here. We also discussed the deficiencies in Petitioner’s
contentions with respect to claim 1 and obviousness over (1) the
combination of the Admitted 3G Art and Eriksson and (2) the combination
of the Admitted 3G Art, Eriksson, and Toh. See supra § III.E.3. Petitioner
also has not remedied those deficiencies here.
For the reasons given, we determine that the information presented in
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claims 17 and 21 would have
been obvious over (1) the combination of the Admitted 3G Art and Eriksson
and (2) the combination of the Admitted 3G Art, Eriksson, and Toh.
5. Dependent Claims 2–5, 7, 18, 19, and 22
Each of claims 2–5, 7, 18, 19, and 22 depends directly from claim 1,
17, or 21. Petitioner does not present arguments or evidence with respect to
those dependent claims that remedy the deficiencies identified above. See
Pet. 50–55, 57–59, 61. Accordingly, for the same reasons we discuss above
with respect to the independent claims, Petitioner has not shown a
reasonable likelihood that it would prevail on its assertions that the subject
matter of dependent claims 2–5, 7, 18, 19, and 22 would have been obvious
over the asserted art.
For the reasons given, we determine that the information presented in
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claims 2–5, 7, 18, 19, and 22
would have been obvious over (1) the combination of the Admitted 3G Art
and Eriksson and (2) the combination of the Admitted 3G Art, Eriksson, and
Toh.
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F. Claims 17–19 and Grounds Including TS 25.331
Petitioner’s contentions for the grounds of obviousness including
TS 25.331 pertain to the algorithm used for the detection means recited in
claim 17 (Element 17[B]) and the further recitations in dependent claims 18
and 19. Pet. 61–64. Petitioner does not present arguments or evidence with
respect to TS 25.331 (id.) that remedy the deficiencies previously discussed.
See supra §§ III.D, III.E. Indeed, Petitioner acknowledges that TS 25.331 is
limited to a single timer. See Pet. 62.
For the reasons given, we determine that the information presented in
the Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that the subject matter of claims 17–19 would have been
obvious over the grounds including TS 25.331.
IV. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not establish a reasonable likelihood that Petitioner
would prevail in showing that the challenged claims of the ’803 Patent are
unpatentable.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for an inter partes review of
claims 1–5, 7, 17–19, 21, and 22 of the ’803 Patent is denied.
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FOR PETITIONER:
C. Andy Mu
John R. Hutchins
Wesley W. Jones
Craig W. Kronenthal
Shambhavi Patel
BANNER & WITCOFF, LTD.
amu@bannerwitcoff.com
jhutchins@bannerwitcoff.com
wjones@bannerwitcoff.com
ckronenthal@bannerwitcoff.com
spatel@bannerwitcoff.com

Brian M. Buroker
Paul Torchia
Nathan R. Curtis
GIBSON, DUNN & CRUTCHER LLP
bburoker@gibsondunn.com
ptorchia@gibsondunn.com
ncurtis@gibsondunn.com

Kourtney Mueller Merrill
Amanda Tessar
David St. John-Larkin
PERKINS COIE LLP
kmerrill@perkinscoie.com
tessar-ptab@perkinscoie.com
dlarkin@perkinscoie.com

Meredith Martin Addy
Robert P. Hart
Gregory B. Gulliver
ADDYHART P.C.
meredith@addyhart.com
robert@addyhart.com
gbgulliver@addyhart.com

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FOR PATENT OWNER:
Timothy Devlin
DEVLIN LAW FIRM LLC
td-ptab@devlinlawfirm.com