DOCKET NO: 500285US UNITED STATES PATENT AND … · U.S. Patent 8,019,332 Petition for Inter Partes...

DOCKET NO: 500285US

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_______________

BLACKBERRY CORP., Petitioner,

v.

OPTIS WIRELESS TECHNOLOGY, LLC, Patent Owner.

_______________

Case IPR2017-______ Patent No. 8,019,332

_______________

PETITION FOR INTER PARTES REVIEW

U.S. Patent 8,019,332 Petition for Inter Partes Review

ii

TABLE OF CONTENTS

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

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1

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

B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1

C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 2

D. Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2

III. PAYMENT OF FEES ..................................................................................... 2

IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 2

A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 2

B. Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 3

1. The Specific Art on Which the Challenge Is Based ................... 3

2. The Specific Grounds on Which the Challenge Is Based ........... 4

V. BACKGROUND OF THE '332 PATENT ...................................................... 4

A. Technology Overview ........................................................................... 4

B. Summary of the '332 Patent .................................................................. 8

C. Prosecution History of the '332 Patent ................................................ 14

D. Overview of the Prior Art .................................................................... 15

VI. PERSON OF ORDINARY SKILL IN THE ART ........................................ 21

VII. CLAIM CONSTRUCTION .......................................................................... 22

VIII. GROUNDS OF UNPATENTABILITY ........................................................ 25

A. Claims 1-3, 5-8, and 10 are unpatentable as obvious over R1-081101 in view of Knuth and L'Ecuyer .............................................. 25

IX. CONCLUSION .............................................................................................. 39


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I. INTRODUCTION

BlackBerry Corp. ("BlackBerry" or "Petitioner"), in accordance with 35

U.S.C. §§ 311–19 and 37 C.F.R. §§ 42.100 et seq., respectfully requests inter

partes review of claims 1-3, 5-8, and 10 of U.S. Patent No. 8,019,332 ("the '332

patent") (Ex. 1001) assigned to Optis Wireless Technology, LLC ("Patent Owner")

via assignment record at Reel/Frame: 039359 / 0916. This Petition shows by at

least a preponderance of the evidence that there is a reasonable likelihood that

Petitioners will prevail on proving that claims 1-3, 5-8, and 10 of the '332 patent

are unpatentable based on prior art that, as a whole, the Office did not have before

it or did not fully consider during prosecution.

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioners provides the following

mandatory disclosures:

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

Petitioners certify that BlackBerry Corp. and BlackBerry Limited. are the

real parties-in-interest.

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

The '332 patent is asserted in at least one currently pending litigation, which

was filed on January 17, 2016 and captioned PanOptis Patent Management, LLC v.

BlackBerry Limited, No. 2:16-cv-00059-JRG-RSP (E. D. Tex.).


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C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)

Petitioners provide the following designation of counsel: Lead counsel is

Robert C. Mattson (Reg. No. 42,850) and back-up counsel is Sameer Gokhale

(Reg. No. 62,618).

D. Service Information Under 37 C.F.R. § 42.8(b)(4)

Papers concerning this matter should be served in accordance with the

following:

Email: [email protected]; and [email protected].

Post: Oblon LLP, 1940 Duke Street, Alexandria, VA 22314

Telephone: (703) 412-6466

Fax: (703) 413-2220

Petitioners consents to electronic service at the above email addresses.

III. PAYMENT OF FEES

The undersigned authorizes the Office to charge the fee required by

37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account

No. 15-0030. Any additional fees that might be due are also authorized.

IV. REQUIREMENTS FOR INTER PARTES REVIEW

A. Grounds for Standing Under 37 C.F.R. § 42.104(a)

Petitioners hereby certify that the '332 patent is available for inter partes

review and that the Petitioners are not barred or estopped from requesting an inter


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partes review challenging the patent claims of the '332 patent on the grounds

identified herein.

B. Identification of Challenge Under 37 C.F.R. § 42.104(b)

Petitioner requests inter partes review of claims 1-3, 5-8, and 10 of the '332

patent and that the Board cancel the same as unpatentable. The '332 patent issued

on September 13, 2011 from an application filed on December 8, 2010. The '332

patent is a continuation of the U.S. Patent No. 7,873,004 ("the '004 patent") patent,

which issued from an application filed October 15, 2008. The '004 patent claims

the priority benefit of U.S. Provisional Application Nos. 61/029,576 and

61/037,000, filed on February 19, 2008 and March 17, 2008 respectively. Thus, the

earliest possible effective filing date the '332 patent is February 19, 2008.

1. The Specific Art on Which the Challenge Is Based

Petitioner relies upon the following printed publications:

Exhibit 1004 – Ericsson, PDCCH blind decoding – Outcome of offline

discussions, Doc. No. R1-081101, 3GPP TSG-RAN WG1 #52 (published Feb. 15,

2008) ("R1-081101"), was made available to the extent that persons interested and

ordinarily skilled in the subject matter or art, exercising reasonable diligence, could

locate it by at least February 15, 2008 (Ex. 1009 at 7), which is prior to the earliest

filing date claimed by the '332 patent (February 19, 2008). R1-081101 is therefore

available as prior art under at least pre-AIA 35 U.S.C. § 102(a). R1-081101 was


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indicated as considered during the original prosecution of the '332 patent. (Ex.

1002 at 85).

Exhibit 1005 – Donald E. Knuth, "The Art of Computer Programming,

Volume 2, Seminumerical Algorithms," (2nd ed. 1981) ("Knuth"), was published

in 1981, which is prior to the earliest filing date claimed by the '332 patent

(February 15, 2008). Knuth is therefore available as prior art under at least pre-

AIA 35 U.S.C. § 102(b). Knuth was not considered during the original prosecution

of the '332 patent.

Exhibit 1015 – Pierre L'Ecuyer, "Efficient and Portable Combined Random

Number Generators." Communications of the ACM. 31: 742–749 ("L'Ecuyer"), was

published on June 1988. L'Ecuyer is therefore available as prior art under at least

pre-AIA 35 U.S.C. § 102(b).

2. The Specific Grounds on Which the Challenge Is Based

Petitioner respectfully requests cancellation of claims 1-3, 5-8, and 10 of the

'332 patent on the following grounds:

(1) Claims 1-3, 5-8, and 10 are obvious under 35 U.S.C. §103 over R1-081101 in

view of Knuth and L'Ecuyer.

V. BACKGROUND OF THE '332 PATENT

A. Technology Overview

Physical Downlink Control Channel (PDCCH)


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The '332 patent is generally directed to a method for efficiently transmitting

and receiving control information through a Physical Downlink Control Channel

(PDCCH). (Ex. 1001 at Abstract).

The '332 patent is specifically related to Third Generation Partnership

Project Long Term Evolution (3GPP LTE) technologies. (Id. at 1:28-32). 3GPP is

a standards-setting organization for cellular telecommunications technology (Ex.

1003 at ¶42).

The '332 patent describes that in the 3GPP LTE communication system,

various channels are defined for uplink and downlink in the physical layer used in

actual signal transmission, including a Physical Downlink Control Channel

(PDCCH), which serves to transmit scheduling allocation control information and

other control information. (Ex. 1001 at 1:38-53 and Ex. 1003 at ¶55). Multiple

user equipment (UE) can receive control information through a PDCCH

transmitted from the base station. (Ex. 1001 at 1:56-58). Since there is a limit to

the number of PDCCHs that the base station can transmit to UEs during a single

time interval, i.e., subframe of duration 1 millisecond for 4G LTE, the base station

does not statically allocate a PDCCH to any of the UEs, but instead transmits

control information to a specific UE when necessary, through an available

PDCCH. (Id. at 1:58-62). Thus, when a PDCCH is transmitted to a UE, the UE

does not know that the PDCCH has been transmitted to it, and must determine


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whether or not it received control information through the PDCCH. In doing so,

the UE utilizes its own UE identifier included in the PDCCH. As such, at each

time, the UE performs decoding on each of a plurality of PDCCHs (for a plurality

of possible PDCCH formats) and receives, when it is determined that the PDCCH

corresponds to the UE, control information included in the PDCCH and operates

according to the control information. (Id. at 1:65 to 2:3).

Hashing Functions

A hashing function is typically used to map data of arbitrary size to data of

any fixed size. (Ex. 1003 at ¶58). A linear congruential generator (LCG) is a type

of hashing function that generates random numbers according to the following

formulas:

(Ex. 1005 at 9 and Ex. 1003 at ¶58).

The "mod" stands for a modulo operation which finds the remainder after

division of one number by another (the modulus). (Ex. 1003 at ¶59). Thus, given

two positive numbers, a (the dividend) and n (the modulus), a modulo n


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(abbreviated as a mod n) is the remainder of the Euclidean division of a by n. (Id.)

For example, 9mod2 yields a value of 1, since that is the remainder of 9 divided by

2. (Id.) If the modulus is greater than the dividend, then essentially the dividend

becomes the remainder and the output of the modulo operation. (Id.) Therefore, 2

mod 9 yields a value of 2 since the division results in 0 remainder of 2. (Id.)

It can be seen that in the linear congruential generator, the dividend is a

linear function. (Id. at ¶60). Thus, if the modulus is greater than the initial

dividend, then the outputted sequence will look like a linear function until the

dividend gets larger than the modulus, at which point the generated sequence

becomes bound by the size of the modulus and the sequence becomes piecewise

linear. (Id.) This is why the linear congruential generator can act as a hashing

function to map data of arbitrary size to data of fixed size. (Id.)

When using a hashing function, a collision is known to occur when two

different inputs (used in the dividend) "hash" to the same output. (Ex. 1003 at

¶61). In other words, in the above simple example, when the dividend was 2 and

the modulus was 9, the output was 2. Similarly, when the dividend is 11 and

modulus is 9, the output is also 2. Therefore, it is well understood in the art that, as

an ordinary linear function becomes large , it is possible that the dividend becomes

greater than the modulus. (Ex. 1003 at ¶62). When this occurs there is a risk of a

collision occurring because there may be multiple values which hash to the same


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value since the remainder in the modulo operation will be the same as was shown

above. (Id.)

A common technique to avoid or further reduce the chance of a collision is

through using multiple hashing functions. ((Id. at ¶63). One such method is the

use of combined linear congruential generators in which two or more linear

congruential generators are combined to increase the period. (Ex. 1015 at 2, left

column; Ex. 1003 at ¶63). Thus, the first hash function can be configured to

generate a sequence of outputs that will be uniformly distributed so as to avoid

collision when combined with the second hash function. (Ex. 1003, ¶64).

B. Summary of the '332 Patent

The '332 describes a problem in which the number of combinations of

PDCCH regions for transmission of control information may be great and thus

excessive UE processing performance may be required for the UE to decode all

PDCCH regions. (Id. at 2:4-7). Accordingly, the method of the '332 patent seeks

to limit PDCCH regions to be decoded by each UE to reduce the number of times

the UE performs decoding and thus to reduce power consumption of the UE. (Id. at

2:7-10).

Fig. 1 of the '332 patent (below) shows a size of a CCE aggregation used to

transmit one PDCCH.


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Fig. 1 shows that the number of the CCEs aggregately used to transmit one

PDCCH may vary depending on a channel environment. (Id. at 5:16-18). The

number of CCEs used to transmit one PDCCH is the "CCE aggregation level". (Id.

at 5:19-21).

Fig. 2 of the ‘332 patent (below) illustrates possible decoding positions that

a UE needs to attempt to decode taking into consideration the CCE aggregation

level.


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Fig. 3 of the ‘332 patent (below) illustrates an example wherein two

different UEs have different decoding positions under a specific CCE aggregation

level condition.


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A region that each UE needs to attempt to decode to receive a PDCCH is

referred to as a search space. (Id. at 5:52-53). In the example of Fig. 3, both a

UE 1 and a UE 2 have a CCE aggregation level 1 but have different decoding

search spaces. (Id. at 5:53-55).

The '332 patent describes different methods for setting the search space for

each UE. In the first method, a search space having a different start point (or start

position) and a predetermined number of CCEs arranged starting from the start

point is allocated to each UE so that each UE has a different search space. (Id. at

5:60-63). In the second method, a search space having a different start point and a


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predetermined number of CCEs arranged at regular intervals starting from the start

point is allocated to each UE so that each UE has a different search space. (Id. at

5:64-67).

The '332 patent describes that determining a value C for a PDCCH to be

currently received can be set to be equal to a value obtained by dividing the total

number of physical CCEs by a CCE aggregation level (for example, 1, 2, 4, or 8)

which is the number of CCEs that can be used to transmit one PDCCH. (Id. at 7:9-

14). C is shown below:

In this case, floor(x), represents a function to quantize x to a largest integer

that is equal to or less than x, NCCE represents the total number of CCEs in a

specific subframe, and LCCE is the number of CCEs that are used to transmit one

PDCCH. (Id. at 7:22-27).

The '332 patent describes a first embodiment to obtain a value by performing

a first modulo operation of an input value of x with a predetermined constant value

of D and then performing a second modulo operation of the resulting value with a

variable value of C corresponding to the number of candidate start positions that

can be used as start positions is used as a search space start position for control

information search. (Id. at 8:7-13). The following formula is used:


13

In this embodiment, an initial value yk be input and then be multiplied by A.

The sum of the initial value yk multiplied by A and a constant B be modded with a

variable D, and then this result modded with a constant D to generate a final

integer as a start position value of a search space. The finally generated value Zk in

Mathematical Expression 3 indicates a start position of a PDCCH search space in a

subframe corresponding to an index k. (Id. at 8:22-29).

The '332 patent describes that the purpose of performing a modulo operation

with the value C defined as in Mathematical Expression 2 is to obtain an output

value that is one of the candidate start positions. (Id. at 8:53-59).

The '332 patent explains that the reason for performing another modulo

operation with D before the modulo operation with C to obtain a value within a

desired range is that, even when values of Ax + B are different in Mathematical

Expression 3, there is high possibility that corresponding final values obtained by

performing a modulo operation of the values Ax+B with C are likely to be equal if

the value C is small. (Id. at 8:60-64).


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The possibility that different values of Ax+B cause collision such that they

produce the same final value through the modulo operation with the small value C

can be reduced by performing another modulo operation with the predetermined

constant D. (Id. at 8: 64 to 9:1).

C. Prosecution History of the '332 Patent

The '332 patent issued on September 13, 2011 from an application filed

December 8, 2010. The '332 patent is a continuation of the '004 patent, which

issued from an application filed October 15, 2008. The '004 patent claims the

priority benefit of U.S. Provisional Application Nos. 61/029,576 and 61/037,000,

filed on February 19, 2008 and March 17, 2008. Thus, the earliest possible

effective filing date the '332 patent is February 19, 2008.

The '332 patent was allowed without any office actions rejecting the claims.

A first Notice of Allowance was issued on February 10, 2011, in which the

Examiner provided a statement of reasons for allowance stating that U.S. Pub. No.

2009/0088148 to Chung et al. (Ex. 1007, "Chung") and U.S. Pub. No.

2009/0197630 to Ahn et al. (Ex. 1008, "Ahn") fail to disclose " wherein the ‘L'

CCEs corresponding to a specific PDCCH candidate among the set of PDCCH

candidates of the search space at the subframe k are contiguously located from a

position given by using a variable of Yk for the subframe k and a modulo ‘C'

operation, wherein ‘C' is determined as ‘floor(N/L)', wherein ‘N' represents a total


15

number of CCEs in the subframe k, and wherein Yk is defined by:

Y k=(A*Y k−1)mod D, wherein A and D are predetermined constant values." (Ex.

1002 at 160).

A second Notice of Allowance was issued on May 20, 2011 following a

Request for Continued Examination (RCE) and an Information Disclosure

Statement (IDS) submitted the Applicant on May 11, 2011. The second Notice of

Allowance included the same reasons for allowance addressing Chung and Ahn as

were included in the first Notice of Allowance. (Ex. 1002 at 75).

D. Overview of the Prior Art

1. R1-081101

R1-081101 is entitled "PDCCH blind decoding - Outcome of offline

discussions." This document was published on February 15, 2008 as part of the

3GPP TSG RAN WG1 Meeting #52 which took place in Sorrento, Italy, February

11 – 15, 2008. (Ex. 1009 at 7; Ex. 1010 at 2). Among the topics described in the

slides is an explanation of a search space as follows:


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(Ex. 1004, at 3).

R1-081101 further describes the concept of the UE (User Equipment) search

space as follows:


17

In particular, R1-081101 describes that a starting point of a UE-specific

search space can be found by the hashing function:

Start = (K*x+L) mod floor(#CCEs / aggregation_level)

2. Knuth

Knuth is a textbook directed seminumerical algorithms and in particular to

the generation of random numbers. Section 3.2 of Knuth is directed to generating

uniform random numbers and Section 3.2.1 is directed to the "Linear Congruential

Method" which describes the "Linear Congruential Sequence" as follows:


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(Ex. 1005 at 11).

Knuth further describes that setting c = 0 is a special case which allows

faster generation of numbers. (Ex. 1005 at 10). Knuth describes that the multiplier

a should be relatively prime to the modulus m. (Id. at 13). Knuth further

describes common values for the modulus m for common computer word sizes,

which includes the value 65537. (Id. at 15).

3. L'Ecuyer

L'Ecuyer is directed to a method of combining linear congruential

generators in order to generate a random number sequence that has an improved

period. (Ex. 1015 at 2). L'Ecuyer describes using the linear congruential generator

identical to the one described in Knuth when c = 0, which it refers to as a

multiplicative linear congruential generator (MLCG). (Id. at 1 and Ex. 1013 at

¶¶95-96).


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L'Ecuyer describes that the state of a generator evolves according to the

recursion:

(Ex. 1015 at page 1, right column)

L'Ecuyer describes that the period is the smallest value of p which satisfies:

(Id.)

Thus, the period is the smallest number of outputs of a generator before it

outputs the same value, which may also be referred to as a collision or overlap.

(Ex. 1013 at ¶99). Therefore, it is evident that a maximum value of p may be

desirable when designing a generator. (Id.) L'Ecuyer explains that the maximal

period of a generator is equal to p = m - 1, where m is the modulus of the

generator. (Ex. 1015 at 2, left column).

L'Ecuyer describes that any single generator can be split into a combination

of MLCGs as follows.

(Id. at 2).


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L'Ecuyer further describes that using combined MLCGs can increase the

period of a sequence of random generated numbers when the modulus is too short

which results in a period that is too short. (Id. and Ex. 1003 at ¶101) L'Ecuyer

describes using the following lemma.

(Id. at 2-3).

Lemma 1 shows that the potential benefit in combining two MLCGs is that

the first MLCG will generate a uniform random distribution of numbers that when

modded with d generates a uniform distribution between 0 and d-1, which

increases the chance of increasing the period and avoiding collisions. (Ex. 1003,

¶102).


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VI. PERSON OF ORDINARY SKILL IN THE ART

The level of ordinary skill in the art is evidenced by the prior art, among

other things. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)

(determining that the Board did not err in adopting the approach that the level of

skill in the art was best determined by references of record). The prior art discussed

herein, and in the declaration of Paul Min, Ph.D., demonstrates that a person of

ordinary skill in the art in the field of the '332 patent would have been someone

with an undergraduate degree in Electrical Engineering, Computer Science, or

Computer Engineering, or a related field, and around two years of experience in

the design or development of cellular networks or equivalent combination of

education and experience. (Ex. 1003 at ¶29). Such a person would have been

familiar with the proposals made at the 3GPP standards setting meetings, such as

R1-081101. (Id.)


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VII. CLAIM CONSTRUCTION

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). Thus, as required by the

rules, this Petition uses the BRI standard.

"contiguously located from a position"

Claims 1 and 6 recite the phrase "the ‘L' CCEs corresponding to a specific

PDCCH candidate among the set of PDCCH candidates of the search space at the

subframe k are contiguously located from a position given by using a variable of

Yk for the subframe k and a modulo ‘C' operation, wherein ‘C' is determined as

‘floor(N/L)', wherein ‘N' represents a total number of CCEs in the subframe k."

The '332 patent does not explicitly mention this phrase, nor does it use any

form of the word "contiguous." The '332 patent does describe " the index position

corresponding to the determined value may correspond to a start position of a CCE

aggregation corresponding to the determined value under the assumption that

indices are assigned on a CCE aggregation basis." (Ex. 1001 at 3:29-32).

Therefore, the phrase "contiguously located from a position" should be

interpreted to indicate that the object of this phrase, such as a plurality of CCEs,

are sequentially location from a starting point without any gaps or breaks in the

sequence. (Ex. 1003 at ¶82).


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"using a variable of Yk "






The '332 patent shows different variations in which a variable is used in

conjunction with a modulo operation, such as the following.

(Ex. 1004 at 8:16).

(Id. at 9:54).

Therefore, the phrase "using a variable of Yk " should be interpreted to

indicate that a variable Yk is included in a particular formula without specifying a

particular type of operation (multiplication , addition, etc.) that is required to be

performed using this variable. (Ex. 1003 at ¶85).

modulo 'C' operation


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The '332 patent describes the following:

This embodiment suggests that a value obtained by performing

a first modulo operation of an input value of "x" with a predetermined

constant value of "D" and then performing a second modulo operation

of the resulting value with a variable value of "C" corresponding to

the number of candidate start positions that can be used as start

positions is used as a search space start position for control

information search.

Specifically, this embodiment suggests that a start position be

determined in the following manner.

Z k=[(A·y k +B)mod D] mod C

Therefore, the phrase "modulo 'C' operation' should be interpreted to

mean a mathematical operation in which C is the modulus in a modulo

operation such as XmodC. (Ex. 1003 at ¶88).


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VIII. GROUNDS OF UNPATENTABILITY

Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), this section demonstrates that

claims 1-3, 5-8, and 10 of the '332 patent are unpatentable.

A. Claims 1-3, 5-8, and 10 are unpatentable as obvious over R1-081101 in view of Knuth and L'Ecuyer

As provided by the following element-by-element analysis as well as the

declaration of Paul Min, Ph.D. (Ex. 1003), claims 1-3, 5-8, and 10 of the '332

patent are unpatentable over R1-081101 in view of Knuth and L'Ecuyer. Because

the challenged claims contain mathematical functions and the prior art uses

different variables and constants to describe the same functions, the chart below is

provided to map the claimed variables expressions to the corresponding terms in

the prior art.

Claim 1 term Prior art term

modulo ‘C' operation, wherein ‘C' is determined as ‘floor(N/L)'

mod floor(#CCEs / aggregation_level)

(Ex. 1004 at 6).

Y k=(A*Y k−1)mod D. X n + 1=(aXn + c)mod m (Ex. 1005 at 9).

"The special case c = 0 deserves explicit mention, since the number generation process is a little faster when c = 0 than it is when c ≠ 0." (Ex. 1005 at 10).

(Ex. 1003 at ¶104)


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Claim 1[preamble]: "A method for decoding control information by a User Equipment (UE), the method comprising:"

To the extent that the preamble is limiting, R1-081101 explicitly describes a

method for a user equipment (UE) performing blind decoding of the Physical

Downlink Control Channel (PDCCH) (Ex. 1004 at 1, 3, 4, and 7). A person of

ordinary skill in the art would have known that the PDCCH is the channel used by

the base stations to send control information in the 3GPP LTE communication

standard (Ex. 1003, ¶105).

Claim 1[a]: "receiving a Physical Downlink Control Channel (PDCCH) from a base station at subframe k; and"

A person of ordinary skill in the art would have known that a UE operating

under the 3GPP LTE standard, as described in R1-081101, performs "receiving a

Physical Downlink Control Channel (PDCCH) from a base station at subframe k."

(Id. at ¶106). In any case, R1-081101 explicitly describes "UE performs blind

decoding of all PDCCH payloads possible for the given aggregation level and

search space." (Ex. 1004, at 3). R1-081101 also describes that the "[s]ubframe

number" is an input to a hashing function used by the UE (Id. at 6).

Claim 1[b]: "decoding a set of PDCCH candidates within a search space of the PDCCH at the subframe k,"

R1-081101 explicitly describes "UE performs blind decoding of all PDCCH

payloads possible for the given aggregation level and search space." (Ex. 1004 at


27

3). A person of ordinary skill in the art would understand that the description of

"all PDCCH payloads" is a set of PDCCH candidates. (Ex. 1003, ¶ 107).

Additionally, R1-081101 explicitly describes that the UE-specific search space is

based on a given "[s]ubframe number." (Ex. 1004. at 6).

Claim 1[c]: "wherein each of the set of PDCCH candidates comprises ‘L' control channel elements (CCEs),"

R1-081101 explicitly describes using a "[s]et of aggregated CCEs [with a

certain aggregation level]" as a search space." (Ex. 1004. at 3). R1-081101

describes using aggregation levels of 1, 2, 4, and 8. (Id. at 5). A person of

ordinary skill in the art would understand that the aggregation level number in the

3GPP LTE standard refers to the number of CCEs in a PDCCH. (Ex. 1003, ¶108).

A person of ordinary skill in the art would thus understand these descriptions in

R1-081101 indicate that each search space (PDCCH candidate to be searched) has

a fixed number ("L") of CCEs. (Id.)

Claim 1[d]: "wherein the ‘L' CCEs corresponding to a specific PDCCH candidate among the set of PDCCH candidates of the search space at the subframe k are contiguously located from a position"

R1-081101 explicitly describes that for "CCEs in a search space," "CCEs in

a set are contiguous." (Ex. 1004 at 3). A person of ordinary skill in the art would

understand that the first CCE in the contiguous set is a "position" from which the

CCEs are contiguously located. (Ex. 1003, ¶109). This "position" thus represents


28

a starting point for the search space. R1-081101 then explicitly describes a method

of determining a "starting point" of the "UE-specific search space. (Ex. 1004 at 6).

Claim 1[e]: "given by using a variable of Yk for the subframe k and a modulo ‘C' operation, wherein ‘C' is determined as ‘floor(N/L)', wherein ‘N' represents a total number of CCEs in the subframe k, and"

R1-081101 describes a hashing function for finding the starting point

("position") of the UE-specific search space for a given subframe number as

follows:

Start = (K*x+L) mod floor(#CCEs / aggregation_level)

(Ex. 1004 at 6).

Therefore, R1-081101 explicitly describes "a modulo ‘C' operation, wherein

‘C' is determined as ‘floor(N/L)', wherein ‘N' represents a total number of CCEs in

the subframe k." (Ex. 1003 at ¶111). The "aggregation level" shown in the

hashing function of R1-081101 corresponds to the total number of CCEs

corresponding to a PDCCH candidate, as was the case in the '332 patent itself.

(Ex. 1001 at 7:9-27; Ex. 1003, ¶ 111).

Additionally, the function "(K*x + L)" from the hashing function in R1-

081101 can be interpreted to correspond to "Yk" in claim 1[e]. (Ex. 1003, ¶112).


29

Claim 1[f]: "wherein Yk is defined by: Y k=(A*Y k−1)mod D, wherein A, and D are predetermined constant values."

R1-081101 does not explicitly describe that "Y k=(A*Y k−1)mod D."

However, as evidenced by Knuth, "(A*Y k−1) mod D" is merely a well-known

formula for generating pseudo-random numbers referred to as a linear congruential

sequence, as follows. (Ex. 1003 at ¶113).

(Ex. 1005 at 11).

Therefore, the formula for Y k in claim 1 of the '332 patent is merely a

known method for generating pseudo random numbers within a set number space.

(Ex. 1003 at ¶114). In the case of claim 1, c from equations (1) and (2) of Knuth is

set to zero. (Id.) Knuth explicitly describes setting c to zero as a special case

which allows faster generation of numbers. (Ex. 1005 at 12).


30

Therefore, all of the elements of claim 1 of the '332 patent are disclosed in

R1-081101 and Knuth. (Ex. 1003 at ¶115).

A person of ordinary skill in the art at the time of the Alleged Priority Date

would have been motivated to modify R1-081101 based on the teachings of Knuth

to modify the starting point determination formula disclosed in R1-081101 to

include the linear congruential sequence ("X n + 1 = (AXn) mod m"), instead of a

linear function ("K*x + L"), for at least each of the following reasons.

First, standard linear functions and linear congruential sequence functions

are used in the same general field of endeavor for the same purpose of generating a

sequence of numbers. (Ex. 1003, ¶117). As recognized by the Supreme Court,

known work in one field of endeavor may prompt variations of it for use in either

the same field or a different one based on design incentives or other market forces

if the variations are predictable to a POSITA. KSR Int'l Co. v. Teleflex Inc., 550

U.S. 398, 417 (2007).)

Second, the function disclosed in R1-081101, after undergoing the modulo

operation, and the linear congruential random number generator disclosed in Knuth

are alternative methods for generating random numbers. (Ex. 1003 at ¶118).

Thus, it would have been obvious for a POSITA to have replaced the linear

function disclosed in R1-081101 with the linear congruential sequence as disclosed


31

in Knuth as the linear congruential sequence is merely a known and predictable

variation of a linear function sequence. (Id. at ¶119).

Third, the concept of combining two hash functions such as two linear

congruential sequences together is well-known in the prior art. (Id. at ¶120). As

discussed supra III.A, and as evidenced by L'Ecuyer, any single generator can be

split into a combination of linear congruential generators (Ex 1015. at 2, left

column; Ex. 1003 at ¶120). L'Ecuyer further describes that using combined linear

congruential generators can increase the period of a sequence of random generated

numbers when the modulus is too short which results in a period that is too short.

(Id.) Notably, R1-081101 teaches a linear congruential generator of the following

form (annotated from slide 6 of R1-081101).

(see Ex. 1004 at 6; Ex. 1003 at ¶120).

Therefore, the output of this generator shares the same objective as in the

generator defined in claim 1 of the '332 patent: output a position that will be an

integer value that is no greater than the total number of PDCCH candidates (having

the defined aggregation level) minus one. (Ex. 1003 at ¶121). Consider Fig. 2 of

the '332 patent below.


32

In the example of Fig. 2, for an aggregation level of 4 (see CCE level 4

above in Fig. 2), there are a total of 20 CCEs and 5 PDCCH candidates in the

subframe. (Ex. 1003 at ¶122). Therefore, given these inputs, the output of the

generator in both claim 1 and R1-081101 must output a number between 0 and 4.

Therefore, a person of ordinary skill in the art would clearly want to maximize the

period of this generator since it is clear that there is a very finite set of values

which can be outputted before a repeated value (collision) occurs. (Id.) L'Ecuyer

explicitly teaches that one way to maximize the period is to use a another linear

congruential generator which provides a uniform distribution of values to get

modded with the target modulus. (Ex. 1015 at 2, left column; Ex. 1003 at ¶122).

The result of combining L'Ecuyer's teaching with R1-081101 is that ideally each


33

index 0 through 4 gets outputted in the sequence before any repeat values occur

(i.e., the maximum period is achieved), thus minimizing collisions and possibly

avoiding collisions all together if the number of UEs in the system is 5 or fewer in

this example. (Ex. 1003 at ¶122).

Therefore, a person of ordinary skill in the art would be motivated to use a

first linear congruential generator as described in Knuth ("X n + 1 = (AXn) mod m")

to generate a sequence of outputs that will be uniformly distributed and result in an

increased period when modded with the linear congruential generator described in

R1-081101 ("mod floor(#CCEs / aggregation_level)"). (Id. at ¶123).

For at least the same reasons a POSITA would have also had a reasonable

expectation of success in combining R1-081101, Knuth, and L'Ecuyer. (Id. at

124).

Thus, claim 1 is obvious over the combination of R1-081101, Knuth, and

L'Ecuyer. (Id. at ¶125).

Claim 2: "The method of claim 1, wherein A and D are 39827 and 65537, respectively."

Knuth describes common values for the modulus "m" for common computer

word sizes, which includes the value 65537. (Id. at 13). Knuth describes that the

multiplier "a" should be relatively prime to the modulus "m". (Id. at 11). A


34

person of ordinary skill in the art would recognize that both 39827 and 65537 are

prime numbers. (Ex. 1003 at ¶126.)

Therefore, it would have been a matter of routine experimentation for a

POSITA to arrive at using the values 39827 and 65537 as the values for "A" and

"D" corresponding to the linear congruential sequence disclosed by Knuth. (Ex.

1003, ¶127). Further, a POSITA would have a reasonable expectation of success

in using these values based on the explicit teaching of Knuth to use values for "A"

and "D" which are relatively prime to each other, and in further view that Knuth

already explicitly discloses 65537 as a known modulus value. (Id.)


L'Ecuyer.

Claim 3: "The method of claim 1, wherein ‘L' is one of 1, 2, 4 and 8."

The number of control channel elements in the PDCCH candidate is

represented by L, which a POSITA would understand to be the number of

aggregation levels. (Ex. 1003 at ¶129). R1-081101 describes using aggregation

levels ("L") are 1, 2, 4, and 8 (Ex. 1004 at 2). Additionally, these aggregation

levels are well understood as standard aggregation levels in the 3GPP standard (Ex.

1003 at ¶129).


35


L'Ecuyer. (Id. at ¶130).

Claim 5: "The method of claim 1, wherein the ‘L' CCEs corresponding to a first PDCCH candidate among the set of PDCCH candidates of the search space at the subframe k are located at positions given by: L*{(Y k)mod(floor(N/L))}+i, wherein i=0, . . . , L−1."

R1-081101 describes finding the "start point" for the UE specific search

space for a given aggregation level. (Ex. 1004 at 6). As discussed above, it would

be obvious to combine R1-081101, Knuth, and L'Ecuyer to achieve "(Y k) mod

(floor(N/L))". (Ex. 1003 at ¶131). The term "floor (N/L)" indicates that the

claimed "position" determined in claim 1 is in units of aggregations. (Id.) For

example, in annotated Fig. 2 of the '332 patent (below), if L = 4 (CCE Level 4), the

"position" would be a number between 0 and 4 corresponding to one of the five

boxes shown for CCE level 4. (Id.) Thus, the formula (Y k)mod(floor(N/L))

outputs an index value for an aggregation of CCEs for a PDCCH candidate

according to the aggregation level.


36

(Id.)

The same is true for R1-081101, where "Start = (K*x+L) mod floor (#CCEs

/ aggregation_level)." In practice, however, a UE must know which specific

CCEs to decode. (Id. at ¶ 132). Thus, it would be obvious to a person of ordinary

skill in the art that to translate the index value obtained with

"(Y k)mod(floor(N/L))" to the first CCE position in the group merely requires

multiplying by L. (Id.) It would further be obvious to a person of ordinary skill in

the art that each of the CCE positions in the group having a size L are characterized

by a start position plus a value i=0, . . . , L−1. (Id.) R1-081101 explicitly states all

CCEs in a single PDCCH must be contiguous. (Ex. 1004 at 3). Therefore, since

R1-081101 also determines a "start" number in units of aggregations, it would be a


37

matter of routine experimentation for a person of ordinary skill in the art to

similarly translate a start value representing an aggregation of CCEs into the actual

position values of the CCEs in this group by multiplying by the aggregation level L

and then incrementing by one as necessary until the last CCE in the group is

reached. (Ex. 1003 at ¶132).


L'Ecuyer. (Ex. 1003 at ¶133).

Claim 6[preamble]: "A user equipment (UE) for decoding control information, the UE comprising:"

Claims 6-8 and 10 are directed to an apparatus for performing the method

steps in claims 1-3 and 5 and are therefore obvious over R1-081101, Knuth, and

L'Ecuyer for the same reasons. (Ex. 1003 at ¶134). This subsection and the

following subsections identify the method claim elements in claims 1-3 and 5 that

correspond to apparatus claim elements in claims 6-8 and 10.

See supra Section VIII.A, Claim 1.

Claim 6[a]: "a receiver for receiving a Physical Downlink Control Channel (PDCCH) from a base station at subframe k; and"

See supra Section VIII.A, Claim 1[a].

Claim 6[b]: "a decoder for decoding a set of PDCCH candidates within a search space of the PDCCH at the subframe k,

See supra Section VIII.A, Claim 1[b].


38

Claim 6[c]: "wherein each of the set of PDCCH candidates comprises ‘L' control channel elements (CCEs),"

See supra Section VIII.A, Claim 1[c].

Claim 6[d]: "wherein the ‘L' CCEs corresponding to a specific PDCCH candidate among the set of PDCCH candidates of the search space at the subframe k are contiguously located from a position

See supra Section VIII.A, Claim 1[d].

Claim 6[e]: "given by using a variable of Yk for the subframe k and a modulo ‘C' operation, wherein ‘C' is determined as ‘floor(N/L)', wherein ‘N' represents a total number of CCEs in the subframe k, and"

See supra Section VIII.A, Claim 1[e].

Claim 6[f] "wherein Yk is defined by: Y k=(A*Y k−1)mod D, wherein A, and D are predetermined constant values."

See supra Section VIII.A, Claim 1[f].

Claim 7: "The UE of claim 6, wherein A and D are 39827 and 65537, respectively.


Claim 8: "The UE of claim 6, wherein ‘L' is one of 1, 2, 4 and 8"


Claim 10: "10. The UE of claim 6, wherein the ‘L' CCEs corresponding to a first PDCCH candidate among the set of PDCCH candidates of the search space at the subframe k are located at positions given by: L*{(Y k)mod(floor(N/L))}+i, wherein i=0, . . . , L−1."



39

IX. CONCLUSION

Substantial, new, and noncumulative technical teachings have been

presented for each of claims 1-3, 5-8, and 10 of the '332 patent, which claims are

rendered obvious for the reasons set forth above. There is a reasonable likelihood

that Petitioner will prevail as to each of these claims. Therefore, inter partes

review of claims 1-3, 5-8, and 10 should be instituted.

Respectfully submitted,

BlackBerry Corp., Petitioner By: /Robert C. Mattson/ Robert C. Mattson Registration No. 42,850

Customer Number

22850 Tel: (703) 413-3000 Fax: (703) 413 -2220 (OSMMN 07/09)


Appendix – List of Exhibits Exhibit No. Description

1001 U.S. Patent No. 8,019,332 to Lee et al.

1002 File History for U.S. Patent No. 8,019,332 to Lee et al.

1003 Declaration of Paul Min, Ph.D.

1004 Ericsson, "PDCCH blind decoding – Outcome of offline discussions," Doc. No. R1-081101, 3GPP TSG-RAN WG1 #52 (published Feb. 15, 2008)

1005 Donald E. Knuth, "The Art of Computer Programming, Volume 2, Seminumerical Algorithms," Sections 3.1-3.2: (1981)

1006 U.S. Pub. No. 2006/0271539 to Loeb

1007 U.S. Pub. No. 2009/0088148 to Chung et al.

1008 U.S. Pub. No. 2009/0197630 to Ahn et al.

1009 FTP of meeting #R1-52 documents uploaded onto http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_52/Docs/

1010 Description of 3GPP TDocs (written contributions) at Meeting R1-52 posted on http://www.3gpp.org/DynaReport/TDocExMtg--R1-52--26784.htm

1011 3GPP TS 36.211 V8.0.0: 3rd Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA); Physical channels and modulation (September 2007) ("3GPP Release 8)

1012 Motorola, " Search Space Definition: Reduced PDCCH Blind Detection for Split PDCCH Search Space," 3GPP TSG RAN1#50 Shanghai, China, 8-12 October, 2007 (R1-073996)

1013 Nokia, "Tree Structure for the DL Control Channel," 3GPP TSG-RAN WG1 Meeting #48, St. Julian's, Malta, 26 – 30 March, 2007 (R1-071683)


Exhibit No. Description 1014 Nokia, "About decoding complexity of the Downlink Control

Channels," 3GPP TSG RAN WG1 #48, St Julians, Malta, March 26 - 30, 2007 (R1-071685)

1015 Pierre L'Ecuyer, "Efficient and Portable Combined Random Number Generators". Communications of the ACM. (June 1988, Volume 31: pp. 742–749)

1016 Curriculum Vitae of Paul Min, Ph.D.


CERTIFICATE OF WORD COUNT

Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing

document, excluding the portions exempted under 37 C.F.R. § 42.24(a)(1),

contains 7,472 words, including the words added in annotating the figures, which

is under the limit of 14,000 words set by 37 C.F.R. § 42.24(a)(1)(i).

Dated: January 23, 2017 By: /Robert C. Mattson/ Robert C. Mattson Registration No. 42,850


CERTIFICATE OF SERVICE

I hereby certify that, on January 23, 2017, I caused a true and correct copy of

the foregoing Petition for Inter Partes Review of U.S. Patent No. 8,019,332 and

supporting materials to be served via UPS overnight delivery at the correspondence

address of record for the '332 patent:

NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR

ARLINGTON VA 22203

Eric M. Albritton Shawn A. Latchford Albritton Law Firm 222 North Fredonia

P O Box 2649 - 75606 Longview, TX 75601

Eric Sean Tautfest

James Joseph Ormiston Jared M Hoggan Mara Jill Bindler

J Cary Gray Gray Reed & McGraw, PC - Dallas

1601 Elm Street Suite 4600

Dallas, TX 75201

/Robert C. Mattson/

Robert C. Mattson Registration No. 42,850

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