Cradlepotnt, Inc. v. Sisvel Int'l S.A.

• Docket Number: IPR2020-01099,Patent 6,529,561 B2
• Decision Date: 18 January 2022
• Parties: CRADLEPOTNT, INC., SIERRA WIRELESS, INC., and THALES DIS AIS DEUTSCHLAND GMBH, Petitioner, v. SISVEL INTERNATIONAL S.A., Patent Owner. 35U.S.C. § Limitation Function Corresponding Structure Chen Ex. 1003, 14:4-6, 13-18 `56l patent: Figure 4 Ex. 1001, 7:34-52 Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatentable Claims Not Shown Unpatentable
• Court: Patent Trial and Appeal Board

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CRADLEPOTNT, INC., SIERRA WIRELESS, INC., and THALES DIS AIS DEUTSCHLAND GMBH, Petitioner,
v.
SISVEL INTERNATIONAL S.A., Patent Owner.

IPR2020-01099

Patent 6, 529, 561 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 18, 2022

FOR PETITIONER: Kourtney Mueller Merrill Amanda Tessar David St. John-Larkin Roderick O'Dorisio PERKINS COIE LLP JohnHutchins Chunshi Mu Wesley Jones BANNER & WITCOFF, Brian Buroker Nathan Curtis PaulTorchia GIBSON, DUNN &CRUTCHER LLP Meredith Addy Robert Hart ADDYHART P.C.

FOR PATENT OWNER: Timothy Devlin Neil Benchell Stephanie Berger Andrew DeMarco DEVLIN LAW FIRM LLC

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

JUDGMENT FINAL WRITTEN DECISION DETERMINING SOME CHALLENGED CLAIMS UNPATENTABLE 35 U.S.C.§318(A)

ULLAGADDI, Administrative Patent Judge.

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I. INTRODUCTION

Cradlepoint, Inc., Dell Inc., Sierra Wireless, Inc., Thales DIS AIS Deutschland GmbH, ZTE Corporation, and ZTE (USA) Inc. filed a Petition requesting an inter partes review of claims 1-10 of U.S. Patent No. 6, 529, 561 B2 (Ex. 1001, "the'561 patent"). Paper6 ("Pet"). As ZTE Corporation and ZTE (USA) Inc. have entered into a settlement agreement with Sisvel Internationals. A. ("Patent Owner") Patent Owner resolving their disputes concerning the '561 patent, we terminated these entities from the proceeding. Papers 34, 35, 36; Ex. 2009. Based on similar filings, we also terminated Dell Inc. from the proceeding. Papers 47, 48, 49; Ex. 2010. In this Decision, we collectively refer to the remaining entities— Cradlepoint, Inc., Sierra Wireless, Inc., and Thales DIS AIS Deutschland GmbH—as "Petitioner."

Sisvel International S.A. ("Patent Owner") filed a Preliminary Response. Paper 10 ("Prelim. Resp."). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 ("Institution Decision" or "Inst. Dec").

Patent Owner thereafter filed a Response to Petition (Paper 25, "PO. Resp."), Petitioner filed a Reply (Paper 30, "Pet. Reply"), and Patent Owner filed a Sur-Reply (Paper 33, "PO Sur-Reply"). An oral hearing was held on October 19, 2021, and a transcript of the hearing (Paper 50, "Tr.") has been entered into the record.

II. BACKGROUND

A. Related Proceedings

The parties identify the following matters related to the '561 patent:

Sisvel International SA et al. v. ZTE (USA), Inc. et al, Case No. 3:19-cv-Ol694(N.D. Tex.) (filed July 15 2019)

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Sisvel International SA v. Dell Inc., Case No 1:19-cv-01247(D. Del.) (filed July 1, 2019)

Sisvel International SA v. Any Data Corporation, Case No. 1:19-cv-01140 (D. Del.) (filed June 20, 2019);

Sisvel International SA v. Blu Products, Inc., Case No. 1:19-cv-01141 (D. Del.) (filed June 20, 2019, transferred to S.D. Fla. as Case No. 1:20-cv-20813);

Sisvel International SA v. Cradlepoint, Inc., Case No. 1:19-cv-01142 (D. Del.) (filed June 20, 2019);

Sisvel International SA v. Honeywell International, Inc., Case No. 1:19-cv-01143(D.Del.)(filed June20, 2019);

Sisvel International SA v. Verifone Systems, Inc., Case No. 1:19-cv-01144 (D. Del.) (filed June 20, 2019);

Sisvel International SA v. Xirgo Technologies, LLC, Case No. 1:19-cv-01145 (D. Del.) (filed June20, 2019);

Sisvel International SA et al. v. Tesla, Inc., Case No. 1:19-cv-02288 (D. Del.) (filed Dec. 17, 2019);

Sisvel International S. A. v. Blu Products, Inc., Case No. 1:20-cv-20813 (S.D. Fla.) (filed Feb. 25, 2020); and u-blox AG et al. v. Sisvel International SA et al., Case No. 3:20-cv-00494(S.D. Cal.)(filed Mar. 16, 2020). Pet.2;Paper7, 1-2.

B. The '561 Patent

The '561 patent is titled "Data Transmission in Radio System" and concerns the application of differing puncturing patterns to an original transmission of a coded data block and to a retransmission of the coded data block. Ex. 1001, codes (54), (57). The'561 patent discloses channel-coding a data block to obtain a coded data block "by using a selected channel

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coding." Id. at 7:21-22. In the example depicted in Figure 4, coded data block 402 has a code rate of 1/3 because each data symbol has three corresponding channel-coded symbols. Id. at 7:23-25.

Coded data block 402 is punctured by removing a certain number of channel-coded symbols according to first puncturing pattern 404. Id. at 7:34-39. The '561 patent exemplifies first puncturing pattern 404 with bits 011011011. Id. at 7:39-40. The '561 patent explains that "[t]he 0 bit denotes that the channel-coded symbol located at the point in question is removed, while the 1 bit is not removed." Id. at 7:40-42. Punctured coded data block 408 punctured by first puncturing pattern 404 is transmitted, in an original transmission, to a receiver. Id. at 7:46-48. Thus, the original transmission comprises the second, third, fifth, sixth, eighth, and ninth channel-coded symbols, because the first, fourth, and seventh symbols are removed by the first puncturing pattern (i. e., as denoted by the 0 bits in the puncturing pattern). Id. at 7:49-52.

When the receiver is unable to decode coded data block 408, a retransmission request is transmitted to the transmitter. Id. at 7:55-56, 60-61. The receiver's capability to decode is detected "either by an error detection code or by the fact that an error correcting code cannot correct errors occurring on the channel with sufficient certainty." Id. at 7:56-59. The '561 patent discloses that "the code rate of the coded data block to be retransmitted is increased... by puncturing the coded data block 402" using second puncturing pattern 406. Id. at 8:4-8. Second puncturing pattern 406 removes more symbols than first puncturing pattern 404. Id. at 8:8-10. The '561 patent discloses that, "[i]n the example of FIG. 4, the second puncturing pattern 406 comprises bits 100100100," which determines that "only the first and the third symbol thereafter are retained, while other

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symbols are removed." Id. at 8:10-13. In the example, "the punctured and coded data block 410 used in this retransmission comprises symbols 101, i. e. the first, fourth, and seventh symbol of the original channel-coded block 402." Mat8:17-20.

Next, "the received coded data block 408 punctured by the first puncturing pattern 404 and the received coded data block 410 punctured by the second puncturing pattern 406 are combined," which is possible because "both [coded] data blocks 408, 410 are punctured versions of the same coded data block 402." Id. at 8:21-26. In the example of Figure 4:

The second, third, fifth, sixth, eighth and ninth symbol of a combined coded data block 412 are obtained from the coded data block 408 punctured by the first puncturing pattern 404, and the first, fourth and seventh symbol are obtained from the coded data block 410 punctured by the second puncturing pattern 406.

Id. at 8:26-32. Finally, combined coded data block 412 is decoded using, for example, a Viterbi decoder. Id. at 8:42-43.

C Challenged Claims

Petitioner challenges claims 1-10 of the '561 patent. Claim 1, 5, 9, and 10 are independent. Independent claims 1 and 10 are reproduced below.

1. A method of transmitting data in a radio system from a transmitter to a receiver, the method comprising:

channel coding a data block into a coded data block by using a selected channel coding;

puncturing the coded data block by using a first puncturing pattern;

transmitting the coded data block punctured by the first puncturing pattern to the receiver;

detecting a need for retransmission of the received coded data block;

transmitting a retransmission request of the coded data block to the transmitter;

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increasing the code rate of the coded data block to be retransmitted by puncturing the coded data block coded by the channel coding of the original transmission using a second puncturing pattern including fewer symbols to be transmitted than the first puncturing pattern;

transmitting the coded data block punctured by the second puncturing pattern to the receiver;

combining the received coded data block punctured by the first puncturing pattern and the received coded data block punctured by the second puncturing pattern; and

decoding the channel coding of the combined coded data block.

Ex. 1001, 11:24-49.

10. A radio receiver comprising:

reception means for receiving a coded data block channel coded by a selected channel coding and punctured by a first puncturing pattern;

a channel decoder for decoding the received coded data block;

means for detecting a need for retransmission of the received coded data block; and

means for transmitting a retransmission request of the coded data block to a transmitter;

wherein:

the reception means receive the retransmitted coded data block whose code rate has been increased by puncturing the coded data block coded by the channel coding of the original transmission by using a second puncturing pattern comprising fewer symbols to be transmitted than the first puncturing pattern;

the reception means includes means for combining the received coded data block punctured by the first puncturing pattern and the received coded data block punctured by the second puncturing pattern;

a channel decoder decodes the channel coding of the combined coded data block.

Id. at 13:1-14:12.

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D. Asserted Grounds of Unpatentability

Petitioner challenges claims 1-10 as follows. See Pet. 7.

Claims Challenged	35U.S.C. §[1]	Reference(s)/Basis
1-3, 5-7, 9, 10	§102	Chen[2]
1-3, 5-7, 9, 10	§103	Chen
1-10	§103	Chen, Eriksson[3]
1-10	§103	Chen, GSM 03.64[4]

Petitioner relies on the First and Second Declarations of Dr...