Telefonaktiebolaget Lm Ericsson & Ericsson Inc. v. K.Mizra, LLC

• Docket Number: IPR2022-00730,Patent 8,958,819 B2
• Decision Date: 26 October 2023
• Parties: TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC., and AT&T SERVICES, INC., Petitioner, v. K.MIZRA LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

1

TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC., and AT&T SERVICES, INC., Petitioner, v. K.MIZRA LLC, Patent Owner.

IPR2022-00730

Patent 8,958,819 B2

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

October 26, 2023

FOR PETITIONER: Jacob K. Baron Jacob W. S. Schneider HOLLAND &KNIGHT LLP

FOR PATENT OWNER: David D. Schumann Palani Rathinasamy Moses Xie FOLIO LAW GROUP PLLC

Before NATHAN A. ENGELS, AARON W. MOORE, and IFTIKHAR AHMED Administrative Patent Judges.

JUDGMENT DETERMINING NO CHALLENGED CLAIMS UNPATENTABLE 35 U.S.C. § 318(A)

AHMED ADMINISTRATIVE PATENT JUDGE.

I. INTRODUCTION

Telefonaktiebolaget LM Ericsson, Ericsson Inc., and AT&T Services, Inc. (collectively, "Petitioner") requested an inter partes review of claims 22, 23, 30, 32, and 33 (the "challenged claims") of U.S. Patent 8,958,819 B2 (Ex. 1001, "the '819 patent"). Paper 3 ("Petition" or "Pet."). K.Mizra LLC ("Patent Owner") filed a Preliminary Response. Paper 9. Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of the challenged claims. Paper 11 ("Inst. Dec.").

After institution, Patent Owner filed a Patent Owner Response (Paper 13, "PO Resp."), Petitioner filed a Reply to Patent Owner's Response (Paper 14, "Pet. Reply"), and Patent Owner filed a Sur-reply (Paper 17, "PO Sur-reply"). An oral hearing was held on July 27, 2003, and a copy of the transcript was entered in the record. Paper 22 ("Tr.").

We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of the claims on which we instituted trial. To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2020). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable.

II. BACKGROUND

A. Real Parties in Interest

Petitioner identifies "Telefonaktiebolaget LM Ericsson and Ericsson Inc. as well as AT&T Services, Inc." as the real parties-in-interest. Pet. 70. Patent Owner identifies itself as the real party-in-interest. Paper 4, 1.

B. Related Proceedings

According to the parties, the '819 patent is asserted in the following litigations in the District Court of the Eastern District of Texas: K.Mizra LLC v. AT&T Corp., No. 2:21-cv-00241-JRG; K.Mizra LLC v. T-Mobile US, Inc., No. 2:21-cv-00242-JRG; and K.Mizra LLC v. Verizon Wireless, No. 2:21-cv-00243-JRG ("District Court litigation"). Pet. 70; Paper 4, 1.

C. The '819 Patent (Ex. 1001)

The '819 patent, titled "Femto-Assisted Location Estimation in Macro-Femto Heterogeneous Networks," was filed on June 21, 2013, and claims priority to a provisional application filed on December 11, 2012. Ex. 1001, codes (22), (54), (60).

The '819 patent concerns location estimation in a macro-femto heterogeneous network for wireless communications. Id. at code (57), 1:14-17, 1:42-47. More specifically, the '819 patent describes that global positioning system techniques generally do not provide reasonable location estimation accuracy for user equipment ("UE") position under non-line-of-sight conditions, especially in heavily obscured environments, such as indoor environments or those with many tall buildings. Id. at 1:31-36. To improve location determination services in such environments, the '819 patent describes a method that may be employed in a heterogeneous network ("HetNet"), which is a network that includes both macro base stations ("mBS") and femto base stations ("fBS"). Id. at 1:42-47. The method includes "receiving base station information related to a user equipment and receiving particle information for a first set of particles corresponding to possible user equipment locations," and "determining user equipment location information based on a first particle filtering technique for particle filtering the first set of particles based on the base station information." Id. at 2:28-36. The '819 patent discloses that many factors can be employed in determining the location of user equipment, including range estimation and angle estimation. Id. at 3:65-4:1. The location determination may also employ particle filtering that "can determine a distribution, e.g., a posterior distribution, etc., of a latent variable at a time specified in a defined state space, e.g., a continuous state space." Id. at 4:24-33. The '819 patent also discloses that "[t]o evaluate a UE location in real time, a sequential Monte Carlo (MC) method, e.g., a particle filter can provide an approach for computing posterior distribution," which is "based on both prior knowledge and a likelihood function of an instantaneous observation." Id. at 5:46-52. The method can "combine a particle filter associated with the position belief information from a fBS with particle expressions to effectively utilize the information from the fBS in determining a location for a UE." Id. at 5:56-59.

Figure 6, reproduced below, is a diagram of a location-determining system as described in the '819 patent.

(Image Omitted)

Figure 6 shows a user equipment (cell phone) that can determine location using information from macro base stations (e.g., mBS1, mBS2, and mBS3) and femto base stations (e.g., fBSi, fBS2, and fBS3). Id. at 16:23-34.

D. Challenged Claims

Petitioner challenges claims 22, 23, 30, 32, and 33, of which claims 22 and 30 are independent claims. Claim 22 is reproduced below with italics added to highlight disputed claim language.

22. A computer-readable storage medium having computerexecutable instructions that, in response to execution, cause a computing device including a processor to perform operations, comprising: receiving femto base station timing information related to a user equipment;

receiving macro base station timing information related to the user equipment;

receiving particle information for a first set of particles corresponding to possible user equipment locations;

receiving femto base station position information; and

determining user equipment location information based on a first particle filtering applied to the first set of particles, the first particle filtering employing the femto base station timing information and the macro base station timing information.

Ex. 1001, 33:45-60 (emphasis added).

Claim 30 is reproduced below with italics added to highlight disputed claim language.

30. A method, comprising:

receiving femto base station timing information related to a user equipment;

receiving macro base station timing information related to the user equipment;

receiving particle information for a first set of particles corresponding to possible user equipment locations;

receiving femto base station position information; and determining user equipment location information based on a first particle filtering for particle filtering the first set of particles based on the base station information.

Id. at 34:36-46 (emphasis added).

E. Prior Art and Instituted Grounds of Unpatentability

We instituted trial based on the following grounds of unpatentability:

Claims Challenged

35 U.S.C. §^[1]

Reference(s)/Basis

22, 30

102

Pakzad^[2]

22, 30

103

Pakzad

23, 32, 33

103

Pakzad, Ketchum^[3]

32, 33

103

Pakzad, Ketchum, Klepal^[4]

Inst. Dec. 38. Petitioner supports its arguments with declaration testimony of Dr. Nicholas Bambos. Exs. 1009, 1017; Pet. 3, 21-62. Patent Owner supports its arguments with declaration testimony of Dr. Douglas A. Chrissan. Ex. 2002.

III. ANALYSIS

A. Principles of Law

"In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable." Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify "with particularity . . . the evidence that supports the grounds for the challenge to each claim")). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).

To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, "the reference need not satisfy an ipsissimis verbis test," i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Further, to be anticipating, a prior art reference must be enabling and must describe the claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).

As set forth in 35 U.S.C. § 103(a),

[a] patent may not be obtained . . . if the differences between the subject matter sought to be patented 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.

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...