iTakeaway: The Board, in interpreting unexpired patent claim terminology using the “broadest reasonable interpretation” standard, is not bound by claim constructions proposed in related judicial or administrative proceedings.
In its Decision, the Board denied institution of inter partes review of claims 1-6, 8, 9, 16-21, 23, and 24 of the ‘151 patent, which had been challenged under 35 U.S.C. §§ 102 and 103. The Board did not consider Petitioner’s contention that Patent Owner’s employees did not invent the claimed subject matter, “because such matters are not within [the Board’s] jurisdiction under 35 U.S.C. § 311(b).”
The ‘151 patent relates to wireless communication providing channel assignment information which is used to support uplink and downlink shared channels (UL and DL, respectively). Claims 1 and 6 are independent claims, and the remaining challenged claims are dependent claims. The relied-upon prior art includes the following references: Siemens 004 (taken by itself under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a); and Siemens 004 taken in combination with Admitted Prior Art (APA), InterDigital 810, Motorola 683, or Siemens 010.
Petitioner proposed the use of constructions from the pending district court and ITC proceedings for four claim terms. For three of these, namely, “same physical downlink control channel,” “channel assignment information,” and “based on WTRU identity (ID)-masked cyclic redundancy check (CRC) parity bits,” Petitioner asserted that “Patent Owner should be bound in the instant proceeding by the broad construction it has proposed in the related judicial and administrative proceedings.” The Board decided that it would not expressly construe these three terms because specific arguments directed to the interpretation of these terms was not proffered in the instant proceeding.
Petitioner argued that the fourth term, “shared channel,” should be construed to mean a “channel that can convey information to or from a plurality of WTRUs.” The Board, instead, adopted Patent Owner’s proposed construction of “shared channel” to mean “a radio resource that can convey information to or from a plurality of WTRUs.”
As for patentability considerations, the Board gave consideration to the evidence submitted by Petitioner, including Petitioner’s claim charts, arguments, and the declaration of Petitioner’s expert Dr. Madisetti. Ultimately, the Board was not persuaded that Siemens 004 teaches the “uplink shared channel” or the “second determining step of ‘whether the channel assignment information is for assigning radio resources for the uplink shared channel” required by each of the challenged claims. Thus, the Board denied inter partes review as to claims 1-6, 8, 9, 16-21, 23, and 24 of the ‘151 patent.
ZTE Corp. and ZTE (USA) Inc. v. InterDigital Technology Corp., IPR2014-00275
Paper 11: Decision Denying Institution of Inter Partes Review
Dated: July 7, 2014
Patent 7,941,151 B2
Before: Sally C. Medley, Miriam L. Quinn, and Beverly M. Bunting
Written by: Bunting
Related Proceedings: Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, U.S.I.T.C Inv. No. 337-TA-868;InterDigital Commc’ns Inc. v. Huawei Techs. Co., Ltd., Case No. 13-cv-00008-RGA (D. Del.); InterDigital Commc’ns Inc. v. ZTE Corp., Case No. 13-cv-00009-RGA (D. Del.); InterDigital Commc’ns Inc. v. Nokia Corp., Case No. 13-cv-00010-RGA (D. Del.); and InterDigital Commc’ns Inc. v. Samsung Elec. Co. Ltd., Case No. 13-cv-00011-RGA (D. Del.).
