UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. SAMSUNG ELECTRONICS CO., LTD. Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS CO., LTD. Petitioner v. HUAWEI TECHNOLOGIES CO., LTD. Patent Owner Case IPR2017-TBD Patent No. 8,885,587 PETITIONER S EXHIBIT 1003 DECLARATION OF DAVID LYON, PH.D. Samsung Exhibit 1003

2 TABLE OF CONTENTS Page I. PROFESSIONAL BACKGROUND... 1 II. SCOPE OF THE ENGAGEMENT... 7 III. LEGAL STANDARD... 9 A. Claim Interpretation... 9 B. Prior Art C. Anticipation D. Obviousness E. Date of Invention IV. BACKGROUND OF THE TECHNOLOGY A. 3GPP Organization B. Network Architecture for 3GPP Wireless Telephony C. Downlink Scheduling D. Hybrid Automatic Repeat Request ( HARQ ) E. Carrier Aggregation V. THE 587 PATENT VI. PROSECUTION HISTORY OF THE 587 PATENT A. USPTO Examination VII. CLAIM INTERPRETATION OF THE 587 PATENT A. system-linked downlink component carrier (Claims 3-5, 9-11) B. non-system-linked downlink component carrier (Claims 3, 9) VIII. OVERVIEW OF THE PRIOR ART A. Baldemair B. TS C. Damnjanovic IX. CLAIMS 3-5 AND 9-11 OF THE 587 PATENT ARE OBVIOUS IN VIEW OF THE PRIOR ART A. Baldemair Renders Obvious Claims 3-5 and Samsung Exhibit 1003, Page i

3 B. Baldemair In View of TS Renders Obvious Claims 3-5 and C. Damnjanovic In View of Baldemair Renders Obvious Claims 3-5 and X. CONCLUSION Samsung Exhibit 1003, Page ii

4 I, David Lyon, do hereby declare and say as follows: 1. I have been asked to provide testimony as to what one of ordinary skill in the art would have understood with respect to the patent at issue and various prior art. I provide this testimony below. I. PROFESSIONAL BACKGROUND 2. I have personal knowledge of the facts contained in this Declaration, am of legal age, and am otherwise competent to testify. 3. I hold three degrees in Electrical Engineering from the Massachusetts Institute of Technology ( MIT ): a Bachelor of Science and Master of Science, both earned in June of 1970, and a Doctor of Philosophy (Ph.D.) earned in September of At MIT, I was awarded a Hertz Foundation fellowship, which provided full financial support during my entire graduate education. In 1974, while employed full time in industry, I accepted an invitation from MIT s Department of Electrical Engineering to teach a graduate level course in mathematical communication theory. My original notes and exercises on practical methods in digital telecommunications were used by subsequent teachers of that subject at MIT. 5. I have more than forty years of industrial experience that began with cooperative work assignments arranged through MIT s co-op work/study program Samsung Exhibit 1003, Page 1

5 then known as Course VI-2-A. My three assignments ran from 1967 through 1969 at three different facilities of AT&T s Bell Laboratories. My first professional publication resulted from my work in 1969 at Bell Labs Murray Hill Facility. This publication dealt with certain challenging aspects of using pulsed laser light sources for long haul telecommunications. 6. From 1972 through 1981, I worked in dual roles as both Director of Research and Development and Director of Product Management for Intertel, Inc., a pioneering company in the field of telephone line communications, which was headquartered in Massachusetts. The products that my development group produced set new worldwide benchmarks in the field, including the design and production of real-time network control systems capable of monitoring and correcting faults in complex interactive data networks. 7. Starting in 1982, with my appointment as a Director of Engineering at Linkabit, a wholly owned division of M/A-Com, Inc., located in San Diego, California, I became intensely focused on radio-linked (also called RF for radio frequency) digital communications. From 1982 to 1987, the groups that I led designed and introduced to the industry the first full-duplex, satellite-based, digital communication systems capable of fully replacing alternative land-based transmission media. Since we were inventing a new type of wide area networking system we had to reimagine and create an entire protocol stack along with the Samsung Exhibit 1003, Page 2

6 related hardware technologies. At the physical, media access control (MAC), and transport layers we successfully innovated the routing, addressing, security, multiplexing, and media conversion and compression techniques that were required. Our first customer for these systems, which were comprised of so-called Very Small Aperture Satellite Systems ( VSAT s ), was the world market leader in oil exploration services, Schlumberger Limited. Later, with further refinements that we made to the networking technologies and the deliverable products, we captured many Fortune 100 companies as customers, including Wal-Mart, Exxon, and Southland Corporation. 8. While at Linkabit, I also served as a technical consultant to other product development groups. One of the projects to which I contributed was a digital wireless broadband system designed for International Mobile Machines (IMM). IMM was a predecessor of InterDigital, Inc., a company whose intellectual property figures prominently in the current cellular industry. 9. In 1987, along with four co-founders, I started Pacific Communication Sciences, Inc. ( PCSI ). I served as the CEO from our inception until 1996 and stayed very active in both technical and product management. During that period, PCSI became well known for its innovative and pioneering work in digital telecommunications. In 1993 we merged with a public company, Cirrus Logic Samsung Exhibit 1003, Page 3

7 Incorporated, and continued to operate PCSI as a wholly owned subsidiary of Cirrus Logic. 10. While at PCSI we were retained and funded by McCaw Cellular Communications, Inc. to help create the world s first operational digital packet data system to operate over cellular communication channels. This system was named Cellular Digital Packet Data (CDPD), and PCSI became a leading provider of the base station equipment used by cellular carriers to provide CDPD data services to their subscribers. Two of our customers were AT&T Wireless (who had acquired McCaw Cellular in 1994) and Bell Atlantic Mobile Network (later merged into Verizon Wireless in 2004). 11. PCSI also was retained by DDI Corporation and Kyocera, both of Japan, to help create their innovative Personal Handyphone Service (PHS) in Japan, a micro-cellular personal communication system. Starting in 1991, PCSI devised and perfected the system design and subsystem specifications for this mobile system, and later became a leading supplier of chipsets for PHS handsets and software for DDI s base stations. Starting in 1995, we shipped millions of handset chipsets and supplied software to tens of thousands of PHS base stations. 12. In 1996, I began my consulting company, Sage Strategies, ( which I continue to operate today. My assignments have included both technical and management work. From 1998 to 2008, I served Samsung Exhibit 1003, Page 4

8 first as CEO of Silicon Wave, and then subsequently as a Vice President of RF MicroDevices ( RFMD, now called Qorvo), which acquired Silicon Wave in Silicon Wave was a pioneer in short range radio linked data communications and a leader in the development of the Bluetooth standards and conforming products. During the period from 1998 through 2004, our group contributed heavily to the ongoing development of the Bluetooth system standards, working actively with other Bluetooth adopted companies (including Intel and Microsoft). Security methods which defended against unauthorized access, passive eavesdropping, and man-in-the-middle attacks were devised and incorporated in the standard in that timeframe. RFMD is an industry leader in the supply of radio frequency components for cellular subscriber devices and base stations. My work at RFMD included technical and marketing management of business units engaged in various RF system and component products. 13. My work from 1996 to the present has been focused largely on broadband communication technologies with emphasis on wireless and cable based systems. Such systems have included different types of digital cellular networks and devices, and short range systems including Bluetooth, wireless LAN ( Wi- Fi ), and near field communication ( NFC ). I have also worked as an active advisor to Sansay, Inc., a pioneer in Session Border Control (SBC) functionality as used in Voice over Internet Protocol (VoIP) systems. A SBC can be categorized as Samsung Exhibit 1003, Page 5

9 an especially sophisticated type of Internet security gateway, whose functions include protection of both customer intranets and carrier s core networks from unauthorized access, toll fraud, and from various types of active attacks including distributed denial of service (DDoS). 14. I have stayed heavily focused on applications of my engineering skills in industry, but I have occasionally found time to teach and lecture at universities around the United States. As referenced above, I developed and taught a course on Principles of Communication at MIT in 1974 and later I co-wrote and co-taught a course in Digital Communications and Satellite Systems in 1983 in the Department of Electrical Engineering at the University of California San Diego. From 1995 to 1997, I was a lecturer on the topic of wireless communication technologies for the Executive Short Course for CNOs: Managing the IT Infrastructure for Global Competitiveness at MIT s Sloan School of Management. My other university-level teaching experience is listed in my CV. 15. I am a named inventor on seven United States Patents, which are listed in my CV. These seven patents cover inventions in the field of telecommunications and computer networking and have been referenced more than two hundred and fifty times in subsequently issued United States patents. I have authored or co-authored over fifty professional papers and conference contributions. Samsung Exhibit 1003, Page 6

10 16. My qualifications and publications are set forth more fully in my curriculum vitae attached as Exhibit II. SCOPE OF THE ENGAGEMENT 17. I have been retained by Quinn Emanuel Urquhart & Sullivan LLP on behalf of Samsung Electronics Co., Ltd. ( Samsung or Petitioner ) to provide analysis and opinions in connection with U.S. Patent No. 8,885,587 ( the 587 Patent ). I have also been asked to evaluate whether one of ordinary skill in the art would, at the time of the invention, have considered certain technologies and prior art to be relevant or material to determining the validity of claims 3-5 and 9-11 of the 587 Patent. 18. All of the opinions I express in this Declaration have been made from the standpoint of a person of ordinary skill in the field of the 587 Patent at the time of the invention. I consider that a person of ordinary skill in the art at the time of invention would have would have at least (1) a Bachelor s or Master s degree in electrical engineering, computer science, or a related field and (2) at least two years experience working with cellular telephony systems. I had those capabilities myself and had also taught, hired, and managed engineers with those capabilities at the time of the earliest possible priority date of the 587 Patent. Samsung Exhibit 1003, Page 7

11 19. My opinions are based on my experience and knowledge and the information I have reviewed as of the date of this declaration. In connection with my analysis, I have reviewed the following exhibits: No. Exhibit 1001 U.S. Patent No. 8,885,587 to Chen et al. ( 587 Patent) 1002 File History of U.S. Patent No. 8,885,587 ( 587 File History) 1004 U.S. Patent No. 8,472,368 to Baldemair et al. ( Baldemair ) Provisional Application No. 61/250,962 to Baldemair et al. ( Baldemair 962 ) 3GPP TS V8.5.0 ( ) 3 rd Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA); Physical layer procedures (Release 8), available at ationdetails.aspx?specificationid=2427 (last accessed 5/8/2017) ( TS ) U.S. Patent Application Publication 2009/ A1 to Damnjanovic et al. ( Damnjanovic ) Huawei Techs. Co. Ltd. v. Samsung Elecs. Co., Ltd. et al., Case No. 3:16-cv-02787, Dkt. 1 (N.D. Cal. May 24, 2016) ( Huawei District Court Complaint ) Huawei Techs. Co. Ltd. v. Samsung Elecs. Co., Ltd. et al., Case No. 3:16-cv-02787, Dkt. 124 (N.D. Cal. Apr. 7, 2017) ( Joint Claim Construction Statement ) Huawei Infringement Contentions for the 587 Patent ( 587 Infringement Contentions ) ERIK DAHLMAN ET AL., 3G EVOLUTION, HSPA AND LTE FOR MOBILE BROADBAND (2nd Ed. 2008) ( Dahlman ) 1014 About 3GPP Home, 3GPP: A Global Initiative, available at Samsung Exhibit 1003, Page 8

12 (last accessed 5/3/2017) ( About 3GPP ) ERIK DAHLMAN ET AL., 4G LTE/LTE-ADVANCED FOR MOBILE BROADBAND (2011) ( Dahlman 4G ) 3GPP TDoc R , Ack/Nack repetition and Implicit Resource Allocation for PUCCH, (Shanghai, China, Oct. 8-12, 2007), available at htm (last accessed 5/8/2017) ( R ) 20. I am being compensated for my time spent on the present matter at a rate of $500 per hour. My compensation is not in any way contingent on my performance, the result of this proceeding, or any of the issues involved therein. I am also being reimbursed for expenses incurred as a result of activities performed as an expert. III. LEGAL STANDARD A. Claim Interpretation 21. I am not a Patent Attorney and I do not opine in this paper on any particular methodology for interpreting patent claims. My opinions are limited to what I believe a person of ordinary skill in the art would have understood the meaning of certain claim terms to be based on the patent documents. I use the principles below, however, as a guide in formulating my opinions. 22. I understand that it is a basic principle of patent law that assessing the validity of a patent claim involves a two-step analysis. In the first step, the claim Samsung Exhibit 1003, Page 9

13 language must be properly construed to determine its scope and meaning. In the second step, the claim as properly construed, must be compared to the alleged prior art to determine whether the claim is valid. 23. I understand that the words of a patent claim have their plain and ordinary meaning for a person skilled in the art at the time of the invention. This meaning must be ascertained from a reading of the patent documents, paying special attention to the language of the claims, the written specifications, and the prosecution history. I understand that an inventor may attribute special meanings to some terms by defining those terms or by otherwise incorporating such meanings in these documents. 24. My methodology for determining the meaning of claim phrases was first to carefully study the patent. In particular, I studied the claims themselves, followed by a study of the background, detailed specification, figures, and other patent content. Next, I reviewed the file histories looking for any clarifications or limitations that might be attached to claim terms. In some circumstances, I looked at other documents, such as references applied by the patent office. 25. I understand that in an inter partes review, claim terms are given their broadest reasonable interpretation in light of the specification of the patent in which they appear. I understand that under the broadest reasonable interpretation standard, claim terms are presumed to be given their ordinary and customary Samsung Exhibit 1003, Page 10

14 meaning as understood by one of ordinary skill in the art in the context of the entire disclosure at the time of the invention. I understand that one must be careful not to read a specific embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. I further understand that any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. I have considered each of the claim terms using the broadest reasonable interpretation standard. B. Prior Art 26. It is my understanding that only information which satisfies one of the categories of prior art set forth in 35 U.S.C. 102 may be used in any invalidity analysis under 102 or 103. Therefore, if information is not properly classified as prior art under one of the subsections of 102 of the Patent Code, then it may not be considered in an anticipation or obviousness determination. It is also my understanding that, for inter partes review, applicable prior art is limited to patents and printed publications. 27. I understand that the earliest effective filing date for the 587 Patent is December 3, I understand that any art published before December 3, 2009 is prior art, unless the petitioner can demonstrate that the patent owner did not validly claim priority to the Chinese application filed on December 3, Samsung Exhibit 1003, Page 11

15 C. Anticipation 28. I understand that to anticipate a patent claim under 35 U.S.C. 102, a single asserted prior art reference must disclose each and every element of the claimed invention, either explicitly or inherently, to a person of ordinary skill in the art. I understand that a disclosure of an asserted prior art reference can be inherent if the missing element is necessarily present or is the inevitable outcome of the process and/or thing that is explicitly described in the asserted prior art reference. D. Obviousness 29. I am also informed and understand that a patent claim is invalid under 35 U.S.C. 103 if the differences between the invention and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention to a person having ordinary skill in the art to which the subject matter pertains. Obviousness, as I understand, is based on the scope and content of the prior art, the differences between the prior art and the claim, the level of ordinary skill in the art, and secondary indications of non-obviousness to the extent they exist. 30. I understand that whether there are any relevant differences between the prior art and the claimed invention is to be analyzed from the view of a person of ordinary skill in the art at the time of the invention. A person of ordinary skill in Samsung Exhibit 1003, Page 12

16 the art is a hypothetical person who is presumed to be aware of all of the relevant art at the time of the invention. The person of ordinary skill is not an automaton, and may be able to fit together the teachings of multiple patents employing ordinary creativity and the common sense that familiar items may have obvious uses in another context or beyond their primary purposes. 31. In analyzing the relevance of the differences between the claimed invention and the prior art, I understand that I must consider the impact, if any, of such differences on the obviousness or non-obviousness of the invention as a whole, not merely some portion of it. The person of ordinary skill faced with a problem is able to apply his or her experience and ability to solve the problem and also look to any available prior art to help solve the problem. 32. An invention is obvious if a person of ordinary skill in the art, facing the wide range of needs created by developments in the field, would have seen an obvious benefit to the solutions tried by the applicant. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, it would be obvious to a person of ordinary skill to try the known options. If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique would have been obvious. Samsung Exhibit 1003, Page 13

17 33. I understand that I do not need to look for precise teaching in the prior art directed to the subject matter of the claimed invention. I understand that I may take into account the inferences and creative steps that a person of ordinary skill in the art would have employed in reviewing the prior art at the time of the invention. For example, if the claimed invention combined elements known in the prior art and the combination yielded results that were predictable to a person of ordinary skill in the art at the time of the invention, then this evidence would make it more likely that the claim was obvious. On the other hand, if the combination of known elements yielded unexpected or unpredictable results, or if the prior art teaches away from combining the known elements, then this evidence would make it more likely that the claim that successfully combined those elements was not obvious. I understand that hindsight must not be used when comparing the prior art to the invention for obviousness. 1. Motivation to Combine 34. Obviousness may be shown by demonstrating that it would have been obvious to modify what is taught in a single piece of prior art to create the patented invention. Obviousness may also be shown by demonstrating that it would have been obvious to combine the teachings of more than one item of prior art. I understand that a claimed invention may be obvious if some teaching, suggestion or motivation exists that would have led a person of ordinary skill in the art to Samsung Exhibit 1003, Page 14

18 combine the invalidating references. I also understand that this suggestion or motivation may come from sources such as explicit statements in the prior art, or from the knowledge of a person having ordinary skill in the art. Alternatively, any need or problem known in the field at the time and addressed by the patent may provide a reason for combining elements of the prior art. I also understand that when there is a design need or market pressure, and there are a finite number of predictable solutions, a person of ordinary skill may be motivated to apply both his skill and common sense in trying to combine the known options in order to solve the problem. 35. In determining whether a piece of prior art could have been combined with other prior art or with other information within the knowledge of a person having ordinary skill in the art, the following are examples of approaches and rationales that may be considered: combining prior art elements according to known methods to yield predictable results; simple substitution of one known element for another to obtain predictable results; use of a known technique to improve similar devices (methods, or products) in the same way; applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; Samsung Exhibit 1003, Page 15

19 applying a technique or approach that would have been obvious to try (choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success); 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 would have been predictable to a person having ordinary skill in the art; or some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. 2. Secondary Considerations 36. As noted above, I understand that certain objective factors, sometimes known as secondary considerations, may also be taken into account in determining whether a claimed invention would have been obvious. In most instances, these secondary considerations of non-obviousness are raised by the patentee. In that context, the patentee argues an invention would not have been obvious in view of these considerations, which include: (a) commercial success of a product due to the merits of the claimed invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of others to find the solution provided by the claimed invention; (d) deliberate copying of the invention by others; (e) unexpected results achieved by the invention; (f) praise of the invention by others skilled in the art; (g) lack of independent simultaneous invention within a comparatively short space of time; (h) teaching away from the invention in the Samsung Exhibit 1003, Page 16

20 prior art. I also understand that these objective indications are only relevant to obviousness if there is a connection, or nexus, between them and the invention covered by the patent claims. 37. I understand that certain secondary considerations, such as independent invention by others within a comparatively short space of time, indicates obviousness. I also understand that secondary considerations of nonobviousness are inadequate to overcome a strong showing on the primary considerations of obviousness. For example, where the inventions represented no more than the predictable use of prior art elements according to their established functions, the secondary considerations are inadequate to establish nonobviousness. 38. I understand that the Patent Owner has not identified any evidence of secondary considerations in the related district court litigation. I reserve the right to present rebuttal testimony if and when the Patent Owner presents such evidence. E. Date of Invention 39. I understand that absent clear and convincing evidence of invention date prior to the filing date of a patent, the invention date of the patent is presumed to be its filing date. A prior invention requires a complete conception of the invention and a reduction to practice of that invention. The patentee has the Samsung Exhibit 1003, Page 17

21 burden of establishing by clear and convincing evidence a date of conception earlier than the filing date of the patent. 40. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his complete thought expressed in such clear terms as to enable those skilled in the art to make the claimed invention. The inventor must also show possession of every feature recited in the claims, and that every limitation was known to the inventor at the time of the alleged conception. Furthermore, the patentee must show that he or she has exercised reasonable diligence in later reducing the invention to practice, either actual or constructive. The filing of a patent application can serve as a constructive reduction to practice. IV. BACKGROUND OF THE TECHNOLOGY 41. The 587 Patent relates to cellular communications. Specifically, the 587 Patent claims that the technology disclosed in this patent is related to technology developed and generated by 3GPP. Ex at 1: Furthermore, it is clear from the Huawei District Court Complaint that Huawei believes its invention to be directly related to 3GPP standards. See, e.g., Ex at Below is a summary of the 3GPP organization and the state of the relevant technology as of the priority date of the 587 Patent. Samsung Exhibit 1003, Page 18

22 A. 3GPP Organization 42. As described on the website for the 3rd Generation Partnership Project (3GPP), [t]he 3GPP unites [Seven] telecommunications standard development organizations (ARIB, ATIS, CCSA, ETSI, TSDSI, TTA, TTC), known as Organizational Partners and provides their members with a stable environment to produce the Reports and Specification that define 3GPP technologies. Ex at 1. 3GPP standards cover[] cellular telecommunications network technologies, including radio access, the core transport network, and service capabilities - including work on codecs, security, quality of service - and thus provides complete system specifications. Id. 43. As cellular telecommunications technology developed rapidly in the late eighties and nineties, manufacturers and carriers began to realize that standardization was necessary to ensure user mobility and manufacturing economies stemming from the common requirements defined in the specifications GPP specifications and studies are contribution-driven, by member companies, in Working Groups and at the Technical Specification Group level. The three Technical Specification Groups (TSG) in 3GPP are: Radio Access Networks (RAN), Services & Systems Aspects (SA), Core Network & Terminals (CT). Ex at 1. Major changes to the 3GPP standards are measured in Samsung Exhibit 1003, Page 19

23 Releases, and certain groups of releases are informally referred to as a generation. Generation Release End Date 2G Release 98 2/12/1999 3G Release 99 12/17/1999 Release 4 6/21/2001 Release 5 9/12/2002 Release 6 9/28/2005 Release 7 3/13/2008 4G or LTE Release 8 3/12/2009 Release 9 3/25/2010 LTE-A Release 10 6/8/ The 3GPP standards address at least three generations of radio access technologies (RATs) which interface between the operators networks and users mobile equipment (typically cell phones) to provide various services to users. The European Telecommunications Standards Institute (ETSI), a predecessor to and founding member of 3GPP, released the second generation (2G) circuit-switched core network, also known as the Global System for Mobile Communications (GSM, originally Groupe Special Mobile). This allowed cell phones to either call another cell phone or connect to the public switched telephone network (PSTN) which allowed calls to land-line telephones. Samsung Exhibit 1003, Page 20

24 46. But by the late 1990 s and early 2000 s, cell phone users wanted access to Internet-based data services like and the World Wide Web. To be economically efficient, these services required the ability to transfer data to and from users in small chunks called packets over the radio access channels. So later versions of the 2G standard added a packet-switched network called the general packet radio service (GPRS) and later enhanced data rates for GSM evolution (EDGE). The complete 2G radio access network (RAN) is referred to as GSM/EDGE RAN, or GERAN. Data rates typically were measured in the tens of kilobits per second up to the low hundreds of kilobits per second. 47. The next evolution, commonly referred to as 3G, was named Universal Mobile Telecommunications System (UMTS) and its radio access technology is implemented as the UMTS Terrestrial Radio Access Network (UTRAN). The 3GPP packet-switched core network allows a cell phone user to send and receive data packets at higher data rates than in 2G, and also permits simultaneous operation of a voice call while packet data is being exchanged GPP next developed the System Architecture Evolution/Long Term Evolution (SAE/LTE) or fourth generation (4G) network which utilizes an evolved packet system (EPS) with an evolved packet core (EPC) and an evolved- UTRAN (E-UTRAN). The packet-switched network enables voice over IP (VoIP) as well as packet-switched interworking with non-3gpp systems such as WiMAX or Samsung Exhibit 1003, Page 21

25 wireless local area networking (WLAN) while also interfacing with legacy 2G and 3G systems. Data rates supported by these 4G systems are greater than the earlier generations. 49. Following the development of LTE, 3GPP announced the development of LTE-Advanced ( LTE-A ), which was a significant enhancement of the LTE standard. LTE-A is compatible with LTE equipment and shares many features and capacities with LTE. Some of the new functionalities in LTE-A are carrier aggregation, enhanced use of multi-antenna techniques, and support for relay nodes. All of these functionalities are designed to increase the stability, bandwidth, and data transfer speed of LTE networks and connections. B. Network Architecture for 3GPP Wireless Telephony 50. Wireless telephones, more commonly known as cell phones or mobile phones, are the most ubiquitous form of communication device in use today. We use mobile phones that communicate with cellular base station towers by transmitting and receiving signals at a radio frequency (RF). 51. Wireless networks are composed of base stations, that incorporate a cellular radio tower, which communicate with mobile devices wirelessly by transmitting and receiving RF signals. The base station is commonly referred to as the Node B (3G) or enhanced NodeB ( enb in 4G) and the mobile device is commonly referred to as the user equipment or UE in the context of 3GPP Samsung Exhibit 1003, Page 22

26 standards. A single base station connects to multiple mobile devices in its cellular coverage area. 52. There are two directional types of wireless communication: the communication from a base station to the mobile device ( downlink ) and the communication from the mobile device to a base station ( uplink ). 53. Because a single base station serves multiple mobile devices in its cellular coverage area, there are significant differences between the structures of the uplink and downlink communications. This is in part because when a mobile device communicates with the base station, it is unaware of other mobile devices in the same cell region communicating with the same base station. On the other hand, when the base station communicates, it must control both the downlink and uplink communications such that the intended mobile device can exchange digital information with the base station efficiently, with as little interference from/to other mobile devices as possible. 54. Transmission of data between the base station and the mobile device is done on physical channels. See, e.g., Ex at 51. A physical channel corresponds to the set of time-frequency resources used for transmission of a particular transport channel and each transport channel is mapped to a corresponding physical channel. In addition to the physical channels with a corresponding transport channel, there are also physical control channels without a Samsung Exhibit 1003, Page 23

27 corresponding transport channel. The downlink physical control channel (PDCCH) is used for inter alia downlink control information (DCI), providing the mobile device with the necessary information for proper reception and decoding of the downlink data transmission and also capable of scheduling uplink transmissions. The Physical Uplink Control Channel (PUCCH) is used for providing the base station with requests for scheduled transmission opportunities for that UE ( SR ) and also for sending the ACK/NACK feedback associated with the hybrid-arq protocol (discussed below). See, e.g., Ex at The physical-channel types defined in LTE include the following: Physical Downlink Shared Channel (PDSCH) is the main physical channel used for unicast transmission, but also for transmission of paging information. Physical Broadcast Channel (PBCH) caries part of the system information, required by the terminal in order to access the network. Physical Multicast Channel (PMCH) is used for MBSFN operation. Physical Downlink Control Channel (PDCCH) is used for downlink control information, mainly scheduling decisions, required for reception of PDSCH and for scheduling grants enabling transmission of the PUSCH. Physical Hybrid-ARQ Indicator Channel (PHICH) carries the hybrid-arq acknowledgment to indicate to the terminal whether a transport block should be retransmitted or not. Physical Control Format Indicator Channel (PCFICH) is a channel providing the terminals with information necessary to Samsung Exhibit 1003, Page 24

28 decode the set of PDCCHs. There is only one PCFICH in each cell. Physical Uplink Shared Channel (PUSCH) is the uplink counterpart to the PDSCH. There is at most one PUSCH per terminal. Physical Uplink Control Channel (PUCCH) is used by the terminal to send hybrid-arq acknowledgments, indicating to the enb whether the downlink transport block(s) was successfully received or not, to send channel-status reports aiding downlink channel-dependent scheduling, and for requesting resources to transmit uplink data upon. There is at most one PUCCH per terminal. Physical Random Access Channel (PRACH) is used for random access. 56. The use of many of these channels, such as the PDCCH and PDSCH, were known channels that were used in LTE technologies and later used in LTE-A technologies. See, e.g., Ex at C. Downlink Scheduling 57. When a mobile device wants to transmit information to the base station, the mobile device sends a message to the base station requesting to establish a communication channel. Since there may be multiple mobile devices that want to communicate with the base station at the same time, the base station performs scheduling for all the mobile devices that have sent a request to transmit information. 58. The enb scheduler, or downlink scheduler, is responsible for dynamically controlling the mobile device(s) to transmit to and, for each of these Samsung Exhibit 1003, Page 25

29 mobile devices, the set of resource blocks upon which the terminal s DL-SCH (Downlink Shared transport Channel) should be transmitted. Ex at 45. Although the scheduling strategy is implementation specific, the overall goal of most schedulers is to take advantage of the channel variations between mobile devices and preferably schedule transmission to a mobile terminal on resources with advantageous channel conditions. The LTE scheduler is similar to the scheduler in previous versions of the 3GPP standard, however, LTE can exploit channel variations in both frequency and time domains, while prior versions may only have been able to exploit time-domain variations. Ex at When the base station determines to permit uplink communication from a particular mobile device to the base station, the base station scheduler transmits scheduling assignment information Downlink Control Information ( DCI ) to the mobile device over the PDCCH. The DCI contains scheduling decisions and power-control commands for the mobile device. following: 60. More specifically, various format types of the DCI include the Downlink scheduling assignments, including PDSCH resource indication, transport format, hybrid-arq information, and control information related to spatial multiplexing (if applicable). A downlink scheduling assignment also includes a command for power control of the PUCCH uplink physical channel. Samsung Exhibit 1003, Page 26

30 Uplink scheduling grants, including PUSCH resource indication, transport format, and hybrid-arq-related information. An uplink scheduling grant also includes a command for power control of the PUSCH uplink physical channel. Power-control commands for a set of terminals as a complement to the commands included in the scheduling assignments/grants. D. Hybrid Automatic Repeat Request ( HARQ ) 61. Transmissions over wireless channels are subject to errors, for example, due to variations in the received signal quality. To some degree, such variations can be counteracted. However, unpredictable and sever interference variations cannot be completely counteracted. When data is transmitted wirelessly, the mobile device and base station need a way to determine whether the transmission it sent was received correctly, and if not, whether it needs to send the transmission again. 62. One approach to handling transmission errors is to use a retransmission scheme, known as hybrid automatic repeat request ( HARQ ). HARQ is used to relay whether or not a transmission was received correctly. 63. When the base station sends information to the mobile device, the mobile device determines whether the transmitted information was received correctly or contains errors. The mobile device then sends acknowledgement information to the base station. If mobile device successfully received the data Samsung Exhibit 1003, Page 27

31 no error is detected the mobile device will send a positive acknowledgement or ACK to the base station. If the mobile device did not successfully receive the data an error is detected, for example due to severe interference the mobile device will send a negative acknowledgement or NACK to the base station. 64. If the base station receives a NACK, it may resend the same portion of data to the mobile device. These acknowledgement messages are sent from the mobile device to the base station on an Physical Uplink Control Channel, the PUCCH, utilizing scheduled transmissions over what are referred to as HARQ- ACK resources. The use of a PUCCH and HARQ-ACK transmission resources were well known in LTE technologies and later used in LTE-A technologies. Ex at The base station is able to control various characteristics about the way mobile devices transmit ACK/NACK messages to the base station using commands in the DCI, such as an Acknowledgement Resource Indicator ( ARI ). Specifically the ARI is a two bit message which directs the UE to choose one of four uplink HARQ-ACK resource values with which the UE had been configured. Ex at 45 and 99; Ex at Virtually all modern communication systems, including cdma2000 and prior 3GPP standards, going back to 3G technologies, employed HARQ retransmission. This retransmission scheme is still in use today in LTE and LTE-A Samsung Exhibit 1003, Page 28

32 technologies. The HARQ retransmission scheme proposed and adopted into the LTE standards is similarly designed and serves a similar purpose as it did in the UMTS standards. Ex at E. Carrier Aggregation 67. One of the enhanced functionalities of LTE-A over standard LTE is carrier aggregation. In 3GPP systems, information is sent between a base station and a UE on RF carriers. In standard LTE systems, the network assigns only one carrier in the uplink and one carrier in the downlink to a given base station serving a particular UE. However, in order to offer higher data rates for transmissions, 3GPP introduced a new feature in LTE-A systems, known as carrier aggregation. In carrier aggregation technology, the capacities of two or more carriers are aggregated together to achieve higher data rates. Mobile devices using carrier aggregation technology are then capable of simultaneously sending and receiving data over multiple carriers thus increasing the available digital transmission rates to and from the user devices. The structure of each individual carrier in LTE-A follows a structure that is very similar to the carrier structure in LTE. 68. In carrier aggregation, each aggregated carrier is referred to as a component carrier ( CC ). Each component carrier can have a bandwidth of 1.4, 3, 5, 10, 15, or 20 MHz. A mobile device may be configured with different numbers of uplink and downlink component carriers, with a maximum of five Samsung Exhibit 1003, Page 29

33 component carriers and a maximum aggregated bandwidth of 100 MHz. Below is an example of carrier aggregation, where the component carriers are adjacent to each other. However, there is no absolute requirement for such a constraint. General carrier aggregation allows for aggregation of non-adjacent component carriers, including carriers in different frequency bands. 69. There is one primary component carrier ( PCC ) in both the uplink and downlink directions that is responsible for handling the initial connection between the mobile device and the network. The remaining carriers are secondary component carriers ( SCC ), which are configured after the initial connection is established. The SCC is responsible for transmitting additional radio resources during the connection. 70. When multiple component carriers are simultaneously assigned to a UE, each of the PDCCHs associated with the respective component carrier are capable of carrying a DCI control message, including the TPC command. However, if the uplink control information related to the different component Samsung Exhibit 1003, Page 30

34 carriers are to be transmitted on different physical uplink control channels, this would result in higher power consumption by the mobile device. To address this problem, the 3GPP participants agreed that for carrier aggregation, all uplink control information for a mobile device should be semi-statically mapped onto one specific uplink component carrier namely, the uplink primary component carrier. Therefore, the uplink control information for all assigned component carriers are transmitted over the same physical uplink component carrier. By doing so, only a single downlink TPC command is necessary to control the transmission power for the uplink signals. Thus, any DCI messages beyond the one that necessarily must carry the TPC command to the UE can have its TPC command bits reassigned for other uses. The nature of the concepts at issue in the 587 Patent is the substitution of ARI (ACK resource indicator) bits in place of TPC bits in those additional DCI messages. V. THE 587 PATENT 71. The 587 Patent is related to feeding back acknowledgment information (i.e., ACK/NACK information) for carrier aggregation. In standard LTE systems when the enodeb sends data to the UE using dynamic (nonpersistent) scheduling, uplink ACK channel resources are assigned dynamically to mobile devices and the mobile device determines which resource from an assigned group of uplink resources to use at a given time to send acknowledgement Samsung Exhibit 1003, Page 31

35 information. Rather than signal to the mobile device explicitly which resource to use, the mobile device uses an implicit mapping between the information transmitted in the DCI and the uplink ACK channel. See, e.g., Exhibit 1007 at ; see also, e.g., Exhibit Since the network assigns only one carrier in the uplink and one carrier in the downlink to the mobile device, when the mobile device transmits ACK/NACK information, the base station knows to which carrier information the ACK/NACK information corresponds. Ex at 1:44-2: In LTE-A systems that use carrier aggregation, a mobile device accesses multiple downlink component carriers simultaneously, and ACK/NACK information corresponding to the data transmissions of every downlink component carrier is fed back over the uplink ACK channel. Ex at 2: When a downlink component carrier is not implicitly mapped to an uplink component carrier, a problem arises when a mobile device has to feed back ACK/NACK information corresponding to information the base station transmitted. In the scenario where the mobile device receives information on multiple downlink component carriers and the downlink component carriers are not implicitly mapped to uplink component carriers, when the mobile device feeds back ACK/NACK information, the base station has no way to know to which downlink carrier information the ACK/NACK information corresponds. Ex at 2: Samsung Exhibit 1003, Page 32

36 73. The 587 Patent discloses an approach for feeding back information in carrier aggregation mode. The 587 Patent proposes adding an ACK resource indication ( ARI ) command field to the DCI information carried by the PDCCH to explicitly signal which of the group of high-level assigned uplink ACK channel resources is currently used. Ex at 2: The 587 Patent proposes using a common field in the DCI of each downlink carrier that can be configured as the TPC or ARI as appropriate depending on the context. Ex at 4:47-5:10; 10: Since, in carrier aggregation mode, only a single TPC command sent in the DCI on one downlink component carrier is necessary to control the transmit power level of the uplink component carriers assigned to the mobile device, the TPC command field in DCIs sent in other component carriers are no longer needed to transmit a TPC command. The control bits normally used for TPC commands related to all but one downlink component carrier can be now be used to convey other control information. The 587 Patent proposes using the existing TPC command field in the DCI for each assigned component carrier as a common field. The common field can then represent the TPC command for one PDCCH but also the ARI command for the other PDCCHs when the DCI needs to include an ARI command field. The 587 Patent states that this approach eliminates the need to Samsung Exhibit 1003, Page 33

37 create any new fields in the DCI for the ARI command and allows for backwards compatibility with the existing LTE framework. Ex at Abstract, 10: The 587 patent proposes that the DCI in one of the downlink component carriers, known as the system-linked downlink component carrier, carries the TPC command, and the DCI in another downlink component carriers, known as a non-system linked component carriers, carry an ARI command. 76. A downlink and an uplink carrier are system-linked if an uplink ACK channel resource is implicitly reserved (as opposed to being explicitly signaled, e.g., via an ARI) on the uplink carrier for transmissions on the downlink carrier. Ex at 7:3-16. Figure 2 is a schematic composition diagram of a systemlinked downlink component carrier according to the 587 Patent: 77. As shown in Figure 2 above, there are three downlink component carriers, namely downlink component carrier-1, downlink component carrier-2, and downlink component carrier-3, and two uplink component carriers, namely, uplink component carrier-1 and uplink component carrier-2. Ex at Fig. 2, Samsung Exhibit 1003, Page 34

38 7: An uplink ACK channel resource implicitly mapped from a PDCCH is reserved on uplink component carrier-1 for downlink component carrier-1; uplink ACK channel resources implicitly mapped from PDCCH are reserved on uplink component carrier-2 for downlink component carrier-2 and downlink component carrier-2. Therefore, downlink component carrier-1 is a system linked downlink component carrier of uplink component carrier-2; and downlink component carrier-2 and downlink component carrier-2 are system-linked downlink component carriers to uplink component carrier-2. Ex at 7: The methods outlined in the 587 Patent simply repeat conventional use of well-known concepts for transmitting control information, including ACK resource indicators, in reused fields within the DCI. The concept of reusing fields in the DCI, specifically the TPC field, to send additional control information was established much earlier during the development and subsequent introduction of LTE cellular systems. The 587 Patent thus only serves to document a known and obvious procedure from among a set of known procedures that had simply not yet been finalized by the 3GPP body for LTE-A technology in Release 10 at the time of the 587 Patent priority date. VI. PROSECUTION HISTORY OF THE 587 PATENT 79. The Patent Owner filed the foreign priority applications, CN and CN in the Chinese patent office on December 3, Samsung Exhibit 1003, Page 35

39 2009 and March 24, 2010, respectively. Huawei then filed Chinese-language PCT application (PCT/CN2010/079423) with the Chinese Receiving Office on December 3, 2010, which claimed priority to the two Chinese applications. 80. Rather than entering the national phase, on September 20, 2012, Huawei filed U.S. Application No. 13/487,172 ( the 172 application ) as a continuation of the PCT application on June 2, On August 20, 2012, Huawei claimed priority to the two Chinese priority applications. The 172 application issued as the 587 Patent on November 11, A. USPTO Examination 81. During prosecution of the 172 application, the Examiner issued an Office Action, rejecting all the pending claims as invalid over prior art and stressed that the claims are too broad and require detail or specialization of the steps as recited in the claims. Alone and as claimed, the limitations are too open. Ex at 318. In response to the Examiner s Office Action, the Patent Owner filed an amendment to more particularly define the claimed method and system and to overcome Examiner s prior art rejections. Ex at The Patent Owner amended pending claim 28 (which later became claim 3 of the 587 Patent) to require that the common field be configured as one command according to a type of downlink component carrier transmitting the DCI, and the common field is indicative of one of a transmission power control (TPC) command and an ACK Samsung Exhibit 1003, Page 36

40 resource indication (ARI) command. Id. The Patent Owner also converted pending claim 30 to a dependent claim. Id. The Patent Owner made similar amendments to pending claim 34 (which later became claim 9 of the 587 Patent). Id. 82. In accompanying remarks, the Patent Owner conceded that the claims as originally drafted read on the prior art. Ex at 479. Instead, the Patent Owner argued that the newly amended limitation, requiring the common field be configured as one command according to a type of a downlink component carrier transmitting the DCI, wherein the common field is indicative of one of a transmission power control (TPC) command and an ACK resource indication (ARI) command, was not disclosed in the prior art. Id. 83. In response, the Examiner stated that the claims would be in condition for allowance if a further amendment to the claims was made, as set forth in an Examiner s Amendment. Ex at The Examiner s Amendment required that the claims be further limited by requiring one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and at least one piece of DCI transmitted by a non-system-linked downlink component carrier as an ARI command. Id. (emphasis added). The Patent Owner agreed to the Examiner s Amendment. Ex at 497. Samsung Exhibit 1003, Page 37

41 VII. CLAIM INTERPRETATION OF THE 587 PATENT 84. In my review of the claims of the 587 Patent, I understand that the following terms should be given the broadest reasonable interpretation in view of the specification from the perspective of one skilled in the relevant field. I applied this standard in my analysis below for all of the claim terms. A. system-linked downlink component carrier (Claims 3-5, 9-11) 85. Under the BRI standard, a system-linked downlink component carrier should be construed to mean a downlink component carrier which has an uplink ACK channel resource implicitly mapped from a PDCCH and reserved on one uplink component carrier. The specification of the 587 Patent supports the proposed BRI of system-linked downlink component carrier. For example, the specification states that if an uplink ACK channel resource implicitly mapped from a PDCCH is reserved on one uplink component carrier for a certain downlink component carrier, the downlink component carrier is described as a systemlinked downlink component carrier of the uplink component carrier. See Ex at 7: In the district court case, the Patent Owner contended that the construction for system-linked downlink component carrier should be construed as a downlink component carrier for which an uplink ACK channel resource implicitly mapped from a PDCCH is reserved on one uplink component carrier is a system linked downlink component carrier of the uplink component carrier. See Samsung Exhibit 1003, Page 38

42 Ex at 48. For purposes of this Petition, the Patent Owner s proposed construction falls within the BRI as set forth above. B. non-system-linked downlink component carrier (Claims 3, 9) 86. Under the BRI standard, a non-system-linked downlink component carrier should be construed to mean a downlink component carrier which does not have its uplink ACK channel resource implicitly reserved on one uplink component carrier. The specification of the 587 Patent supports the proposed BRI of non-system-linked downlink component carrier. For example, the specification provides a definition for a system-linked downlink component carrier : if an uplink ACK channel resource implicitly mapped from a PDCCH is reserved on one uplink component carrier for a certain downlink component carrier, the downlink component carrier is described as a system-linked downlink component carrier of the uplink component carrier. See Ex at 7: A non-system-linked downlink component carrier is the converse of the definition of a system-linked downlink component carrier. VIII. OVERVIEW OF THE PRIOR ART 87. The technology at issue generally relates to feeding back acknowledgment information (i.e. ACK/NACK information) for carrier aggregation. As I explain in this section and in greater detail below, the 587 Patent only serves to document a known and obvious procedure from among a set Samsung Exhibit 1003, Page 39

43 of known procedures that had simply not yet been finalized by the 3GPP body for LTE-A technology in Release 10 at the time the 587 Patent priority date. A. Baldemair 88. Baldemair was filed on April 1, 2010 and issued on June 25, Baldemair claims priority to Provisional Application No. 61/250,962 ( Baldemair 962 ), filed on October 13, 2009 (Ex. 1005). Therefore, I understand that Baldemair is prior art to the 587 Patent. 89. Baldemair discloses a method in a mobile device operating in a Carrier Aggregation system with multiple Component Carriers that involves substituting for TPC bits in the DCIs related to all but one of the downlink Component Carriers ARI bits for identifying which Physical Uplink channel resources will be used to convey the HARQ-ACK bits of the corresponding downlink shared channel transmissions. See Ex at Abstract, Figs. 9, 11, and 13, 7: Baldemair addresses a problem in carrier aggregation, whereby additional control information, such as an ARI, needs to be transmitted from the base station when a mobile device is assigned multiple component carriers. However, a constraint to developing a solution to this problem is that it is important to maintain backwards compatibility with the existing structure of the downlink messaging as set forth in standard LTE systems. Ex at 2:28-3:2. Therefore, adding additional fields to transmit the additional control information, Samsung Exhibit 1003, Page 40

44 thereby changing the downlink control messaging structure, would not be practical in this technological environment. Instead, Baldemair realized that it had to use the existing structure to send the additional control information. 90. To address this problem, Baldemair proposes using the TPC command field to transmit other control information when the network does not need to transmit power control information: An insight of great value is thus that when multiple CCs are assigned to a UE, the control bits normally used for TPC-commands related to all but one CC could be used to convey other relevant control information. One PDCCH would still need to carry the true TPCcommand. Ex at 7: Baldemair also discloses that this other relevant control information that can be transmitted in the now available TPC command field can be which PUCCH or PUSCH resources... should be used to convey the hybrid- ARQ bits of the corresponding downlink shared channel transmissions : There are several alternatives to what these freed format TPC-bits could be used for. For example, these bits could be used to signal which PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 7: This is equivalent to the information carried in the ACK resource indication (ARI) command. Ex at 12:64-13:15. Baldemair explains that the benefit of this approach is that overhead is reduced, since the Samsung Exhibit 1003, Page 41

45 total number of transmitted bits is kept constant while the amount of payload is increased. Ex at 13: Baldemair I understand that in order to show that Baldemair is entitled to claim priority to Baldemair 962, Baldemair 962 must disclose (1) support for the relevant asserted claims in Baldemair and (2) all the relevant subject matter that Petitioner relies on to prove that claims 3-5 and 9-11 of the 587 Patent are invalid over Baldemair. In my opinion, Baldemair 962 provides the necessary disclosure for Baldemair, and therefore, Baldemair is entitled to the priority date of Baldemair Just like Baldemair, Baldemair 962 discloses a method in a mobile device operating in a Carrier Aggregation system with multiple Component Carriers that involves substituting for TPC bits in the DCIs related to all but one of the downlink CC s ARI bits for identifying which Physical Uplink channel resources will be used to convey the HARQ-ACK bits of the corresponding downlink shared channel transmissions. Ex at 11-12, To address the problem of sending additional control information, such as information to convey HARQ resource indications, within the existing carrier structure of downlink messages as set forth in the standard LTE system, Baldemair 962, just like Baldemair, proposes using the TPC command field as a Samsung Exhibit 1003, Page 42

46 common field within the DCI that transmits TPC information on one downlink component carrier (primary component carrier) and other control information (such as the hybrid-arq resource indication bits, ARI) in the TPC field of the DCI sent on other component carriers (secondary component carrier): In case the terminal receives downlink assignments on multiple CC, the TPC bit field transmitted on one PDCCH is used to transmit a true TPC command. * * * The TPC field in the other PDCCH is used to convey other information. One possibility is to use these bits to signal the PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 15; see also id. at 5-6, FIG. 1. The above disclosure in Baldemair 962 also provides support for the relevant claims in Baldemair, such as claim 1 in Baldemair. By way of further support to claim 1 in Baldemair, Baldemair 962 also discloses Ex at 12. [t]herefore, according to the basic idea of embodiments of the present invention, TPC bit fields are transmitted in all DCI messages containing downlink assignments, whereby only the TPC bits transmitted within one PDCCH contains a true TPC commands. The other TPC bit fields are used to signal some other relevant information. 94. Baldemair 962, like Baldemair, makes it clear that the TPC field is part of the DCI: Samsung Exhibit 1003, Page 43

47 Scheduling of the CC is done on the Physical Downlink Control Channel (PDCCH) via downlink assignments. Control information on the PDCCH is formatted as a Downlink Control Information (DCI) message. DCI messages for downlink assignments contain among other resource block assignment, modulation and coding scheme related parameters, hybrid-arq redundancy version, etc. In addition to those parameters that relate to the actual downlink transmission most DCI formats for downlink assignments also contain a bit field for Transmit Power Control (TPC). Ex at Accordingly, it is my opinion that Baldemair 962 provides the necessary support for Baldemair, and therefore, Baldemair can claim priority to Baldemair 962. B. TS I understand that TS was available on the 3GPP website as of December 22, See pecificationid=2427 (last accessed 5/23/2017). Therefore, I understand that TS is prior art to the 587 Patent. 96. TS sets forth the physical layer standards for the LTE system. In its infringement contentions to Samsung in the related matter Huawei Techs. Co., Ltd. v. Samsung Elecs. Co., Ltd. et al., Case No 3:16-cv (N.D. Cal.), Huawei relies on TS v , a later version of TS as relied on here as a primary prior art reference, to set forth its infringement allegations. See Samsung Exhibit 1003, Page 44

48 Ex By complying with TS v , Huawei alleges that Samsung s products infringe claims 3-5 and 9-11 of the 587 Patent. Id. 97. TS describes a UE procedure for determining physical uplink control channel assignment and the feedback of ACK/NACK information: The parameter Simultaneous-AN-and-CQI provided by higher layers determine if a UE can transmit a combination of CQI and HARQ-ACK on PUCCH in the same subframe. For TDD, two ACK/NACK feedback modes are supported by higher layer configuration. Ex at Section ACK/NACK bundling using PUCCH format 1a or 1b, which is the default mode - ACK/NACK multiplexing using PUCCH format 1b with channel selection 98. TS also discloses a DCI field that is used for scheduling: A UE shall validate DCI formats 0, 1, 1A, 2, 2A received for which the CRC is scrambled by the Semi-Persistent C-RNTI and where the new data indicator field, in case of DCI formats 2 and 2A for the enabled transport block, is set to 0 by verifying that all the conditions for the respective used DCI format according to Table are met. In case not all these conditions are met, the received DCI format shall be considered by the UE as having been received with a non-matching CRC. Ex at Section 9.2. TS also discloses that the DCI includes a TPC command field and that this TPC command can be used as an index to one of the Samsung Exhibit 1003, Page 45

49 four PUCCH resource indices configured by higher layers.... Ex at Section This language in TS Section 9.2 is similar to the language that Huawei relies on to show infringement in the related case. See Ex at 9 ( The TPC field in the DCI format of the corresponding PDCCH shall be used to determine the PUCCH resource values from one of the four resource values configured by higher layers.... ). The primary use of the PUCCH is for sending ACK/NACK information. Ex at Therefore, TS discloses the use of bits in the TPC field to send acknowledgement resource information was known and used in the 3GPP standards as early as Release-8 and therefore well before the priority date of the 587 Patent. C. Damnjanovic 100. Damnjanovic was filed on March 12, 2009 and issued as US Patent 9,036,564 on May 19, Damnjanovic claims priority to U.S. Provisional Application No. 61/040,609, filed on March 28, 2008, and was published on October 1, Therefore, I understand that Damnjanovic is prior art to the 587 Patent Damnjanovic discloses re-using fields in a scheduling message (i.e., DCI), such as the TPC command field, to carry ACK resource assignment for semi-persistent scheduling in a LTE system. Ex at Abstract, [0008]. Samsung Exhibit 1003, Page 46

50 Damnjanovic discloses that the LTE system may support dynamic scheduling and semi-persistent scheduling. Ex at [0007]. For dynamic scheduling, a scheduling message may be sent with each transmission of data and may convey parameters and resources used for that transmission of data. For semi-persistent scheduling, a scheduling message sent once may be applicable for multiple transmissions of data. Ex at [0025]. For semi-persistent scheduling, it is unnecessary to transmit all of the command fields with each scheduling message, so Damnjanovic discloses re-using at least one of the existing fields that would normally be used to carry commands for dynamic scheduling, such as the TPC command field, to carry an ACK resource assignment. Ex at [0039]. In yet another design, an ACK resource assignment may be sent in the TPC command field. Two bits are available in the TPC command field. Hence, up to four ACK resources may be configured and assigned indices of 0 to 3. A 2-bit ACK resource index for one of up to four configured ACK resources may be sent in the TPC command field to the UE. Ex at [0050] (emphasis added). IX. CLAIMS 3-5 AND 9-11 OF THE 587 PATENT ARE OBVIOUS IN VIEW OF THE PRIOR ART 102. Claim 3 is an independent method claim and claim 9 is the counterpart independent apparatus claim to claim 3. Independent claims 3 and 9 claim a method and apparatus respectively, for feeding back ACK/NACK information. The claims require reusing a common field in the DCI for both the TPC command Samsung Exhibit 1003, Page 47

51 and the ARI command. Whether the TPC command or the ARI command is sent in the common field is based on the type of downlink component carrier Claims 4-5 depend directly from claim 3 and claims depend directly from claim 9. These dependent claims had the requirement that the downlink component carrier comprising the DCI correspond to a PDSCH transmission of a downlink primary component carrier (claims 4 and 10) and that at least one piece of the DCI transmitted by the downlink component carrier comprise at least one piece of DCI transmitted on a downlink primary component carrier (claims 5 and 11) Below I address the references that, in my opinion, render claims 3-5 and 9-11 of the 587 Patent invalid. A. Baldemair Renders Obvious Claims 3-5 and In my opinion, Baldemair renders obvious claims 3-5 and 9-11 of the 587 Patent. As explained above, Baldemair teaches a method in a mobile device that involves transmitting resources used to convey hybrid-arq bits in the TPC command field in the DCI that are not related to power control in carrier aggregation mode. See Ex at Abstract, Figs. 9, 11, and 13, 7: Prior to the 587 Patent priority date, Baldemair disclosed all the limitations of these claims alone or in combination with the knowledge of one skilled in the art Below, I address each claim limitation individually. Samsung Exhibit 1003, Page 48

52 1. Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 3 of the 587 Patent. Claim 3 is reproduced below: 3. A method for feeding back Acknowledgement/Negative-acknowledgement (ACK/NACK) information for carrier aggregation, the method comprising: receiving downlink control information (DCI) which is sent by a base station and transmitted by a downlink component carrier; and feeding back ACK/NACK information according to a command indicated by a common field preset in the DCI, wherein the common field is configured as one command according to a type of a downlink component carrier transmitting the DCI, and the common field is indicative of one of a transmission power control (TPC) command and an ACK resource indication (ARI) command, wherein the common field is configured by configuring the common field in at least one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and configuring the common field in at least one piece of DCI transmitted by a non-system-linked downlink component carrier as an ARI command. a) Preamble: A method for feeding back Acknowledgement/Negative acknowledgement (ACK/NACK) information for carrier aggregation 108. In my opinion, Baldemair teaches the preamble of claim 3. Just like the 587 Patent, Baldemair discloses a system supporting carrier aggregation: Samsung Exhibit 1003, Page 49

53 Methods and arrangements in the network node and mobile terminal, respectively, in a wireless communication system supporting aggregation of component carriers. Ex at Abstract (emphasis added) Baldemair provides a schematic view illustrating five component carriers of 20MHz each, together forming an aggregated bandwidth of 100 MHz: Ex at Fig. 7, 2: Baldemair explains the benefits of LTE-A, in that it takes advantage of the current LTE Release 8 carrier structure to provide larger bandwidth for terminals communicating in the network. Ex at 2: This allowed legacy terminals to still operate on LTE-A networks. Id Baldemair further discloses feeding back ACK/NACK information in carrier aggregation: An insight of great value is thus that when multiple CCs are assigned to a UE, the control bits normally used for PTC-commands related to all but one CC could be used to convey other relevant control information. One PDCCH would still need to carry the true PTCcommand. Samsung Exhibit 1003, Page 50

54 There are several alternatives to what these freed former TPC-bits could be used for. For example, these bits could be used to signal which PUCCH to PUSCH resources that should be used to convey the hybrid- ARQ bits of the corresponding downlink shared channel transmissions. Ex at 7:32-41 (emphasis added). Baldemair discloses that bits transmitted in the freed former TPC-bits field could be used to signal which PUCCH to PUSCH resources. These resources are used to convey HARQ bits of the corresponding downlink shared channel transmissions. A mobile device would then use these HARQ resource bits to feed back ACK/NACK information In my opinion, these excerpts from Baldemair illustrate that ACK/NACK information is fed back in a system that uses multiple component carriers (i.e., carrier aggregation) Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 discloses a system supporting carrier aggregation: Ex at 10. The straightforward way to obtain this would be by means of carrier aggregation. Carrier aggregation implies that an LTE-Advanced terminal can receive multiple CC, where the CC have, or at least the possibility to have, the same structure as a Rel-8 carrier Baldemair 962 further discloses feeding back ACK/NACK information in carrier aggregation: Scheduling of the CC is done on the Physical Downlink Control Channel (PDCCH) via downlink assignments. Samsung Exhibit 1003, Page 51

55 Ex at Control information on the PDCCH is formatted as a Downlink Control Information (DCI) message. DCI messages for downlink assignments contain among others resource block assignment, modulation and coding scheme related parameters, hybrid-arq redundancy version, etc. In addition o those parameters that relate to the actual downlink transmission most DCI formats for downlink assignments also contain a bit field for the Transmit Power Control (TPC) commands. These TPC commands are used to control the uplink power control behavior of the corresponding PUCCH that is used to transmit the hybrid-arq feedback. b) [3A]: receiving downlink control information (DCI) which is sent by a base station and transmitted by a downlink component carrier 114. In my opinion, Baldemair teaches claim element [3A]. Baldemair teaches that a base station transmit control information related to resource blocks in a downlink subframe: Downlink transmission are dynamically scheduled in LTE, i.e., in each subframe, a base station transmits control information concerning which mobile terminals data is transmitted to, and upon which resource blocks the data is transmitted in the current downlink subframe. Ex at 1:30-34 (emphasis added) As Baldemair discloses, this control information is transmitted in the downlink on the PDCCH and formatted as a DCI: Scheduling of a CC is done on the Physical Downlink Control Channel (PDCCH) via downlink assignments. Control information on the PDCCH is formatted as a Downlink Control Information (DCI) message Samsung Exhibit 1003, Page 52

56 comprising predetermined bit fields for different types of control information. Ex at 2:55-59 (emphasis added). The PDCCH is a downlink component carrier Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 discloses receiving DCI sent by a base station and transmitted by a downlink component carrier: Ex at Scheduling of the CC is done on the Physical Downlink Control Channel (PDCCH) via downlink assignments. Control information on the PDCCH is formatted as a Downlink Control Information (DCI) message. DCI messages for downlink assignments contain among other resource block assignment, modulation and coding scheme related parameters, hybrid-arq redundancy version, etc. In addition to those parameters that relate to the actual downlink transmission most DCI formats for downlink assignments also contain a bit field for Transmit Power Control (TPC). c) [3B]: feeding back ACK/NACK information according to a command indicated by a common field present in the DCI, wherein the common field is configured as one command according to a type of a downlink component carrier transmitting the DCI, and the common field is indicative of one of a transmission power control (TPC) command and an ACK resource indication (ARI) command 117. In my opinion, Baldemair teaches claim element [3B] First, Baldemair recognizes that when a UE is assigned to multiple component carriers, only one PDCCH needs to carry the TPC-command bits in the Samsung Exhibit 1003, Page 53

57 DCI. Ex at 7: That TPC-command can then be used for all the component carriers. Once, the TPC-command is sent to the UE, the TPCcommand field in the DCI in the other component carriers can be used to transmit other types of control information, such as bits to signal which PUCCH or PUSCH resources should be used to convey the HARQ bits of the corresponding downlink shared channel transmission (i.e., the claimed ARI-command). Id Baldemair discloses using the TPC-command field in the DCI as the common field that can indicate the TPC command or the ARI command: Ex at 7: An insight of great value is thus that when multiple CCs are assigned to a UE, the control bits normally used for TPC-commands related to all but one CC could be used to convey other relevant control information. One PDCCH would still need to carry the true TPCcommand. There are several alternatives to what these freed former TPC-bits could be used for. For example, these bits could be used to signal which PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmission Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair discloses using the TPC-command field as a common field in the DCI that can indicate the TPC command or the ARI command: Samsung Exhibit 1003, Page 54

58 In case the terminal receives downlink assignments on multiple CC, the TPC bit field transmitted on one PDCCH is used to transmit a true TPC command. * * * The TPC field in the other PDCCH is used to convey other information. One possibility is to use these bits to signal the PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 15; see also id. at 5-6, FIG Second, Baldemair discloses feeding back ACK/NACK information according to a command indicated by a common field present in the DCI. For example, Baldemair discloses that the bits in a common field the freed former TPC-bits could be used to signal which PUCCH or PUSCH resources [i.e., ARI command] that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 7:37-41 (emphasis added). The UE uses these bits to feed back ACK/NACK information to the base station Baldemair 962 provides the same disclosure. Ex at 15 ( One possibility is to use these bits to signal the PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. ) Third, Baldemair discloses that the common field is configured as a TPC-command or ARI-command according to a type of a downlink component Samsung Exhibit 1003, Page 55

59 carrier transmitting the DCI. For example, Baldemair discloses that in the case where multiple component carriers are assigned to a UE, the control bits normally used for TPC-commands related to all but one CC could be used to convey other relevant control information. One PDCCH would still need to carry the true TPC-command. Ex at 7:32-36 (emphasis added). Furthermore, at Figure 9, Baldemair teaches a procedure for transmitting other control information in a wireless communication system supporting aggregation of component carriers: Ex at Fig. 9 (emphasis added) In Figure 9 above, at steps 906 and 908, the network node configures the TPC-command field (i.e., common field) to contain the TPC-command bits on Samsung Exhibit 1003, Page 56

60 the PDCCH of one downlink component carrier and other control info on the PDCCH of other downlink component carriers. Ex at Fig. 9, 8:62-9:7. Baldemair makes it clear that one downlink component carrier will carry the TPCcommand and the other downlink component carriers carry other control information, which Baldemair teaches can be bits used to signal which PUCCH or PUSCH resource that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at Fig. 9, 8:62-9:7, 7: Baldemair 962 provides the same disclosure. For example, Baldemair 962 discloses transmitting the TPC-command to only one of the Downlink Control Messages (DCI) messages conveying the downlink assignment and using the bit fields corresponding to the TPC command in the other PDCCH to convey other relevant information. Ex at When a downlink component carrier in a carrier aggregation system includes the TPC-command in the common field to indicate power control, there is no explicit indication for the location of the uplink ACK resource, and therefore, in order for the mobile device to know how to transmit ACK/NACK information, it utilizes implicit mapping of the uplink carrier, otherwise, the mobile device will not know which resource to transmit the ACK/NACK information. The 587 Patent refers to this as the system-linked downlink component carrier. One of Samsung Exhibit 1003, Page 57

61 skill in the art would understand that Baldemair discloses configuring the common field as a TPC-command when the downlink component carrier is implicitly mapped to an uplink component carrier, one type of downlink component carrier. Baldemair 962 discloses when the TPC-command is transmitted, it is implicitly mapped to an uplink component carrier. See Ex at Conversely, when a downlink component carrier includes an ARIcommand in the common field to include the ACK resource, the ARI-command is an explicit mapping of resources to feed back ACK/NACK information. The 587 Patent refers to this as the non-system-linked downlink component carrier. One of skill in the art would understand that Baldemair discloses configuring the common field as an ARI-command when the downlink component carrier needs to be explicitly mapped to an uplink component carrier, another type of downlink component carrier. Baldemair 962 discloses when an ARI-command is transmitted, the ARI command is an explicit mapping of resources. See Ex at As further evidence that Baldemair discloses configuring the common field as a TPC-command or ARI-command based on the type of downlink component carrier, Baldemair teaches the use of a primary component carrier. Baldemair discloses that that all uplink control information for a UE should be semi-statically mapped onto one specific uplink component carrier, a so called Samsung Exhibit 1003, Page 58

62 anchor carrier or uplink primary component carrier. Ex at 7:15-19 (emphasis added). To set up a communication, one of skill in the art understands that the mobile device must transmit uplink control information to the base station and the base station needs to transmit downlink control information, including the TPC-command, to the mobile device. As disclosed in Baldemair, this uplink control information is transmitted on an uplink primary component carrier. Ex at 7: Conversely, the downlink control information, including the TPC-command, must be transmitted on a downlink primary component carrier, which is the same as the 587 Patent s disclosure of a system-linked downlink component carrier. Once this connection is done, other downlink and uplink component carriers (non-primary or secondary component carriers) can be assigned to the UE, and these component carriers can then be used to convey additional control information, such as the ARI-command to the UE. A downlink primary component carrier and a downlink non-primary or secondary component carrier are types of downlink component carriers, as set forth in claim Therefore, one of skill in the art would understand that the common field in Baldemair can be configured as a TPC-command when transmitting DCI on a downlink primary component carrier (i.e., system-linked downlink component carrier) and as an ARI-command when transmitting DCI on a non-primary or secondary component carrier (non-system-linked downlink component carrier). Samsung Exhibit 1003, Page 59

63 d) [3C]: wherein the common field is configured by configuring the common field in at least one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and configuring the common field in at least one piece of DCI transmitted by a nonsystem-linked downlink component carrier as an ARI command In my opinion, Baldemair teaches claim element [3C] for the reasons I explained above and for the additional reasons I set forth below As I explained above, one of skill in the art would understand that Baldemair discloses configuring the common field as a TPC-command or an ARIcommand according to a type of downlink component carrier (system-linked or non-system-linked). As explained above, one of skill in the art would also understand that Baldemair discloses that the type of downlink component carrier can be system-linked downlink component carrier or a non-system-linked downlink component carrier As I explained above, a downlink primary component carrier is one in which the TPC-command is transmitted in the DCI and its ACK channel resource is implicitly mapped. This is the same as a system-linked downlink component carrier. As the 587 Patent explains, if an uplink ACK channel resource implicitly mapped from a PDCCH is reserved on one uplink component carrier for a certain downlink component carrier, the downlink component carrier is described as a system-linked downlink component carrier of the uplink component carrier. See Samsung Exhibit 1003, Page 60

64 Ex at 7: Therefore, for the same reasons set forth above for claim element [3B], one of skill in the art would understand that Baldemair discloses a system-linked downlink component carrier on which the TPC-command in the common field is transmitted Conversely, a downlink secondary component carrier is one in which the ACK channel resource (i.e., ARI-command) is explicitly mapped from the corresponding PDCCH, via the common field the ARI-command indicates an ACK channel resource that the mobile device should use to transmit ACK/NACK information in the uplink. This is the same as a non-system-linked downlink component carrier. A non-system linked downlink component carrier is the converse of the definition of a system-linked downlink component carrier ACK channel resource is explicitly mapped instead of implicitly mapped. Therefore, for the same reasons set forth above for claim element [3B], one of skill in the art would understand that Baldemair discloses a non-system-linked downlink component carrier on which the ARI-command in the common field is transmitted. 2. Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 4 of the 587 Patent. Claim 4, which depends from claim 3, is reproduced below: 4. The method according to claim 3, wherein the at least one piece of DCI transmitted by a system-linked Samsung Exhibit 1003, Page 61

65 downlink component carrier comprises DCI corresponding to physical downlink shared channel (PDSCH) transmission of a downlink primary component carrier Baldemair teaches that at least one piece of the DCI transmitted by the system-linked downlink component carrier comprises DCI corresponding to a physical downlink shared channel (PDSCH) transmitted on that carrier. For example, Baldemair teaches that the DCI in a CC carries downlink resource block assignments, which one of the skill in the art understands corresponds to resource block assignments of the PDSCH which carries user data over that CC: Ex at 2: Scheduling of a CC is done on the Physical Downlink Control Channel (PDCCH) via downlink assignments. Control information o n the PDCCH is formatted as a Downlink Control Information (DCI) message comprising predetermined bit fields for different types of control information. DCI messages for downlink assignments contain, among other things, resource block assignment, modulation and coding scheme related parameters, hybrid-arq redundancy version, etc The PDSCH is a very well known channel that was incorporated into the LTE Release 8 systems. For example, Figure 3 in Baldemair illustrates the location of certain downlink channels in LTE, according to the prior art. Ex at 5: Figure 3 identifies a PDSCH as a downlink channel in the LTE Release 8 system: Samsung Exhibit 1003, Page 62

66 Ex at Fig. 3 (emphasis added) Furthermore, Baldemair discloses that the control bits in the DCI, such as the TPC-bits or the ARI-Indicator, are transmitted on this physical downlink shared channel transmission: [t]here are several alternatives to what these freed former TPC-bits could be used for. For example, these bits could be used to signal which PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmission. Ex at 7:32-41 (emphasis added). The UE feeds back HARQ bits, or acknowledgement information, based on whether it correctly received the corresponding downlink shared channel transmission. Id Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 discloses that The TPC field in the other PDCCH is used to convey other information. One possibility is to use these bits to Samsung Exhibit 1003, Page 63

67 signal the PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 15 (emphasis added) Furthermore, one of skill in the art would understand that the disclosure in Baldemair teaches a downlink primary component carrier. As I explain above for claim element [3B], Baldemair discloses that all uplink control information for a UE should be semi-statically mapped onto one specific uplink component carrier, a so called anchor carrier or uplink primary component carrier. Ex at 7: To set up a communication, one of skill in the art understands that the mobile device must transmit uplink control mapping information to the base station and the base station needs to transmit downlink control information, including the TPC-command, to the mobile device. As disclosed in Baldemair, this uplink control information is transmitted on an uplink primary component carrier. Ex at 7: Conversely, one of skill in the art would understand that the downlink control information, including the TPCcommand, must be transmitted on a downlink primary component carrier. 3. Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 5 of the 587 Patent. Claim 5, which depends from claim 3, is reproduced below: Samsung Exhibit 1003, Page 64

68 5. The method according to claim 3, wherein the at least one piece of DCI transmitted by a system-linked downlink component carrier comprises at least one piece of DCI transmitted by a downlink primary component carrier For the same reasons I explain above for why Baldemair teaches claims 3 and 4, Baldemair also teaches claim Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 9 of the 587 Patent. Claim 9 is the apparatus version of claim 3, and therefore, my analysis of claim 3 above, applies equally to why Baldemair teaches alone or in combination with the knowledge of one skilled in the art the elements of claim 9. Claim 9 is reproduced below: 9. A user equipment, comprising: a receiving module, configured to receive downlink control information (DCI) that is sent by a base station and transmitted by a downlink component carrier; and a feedback module, configured to feed-back Acknowledgement/Negative-acknowledgement (ACK/NACK) feedback information according to a command indicated by a common field preset in the DCI, wherein the common field is configured as one command according to a type of a downlink component carrier transmitting the DCI, and the common field is indicative of one of a transmission power control (TPC) command and an ACK resource indication (ARI) command, wherein the common field is configured by configuring the common field in at least one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and Samsung Exhibit 1003, Page 65

69 configuring the common field in at least one piece of DCI transmitted by a non-system-linked downlink component carrier as an ARI command. a) Preamble: A user equipment 143. In my opinion, Baldemair teaches the preamble of claim 9. Baldemair discloses mobile terminal, which is the same as a user equipment. In 3GPP, the term user equipment means a cell phone, mobile device, mobile terminal, laptop equipped with a cellular modem any mobile device that can communicate through the cellular protocols For example, Baldemair discloses the following mobile terminal: The procedure in a mobile terminal could also be described as follows: When a received assignment is determined to concern resources on at least two component carriers, the bits in a certain bit field in a message received over a first PDCCH are interpreted as power control bits, and the bits in a corresponding bit field in a message received over a second PDCCH are interpreted as other relevant control information, i.e. other than power control. Examples of such other control information is: an indication or part of an indication of PUCCH or PUSCH resources to be used for conveying e.g. H-ARQ related information; an indication or part of an indication of resource block assignment s on a DL component carrier being assigned to the mobile terminal; and an indication of to which component carrier the PDCCH carrying the indication is associated. Ex at 12:64-13:12 (emphasis added). Samsung Exhibit 1003, Page 66

70 145. Figure 9 in Baldemair discloses that the TPC-command and other control information is transmitted on the PDCCH to the UE (user equipment): Ex at Figure 9 (emphasis added) Furthermore, claims 16 and 21 (along with their corresponding dependent claims) in Baldemair claim a method and apparatus respectively for a mobile terminal. Ex at 15:26-54, 16: Figure 11 illustrates the claimed procedure steps executed in a mobile terminal and Figure 12 illustrates a claimed embodiment of an arrangement in a mobile terminal: Samsung Exhibit 1003, Page 67

71 Ex at Fig. 11; see also id. at 10: Samsung Exhibit 1003, Page 68

72 Ex at Fig. 12; see also id. at 10:50-11: Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 also discloses a UE: In case the terminal receives downlink assignments on multiple CC, the TPC bit field transmitted on one PDCCH is used to transmit a true TPC command. The UE needs to know in which of the PDCCH the TPC bit field is the TPC command. Ex at 15 (emphasis added). From a UE perspective, both symmetric and asymmetric uplink/downlink CC configurations are supported. For some of the configurations, one may consider the possibility to transmit the uplink control information on multiple PUCCH or multiple uplink CC. Ex at 11 (emphasis added). b) [9A]: a receiving module, configured to receive downlink control information (DCI) that is sent by a base station and transmitted by a downlink component carrier 149. In my opinion, Baldemair teaches claim element [9A]. For the same reasons I described above for claim element [3A], Baldemair teaches claim element [9A] In addition, claim element [9A] claims a receiving module. Baldemair discloses a receiving unit that is adapted to receive control messages comprising downlink resource assignments. Ex at 10: Figure 12 illustrates this receiving unit: Samsung Exhibit 1003, Page 69

73 Ex at Fig. 12 (emphasis added); 10:50-11:24; see also id. at Fig By way of further example, Baldemair discloses a mobile terminal with a receiving module that is responsible for performing the claimed functionality: [w]hen a received assignment is determined to concern resources on at least two component carriers, the bits in a certain bit field in a message received over a first PDCCH are interpreted as power control bits, and the bits in a corresponding bit field in a message received over a second PDCCH are interpreted as other relevant control information, i.e. other than power control. Examples of such other control information is: an indication or part of an indication of PUCCH or related information; an indication or part of an indication of resource block assignments on a DL component carrier being assigned to the mobile terminal; and an indication of to which Samsung Exhibit 1003, Page 70

74 Ex at 12:64-11:15. component carrier the PDCCH carrying the indication is associated Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 also discloses a receiving module: In case the terminal receives downlink assignments on multiple CC, the TPC bit field transmitted on one PDCCH is used to transmit a true TPC command... The TPC field in the other PDCCH is used to convey other information. One possibility is to use these bits to signal the PUCCH or PUSCH resources that should be used to convey the hybrid-arq bits of the corresponding downlink shared channel transmissions. Ex at 15 (emphasis added). c) [9B]: a feedback module, configured to feed-back Acknowledgement/Negative-acknowledgement (ACK/NACK) feedback information according to a command indicated by a common field preset in the DCI, wherein the common field is configured as one command according to a type of a downlink component carrier transmitting the DCI, the common field is indicative of one or a transmission power control (TPC) command and an ACK resource indication (ARI) command 153. In my opinion, Baldemair teaches claim element [9B]. For the same reasons I described above for the preamble of claim 3 and claim element [3B], Baldemair teaches claim element [9B] In addition, claim element [9B] claims a feedback module. Baldemair discloses a transmitting unit that is adapted to transmit, e.g., reports related to the downlink channel conditions, to other network entities, such as Samsung Exhibit 1003, Page 71

75 feeding back ACK/NACK feedback information. Ex at 11:7-17. Figure 12 illustrates this transmitting unit: Ex at Fig Baldemair discloses that the transmitting unit is responsible for the claimed functionality of the feedback module in claim 9 feeding back ACK/NACK feedback information: The arrangement further comprises a utilizing unit 1208, adapted to use said obtained other relevant control information not related to power control for locating information related to downlink or uplink transmissions. The locating of information could involve e.g. indicating certain PUCCH or PUSCH resources; extending resource block assignments or indicating which component carrier that is addressed by a certain PDCCH. The arrangement may further comprise a Samsung Exhibit 1003, Page 72

76 Ex at 11:7-17. transmitting unit 1210, adapted to transmit, e.g., reports related to the downlink channel conditions, to other network entities Baldemair 962 supports the above disclosure of Baldemair. For example, Baldemair 962 also discloses a feed back module. Ex at 8. d) [9C]: wherein the common field is configured by configuring the common field in at least one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and configuring the common field in at least one piece of DCI transmitted by a nonsystem-linked downlink component carrier as an ARI command In my opinion, Baldemair teaches claim element [9C]. For the same reasons I described above for claim element [3C], Baldemair teaches claim element [9C]. 5. Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 10 of the 587 Patent. Claim 10, which depends from claim 9, is reproduced below: 10. The user equipment according to claim 9, wherein the at least one piece of DCI transmitted by a system-linked downlink component carrier comprises DCI corresponding to physical downlink shared channel (PDSCH) transmission of a downlink primary component carrier. Samsung Exhibit 1003, Page 73

77 159. For the same reasons I explain above for why Baldemair teaches claims 4, Baldemair also teaches claim Claim In my opinion, Baldemair discloses alone or in combination with the knowledge of one skilled in the art claim 11 of the 587 Patent. Claim 11, which depends from claim 9, is reproduced below: 11. The user equipment according to claim 9, wherein the at least one piece of DCI transmitted by a system-linked downlink component carrier comprises at least one piece of DCI transmitted by a downlink primary component carrier For the same reasons I explain above for why Baldemair teaches claims 5, Baldemair also teaches claim For all the reasons I set forth above, it is my opinion that Baldemair renders obvious claims 3-5 and 9-11 of the 587 Patent. B. Baldemair In View of TS Renders Obvious Claims 3-5 and In my opinion, Baldemair in view of TS renders obvious claims 3-5 and 9-11 of the 587 Patent A person of ordinary skill in the art would have combined the teachings in Baldemair and TS to render claims 3-5 and 9-11 of the 587 Patent invalid. Samsung Exhibit 1003, Page 74

78 165. First, both references are concerned with LTE cellular technology Baldemair with LTE-A (Ex at 2:43-54) and TS with LTE (Ex at 74) Second, both references address issues related to feeding back ACK/NACK information in LTE networks. For example, Baldemair discloses that Ex at 1: [i]n LTE, hybrid-arq is used, where after receiving downlink data in a subframe, a mobile terminal attempts to decode it and reports to a base station whether the decoding was successful or not. When the decoding has been successful, the report comprises an ACK (ACKnowledgment), and when the decoding was not successful, the report comprises a NAK (Negative AcKnowledgement). In case of an unsuccessful decoding attempt, the base station can retransmit the erroneous data Similarly, TS discloses that The parameter Simultaneous-AN-and-CQI provided by higher layers determine if a UE can transmit a combination of CQI and HARQ-ACK on PUCCH in the same subframe. For TDD, two ACK/NACK feedback modes are supported by higher layer configuration. Ex at Section ACK/NACK bundling using PUCCH format 1a or 1b, which is the default mode - ACK/NACK multiplexing using PUCCH format 1b with channel selection Samsung Exhibit 1003, Page 75

79 168. Third, Baldemair explicitly references LTE Release 8, which is the same LTE standard release to which TS , as identified in its title, sets forth standards. 1 Accordingly, a person of ordinary skill in the art would have been motivated when reading Baldemair to review and utilize the teachings in TS and the other LTE Release 8 standards to develop technology for transmitting ACK resource information to a mobile device in carrier aggregation Fourth, Baldemair teaches that it is important for features in LTE-A to ensure backwards compatibility with LTE Release 8. For example, Baldemair discloses that [t]he LTE Release-8 standard supports bandwidths up to 20 MHz. In order to meet the IMT-Advanced requirements, bandwidths larger than 20 MHz nee to be supported. However, one important requirement is to assure backwards compatibility with LTE Release-8 for legacy terminals. This should also include spectrum compatibility with LTE Release-8 for legacy terminals. This should also include spectrum compatibility. That would imply that an LTE-Advanced carrier should appear as a number of LTE carriers to an LTE Release- 8/9 terminal. Each such carrier can be referred to as a component carrier (CC). Ex at 2: As I explain above, maintaining backwards compatibility with the existing structure of the component carriers as set forth in standard LTE 1 TS is titled Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E- UTRA); Physical layer procedures (Release 8). Ex at 1 (emphasis added). Samsung Exhibit 1003, Page 76

80 Release 8 systems was important and Baldemair recognized this importance. Ex at 2:28-3:2. Baldemair realized that it had to use the existing LTE Release 8 carrier structure to send the additional control information. Therefore, in developing a solution, one of ordinary skill in the art would be motivated to review and utilize the teachings in the Release 8 standards, such as TS Even in the context of carrier aggregation in LTE-A, Baldemair makes it clear that the structure of these carriers needs to be same as the carrier structure set forth in Release-8: Carrier aggregation implies that an LTE-Advanced terminal can receive multiple CCs, where each CC has, or is at least able to have, the same structure as a Release- 8 carrier. Ex at 2: As shown in Baldemair, a single carrier in LTE Release 8 and the component carrier in LTE-A Release 10 must have the same or similar structure LTE-A expands the single carrier framework to multiple carriers, which each contain the LTE Release 8 carrier structure. Id Baldemair specifically teaches utilizing Release-8 standards in developing solutions to feeding back ACK/NACK information in LTE-A. Id. Therefore, the interdependent nature of these references was recognized by Baldemair and one of skill in the art would understand how to combine the disclosure in Baldemair, which discloses multiple carriers, to the single carrier structure in TS Samsung Exhibit 1003, Page 77

81 172. Accordingly, a person of ordinary skill in the art would have been motivated to combine the teachings of Baldemair and TS to fully describe a known solution to a known problem Below, I address each claim limitation individually. 1. Claim In my opinion, Baldemair and TS disclose or render obvious in combination claim 3. a) Preamble: A method for feeding back Acknowledgement/Negative acknowledgement (ACK/NACK) information for carrier aggregation 175. As I explained above, Baldemair discloses the preamble of claim 3, at least for the reasons I described above. However, to the extent the Patent Owner argues that Baldemair does not teach the preamble, it is taught by TS For example, TS teaches feeding back Acknowledgement/Negative acknowledgement (ACK/NACK) information in LTE Release 8 systems: The parameter Simultaneous-AN-and-CQI provided by higher layers determine if a UE can transmit a combination of CQI and HARQ-ACK on PUCCH in the same subframe. For TDD, two ACK/NACK feedback modes are supported by higher layer configuration. - ACK/NACK bundling using PUCCH format 1a or 1b, which is the default mode Samsung Exhibit 1003, Page 78

82 - ACK/NACK multiplexing using PUCCH format 1b with channel selection Ex at Section Thus, Baldemair and TS disclose or render obvious in combination the preamble of claim 3. b) [3A]: receiving downlink control information (DCI) which is sent by a base station and transmitted by a downlink component carrier 177. As I explained above, Baldemair discloses claim element [3A], at least for the reasons I described above. However, to the extent the Patent Owner argues that Baldemair does not teach claim element [3A], it is taught by TS TS teaches receiving DCI sent by a base station and transmitted by a downlink component carrier. For example, TS discloses that [a] UE shall validate DCI formats 0, 1, 1A, 2, 2A received for which the CRC is scrambled by the Semi- Persistent C-RNTI and where the new data indicator field, in case of DCI formats 2 and 2A for the enabled transport block, is set to 0 by verifying that all the conditions for the respective used DCI format according to Table are met. In case not all these conditions are met, the received DCI format shall be considered by the UE as having been received with a non-matching CRC. Ex at Section 9.2. TS discloses the fields within the various DCI formats: Samsung Exhibit 1003, Page 79

83 Ex at Table As illustrated in the table above, the first field in the DCI is the TPC command field. Id. Id. at Section 7.1. A UE shall upon detection of a PDCCH with DCI format 1, 1A, 1B, 1C, 1D, 2 or 2A intended for the UE in a subframe, decode the corresponding PDSCH in the same subframe TS discloses receiving the DCI information in the downlink from a base station: In case of validation, the UE shall consider the received DCI information as a valid semi-persistent assignment/grant. In addition, for the case that the DCI format indicates a downlink assignment, the TPC command for PUCCH field shall be used as an index to one of the four PUCCH resource indices configured by higher layers, with the mapping defined in Table Samsung Exhibit 1003, Page 80

84 Ex at Section 9.2 (emphasis added). As explained above, the base station is responsible for transmitting information to the UE in the downlink. c) [3B]: feeding back ACK/NACK information according to a command indicated by a common field present in the DCI, wherein the common field is configured as one command according to a type of a downlink component carrier transmitting the DCI, and the common field is indicative of one of a transmission power control (TPC) command and an ACK resource indication (ARI) command 180. As I explained above, Baldemair discloses claim element [3B], at least for the reasons I described above. However, to the extent the Patent Owner argues that Baldemair does not teach claim element [3B], it is taught by TS TS illustrates that re-using the TPC field bits to indicate an ARI-command was already used and incorporated into the Release-8 LTE standard before the 587 patent: In case of validation, the UE shall consider the received DCI information as a valid semi-persistent assignment/grant. In addition, for the case that the DCI format indicates a downlink assignment, the TPC command for PUCCH field shall be used as an index to one of the four PUCCH resource indices configured by higher layers, with the mapping defined in Table Ex at Section 9.2 (emphasis added) In this section, TS discloses that in a semi-persistent assignment, the TPC command in the DCI can be used to send an index to one of Samsung Exhibit 1003, Page 81

85 four PUCCH resource indices. The primary use of the PUCCH (physical uplink control channel) is for sending ACK/NACK information. Therefore, the PUCCH resource indices identified above in TS are resources for sending ACK/NACK information. This section illustrates that the concept of transmitting ACK resource indication information in place of the TPC command in the DCI was taught and used in Release-8 prior to the 587 Patent As explained above, since backwards compatibility with LTE Release-8 was an important aspect of developing LTE-A technology and it was important to use the Release-8 carrier structure, as disclosed in Baldemair (Ex at 2:32-54), it would have been obvious to one skilled in the art to extend this Release-8 feature of re-using TPC bits to send ACK resource indication information for the newer LTE-A system proposed in Baldemair. d) [3C]: wherein the common field is configured by configuring the common field in at least one piece of DCI transmitted by a system-linked downlink component carrier as a TPC command and configuring the common field in at least one piece of DCI transmitted by a nonsystem-linked downlink component carrier as an ARI command As I explained above, Baldemair discloses claim element [3C], at least for the reasons I described above. Samsung Exhibit 1003, Page 82

86 2. Claim As explained above, Baldemair teaches or renders obvious based on the knowledge of one of skill in the art claim Claim As explained above, Baldemair teaches or renders obvious based on the knowledge of one of skill in the art claim Claim In my opinion, Baldemair and TS disclose or render obvious in combination claim 9. a) Preamble: A user equipment 188. As I explained above, Baldemair discloses the preamble of claim 9, at least for the reasons I described above. However, to the extent the Patent Owner argues that Baldemair does not teach the preamble, it is taught by TS TS teaches a user equipment (i.e., UE ). As shown in the definitions section of TS , a user equipment as known and disclosed in LTE Release 8. Samsung Exhibit 1003, Page 83