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Case 3:15-cv-00154-JD Document 134 Filed 10/28/15 Page 1 of 23

1 GREGORY P. STONE (Bar No. 78329)
gregory.stone@mto.com
2 PETER A. DETRE (Bar No. 182619)
peter.detre@mto.com
3 ERIC P. TUTTLE (Bar No. 248440)
eric.tuttle@mto.com
4 BENJAMIN J. HORWICH (Bar No. 249090)
ben.horwich@mto.com
5 MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue, 35th Floor
6 Los Angeles, California 90071-1560
(213) 683-9100
7 Telephone:
Facsimile:
(213) 687-3702
8
COURTLAND L. REICHMAN (Bar No. 268873)
9 creichman@mckoolsmithhennigan.com
MCKOOL SMITH HENNIGAN, P.C.
10 255 Shoreline Drive, Suite 510
Redwood Shores, California 94065
11 Telephone:
(650) 394-1400
Facsimile:
(650) 394-1422
12

MIKE MCKOOL, JR. (pro hac vice)
mmckool@mckoolsmith.com
DOUGLAS A. CAWLEY (pro hac vice)
dcawley@mckoolsmith.com
MCKOOL SMITH HENNIGAN, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone:
(214) 978-1000
Facsimile:
(214) 978-4044
Attorneys for Ericsson Inc. and
Telefonaktiebolaget LM Ericsson

13

UNITED STATES DISTRICT COURT

14

NORTHERN DISTRICT OF CALIFORNIA

15
16 APPLE INC.,
17
18

Case No. 3:15-cv-00154-JD
Plaintiff,

vs.

19 TELEFONAKTIEBOLAGET LM
ERICSSON and ERICSSON, INC.,
20
Defendants.
21
22

DEFENDANTS’ OPPOSITION TO
APPLE’S MOTION FOR SUMMARY
JUDGMENT OF INVALIDITY OF
ASSERTED CLAIMS OF U.S. PATENT
NOS. 6,445,917 AND 8,023,990 UNDER 35
U.S.C. § 101
Judge: Hon. James Donato
Date:
Nov. 18, 2015
Time: 10:00 a.m.
Ctrm.: 11

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DEFENDANTS’ OPP. TO MOT. FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101

Case 3:15-cv-00154-JD Document 134 Filed 10/28/15 Page 2 of 23

1

TABLE OF CONTENTS

2

Page

3
I.

INTRODUCTION ................................................................................................................. 1

II.

LEGAL STANDARD ........................................................................................................... 1

4
5
A.

Presumption of Validity ............................................................................................ 1

B.

Summary Judgment ................................................................................................... 2

C.

Patent-Eligibility ....................................................................................................... 2

6
7
8
III.

’917 PATENT ....................................................................................................................... 5

9
A.

The Subject Matter and Claims of the ’917 Patent ................................................... 5

B.

The Claims of the ’917 Patent Are Not Directed to an Abstract Idea ....................... 9

C.

The Claims of the ’917 Patent Recite an Inventive Concept .................................. 12

10
11
12
IV.

’990 PATENT ..................................................................................................................... 14

13
A.

The Subject Matter and Claims of the ’990 Patent ................................................. 14

B.

The Claims of the ’990 Patent Are Not Directed to an Abstract Idea ..................... 16

C.

The Claims of the ’990 Patent Recite an Inventive Concept .................................. 17

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16
V.

CONCLUSION ................................................................................................................... 18

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1

TABLE OF AUTHORITIES

2

Page(s)

3 FEDERAL CASES
4 Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347 (2014) ................................................................................................... 1, passim
5
Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada,
6
687 F.3d 1266 (Fed. Cir. 2012) ................................................................................................1, 2
7
Bilski v. Kappos,
561 U.S. 593 (2010) .............................................................................................................3, 4, 5
8
9 buySAFE v. Google Inc.,
765 F.3d 1350 (Fed. Cir. 2014) ....................................................................................................4
10
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
11
776 F.3d 1343 (Fed. Cir. 2014) ....................................................................................................2
12

Contentguard Holdings Inc. v. Amazon.com, Inc.,
Nos. 2:13-cv-1112, 2:14-cv-61, 2015 WL 5853984 (E.D. Tex. Oct. 5, 2015) ............................5
13
14 DataTern, Inc. v. Microstrategy, Inc.,
Nos. 11-11970-FDS, 11-12220-FDS, 2015 WL 5190715 (D. Mass. Sept. 4,
15
2015).........................................................................................................................................2, 5
16 DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) ............................................................................................1, 4, 5
17
18 Diamond v. Diehr,
450 U.S. 175 (1981) ...................................................................................................................18
19
Intellectual Ventures I LLC v. Capital One Bank (USA),
20
792 F.3d 1363 (Fed. Cir. 2015) ......................................................................................12, 13, 18
21 Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
475 U.S. 574 (1986) .....................................................................................................................2
22
23 Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289 (2012) .............................................................................................................3, 4
24
Microsoft Corp. v. i4i Ltd. P’ship,
25
131 S. Ct. 2238 (2011) .............................................................................................................1, 2
26 SimpleAir, Inc. v. Google Inc.,
No. 2:14-cv-11, 2015 WL 5675281 (E.D. Tex. Sept. 25, 2015) ..................................3, 9, 13, 18
27
Smartflash LLC v. Apple, Inc.,
28
2015 WL 661174 (E.D. Tex. Feb. 13, 2015) .............................................................................12
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1

TABLE OF AUTHORITIES
(continued)

2

Page(s)

3 Trading Techs. Int’l Inc. v. CQG, Inc.,
No. 05-cv-4811, 2015 WL 774655 (N.D. Ill. Feb. 24, 2015) ........................................ 2, passim
4
Ultramercial, Inc. v. Hulu, LLC,
5
772 F.3d 709 (Fed. Cir. 2014) ......................................................................................................2
6
7
8

FEDERAL STATUTES AND RULES
35 U.S.C. § 101 ..............................................................................................................................1, 2
35 U.S.C. § 102 ................................................................................................................................18

9
35 U.S.C. § 103 ................................................................................................................................18
10
11
12

35 U.S.C. § 282 ..................................................................................................................................1
Fed. R. Civ. P. 56(a) ...........................................................................................................................2

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1 I.

INTRODUCTION

2

Defendants Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively “Ericsson”)

3 respectfully submit their opposition to Apple’s motion for summary judgment of invalidity of the
4 asserted claims of U.S. Patent No. 6,445,917 (the “’917 patent”) and U.S. Patent No. 8,023,990
5 (the “’990 patent”).
6

In addressing patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,

7 2354 (2014), the Supreme Court noted that “we tread carefully” because “[a]t some level, ‘all
8 inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
9 abstract ideas.’” Apple’s motion does not tread carefully. Glossing over the specifics of the
10 asserted claims in this case, Apple plucks out certain underlying concepts and nakedly asserts that
11 the claims are directed to those concepts. This is improper. “The determination of patent
12 eligibility requires a full understanding of the basic character of the claimed subject matter.”
13 Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012).
14

An examination of the asserted claims of the ’917 and ’990 patents reveals that they are

15 each directed to a problem that “specifically aris[es]” in the area of cellular networks and that the
16 “claimed solution is necessarily rooted” in that technology. DDR Holdings, LLC v. Hotels.com,
17 L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). It follows that the claimed inventions are eligible for
18 patent protection.
19 II.

LEGAL STANDARD

20

A.

21

The Patent Act provides that “[w]hoever invents or discovers any new and useful process,

Presumption of Validity

22 machine, manufacture, or composition of matter, or any new and useful improvement thereof, may
23 obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
24 An issued patent is presumed valid and, so, presumed to be patent-eligible pursuant to § 101. 35
25 U.S.C. § 282; see Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242-43 (2011). It follows
26 that, to succeed on its challenge to the ’917 and ’990 patents, Apple must show by clear and
27 convincing evidence that the claimed inventions are not eligible for patent protection pursuant to
28 § 101. See Microsoft, 131 S. Ct. at 2250 (the Court’s cases “do not indicate, even in dicta, that
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1 anything less than a clear-and-convincing standard would ever apply to an invalidity defense
2 raised in an infringement action”). 1
3

B.

4

Summary judgment is only appropriate if the moving party demonstrates that “there is no

Summary Judgment

5 genuine dispute as to any material fact” and that it “is entitled to judgment as a matter of law.”
6 Fed. R. Civ. P. 56(a). In considering a motion for summary judgment, the Court must draw all
7 inferences from the underlying facts in the light most favorable to the non-moving party.
8 Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). Although
9 “claim construction is not an inviolable prerequisite to a validity determination under § 101,” “it
10 will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to
11 a § 101 analysis, for the determination of patent eligibility requires a full understanding of the
12 basic character of the claimed subject matter.” Bancorp Servs., 687 F.3d at 1273–74. For
13 purposes of this motion, then, the claims at issue should be construed in the manner most
14 favorable to Ericsson. See Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
15 776 F.3d 1343, 1349 (Fed. Cir. 2014) (construing claims in manner most favorable to patentee in
16 analyzing motion to dismiss based on § 101).
17

C.

18

The broad statement of patent-eligibility set forth in § 101 “contains an important implicit

Patent-Eligibility

19 exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134
20 S. Ct. at 2354 (internal quotation marks and citation omitted). The Supreme Court has established
21 a two-part test to “distinguish[] patents that claim laws of nature, natural phenomena, and abstract
22 ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355. A court
23 first “determine[s] whether the claims at issue are directed to one of those patent ineligible
24

1

In a concurring opinion, Judge Mayer has argued that the presumption of validity should not
25 apply in a challenge to patent eligibility. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 72021 (Fed. Cir. 2014). The Federal Circuit has not adopted this position. This Court should follow
26 the Supreme Court’s holding in Microsoft that the presumption of validity applies to all invalidity
defenses. See Trading Techs. Int’l Inc. v. CQG, Inc., No. 05-cv-4811, 2015 WL 774655, at *2–3
27 (N.D. Ill. Feb. 24, 2015) (applying clear and convincing standard to patent eligibility challenge);
DataTern, Inc. v. Microstrategy, Inc., Nos. 11-11970-FDS, 11-12220-FDS, 2015 WL 5190715, at
28 *7 (D. Mass. Sept. 4, 2015) (same).
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1 concepts.” Id. If the claims are so directed, the court proceeds to the second step and “consider[s]
2 the elements of each claim both individually and as an ordered combination to determine whether
3 the additional elements transform the nature of the claim into a patent-eligible application.” Id.
4 (internal quotation marks and citation omitted). The Court has described this second step as
5 involving a determination of whether the claims include an “inventive concept,” that is, “an
6 element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts
7 to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 2355 (quoting
8 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
9

Section 101’s exclusion of laws of nature, natural phenomena, and abstract ideas from

10 patent eligibility is tempered by the Supreme Court’s caution against too broad an application of
11 “this exclusionary principle lest it swallow all of patent law.” Id. at 2354. As the Court pointed
12 out, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature,
13 natural phenomena, or abstract ideas.’” Id. (quoting Mayo, 132 S. Ct. at 1293). Indeed, since
14 “every invention can be reduced to some form of an abstract idea,” the first step of the patent15 eligibility test is not simply asking “whether the Court is able [to] reach into a patent and extract
16 an abstract idea from which to determine patent-eligibility.” SimpleAir, Inc. v. Google Inc., No.
17 2:14-cv-11, 2015 WL 5675281, at *4 (E.D. Tex. Sept. 25, 2015). Rather, the Court must consider
18 the claims at issue and determine whether they are directed to an abstract idea. See id.; Trading
19 Techs. Int’l Inc. v. CGQ, Inc., No. 05-cv-4811, 2015 WL 774655, at *4 (N.D. Ill. Feb. 24, 2015)
20 (improper to “ignore[] much of the details of the representative claims” in determining whether
21 they are directed to abstract idea).
22

The Supreme Court has not “delimit[ed] the precise contours of the ‘abstract ideas’

23 category.” Alice, 134 S. Ct. at 2357. Nevertheless, the cases in which the Court has found patent
24 claims to be directed to abstract ideas provide guidance. In Alice, the Court held that the claims at
25 issue were directed to the abstract idea of “intermediated settlement” because that concept is a
26 “fundamental economic practice” that is a “building block of the modern economy.” 134 S. Ct. at
27 2356 (internal quotation marks and citations omitted). In Bilski v. Kappos, 561 U.S. 593 (2010),
28 the Court identified “the basic concept of hedging” as an abstract idea because it “is a fundamental
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1 economic practice long prevalent in our system of commerce and taught in any introductory
2 finance class.” 561 U.S. at 611 (internal quotation marks and citations omitted). The Federal
3 Circuit has followed suit, finding, for example, that claims directed to “long familiar commercial
4 transactions”—there, a third-party guaranty of a sales transaction—are directed to an abstract idea.
5 buySAFE v. Google Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014). At the second step of the
6 Alice analysis, simply situating these well-known human activities in a computer context, without
7 more, does not suffice to render the claims patent-eligible. Alice, 134 S. Ct. at 2357–59;
8 buySAFE, 765 F.3d at 1355. Concerns about pre-emption of basic knowledge underlie these rules:
9 “wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that
10 provides any ‘practical assurance that the process is more than a drafting effort designed to
11 monopolize the [abstract idea] itself.’” Alice, 134 S. Ct. at 2358 (brackets in original) (quoting
12 Mayo, 132 S. Ct. at 1297).
13

By contrast, when a problem “specifically aris[es]” in a technological environment and the

14 “claimed solution is necessarily rooted” in that technology, then the claim is eligible for patent
15 protection. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). In
16 DDR Holdings, the patent claims at issue were directed to a system for retaining visitor traffic on a
17 website; when a visitor activates a hyperlink, such as a third-party merchant’s advertisement,
18 “instead of taking the visitor to the merchant’s website, the system generates and directs the visitor
19 to a composite web page that displays the product information from the third-party merchant, but
20 retains the host website’s ‘look and feel.’” Id. at 1248–49. The Federal Circuit noted that
21 “[u]nder Supreme Court precedent,” claims are not patent-eligible where they are “directed to
22 nothing more than the performance of an abstract business practice on the Internet or using a
23 conventional computer.” Id. at 1256. The claims at issue in DDR Holdings, however, did “not
24 merely recite the performance of some business practice known from the pre-Internet world along
25 with the requirement to perform it on the Internet.” Id. at 1257. While the “store within a store”
26 concept, such as a warehouse store containing a third party kiosk, may have been well-known,
27 “that practice did not have to account for the ephemeral nature of an Internet ‘location’ or the
28 near-instantaneous transport between these locations made possible by standard Internet
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1 communication protocols.” Id. at 1258. The court held that the claims were patent-eligible
2 because they solved a problem arising in a particular technological environment, here the Internet,
3 in a way that was not simply “applying a known business practice” to that technological
4 environment. Id. at 1259; see also, e.g., DataTern, Inc. v. Microstrategy, Inc., 2015 WL 5190715,
5 at *1, *8 (claimed method “for facilitating the interaction between software and computerized
6 databases” was not directed to abstract idea, but rather “at solving a problem that specifically
7 arises in the realm of computing”).
8

Here, Apple tries to force the inventions of the ’917 and ’990 patents into the Alice and

9 Bilski mold by analogizing them to long-standing human activities, but, as discussed below, the
10 purported analogies are strained and unworkable. See Trading Techs., 2015 WL 774655, at *4
11 (where patent claims addressed a stock-trading issue that “did not arise in the open outcry systems,
12 i.e. the pre-electronic trading analog” to the patent claims at issue, they were not directed to an
13 abstract idea); Contentguard Holdings Inc. v. Amazon.com, Inc., Nos. 2:13-cv-1112, 2:14-cv-61,
14 2015 WL 5853984, at *5 (E.D. Tex. Oct. 5, 2015) (digital rights management claims were not
15 directed to an abstract idea where analogy to library loans was “unpersuasive”). The claimed
16 inventions of the ’917 and ’990 patents are directed to solving particular problems that arise in the
17 field of cellular networks, and the solutions are “necessarily rooted in” cellular network
18 technology. It follows that the claimed inventions are patent-eligible.
19 III.

’917 PATENT

20

A.

21

The ’917 patent is addressed to a problem specific to cellular networks: When should a

The Subject Matter and Claims of the ’917 Patent

22 mobile device report measurements of certain radio-related parameters to the network for the
23 purposes of handover control or power control? The subject matter of the patent is summarized in
24 the Declaration of Dr. Ray W. Nettleton submitted by Ericsson in support of its Opening Claim
25 Construction Brief. Dkt # 126 (“Nettleton Decl.”). A mobile device connects to a cellular
26 network via a wireless link to a “base station”—that is, a fixed wireless transceiver with wired
27 connections to the rest of the network. Id., ¶ 16. Each base station serves a “cell” in the network,
28
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1 and the mobile device maintains its connection to the network as it moves around by connecting to
2 different base stations. Id.
3

“Handover” or “handoff” refers to the process of transferring a call or data session from

4 one base station to another—for example when the mobile device leaves the range of the base
5 station serving a particular cell and enters the range of the base station for a neighboring cell. Id.,
6 ¶ 19. “Power control” in the ’917 patent refers to adjusting the transmit power that the mobile
7 device will use when transmitting messages to the base station. Id., ¶ 20. A number of “radio8 related parameters”—that is, qualitative or quantitative properties of the radio signals used by the
9 mobile devices and the network to communicate—may be relevant to handover control and power
10 control. Id., ¶ 21. Consider, for example, signal strength: when the strength of the signal
11 received by the mobile device from one base station is weak compared to the strength of the signal
12 received from a neighboring cell, it may make sense for the network to consider handover. Id. In
13 order to make a handover decision, the network needs to know the relative signal strengths of the
14 cells as detected by the mobile device. The mobile device reports the value of the relevant radio15 related parameters to the network so that the network can use that information for the purposes of
16 handover control or power control. Id.
17

The ’917 patent focuses on the logic for triggering such reports sent by a mobile device to

18 the network. Id., ¶ 22. At one end of the spectrum, the mobile device could send no such reports,
19 and, perhaps, simply instruct the network to initiate a handover when the strength of the signal
20 from the base station to which it is currently connected drops below the strength of the signal from
21 a neighboring base station. However, this would not allow the network to efficiently allocate
22 resources, such as by dividing the total traffic load equally among the base stations. See ’990
23 patent, col. 10:35–38. At the other extreme, the mobile device could regularly send periodic
24 updates to the network and allow the network to make all handover decisions. However, this
25 would come with its own problems: sending reports periodically at longer intervals could lead to
26 “outdated [reports] with the radio network responding too late or too slowly to changing
27 conditions.” Id., col. 2:67 – col. 3:3. And although frequent periodic reports could “improve the
28 relevance of the information and appropriate responsiveness of the network to changing
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1 conditions,” many of the reports could contain redundant information and the volume of reports
2 would undesirably increase interference, among other shortcomings. Id., col. 3:3–15.
3

The ’917 patent describes an improved method for sending measurement reports from the

4 mobile device to the network, which it refers to as “event-based” measurement reporting, which
5 reduces the number of reports the mobile device needs to send to the network while still leaving
6 control for handover and power in the network’s hands so that it can efficiently allocate resources.
7 Id., col. 3:30–31. According to this method, the mobile device “evaluates the measured radio8 related parameter with respect to a predetermined condition or event” that would make the report
9 relevant and only sends a measurement report to the network if it “determines that the
10 predetermined condition is satisfied or that the event has occurred.” Id., col. 3:33–44. In essence,
11 this moves part of the work of handover or power control decisions from the network to the
12 mobile device. Instead of having every mobile device report information periodically and leaving
13 it to the network to filter that information to look for conditions potentially requiring handover or
14 power control, the filtering task is assigned to the mobile devices—which only report information
15 to the network when potentially relevant to a handover or power control decision. Because
16 efficient resource allocation requires power and handover control decisions to be based on
17 information concerning many different devices, id., col. 2:40–54, the ultimate handover and power
18 control decision-making remains with the network. But the initial filtering step is done by the
19 mobile device.
20

The asserted claims of the ’917 patent are not directed to event-based measurement

21 reporting in and of itself. Rather, the claims add limitations that focus on particular applications
22 of such reporting. Ericsson currently asserts against Apple independent claim 1 and claims 2, 5,
23 11–14, and 17, all of which depend from claim 1. Claim 1 claims:
24
25

A mobile radio, for use in a mobile radio communications system
including plural mobile stations communicating with a radio access
network having plural cell areas, electronically enabled to perform
the following operations including:

26
measure a radio-related parameter for one or more cells;
27
28

add either a positive or a negative offset to the measured radiorelated parameter;
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1
2

evaluate the offset, measured radio-related parameter for the one or
more cells with respect to a predetermined condition and determine
that the predetermined condition is satisfied; and

3
4

report to the radio access network the determination for purposes of
handover control or power control.

5 Thus, claim 1 captures certain specific applications of event-based reporting disclosed in the
6 specification. The preamble of the claim provides that the claimed mobile radio be for use in a
7 cellular network. The mobile radio must then “measure a radio-related parameter for one or more
8 cells,” evaluate the parameter with respect to a predetermined condition, and, in the event that the
9 predetermined condition is satisfied, report that to the network specifically “for purposes of
10 handover control or power control.” Moreover, prior to evaluating the parameter with respect to
11 the predetermined condition, the claim provides that “a positive or a negative offset” be added to
12 the measurement.
13

The “offset” recited in claim 1 further ties the claim to specific problems arising in cellular

14 networks. As discussed in Ericsson’s Opening Claim Construction Brief, “offset” refers to an
15 “amount associated with the individual radio channel or cell of the measured radio-related
16 parameter.” Ericsson’s Opening Claim Construction Brief, Dkt. # 124, at 2–5; see also Nettleton
17 Decl., ¶¶ 26–43. In other words, the “offset,” as properly interpreted, is used to “put a thumb on
18 the scale in favor of or against particular channels or cells.” Nettleton Decl., ¶41.
19

As explained in the patent, such a channel-specific or cell-specific offset is used to address

20 issues peculiar to cellular networks. First, when the offset is associated with a particular radio
21 channel, it “allows the radio network to change the reporting for [that] individual channel.” ’917
22 patent, col. 10:7–8. Adding a positive offset to a specific channel, for example, may result in a
23 measurement report concerning a particular channel being sent to the network in situations when
24 such a report would not be sent absent the offset. See, e.g., id., fig. 10. Thus, the addition of a
25 channel-specific offset is useful when the network operator understands that a particular channel
26 should be monitored more closely, such as if the network operator “know[s] from experience that
27 this radio channel often becomes an excellent candidate quite quickly, e.g. due to street corners,
28 and therefore is appropriate for more intensive reporting.” Id., col. 10:14–18.
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1

When the offset is associated with a cell rather than a channel, it can “be employed to

2 ‘move’ the cell border.” Id., col. 10:25–26. If, for example, a positive offset is applied to a cell,
3 reports may be sent to the network when the mobile device is farther from the cell than would be
4 the case without an offset and “the effect may be that the mobile stations will connect that cell at a
5 longer distance than otherwise.” Id., col. 10:26–28. By moving cell boundaries in this way, for
6 example, “the network operator can perform load sharing between the cells in an area, i.e., divide
7 the total traffic load equally between the cells by adapting the size of the cells.” Id., col. 10:35–38.
8

The asserted dependent claims add further limitations specifically directed to cellular

9 network technology. For example, claim 17 requires that the mobile radio of claim 1 be enabled
10 to “employ a hysteresis parameter in determining whether the predetermined condition is
11 satisfied.” In the context of the ’917 patent, such a hysteresis parameter is used to prevent an
12 excessive volume of reports in situations when the measured parameter values for two or more
13 channels or cells fluctuate around one another. See generally Nettleton Decl., ¶¶ 35–39; ’917
14 patent, col. 9:29–42, col. 9:52–58. In the example given in the specification, the mobile radio
15 monitors whether a measured parameter value for a radio channel, CH2, exceeds the measured
16 value for the current “best” channel, CH1. ’917 patent, col. 9:33–42 & Fig. 8. However, to
17 prevent multiple reports if the values of the parameter for the two channels fluctuate back and
18 forth, “a reporting event is not triggered until the difference between the measured parameter
19 values for channels CH1 and CH2 reaches a particular amount corresponding to the hysteresis.”
20 Id.; see also Nettleton Decl., ¶¶ 37–39.
21

B.

22

Apple asserts that the claims of the ’917 patent are directed to the abstract idea of “‘event-

The Claims of the ’917 Patent Are Not Directed to an Abstract Idea

23 based’ reporting.” Apple Br. at 4–7. As evidence, Apple cites a single line from the 12-column
24 written description and claim 1 of the patent, but fails to provide any argument that claim 1 is
25 directed to that abstract idea. Id. at 4. Apple’s citations to a number of cases that found other
26 patent claims from other patents to be directed to abstract ideas, is not an appropriate substitute for
27 consideration of the asserted claims actually at issue. Id. at 5–7. See SimpleAir, 2015 WL
28 5675281, at *4 (conclusory argument “which ignores significant claim limitations” was “not
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1 enough for Defendants to meet their burden of establishing that the Patents-in-Suit are directed to
2 an abstract idea”); Trading Techs., 2015 WL 774655, at *4 (rejecting argument that claims were
3 directed at “abstract idea” that rested on “ignor[ing] much of the details of the representative
4 claims”).
5

In fact, Apple ignores claim limitations that make clear that the patent cannot be read to

6 claim the abstract idea of event-based reporting. Claim 1, for example, is directed to a mobile
7 radio enabled to perform a number of tasks relating to cellular network technology, including
8 measuring a “radio-related parameter for one or more cells,” adding a “positive or negative offset”
9 to the measured parameter, evaluating the offset, measured parameter with respect to a
10 “predetermined condition,” and reporting that the predetermined condition is satisfied “to the radio
11 access network . . . for the purposes of handover control or power control.” These limitations
12 situate the claim squarely in the area of cellular network technology. Moreover, the claimed
13 invention is directed to a specific problem that arises in cellular networks, namely, the need for
14 efficient reporting of measurements to the network in a way that allows the network operator to
15 make handover or power control decisions that favor or disfavor specific cells or channels. The
16 solution of the asserted claims is likewise rooted in cellular network technology.
17

Apple argues that the “concept of ‘event-based’ reporting is a basic building block of

18 communication that has likely existed since the earliest human communications.” Apple Br. at 5.
19 Perhaps. But the claims of the ’917 patent are not directed to that broad concept. Indeed, Apple’s
20 lone analogy does not map onto the actual invention of the ’917 patent. Apple says that “event21 based reporting” occurs in the context of the stock market “if a client wants to know when a stock
22 has increased $10 above the purchase price, [and] the broker measures the price of the stock,
23 subtracts $10 (i.e., adds a negative offset), evaluates that amount against the original purchase
24 price, and reports to the client.” Id. Apple’s claimed parallel to the purported “abstract idea” of
25 the ’917 patent is triply flawed:
26
27

Apple’s example entails no measurements of a radio-related parameter or anything
else. Yet the asserted claims are specifically drawn to a mobile device performing

28
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1

such measurements. Apple’s awkward reference to the broker “measur[ing] the

2

price of the stock” exposes its effort to force the analogy to fit.

3

Apple’s example involves no “offset.” Apple’s assertion that when the broker

4

subtracts $10 from the price of the stock, that amounts to “add[ing] a negative

5

offset,” conflates the distinct notions of a “predetermined condition” and an

6

“offset” as used in the asserted claims. According to Apple’s analogy, the

7

predetermined condition corresponds to the stock price rising by $10. As part of

8

the arithmetic involved in evaluating whether the predetermined condition has been

9

satisfied, the broker subtracts $10 from the current price of the stock. This is quite

10

different from adding an offset to the parameter prior to evaluating it against the

11

predetermined condition. A somewhat better analogy would have the broker decide

12

to favor a certain stock by adding a $2 offset, say, to the current price of that

13

particular stock and then, when the stock actually rose $8, reporting to the customer

14

that the price had risen by $10. Of course, no broker would do this. The gap in

15

Apple’s analogy underscores how little sense the invention would make outside of

16

the cellular technology context where, by applying different offsets prior to

17

evaluating the predetermined condition, the network operator is able to favor (or

18

disfavor) particular channels or move the boundaries of particular cells.

19

In Apple’s analogy, the “report” is not used for anything analogous to “handover

20

control or power control,” and Apple does not even try to suggest otherwise. At

21

best, the stock investor might use the broker’s report in some unspecified way to

22

reflect on his or her investment objectives. By contrast, the limitation in the

23

asserted claims that the report be used for handover control or power control is not

24

simply tacked on to an otherwise abstract idea; rather, it is precisely in this context

25

that the rest of claim 1 makes sense. As described in the specification, informative

26

reports of the current values of certain radio-related parameters are crucial for the

27

network to effectively manage handover and power. See, e.g., ’917 patent, col.

28

1:25–37, col. 2:9–64. Moreover, as discussed above, the network operator may
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1

want to employ an offset with respect to particular channels or cells in these

2

contexts.

3

The ’917 patent claims certainly involve “event-based reporting,” but the concept is

4 limited in specific concrete ways to solve particular problems in cellular network technology.
5

C.

6

Because the ’917 patent claims are not directed to an abstract concept, this Court could

The Claims of the ’917 Patent Recite an Inventive Concept

7 deny Apple’s motion without further analysis. But, even if the claims were directed to an abstract
8 concept, they would survive because the limitations of the claim recite an inventive concept—that
9 is, an “element or combination of elements that is sufficient to ensure that the patent in practice
10 amounts to significantly more” than a patent on the abstract concept itself. Alice, 134 S. Ct. at
11 2355 (internal quotation marks and citation omitted). Again, Apple glosses over the actual content
12 of the asserted claims, insisting that they simply claim the “the abstract concept of ‘event-based
13 reporting’ in the context of conventional mobile radio communications.” Apple Br. at 9. See
14 Smartflash LLC v. Apple, Inc., 2015 WL 661174, at * 8 (E.D. Tex. Feb. 13, 2015) (“Although
15 exchanging access to something for payment for something is unquestionably a long-standing
16 economic practice, the asserted claims recite more than Defendants’ over-generalized
17 characterizations.”).
18

For example, Apple has nothing to say about the limitation in the asserted independent

19 claim requiring the addition of an “offset” to the measured radio-related parameter, except to say
20 that the offset “itself is an abstract concept.” Apple Br. at 7. (Apple should try to get its story
21 straight about exactly what abstract concept the asserted claims supposedly pre-empt—is it
22 reporting? offsetting? something else?) In any event, the “offset” of the ’917 patent is not abstract
23 at all. Rather, as discussed above, under the appropriate construction of the term, it is a concrete
24 amount that is associated with an individual radio channel or cell that the network operator can
25 deploy to favor or disfavor a particular channel or to move a cell boundary. The asserted claims
26 “[do] not foreclose other ways of solving the problem” of determining when to send reports
27 relating to the measurement of radio-related parameters to the network. Intellectual Ventures I
28 LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015)). And the claims “recite[]
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1 a specific series of steps that result[] in a departure” from “routine and conventional” practices.
2 Id. Indeed, Apple makes no argument and offers no evidence that a mobile radio’s use of such an
3 offset, in combination with the other limitations of the claim, in order to send relevant reports to
4 the network for the purposes of handover control or power control, is simply a “routine” or
5 “conventional” application of an abstract concept. Under these circumstances, the limitations of
6 the asserted claims are “sufficient to ensure that the Patents-in-Suit amount to significantly more
7 than a patent on [an] abstract idea.” SimpleAir, 2015 WL 5675281, at *5; see Intellectual
8 Ventures I, 792 F.3d at 1371.
9

Apple’s argument about the asserted dependent claims is similarly conclusory, simply

10 asserting that the added limitations are “generic” in some way, again with no evidentiary support.
11 Apple Br. at 7–8. For example, with respect to claim 17, all that Apple has to say is that it relates
12 to “the circumstances when a report will be sent.” Id. at 8. That is literally true, but
13 inappropriately vague. As discussed above, claim 17 specifically relates to the use of a “hysteresis
14 parameter.” Use of such a hysteresis parameter in the context of the ’917 patent is an important
15 mechanism to prevent the mobile device from sending an excessive number of reports in certain
16 cases arising in cellular networks when the measured parameter values for two or more channels
17 or cells are being compared and those values are fluctuating around one another. Apple makes no
18 argument and offers no evidence that using such a hysteresis parameter in this way was “routine”
19 or “conventional,” either standing alone or in combination with the other elements of the
20 independent claim.
21

More broadly, the limitations of the asserted claims add the inventive concept of allocating

22 handover and power control logic between the network and mobile devices in a particular way that
23 has efficiency advantages in cellular communications. Requiring the mobile device to perform
24 certain computations—including adding offsets to measured parameters and evaluating those
25 parameters against predetermined conditions—and to report to the network only when the
26 computations establish that a predetermined condition is satisfied allows the mobile device to act
27 as an information filter for the network. Instead of having truly “dumb” mobile devices
28 periodically report information to the network regardless of what has happened, and leaving all
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1 filtering and decision-making to the network, the asserted claims require that the mobile devices
2 pre-screen the information and report it only when, according to prescribed conditions, that
3 information could be useful to the network for further handover or power control decision-making.
4 And instead of vesting complete control in the mobile devices to decide for themselves when to
5 prompt a handover, the asserted claims require reporting that allows the network to make efficient
6 decisions about resource allocation. Thus, the claims allocate handover and power control
7 decision-making and computations between the network and mobile devices in a manner that
8 ensures timely, relevant, and efficient provision of information to the network that minimizes
9 unnecessary measurement signaling and facilitates efficient allocation of network resources. See
10 ’917 patent col. 3:21–44.
Apple has not met its burden of showing by clear and convincing evidence that the asserted

11

12 claims lack an “inventive concept.” Its motion should be denied on this additional basis.
13 IV.

’990 PATENT

14

A.

15

The ’990 patent is addressed to a particular problem that existed in the specifications for

The Subject Matter and Claims of the ’990 Patent

16 the LTE standard, as set forth in the very first paragraph of the Summary section of the ’990 patent
17 specification:
18
19
20
21

The current LTE specifications state that a terminal shall always
update its transmission power upon reception of a PDCCH
command. Thus, according to the current solution, when multiple
terminals are addressed using a group RNTI, all of the terminals in
the group have needed to update their PUCCH transmission power
according to the power control command in the PDCCH, which has
resulted in undesirable and inaccurate PUCCH power control results
in the terminals in the group.

22
’990 patent, col. 2:53–61. The “PDCCH” is the Physical Downlink Control Channel that carries
23
control information, including transmission power control commands, from the network to a
24
mobile device. See id., col. 1:25–29. Such transmission power control commands tell the mobile
25
device how much power to use in sending messages, such as an acknowledgement of receipt of the
26
control information, on the PUCCH (Physical Uplink Control Channel). Id., col. 1:67 – col. 2:7.
27
“RNTI” stands for the Radio-Network Temporary Identifier that is included with the control
28
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1 information to identify the mobile device to which the control information is addressed. Id., col.
2 1:45–52. In cases where control information, such as system parameters, is intended for multiple
3 mobile devices, a “group RNTI” identifying a group of devices rather than an individual one is
4 used. Id., col. 2:17–36. The invention of the ’990 patent solves the problem described above: the
5 then-current LTE specifications provided for mobile devices to update their transmit power
6 whenever they received a transmission power control command. However, when such a command
7 is included with control information sent to a group of devices, the command cannot take into
8 account individual differences among the devices—such as, for example, their respective distances
9 from the base station—that affect the transmission power that each should use, leading to
10 “undesirable and inaccurate PUCCH power control results in the terminals in the group.” Id. at
11 2:59–61.
12

The ’990 patent describes a solution to this problem and the claims capture that solution.

13 Ericsson currently asserts against Apple claims 2 and 4 (which depend from independent claim 1),
14 and claims 8 and 10 (which depend from independent claim 7). For example, claim 7 claims:
15

A user terminal for use in a wireless cellular access system, said user
terminal comprising:

16
17
18
19
20
21
22
23

a transceiver for receiving a first downlink scheduling message on a
downlink control channel and for transmitting a second downlink
scheduling message on an uplink control channel, said first
downlink scheduling message comprising an identifier that identifies
a specific user terminal or a group of user terminals to receive data
transmitted on a shared traffic channel and a transmission power
control command for controlling the transmit power of the user
terminal on the uplink control channel; and
a control processor configured to adjust its transmit power on the
uplink control channel responsive to the transmission power control
command in the downlink scheduling message when the identifier in
said downlink scheduling message is a terminal-specific identifier
for the user terminal, and to disregard the transmission power
control command if the identifier is for a group of user terminals.

24
Claim 7 is directed to a user terminal (i.e., a mobile device) in a cellular network containing
25
specific hardware components, namely a transceiver and a control processor. The claim specifies
26
how the transceiver and control processor work together to adjust the transmission power for the
27
user terminal, consistent with the solution to the problem discussed in the specification.
28
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1 Specifically, the transceiver receives from the network a “downlink scheduling message on a
2 downlink control channel” including a “transmission power control command.” The control
3 processor is configured to adjust the user terminal’s transmission power in accordance with the
4 transmission power control command if the downlink scheduling message is addressed to that
5 specific terminal (i.e., “the identifier in said downlink scheduling message is a terminal-specific
6 identifier for the user terminal”) and to disregard the transmission power control command if the
7 downlink scheduling message is addressed to a group of user terminals.
8

The asserted dependent claims add further limitations specifically directed to cellular

9 network technology. For example, as explained in the specification, downlink scheduling
10 messages may comprise format information and, in particular, the LTE standard defines several
11 formats for downlink scheduling messages. ’990 patent, col. 5:52 – col. 6:7. Claim 8 requires that
12 the control processor in the user terminal look to whether the message is in a format that uses a
13 group identifier to determine whether the transmission power control command is addressed to a
14 group and, so, should be disregarded.
15

B.

16

As with the ’917 patent, Apple’s argument that the claims of the ’990 are directed to an

The Claims of the ’990 Patent Are Not Directed to an Abstract Idea

17 abstract idea glosses over the actual limitations of those claims. Apple contends the claims are
18 directed to the abstract idea of “deciding to ignore commands directed to a group, and following
19 instead those commands directed to a specific individual.” Apple Br. at 11. But the claims are not
20 so broad. Rather, as discussed above, the claims are directed to mobile devices in a cellular
21 network and, in particular, a specific way of ensuring accurate transmission power controls after a
22 mobile device receives a transmission power control command on a downlink control channel.
23 While the claims involve disregarding commands addressed to a group, they are not directed to
24 that broad concept.
25

Apple again attempts to offer analogies to show that the claims are simply applications of a

26 “commonplace and time honored practice[].” Apple Br. at 11. And again, the asserted claims
27 have little in common with Apple’s purported analogies. According to Apple, the claims are
28 analogous to the situation where “[a] parent who instructs three children to do a chore is often
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1 ignored, but will witness a different response if a direct command is given to one child.” Id. But a
2 child’s idiosyncratic and selfish failure to follow a group command, perhaps under the assumption
3 (or hope) that someone else will handle the chore, is quite different from a system designed so that
4 group commands are disregarded in well-defined situations when following such commands could
5 be counterproductive for the system. The parent hopes that all three children will follow his or her
6 group command; in some cases one or more of the children will do so; and this will lead to the
7 beneficial result that the chore is performed. This is diametrically opposed to the situation
8 addressed by the asserted claims where a mobile device following certain types of group
9 commands can lead to undesired outcomes, and so, according to the claimed invention, the system
10 is designed so that such commands are necessarily disregarded.
11

Similarly, Apple argues that the claims are analogous to the following situation: “When a

12 teacher puts a math problem on the board and asks the class to give the answer, some students may
13 never raise their hands; however, they will respond when called upon individually.” Apple Br. at
14 11. This second analogy suffers from the same flaws as the first. The decision on the part of
15 certain individuals to occasionally ignore commands directed to a group is simply not analogous
16 to a system designed so that certain types of group commands must be disregarded in order to
17 prevent inaccurate transmission power settings. In short, the ’990 patent is about a cellular system
18 made functional by disregarding certain group commands; Apple’s analogies are about households
19 and schoolrooms made dysfunctional by the disregard of group commands.
20

Apple’s failure to offer a plausible analogy to the claims of the ’990 patent outside of the

21 cellular technology context is perhaps the best evidence that the claims are not directed to an
22 abstract idea as Apple asserts. Apple is unable to find such a “commonplace and time-honored
23 practice[]” that accurately captures the invention of the ’990 patent precisely because that
24 invention is a technological solution to a specific problem arising in a particular technological
25 arena, namely power control in cellular networks.
26

C.

27

As with the’917 patent, this Court could deny Apple’s motion simply on the ground that

The Claims of the ’990 Patent Recite an Inventive Concept

28 the claims of the ’990 patent are not directed to an abstract concept. But, even if the claims were
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1 directed to an abstract concept, they would survive because the limitations of the claims recite an
2 inventive concept—that is, an “element or combination of elements that is sufficient to ensure that
3 the patent in practice amounts to significantly more” than a patent on the concept itself. Alice, 134
4 S. Ct. at 2355 (internal quotation marks and citation omitted). Apple’s argument that the claims
5 do not recite an inventive concept consists—in its entirety—of pointing out that many of the claim
6 elements are recited in the Background section of the patent and so constitute prior art. Apple Br.
7 at 12–14. This does not suffice. “The question . . . whether a particular invention is novel is wholly
8 apart from whether the invention falls into a category of statutory subject matter.” Diamond v.
9 Diehr, 450 U.S. 175, 190 (1981) (internal quotation marks and citation omitted); see Trading
10 Techs., 2015 WL 774655, at *5 (“The ‘inventive concept’ step of the Alice analysis requires
11 something different than [35 U.S.C. § 102 (novelty) and 35 U.S.C. § 103 (non-obviousness)].”).
12

The claims of the ’990 patent solve a problem unique to cellular networks, namely the

13 potential for inaccurate power controls when transmission power control commands are addressed
14 to a group of mobile devices. The claims “(1) [do] not foreclose other ways of solving the
15 problem, and (2) recite[] a specific series of steps that result[] in a departure from the routine and
16 conventional” management of power in mobile devices. Intellectual Ventures I LLC, 792 F.3d at
17 1371. At a minimum, it could not be considered routine and conventional for a mobile device to
18 disregard a command from the network. Indeed, Apple again fails to offer any evidence to suggest
19 that any of the steps of the asserted claims are routine and conventional. It follows that the claims
20 recite an “inventive concept.” See SimpleAir, 2015 WL 5675281, at *5.
21

Apple has not met its burden of showing by clear and convincing evidence that the asserted

22 claims lack an “inventive concept.” Its motion should be denied on this additional basis.
23 V.

CONCLUSION

24

For the reasons set forth above, the Court should deny Apple’s motion for summary

25 judgment of invalidity of the ’917 and ’990 patents.
26
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1 DATED: October 28, 2015
2
3
4

MUNGER, TOLLES & OLSON LLP
GREGORY P. STONE
PETER A. DETRE
ERIC P. TUTTLE
BENJAMIN J. HORWICH

6

MCKOOL SMITH HENNIGAN, P.C.
MIKE MCKOOL, JR. (pro hac vice)
DOUGLAS A. CAWLEY (pro hac vice)
COURTLAND L. REICHMAN

7

By:

5

8
9

/s/ Gregory P. Stone
Gregory P. Stone

Attorneys for Defendants ERICSSON INC. and
TELEFONAKTIEBOLAGET LM ERICSSON

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