Sisvel S.p.a. v. Tct Mobile International Limited, Tct Mobile, Inc., Tct Mobile (us) Inc., Tct Mobile…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SISVEL S.P.A.,
Appellant
v.
TCT MOBILE INTERNATIONAL LIMITED, TCT
MOBILE, INC., TCT MOBILE (US) INC., TCT
MOBILE (US) HOLDINGS, INC., TCL
COMMUNICATION TECHNOLOGY HOLDINGS
LIMITED, HONEYWELL INTERNATIONAL INC.,
SIERRA WIRELESS, ULC., TELIT CINTERION
DEUTSCHLAND GMBH F/D/B/A THALES DIS AIS
DEUTSCHLAND GMBH,
Appellees
______________________
2023-1123
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00678.
______________________
Decided: March 19, 2024
______________________
T IMOTHY D EVLIN, Devlin Law Firm LLC, Wilmington,
DE, for appellant. Also represented by N EIL A. BENCHELL ,
ANDREW P ETER D EMARCO, R OBERT J. G AJARSA .
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 2
J EREMY D EANE P ETERSON, PV Law LLP, Washington,
DC, for appellees TCT Mobile International Limited, TCT
Mobile, Inc., TCT Mobile (US) Inc., TCT Mobile (US) Hold-
ings, Inc., TCL Communication Technology Holdings Lim-
ited. Also represented by BRADFORD CANGRO.
J EFFREY R. G ARGANO, K&L Gates LLP, Chicago, IL, for
appellee Honeywell International Inc. Also represented by
BRIAN P AUL BOZZO, Pittsburgh, PA; ERIK H ALVERSON, San
Francisco, CA.
AMANDA T ESSAR , Perkins Coie LLP, Denver, CO, for ap-
pellee Sierra Wireless, ULC. Also represented by D ANIEL
T YLER K EESE, Portland, OR.
G UY YONAY , Pearl Cohen Zedek Latzer Baratz LLP,
New York, NY, for appellee Telit Cinterion Deutschland
GmbH. Also represented by K YLE AUTERI, I.
______________________
Before L OURIE, L INN, and STOLL , Circuit Judges.
L OURIE, Circuit Judge.
Sisvel S.p.A. (“Sisvel”) appeals from a final written de-
cision of the United States Patent and Trademark Office
Patent Trial and Appeal Board (“the Board”) finding claims
1, 3–5, 11, and 13–15 of U.S. Patent 8,971,279 (the “’279
patent”) unpatentable as obvious. TCT Mobile Int’l Ltd., et
al. v. Sisvel S.p.A., IPR202-00678 (P.T.A.B. June 7, 2023),
J.A. 1–54 (“Decision”). For the reasons provided below, we
affirm.
BACKGROUND
The ’279 patent relates to improvements in network
communication efficiency in advanced LTE networks for
cellular phones. To better allocate network resources, cell
phones (i.e., user equipment or “UE”) are assigned certain
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 3
intervals in which to transmit data and certain frequencies
for that transmission. See ’279 patent, col. 3 ll. 31–37. One
method of allocation is Semi-Persistent Scheduling
(“SPS”), which provides user equipment with a transmis-
sion time and frequency that is valid for a limited period of
time, rather than having the user equipment request per-
mission to transmit each time. See id. col. 3 ll. 44–62. Un-
der an SPS regime, a user equipment is said to be
“activated” during its allocated time period for transmis-
sion and is considered “deactivated” when that time period
is over. Id. To deactivate the user equipment, the base
station will transmit a message called an “SPS deactiva-
tion signal” to the user equipment informing the user
equipment that its assigned frequency was released. Id.
The ’279 patent is directed to a method of sending more
efficient SPS deactivation signals that essentially “piggy-
back” on existing messages. Appellant’s Br. at 5. One such
teaching is a method of filling a preexisting binary field
(e.g., resource indication value or “RIV”) with all “1”s to
serve as an SPS deactivation notice. See ’279 patent, col.
4–5 passim; id. col. 26 ll. 2–26. In the patented system, the
string of ones would always be processed as an invalid
value and never mistaken for a valid resource allocation
message, providing stability to the network, regardless of
size. Appellant’s Br. at 6–8; ’279 patent Fig. 16. Repre-
sentative claim 1 is reproduced below:
1. A method for deactivating Semi-Persistent
Scheduling (SPS) transmission in a wireless mobile
communication system, the method comprising:
performing, by a User Equipment (UE), a
SPS transmission at an interval of a sub-
frame period configured by a radio resource
control (RRC) signal;
receiving, by the UE, a Physical Downlink
Control Channel (PDCCH) signal with a
Radio Network Temporary Identifier
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 4
(RNTI), wherein the PDCCH signal in-
cludes a first field related to a resource al-
location; and
performing a procedure for deactivating
the SPS transmission if the PDCCH signal
satisfies conditions for SPS deactivation,
wherein the conditions for SPS deactiva-
tion include:
the RNTI is a SPS Cell RNTI (SPS C-
RNTI); and
the first field is entirely filled with ‘1’.
’279 patent, col. 26 ll. 2–26 (emphases added). The other
challenged independent claim, claim 11, contains the same
requirement that “the conditions for SPS deactivation in-
clude . . . the first field is entirely filled with ‘1’.” Id. col. 27
ll. 13–15.
TCT Mobile International Limited, TCT Mobile, Inc.;
TCT Mobile (US) Inc.; TCT Mobile (US) Holdings, Inc.; TCL
Communication Technology Holdings Limited; Honeywell
International Inc.; Sierra Wireless, Inc.; and Thales Dis Ais
Deutschland GMBH (collectively, “Honeywell”) petitioned
for inter partes review. Honeywell asserted four grounds
including (1) obviousness based on Samsung1 and Nokia2
1 T DOC R2-084455, SPS RESOURCE RELEASE , 3GPP
TSG-RAN2#63 MEETING, Jeju, South Korea (August
18–22, 2008), J.A. 1744.
2 RI-083718, MISSING DETAILS OF SEMI-PERSISTENT
SCHEDULING, 3GPP TSG-RAN WG1 MEETING #54 BIS , Pra-
gue, Czech Republic (September 29–October 3, 2008), J.A.
1742–43.
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 5
and (2) obviousness based on Samsung and Dahlman.3
Samsung is a technical specification by an industry stand-
ards group considering potential codes for SPS deactiva-
tion. It proposes that “all 1s could be a good candidate” for
such a code, but with no explanation of why. J.A. 1744.
Nokia is a technical specification by the same industry
standards group that proposes filling a field with all zeroes
to serve as a codeword for “SPS release.” J.A. 1742. Dahl-
man is a book that provides background information on
wireless technology, particularly on a resource block allo-
cation field, but it does not mention the use of a specific
value as a codeword for SPS deactivation.
Sisvel argued that a person of ordinary skill in the art
would not have had a reasonable expectation of success in
the proposed combinations because of the allegedly exten-
sive calculations that would have been required to ensure
that filling the field entirely with ones would be invalid in
all circumstances, regardless of network size. Decision,
J.A. 34. Sisvel cited the testimony of its expert witness
stating that a skilled artisan in this field would have de-
manded mathematical certainty that the solution would
work for all size networks. Id. at J.A. 37.
The Board held all challenged claims unpatentable as
obvious based on both asserted grounds, Dahlman together
with Samsung as well as Nokia together with Samsung.
The Board found that claim 1 (and claim 11) did “not re-
quire performing any calculations prior to filling the ‘first
field’ entirely with 1s,” nor did it require any particular
field size. Decision, J.A. 34–35. It therefore found no need
to resolve the parties’ dispute as to whether or not a person
of ordinary skill in the art would have been capable of cal-
culating whether or not the use of all 1s would be invalid
3 ERIK D AHLMAN ET AL ., 3G EVOLUTION: HSPA AND
LTE FOR M OBILE BROADBAND 1–608 (2d ed. 2008), J.A.
1091.
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 6
in all circumstances. Id. The Board also found that Hon-
eywell had demonstrated a reasonable expectation of suc-
cess in combining Samsung and Dahlman because
Samsung (1) describes its solution as “simple,” (2) states
that “all 1s could be a good candidate,” and (3) uses the
same DCI format for signaling SPS deactivation as Dahl-
man. Id. at J.A. 34–38 (quoting J.A. 1744). See also id. at
44–45 (making similar findings with regard to the Sam-
sung and Nokia combination). It noted that, despite
Sisvel’s expert testimony that a person of ordinary skill
would have demanded certainty of success, “‘the expecta-
tion of success need only be reasonable, not absolute.’” Id.
at J.A. 37 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007)).
Sisvel appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
Sisvel argues on appeal that the Board erred in finding
a motivation to combine Samsung and Dahlman with a rea-
sonable expectation of success. Honeywell responds that
the Board’s finding is without legal error and based on sub-
stantial evidence. Honeywell further argues that Sisvel
failed to appeal the Board’s invalidation of the claims based
on Samsung and Nokia, and the appeal can therefore be
affirmed on that ground without consideration of Sisvel’s
arguments on the other ground. Sisvel replies that its ar-
guments are with respect to the Samsung reference, which
is present in both grounds, and it therefore did not forfeit
any such argument or appeal.
Because of the weakness of Sisvel’s position on the mer-
its, we choose not to address the forfeiture argument. The
Board’s finding of obviousness is soundly based in both fact
and law. Samsung expressly teaches “to use all 1s in [the]
RB assignment field on SPS resource allocation . . . to re-
lease the SPS resource” and that “all 1s could be a good
candidate.” J.A. 1744. It further describes that solution as
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 7
a “simple release mechanism.” Id. That language is une-
quivocal. The reference explicitly teaches both the chal-
lenged element (i.e., “to use all 1s in [the] RB assignment
field on SPS resource allocation”) and provides for a rea-
sonable expectation of success in implementing that ele-
ment (i.e., “all 1s could be a good candidate”). Id.
That Samsung does not explain why it selected all ones
or list out the calculations proving its effectiveness does not
defeat its plain teaching. See, e.g., In re Corkill, 771 F.2d
1496, 1500 (Fed. Cir. 1985) (“Although [the inventor] de-
clared that it cannot be predicted how any candidate will
work in a detergent composition, but that it must be tested,
this does not overcome [the prior art]’s teaching that hy-
drated zeolites will work.”). The law only requires that a
person of ordinary skill in the art have a reasonable expec-
tation of success, not an absolute one. Pfizer, 480 F.3d at
1364. Although different fields of art may have differences
in what constitutes a “reasonable” expectation of success,
such differences are not determinative in this case. Hon-
eywell’s expert witness testified that using all ones would
avoid calculations and be a simple design choice, which the
reference itself echoes. Decision, J.A. 36; J.A. 1744 (de-
scribing the solution as “simple”). And, as the Board found,
there is nothing in the record showing that using all ones
would not work or would be exceedingly difficult to imple-
ment. Decision, J.A. 37. Sisvel asks us to ignore the plain
text of the reference and impose an inappropriately high
standard on expectation of success, which we decline to do.
The Board therefore did not err in concluding that in-
dependent claims 1 and 11 would have been obvious over
Dahlman (or Nokia) together with Samsung and we affirm
those holdings. See Appellant’s Reply Br. at 18 (asserting
that the Board’s interpretation of Samsung, common to
both grounds, was the critical basis for the Board’s find-
ings); Decision, J.A. 45 (referencing “Patent Owner’s argu-
ments that are common” to both grounds). Because Sisvel
does not separately argue for the patentability of the
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SISVEL S. P. A. v. TCT MOBILE INTERNATIONAL LIMITED 8
challenged dependent claims, the Board’s finding of obvi-
ousness of claims 3–5 and 13–15 is likewise affirmed.
CONCLUSION
We have considered Sisvel’s remaining arguments but
find them unpersuasive. For the foregoing reasons, the de-
cision of the Board is affirmed.
AFFIRMED
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