Case: 19-1493   Document: 61     Page: 1   Filed: 05/14/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

        HUAWEI TECHNOLOGIES CO., LTD.,
                  Appellant

                            v.

     ANDREI IANCU, UNDER SECRETARY OF
   COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR OF THE UNITED STATES
      PATENT AND TRADEMARK OFFICE,
                   Intervenor
             ______________________

                       2019-1493
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 01472.
                  ______________________

                 Decided: May 14, 2020
                 ______________________

     CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
 cago, IL, for appellant. Also represented by DOUGLAS I.
 LEWIS, NATHANIEL C. LOVE; MICHAEL J. BETTINGER, CURT
 HOLBREICH, San Francisco, CA; RYAN C. MORRIS, Washing-
 ton, DC.

    JOSEPH MATAL, Office of the Solicitor, United States
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 2                   HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU



 Patent and Trademark Office, Alexandria, VA, for interve-
 nor. Also represented by THOMAS W. KRAUSE, MAUREEN
 DONOVAN QUELER.
                 ______________________

  Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
 TARANTO, Circuit Judge.
     Huawei Technologies Co., Ltd. owns U.S. Patent
 No. 8,369,278, which describes and claims methods and ap-
 paratuses for defining the meaning of certain radio control
 signals sent between two devices. Samsung Electronics
 Co., Ltd., which is no longer a party to this case, success-
 fully sought from the Patent and Trademark Office (PTO)
 an inter partes review of claims 1, 2, and 6–9 of the ’278
 patent under 35 U.S.C. §§ 311–319. The Patent Trial and
 Appeal Board ultimately determined that the challenged
 claims are unpatentable for obviousness. Samsung Elec-
 tronics Co. v. Huawei Technologies Co., No. IPR2017-
 01472, 2018 WL 6519541 (P.T.A.B. Dec. 10, 2018). On
 Huawei’s appeal, we affirm.
                              I
                              A
      The ’278 patent, titled “Method and Apparatus for
 Sending Control Signaling,” notes that in radio communi-
 cation systems, two devices must exchange certain control
 information in order to permit successful data transmis-
 sions and that such control information is sent in a control
 signal. ’278 patent, col. 1, lines 25–35. The ’278 patent
 describes, as illustrative, the prior art Hybrid Automatic
 Repeat reQuest (HARQ) process for transmitting control
 signals when data packets are being sent. Id., col. 1, lines
 36–38. “The control signaling may include time frequency
 resource, modulation mode, payload size, HARQ process
 number, Redundancy Version (RV), and New Data Indica-
 tor (NDI).” Id., col. 1, lines 49–52.
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     In one configuration of the HARQ process described in
 the ’278 patent, a base station transmits a control signal
 and data packet to a terminal. Id., col. 1, lines 40–41. If
 the terminal successfully receives the data packet, it trans-
 mits a positive acknowledgment (ACK) message to the base
 station. Id., col. 1, lines 58–63. If the terminal does not
 successfully receive the data packet, it transmits a nega-
 tive acknowledgement (NACK) message to the base sta-
 tion, and “the base station retransmits the control
 signaling and the packet which is not received by the ter-
 minal correctly.” Id., col. 1, line 65, through col. 2, line 3.
 The initial control signal sent by the base station contains
 the payload size (the amount of data being sent) and the
 RV, the latter typically set to a default value. Id., col. 2,
 lines 12–19. In retransmissions, the RV is incremented,
 while the payload size remains the same. Id., col. 2, lines
 19–28. Where the RV in an initial transmission is a default
 value already known by the terminal, the initial control
 signal sent to the terminal need not actually indicate that
 default RV value. Id., col. 3, lines 13–16. And because the
 payload size does not change upon retransmission, once the
 terminal successfully receives the payload-size figure in
 the initial transmission’s control signal—while failing to
 receive the data packet, which must be sent again—the
 payload size need not be included in any retransmission’s
 control signal. Id., col. 3, lines 16–20.
      Therefore, the ’278 patent notes, transmitting the RV
 in the initial control signal and transmitting the payload
 size in retransmissions wastes transmission resources. Id.,
 col. 3, lines 20–27. The ’278 patent seeks to eliminate such
 waste by transmitting the payload size and RV in a com-
 mon data field of the control signal. Id., col. 4, lines 23–29.
 Distinct ranges of this single field are reserved for indicat-
 ing the payload size and RV, thus allowing the terminal to
 determine from the value of the single field whether the
 field conveys the payload size or RV. Id., col. 4, lines 49–
 54.
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     In one embodiment disclosed in the ’278 patent, the
 common field is six bits, which can represent 64 (i.e., 26)
 different values. Id., col. 5, lines 9–17. If the four lowest
 values of the common field indicate values of RV—i.e.,
 000000 through 000011 indicate RV1 through RV4—then
 the remaining 60 values—i.e., 000100 through 111111—
 can indicate different payload sizes. Id.
      The ’278 patent includes two independent claims, both
 at issue in this appeal, one claiming a method, the other an
 apparatus. The parties agree that claim 1 is representative
 for purposes of deciding the issues on appeal:
     1. A method of signaling, comprising:
     receiving, by a terminal, control signaling compris-
         ing a field, wherein the field includes N bits
         that are either 1 or 0, and a state of the field is
         indicated by all the N bits of the field; wherein
         N is a positive integer greater than 1; wherein
         the field is dynamically indicative of one of a
         payload size or a Redundancy Version (RV)
         through the state of the field, wherein the pay-
         load size is indicated through a first state of the
         field when the first state is within a first pre-
         determined range and the RV is indicated
         through a second state of the field when the
         second state is within a second predetermined
         range distinct from the first predetermined
         range; and
     sending, by the terminal, a packet according to the
        received control signaling to a base station
        (BS).
 ’278 patent, col. 11, line 60, through col. 12, line 11.
                               B
     In May 2017, Samsung petitioned for an inter partes
 review of claims 1, 2, and 6–9 of the patent. Samsung
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 argued that the claims are unpatentable on three grounds:
 first, claims 1, 2, and 6–9 are unpatentable for obviousness
 over a combination of U.S. Patent No. 7,813,379 (Kim ’379),
 U.S. Patent Application Publication No. 2003/0123470
 (Kim ’470), and a 3rd Generation Partnership Project
 (3GPP) technical specification (TS 24.008); second, claims,
 1, 6, 7, and 9 are unpatentable for obviousness over a com-
 bination of a 3GPP working group document (R1-02-0051)
 and TS 24.008; and third, claims 2 and 8 are unpatentable
 for obviousness over a combination of R1-02-0051 and
 TS 24.008 in further view of Kim ’379.
     The Board instituted a review of all challenged claims
 on all asserted grounds of unpatentability. In its final writ-
 ten decision, the Board determined that all the challenged
 claims are unpatentable for obviousness on all asserted
 grounds. Samsung, 2018 WL 6519541, at *10–20.
     Huawei timely appealed. Samsung withdrew from the
 appeal, and the Director of the PTO intervened to defend
 the Board’s decision pursuant to 35 U.S.C. § 143. We have
 jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                               II
      On appeal, Huawei contends that the Board erred in
 its reading of the prior art. Further, Huawei argues that
 the Board erred in finding that a relevant skilled artisan
 would have been motivated to modify and combine the
 prior art references with a reasonable expectation of suc-
 cess. Lastly, Huawei argues that the Board abused its dis-
 cretion by departing from the grounds for unpatentability
 asserted in Samsung’s petition and by failing to provide
 support for its determination adequate to enable our re-
 view.
     We review the Board’s determination of obviousness de
 novo and its underlying factual findings for substantial-ev-
 idence support. Personal Web Technologies, LLC v. Apple,
 Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). Among the factual
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 determinations in an obviousness analysis are “findings as
 to the scope and content of the prior art . . . [and] the pres-
 ence or absence of a motivation to combine or modify with
 a reasonable expectation of success.” Ariosa Diagnostics v.
 Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015).
 “Substantial evidence review asks ‘whether a reasonable
 fact finder could have arrived at the agency’s decision’ and
 requires examination of the ‘record as a whole, taking into
 account evidence that both justifies and detracts from an
 agency’s decision.’” Intelligent Bio-Systems, Inc. v. Illu-
 mina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016)
 (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir.
 2000)). We review the Board’s procedural decisions for an
 abuse of discretion. Ericsson Inc. v. Intellectual Ventures I
 LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018).
     The Board’s decision presents more than one basis for
 unpatentability of the claims at issue. We hold that claim
 1, and therefore each of the challenged claims, would have
 been obvious over TS 24.008’s “message type” field in com-
 bination with Kim ’379 and Kim ’470, and we reject
 Huawei’s arguments for setting aside the Board’s decision
 so concluding. That holding suffices to affirm, without fur-
 ther analysis.
                               A
      As to the content of the prior art, it is undisputed that
 none of the prior-art references by itself teaches all limita-
 tions of claim 1. Kim ’470 discloses a six-bit common field
 that conveys either (a) transport block set size and
 transport channel identity (TBSS+TrCH ID) or (b) RV.
 The parties agree that TBSS+TrCH ID is equivalent to
 payload size. Kim ’470, however, does not disclose using
 distinct ranges in the common field to indicate which pa-
 rameter is conveyed. Rather, the terminal taught in Kim
 uses another field—the new data indicator (NDI)—to iden-
 tify which parameter (e.g., payload size or RV) is conveyed
 in the common field. J.A. 2096 (“It is determined from the
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 HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU                     7



 NDI preceding the common field whether the common field
 contains the TrCH ID & TBSS or the RV.”).
      Samsung argued, however, that TS 24.008 discloses at
 least one signaling field that uses distinct ranges to indi-
 cate which of a plurality of parameters (having different
 meanings) is being conveyed by the value of that single
 field. For example, in a given protocol, TS 24.008 discloses
 using bits five and six of the “message type” field to indicate
 whether the message is one of four “registration messages,”
 one of eight “security messages,” one of eight “connection
 management messages,” or one of three “miscellaneous
 messages.” J.A. 2419. The Board agreed with Samsung’s
 characterization of TS 24.008.         Samsung, 2018 WL
 6519541, at *14–15.
      Substantial evidence supports the Board’s finding that
 the “message type” field in TS 24.008 teaches the technique
 used in the obviousness combination. The decimal trans-
 lation of the binary ranges in the relevant table of
 TS 24.008 is straightforward: a field value falling below 16
 tells the receiver that the field value conveys a “registra-
 tion message”; a field value of 16 to 31 means that the field
 value is a “security message”; a field value of 32 to 47
 means a “connection management message”; and a field
 value of 48 to 63 means a “miscellaneous message.”
 J.A. 2419; see J.A. 3059–60. This technique teaches using
 distinct ranges of values of a single field to convey that the
 field value is one or another of different types of infor-
 mation. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
 1076 (Fed. Cir. 2015) (“A reference must be considered for
 everything it teaches by way of technology and is not lim-
 ited to the particular invention it is describing.” (quotation
 marks omitted)). The combination of this teaching with the
 particular types of information in the Kim references would
 be a common field that conveys payload size and RV using
 distinct ranges. The Board properly found that the combi-
 nation teaches the claimed invention.
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                               B
      As to motivation to combine TS 24.008 with the Kim
 references, the Board found that a relevant artisan would
 have been motivated to combine TS 24.008 with Kim ’379
 and Kim ’470 in order to “reduce overhead and increase ef-
 ficiency.” Samsung, 2018 WL 6519541, at *15. There is
 substantial-evidence support for that finding.
      Dr. Madisetti testified that signaling two parameters
 using a common field, thereby reducing the number of bits
 transmitted, would increase transmission efficiency. Spe-
 cifically, if the common field itself could indicate by its own
 value which parameter was conveyed, a relevant artisan
 would have recognized that a separate NDI field, used in
 the prior art to indicate the contents of the common field,
 could be eliminated. Moreover, as noted by the Board, both
 Kim ’379 and ’470 expressly refer to increased efficiency as
 a benefit to transmitting payload and RV information in a
 single field. Id.; J.A. 2075 (“It is preferable to inform the
 receiver of the transport block size . . . without additional
 information bits.”); J.A. 2078 (“In accordance with the pre-
 sent invention . . . information about the number of the
 padding bits can be transmitted without an additional in-
 formation bit field through efficient use of an existing con-
 trol field.”); J.A. 2093 (“It is [an] object of the present
 invention to . . . minimiz[e] an amount of control infor-
 mation to be transmitted on a shared control channel in a[]
 [High Speed Downlink Packet Access] communication sys-
 tem.”). This desire expressed by the Kim references pro-
 vides substantial-evidence support for the Board’s finding
 that a relevant artisan would have been motivated to mod-
 ify the common field taught by Kim ’470 to use distinct
 ranges to indicate whether payload size or RV is conveyed
      Huawei contends that a generic interest in increasing
 efficiency is insufficient motivation to combine, particu-
 larly where the Kim references indicate no dissatisfaction
 with their disclosed method for transmitting payload size
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 and RV. The efficiency interest here, however, is expressed
 in a concrete form: reducing numbers of bits to be trans-
 mitted. And the fact that the Kim references showed their
 own forms of increasing efficiency compared to what came
 before them hardly means that a relevant artisan would
 not have been motivated to increase efficiency still further.
 Samsung’s expert Dr. Madisetti testified that “network ef-
 ficiency and reduced overhead is one of the most fundamen-
 tal design principles in developing 3GPP communications
 systems.” J.A. 2005. The Board credited this testimony
 and found that “collaborative work to increase efficiency in
 the 3GPP field was iterative and ongoing.” Samsung, 2018
 WL 6519541, at *16.
      This is not a case where the motivation of increased ef-
 ficiency is asserted so generically as to be legally insuffi-
 cient.      In ActiveVideo Networks, Inc. v. Verizon
 Communications, Inc., we held that an expert’s proffered
 motivation to combine was legally insufficient because it
 amounted to little more than a motivation to combine the
 references in unspecified ways in the hope of making
 “something better.” 694 F.3d 1312, 1328 (Fed. Cir. 2012).
 “Efficiency” was just one of several generic improvements
 the expert asserted might result from combining various
 aspects of the prior art. Id. Here, the evidence establishes
 that efficiency is one of the “fundamental design principles”
 in the relevant field, and the improved efficiency is realized
 in a concrete way—by reducing the number of bits that
 must be transmitted. Nor is this case like Rovalma, S.A.
 v. Bohler-Edelstahl GmbH, where we held that the Board
 failed to adequately explain why a relevant artisan would
 have been motivated to increase the thermal conductivities
 of steels disclosed in the prior art. 856 F.3d 1019, 1025–26
 (Fed. Cir. 2017). We determined that one reference’s dis-
 closure of the general desirability of high thermal conduc-
 tivity was not enough to show that a relevant artisan would
 have been motivated to increase thermal conductivity be-
 yond levels achieved in the prior art. Id. at 1026. Here,
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 however, substantial evidence—in the form of expert testi-
 mony—establishes that increased efficiency is a “powerful
 motivation” because “it is axiomatic that network band-
 width is limited.” J.A. 2005.
     Huawei further argues that there is no evidence that a
 relevant artisan would have been motivated to combine the
 Kim references with TS 24.008 in particular. As discussed
 above, the idea borrowed from TS 24.008 is a simple one:
 certain ranges of a data field may be allocated to specific
 uses. Indeed, Dr. Madisetti testified that it was “common-
 place in 3GPP communication protocols to combine two sig-
 naling fields into one ‘common’ field wherever possible.”
 J.A. 1981. Dr. Madisetti further explained that, when com-
 bining payload size and RV into a common field, the “most
 straightforward and intuitive approach would be [to] set
 aside one range of values for payload size and another
 range of values for RV.” J.A. 2020.
      Additionally, the Kim references and TS 24.008 all dis-
 cuss transmitting control signals in 3GPP communication
 systems. Samsung, 2018 WL 6519541, at *7–8. Huawei
 argues that a relevant artisan would not have looked to
 TS 24.008 when modifying the Kim references because
 TS 24.008 is directed to a different aspect of the 3GPP sys-
 tem. But the Board found that TS 24.008 is directed to
 communication with user terminals—as are the Kim refer-
 ences—in addition to core network messaging and that TS
 24.008 is “generally applicab[le] to ‘messages exchanged
 over the control channels of the radio interface.’” Id., at *16
 (citing J.A. 2101; quoting J.A. 2124). In any event, given
 the high level of skill in the art, and the simplicity and fa-
 miliarity of the range-allocation technique, the Board had
 a sufficient basis to find that a relevant artisan would not
 be dissuaded from applying the teachings of TS 24.008 to
 the Kim references by any differences in the focus of the
 communications contexts being addressed. Id.
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     Huawei further contends that Kim ’470 uses every
 value of the six-bit common field to indicate a payload size
 and, therefore, a skilled artisan would not modify Kim ’470
 to use distinct ranges of the common field for payload size
 and RV because doing so would require reducing the num-
 ber of values available to indicate payload size. This con-
 tention relies on premises simply not compelled by the
 evidence. The evidence does not show that Kim ’470 re-
 quires use of all 64 values in the six-bit field for payload
 size or that a skilled artisan would resist sacrificing even a
 small number of such values to RV use (say, four) to gain a
 one-bit reduction in what must be transmitted. This argu-
 ment therefore does not undermine the Board’s finding of
 motivation to combine.
                               C
      Huawei briefly argues that the Board failed to explain
 why a relevant artisan would have had a reasonable expec-
 tation of success when combining the prior art. A relevant
 artisan “need only have a reasonable expectation of success
 of developing the claimed invention.” Allergan, Inc. v. Apo-
 tex Inc., 754 F.3d 952, 962 (Fed. Cir. 2014). Here, the
 claims require only that a terminal receive a control signal
 formatted with the common field discussed above and
 transmit a packet to the base station according to the re-
 ceived signal. See ’278 patent, col. 11, line 60, through
 col. 12, line 11. Huawei’s argument on this obviousness
 component relies on requiring something more, but no
 more is required. In this case, we think that the findings
 made by the Board leave no doubt that the combination
 would succeed in doing what the claim requires. See Intel-
 ligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
 F.3d 1359, 1367 (Fed. Cir. 2016).
                               D
     Huawei contends that the Board, in making its deter-
 mination, departed from the grounds for unpatentability
 presented in the petition and failed to provide sufficient
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 reasoning and support in its decision. We see no sufficient
 reason to disturb the Board’s decision on these grounds.
     Huawei argues that Samsung, in its petition, relied
 only on the combination of Kim ’379 with either Kim ’470
 or TS 24.008, not on a combination of all three references.
 The Board could readily conclude otherwise. Samsung
 stated in the petition that it “incorporated Kim ’470 into
 this ground of unpatentability” but still contended that
 “the challenged claims are obvious in view of Kim ’379 and
 TS 24.008 alone.” J.A. 171 n.7. This argument-in-the-al-
 ternative style, using all three references, is further
 evinced in Samsung’s analysis of each claim limitation. See
 J.A. 172–83. Thus, the petition was fairly understood by
 the Board as contemplating a combination of both Kim ref-
 erences with TS 24.008.
      Huawei also argues that the Board’s repeated citation
 to lengthy sections of Dr. Madisetti’s declaration fails to
 provide an adequate explanation for its reasoning. The
 passages in question are claim charts incorporated into Dr.
 Madisetti’s declaration. J.A. 2008–38. Given that the
 Board cited these sections when discussing particular
 claim limitations, it is clear what portion of the charts the
 Board was referring to in each instance. The Board’s style
 of citation has not deprived us our ability to discern the ba-
 ses for its decisions.
                              III
     For the foregoing reasons, the Board’s decision is af-
 firmed. 1



      1  On November 7, 2019, Huawei filed a letter with
 the court asking us to vacate the Board’s decision and re-
 mand for consideration by a different Board panel under
 this court’s decision regarding the Appointments Clause in
 Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
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 HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU                13



                       AFFIRMED




 (Fed. Cir. 2019). We reject this request. Huawei did not
 raise this issue before filing its opening brief or in that
 brief. We see no sound basis for distinguishing this case
 from our precedent deeming the challenge forfeited in such
 circumstances. See Customedia Technologies, LLC v. Dish
 Network Corp., 941 F.3d 1173, 1174 (Fed. Cir. 2019).
