UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE (USA) Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`
`
`DECLARATION OF PAUL S. MIN, PH.D
`
`
`
`Case No. IPR2016-00757
`
`
`
`
`
`ZTE/HTC
`Exhibit 1016-0001
`
`

`
`
`
`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`Introduction & Summary of Opinions ............................................................. 1 
`
`Background/Qualifications .............................................................................. 2 
`
`III.  Documents and Materials Considered ............................................................. 6 
`
`IV.  Legal Principles ............................................................................................... 6 
`
`V. 
`
`Challenged Claims of 236 Patent .................................................................. 13 
`
`VI.  Person of Ordinary Skill in the Art ................................................................ 17 
`
`VII.  State of the Art ............................................................................................... 18 
`
`VIII.  Prior Art References ...................................................................................... 23 
`
`A. 
`
`B. 
`
`Prior Art Specifications ....................................................................... 23 
`
`Ericsson 468 ........................................................................................ 24 
`
`IX.  Claim Construction ........................................................................................ 24 
`
`X. 
`
`Invalidity Analysis of 236 Patent .................................................................. 25 
`
`A. 
`
`Claims 1-6 are obvious based on the prior art specifications. ............ 25 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`Independent claim 1 is obvious................................................. 27 
`
`Dependent claim 2 is obvious. .................................................. 50 
`
`Dependent claim 3 is obvious. .................................................. 52 
`
`Dependent claim 4 is obvious. .................................................. 55 
`
`Dependent claim 5 is obvious. .................................................. 56 
`
`Dependent claim 6 is obvious. .................................................. 58 
`
`Skilled artisans would have combined the teachings of
`the 300 and 321 references. ...................................................... 59 
`
`Min Declaration
`
`i
`
`IPR2016-00757
`
`ZTE/HTC
`Exhibit 1016-0002
`
`

`
`
`
`B. 
`
`Claims 7-10 and 12-13 are obvious based on the prior art
`specifications and the Ericsson patent. ................................................ 61 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`Independent claim 7 is obvious................................................. 61 
`
`Dependent claim 8 is obvious. .................................................. 67 
`
`Dependent claim 9 is obvious. .................................................. 71 
`
`Dependent claim 10 is obvious. ................................................ 72 
`
`Dependent claim 12 is obvious. ................................................ 72 
`
`Dependent claim 13 is obvious. ................................................ 73 
`
`Skilled artisans would have combined the prior art
`specifications’ teachings with the Ericsson patent’s
`teachings. ................................................................................... 73 
`
`XI.  Public Availability of Prior Art References .................................................. 75 
`
`A. 
`
`B. 
`
`The 300 reference (Exhibit 1002) was available to members of the
`general public as of at least March 11, 2008, without any
`restrictions. .......................................................................................... 75 
`
`The 321 reference (Exhibit 1003) was available to members of the
`general public as of at least June 15, 2008, without any restrictions. . 84 
`
`
`
`Min Declaration
`
`ii
`
`IPR2016-00757
`
`ZTE/HTC
`Exhibit 1016-0003
`
`

`
`
`
`I.
`
`Introduction & Summary of Opinions
`
`1. My name is Paul Min. I submit this declaration on behalf of ZTE
`
`(USA) Inc., HTC Corporation, and HTC America, Inc. (“Petitioner”), which I
`
`understand are challenging the validity of claims 1-10 and 12-13 (“the challenged
`
`claims”) of U.S. Patent No. 7,881,236 (“the 236 patent”) in a petition for inter
`
`partes review.
`
`2.
`
`I have been asked to provide an opinion on the validity of the
`
`challenged claims. In my opinion, for the reasons in the following sections, the
`
`challenged claims are invalid on the following grounds:
`
`(1) Claims 1-6 are obvious in view of the 321 reference (Exhibit
`
`1003) and the 300 reference (Exhibit 1002); and
`
`(2) Claims 7-10 and 12-13 are obvious in view of the 321 reference
`
`(Exhibit 1003), the 300 reference (Exhibit 1002), and the
`
`Ericsson patent (Exhibit 1004).
`
`3.
`
`I have also been asked to provide an opinion on whether Exhibits
`
`1002 and 1003 to the petition were available to interested members of the public
`
`before August 11, 2008, which is the claimed priority date of the 236 patent. In my
`
`opinion, for the reasons in the following sections:
`
`(1) Exhibit 1002 (the 300 reference) was available to members of
`
`the general public, including interested members of the public,
`
`Min Declaration
`
`1
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0004
`
`

`
`
`
`without restriction as of at least March 11, 2008; and
`
`(2) Exhibit 1003 (the 321 reference) was available to members of
`
`the general public, including interested members of the public,
`
`without restriction as of at least June 15, 2008.
`
`II. Background/Qualifications
`
`4.
`
` Appendix A to this declaration is my curriculum vitae, which sets
`
`forth my qualifications.
`
`5.
`
`I received a B.S. degree in Electrical Engineering in 1982, an M.S.
`
`degree in Electrical Engineering in 1984, and a Ph.D. degree in Electrical
`
`Engineering in 1987 from the University of Michigan in Ann Arbor. I received
`
`several academic honors, including my B.S. degree with honors, a best graduate
`
`student award and a best teaching assistant award during my M.S. study, and a best
`
`paper award from a major international conference for reporting results from my
`
`Ph.D. thesis.
`
`6.
`
`After receiving my Ph.D., I worked at Bellcore in New Jersey from
`
`August 1987 until August 1990. At Bellcore, I was responsible for evolving the
`
`public switched telephone network (POTS) into a multi-services voice and data
`
`network that incorporated packet switches, optical technologies, and wireless
`
`technologies.
`
`7.
`
`In September 1990, I joined the faculty at Washington University in
`
`Min Declaration
`
`2
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0005
`
`

`
`
`
`St. Louis. In July 1996, I was promoted to an Associate Professor of Electrical
`
`Engineering with tenure. I am currently a Senior Professor at Washington
`
`University of the Electrical and Systems Engineering. I have also served as the
`
`Chair of the Graduate Curriculum (2000-2002) and the Chair of the Undergraduate
`
`Curriculum (2011-2014) for the Electrical and Systems Engineering department.
`
`8.
`
`At Washington University, I have conducted research in
`
`communication, computing, and related electronic hardware and software. My
`
`research group has pioneered a new paradigm for designing electronic circuits that
`
`can alleviate the speed and performance mismatch against optical technology. I
`
`have received several grants from the U.S. Federal Agencies, including the
`
`National Science Foundation and the Defense Advanced Research Project Agency,
`
`and numerous contracts from companies and organizations around the world.
`
`Specifically related to the technology matters in this Investigation, I have
`
`researched a variety of wireless communication technologies, including CDMA,
`
`WCDMA, OFDM, FDD, SC-FDMA, and TDD. I have an extensive background
`
`and experience in each of these technologies.
`
`9.
`
`As a faculty member at Washington University, I have taught a
`
`number of courses in electronics, communication, and computing at both the
`
`undergraduate and graduate levels. For example, I have taught communication
`
`theory (Washington University ESE 471), transmission and multiplexing
`
`Min Declaration
`
`3
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0006
`
`

`
`
`
`(Washington University ESE 571), and signaling and control of communication
`
`networks (Washington University ESE 572).
`
`10.
`
`I have supervised more than 50 students, 12 of whom received a
`
`doctoral degree under my guidance. A number of doctoral theses that I have
`
`supervised relate specifically to LTE technology. In particular, my students and I
`
`have published a number of peer-reviewed articles on resource allocation,
`
`scheduling, modulation, mobility management, and multiplexing. Several of these
`
`articles received accolades in the field. For example, in 2011, we received a best
`
`paper award in 3G WCDMA-related mobility and resource management at the
`
`prestigious Mobility 2011 international conference.
`
`11.
`
`In addition to my responsibilities as a university faculty member, I
`
`have founded two companies. In May 1997, I founded MinMax Technologies, Inc.,
`
`a fabless semiconductor company that developed switch fabric integrated circuit
`
`chips for the Internet. In March 1999, I founded Erlang Technology, Inc., a fabless
`
`semiconductor company that focused on the design and development of integrated
`
`circuit chips and software for the Internet. One of Erlang’s products received a best
`
`product of the year award in 2004 from a major trade journal for the electronics
`
`industry.
`
`12. Outside my own start-up companies, I have also served in various
`
`technology and business advisor roles for other companies and organizations
`
`Min Declaration
`
`4
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0007
`
`

`
`
`
`around the world. I was the main technical author for one of two winning proposals
`
`to the Korean government for CDMA wireless service licenses (1996). I was
`
`responsible for designing a commercial scale IS-95 CDMA cellular network,
`
`which I understand to be one of the earliest such networks deployed in the world. I
`
`worked with numerous engineers and scientists around the world to implement this
`
`commercial-scale cellular network before IS-95 CDMA was widely accepted. This
`
`provided me with extensive insight into various components of CDMA technology,
`
`which by and large are used in WCDMA network. I have also been involved in a
`
`semiconductor company that specializes in semiconductor memories such as flash
`
`EEPROMs as a board member and as a technical advisor (2007-2011).
`
`13.
`
`I am a named inventor on nine U.S. patents, many of which are
`
`directly related to resource allocation, packet processing, and network designing. I
`
`have extensively published technical papers in international conferences and
`
`journals, technical memoranda and reports, and given a number of seminars and
`
`invited talks. Many of these papers are specifically within the context of the 3GPP
`
`standard. I have organized several international conferences and served as an
`
`international journal editor.
`
`14.
`
`I am a member of and have been actively involved in a number of
`
`professional organizations. For example, I have served as the Chair of the Saint
`
`Louis Section of the IEEE with more than 3,000 members (2014), and a member of
`
`Min Declaration
`
`5
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0008
`
`

`
`
`
`the Eta Kappa Nu Honor Society for electrical engineers. I have also been an
`
`Ambassador of the McDonnell International Scholars Academy (2007-2013).
`
`15.
`
`In my nearly 30 years of experience with telecommunications
`
`technology, I have acquired significant knowledge about telecommunications
`
`systems industry standards, standard setting organizations such as 3GPP, and the
`
`rules and document policies that those organizations have in place to develop
`
`industry standards.
`
`III. Documents and Materials Considered
`
`16. Appendix B to this declaration lists materials that I have considered in
`
`rendering the opinions that I express in this declaration.1 I have also reviewed, and
`
`navigated through, portions of the websites for 3GPP (www.3gpp.org) and ETSI
`
`(www.etsi.org) that are identified in this declaration. In forming my opinions, I
`
`have also relied on my experience and education.
`
`IV. Legal Principles
`
`17.
`
`I am not an attorney. I offer no opinions on the law. But counsel has
`
`informed me of legal standards that apply to the issue of patent validity. I have
`
`applied these standards in arriving at my conclusions.
`
`18.
`
`I understand that in an inter partes review the petitioner has the
`
`
`1
`For convenience, this declaration refers to certain documents by the exhibit
`numbers that I understand Petitioners use in their petition.
`
`Min Declaration
`
`6
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0009
`
`

`
`
`
`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence. I understand this standard is different from the standard that applies in a
`
`district court, where I understand a challenger bears the burden of proving
`
`invalidity by clear and convincing evidence.
`
`19.
`
`I understand that a patent claim is invalid based on anticipation if a
`
`single prior art reference discloses all of the features of that claim, and does so in a
`
`way that enables one of ordinary skill in the art to make and use the invention.
`
`Each of the claim features may be expressly or inherently present in the prior art
`
`reference. I understand that if the prior art necessarily functions in accordance
`
`with, or includes a claim’s feature, then that prior art inherently discloses that
`
`feature. I have relied on this understanding in expressing the opinions set forth
`
`below.
`
`20.
`
`I understand that a prior art reference describes the claimed invention
`
`if it either expressly or inherently describes each and every feature set forth in the
`
`claim; i.e., in determining whether a single item of prior art anticipates a patent
`
`claim, one should take into consideration not only what is expressly disclosed in
`
`that item, but also what is inherently present as a natural result of the practice of
`
`the system or method disclosed in that item.
`
`21.
`
`I understand that to establish inherency, the evidence must make clear
`
`that the missing descriptive matter is necessarily present in the item of prior art and
`
`Min Declaration
`
`7
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0010
`
`

`
`
`
`that it would be so recognized by persons of ordinary skill in the art. I also
`
`understand that prior art use of the claimed patented invention that was accidental,
`
`unrecognized, or unappreciated at the time of filing can still be an invalidating
`
`anticipation.
`
`22.
`
`I understand that although multiple prior art references may not be
`
`combined to show anticipation, additional references may be used to interpret the
`
`allegedly anticipating reference and shed light on what it would have meant to
`
`those skilled in the art at the time of the invention. These additional references
`
`must make it clear that the missing descriptive matter in the patent claim is
`
`necessarily present in the allegedly anticipating reference, and that it would be so
`
`recognized by persons of ordinary skill in the art.
`
`23.
`
`I understand that a patent may not be valid even though the invention
`
`is not identically disclosed or described in the prior art if the differences between
`
`the subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious to a person having ordinary skill in the
`
`art in the relevant subject matter at the time the invention was made.
`
`24. To determine if a claim is obvious, the following factors should be
`
`considered: (1) the level of ordinary skill in the art at the time the invention was
`
`made; (2) the scope and content of the prior art; (3) the differences between the
`
`claimed invention and the prior art; and (4) secondary considerations, including
`
`Min Declaration
`
`8
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0011
`
`

`
`
`
`evidence of commercial success, long-felt but unsolved need, unsuccessful
`
`attempts by others, copying of the claimed invention, unexpected and superior
`
`results, acceptance and praise by others, independent invention by others, and the
`
`like.
`
`25. For example, I understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. I also understand that an obviousness analysis need not
`
`seek out precise teachings directed to the specific subject matter of the challenged
`
`claim because a court can take account of the inferences and/or creative steps that a
`
`person of ordinary skill in the art would employ.
`
`26.
`
`I understand that the obviousness determination of an invention turns
`
`on whether a hypothetical person with ordinary skill and full knowledge of all the
`
`pertinent prior art, when faced with the problem to which the claimed invention is
`
`addressed, would be led naturally to the solution adopted in the claimed invention
`
`or would naturally view that solution as an available alternative. Facts to be
`
`evaluated in this analysis include:
`
` The scope and contents of the prior art;
`
` Differences between the prior art and the claims at issue;
`
` The level of ordinary skill in the pertinent art; and
`
` Evidence of objective factors suggesting or negating obviousness.
`
`Min Declaration
`
`9
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0012
`
`

`
`
`
`27.
`
`I understand that the following rationales may be used to determine
`
`whether a piece of prior art can be combined with other prior art or with other
`
`information within the knowledge of one of ordinary skill in the art:
`
` 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 known techniques 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;
`
` “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 one of
`
`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.
`
`Min Declaration
`
`10
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0013
`
`

`
`
`
`28.
`
`I understand that when a work is available in one field of endeavor,
`
`design incentives and/or other market forces, for example, can prompt variations of
`
`it, either in the same field or a different one. Moreover, if a person of ordinary skill
`
`can implement a predictable variation, I understand that that likely bars its
`
`patentability.
`
`29.
`
`I understand that obviousness must be tested as of the time the
`
`invention was made. I understand that the test for obviousness is what the
`
`combined teachings of the prior art references would have suggested, disclosed, or
`
`taught to one of ordinary skill in the art. In particular, it is my understanding that a
`
`patent claim is invalid based upon obviousness if it does nothing more than
`
`combine familiar elements from one or more prior art references or products
`
`according to known methods to yield predictable results. For example, I understand
`
`that where a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would have recognized that it would improve similar
`
`devices in the same way, using that technique is obvious. I understand that
`
`obviousness can be proved by showing that a combination of elements was
`
`obvious to try, i.e.: that it does no more than yield predictable results; implements a
`
`predictable variation; is no more than the predictable use of prior art elements
`
`according to their established functions; or when there is design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`Min Declaration
`
`11
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0014
`
`

`
`
`
`solutions. I have been further informed that when a patent claim simply arranges
`
`old elements with each element performing the same function it had been known to
`
`perform and yields results no more than one would expect from such an
`
`arrangement, the combination is obvious.
`
`30.
`
`I understand that another factor to be considered is common sense.
`
`For example, I understand that common sense teaches that familiar items may have
`
`obvious uses beyond their primary purposes, and, in many cases, a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle.
`
`31.
`
`I understand that the Supreme Court articulated additional guidance
`
`for obviousness in its KSR decision. My understanding is that the Supreme Court
`
`said that technical people of ordinary skill look for guidance in other solutions to
`
`problems of a similar nature, and that the obviousness inquiry must track reality,
`
`and not legal fictions. I have relied on these understandings in expressing the
`
`opinions set forth below.
`
`32.
`
`I understand that a new use of an old product or material cannot be
`
`claimed as a new product; the apparatus or system itself is old and cannot be
`
`patented. I further understand that, in general, merely discovering and claiming a
`
`new benefit to an old process cannot render the process newly patentable.
`
`Min Declaration
`
`12
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0015
`
`

`
`
`
`V. Challenged Claims of 236 Patent
`
`33.
`
`I understand that Petitioner is challenging the validity of claims 1-10
`
`and 12-13 of the 236 patent in this proceeding. Those claims follow.
`
`1. A method of transmitting data by a user equipment
`through an uplink, the method comprising:
`receiving an uplink grant (UL Grant) signal from a
`base station on a specific message;
`in a
`determining whether
`there
`is data stored
`message 3 (Msg3) buffer when receiving the UL Grant
`signal on the specific message;
`determining whether the specific message is a random
`access response message;
`transmitting the data stored in the Msg3 buffer to the
`base station using the UL Grant signal received on the
`specific message,
`if
`there
`is data stored
`in
`the
`Msg3 buffer when receiving the UL Grant signal on the
`specific message and the specific message is the random
`access response message; and
`in
`the base station
`to
`transmitting new data
`correspondence with the UL Grant signal received on the
`specific message, if there is no data stored in the
`Msg3 buffer when receiving the UL Grant signal on the
`specific message or the specific message is not the
`random access response message.
`
`
`2. The method according to claim 1, wherein the
`
`Min Declaration
`
`13
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0016
`
`

`
`
`
`transmitting the new data to the base station includes:
`acquiring a Medium Access Control Protocol Data
`Unit (MAC PDU) from a multiplexing and assembly
`entity; and
`transmitting the MAC PDU to the base station.
`
`
`
`3. The method according to claim 1, wherein the UL
`Grant signal received on the specific message is a UL
`Grant signal received on a Physical Downlink Control
`Channel (PDCCH), and
`wherein the user equipment transmits new data in
`correspondence with the UL Grant signal received on the
`PDCCH.
`
`
`4. The method according to claim 1, wherein the data
`stored in the Msg3 buffer is a Medium Access Control
`Protocol Data Unit (MAC PDU) including a user
`equipment identifier.
`
`
`5. The method according to claim 4, wherein the data
`stored in the Msg3 buffer further includes information
`about a buffer status report (BSR) if the user equipment
`starts a random access procedure for the BSR.
`
`
`6. The method of claim 1, wherein the UL Grant
`signal received on the specific message is either a UL
`Grant signal received on a Physical Downlink Control
`
`Min Declaration
`
`14
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0017
`
`

`
`
`
`Channel (PDCCH) or a UL Grant signal received on the
`random access response message.
`
`
`7. A user equipment, comprising:
`a reception module adapted to receive an uplink grant
`(UL Grant) signal from a base station on a specific
`message;
`a transmission module adapted to transmit data to the
`base station using the UL Grant signal received on the
`specific message;
`a message 3 (Msg3) buffer adapted to store UL data to
`be transmitted in a random access procedure;
`a Hybrid Automatic Repeat Request (HARQ) entity
`adapted to determine whether there is data stored in the
`Msg3 buffer when the reception module receives the UL
`Grant signal and the specific message is a random access
`response message, acquiring the data stored in the Msg3
`buffer if there is data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal and the
`specific message is the random access response message,
`and controlling the transmission module to transmit the
`data stored in the Msg3 buffer to the base station using
`the UL Grant signal received by the reception module on
`the specific message; and
`a multiplexing and assembly entity used
`transmission of new data,
`wherein the HARQ entity acquires the new data to be
`
`for
`
`Min Declaration
`
`15
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0018
`
`

`
`
`
`transmitted from the multiplexing and assembly entity if
`there is no data stored in the Msg3 buffer when the
`reception module receives the UL Grant signal on the
`specific message or the received message is not the
`random access response message, and controls the
`transmission module to transmit the new data acquired
`from the multiplexing and assembly entity using the UL
`Grant signal received by the reception module on the
`specific message.
`
`
`8. The user equipment according to claim 7, further
`comprising:
`one or more HARQ processes; and
`HARQ buffers respectively corresponding to the one
`or more HARQ processes,
`wherein the HARQ entity transfers the data acquired
`from the multiplexing and assembly entity or the Msg3
`buffer to a specific HARQ process of the one or more
`HARQ processes and controls the specific HARQ
`process
`to
`transmit
`the data acquired
`from
`the
`multiplexing and assembly entity or the Msg3 buffer
`through the transmission module.
`
`
`9. The user equipment according to claim 8, wherein,
`when the specific HARQ process transmits the data
`stored in the Msg3 buffer through the transmission
`module, the data stored in the Msg3 buffer is controlled
`
`Min Declaration
`
`16
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0019
`
`

`
`
`
`to be copied into a specific HARQ buffer corresponding
`to the specific HARQ process, and the data copied into
`the specific HARQ buffer is controlled to be transmitted
`through the transmission module.
`
`
`10. The user equipment according to claim 7, wherein
`the UL Grant signal received by the reception module on
`the specific message is a UL Grant signal received on a
`Physical Downlink Control Channel (PDCCH), and
`wherein the HARQ entity controls new data to be
`transmitted in correspondence with the received UL
`Grant signal received on the PDCCH.
`
`
`12. The user equipment according to claim 7, wherein
`the data stored in the Msg3 buffer is a Medium Access
`Control Protocol Data Unit (MAC PDU) including a user
`equipment identifier.
`
`
`13. The user equipment of claim 7, wherein the UL
`Grant signal received on the specific message is either a
`UL Grant signal received on a Physical Downlink
`Control Channel (PDCCH) or a UL Grant signal received
`on the random access response message.
`
`VI. Person of Ordinary Skill in the Art
`
`34. The person of ordinary skill in the art of the subject matter of the 236
`
`Min Declaration
`
`17
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0020
`
`

`
`
`
`patent would have had a master’s degree in electrical engineering with 2-3 years of
`
`experience in cellular communication systems, and would have been aware of the
`
`efforts of the Third Generation Partnership Project (“3GPP”) and its various
`
`groups. Alternatively, that person would have had a Ph.D. in electrical engineering
`
`with the same familiarity with the work of the 3GPP and its various groups.
`
`VII. State of the Art
`
`35.
`
`In 2008, before the 236 patent’s claimed priority date, the
`
`telecommunications industry was developing the cellular standard now known as
`
`Long Term Evolution (“LTE”). Development of LTE took place in a standard-
`
`setting organization called the Third Generation Partnership Project (“3GPP”).
`
`3GPP had members from virtually every telecommunications company and
`
`organization in the world.
`
`36.
`
`3GPP had several groups. Relevant here is the Technical Specification
`
`Group Radio Access Network (“TSG RAN”). TSG RAN developed LTE’s radio
`
`access network, which allows user equipment (“UE”), such as a phone, to
`
`communicate with the cellular network through a base station called an eNodeB.
`
`TSG RAN itself had several working groups, of which Working Group 2 (“WG2”)
`
`is relevant here.
`
`37. One of the things WG2 was developing was LTE’s random access
`
`procedure. (Ex. 1036, Dahlman textbook, at 361-63.) Among other things, this
`
`Min Declaration
`
`18
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0021
`
`

`
`
`
`procedure allows a UE initially to access a cellular network, for example, when the
`
`UE powers up. (Ex. 1036, Dahlman textbook, at 361-62.) As shown below, the
`
`random access procedure had four conventional steps.
`
`
`
`(Ex. 1002, 300 reference, at § 10.1.5 (Fig. 10.1.5.1-1).)
`
`38. The first step is the “message 1” step, in which a UE sends a random
`
`access preamble to an eNodeB, labeled “eNB” in the figure. (Ex. 1002, 300
`
`reference, at § 10.1.5.1.) Next, in the “message 2” step, the eNodeB sends the UE a
`
`random access response including an uplink grant. (Ex. 1002, 300 reference, at §
`
`10.1.5.1.) Using the random access response, in the “message 3” step, the UE
`
`sends the eNodeB an uplink message, labeled “Scheduled Transmission” in the
`
`Min Declaration
`
`19
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0022
`
`

`
`
`
`figure. (Ex. 1002, 300 reference, at § 10.1.5.1.) The significance of the phrase
`
`“Scheduled Transmission” in the figure above is that the message 3 step is the first
`
`uplink transmission that is “scheduled” by the eNodeB for the UE after the UE
`
`powered up. Finally, in the “message 4” step, the UE receives a message, labeled
`
`“Contention Resolution,” corresponding to the uplink message from the eNodeB.
`
`(Ex. 1002, 300 reference, at § 10.1.5.1.) As the 236 patent acknowledges, this
`
`procedure was well-known before the 236 patent’s claimed August 2008 priority
`
`date. (Ex. 1001, 236 patent, at 4:3-17.)
`
`39. Also well-known was that message 3, i.e., the third message
`
`exchanged between the eNodeB and the UE, exists in the context of the random
`
`access procedure, and the UE transmits message 3 only if it receives a random
`
`access response, which is message 2. This concept was documented in several
`
`places, including: (1) the 300 reference, an LTE specification published in March
`
`2008; (2) the well-known Dahlman textbook on LTE published in 2007; and (3) a
`
`submission by Philips for a WG2 meeting in March 2008. (Ex. 1002, 300
`
`reference, at § 10.1.5.1; Ex. 1036, Dahlman textbook, at 367-68; Ex. 1005, Philips
`
`submission, at Fig. 2.) Therefore, several months before the claimed priority date,
`
`skilled artisans knew that the UE should send message 3 only if it receives a
`
`random access response.
`
`40. Although the 300 reference correctly captured this “only if” condition,
`
`Min Declaration
`
`20
`
`IPR2016-00757
`
`
`
`ZTE/HTC
`Exhibit 1016-0023
`
`

`
`
`
`another LTE technical specification, the 321 reference (dated June 2008), was not
`
`as clear in documenting it. The 321 reference was clear that a UE must transmit
`
`message 3 as part of the scheduled transmission during the random access
`
`procedure if it receives an uplink grant on a random access response. But the 321
`
`reference was less clear about whether a UE may transmit message 3 if it receives
`
`an uplink grant on a message other than the ran