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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`ZTE (USA) Inc.,
`HTC Corporation, and
`HTC America, Inc.,
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`Petitioner
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`v.
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`Evolved Wireless LLC,
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`Patent Owner
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`DECLARATION OF PAUL S. MIN, PH.D
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`Case No. IPR2016-00757
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`SAMSUNG 1016-0001
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction & Summary of Opinions ............................................................. 1
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`Background/Qualifications .............................................................................. 2
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`III. Documents and Materials Considered ............................................................. 6
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`IV. Legal Principles ............................................................................................... 6
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`V.
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`Challenged Claims of 236 Patent .................................................................. 13
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`VI. Person of Ordinary Skill in the Art ................................................................ 17
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`VII. State of the Art ............................................................................................... 18
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`VIII. Prior Art References ...................................................................................... 23
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`A.
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`B.
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`Prior Art Specifications ....................................................................... 23
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`Ericsson 468 ........................................................................................ 24
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`IX. Claim Construction ........................................................................................ 24
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`X.
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`Invalidity Analysis of 236 Patent .................................................................. 25
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`A.
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`Claims 1-6 are obvious based on the prior art specifications. ............ 25
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Independent claim 1 is obvious................................................. 27
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`Dependent claim 2 is obvious. .................................................. 50
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`Dependent claim 3 is obvious. .................................................. 52
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`Dependent claim 4 is obvious. .................................................. 55
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`Dependent claim 5 is obvious. .................................................. 56
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`Dependent claim 6 is obvious. .................................................. 58
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`Skilled artisans would have combined the teachings of
`the 300 and 321 references. ...................................................... 59
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`B.
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`Claims 7-10 and 12-13 are obvious based on the prior art
`specifications and the Ericsson patent. ................................................ 61
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Independent claim 7 is obvious................................................. 61
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`Dependent claim 8 is obvious. .................................................. 67
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`Dependent claim 9 is obvious. .................................................. 71
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`Dependent claim 10 is obvious. ................................................ 72
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`Dependent claim 12 is obvious. ................................................ 72
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`Dependent claim 13 is obvious. ................................................ 73
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`Skilled artisans would have combined the prior art
`specifications’ teachings with the Ericsson patent’s
`teachings. ................................................................................... 73
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`XI. Public Availability of Prior Art References .................................................. 75
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`A.
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`B.
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`The 300 reference (Exhibit 1002) was available to members of the
`general public as of at least March 11, 2008, without any
`restrictions. .......................................................................................... 75
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`The 321 reference (Exhibit 1003) was available to members of the
`general public as of at least June 15, 2008, without any restrictions. . 84
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`I.
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`Introduction & Summary of Opinions
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`1. My name is Paul Min. I submit this declaration on behalf of ZTE
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`(USA) Inc., HTC Corporation, and HTC America, Inc. (“Petitioner”), which I
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`understand are challenging the validity of claims 1-10 and 12-13 (“the challenged
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`claims”) of U.S. Patent No. 7,881,236 (“the 236 patent”) in a petition for inter
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`partes review.
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`2.
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`I have been asked to provide an opinion on the validity of the
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`challenged claims. In my opinion, for the reasons in the following sections, the
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`challenged claims are invalid on the following grounds:
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`(1) Claims 1-6 are obvious in view of the 321 reference (Exhibit
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`1003) and the 300 reference (Exhibit 1002); and
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`(2) Claims 7-10 and 12-13 are obvious in view of the 321 reference
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`(Exhibit 1003), the 300 reference (Exhibit 1002), and the
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`Ericsson patent (Exhibit 1004).
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`3.
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`I have also been asked to provide an opinion on whether Exhibits
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`1002 and 1003 to the petition were available to interested members of the public
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`before August 11, 2008, which is the claimed priority date of the 236 patent. In my
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`opinion, for the reasons in the following sections:
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`(1) Exhibit 1002 (the 300 reference) was available to members of
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`the general public, including interested members of the public,
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`without restriction as of at least March 11, 2008; and
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`(2) Exhibit 1003 (the 321 reference) was available to members of
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`the general public, including interested members of the public,
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`without restriction as of at least June 15, 2008.
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`II. Background/Qualifications
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`4.
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` Appendix A to this declaration is my curriculum vitae, which sets
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`forth my qualifications.
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`5.
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`I received a B.S. degree in Electrical Engineering in 1982, an M.S.
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`degree in Electrical Engineering in 1984, and a Ph.D. degree in Electrical
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`Engineering in 1987 from the University of Michigan in Ann Arbor. I received
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`several academic honors, including my B.S. degree with honors, a best graduate
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`student award and a best teaching assistant award during my M.S. study, and a best
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`paper award from a major international conference for reporting results from my
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`Ph.D. thesis.
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`6.
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`After receiving my Ph.D., I worked at Bellcore in New Jersey from
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`August 1987 until August 1990. At Bellcore, I was responsible for evolving the
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`public switched telephone network (POTS) into a multi-services voice and data
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`network that incorporated packet switches, optical technologies, and wireless
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`technologies.
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`7.
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`In September 1990, I joined the faculty at Washington University in
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`St. Louis. In July 1996, I was promoted to an Associate Professor of Electrical
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`Engineering with tenure. I am currently a Senior Professor at Washington
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`University of the Electrical and Systems Engineering. I have also served as the
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`Chair of the Graduate Curriculum (2000-2002) and the Chair of the Undergraduate
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`Curriculum (2011-2014) for the Electrical and Systems Engineering department.
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`8.
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`At Washington University, I have conducted research in
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`communication, computing, and related electronic hardware and software. My
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`research group has pioneered a new paradigm for designing electronic circuits that
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`can alleviate the speed and performance mismatch against optical technology. I
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`have received several grants from the U.S. Federal Agencies, including the
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`National Science Foundation and the Defense Advanced Research Project Agency,
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`and numerous contracts from companies and organizations around the world.
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`Specifically related to the technology matters in this Investigation, I have
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`researched a variety of wireless communication technologies, including CDMA,
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`WCDMA, OFDM, FDD, SC-FDMA, and TDD. I have an extensive background
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`and experience in each of these technologies.
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`9.
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`As a faculty member at Washington University, I have taught a
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`number of courses in electronics, communication, and computing at both the
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`undergraduate and graduate levels. For example, I have taught communication
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`theory (Washington University ESE 471), transmission and multiplexing
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`(Washington University ESE 571), and signaling and control of communication
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`networks (Washington University ESE 572).
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`10.
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`I have supervised more than 50 students, 12 of whom received a
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`doctoral degree under my guidance. A number of doctoral theses that I have
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`supervised relate specifically to LTE technology. In particular, my students and I
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`have published a number of peer-reviewed articles on resource allocation,
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`scheduling, modulation, mobility management, and multiplexing. Several of these
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`articles received accolades in the field. For example, in 2011, we received a best
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`paper award in 3G WCDMA-related mobility and resource management at the
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`prestigious Mobility 2011 international conference.
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`11.
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`In addition to my responsibilities as a university faculty member, I
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`have founded two companies. In May 1997, I founded MinMax Technologies, Inc.,
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`a fabless semiconductor company that developed switch fabric integrated circuit
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`chips for the Internet. In March 1999, I founded Erlang Technology, Inc., a fabless
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`semiconductor company that focused on the design and development of integrated
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`circuit chips and software for the Internet. One of Erlang’s products received a best
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`product of the year award in 2004 from a major trade journal for the electronics
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`industry.
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`12. Outside my own start-up companies, I have also served in various
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`technology and business advisor roles for other companies and organizations
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`around the world. I was the main technical author for one of two winning proposals
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`to the Korean government for CDMA wireless service licenses (1996). I was
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`responsible for designing a commercial scale IS-95 CDMA cellular network,
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`which I understand to be one of the earliest such networks deployed in the world. I
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`worked with numerous engineers and scientists around the world to implement this
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`commercial-scale cellular network before IS-95 CDMA was widely accepted. This
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`provided me with extensive insight into various components of CDMA technology,
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`which by and large are used in WCDMA network. I have also been involved in a
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`semiconductor company that specializes in semiconductor memories such as flash
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`EEPROMs as a board member and as a technical advisor (2007-2011).
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`13.
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`I am a named inventor on nine U.S. patents, many of which are
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`directly related to resource allocation, packet processing, and network designing. I
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`have extensively published technical papers in international conferences and
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`journals, technical memoranda and reports, and given a number of seminars and
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`invited talks. Many of these papers are specifically within the context of the 3GPP
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`standard. I have organized several international conferences and served as an
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`international journal editor.
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`14.
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`I am a member of and have been actively involved in a number of
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`professional organizations. For example, I have served as the Chair of the Saint
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`Louis Section of the IEEE with more than 3,000 members (2014), and a member of
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`the Eta Kappa Nu Honor Society for electrical engineers. I have also been an
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`Ambassador of the McDonnell International Scholars Academy (2007-2013).
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`15.
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`In my nearly 30 years of experience with telecommunications
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`technology, I have acquired significant knowledge about telecommunications
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`systems industry standards, standard setting organizations such as 3GPP, and the
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`rules and document policies that those organizations have in place to develop
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`industry standards.
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`III. Documents and Materials Considered
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`16. Appendix B to this declaration lists materials that I have considered in
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`rendering the opinions that I express in this declaration.1 I have also reviewed, and
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`navigated through, portions of the websites for 3GPP (www.3gpp.org) and ETSI
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`(www.etsi.org) that are identified in this declaration. In forming my opinions, I
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`have also relied on my experience and education.
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`IV. Legal Principles
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`17.
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`I am not an attorney. I offer no opinions on the law. But counsel has
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`informed me of legal standards that apply to the issue of patent validity. I have
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`applied these standards in arriving at my conclusions.
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`18.
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`I understand that in an inter partes review the petitioner has the
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`1
`For convenience, this declaration refers to certain documents by the exhibit
`numbers that I understand Petitioners use in their petition.
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`burden of proving a proposition of unpatentability by a preponderance of the
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`evidence. I understand this standard is different from the standard that applies in a
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`district court, where I understand a challenger bears the burden of proving
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`invalidity by clear and convincing evidence.
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`19.
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`I understand that a patent claim is invalid based on anticipation if a
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`single prior art reference discloses all of the features of that claim, and does so in a
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`way that enables one of ordinary skill in the art to make and use the invention.
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`Each of the claim features may be expressly or inherently present in the prior art
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`reference. I understand that if the prior art necessarily functions in accordance
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`with, or includes a claim’s feature, then that prior art inherently discloses that
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`feature. I have relied on this understanding in expressing the opinions set forth
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`below.
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`20.
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`I understand that a prior art reference describes the claimed invention
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`if it either expressly or inherently describes each and every feature set forth in the
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`claim; i.e., in determining whether a single item of prior art anticipates a patent
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`claim, one should take into consideration not only what is expressly disclosed in
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`that item, but also what is inherently present as a natural result of the practice of
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`the system or method disclosed in that item.
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`21.
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`I understand that to establish inherency, the evidence must make clear
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`that the missing descriptive matter is necessarily present in the item of prior art and
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`that it would be so recognized by persons of ordinary skill in the art. I also
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`understand that prior art use of the claimed patented invention that was accidental,
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`unrecognized, or unappreciated at the time of filing can still be an invalidating
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`anticipation.
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`22.
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`I understand that although multiple prior art references may not be
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`combined to show anticipation, additional references may be used to interpret the
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`allegedly anticipating reference and shed light on what it would have meant to
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`those skilled in the art at the time of the invention. These additional references
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`must make it clear that the missing descriptive matter in the patent claim is
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`necessarily present in the allegedly anticipating reference, and that it would be so
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`recognized by persons of ordinary skill in the art.
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`23.
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`I understand that a patent may not be valid even though the invention
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`is not identically disclosed or described in the prior art if the differences between
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`the subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious to a person having ordinary skill in the
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`art in the relevant subject matter at the time the invention was made.
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`24. To determine if a claim is obvious, the following factors should be
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`considered: (1) the level of ordinary skill in the art at the time the invention was
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`made; (2) the scope and content of the prior art; (3) the differences between the
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`claimed invention and the prior art; and (4) secondary considerations, including
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`evidence of commercial success, long-felt but unsolved need, unsuccessful
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`attempts by others, copying of the claimed invention, unexpected and superior
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`results, acceptance and praise by others, independent invention by others, and the
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`like.
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`25. For example, I understand that the combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than
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`yield predictable results. I also understand that an obviousness analysis need not
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`seek out precise teachings directed to the specific subject matter of the challenged
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`claim because a court can take account of the inferences and/or creative steps that a
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`person of ordinary skill in the art would employ.
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`26.
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`I understand that the obviousness determination of an invention turns
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`on whether a hypothetical person with ordinary skill and full knowledge of all the
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`pertinent prior art, when faced with the problem to which the claimed invention is
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`addressed, would be led naturally to the solution adopted in the claimed invention
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`or would naturally view that solution as an available alternative. Facts to be
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`evaluated in this analysis include:
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` The scope and contents of the prior art;
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` Differences between the prior art and the claims at issue;
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` The level of ordinary skill in the pertinent art; and
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` Evidence of objective factors suggesting or negating obviousness.
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`27.
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`I understand that the following rationales may be used to determine
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`whether a piece of prior art can be combined with other prior art or with other
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`information within the knowledge of one of ordinary skill in the art:
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` Combining prior art elements according to known methods to yield
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`predictable results;
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` Simple substitution of one known element for another to obtain predictable
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`results;
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` Use of known techniques to improve similar devices (methods, or products)
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`in the same way;
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` Applying a known technique to a known device (method, or product) ready
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`for improvement to yield predictable results;
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` “Obvious to try” - choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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` Known work in one field of endeavor may prompt variations of it for use in
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`either the same field or a different one based on design incentives or other
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`market forces if the variations would have been predictable to one of
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`ordinary skill in the art; or
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` Some teaching, suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior art reference or to combine prior art
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`reference teachings to arrive at the claimed invention.
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`28.
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`I understand that when a work is available in one field of endeavor,
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`design incentives and/or other market forces, for example, can prompt variations of
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`it, either in the same field or a different one. Moreover, if a person of ordinary skill
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`can implement a predictable variation, I understand that that likely bars its
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`patentability.
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`29.
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`I understand that obviousness must be tested as of the time the
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`invention was made. I understand that the test for obviousness is what the
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`combined teachings of the prior art references would have suggested, disclosed, or
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`taught to one of ordinary skill in the art. In particular, it is my understanding that a
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`patent claim is invalid based upon obviousness if it does nothing more than
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`combine familiar elements from one or more prior art references or products
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`according to known methods to yield predictable results. For example, I understand
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`that where a technique has been used to improve one device, and a person of
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`ordinary skill in the art would have recognized that it would improve similar
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`devices in the same way, using that technique is obvious. I understand that
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`obviousness can be proved by showing that a combination of elements was
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`obvious to try, i.e.: that it does no more than yield predictable results; implements a
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`predictable variation; is no more than the predictable use of prior art elements
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`according to their established functions; or when there is design need or market
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`pressure to solve a problem and there are a finite number of identified, predictable
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`solutions. I have been further informed that when a patent claim simply arranges
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`old elements with each element performing the same function it had been known to
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`perform and yields results no more than one would expect from such an
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`arrangement, the combination is obvious.
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`30.
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`I understand that another factor to be considered is common sense.
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`For example, I understand that common sense teaches that familiar items may have
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`obvious uses beyond their primary purposes, and, in many cases, a person of
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`ordinary skill will be able to fit the teachings of multiple patents together like
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`pieces of a puzzle.
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`31.
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`I understand that the Supreme Court articulated additional guidance
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`for obviousness in its KSR decision. My understanding is that the Supreme Court
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`said that technical people of ordinary skill look for guidance in other solutions to
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`problems of a similar nature, and that the obviousness inquiry must track reality,
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`and not legal fictions. I have relied on these understandings in expressing the
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`opinions set forth below.
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`32.
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`I understand that a new use of an old product or material cannot be
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`claimed as a new product; the apparatus or system itself is old and cannot be
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`patented. I further understand that, in general, merely discovering and claiming a
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`new benefit to an old process cannot render the process newly patentable.
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`V. Challenged Claims of 236 Patent
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`33.
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`I understand that Petitioner is challenging the validity of claims 1-10
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`and 12-13 of the 236 patent in this proceeding. Those claims follow.
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`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.
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`2. The method according to claim 1, wherein the
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`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.
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`
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`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.
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`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.
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`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.
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`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
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`Channel (PDCCH) or a UL Grant signal received on the
`random access response message.
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`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
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`for
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`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.
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`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.
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`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
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`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.
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`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.
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`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.
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`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.
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`VI. Person of Ordinary Skill in the Art
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`34. The person of ordinary skill in the art of the subject matter of the 236
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`patent would have had a master’s degree in electrical engineering with 2-3 years of
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`experience in cellular communication systems, and would have been aware of the
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`efforts of the Third Generation Partnership Project (“3GPP”) and its various
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`groups. Alternatively, that person would have had a Ph.D. in electrical engineering
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`with the same familiarity with the work of the 3GPP and its various groups.
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`VII. State of the Art
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`35.
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`In 2008, before the 236 patent’s claimed priority date, the
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`telecommunications industry was developing the cellular standard now known as
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`Long Term Evolution (“LTE”). Development of LTE took place in a standard-
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`setting organization called the Third Generation Partnership Project (“3GPP”).
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`3GPP had members from virtually every telecommunications company and
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`organization in the world.
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`36.
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`3GPP had several groups. Relevant here is the Technical Specification
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`Group Radio Access Network (“TSG RAN”). TSG RAN developed LTE’s radio
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`access network, which allows user equipment (“UE”), such as a phone, to
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`communicate with the cellular network through a base station called an eNodeB.
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`TSG RAN itself had several working groups, of which Working Group 2 (“WG2”)
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`is relevant here.
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`37. One of the things WG2 was developing was LTE’s random access
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`procedure. (Ex. 1036, Dahlman textbook, at 361-63.) Among other things, this
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`procedure allows a UE initially to access a cellular network, for example, when the
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`UE powers up. (Ex. 1036, Dahlman textbook, at 361-62.) As shown below, the
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`random access procedure had four conventional steps.
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`(Ex. 1002, 300 reference, at § 10.1.5 (Fig. 10.1.5.1-1).)
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`38. The first step is the “message 1” step, in which a UE sends a random
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`access preamble to an eNodeB, labeled “eNB” in the figure. (Ex. 1002, 300
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`reference, at § 10.1.5.1.) Next, in the “message 2” step, the eNodeB sends the UE a
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`random access response including an uplink grant. (Ex. 1002, 300 reference, at §
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`10.1.5.1.) Using the random access response, in the “message 3” step, the UE
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`sends the eNodeB an uplink message, labeled “Scheduled Transmission” in the
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`figure. (Ex. 1002, 300 reference, at § 10.1.5.1.) The significance of the phrase
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`“Scheduled Transmission” in the figure above is that the message 3 step is the first
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`uplink transmission that is “scheduled” by the eNodeB for the UE after the UE
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`powered up. Finally, in the “message 4” step, the UE receives a message, labeled
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`“Contention Resolution,” corresponding to the uplink message from the eNodeB.
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`(Ex. 1002, 300 reference, at § 10.1.5.1.) As the 236 patent acknowledges, this
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`procedure was well-known before the 236 patent’s claimed August 2008 priority
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`date. (Ex. 1001, 236 patent, at 4:3-17.)
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`39. Also well-known was that message 3, i.e., the third message
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`exchanged between the eNodeB and the UE, exists in the context of the random
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`access procedure, and the UE transmits message 3 only if it receives a random
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`access response, which is message 2. This concept was documented in several
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`places, including: (1) the 300 reference, an LTE specification published in March
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`2008; (2) the well-known Dahlman textbook on LTE published in 2007; and (3) a
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`submission by Philips for a WG2 meeting in March 2008. (Ex. 1002, 300
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`reference, at § 10.1.5.1; Ex. 1036, Dahlman textbook, at 367-68; Ex. 1005, Philips
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`submission, at Fig. 2.) Therefore, several months before the claimed priority date,
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`skilled artisans knew that the UE should send message 3 only if it receives a
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`random access response.
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`40. Although the 300 reference correctly captured this “only if” condition,
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`another LTE technical specification, the 321 reference (dated June 2008), was not
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`as clear in documenting it. The 321 reference was clear that a UE must transmit
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`message 3 as part of the scheduled transmission during the random access
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`procedure if it receives an uplink grant on a random access response. But the 321
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`reference was less clear about whether a UE may transmit message 3 if it receives
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`an uplink grant on a message other than the random access response. In other
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`words, the 321 reference was clear about the “if” condition—that a UE transmits
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`message 3 if it receives a random access response grant—but potentially
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`ambiguous about the