IPR2020-00252 (Patent No. 9,155,066)
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Ericsson Inc.
`
`Petitioner
`
`v.
`
`Electronics and Telecommunications Research Institute
`
`Patent Owner
`
`
`Patent No. 9,155,066
`Filing Date: May 13, 2014
`Issue Date: October 6, 2015
`
`Title: METHOD FOR PAGING INFORMATION IN CELLULAR SYSTEM
`
`Inter Partes Review No. IPR2019-00252
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Ericsson Inc.
`
`Petitioner
`
`v.
`
`Electronics and Telecommunications Research Institute
`
`Patent Owner
`
`
`Patent No. 9,155,066
`Filing Date: May 13, 2014
`Issue Date: October 6, 2015
`
`Title: METHOD FOR PAGING INFORMATION IN CELLULAR SYSTEM
`
`Inter Partes Review No. IPR2019-00252
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`IPR2020-00252 (Patent No. 9,155,066)
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`Page
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`TABLE OF CONTENTS Error! Bookmark not defined.
`TABLE OF AUTHORITIES
`iv
`Error! Bookmark not defined.
`LIST OF EXHIBITS
`PRELIMINARY STATEMENT .................. Error! Bookmark not defined.
`I.
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED Error!
`II.
`Bookmark not defined.
`III. TECHNOLOGICAL BACKGROUND ....... Error! Bookmark not defined.
`The ’066 Patent .................................. Error! Bookmark not defined.
`A.
`Challenged Claims ............................. Error! Bookmark not defined.
`B.
`Prosecution History ............................ Error! Bookmark not defined.
`C.
`Claimed Priority Date ......................... Error! Bookmark not defined.
`D.
`IV. LEVEL OF ORDINARY SKILL IN THE ART ......... Error! Bookmark not
`defined.
`CLAIM CONSTRUCTION ......................... Error! Bookmark not defined.
`V.
`VI. PRIOR ART .................................................. Error! Bookmark not defined.
`R2-060429 .......................................... Error! Bookmark not defined.
`A.
`R1-060572 .......................................... Error! Bookmark not defined.
`B.
`R1-060576 .......................................... Error! Bookmark not defined.
`C.
`R1-060187 .......................................... Error! Bookmark not defined.
`D.
`R2-060988 .......................................... Error! Bookmark not defined.
`E.
`TR 25.814 ........................................... Error! Bookmark not defined.
`F.
`VII. CLAIMS 10, 11, and 16 ARE UNPATENTABLE ..... Error! Bookmark not
`defined.
`A. Ground 1: Claims 10 and 16 are Obvious Under 35 U.S.C. § 103(a)
`Over R2-060429 in View of R1-060572 (to the extent necessary) and
`R1-060576 .......................................... Error! Bookmark not defined.
`1.
`Claim 10: [10.pre] “A method for transmitting paging
`information, performed in a base station, the method
`comprising:” ............................. Error! Bookmark not defined.
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`i
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`IPR2020-00252 (Patent No. 9,155,066)
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`2.
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`4.
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`5.
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`6.
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`3.
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`[10.2] “when a paging information is generated, allocating the
`paging information to a downlink shared channel;” ......... Error!
`Bookmark not defined.
`[10.3] “allocating an identifier indicating existence of the
`paging information and a radio resource allocation information
`indicating radio resource to which the paging information is
`allocated to a control channel; and” ........ Error! Bookmark not
`defined.
`[10.4] “transmitting the control channel and the downlink
`shared channel to a terminal,” .. Error! Bookmark not defined.
`[10.5] “wherein when the paging information is not generated,
`the identifier is not allocated to the control channel, and” Error!
`Bookmark not defined.
`[10.6] “wherein the identifier is used by reserving and
`allocating a part of scheduling identifiers.” ... Error! Bookmark
`not defined.
`Claim 16: “The method of claim 10, wherein the terminal is in
`Radio Resource Control (RRC) Connected state.” ........... Error!
`Bookmark not defined.
`A POSITA would have been motivated to combine R2-060429
`with R1-060572 and R1-060576 ............. Error! Bookmark not
`defined.
`Ground 2: Claim 11 is Obvious Under 35 U.S.C. § 103(a) Over R2-
`060429 in View of R1-060572 (to the extent necessary), R1-060576,
`and R1-060187 ................................... Error! Bookmark not defined.
`1.
`Claim 11: “The method of claim 10, wherein the control
`channel and the downlink shared channel are physical
`channels.” ................................. Error! Bookmark not defined.
`A POSITA would have been motivated to combine R2-060429
`with R1-060572, R1-060576, and R1-060187 ................. Error!
`Bookmark not defined.
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`B.
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`7.
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`8.
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`2.
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`IPR2020-00252 (Patent No. 9,155,066)
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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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`C.
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`Ground 3: Claims 10 and 11 are Obvious Under 35 U.S.C. § 103(a)
`Over R2-060988 in View of R1-060572 and TR 25.814 ............ Error!
`Bookmark not defined.
`1.
`Claim 10: [10.1] “A method for transmitting paging
`information, performed in a base station, the method
`comprising:” ............................. Error! Bookmark not defined.
`[10.2] “when a paging information is generated, allocating the
`paging information to a downlink shared channel;” ......... Error!
`Bookmark not defined.
`[10.3] “allocating an identifier indicating existence of the
`paging information and a radio resource allocation information
`indicating radio resource to which the paging information is
`allocated to a control channel; and” ........ Error! Bookmark not
`defined.
`[10.4] “transmitting the control channel and the downlink
`shared channel to a terminal,” .. Error! Bookmark not defined.
`[10.5] “wherein when the paging information is not generated,
`the identifier is not allocated to the control channel, and” Error!
`Bookmark not defined.
`[10.6] “wherein the identifier is used by reserving and
`allocating a part of scheduling identifiers.” ... Error! Bookmark
`not defined.
`Claim 11: “The method of claim 10, wherein the control
`channel and the downlink shared channel are physical
`channels.” ................................. Error! Bookmark not defined.
`A POSITA would have been motivated to combine R2-060988
`with R1-060572 and TR 25.814Error! Bookmark not defined.
`D. Ground 4: Claim 16 is Obvious Under 35 U.S.C. § 103(a) Over R2-
`060988 in View of R1-060572, TR 25.814, and R2-060429 (to the
`extent necessary) ................................ Error! Bookmark not defined.
`1.
`Claim 16: “The method of claim 10, wherein the terminal is in
`Radio Resource Control (RRC) Connected state.” ........... Error!
`Bookmark not defined.
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`7.
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`8.
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`IPR2020-00252 (Patent No. 9,155,066)
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`2.
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`A POSITA would have been motivated to combine R2-060988
`with R1-060572, TR 25.814, and R2-060429 Error! Bookmark
`not defined.
`VIII. CONCLUSION ............................................. Error! Bookmark not defined.
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 Error! Bookmark not
`defined.
`Real Parties-In-Interest ....................... Error! Bookmark not defined.
`A.
`Related Matters ................................... Error! Bookmark not defined.
`B.
`CERTIFICATION UNDER 37 C.F.R. §42.24(D) ...... Error! Bookmark not
`defined.
`XI. PAYMENT OF FEES .................................. Error! Bookmark not defined.
`XII. TIME FOR FILING PETITION................... Error! Bookmark not defined.
`XIII. GROUNDS FOR STANDING ..................... Error! Bookmark not defined.
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION
`Error! Bookmark not defined.
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`X.
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`IPR2020-00252 (Patent No. 9,155,066)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dow Chem. Co. v. Sumitomo Chem. Co.,
`257 F.3d 1364 (Fed. Cir. 2001) .......................................................................... 18
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 18
`Statutes
`35 U.S.C. § 102(a) ............................................................................................passim
`35 U.S.C. § 103(a) ................................................................................. 34, 48, 52, 66
`35 U.S.C. § 311 .......................................................................................................... 2
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`Other Authorities
`37 C.F.R. § 42.100(b) .............................................................................................. 18
`37 C.F.R. § 42.100 et seq. .......................................................................................... 1
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`v
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`IPR2020-00252 (Patent No. 9,155,066)
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`LIST OF EXHIBITS
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`Exhibit
`
`Description
`
`1001
`1002
`
`1003
`
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`U.S. Patent No. 9,155,066 (“the ’066 patent”)
`Prosecution History of U.S. Ser. No. 14/276,511 (application leading
`to the ’066 patent)
`Declaration of Dr. Wayne Stark
`
`Curriculum Vitae of Dr. Wayne Stark
`Sol IP, LLC v. AT&T, et al. Mobility Preliminary Constructions on
`December 4, 2019 (“Court’s Preliminary Constructions”)
`Bishop Declaration
`“PCH mapping and Paging control” submitted to 3GPP at the March
`27-31, 2006 joint meeting of the 3GPP RAN1/RAN2 in Athens,
`Greece by China Academy of Telecommunications Technology
`(“CATT”) (“R2-060988”)
`“LTE physical-layer models” submitted to 3GPP at the TSG-RAN
`WG1 #44 in Denver, Colorado on February 13-17, 2006 by Ericsson
`(“R1-060572”)
`“Physical Layer Aspects for Evolved UTRA (Release 7),” Technical
`Report of 3GPP published in April 2006 (“3 GPP TR 25.814 v1.2.2
`(2006-03)”)
`“Evolved Paging for LTE” submitted to 3GPP at the 3GPP TSG-
`RAN WG2 Meeting #51 in Denver, Colorado on February 13-17,
`2006 by Philips (“R2-060429”)
`“Paging for E-UTRA” submitted to 3GPP at the TSG-RAN WG1
`#44 in Denver, Colorado on February 13-17, 2006 by Ericsson (“R1-
`060576”).
`“OFDMA Downlink Physical channel mapping – text proposal”
`submitted to 3GPP at the 3GPP TSG RAN WG1 LTE Ad Hoc
`Meeting in Helsinki, Finland on January 23-25, 2006 by Nokia (“R1-
`060187”)
`
`vi
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`IPR2020-00252 (Patent No. 9,155,066)
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`1013
`
`1014
`
`1015
`
`“3rd Generation Partnership Project; Technical Specification Group
`Radio Access Network; Physical channels and mapping of transport
`channels onto physical channels (FDD) (Release 6)” (“3GPP TS
`25.211 v6.7.0 (2005-12)”)
`3rd Generation Partnership Project; Technical Specification Group
`Radio Access Network; Evolved Universal Terrestrial Radio Access
`(E-UTRA) and Evolved Universal Terrestrial Radio Access Network
`(E-UTRAN); Radio interface protocol aspects (Release 7)” (“3GPP
`TR 25.813 v0.8.0 (2006-04)”)
`First Amended Complaint for Patent Infringement, Sol IP, LLC v.
`AT&T Mobility LLC, Case No. 2:18-cv-00526 (E.D. Tex.), filed on
`March 22, 2019 (Dkt. No. 100) (“Complaint”)
`
`vii
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`
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`I.
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`IPR2020-00252 (Patent No. 9,155,066)
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`PRELIMINARY STATEMENT
`Petitioner Ericsson Inc. (“Ericsson”) respectfully requests inter partes review
`
`and cancellation of claims 10, 11, and 16 of U.S. Patent No. 9,155,066 (“the ’066
`
`Patent”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’066 Patent relates to the wireless communication between cellular
`
`devices and base stations, and in particular, a concept called paging. Patent Owner
`
`Electronics and Telecommunications Research Institute, by and through its licensing
`
`agent Sol IP, LLC (collectively “Patent Owner”), allege that claims 10, 11, and 16
`
`of the ’066 Patent are essential to LTE Release 8.1 Ex. 1015, ¶¶ 83-84. However,
`
`ETRI did not contribute what it now claims as its invention to the LTE standard.
`
`Instead, all of the concepts claimed in the ’066 Patent were developed during the 4G
`
`LTE standard-setting process by others, and included in printed publications that
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`were submitted to the standard-setting body and made publically available via an
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`email reflector. Ex. 1006, at ¶¶ 27, 38-85. Shortly thereafter, ETRI filed a patent
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`application on these ideas in South Korea. Ex. 1001.
`
`
`1 Petitioner disagrees. Nevertheless, the invalidity analysis herein is based on
`
`Patent Owner’s allegation that practicing the LTE Release 8 standard infringes the
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`Challenged Claims.
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`IPR2020-00252 (Patent No. 9,155,066)
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`This Petition, supported by the Declaration of Dr. Wayne Stark, explains why
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`there is a reasonable likelihood that claims 10, 11, and 16 of the ’066 Patent are
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`unpatentable as obvious to a person of ordinary skill in the art (“POSITA”) in view
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`of the prior art cited herein, the knowledge and understanding of a POSITA, and the
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`’066 Patent itself. Accordingly, claims 10, 11, and 16 of the ’066 Patent should be
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`cancelled.
`
`II.
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`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`Ericsson requests review under 35 U.S.C. § 311 of Challenged Claims 10, 11,
`
`and 16 of the ’066 Patent, and that the Board cancel the same as being unpatentable
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`in view of the cited prior art and the Grounds described below.
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`Ground 1: Claims 10 and 16 are obvious over R2-060429 in view of R1-
`
`060572 (to the extent necessary) and R1-060576.
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`Ground 2: Claim 11 is obvious over R2-060429 in view of R1-060572 (to the
`
`extent necessary), R1-060576, and R1-060187.
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`Ground 3: Claims 10 and 11 are obvious over R2-060988 in view of R1-
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`060572 and TR 25.814.
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`Ground 4: Claim 16 is obvious over R2-060988 in view of R1-060572, TR
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`25.814, and R2-060429 (to the extent necessary).
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`2
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`IPR2020-00252 (Patent No. 9,155,066)
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`III. TECHNOLOGICAL BACKGROUND
`The technology at issue in this petition was developed by members of the
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`Third Generation Partnership Project (“3GPP”) during the 4G standard setting
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`process. To create the 4G standard, 3GPP held standard setting meetings at which
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`3GPP members proposed technology to include in the standard. These proposals
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`were typically submitted in documents called “contributions.” The 3GPP members
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`emailed their contributions to a 3GPP email list and posted them to the publicly
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`available 3GPP FTP site before each meeting. Ex. 1006, at ¶¶ 31-37.
`
`A. The ’066 Patent
`The ’066 Patent is titled “Method For Paging Information In Cellular
`
`System.” Relevant to the Challenged Claims, the ’066 Patent describes methods for
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`transmitting paging information in a packet-based cellular system, such as LTE. Ex.
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`1001 at 1:21-25; 2:13-16. Paging is a mechanism used in cellular communications
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`that allows a transmitting device, e.g., a base station, to inform a receiving device,
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`e.g., a smartphone (also known as a terminal, or user equipment “UE”) that there is
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`information available. See Ex. 1003, ¶ 37. In a typical paging process, a terminal
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`may use a “discontinuous reception process” (also called DRX) to cycle between a
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`low-power idle state and an active state to listen for paging information. Id. In
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`DRX, if paging information is received, the terminal will remain in an active state
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`IPR2020-00252 (Patent No. 9,155,066)
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`and initiate a process to obtain the available information. Id. The general concept
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`of paging far predates the ’066 Patent. Id.
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`The ’066 Patent describes the paging process used in the prior art WCDMA
`
`method with respect to the concepts of transport channels and physical channels.
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`Ex. 1001 at 1:29-40. Cellular communications typically refer to the concept of
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`“channels” as a way to distinguish and group specific types of information and the
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`way that information is processed. Ex. 1003, ¶ 38. The concept of “transport
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`channels” is used to define how data is transmitted over the air, e.g., the encoding
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`and interleaving options used to transmit data. Id. The concept of “physical
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`channels” is used to define where data is when transmitted over the air, e.g., the first
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`N symbols of a transmission. Id.
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`The WCDMA paging process involved transmitting a paging message and use
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`of a paging indicator channel to notify the terminal that the paging message was
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`transmitted. Id., ¶ 39. The paging message was included in a transport channel
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`called a paging channel (PCH). Id. The PCH was mapped into a physical channel
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`called a secondary common control physical channel (S-CCPCH). Ex. 1001 at 1:31-
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`37; Ex. 1003, ¶ 39. A physical channel called a paging indicator channel (PICH)
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`was used to notify UEs that a paging message was sent. Ex. 1001 at 1:43-60; Ex.
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`1003, ¶ 39. In WCDMA, terminals “monitor the paging indication channel every
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`monitoring cycle . . . [and] when it is sensed that indication information
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`IPR2020-00252 (Patent No. 9,155,066)
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`corresponding to the group including the terminal exists in the paging indication
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`channel, the terminals search PCH information transmitted to the S-CCPCH
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`channel” and decode the paging information. Ex. 1001 at 1:58-2:3; Ex. 1003, ¶ 39.
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`The ’066 Patent characterizes WCDMA as having “a problem that limited
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`radio resource is wasted.” Ex. 1001 at 2:8-12. In WCDMA, the S-CCPCH was
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`“statically operated” and existed regardless of whether a paging message was being
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`sent. Ex. 1001 at 2:8-12, 1:49-52; Ex. 1003, ¶ 40. Because of this static operation,
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`limited radio resources, such as OVSF code index and power, are always allocated
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`regardless of whether a paging message was actually present. Id.
`
`The ’066 Patent alleges that its invention “improve[s] applicability of a
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`limited radio resource by variably and flexibly setting up and mapping a transport
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`channel and physical channel in a method for transmitting information notifying start
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`of downlink information from a base station to a terminal in a cellular system for
`
`packet transmission.” Ex. 1001 at 2:66-3:4.
`
`B. Challenged Claims
`This Petition challenges claims 10, 11, and 16 of the ’066 Patent. Claims 10,
`
`11, and 16 are reproduced below and emphasized for reference in the following
`
`discussion:
`
`10. A method for transmitting paging information, performed in a base station,
`the method comprising:
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`5
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`IPR2020-00252 (Patent No. 9,155,066)
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`when a paging information is generated, allocating the paging
`information to a downlink shared channel;
`allocating an identifier indicating existence of the paging
`information and a radio resource allocation
`information
`indicating radio resource to which the paging information is
`allocated to a control channel; and
`transmitting the control channel and the downlink shared channel
`to a terminal,
`wherein when the paging information is not generated, the
`identifier is not allocated to the control channel, and
`wherein the identifier is used by reserving and allocating a part
`of scheduling identifiers.
`11. The method of claim 10, wherein the control channel and the downlink
`shared channel are physical channels.
`16. The method of claim 10, wherein the terminal is in Radio Resource
`Control (RRC) Connected state.
`As shown above, claim 10 recites a paging method with two primary options.
`
`When paging information is present, paging information is allocated to a “downlink
`
`shared channel,” and another “control channel” will include an identifier “indicating
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`existence of the paging information and a radio resource allocation information
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`indicating radio resource to which the paging information is allocated.” Both the
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`“downlink shared channel” and “control channel” are transmitted to a terminal. In
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`contrast, when paging information is not generated, the claim only recites the
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`identifier is not allocated to the “control channel.” Ex. 1001 at 9:6-19.
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`The ’066 Patent describes the general claimed process as follows:
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`IPR2020-00252 (Patent No. 9,155,066)
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`That is, the terminals may recognize whether the paging
`message on the terminal group exists by searching a
`control channel and checking existence of the group ID
`reserved and allocated for transmission of the paging
`information in the scheduling information of the control
`channel transmitted from the base station. Therefore, when
`there is no group ID for the paging message indicating
`own group in the control channel, the terminals determine
`that the paging message does not exist, and continuously
`performs a discontinuous reception operation. When the
`group ID exists, the terminals stop the discontinuous
`reception operation and receive the paging message that
`the base station transmits on the radio resource addressed
`by the group ID.
`
`Ex. 1001 at 6:57-7:3.
`
`With respect to the “wherein the identifier is used by reserving and allocating
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`a part of scheduling identifiers” limitation, the ’066 Patent describes a process where
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`a part of the information included in the terminal scheduling identifiers are used as
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`a group ID:
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`IPR2020-00252 (Patent No. 9,155,066)
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`As shown in FIG. 5, the present invention
`is operated by reserving and allocating a
`part of the information included in the
`terminal scheduling ID as a group ID for
`paging information. The group ID is an ID
`used by reserving and allocating a part of a
`scheduling ID (i.e., a cell radio network
`temporary
`identifier
`(C-RNTI))2
`for
`uniquely identifying a terminal. A base station may
`operate by reserving at least one scheduling ID.
`
`Ex. 1001 at 6:3-10 (emphasis added).
`
`C.
`Prosecution History
`The ’066 Patent application was filed on May 13, 2014. During prosecution,
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`the United States Patent and Trademark Office issued a non-final office action on
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`August 1, 2014 and a final office action on March 3, 2015. A Notice of Allowance
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`was issued on June 5, 2015.
`
`August 1, 2014 Office Action:
`
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`2 A “C-RNTI” is a concept used in WCDMA and LTE to refer to a “Cell Radio
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`Network Temporary Identifier.” Ex. 1003, ¶ 43. In WCDMA and LTE, C-RNTI’s
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`were IDs used to identify a terminal participating in a cell area. Id.
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`IPR2020-00252 (Patent No. 9,155,066)
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`In the August 1, 2014 office action, the Examiner rejected pending claim 1 as
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`anticipated by 3GPP RAN1/RAN2 joint meeting on LTE, R2-060988 (“R2-
`
`060988”). Ex. 1002 at 58.
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`In response, the Applicant amended the claims and argued that R2-060988
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`“neither discloses nor suggests the limitations of amended claim 1, for example,
`
`detecting an identifier indicating existence of a paging information and when the
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`paging information does not exist in the downlink shared channel, the identifier is
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`not detected.” Id. at 96. According to the Applicant, R2-060988 disclosed that the
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`paging indicator is always allocated to radio resources, i.e., “the paging indicator is
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`allocated to the radio resources if there is the paging information as well as if there
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`is no the paging information.” Id. at 97. In contrast, the Applicant argued that in
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`the present invention, the identifier is flexibly allocated to the radio resources such
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`that “the identifier is allocated to the radio resources if there is the paging
`
`information. However, the identifier is not allocated to the radio resources if there
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`is no the paging information.” Id. The Applicant also argued that in the present
`
`invention, the UE received the paging information through two steps, whereas R2-
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`060988 disclosed a UE receiving the paging information in a three step procedure.
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`Ex. 1002 at 98. The Applicant described the alleged three steps of receiving paging
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`information disclosed in R2-060988 as “[i]n first step, UE decodes the PI-ID to
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`identify existence of the paging information. In second step, UE decodes the paging
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`IPR2020-00252 (Patent No. 9,155,066)
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`indicator if there is the paging information. In third step, UE receives the paging
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`information based on resource allocation information.” Id. In contrast, for the
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`present invention, the Applicant argued that “UE detects the identifier in the first
`
`step, and UE receives the paging information based on the resource allocation
`
`information if the identifier is detected in the second step.” Id.
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`March 3, 2015 Office Action:
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`In the March 3, 2015 office action, the Examiner issued a final rejection and
`
`found the Applicant’s arguments to be moot because of a new ground of rejection
`
`based on the same R2-060988 reference as before. However, the Examiner offered
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`some clarifying remarks regarding the Applicant’s arguments. The Examiner found
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`that the scope and content of amended claim 1 only indicated that “the paging
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`identifier is detected when there is paging information and the paging indicator is
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`not detected when there is no paging information.” Ex. 1002 at 107. The
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`Applicant’s focus on the paging identifier being flexibly allocated and the radio
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`resource is allocated for the paging indicator based on the existence of paging
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`information were not found in the current scope of the claim. Id. Further, R2-
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`060988’s disclosure that “UE listening to paging indicator in DRX mode and
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`monitor if the paging indicator match with the ID of the mobile device which
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`indicate that there is existence of paging information for the mobile device, and
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`IPR2020-00252 (Patent No. 9,155,066)
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`proceed further by reading resource allocation of paging channel PCH and read PCH
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`data” addressed the current scope of claim 1. Id.
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`Regarding the Applicant’s argument about the claimed invention’s two-step
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`procedure, the Examiner found that to be inaccurate and that there was actually a
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`three step procedure to detect the paging information. Ex. 1002 at 107.
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`Accordingly, “the current claimed procedure is similar to the teaching presented in
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`Fig. 2 of 3GPP teaching.” Id. at 107-108. The Examiner also rejected pending
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`claims 11 and 12 (which issued as presently challenged claims 10 and 11,
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`respectively) as anticipated by R2-060988. Id. at 121-122. For pending claim 18
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`(which issued as presently challenged claim 16), the Examiner rejected the claim as
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`obvious over R2-060988 in view of US 20050192021 A1 to Lee et al. (“Lee”). The
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`examiner found that “Lee discloses wherein the terminal is in Radio Resource
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`Control (RRC)_Connected state or RRC_idle state (0022 discloses mobile terminal
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`is in RRC idle or connected mode).” Id. at 125.
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`The Applicant responded by amending pending claim 11 to incorporate the
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`limitation of pending claim 13. Ex. 1002 at 158. The Applicant also argued that
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`R2-060988 failed to disclose the limitation “‘wherein when the paging information
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`does not exist in the downlink shared channel, the identifier is not detected, and the
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`identifier is not allocated to the control channel,’ (emphasis added) as recited in
`
`independent claim 1 and similarly recited in independent claim 11.” Ex. 1002 at
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`11
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`IPR2020-00252 (Patent No. 9,155,066)
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`162. The Applicant argued that because R2-060988 disclosed “the paging indicating
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`channel to which the paging indicator is allocated indicates whether having PCH,”
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`that showed that “the paging indicator is always allocated to radio resources,” and
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`thus, “the paging indicator is allocated to the radio resources if there is the paging
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`information as well as if there is no the paging information.” Id. (emphasis in
`
`original). The Applicant argued that this taught away from the identifier of the
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`claimed invention. Id. at 163.
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`Further, the Applicant argued that the PI-ID of R2-060988 likewise taught
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`away from the identifier of the claimed invention. The Applicant argued that
`
`because R2-060988 disclosed “the PI-ID is identical to the UE-ID if there is the
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`paging information” and the “PI-ID is not identical to the UE-ID if there is no the
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`paging information,” that showed that “the PI-ID is always allocated to radio
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`resources.” Ex. 1002 at 164. In contrast, the claimed invention required that “the
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`identifier is not allocated to the radio resources if there is no the paging information.”
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`Id. (emphasis in original).
`
`Furthermore, the Applicant argued that R2-060988 did not disclose amended
`
`claim 11’s limitation “‘wherein the identifier is used by reserving and allocating a
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`part of scheduling identifiers,’ (emphasis added).” Ex. 1002 at 164. The Applicant
`
`argued that the Office Action alleged that the PI-ID is the scheduling identifier which
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`is reserved temporarily to UE. But because R2-060988 disclosed that “the PI-ID
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`12
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`IPR2020-00252 (Patent No. 9,155,066)
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`equals to C-RNTI in size and is used in place of C-RNTI,” the Applicant argued that
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`“the PI-ID is not used by reserving and allocating a part of scheduling identifiers,
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`but rather replaces C-RNTI.” Id. According to the Applicant, this is in contrast to
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`the operation of the claimed invention, as shown in Fig. 5.
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`[T]he present invention is operated by reserving and
`allocating a part of the information included in the
`terminal scheduling ID as a group ID for paging
`information. The group ID is an ID used by reserving and
`allocating a part of a scheduling ID (i.e., a cell radio
`network temporary identifier (C-RNTI)) for uniquely
`identifying a terminal. A base station may operate by
`reserving at least one scheduling ID.
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`Id. Thus, R2-060988 failed to disclose all the features recited in claim 11. Pending
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`claims 12 and 18 were argued to be allowable based on their dependencies from
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`allowable claim 11.
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`On June 5, 2015, the Examiner issued a Notice of Allowance (“NOA”). The
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`NOA characterized R2-060988 as follows:
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`3GPP RAN1/RAN2 joint meeting on LTE R2-060988,
`“PCH mapping and paging control” (“3GPP_1”
`hereinafter) discloses details about using PI-CH indicator
`for indicating an existing of a paging indicator. When PI-
`CH exists, mobile device read the paging indicator to
`determine if paging information exists for the mobile
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`13
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`IPR2020-00252 (Patent No. 9,155,066)
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`device (section 2-3). Therefore, the reference is silent on
`details about (1) using identifier transmitted through the
`control channel for indicating existence of paging
`information wherein the identifier is used by reserving and
`allocating a part of scheduling identifier.
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`Ex. 1002 at 186 (emphasis in original).
`
`D. Claimed Priority Date
`Application No. 14/276,511, which issued as the ’066 Patent, was filed on
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`May 13, 2014, is a continuation of Application No. 12/298,227 filed on April 24,
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`2007, now U.S. Patent No. 8,761,814, and claims priority to two foreign Korean
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`applications filed on April 26, 2006 and April 20, 2007, respectively. For the
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`purposes of this Petition, April 26, 2006 is presumed as the priority date of the
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`challenged claims.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would have (i) an undergraduate degree
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`in Electrical Engineering, Computer Science, or Computer Engineering, or a related
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`field, and around two years of experience in the theory, design, and/or development
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`of cellular technology, or a person with a master’s degree in one of the foregoing
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`with a focus on cellular networks, or (ii) a Master’s degree in one of the foregoing
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`fields with a focus on cellular technology. See Ex. 1003, ¶ 64. Someone with less
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`or different technical education but more relevant practical experience, or more
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`14
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`relevant education but less practical experience, could also be considered a
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`IPR2020-00252 (Patent No. 9,155,066)
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`POSITA. Id.
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`V. CLAIM CONSTRUCTION
`Claim construction in inter partes review is governed by the same standard as
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`it would be in a district court. 37 C.F.R. § 42.100(b). Terms should be interpreted in
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`view of “their ordinary and accustomed meaning as understood by one of ordinary
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`skill in the art.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed.
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`Cir. 2001); Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
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`banc). “The construction that stays true to the claim language and most naturally
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`aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.” Phillips, 415 F.3d at 1316.
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`In the Related Litigations, the parties disagree on the construction of four
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`terms with respect to the claims at issue in the present IPR Petition. A claim
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`construction order has not issued at the time of the present IPR Petition, but the Court
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`in the Related Litigations issued Preliminary Constructions for these terms on
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`December 4, 2019. Ex. 1005 at 1. The parties’ positions and the Court’s preliminary
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`constructions are set forth below. For the purpose of this IPR Petition, Petitioner
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`asserts that Court’s preliminary construction for the “wherein ... the downlink shared
`
`channel are physical channels” is adopted. The Board does not need to construe the
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`disputed terms because, as shown herein, the prior art encompasses both sides’
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`15
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`proposed constructions for these terms, as well as the Court’s Preliminary
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`IPR2020-00252 (Patent No. 9,155,066)
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`Constructions.
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`16
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`IPR2020-00252 (Patent No. 9,155,066)
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`Claim
`Term
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`Sol IP’s
`Construction
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`
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