IPR2020-00253 (Patent No. 8,761,814)
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`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. 8,761,814
`Filing Date: April 24, 2007
`Issue Date: June 24, 2014
`
`Title: METHOD FOR PAGING INFORMATION IN CELLULAR SYSTEM
`
`Inter Partes Review No. IPR2019-00253
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`IPR2020-00253 (Patent No. 8,761,814)
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`TABLE OF CONTENTS
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`Page
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`
`PRELIMINARY STATEMENT ..................................................................... 1
`I.
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 2
`II.
`III. TECHNOLOGICAL BACKGROUND .......................................................... 2
`A.
`The ’814 Patent ..................................................................................... 3
`B.
`Challenged Claims ................................................................................ 5
`C.
`Prosecution History ............................................................................... 8
`D.
`Claimed Priority Date .......................................................................... 12
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12
`V.
`CLAIM CONSTRUCTION .......................................................................... 13
`VI. PRIOR ART ................................................................................................... 16
`A.
`R2-060429 ........................................................................................... 16
`B.
`R1-060187 ........................................................................................... 17
`C.
`R1-060576 ........................................................................................... 19
`D.
`R2-060988 ........................................................................................... 21
`E.
`TR 25.814 ............................................................................................ 27
`VII. CLAIMS 10 AND 15 ARE UNPATENTABLE ........................................... 28
`A. Ground 1: Claims 10 and 15 are Obvious Under 35 U.S.C. § 103(a)
`Over R2-060429 in View of R1-060187 (to the extent necessary) and
`R1-060576 ........................................................................................... 29
`Ground 2: Claims 10 and 15 are Obvious Under 35 U.S.C. § 103(a)
`Over R2-060988 in view of R1-060187 (to the extent necessary) and
`TR 25.814 ............................................................................................ 47
`VIII. CONCLUSION .............................................................................................. 72
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................. 72
`A.
`Real Parties-In-Interest ........................................................................ 72
`B.
`Related Matters .................................................................................... 72
`CERTIFICATION UNDER 37 C.F.R. §42.24(D) ........................................ 73
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`X.
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`B.
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`XI. PAYMENT OF FEES ................................................................................... 73
`XII. TIME FOR FILING PETITION.................................................................... 73
`XIII. GROUNDS FOR STANDING ...................................................................... 74
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`IPR2020-00253 (Patent No. 8,761,814)
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`TABLE OF AUTHORITIES
`
`Cases
`Dow Chem. Co. v. Sumitomo Chem. Co.,
`257 F.3d 1364 (Fed. Cir. 2001) .......................................................................... 14
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 14, 15
`Sol, IP, LLC v. AT&T Mobility LLC,
`Case No. 2:18-cv-526-RWS-RSP (E.D. Tex.) ................................................... 74
`Sol, IP, LLC v. Cellco Partnership d/b/a Verizon Wireless,
`Case No. 2:18-cv-528-RWS-RSP (E.D. Tex.) ............................................passim
`
`Sol, IP, LLC v. Sprint Corporation, Sprint Communications Co. L.P.,
`Sprint Solutions, Inc., Sprint Spectrum, L.P.,
`Case No. 2:18-cv-527-RWS-RSP (E.D. Tex.) ................................................... 74
`Statutes
`35 U.S.C. 102(a) ...............................................................................................passim
`35 U.S.C. § 103(a) ............................................................................................. 30, 50
`35 U.S.C. § 311 .......................................................................................................... 2
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`Other Authorities
`37 C.F.R. § 42.8 ................................................................................................. 74, 75
`37 C.F.R. § 42.10(b) ................................................................................................ 74
`37 C.F.R. §42.24(D)........................................................................................... 74, 75
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`37 C.F.R. § 42.100 et seq. .......................................................................................... 1
`37 C.F.R. § 42.101(b) .............................................................................................. 75
`37 C.F.R. § 42.104(a) ............................................................................................... 75
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`iii
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`IPR2020-00253 (Patent No. 8,761,814)
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`
`LIST OF EXHIBITS
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`Exhibit
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`Description
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`1001
`1002
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`1003
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`1004
`1005
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`1006
`1007
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`1008
`1009
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`1010
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`1011
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`1012
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`1013
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`U.S. Patent No. 8,761,814 (“the ’814 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”)
`RESERVED
`“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”)
`“3rd Generation Partnership Project; Technical Specification Group
`
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`IPR2020-00253 (Patent No. 8,761,814)
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`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”)
`
`1014
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`1015
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`v
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`I.
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`IPR2020-00253 (Patent No. 8,761,814)
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`PRELIMINARY STATEMENT
`Petitioner Ericsson Inc. (“Ericsson”) respectfully requests inter partes review
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`and cancellation of claims 10 and 15 of U.S. Patent No. 8,761,814 (“the ’814
`
`Patent”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’814 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 and 15 of the
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`’814 Patent are essential to LTE Release 8.1 Ex. 1015, ¶¶ 66-67. However, ETRI
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`did not contribute what it now claims as its invention to the LTE standard. Instead,
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`all of the concepts claimed in the ’814 Patent were developed during the 4G LTE
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`standard-setting process by others, and included in printed publications that were
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`submitted to the standard-setting body and made publically available via an email
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`reflector. Ex. 1006, ¶¶ 25, 36-75. Shortly thereafter, ETRI filed a patent application
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`on these ideas in South Korea. Ex. 1001, Cover.
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`1 Petitioner disagrees. Nevertheless, the invalidity analysis herein is based on
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`Patent Owner’s allegation that practicing the LTE Release 8 standard infringes the
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`Challenged Claims.
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`1
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`IPR2020-00253 (Patent No. 8,761,814)
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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 and 15 of the ’814 Patent are
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`unpatentable as obvious to a person of ordinary skill in the art (“POSITA”) in view
`
`of the prior art cited herein, the knowledge and understanding of a POSITA, and the
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`’814 Patent itself. Accordingly, claims 10 and 15 of the ’814 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 and
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`15 of the ’814 patent, and that the Board cancel the same as being unpatentable in
`
`view of the cited prior art and the Grounds described below.
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`Ground 1: Claims 10 and 15 are obvious over R2-060429 in view of R1-
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`060576 and R1-060187 (to the extent necessary).
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`Ground 2: Claims 10 and 15 are obvious over R2-060988 in view of TR
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`25.814 and R1-060187 (to the extent necessary).
`
`III. TECHNOLOGICAL BACKGROUND
`The technology at issue in this petition was developed by members of the
`
`Third Generation Partnership Project (“3GPP”) during the 4G standard setting
`
`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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`IPR2020-00253 (Patent No. 8,761,814)
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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, ¶¶28-35.
`
`A. The ’814 Patent
`The ’814 Patent is titled “Method For Paging Information In Cellular
`
`System.” Relevant to the Challenged Claims, the ’814 Patent describes methods for
`
`transmitting paging information in a packet-based cellular system, such as LTE. Ex.
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`1001 at 1:5-10; 1:65-2:1. 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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`and initiate a process to obtain the available information. Id. The general concept
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`of paging far predates the ’814 Patent. Id.
`
`The ’814 Patent describes the paging process used in the prior art WCDMA
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`method with respect to the concepts of transport channels and physical channels.
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`Ex. 1001 at 1:14-25. 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 1:16-
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`22. A physical channel called a paging indicator channel (PICH) was used to notify
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`UEs that a paging message was sent. Ex. 1001 at 1:28-45. In WCDMA, terminals
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`“monitor the paging indication channel every monitoring cycle . . . [and] when it is
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`sensed that indication information corresponding to the group including the terminal
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`exists in the paging indication channel, the terminals search PCH information
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`transmitted to the S-CCPCH channel” and decode the paging information. Ex. 1001
`
`at 1:43-55.
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`The ’814 Patent characterizes WCDMA as having “a problem that limited
`
`radio resource is wasted.” Ex. 1001 at 1:60-64. In WCDMA, the S-CCPCH was
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`“statically operated” and existed regardless of whether a paging message was being
`
`sent. Ex. 1001 at 1:60-64, 1:34-37; Ex. 1003, ¶ 40. Because of this static operation,
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`IPR2020-00253 (Patent No. 8,761,814)
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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.
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`The ’814 Patent alleges that its invention “improve[s] applicability of a
`
`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 2:51-56.
`
`B. Challenged Claims
`This Petition challenges claims 10 and 15 of the ’814 Patent. Claims 10 and
`
`15 are reproduced below and emphasized for reference in the following discussion:
`
`10. A method for transmitting paging information at a base station in a
`wireless communication system, the method comprising:
`
`when paging information is generated,
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`mapping a paging channel including the paging information and a
`downlink shared channel for user data transmission into a radio
`resource channel;
`
`forming a physical layer frame comprising a control channel and the
`radio resource channel; and
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`transmitting the physical layer frame to a terminal,
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`wherein an identifier for notifying existence of the paging channel is
`transmitted through the control channel, and the control channel
`includes radio resource allocation information for the paging channel,
`and
`
`when paging information is not generated, mapping the downlink
`shared channel into the radio resource channel,
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`IPR2020-00253 (Patent No. 8,761,814)
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`wherein the paging channel and the downlink shared channel are
`transport channels, and the control channel and the radio resource
`channel are physical channels,
`
`
`wherein the identifier is used by reserving and allocating a part of
`scheduling identifiers.
`
`15. The method of claim 10, the identifier exists or not according to whether
`or not the paging information is generated.
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`As shown above, claim 10 recites a paging method with two primary options.
`
`When paging information is present, two transport channels—(i) a “paging channel”
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`that includes the paging information and (ii) a “downlink shared channel” for user
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`data—are mapped into a physical channel (a “radio resource channel”). Also,
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`another physical channel (a “control channel”) will include an identifier “for
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`notifying existence of the paging channel is transmitted” and “radio resource
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`allocation information for the paging channel.” In contrast, when paging
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`information is not generated, the claim only recites mapping the “downlink shared
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`channel” (a transport channel) into the “radio resource channel” (a physical channel).
`
`Ex. 1001 at 8:65-9:20. Claim 15 further recites that the identifier exists or not
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`according to whether or not the paging information is generated.
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`The ’814 Patent describes the general claimed process as follows:
`
`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
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`IPR2020-00253 (Patent No. 8,761,814)
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`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 6:43-56.
`
`With respect to the “wherein the identifier is used by reserving and allocating
`
`a part of scheduling identifiers” limitation, the ’814 Patent describes a process where
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`a part of the information included in the terminal scheduling identifiers are used as
`
`a group ID:
`
`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
`
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`IPR2020-00253 (Patent No. 8,761,814)
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`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 5:55-62 (emphasis added).
`
`Prosecution History
`C.
`The ’814 Patent application was filed on April 24, 2007. During prosecution,
`
`the United States Patent and Trademark Office issued a non-final office action on
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`May 24, 2011, a final office action on March 6, 2012, a non-final office action on
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`March 18, 2013, and a final office action on September 12, 2013. The patent
`
`applicant (“Applicant”) submitted Requests for Continued Examination (“RCE”) on
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`June 30, 2012 and on December 12, 2013.
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`March 18, 2013 Office Action:
`
`In the March 18, 2013 office action, the examiner rejected the pending claims
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`as obvious over 3GPP RAN1/RAN2 joint meeting on LTE, R2-060988 (“R2-
`
`060988”) in view of 3GPP TS 25.211 V7.0.0 (2006-03) (“TS 25.211”). Ex. 1002 at
`
`409. The examiner found that R2-090688 disclosed all the limitations of pending
`
`claims 7 and 12 except for “the downlink shared channel is [a] transport channel.”
`
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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-RNTIs
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`were IDs used to identify a terminal participating in a cell area. Id.
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`IPR2020-00253 (Patent No. 8,761,814)
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`Ex. 1002 at 458-460. For this limitation, the examiner cited to TS 25.211’s
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`disclosure of the HS-DSCH being a transport channel mapped to a physical HS-
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`PDSCH channel. The examiner thus concluded that the combination of R2-060988
`
`and TS 25.211 rendered pending claims 7 and 10 obvious. Ex. 1002 at 460.
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`The examiner also concluded that R2-060988 disclosed pending claim 8 and
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`13’s limitations of “wherein the identifier is used by reserving and allocating a part
`
`of scheduling identifiers”—language that was eventually added to the issued
`
`independent claims. Specifically, the examiner observed that R2-060988’s “section
`
`2 discloses paging indicator – identifiers- is used by assigning PI-ID or C-RNTI.”
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`Ex. 1002 at 460-461.
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`Furthermore, the examiner concluded that R2-060988 disclosed pending
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`claim 19 and 25’s (which issued as presently challenged claim 15) limitations of “the
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`identifier exists or not according to whether or not the paging information is
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`generated.” Specifically, the examiner observed that R2-060988 discloses “the UE-
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`ID is not the PI-ID when there is no paging information generated.” Ex. 1002 at
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`463.
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`In response, the patentee amended the independent claims to recite “wherein
`
`the identifier is used by reserving and allocating a part of scheduling identifiers.”
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`Ex. 1002 at 479-480. The patentee attempted to distinguish the prior art by arguing
`
`that R2-060988 disclosed a “conventional paging indicator for notifying generation
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`IPR2020-00253 (Patent No. 8,761,814)
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`of paging information” while the claimed invention “uses an identifier for notifying
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`existence of a paging channel, where the identifier is used by reserving and
`
`allocating a part of scheduling identifiers.” Id. at 484-485 (emphasis in original).
`
`The patentee argued that R2-060988 “never indicates that its conventional paging
`
`indicator (or anything else) is used by reserving and allocating a part of scheduling
`
`identifiers.” Id. The patentee further attempted to distinguish R2-060988 by
`
`alleging that R2-0060988 (i) requires a paging indicating channel while the claimed
`
`invention does not and (ii) requires a two step paging notification process, while the
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`claimed invention only requires a one step process. Id. at 485.
`
`September 12, 2013 Office Action:
`
`In the September 12, 2013 office action, the examiner disagreed with the
`
`patentee’s prior arguments and found that R2-060988 teaches using an “identifier
`
`(i.e. PI-ID) as the paging indicator, and detecting existence of paging information
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`based on the identifier, wherein the identifier is reserved and allocated for user
`
`device since it is used for indicat[ing] the presence of paging information of the user
`
`device that paging information is belong to.” Ex. 1002 at 493.
`
`In response, the patentee characterized R2-060988 as disclosing a “paging
`
`indicator” that is separate from the reference’s disclosure of a PI-ID. Ex. 1002 at
`
`513. The patentee argued that “the functions of the PI-ID and the paging indicator
`
`are different because the function of the PI-ID is to indicate the existence of a paging
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`10
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`IPR2020-00253 (Patent No. 8,761,814)
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`indicator, whereas the function of the paging indicator is to indicate the existence of
`
`paging information.” Id. at 515 (emphasis in original). The patentee also maintained
`
`its prior argument that R2-0060988 (i) requires a paging indicating channel while
`
`the claimed invention does not and (ii) requires a two step paging notification
`
`process, while the claimed invention only requires a one step process. Id. at 516-
`
`517. The patentee summarized the arguments in the following table.
`
`
`
`Id. at 517.
`
`December 5, 2013 Advisory Action:
`
`In the December 5, 2013 Advisory Action, the examiner again disagreed with
`
`the Applicant’s attempt to distinguish the R2-060988 reference by stating, inter alia,
`
`that the recited claim “does not explicitly restrict to one single step or preventing the
`
`use of paging indicator for indicating paging information.” Ex. 1002 at 524. In
`
`response, the patentee filed a request for continued examination on December 12,
`
`2013. Id. at 527-533. The RCE did not include any additional argument. Id.
`
`On February 13, 2014, the examiner issued a Notice of Allowance (“NOA”).
`
`February 13, 2014, NOA. The NOA characterized R2-060988 as follows:
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`11
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`IPR2020-00253 (Patent No. 8,761,814)
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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
`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.
`
`Ex. 1002 at 540 (emphasis in original).
`
`D. Claimed Priority Date
`Application No. 12/298,227, which issued as the ’814 Patent, was filed on
`
`April 24, 2007 and claims priority to two foreign Korean applications filed on April
`
`26, 2006 and April 20, 2007, respectively. For the purposes of this Petition, April
`
`26, 2006 is presumed as the priority date of the challenged claims.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would have (i) an undergraduate degree
`
`in Electrical Engineering, Computer Science, or Computer Engineering, or a related
`
`field, and around two years of experience in the theory, design, and/or development
`
`of cellular technology, or (ii) a Master’s degree in one of the foregoing fields with a
`
`focus on cellular technology. See Ex. 1003, ¶ 57. Someone with less or different
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`IPR2020-00253 (Patent No. 8,761,814)
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`technical education but more relevant practical experience, or more relevant
`
`education but less practical experience, could also be considered a POSITA. Id.
`
`V. CLAIM CONSTRUCTION
`Claim construction in inter partes review is governed by the same standard as
`
`it would be in a district court. 37 C.F.R. § 42.100(b). Terms should be interpreted in
`
`view of “their ordinary and accustomed meaning as understood by one of ordinary
`
`skill in the art.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed.
`
`Cir. 2001); Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc). “The construction that stays true to the claim language and most naturally
`
`aligns with the patent’s description of the invention will be, in the end, the correct
`
`construction.” Phillips, 415 F.3d at 1316.
`
`In the Related Litigations, the parties disagree on the construction of four
`
`terms with respect to the claims at issue in the present IPR Petition. A claim
`
`construction order has not issued at the time of the present IPR Petition, but the Court
`
`in the Related Litigations issued Preliminary Constructions for these terms on
`
`December 4, 2019. Ex. 1005 at 1. The parties’ positions and the Court’s preliminary
`
`constructions are set forth below. For the purpose of this IPR Petition, Petitioner
`
`asserts that Court’s preliminary construction for the “radio resource channel” term
`
`is adopted. The Board does not need to construe the other terms because, as shown
`
`13
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`

`

`IPR2020-00253 (Patent No. 8,761,814)
`
`herein, the prior art encompasses both sides’ proposed constructions for these terms,
`
`as well as the Court’s Preliminary Constructions.
`
`14
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`

`

`IPR2020-00253 (Patent No. 8,761,814)
`
`Claim
`Term
`
`Sol IP’s
`Construction
`
`Defendants’
`Construction
`
`“downlink
`shared
`channel”
`
`“radio
`resource
`channel”
`
`“scheduling
`identifiers”
`
`“the
`identifier is
`used by
`reserving
`and
`allocating a
`part of
`scheduling
`identifiers”
`
`Plain and ordinary
`meaning.
`Alternatively,
`“shared channel
`used for downlink.”
`
`Plain and ordinary
`meaning.
`Alternatively,
`“physical shared
`channel.”
`
`Plain and ordinary
`meaning.
`Alternatively,
`“scheduling
`identifier” means
`“identifier of a
`specific terminal or
`terminal group.”
`“Scheduling
`identifiers” is the
`plural.
`
`Plain and ordinary
`meaning.
`Alternatively, “the
`identifier is a
`reserved and
`allocated part of the
`scheduling
`identifiers.”
`
`“DL-SCH, a
`downlink transport
`channel for user data
`transmission”
`
`Indefinite
`
`“cell radio network
`temporary identifiers
`(C-RNTIs)”
`
`Court’s
`Preliminary
`Construction
`“shared channel used
`for downlink”
`
`“physical channel in
`a wireless
`communication
`system”
`
`“identifiers that
`identify specific
`terminals or terminal
`groups and that are
`used for scheduling”
`
`Plain meaning
`apart from the
`Court’s construction
`of “scheduling
`identifiers”
`
`“the identifier is
`used by reserving
`and allocating a part
`of the information
`included in the
`terminal [scheduling
`identifier] as a group
`identifier for paging
`information”
`
`15
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`

`IPR2020-00253 (Patent No. 8,761,814)
`
`VI. PRIOR ART
`As evidenced by the prior art and explained by Dr. Stark in the attached expert
`
`declaration (Ex. 1003), the claimed paging methods were well known before the
`
`’814 Patent’s priority date. Ex. 1003, ¶ 62. In addition to the extensive background
`
`knowledge that a POSITA 3 would have brought to bear on the subject matter
`
`discussed in the ’814 Patent, the following prior art demonstrates that the challenged
`
`claims would have been obvious.
`
`A. R2-060429
` “Evolved Paging for LTE” is a written contribution submitted to 3GPP at the
`
`3GPP TSG-RAN WG2 Meeting #51 in Denver, Colorado on February 13-17, 2006
`
`by Philips (“R2-060429”). The document is a submission to the 3GPP standards
`
`body for consideration in developing the LTE cellular system. Ex. 1006, ¶¶ 60-67.
`
`R2-060429 is a printed publication prior art reference under at least 35 U.S.C. 102(a)
`
`as it was accessible and available via 3GPP’s publicly available website on February
`
`9, 2006 before the ’814 Patent’s priority date of April 26, 2006. Id. R2-060429 was
`
`not considered during prosecution of the ’814 Patent application.
`
`R2-060429 discloses an evolved paging procedure for LTE for how to use the
`
`paging channel (PCH) as a transport channel. R2-060429 discloses a “Text
`
`
`3 See, e.g., Ex. 1003, ¶¶ 28-35.
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`16
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`

`

`IPR2020-00253 (Patent No. 8,761,814)
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`Proposal” for TR 25.8134 with redlines to the paging section 5.2.2’s description of
`
`a paging channel PCH. Ex. 1010 at 4.
`
`R2-060429 discloses that the 3GPP group “decided that the [paging channel]
`
`PCH will be a separate transport channel from the Downlink Shared Channel (DL-
`
`SCH), while being mapped to physical resources that can be shared with other traffic
`
`or control channels such as the DL-SCH.” Id. at 1. In light of that decision, R2-
`
`060429 proposes that “the [paging channel] PCH carries broadcast data of Paging
`
`Information.” Id. at 2. R2-060429 also discloses that “[t]he PCH is configured to
`
`carry Paging Information that is monitored in either continuous mode or in DRX
`
`mode depending on the LTE RRC and/or LTE-MAC state of the UE.” Id. at 2
`
`(Proposal 1). R2-060429 discloses “a series of proposals for the Paging Channel in
`
`the E-UTRAN, with the aim to provide flexible configurations and faster initial cell
`
`access.” Ex. 1010 at at 3.
`
`B. R1-060187
` “OFDMA Downlink Physical channel mapping – text proposal” is a written
`
`contribution submitted to 3GPP at the 3GPP TSG RAN WG1 LTE Ad Hoc Meeting
`
`
`4 Evolved Universal Terrestrial Radio Access (UTRA) and Universal Terrestrial
`
`Radio Access Network (UTRAN); Radio interface protocol aspects (Release 7),
`
`V0.3.0, 2006-01
`
`17
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`

`

`IPR2020-00253 (Patent No. 8,761,814)
`
`in Helsinki, Finland on January 23-25, 2006 by Nokia (“R1-060187”). The
`
`document is a submission to the 3GPP standards body for consideration in
`
`developing the LTE cellular system. Ex. 1006, ¶¶ 44-51. R1-060187 is a printed
`
`publication prior art reference under at least 35 U.S.C. 102(a) as it was accessible
`
`and available via 3GPP’s publicly available website on January 19, 2006 before the
`
`’814 Patent’s priority date of April 26, 2006. Id. R1-060187 was not considered
`
`during prosecution of the ’814 Patent application.
`
`R1-060187 “is a text proposal for mapping from [downlink] DL Transport
`
`Channels to Physical Channel for E-UTRA similar to the figure found for WCDMA
`
`in TS 25.211.” Ex. 1012 at 1. R1-060187 discloses a channel called the “Paging
`
`Indicator Channel (PCH),” which “is carried with other L1/L2 control information
`
`on PDSCCH.” Id. A POSITA would have understood the Paging Indicator Channel
`
`to be referri