IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Erik Dahlman et al.
`In re Patent of:
`8,995,357
`U.S. Patent No.:
`March 31, 2015
`Issue Date:
`Appl. Serial No.: 12/664,347
`Filing Date:
`April 10, 2008
`Title:
`TRANSMISSION OF SYSTEM INFORMATION ON A
`DOWNLINK SHARED CHANNEL
`
`Attorney Docket No.: 50095-0060IP1
`
`DECLARATION OF JONATHAN WELLS, Ph.D.
`
`1
`
`APPLE 1003
`
`

`

` 
`
` 
`
`TABLE OF CONTENTS
`
`ASSIGNMENT ................................................................................................ 4 
`QUALIFICATIONS ........................................................................................ 4 
`  LEGAL PRINCIPLES ................................................................................... 10 
`  Anticipation .............................................................................................. 10 
`  Obviousness .............................................................................................. 11 
`  Claim Construction ................................................................................... 12 
`  PERSON OF ORDINARY SKILL IN THE ART ........................................ 13 
`  MATERIALS CONSIDERED ...................................................................... 13 
`  BACKGROUND OF THE ’357 PATENT ................................................... 17 
`  Subject Matter Overview .......................................................................... 17 
`  File History of the ’357 Patent ................................................................. 19 
`  OVERVIEW OF THE PRIOR ART ............................................................. 20 
`  Lee-746 ..................................................................................................... 20 
`  Lee-668 ..................................................................................................... 22 
`  R2-072183 ................................................................................................ 26 
`  R2-071911 ................................................................................................ 26 
`  Muhkerjee ................................................................................................. 27 
`  Classon ...................................................................................................... 29 
`  R2-071762 ................................................................................................ 31 
`  R2-071337 ................................................................................................ 33 
`  ANALYSIS OF LEE-746 IN VIEW OF Lee-668 AND R2-072183
`(CLAIMS 1-2, 9-10, 22, 24) .......................................................................... 34 
`  The Combination of Lee-746 and Lee-668 .............................................. 35 
`  Reasons to Combine Lee-746 and Lee-668 ............................................. 38 
`  The Combination of Lee-746, Lee-668, and R2-072183 ......................... 42 
`  Reasons to Combine Lee-746, Lee-668, and R2-072183 ........................ 45 
`  Analysis of Claims 1-2, 9-10, 22, and 24 ................................................. 49 
`  ANALYSIS OF LEE-746 IN VIEW OF LEE-668, R2-072183, AND R2-
`071911 (CLAIMS 3 AND 23) ....................................................................... 68 
`
`
`
`2
`
`

`

`  The Combination of Lee-746, Lee-668, R2-072183, and R2-071911 ..... 68 
`  Reasons to Combine Lee-746, Lee-668, R2-072183, and R2-071911 .... 69 
`  Analysis of Claims 3 and 23 ..................................................................... 72 
`  ANALYSIS OF LEE-746 IN VIEW OF LEE-668, R2-072183, AND
`MUHKERJEE (CLAIM 4) ............................................................................ 74 
`  The Combination of Lee-746, Lee-668, R2-072183, and Mukherjee ..... 75 
`  Reasons to Combine Lee-746, Lee-668, R2-072183, and Mukherjee ..... 79 
`  ANALYSIS OF LEE-746 IN VIEW OF LEE-668, R2-072183, AND
`CLASSON (CLAIMS 6 AND 7) .................................................................. 82 
`  The Combination of Lee-746, Lee-668, R2-072183, and Classon .......... 83 
`  Reasons to Combine Lee-746, R2-072183, and Classon ......................... 84 
`  ANALYSIS OF LEE-746 IN VIEW OF LEE-668, R2-072183, AND R2-
`071762 (CLAIM 8) ........................................................................................ 88 
`  The Combination of Lee-746, Lee-668, R2-072183, and R2-071762 ..... 88 
`  Reasons to Combine Lee-746, Lee-668, R2-072183, and R2-071762 .... 89 
`  ANALYSIS OF LEE-746 IN VIEW OF R2-072183 AND R2-071337
`(CLAIMS 12 AND 17) .................................................................................. 93 
`  The Combination of Lee-746, R2-072183, and R2-071337 .................... 93 
`  Reasons to Combine Lee-746, R2-072183, and R2-071337 .................... 95 
`  Analysis of Claims 12 and 17 ................................................................... 98 
`  ANALYSIS OF LEE-746 IN VIEW OF R2-072183, R2-071337, AND
`CLASSON (CLAIMS 14-15 AND 19-20) ..................................................103 
`  Combination and Reasons to Combine Lee-746, R2-072183, R2-071337,
`and Classon .............................................................................................104 
`  Analysis of Claims 14-15 and 19-20 ......................................................104 
`  ANALYSIS OF LEE-746 IN VIEW OF R2-072183, R2-071337, AND R2-
`071762 (CLAIMS 16 AND 21) ...................................................................107 
`  ADDITIONAL REMARKS ........................................................................108 
`
`
`
`
`
`
`
`
`
`3
`
`

`

`I, Jonathan Wells, Ph.D, of Pleasanton, California, declare that:
`
`
`
`
`ASSIGNMENT
`
`1.
`
`I have been retained as a technical expert by counsel on behalf of
`
`Apple Electronics Co., Ltd. (“Apple” or “Petitioner”). I understand that Apple is
`
`requesting that the Patent Trial and Appeal Board (“PTAB” or “Board”) institute
`
`an Inter Partes Review (“IPR”) proceeding of U.S. Patent No. 8,995,357 (“the
`
`’357 patent”) (APPLE-1001).
`
`2.
`
`I have been asked to provide my independent analysis of the ’357
`
`patent in light of the prior art publications cited below.
`
`3.
`
`I am not, and never have been, an employee of Apple. I received no
`
`compensation for this declaration beyond my normal hourly compensation based
`
`on my time actually spent analyzing the ’357 patent, the prior art publications cited
`
`below, and the issues related thereto, and I will not receive any added
`
`compensation based on the outcome of any IPR or other proceeding involving the
`
`’357 patent.
`
` QUALIFICATIONS
`
`4.
`
`I have over 35 years of academic and industry experience in wireless
`
`networks (e.g., 2G, 3G, 4G and 5G networks, comprising GSM, WCDMA, LTE
`
`and NR technologies), cellular infrastructure equipment (handsets, base stations
`
`and backhaul), and wireless standards, rules and regulations (e.g., 3GPP, ETSI and
`
`
`
`4
`
`

`

`FCC). Over my career, I have developed and deployed radio frequency (RF)
`
`hardware for telecommunication infrastructure equipment for worldwide export,
`
`implemented marketing and product development strategies for cellular wireless
`
`products, and participated in European Telecommunications Standards Institute
`
`(“ETSI”), Federal Communications Commission (“FCC”) and other technical body
`
`meetings.
`
`5.
`
`I received a Bachelor of Science (B.Sc.) degree in Physics with
`
`Physical Electronics, awarded with 1st Class Honours, from the University of
`
`Bath, Bath, United Kingdom, in 1987. In 1991, I earned my Doctor of Philosophy
`
`(Ph.D.) also from the University of Bath. I earned my Master of Business
`
`Administration (M.B.A.) degree, awarded with distinction, from Massey
`
`University in New Zealand, in 1998.
`
`6.
`
`I began my career in 1985, as an Engineer for Plessey Research,
`
`Caswell, United Kingdom, developing high-speed fiber optic transmitter/receiver
`
`devices. In 1987, I worked at British Aerospace, Bristol, United Kingdom,
`
`designing and fabricating novel mixer devices to support my Ph.D. research. From
`
`1990 to 1992, I worked at the University of Bath as a Postdoctoral Research
`
`Officer. During this time, I designed and fabricated novel quantum amplifiers in a
`
`clean room environment and developed computer models to predict semiconductor
`
`device performance.
`
`
`
`5
`
`

`

`7.
`
`In 1993, I joined Matra Marconi Space, Portsmouth, United Kingdom,
`
`as a Senior Software Engineer and developed GaAs MMIC mixer and MIC
`
`transmitter board for two satellite payloads and performed theoretical analysis and
`
`modeling of low noise VCOs.
`
`8.
`
`From 1994 to 1998, I worked for MAS Technology (now Aviat
`
`Networks), Wellington, New Zealand, first as Senior RF Design Engineer and later
`
`as RF Group Manager. I was responsible for RF hardware development for
`
`cellular and telecommunications applications; developed three generations of
`
`wireless transmission, switching, and multiplexing products; designed and
`
`sustained responsibility for satellite ground station terminals; and was responsible
`
`for company’s European regulatory approvals.
`
`9.
`
`In 1998, I joined Adaptive Broadband (now GE Digital Energy),
`
`Rochester, New York, first as Engineering Group Leader and later as Director
`
`Wideband Products. I was responsible for the Terrestrial Infrastructure Group,
`
`providing telecommunications products for cellular and private network
`
`applications; managed P&L responsibility for $4M wireless division; and was
`
`responsible for the development of a family of digital radios and associated
`
`switching/multiplexing equipment.
`
`10. From 2000 to 2004, I worked for Stratex Networks (now Aviat
`
`Networks), San Jose, California, as Director Product Development. I was
`
`
`
`6
`
`

`

`responsible for global product development of high-end digital microwave radios
`
`primarily for cellular backhaul applications; led RF/microwave development team
`
`of 35 engineers based in two continents; performed technical leadership of flagship
`
`Eclipse product, shipping over 250,000 units; and was responsible for technical
`
`management of overseas manufacturing subcontractors.
`
`11.
`
`In 2005, I joined GigaBeam Corporation, Herndon, Virginia, as
`
`Director Product Management and Global Regulatory Affairs. I was responsible
`
`for product strategy for industry-transforming high data rate wireless product;
`
`initiated market development in over 40 countries including in Europe, Canada,
`
`Caribbean, Latin America, the Middle East, and Asia; and participated and drove
`
`standard development in FCC, CEPT, and ETSI technical meetings.
`
`12. Since 2007, I have been Managing Partner of AJIS Consulting since
`
`2007, where I provide independent technical consulting on wireless
`
`communications and emerging wireless fields. The services I provide include:
`
`acting as a technical expert support of 2G, 3G, 4G, and 5G cellular and wireless
`
`patent litigation; providing analysis of cellular and mobile wireless patents and
`
`infringing equipment; providing cellular and wireless technology technical and
`
`industry analysis for companies, analysts, and investment institutions, and
`
`researching and publication of analyst reports; providing wireless product
`
`development and marketing strategies; providing specialized technical workshops
`
`
`
`7
`
`

`

`on various wireless technologies, including cellular networks, mm-wave radios,
`
`security sensors, and short range radios; and providing specialized global
`
`regulatory tasks and product approvals.
`
`13.
`
`I have written multiple books, industry reports and journal and
`
`conference papers, most of which focus on wireless communications systems. For
`
`example, I am the author of “Multi-Gigabit Microwave and Millimeter-Wave
`
`Wireless Communications,” published by Artech House in 2010. I have also
`
`authored four comprehensive industry reports on cellular connectivity for Mobile
`
`Experts, which provides analysis and consulting services to mobile device
`
`manufacturers. I have lectured as part of undergraduate programs at University of
`
`California, Berkeley, Carnegie Mellon University, and University of Bath, and
`
`have given over two dozen lectures and conference presentations on topics
`
`germane to wireless communications. I am also a listed inventor of several
`
`patents, and am an author of over 40 academic and commercial publications and
`
`presentations.
`
`14.
`
`I have been a member of the Institute of Electrical and Electronic
`
`Engineers (“IEEE”) since 1995 and a Senior Member of IEEE since 1999. I am
`
`also a Member of the IEEE Communications Society and the IEEE Microwave
`
`Theory and Techniques Society. I was a reviewer for the U.S. Government’s
`
`Broadband Technology Opportunity Program and the Broadband Initiatives
`
`
`
`8
`
`

`

`Program, both part of the American Recovery and Reinvestment Act of 2009. I
`
`have been a Chair or Co-Chair of numerous technology workshops and symposia
`
`related to wireless communications technology. In 2019 I was recognized by the
`
`IEEE Santa Clara Valley Section as their “Outstanding Engineer” of the year. The
`
`IEEE Santa Clara Valley Section encompasses Silicon Valley and is the largest
`
`IEEE Section in the world. This was awarded “For his acknowledged expertise in
`
`the field of wireless communication and wireless technology, for his willingness to
`
`mentor others in the field, and for his work in the development of the next
`
`generation of creative and innovative technical products.”
`
`15. My curriculum vitae, attached to this declaration as Appendix A, sets
`
`forth details of my background and relevant experience. My CV includes a listing
`
`of cases for which I have provided expert testimony over the last four years and a
`
`complete list of publications I have authored.
`
`16. Based on my experience and education, I believe that I am qualified to
`
`opine as to the knowledge and level of skill of one of ordinary skill in the art at the
`
`time of the alleged invention of the ’357 patent (which I further describe below)
`
`and what such a person would have understood at that time, and the state of the art
`
`during that time. Based on my experiences, I understand and know of the
`
`capabilities of persons of ordinary skill in this field during the mid-2000s and
`
`specifically during the time of the alleged invention of the ’357 patent. Indeed, I
`
`
`
`9
`
`

`

`taught, participated in organizations, and worked closely with many such persons
`
`in the field during that time frame.
`
` LEGAL PRINCIPLES
`
`17.
`
`In forming my analysis and conclusions expressed in this declaration,
`
`I have applied the legal principles described in the following paragraphs, which
`
`were provided to me by counsel for the Petitioner.
`
` Anticipation
`
`18.
`
`I have been informed that a patent claim is invalid as “anticipated” if
`
`each and every element of a claim, as properly construed, is found either explicitly
`
`or inherently in a single prior art reference. Under the principles of inherency, I
`
`understand that if the prior art necessarily functions in accordance with, or includes
`
`the claimed limitations, it anticipates.
`
`19.
`
`I have been informed that a claim is invalid if the claimed invention
`
`was known or used by others in the U.S., or was patented or published anywhere,
`
`before the Applicant’s invention. I further have been informed that a claim is
`
`invalid if the invention was patented or published anywhere, or was in public use,
`
`on sale, or offered for sale in this country, more than one year prior to the filing
`
`date of the patent application (critical date). I have also been informed that a claim
`
`is invalid if an invention described by that claim was described in a U.S. patent
`
`granted on an application for a patent (or in a published application for a U.S.
`
`
`
`10
`
`

`

`patent) that was filed by another in the U.S. before the date of invention for such a
`
`claim.
`
` Obviousness
`
`20.
`
`I have been informed that a patent claim is invalid as “obvious” in
`
`light of one or more prior art references if it would have been obvious to a person
`
`of ordinary skill in the art at the time of the alleged invention (“POSITA”), taking
`
`into account (1) the scope and content of the prior art, (2) the differences between
`
`the prior art and the claims, (3) the level of ordinary skill in the art, and (4) any so
`
`called “secondary considerations” of non-obviousness, which include: (i) “long felt
`
`need” for the claimed invention, (ii) commercial success attributable to the claimed
`
`invention, (iii) unexpected results of the claimed invention, and (iv) “copying” of
`
`the claimed invention by others. For purposes of my analysis in this Declaration,
`
`and because I know of no indication from the patent owner or others to the
`
`contrary, I have applied a date of June 18, 2007, as the date of invention, although
`
`in many cases the same analysis would hold true even at a time earlier than June
`
`18, 2007.
`
`21.
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a
`
`single prior art reference or multiple prior art references, there must be a reason
`
`that would have prompted a POSITA to modify the single prior art reference, or
`
`
`
`11
`
`

`

`combine two or more references, in a manner that provides the elements of the
`
`claimed invention. This reason may come from a teaching, suggestion, or
`
`motivation to combine, or may come from the reference(s) themselves, the
`
`knowledge or “common sense” of a POSITA, or from the nature of the problem to
`
`be solved, and this reason may be explicit or implicit from the prior art as a whole.
`
`I have been informed that, under the law, the predictable combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more
`
`than yield predictable results. I also understand it is improper to rely on hindsight
`
`in making the obviousness determination.
`
` Claim Construction
`
`22.
`
`I understand that, for purposes of my analysis in this Inter Partes
`
`Review proceeding, the terms appearing in the patent claims should be interpreted
`
`according to their “ordinary and customary meaning.” In determining the ordinary
`
`and customary meaning, the words of a claim are first given their plain meaning
`
`that those words would have had to a POSITA. I understand that the structure of
`
`the claims, the specification, and the file history also may be used to better
`
`construe a claim insofar as the plain meaning of the claims cannot be understood.
`
`Moreover, treatises and dictionaries may be used, albeit under limited
`
`circumstances, to determine the meaning attributed by a POSITA to a claim term at
`
`the time of filing. I have followed this approach in my analysis, and for all of the
`
`
`
`12
`
`

`

`claim terms considered in this declaration, I have applied the plain and ordinary
`
`meaning of those terms.
`
`23.
`
`I also understand that the words of the claims should be interpreted as
`
`they would have been interpreted by a POSITA at the time of the invention was
`
`made (not today). Because I do not know at what date the invention as claimed
`
`was made, I have used the priority date of the ’357 patent as the point in time for
`
`claim interpretation purposes. That date was June 18, 2007.
`
` PERSON OF ORDINARY SKILL IN THE ART
`
`24. Based on the foregoing and upon my experience in this area, a person
`
`of ordinary skill in the art as of the claimed priority date of the ’357 patent
`
`(“POSITA”) would have had a Bachelor’s degree in electrical engineering,
`
`computer engineering, computer science, or a related field, and 3-5 years of
`
`experience in the design or development of wireless communication systems, or
`
`the equivalent. Additional graduate education could substitute for professional
`
`experience, or significant experience in the field could substitute for formal
`
`education.
`
` MATERIALS CONSIDERED
`
`25. My analyses set forth in this declaration are based on my experience
`
`in the field of wireless communication systems and associated technologies. Based
`
`on my above-described experience in the field of wireless communication systems,
`
`
`
`13
`
`

`

`I believe that I am considered to be an expert in the field. Also, based on my
`
`experiences, I understand and know of the capabilities of persons of ordinary skill
`
`in this field during mid-2000s and specifically during the time before the earliest
`
`possible priority date (June 18, 2007) for the ’357 patent, and I taught, participated
`
`in organizations, and worked closely with many such persons in the field during
`
`that time frame.
`
`26. As part of my independent analysis for this declaration, I have
`
`considered the following: the background knowledge/technologies that were
`
`commonly known to persons of ordinary skill in this field during the time before
`
`the earliest possible priority date for the ’357 patent; my own knowledge and
`
`experiences gained from my work experience in the fields of electrical engineering
`
`and wireless communication devices generally; my experience in teaching and
`
`advising others in those subjects; and my experience in working with others
`
`involved in those fields. In addition, I have analyzed the following publications
`
`and materials:
`
` U.S. Patent No. 8,995,357 to Erik Dahlman et al. (“the ’357 patent”)
`
`(APPLE-1001)
`
` Excerpts from the Prosecution History of the ’357 Patent (“the
`
`Prosecution History”) (APPLE-1002)
`
`
`
` U.S. Patent Application Publication No. 2010/0167746 to Lee et al.
`
`
`
`14
`
`

`

`(“Lee-746”) (APPLE-1004)
`
` System Information, R2-072183, 3GPP TSG RAN WG2#58, 07-11 May
`
`2007 (“R2-072183”) (APPLE-1005)
`
`
`
` U.S. Patent Application Publication No. 2008/0285668 to Lee et al.
`
`(“Lee-668”) (APPLE-1006)
`
` Scheduling of D-BCH, R2-071762, 3GPP TSG-RAN WG2 #58, 7-11
`
`May 2007 (“R2-071762”) (APPLE-1007)
`
` U.S. Patent Application No. 2008/0056198 to Charpentier et al.
`
`(“Charpentier”) (APPLE-1008)
`
` 3rd Generation Partnership Project; Technical Specification Group Radio
`
`Access Network; Radio Interface Protocol Architecture (Release 7),
`
`3GPP TS 25.301 V7.1.0 (2007-03) (“TS25.301”) (APPLE-1009)
`
` 3rd Generation Partnership Project; Technical Specification Group
`
`GSM/EDGE Radio Access Network; Mobile radio interface layer 3
`
`specification; Radio Resource Control (RRC) protocol (Release 7), 3GPP
`
`TS 44.018 V7.8.0 (2007-03) (“TS44.018”) (APPLE-1010)
`
`
`
` Downlink Model for HSDPA, TSGR1#19(01)0312, TSG-RAN Working
`
`Group 1 #19, February 26-March 2, 2001 (“TSGR1#19(01)0312”)
`
`(APPLE-1011)
`
` System information structure (with TP), R2-071911, 3GPP TSG-RAN
`
`
`
`15
`
`

`

`WG2 Meeting #58, 7-11 May 2007 (“R2-071911”) (APPLE-1012)
`
` Variable TTI proposal for HSDPA, TSGR1#18(01)0079, TSG-RAN
`
`Working Group 1, January 15-19, 2001 (“TSGR1#18(01)0079”)
`
`(APPLE-1013)
`
` U.S. Patent Application Publication No. 2007/0263528 to Mukherjee
`
`(“Mukherjee”) (APPLE-1014)
`
` U.S. Patent Application Publication No. 2007/0064669 to Classon et al.
`
`(“Classon”) (APPLE-1015)
`
` U.S. Patent Application Publication No. 2009/0209256 to Nakashima et
`
`al. (“Nakashima”) (APPLE-1016)
`
` U.S. Patent Application Publication No. 2008/0298315 to Ihm et al.
`
`(“Ihm”) (APPLE-1017)
`
` System information scheduling and change notification, R2-071337,
`
`3GPP TSG-RAN2 Meeting #57bis, 26th-30th March 2007 (“R2-
`
`071337”) (Resubmitted as R2-071912) (APPLE-1018)
`
`27. Although this declaration refers to selected portions of the cited
`
`references for the sake of brevity, it should be understood that these are examples,
`
`and that a POSITA would have viewed the references cited herein in their entirety
`
`and in combination with other references cited herein or cited within the references
`
`
`
`16
`
`

`

`themselves. The references used in this declaration, therefore, should be viewed as
`
`being considered herein in their entireties.
`
` BACKGROUND OF THE ’357 PATENT
`
`
`
`Subject Matter Overview
`
`28. The ’357 patent is titled “Transmission of System Information on a
`
`Downlink Shared Channel” and relates to “the transmission of system information
`
`to user equipment (UE)... by radio base stations in a wireless communication
`
`network configured according to 3GPP E-UTRA (evolved Universal Terrestrial
`
`Radio Access) standards, also referred to as 3GPP LTE (Long Term Evolution).”1
`
`APPLE-1001, 1:7-14. The ’357 patent acknowledges that, in LTE, the dynamic
`
`part of the system information can be transmitted using the Downlink Shared
`
`Channel (DL-SCH) and should be repeated regularly. APPLE-1001, 2:9-35. In
`
`LTE, the dynamic part of the system information is divided into “scheduling units
`
`[(SU)], also referred to as System Information Messages.” APPLE-1001, 2:25-27.
`
`
`1 The term “LTE” is used in reference to the patent and prior-art disclosures as of
`
`the ’357 patent’s earliest possible priority date, and no comment is being made as
`
`to the applicability of a particular technology or feature to the current LTE
`
`standard.
`
`
`
`17
`
`

`

`29. The ’357 patent is said to “allow[] for transmission of the dynamic
`
`part of the system information fulfilling these requirements and desirable
`
`properties” of the LTE standard. APPLE-1001, 2:39-42. More specifically, the
`
`’357 patent’s purported improvement over the LTE requirements is to transmit
`
`system information with specific RNTIs (Radio Network Temporary Identifiers)
`
`indicating the presence of system information in a subframe. APPLE-1001, 2:42-
`
`47.
`
`30. The ’357 patent acknowledges that, in LTE, “Layer 1/Layer 2 (Ll/L2)
`
`control signaling, also known as the Physical Downlink Control Channel
`
`(PDCCH), is transmitted at the beginning of each subframe... to inform a UE about
`
`various items” and “includes the RNTI (Radio Network Temporary Identifier)
`
`associated with the UE for which the DL-SCH carries data in the given subframe.”
`
`APPLE-1001, 1:32-41.
`
`31.
`
`In the ’357 patent, “the transmission of system information is carried
`
`out similar to the transmission of user data on DL-SCH (dynamic resource and
`
`transport format with signaling on L1/L2 control channel” according to the LTE
`
`standard, but “[i]nstead of using an RNTI of a specific UE..., a specific System-
`
`Information RNTI (SI-RNTI), indicating that system information to be read by all
`
`UEs... is being transmitted, is included in the corresponding L1/L2 control
`
`signaling.” APPLE-1001, 4:14-18.
`
`
`
`18
`
`

`

`
`
`File History of the ’357 Patent
`
`32.
`
`I have reviewed the file history of the ’357 patent (APPLE-1002), and
`
`I understand that the application that led to the ’357 patent was filed on April 10,
`
`2008 and claimed priority to an application that was filed on June 18, 2007. See
`
`APPLE-1001, Cover Page. The ’357 patent eventually issued on March 31, 2015.
`
`Id.
`
`33. To distinguish the claims from R2-072205 during prosecution, the
`
`applicant argued that scheduling units “SUs are not ‘time windows’,” but rather
`
`“one of skill in the art would understand that a subframe might be considered a
`
`time window (generically), or a collection of subframes (e.g., a frame) might be
`
`considered a time window.” APPLE-1002, 102, 145. The applicant also
`
`distinguished the claimed indicator from a value tag disclosed in R2-072205 by
`
`arguing that “Value tags are carried on the BCH, ‘in a System Information Block
`
`called the Master Information Block (MIB),’” not “in each relevant subframe,” and
`
`that “the ‘value tag’ of [R2-072205] is not ‘an indication of the presence of system
`
`information.’” APPLE-1002, 106, 150, 153, 192-194, 197, 232-233, 235.
`
`34. The examiner issued a notice of allowance after the applicant
`
`amended claims 1, 10, 12, 15, and 21 (corresponding to issued claims 1, 9, 10, 12,
`
`and 17) to include “wherein the wireless communication network is configured for
`
`operation in accordance with 3GPP E-UTRA standards and wherein the indicator
`
`
`
`19
`
`

`

`is a System information Radio Network Temporary Identifier (SI-RNTI).”
`
`APPLE-1002, 34-32, 24-30. The examiner stated, as the reasons for allowance,
`
`“the prior art, either alone or in combination, fails to teach the feature of
`
`“transmitting system information on a downlink shared channel in recurring time
`
`windows, each time window spanning a plurality of subframes; including an
`
`indicator to indicate to receiving user equipment that the subframe carries system
`
`information and wherein the indicator is a System Information Radio Network
`
`Temporary Identifier (SI-RNTI).” APPLE-1002, 29.
`
`35. Based on my review of the record, it appears that some of the more
`
`pertinent references I listed above (and which I analyze below) were never
`
`analyzed in any office action by the examiner during prosecution. As explained in
`
`detail below, based upon my knowledge and experience in this field and my review
`
`of the publications cited here, I do not agree that at least claims 1-4, 6-10, 12, 14-
`
`17, and 19-24 of the ’357 patent are patentable over the prior art.
`
` OVERVIEW OF THE PRIOR ART
`
` Lee-746
`
`36. Lee-746, titled “Method of Transmitting/Receiving LTE System
`
`Information in a Wireless Communication System,” was filed on March 19, 2007,
`
`which was before the earliest possible priority date (June 18, 2007) of the ’357
`
`patent. APPLE-1004, Cover Page.
`
`
`
`20
`
`

`

`37. Lee-746 describes “a method of transmitting/receiving LTE system
`
`information in a wireless communication system.” APPLE-1004, [0002]. In Lee-
`
`746, “the system information may be grouped in primary system information and
`
`secondary system information.” APPLE-1004, [0038]. “[T]he secondary system
`
`information may be transmitted on a transport channel with flexible scheduling,
`
`such as DL-SCH.” APPLE-1004, [0039], [0044], [0047].
`
`38.
`
`“The system information may be organized in SIBs (system
`
`information blocks), a MIB (Master information block) and scheduling blocks.”
`
`APPLE-1004, [0027]. “The MIB... may give or provide timing information of the
`
`scheduling blocks and the different SIBs.” Id. An “eNB can schedule SIBs (i.e.,
`
`SIBs on SCH) within a specific Transmission Time Intervals (TTI) indicated by
`
`the MIB,” and “control information of the TTI may indicate existence of a SIB in
`
`the TTI and may schedule a time or frequency of the SIB.” APPLE-1004, [0043].
`
`39. Lee-746 describes its technique in more detail as follows:
`
`[T]he UE may receive the MIB at the fixed downlink (DL) resource
`(e.g. time/code/frequency). If the MIB includes long-term scheduling
`information of SIB transmissions and the UE has a specific SIB, the UE
`may receive a DL control channel for one or more TTIs indicated by
`the long-term scheduling information of the SIB in order to acquire a
`short-term scheduling of the SIB. And then, if the UE find that the
`short-term scheduling information at the TTI on the DL control channel
`indicates the existence of the SIB in this TTI and the UE successfully
`
`
`
`21
`
`

`

`receives the short-term scheduling information of the SIB, the UE may
`receive the SIB at the DL resource on a DL broadcast channel (e.g. time
`and frequency of the DL broadcast channel) indicated by the short-term
`scheduling of the SIB. Afterwards, UE may operate based on the
`received SIB.
`
`Id. Lee-746 explains that, with this technique, “the eNB may have more flexible
`
`size of the SIB within a range of minimum UE capability,” and “the eNB may have
`
`more flexibility of SCH scheduling.” Id.
`
`
`
`Lee-668
`
`40. Lee-668 titled “Method for Processing Control Information in a
`
`Wireless Mobile Communication System,” was filed on October 26, 2006, which
`
`was before the earliest possible priority date (June 18, 2007) of the ’357 patent.
`
`APPLE-1006, Cover Page.
`
`41. Lee-668 describes a method for processing control information in a
`
`wireless mobile communication system. APPLE-1006, Abstract. Lee-668
`
`explains that “[i]n the related art,... system information is always fixed or non-
`
`flexible,” which “allows a mobile terminal to easily detect and properly read the
`
`system information transmitted from the network.” APPLE-1006, [0029], [0036].
`
`In contrast, Lee-668 “allow[s] at least some portions of the system information to
`
`be dynamically (or flexibly) changed.” APPLE-1006, [0030], [0036].
`
`
`
`22
`
`

`

`42. Lee-668 “divides (or separates or distinguishes) the system
`
`information into primary system information (e.g., Master Information Block:
`
`MIB) and non-primary (or secondary) system information (e.g., System