UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`
`———————
`
`IPR2022-00338
`U.S. Patent 8,995,357
`
`———————
`
`DECLARATION OF DR. ZYGMUNT HAAS,
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
`
`1
`
`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 1
`
`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`
`———————
`
`IPR2022-00338
`U.S. Patent 8,995,357
`
`———————
`
`DECLARATION OF DR. ZYGMUNT HAAS,
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
`
`1
`
`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 1
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`
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`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 5
`
`Qualifications and Professional Experience .................................................... 8
`
`III.
`
`Level of Ordinary Skill in the Art ................................................................. 11
`
`IV. Relevant Legal Standards .............................................................................. 13
`
`V.
`
`Overview of the ’357 Patent .......................................................................... 14
`
`VI. Claim Construction ........................................................................................ 17
`
`VII. OVERVIEW OF THE PRIOR ART ............................................................. 18
`
`A.
`
`B.
`
`C.
`
`Lee-746 (Ex. 1004).............................................................................. 18
`
`Lee-668 (Ex. 1006).............................................................................. 18
`
`R2-072183 (Ex. 1005) ......................................................................... 19
`
`VIII. The Prior art and arguments considered during prosecution are
`substantially similar to the prior art and arguments presented in the
`Petition ........................................................................................................... 21
`
`A.
`
`Relevant Prosecution History .............................................................. 21
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`2
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`3
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`occurring time windows” with each time window “spanning a
`plurality of subframes” (all grounds, all claims). ................................ 50
`
`X.
`
`Conclusion ..................................................................................................... 54
`
`4
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`ERICSSON EXHIBIT 2001
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`IPR2022-00338, Page 4
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`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
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`I, Zygmunt Haas, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Patent Owner
`
`Telefonaktiebolaget LM Ericsson, Inc. (“Ericsson”) in the matter of a Patent Owner
`
`Preliminary Response in the Inter Partes Review of U.S. Patent No. 8,995,357 (“the
`
`’357 Patent”).
`
`2.
`
`I am being compensated for my work in this matter at my current
`
`standard hourly rate. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`4, 6-10, 12, 14-17, and 19-24 (“the Challenged Claims”) of the ’357 Patent are
`
`patentable as they would have been non-obvious to a person having ordinary skill in
`
`the art (“POSITA”) at the time of the invention, in light of the prior art. My
`
`conclusion and opinion of my work on this project is that the challenged claims
`
`would have been non-obvious to a POSITA.
`
`4.
`
`a.
`
`In the preparation of this declaration, I have studied:
`
`U.S. Patent No. 8,995,357 (“the ’357 Patent”), Ex. 1001;
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`b.
`
`The prosecution history of the ’357 Patent (“’357 File History”), Ex.
`
`2002;
`
`c.
`
`U.S. Patent Application Publication No. 2010/0167746 to Lee et al.
`
`(“Lee-746”), Ex. 1004;
`
`d.
`
`System Information, R2-072183, 3GPP TSG RAN WG2#58, 07-11
`
`May 2007 (“Samsung Liaison document”), Ex. 1005;
`
`e.
`
`U.S. Patent Application Publication No. 2008/0285668 to Lee et al.
`
`(“Lee-668”), Ex. 1006;
`
`f.
`
`Scheduling of D-BCH, R2-071762, 3GPP TSG-RAN WG2 #58, 7-11
`
`May 2007 (“R2-071762”), Ex. 1007;
`
`g.
`
`U.S. Patent Application No. 2008/0056198 to Charpentier et al., Ex.
`
`1008;
`
`h.
`
`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), Ex. 1009;
`
`i.
`
`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), Ex. 1010;
`
`6
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`IPR2022-00338, Page 6
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`j.
`
`Draft text proposal capturing agreements on system information, R2-
`
`072205, 3GPP TSG-RAN2 Meeting #58, 07-11 May 2007 (“Samsung Proposal”);
`
`Ex. 2003;
`
`k.
`
`System information scheduling and change notification, R2-071912,
`
`3GPP TSG-RAN2 Meeting #58, 07-11 May 2007 (“Samsung Discussion
`
`document”), Ex. 2004;
`
`l.
`
`Discussion on BCCH Update, R2-072736, 3GPP TSG-RAN2 Meeting
`
`#58bis, 25-29 June 2007 (“R2-072736”); Ex. 2005;
`
`m.
`
`U.S. Patent No. 9,532,355 to Erik Dahlman et. al. (“the ’355 Patent”)
`
`;Ex. 2008;
`
`n.
`
`o.
`
`p.
`
`5.
`
`Prosecution History of the ’355 Patent; Ex. 2007;
`
`Petition for Inter Partes Review, Paper 2, IPR2022-00338;
`
`Declaration of Jonathan Wells, Ph.D., M.B.A; Ex. 1003; and
`
`In forming the opinions expressed below, I have considered:
`
`the documents listed above;
`
`the relevant legal standards, including the standard for obviousness, and
`
`any additional authoritative documents as cited in the body of this declaration;
`
`and my own knowledge and experience based upon my work in the field of
`
`networking as described below.
`
`6.
`
`Unless otherwise noted, all emphasis in any quoted material has been
`
`7
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`added.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`7.
`
`I am a Professor and Distinguished Chair in Computer Science at the
`
`University of Texas in Dallas. I am also Professor Emeritus at the School of
`
`Electrical and Computer Engineering at Cornell University. In addition, I have
`
`provided technical consulting services in intellectual property matters, during which
`
`I have written expert reports and provided deposition and trial testimony involving
`
`wireless communication technologies.
`
`8.
`
`My academic credentials include a Bachelor of Science Degree in
`
`Electrical Engineering, summa cum laude, from Technion (IIT), Israel, in 1979 and
`
`a Master of Science Degree in Electrical Engineering, summa cum laude, from Tel
`
`Aviv University, Israel, in 1985. I subsequently authored the thesis titled “Packet
`
`Switching in Fiber-Optic Networks” as part of earning my Ph.D. in Electrical
`
`Engineering from Stanford University in 1988.
`
`9.
`
`My professional background and technical qualifications are stated
`
`above and are also reflected in my Curriculum Vitae, which is attached as Ex. 2006.
`
`I am being compensated at a rate of $500 per hour, with reimbursement for actual
`
`expenses, for my work related to this Petition for Inter Partes Review. My
`
`compensation is not dependent, on and in no way affects, the substance of my
`
`statements in this Declaration.
`
`8
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`10.
`
`I have worked or consulted for about 35 years in the field of Electrical
`
`Engineering. My primary focus has been on communication and networking
`
`systems, with an emphasis on wireless communication networks. I have authored
`
`and co-authored numerous technical papers and book chapters related to wireless
`
`communication networks. I hold over twenty patents in the fields of high-speed
`
`networking, wireless networks, and optical switching. My employment history
`
`following my graduation from Stanford University began at the Network Research
`
`Department of AT&T Bell Laboratories in 1988. At AT&T Bell Laboratories, I
`
`pursued research on wireless communications, mobility management, fast protocols,
`
`optical networks, and optical switching. During my tenure at AT&T, I also worked
`
`for the AT&T Wireless Center of Excellence, where I investigated various aspects
`
`of wireless and mobile networks.
`
`11.
`
`In 1995, I joined the faculty of the School of Electrical & Computer
`
`Engineering at Cornell University, and with time I was promoted to Full Tenured
`
`Professor. At Cornell, I headed the Wireless Networks Lab, which has been a
`
`research group with extensive contributions in the area of wireless communication
`
`systems and networks. In 2013, I retired from Cornell with the title of Emeritus
`
`Professor and joined the Computer Science Department at the University of Texas
`
`at Dallas with the title of Professor and Distinguished Chair in Computer Science.
`
`At Cornell and at the University of Texas, I have taught dozens of courses related to
`
`9
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`computer networking and wireless communications. I have also served on various
`
`committees for the benefit of the scientific community.
`
`12.
`
`I am a member of a number of professional societies, including the
`
`Institute of Electrical and Electronic Engineers (IEEE) and the Association for
`
`Computing Machinery (ACM). In 2007, I was elevated to an IEEE Fellow, and in
`
`2022, I was elevated to an ACM Fellow. I have been responsible for organizing
`
`several workshops, and delivering numerous tutorials at major IEEE and ACM
`
`conferences. I have served as editor of several publications including the IEEE
`
`Transactions on Networking, the IEEE Transactions on Wireless Communications,
`
`the IEEE Communications Magazine, the Springer “Wireless Networks” journal, the
`
`Elsevier “Ad Hoc Networks” journal, the “Journal of High Speed Networks,” and
`
`the Wiley “Wireless Communications and Mobile Computing” journal. I have also
`
`been a guest editor of IEEE Journal on Selected Areas in Communications issues on
`
`“Gigabit Networks,” “Mobile Computing Networks,” and “Ad-Hoc Networks.”
`
`Finally, I have served as the Chair of the IEEE Technical Committee on Personal
`
`Communications (TCPC), today known as Wireless Communications Technical
`
`Committee (WTC).
`
`13.
`
`I have received multiple awards in the field of wireless communications
`
`and networks. In 2016, I received the IEEE ComSoc AHSN Recognition Award “for
`
`outstanding contributions to securing ad hoc and sensor networks". In 2012, I
`
`10
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`received the IEEE ComSoc WTC Recognition Award, which recognizes individuals
`
`for outstanding technical contributions in the field for their service to the scientific
`
`and engineering communities.” In 2021, I received the “Best Paper Award” for co-
`
`authoring the paper “Engineering a Network in the Sky” from the 35th International
`
`Conference on Information Networking, (ICOIN21). In 2012, I received the “Best
`
`Paper Award” for co-authoring “Collaborating with Correlation for Energy Efficient
`
`WSN” directed at Wireless Sensor Networking. I previously received the “Best
`
`Paper Award” for co-authoring “Optimal Resource Allocation for UWB Wireless
`
`Ad Hoc Networks” directed at personal indoor and mobile radio communications.
`
`Finally, in 2003, I received the “Highly Commended Paper Award” for co-authoring
`
`“Performance Evaluation of the Modified IEEE 802.11 MAC for Multi-Channel
`
`Multi-Hop Ad Hoc Network,” directed at advanced information networking and
`
`applications.
`
`14. A copy of my curriculum vitae is attached as Ex. 2006. Additional
`
`information regarding my education, technical experience and publications,
`
`including a list of the U.S. patents of which I am an inventor/co-inventor, is included
`
`therein.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`15.
`
`I have been informed and I understand there are multiple factors
`
`relevant to determining the level of ordinary skill in the pertinent art, including (1)
`
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`the levels of education and experience of persons working in the field at the time of
`
`the invention; (2) the sophistication of the technology; (3) the types of problems
`
`encountered in the field; and (4) the prior art solutions to those problems.
`
`16. A person of ordinary skill in the art (“POSITA”) in the field of the ’357
`
`Patent, as of its earliest possible filing date of June 18, 2007, would have been
`
`someone knowledgeable and familiar with the networking arts that are pertinent to
`
`the ’357 Patent. It is my opinion that a 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 working in the field of wireless communication systems,
`
`or the equivalent. Lack of work experience can be remedied by additional education,
`
`and vice versa. Additionally, I believe that I possessed and exceeded such experience
`
`and knowledge before and at the priority date of the ’357 Patent, and that I am
`
`qualified to opine on the ’357 Patent. I have been informed by counsel that June 18,
`
`2007 is the priority date of the ’357 Patent.
`
`17.
`
`For purposes of this Declaration, in general, and unless otherwise noted,
`
`my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of the priority
`
`date of the ’357 Patent. Unless otherwise stated, when I provide my understanding
`
`and analysis below, it is consistent with the level of a POSITA prior to the priority
`
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`date of the ’357 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`18.
`
`I am not an attorney, and I do not opine on matters of law. In preparing
`
`and expressing my opinions and considering the subject matter of the ’357 Patent, I
`
`am relying on certain basic legal principles that counsel have explained to me. These
`
`principles are discussed below.
`
`19.
`
`I have been informed and I understand that prior art to the ’357 Patent
`
`includes patents and printed publications in the relevant art that predate the priority
`
`date of the alleged invention recited in the ’357 Patent.
`
`20.
`
`I have been informed that a claimed invention is unpatentable under 35
`
`U.S.C. § 103 if the differences between the invention and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the subject matter pertains.
`
`I have also been informed by counsel that the obviousness analysis takes into
`
`account factual inquiries including the level of ordinary skill in the art, the scope and
`
`the content of the prior art, and the differences between the prior art and the claimed
`
`subject matter.
`
`21.
`
`I have been informed by counsel that the Supreme Court has recognized
`
`several rationales for combining references or modifying a reference to show
`
`obviousness of claimed subject matter. Some of these rationales include the
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`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success; and (f) some teaching, suggestion, or motivation in the prior
`
`art that would have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art reference teachings to arrive at the claimed invention.
`
`V.
`
`OVERVIEW OF THE ’357 PATENT
`
`22.
`
`The ’357 Patent relates to “the transmission of system information 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).” Ex. 1001, 1:8-14. The
`
`background of the ’357 Patent explains that when a user equipment (UE) enters a
`
`new cell, it “must quickly acquire the system information.” Id., 2:13-14. Thus, “the
`
`system information … should be repeated regularly.” Id., 2:14-17.
`
`23.
`
`The ’357 Patent describes an inventive way to meet this requirement:
`
`by transmitting system information within recurring “system information windows.”
`
`Id., 3:34-36. Specifically, scheduling units (also referred to as System Information
`
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`Messages) are sent to the UE using “system-information windows,” which occur
`
`“with a period corresponding to the repetition period of the most frequently
`
`occurring scheduling unit.” Id., 3:34-40. The system information windows are
`
`“regularly occurring windows” for “transmitting
`
`the dynamic … system
`
`information” and have “well-defined starting points (specific subframes) and of a
`
`certain size in number of (consecutive subframes).” Id., 3:62-66. Fig. 3 of the ’357
`
`Patent illustrates an example of these “recurring time windows defined for the
`
`transmission of system information.” In the example (where subframes are
`
`numbered beginning with subframe #0), each recurring time window “start[s] at
`
`subframe #5 of the frame with frame number 8*k and ha[s] a size of 13 subframes.”
`
`Id., 4:2-5. Fig. 3 below has been annotated in view of the description in the
`
`specification:
`
`Each recurring time window starts at subframe
`#5 of a frame and spans 13 subframes
`
`Ex. 1001, FIG. 3 (annotated).
`
`24.
`
`The ’357 Patent additionally describes that it is desirable “to have
`
`flexibility in terms of exactly where the system information is transmitted, i.e.,
`
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`exactly which set of subframes within a given time window carries the system
`
`information.” Ex. 1001, 4:58-61. It is also “desirable to dynamically … decide in
`
`exactly what subframes the system information is to be transmitted.” Id., 5:1-3. The
`
`’357 Patent also describes an inventive way to address these desires—by including
`
`a “System Information [Radio Network Temporary Identifier] (SI-RNTI)” in each
`
`subframe carrying system information within a recurring time window. Id., 4:15-17.
`
`25.
`
`The ’357 Patent background explains that for downlink transmission of
`
`user data on the DL-SCH (downlink Shared Channel), the “L1/L2 control channel”
`
`includes the “RNTI (Radio Network Temporary Identifier) associated with the UE
`
`for which the DL-SCH carries data in the given subframe.” Ex. 1001, 1:38-41. To
`
`indicate the presence of system information on the DL-SCH (which is intended for
`
`all UEs), the ’357 Patent describes a way of using a new type of RNTI that was not
`
`previously defined in the 3GPP standards. Ex. 1001, 4:14-21. “Instead of using an
`
`RNTI of a specific UE 120, a specific System-Information RNTI (SI-RNTI),
`
`indicating that system information to be read by all UEs 120 is being transmitted, is
`
`included in the corresponding L1/L2 control signaling.” Id. This “SI-RNTI” is
`
`included in the “corresponding L1/L2 control signaling” of a subframe and indicates
`
`“the presence of system information” in the subframe. Id., 2:42-47.
`
`26. By using the “SI-RNTI” to indicate “the presence of system
`
`information” in the subframe, the ’357 Patent allows “methods and apparatuses
`
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`where system information is transmitted within recurring time windows, but with
`
`flexible selection of which subframes within those windows are used to carry system
`
`information.” Ex. 1001, 5:16-20.
`
`VI. CLAIM CONSTRUCTION
`
`27.
`
`It is my understanding that for the purposes of this inter partes review,
`
`the claims are to be construed under the so-called Phillips standard, under which
`
`claim terms are given their ordinary and customary meaning as would have been
`
`understood by one of ordinary skill in the art in light of the specification and
`
`prosecution history, unless the inventor has set forth a special meaning for a term.
`
`28.
`
`I have been further informed that claim terms only need to be construed
`
`to the extent necessary to resolve the obviousness inquiry. Accordingly, in order to
`
`construe the claim terms, I have reviewed the entirety of the ’357 Patent, as well as
`
`its prosecution history.
`
`29.
`
`I have reviewed the claim language, the specification, and the
`
`prosecution history. For the purposes of my analysis below, it is my opinion that
`
`none of the claim terms requires a specific construction beyond the plain and
`
`ordinary meaning as would be understood by one of ordinary skill in the art at the
`
`priority date of the ’357 Patent.
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`VII. OVERVIEW OF THE PRIOR ART
`
`A. Lee-746 (Ex. 1004)
`
`30. Although Lee-746 generally describes “transmitting/receiving LTE
`
`system information in a wireless communication system,” it does not describe any
`
`of the inventive aspects of the ’357 Patent. Lee-746 describes that “the system
`
`information may be organized in SIBs (system information blocks), a MIB (Master
`
`Information Block) and scheduling blocks.” Ex. 1004, [0027]. To transmit such
`
`system information, “a MIB” is transmitted using “a fixed resource because the UE
`
`may not presumably acquire any control information before receiving the MIB in a
`
`cell.” Id, [0043]. Then, the “eNB can schedule SIBs (i.e., SIBs on SCH) within a
`
`specific Transmission Time Intervals (TTI) indicated by the MIB.” Id.
`
`31.
`
`In particular, “[i]f a certain SIB is scheduled within a certain TTI,
`
`control information of the TTI may indicate existence of a SIB in the TTI.” Id. Lee-
`
`746 does not provide any description of its “control information” other than that it
`
`indicates the existence of the SIB “in this TTI.” Id.
`
`B. Lee-668 (Ex. 1006)
`
`32.
`
`Lee-668 describes a method for processing control information that
`
`“allow[s] at least some portions of the system information to be dynamically (or
`
`flexibly) changed.” Ex. 1006, [0030]. This is accomplished by dividing the system
`
`information into primary system information and non-primary system information.
`
`18
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`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 18
`
`
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`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
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`Id., [0037]. Lee-668 describes that the primary system information, in the form of
`
`MIBs discussed above, is transmitted statically and includes information about
`
`where the non-primary system information, in the form of SIBs also discussed
`
`above, is located‒allowing it to be sent in a “dynamic manner.” Id., [0038]. Lee-668
`
`explains that “dynamic manner” means “that different frequency ranges and time
`
`durations can be used.” Id. Lee-668 describes several indicators but none indicate
`
`the presence of system information in a subframe as required by the claims. See e.g.
`
`id., [0016] (“Before sending data to a particular mobile terminal, an indicator (which
`
`informs in advance that a notification message for a multicast and broadcast service
`
`will be transmitted) is transmitted through a separate (distinct) channel.”); see also
`
`id., [0073] (“The indicator may comprise: at least one of a terminal identifier, a
`
`service identifier, and a logical channel identifier.”).
`
`C. R2-072183 (Ex. 1005)
`
`33. R2-072183 “the Samsung Liaison document” is a brief liaison
`
`document from 3GPP RAN Working Group 2 (RAN2) to RAN Working Group 1
`
`(RAN1) titled “System Information.” Ex. 1005, 1. It was submitted by Samsung as
`
`part of RAN2 Meeting #58 held in Kobe, Japan from May 7-11, 2007. Id. The
`
`purpose of this liaison document was to inform RAN1 of RAN2’s progress on the
`
`“provisioning of system information in LTE” and to “request RAN1 to look into
`
`several questions that came up during these discussions.” Id. I note that the phrase
`
`19
`
`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 19
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`“these discussions” refers to the discussions that took place during the Kobe meeting
`
`with respect to various proposals submitted by its members. Id.
`
`34.
`
`To provide context for the questions posed to RAN1, the Samsung
`
`Liaison document includes a list of four relevant decisions made during the
`
`RAN2#58 meeting. Ex. 1005, 1. The Samsung Liaison document notes that there
`
`were many “working assumptions” regarding various parameters and these
`
`assumptions may be “revisited.” See, e.g., id. at 1 (“a periodicity/TTI of 40ms is
`
`currently assumed”), 3 (“The P-BCH is sent every 40ms (working assumption). If
`
`later studies show that this is too long, this will be revisited towards 20ms.”). This
`
`is consistent with the unsettled state of LTE development at the time of the
`
`RAN2#58 meeting.
`
`35.
`
`Each listed decision is a one or two sentence summary of a concept
`
`proposed at the meeting and accepted by the RAN2 working group. Ex. 1005, 1, 3.
`
`These concepts are more fully described in the respective proposal documents
`
`submitted by the members. The four “decisions” summarized in this liaison
`
`document are not meant to be read in isolation and are only fully understood when
`
`read in the context of other related working documents submitted to the RAN2#58
`
`meeting.
`
`36. With this frame of reference, the Samsung Liaison document states that
`
`one of the “decisions” made during the RAN2#58 meeting was:
`
`20
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`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 20
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`Ex. 1005, 1. The liaison document does not explain what it means to use “the BCCH-
`
`RNTI” for “PDCCH allocation” nor does it specify to what “the BCCH RNTI”
`
`refers. Id. There are no other mentions of “RNTI” or “BCCH RNTI” in the
`
`document. Id. This is consistent with the purpose of this liaison document— it is a
`
`summarization of decisions, not explanations. Other, more detailed proposals
`
`submitted during the RAN2#58 meeting provide the explanation.
`
`VIII. THE PRIOR ART AND ARGUMENTS CONSIDERED DURING
`PROSECUTION ARE SUBSTANTIALLY SIMILAR TO THE PRIOR ART
`AND ARGUMENTS PRESENTED IN THE PETITION
`
`37.
`
`I have been asked to provide my opinion as to the similarities between
`
`the prior art and arguments considered during the prosecution history of the ’357
`
`Patent and the prior art and arguments presented in the Petition. It is my opinion that
`
`the Petition relies upon the same arguments and substantially the same prior art as
`
`considered during prosecution. Neither the Petition nor Dr. Wells’ declaration
`
`addresses these similarities.
`
`A. Relevant Prosecution History
`
`38. Both the prosecution history of the ’357 Patent and the ’355 Patent are
`
`relevant because the ’355 Patent is a continuation of the ’357 Patent that shares a
`
`common specification, both patents were pending with the same examiner, and the
`
`21
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`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 21
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`applicant used similar amendments involving the use of SI-RNTIs to overcome the
`
`examiner’s rejections in both applications.
`
`22
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`discussed below with respect to the ’355 patent. See Section V.A.2. The examiner
`
`rejected this claim using the Samsung Proposal in view of another 3GPP document
`
`submitted by Samsung to the RAN2#58 meeting, R2-071912 (Ex. 2004, “the
`
`Samsung Discussion document”).
`
`41.
`
`The Samsung Discussion document is a detailed, six-page “discussion
`
`and decision” document that “discusses the further details of the scheduling
`
`information including what information is provided via the PDCCH.” Ex. 2004, 1.
`
`In his rejection of pending dependent claim 5, the examiner explained that the
`
`primary reference, the Samsung Proposal, “does not very explicitly show it
`
`comprises using an RNTI (Radio Network Temporary Identifier) to denote that the
`
`subframe carries system information,” but that the Samsung Discussion document
`
`“explicitly teaches subframes indicators are in RNTI format (page 3 bottom).” Ex.
`
`2002, 196.1 The cited portion proposes notifying of a change in system information
`
`three different ways, one of which is with a “special RNTI value” indicating a BCCH
`
`modification that is carried on the PDCCH:
`
`1 The examiner made a similar rejection for pending dependent claim 5 with
`
`respect to the ’355 Patent. See Ex. 2007, 163-164.
`
`23
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`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 23
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`Ex. 2004, 3; see also id. (“Checking PDCCH with an additional RNTI…”). In view
`
`of this disclosure, the examiner alleged that it would have been obvious that the
`
`primary reference “uses RNTI” because “both R2 documents refer to the same 3GPP
`
`systems information techniques.” Ex. 2002, 196. In other words, the examiner
`
`recognized that “both R2 documents” submitted by Samsung at the RAN2#58
`
`meeting should be considered together because of their related and overlapping
`
`disclosure. See id.
`
`42.
`
`Eventually, applicant added dependent claim 27:
`
`Id., 347. Like dependent claim 5 discussed above, dependent claim 27 required using
`
`a RNTI as the indicator, but, unlike dependent claim 5, it specified that the RNTI is
`
`a System Information Radio Network Temporary Identifier (SI-RNTI). Id.
`
`43.
`
`In the next office action, the examiner indicated dependent claim 27 as
`
`allowable. Id., 373. Applicant added the substantive limitations of dependent claim
`
`27 to each of the independent claims and a notice allowance was subsequently
`
`issued. Id., 412-419; 433. In the notice of allowance, the examiner specifically
`
`24
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`ERICSSON EXHIBIT 2001
`Apple, Inc. v. Telefonaktiebolaget LM Ericsson
`IPR2022-00338, Page 24
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`included the use of an SI-RNTI as the indicator in his reasons for allowance. See id.,
`
`438.
`
`25
`
`
`
`IPR2022-00338
`Declaration of Dr. Zygmunt Haas
`
`amended independent claims 1, 10, 15 and 21 to more narrowly recite that the
`
`indicator “is a System Information RNTI (SI-RNTI)” and explained that the cited
`
`BCCH-related RNTI is different than the claimed “SI-RNTI.” Ex. 2007, 188-194.
`
`Specifically, the Applicant explained that the BCCH-related RNTI cited by the
`
`examiner was used to “indicate when the modifications to system information are
`
`made, not to indicate the subframes containing the system information.” Id., 190. In
`
`response to these amendments and arguments, the examiner issued a notice of
`
`allowance without comment. Id., 269-271. Accordingly, the examiner was
`
`convinced that a teaching of a BCCH-related RNTI does not teach the claimed “SI-
`
`RNTI.” As described below, the current Petition relies upon the same disclosure of
`
`a “BCCH RNTI” for the same limitation recited in the ’357 Patent. Petitio
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