UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`
`———————
`
`IPR2022-00338
`U.S. Patent 8,995,357
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`———————
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`
`———————
`
`IPR2022-00338
`U.S. Patent 8,995,357
`
`———————
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`VI.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`OVERVIEW OF THE ’357 PATENT ............................................................ 2
`II.
`III. DEFINITION OF POSITA ............................................................................. 5
`IV. CLAIM CONSTRUCTION ............................................................................ 5
`V.
`OVERVIEW OF THE PRIOR ART ............................................................... 6
`A.
`Lee-746 (Ex. 1004)................................................................................ 6
`B.
`Lee-668 (Ex. 1006)................................................................................ 7
`C.
`R2-072183 (Ex. 1005) ........................................................................... 8
`THE BOARD SHOULD DENY INSTITUTION UNDER 35
`U.S.C. § 325(d). .............................................................................................10
`A.
`Relevant Prosecution History ..............................................................11
`1.
`Prosecution History of the ’357 Patent .....................................11
`2.
`Prosecution History of the ’355 Patent .....................................14
`The Petition presents substantially the same prior art and
`arguments as were previously considered by the office. ....................16
`1.
`Factor (a): The Samsung Liaison document is
`substantially similar to the Samsung documents
`evaluated during examination. ..................................................17
`Factor (b): The Samsung Liaison document is, by
`definition, cumulative
`to
`the other Samsung
`documents evaluated during examination.................................21
`Factor (d): The Petition applies the Samsung
`Liaison document in the same way the examiner
`applied the Samsung Discussion document. .............................22
`Petitioner has not alleged any error by the Office. .............................24
`
`B.
`
`C.
`
`2.
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`3.
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`i
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`VII. THE BOARD SHOULD DENY INSTITUTION BECAUSE
`PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON ANY CHALLENGED
`CLAIM...........................................................................................................27
`A.
`Lee-746, Lee 668, and the Samsung Liaison document,
`even when combined, do not render obvious “using an
`indicator in each subframe … to indicate … that the
`subframe carries system information” (all claims, all
`grounds). ..............................................................................................28
`1.
`A POSITA would not combine the Samsung
`Liaison document with Lee-746/Lee-668 to reach
`the proposed combination. ........................................................29
`Even if combined as proposed, none of Lee-746,
`Lee-668, or
`the Samsung Liaison document,
`individually or as combined, teach the claimed
`indicator. ...................................................................................34
`Lee-746, Lee-668, and the Samsung Liaison document,
`even when combined, do not render obvious “a System
`Information Radio Network Temporary Identifier (SI-
`RNTI)” (claims 1, 10, 12, 15, 21) .......................................................40
`1.
`The ’357 Patent specification and the Office
`recognize that the claimed SI-RNTI is distinct from
`other RNTIs. ..............................................................................40
`The Samsung Liaison document’s “BCCH RNTI”
`does not render obvious the claimed “SI-RNTI.” .....................42
`Petitioner has failed to explain how a BCCH RNTI
`meets its proposed construction of “SI RNTI” in
`related litigation. .......................................................................44
`Lee-746, Lee-668, and the Samsung Liaison document,
`even when combined, do not render obvious transmitting
`system information in “recurring time windows” or
`“regularly occurring time windows” with each time
`
`B.
`
`C.
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`ii
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`2.
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`2.
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`3.
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`window “spanning a plurality of subframes” (all grounds,
`all claims). ...........................................................................................46
`VIII. CONCLUSION ..............................................................................................50
`
`iii
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`TABLE OF AUTHORITIES
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`Cases
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-
`01469, Paper 6 .............................................................................................. passim
`Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) .....................39
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 . 17,
`24
`DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1374 (Fed. Cir. 2018) ..........39
`Fustibal LLC v. Bayer HealthCare LLC, IPR2016-01490, Paper 9 ........................11
`Puma North America, Inc. v. Nike, Inc., IPR2019-01042, Paper 10 ................ 24, 25
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) .... 6
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) .......... 6
`Statutes
`§ 325(d) ....................................................................................................................10
`37 CFR § 42.22 ....................................................................................................1, 38
`Other Authorities
`H.R. Rep. No. 112–98, pt. 1, at 40 (2011) ................................................................. 2
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`iv
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`Patent Owner’s Exhibit List
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`Declaration of Dr. Zygmunt Haas
`Prosecution History of the ’357 Patent
`Draft text proposal capturing agreements on system information,
`R2-072205, 3GPP TSG-RAN2 Meeting #58, 07-11 May 2007
`(“Samsung Proposal”)
`System information scheduling and change notification, R2-
`071912, 3GPP TSG-RAN2 Meeting #58, 07-11 May 2007
`(“Samsung Discussion document”)
`Discussion on BCCH Update, R2-072736, 3GPP TSG-RAN2
`Meeting #58bis, 25-29 June 2007 (“R2-072736”)
`Curriculum Vitae of Zygmunt Haas, Ph.D.
`Prosecution History of the ’355 Patent
`U.S. Patent No. 9,532,355 to Erik Dahlman et. al. (“the ’355
`Patent”)
`Apple’s Proposed Constructions of Identified Claim Terms in
`related ITC Litigation
`
`2001
`2002
`2003
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`2004
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`2005
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`2006
`2007
`2008
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`2009
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`v
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`I.
`
`INTRODUCTION
`The entirety of Petitioner’s arguments in its Petition are a rehashing of the
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`same arguments overcome during the prosecutions of the ’357 Patent and the related
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`’355 Patent. See Section VI; see also id., Subsection A. The Petition merely replaces
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`a Samsung 3GPP document cited by the examiner with a substantially similar
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`Samsung 3GPP document from the same 3GPP RAN2 meeting. See id., Subsection
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`B. Despite asking the Board to revisit these already-resolved issues from the
`
`prosecution, Petitioner does not allege or even suggest any error by the Office. See
`
`id., Subsection C. For this reason alone, institution should be denied under § 325(d).
`
`Id.
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`Even if the merits are considered, the Petition fails to provide the requisite
`
`“detailed explanation of the significance of the evidence.” 37 CFR § 42.22. See
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`Section VII. For example, none of the cited references in the Petition teach “using
`
`an indicator in each subframe … to indicate … that the subframe carries system
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`information”‒a variation of which is in every independent claim. See id., Subsection
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`A; Ex. 2001, ¶¶60-73. Additionally, Petitioner equates a “BCCH RNTI” with the
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`claimed SI-RNTI without any evidence. See id., Subsection B; Ex. 2001, ¶¶74-83.
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`Moreover, Apple’s Petition is nothing more than a cut-and-paste of a prior
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`Petition filed by Samsung, challenging the same claims of the ’357 Patent with the
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`same arguments. See IPR2021-00450 (filed on Feb. 5, 2021). The ’357 Patent is not
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`currently asserted against Apple in any pending litigation, so Apple’s Petition is not
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`a means for “providing a quick and cost-effective alternative[] to litigation,” which
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`is the purpose of inter partes review, as outlined in the legislative history. H.R. Rep.
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`No. 112–98, pt. 1, at 40 (2011). The use of inter partes review in this manner,
`
`particularly where Petitioner has failed to show that it has a reasonable likelihood of
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`prevailing as to any Challenged Claim pursuant to § 314(a), “frustrate[s] the purpose
`
`of the section as providing quick and cost-effective alternatives to litigation” and
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`“divert[s] resources from the research and development of inventions.” See, e.g., id.
`
`at 40 (2011) (Legislative history establishing inter partes review).1 Here, Apple
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`relies on the same expert retained by Samsung and presents the same weak
`
`arguments challenging the claims of the ’357 Patent.
`
`For these reasons, the Board should deny institution.
`
`II. OVERVIEW OF THE ’357 PATENT
`U.S. Patent No. 8,995,357 (“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,
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`1:10-14. The background of the ’357 Patent explains that when a user equipment
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`1 Unless otherwise noted, all emphasis is added by Patent Owner.
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`2
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`(UE) enters a new cell, it “must quickly acquire the system information.” Id., 2:13-
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`14. Thus, “the system information … should be repeated regularly.” Id., 2:14-17.
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`The ’357 Patent describes an inventive way to meet this requirement: by
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`transmitting system information within recurring “system information windows.”
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`Ex. 1001, 3:34-36. Specifically, scheduling units (also referred to as System
`
`Information Messages) are sent to the UE using “system-information windows,”
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`which occur “with a period corresponding to the repetition period of the most
`
`frequently occurring scheduling unit.” Id., 3:34-40. The system information
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`windows are “regularly occurring windows” for “transmitting the dynamic …
`
`system information” and have “well-defined starting points (specific subframes) and
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`of a certain size in number of (consecutive subframes).” Id., 3:62-66. Fig. 3 of the
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`’357 Patent (annotated below) illustrates an example of these “recurring time
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`windows defined for the transmission of system information.” Id., 3:67-4:1. In the
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`example, each recurring time window “start[s] at subframe #5 of the frame with
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`frame number 8*k and ha[s] a size of 13 subframes.” Id., 4:2-5.
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`Each recurring time window starts at subframe
`#5 of a frame and spans 13 subframes
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`Ex. 1001, FIG. 3 (annotated).
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`The ’357 Patent additionally describes that it is desirable “to have flexibility
`
`in terms of exactly where the system information is transmitted, i.e., exactly which
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`set of subframes within a given time window carries the system information.” Ex.
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`1001, 4:58-61. It is also “desirable to dynamically … decide in exactly what
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`subframe the system information is to be transmitted.” Id., 5:1-3. The ’357 Patent
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`also describes an inventive way to address this desire—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.
`
`In more detail, 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.”
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`Ex. 1001, 1:38-41. To indicate the presence of system information on the DL-SCH
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`(which is intended for all UEs), the ’357 Patent describes a using a new type of RNTI
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`that was not previously defined in the 3GPP standards. Id., 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
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`included in the corresponding L1/L2 control signaling.” Id. This “SI-RNTI” is
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`included in the “corresponding L1/L2 control signaling” of a subframe and indicates
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`“the presence of system information” in the subframe. Id., 2:42-47.
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`Thus, 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.
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`III. DEFINITION OF POSITA
`A person of ordinary skill in the art (“POSITA”) in the field of the ’357 Patent,
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`as of its earliest possible filing date of June 18, 2007, would have been someone
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`knowledgeable and familiar with the networking arts that are pertinent to the ’357
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`Patent. A POSITA would have had a Bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or a related field, and 3-5 years of
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`experience working in the field of wireless communication systems, or the
`
`equivalent. Lack of work experience can be remedied by additional education, and
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`vice versa. Ex. 2001, ¶16.
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`IV. CLAIM CONSTRUCTION
`Consistent with the legal principle that claims need to be construed only to the
`
`extent necessary to resolve the obviousness inquiry, Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), Patent Owner agrees with Petitioner
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`that no claim terms require an express construction at this point in the proceeding.
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`See Petition, 5-6.
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`No claim construction is necessary to deny institution. Patent Owner’s
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`arguments for denial do not hinge on the outcome of an actual controversy about
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`claim interpretation. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011). The shortcomings of the Petition are readily identifiable without
`
`defining any specific claim term or phrase.
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`V.
`
`OVERVIEW OF THE PRIOR ART
`A.
`Lee-746 (Ex. 1004)
`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
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`Block) and scheduling blocks.” Ex. 1004, [0027]. To transmit such system
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`information, “a MIB” is transmitted using “a fixed resource because the UE may not
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`presumably acquire any control information before receiving the MIB in a cell.” Id,,
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`[0043]. Then, the “eNB can schedule SIBs (i.e., SIBs on SCH) within a specific
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`Transmission Time Intervals (TTI) indicated by the MIB.” Id. In particular, “[i]f a
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`certain SIB is scheduled within a certain TTI, control information of the TTI may
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`indicate existence of a SIB in the TTI.” Id. Lee-746 does not provide any description
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`of its “control information” other than that it indicates the existence of the SIB “in
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`this TTI.” Id.
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`Lee-668 (Ex. 1006)
`B.
`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)
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`changed.” Ex. 1006, ¶30. This is accomplished by dividing the system information
`
`into primary system information and non-primary system information. Id., ¶37. Lee-
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`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‒
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`allowing it to be sent in a “dynamic manner.” Id., ¶38. Lee-668 explains that
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`“dynamic manner” means “that different frequency ranges and time durations can
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`be used.” Id. Lee-668 describes several indicators but none indicate the presence of
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`system information in a subframe as required by the claims. See e.g. id., ¶16 (“Before
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`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)
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`is transmitted through a separate (distinct) channel.”); see also id., ¶73 (“The
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`indicator may comprise: at least one of a terminal identifier, a service identifier, and
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`a logical channel identifier.”).
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`R2-072183 (Ex. 1005)
`C.
`R2-072183 (the “Samsung Liaison document”) is a brief liaison document
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`from 3GPP RAN Working Group 2 (RAN2) to RAN Working Group 1 (RAN1)
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`titled “System Information.” Ex. 1005, 1. It was submitted by Samsung as part of
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`RAN2 Meeting #58 held in Kobe, Japan from May 7-11, 2007. Id. The purpose of
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`this liaison document was to inform RAN1 of RAN2’s progress on the “provisioning
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`of system information in LTE” and to “request RAN1 to look into several questions
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`that came up during these discussions.” Id. The phrase “these discussions” refers to
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`the discussions that took place during the Kobe meeting with respect to various
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`proposals submitted by the RAN2 members. Id.; Ex. 2001, ¶33.
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`To provide context for the questions posed to RAN1, the Samsung Liaison
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`document includes a list of four relevant decisions made during the RAN2#58
`
`meeting.2 Ex. 1005, 1. Each decision is a one or two sentence summary of a concept
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`2 The Samsung Liaison document notes that many decisions were “working
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`assumptions” and these assumptions may be “revisited.” See, e.g., Ex. 1005, 1 (“a
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`periodicity/TTI of 40ms is currently assumed”), 3 (“The P-BCH is sent every 40ms
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`(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
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`the time of the RAN2#58 meeting. Ex. 2001, ¶34.
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`proposed at the meeting and accepted by the RAN2 working group. Id. at 1, 3. These
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`concepts are more fully described in the respective proposal documents submitted
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`by the members. Ex. 2001, ¶¶34-35. In other words, the “decisions” summarized in
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`this liaison document are just that, summaries. They are not meant to be read in
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`isolation and are only fully understood when read in the context of other related
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`working documents submitted to the RAN2#58 meeting. Id.
`
`With this frame of reference, the Samsung Liaison document states that one
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`of the “decisions” made during the RAN2#58 meeting was:
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`Ex. 1005, 1. The liaison document does not explain what it means to use “the BCCH
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`RNTI” for “PDCCH allocation,” nor does it specify to what “the BCCH RNTI”
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`refers. Id. There are no other mentions of “RNTI” or “BCCH RNTI” in the
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`document. Id. This is not surprising, however, because the purpose of this liaison
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`document is only to summarize, not explain. Other, more detailed proposals
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`submitted during the RAN2#58 meeting provide the corresponding explanation. Id;
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`Ex. 2001, ¶36. As described below, the examiner already considered those proposals
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`during prosecution of the ’357 Patent and found them not to disclose the invention
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`claimed in the ’357 Patent.
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`VI. THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C. §
`325(d).
`Institution of the present Petition should be denied under § 325(d) because the
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`issues it raises were already considered and overcome during the original
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`examination of the ’357 Patent. Rather than present the Board with new questions
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`of patentability, Petitioner recreates the examiner’s initial rejections, (which were
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`ultimately overcome by the issued claims), using substantially similar, but even less
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`robust, disclosures. In particular, the examiner rejected the pending claims over a
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`Samsung-submitted 3GPP document teaching a BCCH-related RNTI. The Applicant
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`overcame this rejection by amending the claims to more narrowly recite a “System
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`Information Radio Network Temporary Identifier (SI-RNTI).” See Ex. 2002, 412-
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`419. The examiner agreed such an SI-RNTI was not disclosed in the Samsung-
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`submitted 3GPP document. Now, to meet this same claim limitation, Petitioner relies
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`on another Samsung-submitted 3GPP document from the same meeting that again
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`teaches a BCCH RNTI, rather than SI-RNTI. Despite this repeated argument,
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`Petitioner fails to suggest any error in the examiner’s analysis and allowance.
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`The Board’s § 325(d) analysis is guided by the Advanced Bionics two-part
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`framework. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH,
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`IPR2019-01469, Paper 6 at 9-10 (precedential). First, the Board considers whether
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`“the same or substantially the same” art or arguments were previously presented to
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`the Office. Id., 8. If so, the Board considers whether the Petition demonstrates that
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`the Office “erred in a manner material to the patentability of the challenged claims.”
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`Id. Here, the Petition relies upon the same arguments and substantially the same prior
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`art as considered during prosecution yet fails to point out any error by the Office. In
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`other words, Petitioner implicitly asks the Board to second-guess express
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`determinations by the examiner without any basis for doing so. This alone warrants
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`discretionary denial under § 325(d). See, e.g., Fustibal LLC v. Bayer HealthCare
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`LLC, IPR2016-01490, Paper 9 at 11 (PTAB Feb. 8, 2017).
`
`Relevant Prosecution History
`A.
`Both the prosecution history of the ’357 Patent and the ’355 Patent are
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`relevant because the ’355 Patent is a continuation of the ’357 Patent that shares a
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`common specification, both patents were pending with the same examiner, and the
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`applicant used similar amendments involving the use of SI-RNTIs to overcome the
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`examiner’s rejections in both applications.
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`Prosecution History of the ’357 Patent
`1.
`The application leading to the ’357 Patent was filed on April 10, 2008 as a
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`PCT application. Ex. 1001, Code 22. It entered the national stage in the U.S. on
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`December 11, 2009. Id., Code 86. In the first Office Action, the examiner rejected
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`all pending claims. Ex. 2002, 191. Specially, claims 1-4,7-10, 12, 15, 18, 21, and 25
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`were rejected under 35 U.S.C. § 102 in view of R2-072205 (Ex. 2003, “the Samsung
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`Proposal”), a 3GPP document related to system information. Id., 192. This document
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`was submitted by Samsung during meeting #58 of the RAN2 working group in
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`Kobe, Japan (i.e., during the same meeting as the Samsung Liaison document cited
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`in the Petition). Ex. 2003, 1. The examiner rejected the other pending claims under
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`35 U.S.C. § 103 using other references combined with the Samsung Proposal. See
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`Ex. 2002, 195-198.
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`One such rejection was dependent claim 5, which required using an “RNTI”
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`as the claimed “indicator”:
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`Id., 119. Notably, this claim is identical to the originally pending dependent claim 5
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`discussed below with respect to the ’355 patent. See Section V.A.2. The examiner
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`rejected this claim using the Samsung Proposal in view of another 3GPP document
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`submitted by Samsung to the RAN2#58 meeting, R2-071912 (Ex. 2004, “the
`
`Samsung Discussion document”).
`
`The Samsung Discussion document is a detailed, six-page “discussion and
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`decision” document that “discusses the further details of the scheduling information
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`including what information is provided via the PDCCH.” Ex. 2004, 1. In his
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`rejection of pending dependent claim 5, the examiner explained that the primary
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`reference, the Samsung Proposal, “does not very explicitly show it comprises using
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`an RNTI (Radio Network Temporary Identifier) to denote that the subframe carries
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`system information,” but that the Samsung Discussion document “explicitly teaches
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`subframes indicators are in RNTI format (page 3 bottom).” Ex. 2002, 196.3 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
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`carried on the PDCCH:
`
`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.
`
`Eventually, applicant added dependent claim 27:
`
`3 The Examiner made a similar rejection for pending dependent claim 5 with
`
`respect to the ’355 Patent. See Ex. 2007, 163-164.
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`13
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`Id., 347. Like dependent claim 5 discussed above, dependent claim 27 required using
`
`an 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.
`
`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 of allowance was subsequently
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`issued. Id., 412-419; 433. In the notice of allowance, the examiner specifically
`
`included the use of an SI-RNTI as the indicator in his reasons for allowance. See id.,
`
`438.
`
`Prosecution History of the ’355 Patent
`2.
`The prosecution of the ’357 was not the last time the examiner considered the
`
`Samsung Discussion document related to a limitation involving SI-RNTIs. The
`
`application leading to the ’355 Patent was filed on March 5, 2015 as a continuation
`
`of the ’357 Patent’s application. Ex. 2008, Code 22; Code 63. In the first Office
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`Action, the examiner rejected all pending claims on the grounds of nonstatutory
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`14
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`double Patenting over U.S. Patent No. 8,995,357 and under 35 U.S.C. § 103 in view
`
`of several prior art references. Ex. 2007, 128-144. The primary reference was once
`
`again the Samsung Proposal discussed above.
`
`The examiner rejected pending dependent claim 5 (shown below), which was
`
`identical to originally pending claim 5 discussed above with respect to the ‘357
`
`Patent, relying again on the Samsung Discussion document for the key disclosure.
`
`See id., 163-164.
`
`Id., 79.
`
`In response to this rejection of dependent claim 5, the Applicant 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
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`subframes containing the system information.” Id., 190. In response to these
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`amendments and arguments, the examiner issued a notice of allowance without
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`comment. Id., 269-271. Accordingly, the examiner was convinced that a teaching of
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`15
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`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
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`limitation recited in the ’357 Patent. Petition, 20-21.
`
`B.
`
`The Petition presents substantially the same prior art and
`arguments as were previously considered by the office.
`The first prong of the Advanced Bionics framework considers “whether the
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`same or substantially the same art previously was presented to the Office or whether
`
`the same or substantially the same arguments previously were presented to the
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`Office…” Advanced Bionics at 8. For this prong, the Board considers the following
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`Becton, Dickinson factors:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination; and
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguishes the
`prior art;
`Advanced Bionics at 10 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG,
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`IPR2017-01586, Paper 8 (Dec. 15, 2017) (informative)).
`
`Here, all three factors illustrate that Petitioner is asking the Board to second-
`
`guess the previous work of the Patent Office. Petitioner simply repeats the same
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`16
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`arguments overcome during prosecution—and does so with substantially similar, but
`
`even less robust versions of the documents considered by the examiner.
`
`Factor (a): The Samsung Liaison document is substantially
`1.
`similar to the Samsung documents evaluated during examination.
`Although the Samsung Liaison document was not cited during prosecution, it
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`is substantially similar to the two Samsung documents used by the examiner to reject
`
`the pending claims: R2-072205 (the Samsung Proposal) and R2-071912 (the
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`Samsung Discussion document). It provides no new information beyond what was
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`provided in the previous two considered references.
`
`All three documents relate to system information and were submitted by
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`Samsung during meeting #58 of the RAN2 working group in Kobe, Japan, as
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`illustrated by their headers below:
`
`R2-072205 (Samsung Proposal cited by examiner)
`
`Ex. 2003, 1.
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`R2-071912 (Samsung Discussion document cited by examiner)
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`17
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`Ex. 2004, 1.
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`R2-072183 (Samsung Liaison document cited in Petition)
`
`Ex. 1005, 1.
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`Not surprisingly, there is significant overlap in the content of these three
`
`Samsung documents. For example, the Samsung Proposal cited by the examiner as
`
`the primary reference and the Samsung Liaison document cited in the Petition
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`contain the same list of decisions made during the Kobe meeting:
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`R2-072205 (Samsung Proposal cited by examiner)
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`18
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`Ex. 2003, 1.
`R2-072183 (Samsung Liaison document cited in Petition)
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`Ex. 1005, 3.
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`19
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`IPR2022-00338
`Patent Owner’s Preliminary Response
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`More importantly, the portion of the Samsung Discussion document cited to
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`by the examiner and overcome during prosecution is substantially similar to the
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`portion of the Samsung Liaison document now relied upon in the Petition. Both teach
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`using a RNTI in association with transmitting system information in the BCCH:
`
`R2-071912 (Samsung Discussion document cited by examiner)
`
`Ex. 2004, 3.
`R2-072183 (Samsung Liaison document cited in Petition)
`
`Ex. 1005, 1.
`Petitioner fails to explain how the Liaison document’s BCCH-related RNTI
`
`is materially—if at all—different from the Discussion document’s BCCH-related
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`RNTI. And Petitioner could not have made such an explanation. The two disclosures
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`are substantively the same in that they both (i) describe a “RNTI” that is related to
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`system information on the BCCH and associated with the PDCCH, and (ii) are
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`contained in documents submitted by the same contributor to the same meeting. Ex.
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`2001, ¶50. Further, it is likely that “the BCCH RNTI” in the Liaison document refers
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`to the RNTI that indicates BCCH changes discussed in the Samsung Discus
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