Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Date: September 9, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00338
`Patent 8,995,357 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Date: September 9, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00338
`Patent 8,995,357 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2022-00338
`Patent 8,995,357 B2
`
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–4, 6–10, 12, 14–17, and 19–24 in U.S. Patent
`
`No. 8,995,357 B2 (Exhibit 1001, “the ’357 patent”) under 35 U.S.C.
`
`§§ 311–319. Paper 2 (“Pet.”). Telefonaktiebolaget LM Ericsson (“Patent
`
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether
`
`to institute an inter partes review. We may institute an inter partes review
`
`only if “the information presented in the petition filed under section 311
`
`and any response filed under section 313 shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The
`
`“reasonable likelihood” standard is “a higher standard than mere notice
`
`pleading” but “lower than the ‘preponderance’ standard to prevail in a final
`
`written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`
`Based on the current record and for the reasons explained below,
`
`Petitioner has shown that there is a reasonable likelihood that it would
`
`prevail with respect to at least one of the challenged claims. Thus, we
`
`institute an inter partes review of claims 1–4, 6–10, 12, 14–17, and 19–24
`
`in the ’357 patent on all challenges included in the Petition.
`
`II. BACKGROUND
`
`A. Real Parties in Interest
`
`Petitioner identifies itself as the real party in interest. Pet. 83. Patent
`
`Owner identifies the following real parties in interest: Telefonaktiebolaget
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`LM Ericsson and Ericsson Inc. Paper 3, 2. The parties do not raise any
`
`issue about real parties in interest.
`
`B. Related Matters
`
`Petitioner and Patent Owner identify the following Board proceeding
`
`as a related matter involving a challenge to the ’357 patent: Samsung
`
`Electronics Co. v. Telefonaktiebolaget LM Ericsson, IPR2021-00450 (PTAB
`
`Feb. 5, 2021). Pet. 83–84; Paper 3, 2. Petitioner states that this proceeding
`
`“was dismissed prior to institution before a preliminary response was filed.”
`
`Pet. 83–84; see id. at 2–3.
`
`Patent Owner identifies the following International Trade
`
`Commission (ITC) investigation as a related matter involving a patent
`
`related to the ’357 patent: In re Certain Mobile Telephones, Tablet
`
`Computers with Cellular Connectivity, and Smart Watches with Cellular
`
`Connectivity, Components Thereof, and Products Containing Same,
`
`No. 337-TA-1299 (the “1299 ITC investigation”). Prelim. Resp. 44–45;
`
`see Ex. 2009, 1.
`
`C. The ’357 Patent (Exhibit 1001)
`
`The ’357 patent, titled “Transmission of System Information on
`
`a Downlink Shared Channel,” issued on March 31, 2015, from a PCT
`
`application filed in Sweden on April 10, 2008. Ex. 1001, codes (22), (45),
`
`(54), (86). The patent states that the invention “generally relates to wireless
`
`communication networks, and particularly relates to the transmission of
`
`system information to user equipment (UE) operating in such networks,”
`
`such as “the transmission of system information by radio base stations in a
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`wireless communication network configured according to 3GPP E-UTRA
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`(evolved Universal Terrestrial Radio Access) standards, also referred to as
`
`3GPP LTE (Long Term Evolution).” Id. at 1:7–14; see id. at code (57).
`
`The ’357 patent explains that the “system information can be divided
`
`into two parts, one part being fixed and the other part being dynamic.”
`
`Ex. 1001, 1:62–63. A base station may transmit (1) the fixed part of the
`
`system information on the Broadcast Channel (BCH) transport channel and
`
`(2) the dynamic part of the system information on the Downlink Shared
`
`Channel (DL-SCH) transport channel. Id. at 2:4–12, 2:18–20.
`
`The ’357 patent also explains that the “dynamic part of the system
`
`information is divided into different so-called scheduling units, also referred
`
`to as System Information Messages.” Ex. 1001, 2:25–27. “In general,
`
`information corresponding to scheduling unit number n should be repeated
`
`more often than information corresponding to scheduling unit number n+1.”
`
`Id. at 2:28–30. For instance, “scheduling unit #1 (SU-1) may be repeated
`
`(approximately) once every 80 ms, scheduling unit #2 (SU-2) may be
`
`repeated (approximately) once every 160 ms, scheduling unit #3 (SU-3) may
`
`be repeated (approximately) once every 320 ms, etc.” Id. at 2:30–35.
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`4
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`The ’357 patent’s Figure 1 (reproduced below) depicts an
`
`embodiment of a wireless network:
`
`
`
`Figure 1 “is a block diagram of an embodiment of a wireless network that
`
`overlays or otherwise defines a recurring sequence of time windows for the
`
`transmission of dynamic system information using subframes falling within
`
`the defined time windows.” Ex. 1001, 2:66–3:3, Fig. 1.
`
`Figure 1 illustrates “wireless network 100 including one or more
`
`network transmitters 110 such as a radio base station which services one
`
`or more UEs 120.” Ex. 1001, 3:28–30, Fig. 1. Network transmitter 110
`
`“includes a baseband processor 130 for generating one or more scheduling
`
`units 132 (also referred to as System Information Messages) including
`
`dynamic parts of the system information.” Id. at 3:30–34, Fig. 1. Network
`
`transmitter 110 “sends the scheduling units 132 to the UE 120” using
`
`different system-information time windows. Id. at 3:34–36.
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`The ’357 patent’s Figure 2 (reproduced below) depicts using different
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`system-information time windows:
`
`Figure 2 “is a diagram of an embodiment of different system-information
`
`time windows having different repetition periods.” Ex. 1001, 3:4–6, Fig. 2.
`
`In Figure 2, “SU-n” refers to “the nth scheduling unit 132,” e.g., SU-1,
`
`SU-2, and SU-3. Id. at 3:39–40, Fig. 2. Figure 2 shows three different
`
`repetition periods, with SU-1 having the shortest repetition period, SU-2
`
`having an intermediate repetition period, and SU-3 having the longest
`
`repetition period. See id. at 3:40–46, Fig. 2.
`
`The ’357 patent’s Figure 3 (reproduced below) depicts transmitting
`
`dynamic system information in recurring time windows:
`
`
`
`
`
`Figure 3 “is a diagram of an embodiment of overlaying or otherwise
`
`defining a recurring sequence of time windows for the transmission of
`
`dynamic system information using subframes falling within the defined
`
`time windows.” Ex. 1001, 3:7–10, Fig. 3.
`
`In Figure 3, “the system-information windows, more generally
`
`regarded as recurring time windows defined for the transmission of system
`
`6
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`information, start at subframe #5 of the frame with frame number 8*k and
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`have a size of 13 subframes.” Ex. 1001, 3:66–4:3, Fig. 3. Network
`
`transmitter 110 “only transmits the dynamic part of the system information
`
`within these windows.” Id. at 4:3–5. Further, “the window occurs (is
`
`repeated) often enough to fulfill the repetition rate of the most often repeated
`
`system information.” Id. at 4:5–7.
`
`The ’357 patent discloses that “the transmission of system information
`
`is carried out similar to the transmission of user data on DL-SCH,” i.e.,
`
`“dynamic resource and transport format with signaling on” a control
`
`channel, but “with some exceptions.” Ex. 1001, 4:10–14. “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.” Id. at 4:14–17. “Also, for the last piece of system
`
`information to be transmitted within the window, the SI-RNTI is replaced
`
`with an End-of-System-Information RNTI (ESI-RNTI).” Id. at 4:18–21.
`
`Because “the system information does not have to be transmitted in
`
`consecutive subframes,” network transmitter 110 “can dynamically avoid
`
`transmitting system information in certain subframes when a more pressing
`
`need for subframes arises, e.g., when a subframe is needed for high priority
`
`downlink data transmission or for uplink transmission.” Ex. 1001, 4:27–33.
`
`Additionally, network transmitter 110 “can dynamically vary the number of
`
`subframes used to carry system information without prior knowledge of the
`
`UE 120,” i.e., before the UE reads a control channel. Id. at 4:35–39.
`
`7
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`D. The Challenged Claims
`
`Petitioner challenges the following claims:
`
`•
`
`independent method claim 1 for a method of transmitting
`system information;
`
`• claims 2–4 and 6–8 that depend directly from claim 1;
`
`•
`
`•
`
`•
`
`independent apparatus claim 9 for a network transmitter;
`
`independent method claim 10 for a method of
`transmitting system information;
`
`independent method claim 12 for a method of receiving
`system information;
`
`• claims 14–16 that depend directly or indirectly from
`claim 12;
`
`•
`
`independent apparatus claim 17 for a mobile station;
`
`• claims 19–21 that depend directly from claim 17;
`
`•
`
`•
`
`•
`
`independent method claim 22 for a method of
`transmitting system information;
`
`independent method claim 23 for a method of
`transmitting system information; and
`
`independent method claim 24 for a method of
`transmitting system information.
`
`Pet. 1, 6–83.
`
`Claim 1 exemplifies the challenged claims and reads as follows (with
`
`formatting added for clarity and numbers and letters added for reference
`
`purposes):1
`
`
`1 We use the same numbers and letters that Petitioner uses to identify the
`claim language. See Pet. v (Listing of Challenged Claims).
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`8
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`1. [1p] A method of transmitting system information on a
`downlink shared channel of a wireless communication network,
`comprising:
`
`[1a] transmitting system information on the downlink
`shared channel in recurring time windows,
`
`[1b] each time window spanning a plurality of
`subframes;
`
`[1c] dynamically selecting which subframes within a
`given time window are to be used for carrying the system
`information; and
`
`[1d] including an indicator in each of the selected
`subframes to indicate to receiving user equipment that the
`subframe carries system information,
`
`[1e] wherein the wireless communication network is
`configured for operation in accordance with 3GPP E-UTRA
`standards and
`
`[1f] wherein the indicator is a System information Radio
`Network Temporary Identifier (SI-RNTI).
`
`Ex. 1001, 6:46–61.
`
`E. The Asserted References
`
`For its challenges, Petitioner relies on the following references:
`
`Reference
`
`Exhibit
`
`US 2010/0167746 A1, published July 1, 2010
`(based on an application filed Mar. 19, 2007)
`
`1004
`
`1005
`
`1006
`
`1007
`
`Name
`
`Lee-746
`
`R2-072183
`
`3GPP TSG RAN WG2#58, R2-072183, titled
`“System Information” (May 2007)
`
`Lee-668
`
`US 2008/0285668 A1, published Nov. 20, 2008
`(based on an application filed Oct. 25, 2006)
`
`R2-071762
`
`3GPP TSG-RAN WG2 #58, R2-071762, titled
`“Scheduling of D-BCH” (May 2007)
`
`9
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`Name
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`Reference
`
`Exhibit
`
`R2-071911
`
`3GPP TSG-RAN WG2 Meeting #58, R2-071911,
`titled “System Information Structure (with TP)”
`(May 2007)
`
`Mukherjee
`
`US 2007/0263528 A1, published Nov. 15, 2007
`(based on an application filed Oct. 2, 2006)
`
`Classon
`
`US 2007/0064669 A1, published Mar. 22, 2007
`(based on an application filed Mar. 20, 2006)
`
`R2-071337
`
`3GPP TSG-RAN2 Meeting #57bis, R2-071337,
`titled “System Information Scheduling and
`Change Notification” (Mar. 2007)
`
`1012
`
`1014
`
`1015
`
`1018
`
`Pet. 1–2, 6–83. Petitioner asserts that R2-072183, R2-071762, R2-071911,
`
`Classon, and R2-071337 qualify as prior art under § 102(a) and that
`
`Lee-746, Lee-668, and Mukherjee qualify as prior art under § 102(e). Id.
`
`at 2; see 35 U.S.C. § 102(a), (e) (2006).2
`
`At this stage of the proceeding, Patent Owner does not dispute that
`
`each reference qualifies as prior art. See, e.g., Prelim. Resp. 27–50.
`
`F. The Asserted Challenges to Patentability
`
`Petitioner asserts the following challenges to patentability:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 2, 9, 10, 22, 24
`
`103(a)
`
`Lee-746, Lee-668, R2-072183
`
`3, 23
`
`103(a)
`
`4
`
`103(a)
`
`Lee-746, Lee-668,
`R2-072183, R2-071911
`
`Lee-746, Lee-668,
`R2-072183, Mukherjee
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the effective filing date of the challenged claims
`predates the AIA’s amendments to § 102 and § 103, this decision refers to
`the pre-AIA versions of § 102 and § 103.
`
`10
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`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`6, 7
`
`8
`
`103(a)
`
`103(a)
`
`12, 17
`
`103(a)
`
`14, 15, 19, 20
`
`103(a)
`
`16, 21
`
`103(a)
`
`Lee-746, Lee-668,
`R2-072183, Classon
`
`Lee-746, Lee-668,
`R2-072183, R2-071762
`
`Lee-746, R2-072183,
`R2-071337
`
`Lee-746, R2-072183,
`R2-071337, Classon
`
`Lee-746, R2-072183,
`R2-071337, R2-071762
`
`Pet. 1–2, 6–83.
`
`G. Testimonial Evidence
`
`To support its challenges, Petitioner relies on the declaration of
`
`Jonathan Wells, Ph.D. (Exhibit 1003, “Wells Decl.”). Dr. Wells states,
`
`“I have been retained as a technical expert by counsel on behalf of”
`
`Petitioner and “have been asked to provide my independent analysis of the
`
`’357 patent in light of” certain prior art. Ex. 1003 ¶¶ 1–2.
`
`Petitioner also relies on the declaration of Friedhelm Rodermund
`
`(Exhibit 1035, “Rodermund Decl.”). Mr. Rodermund states, “I have been
`
`retained in this matter by” Petitioner “to provide testimony regarding
`
`3GPP’s standard business practices for record keeping and publishing
`
`technical specifications, change request proposals, reports, and other
`
`documents developed during the course of standards activities carried out
`
`by the 3rd Generation Partnership Project (‘3GPP’) and the European
`
`Telecommunications Standards Institute (‘ETSI’).” Ex. 1035 ¶ 1.
`
`To support its positions, Patent Owner relies on the declaration of
`
`Zygmunt J. Haas, Ph.D. (Exhibit 2001, “Haas Decl.”). Dr. Haas states,
`
`11
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`“I have been asked to provide my opinions regarding whether claims 1–4,
`
`6–10, 12, 14–17, and 19–24” 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.” Ex. 2001
`
`¶ 3.
`
`III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d)
`
`Section 325(d) provides that “[i]n determining whether to institute” an
`
`inter partes review, “the Director may take into account whether, and reject
`
`the petition or request because, the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
`
`The Director “is permitted, but never compelled, to institute” an inter partes
`
`review. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir.
`
`2016).
`
`A. The Advanced Bionics Framework
`
`When deciding whether to exercise our discretion under § 325(d), we
`
`follow the two-part framework set forth in Advanced Bionics, LLC v. MED-
`
`EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB
`
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we must
`
`first determine “whether the 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 Office.” Advanced Bionics,
`
`Paper 6 at 8. That determination involves “two separate issues” as follows:
`
`(1)
`
`“whether the petition presents to the Office the same
`or substantially the same art previously presented to
`the Office”; and
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`(2)
`
`“whether the petition presents to the Office the same
`or substantially the same arguments previously presented
`to the Office.”
`
`Id. at 7.
`
`If “either condition of first part of the framework is satisfied,” we
`
`must then determine “whether the petitioner has demonstrated that the
`
`Office erred in a manner material to the patentability of challenged claims.”
`
`Advanced Bionics, Paper 6 at 8. “An example of a material error may
`
`include misapprehending or overlooking specific teachings of the relevant
`
`prior art where those teachings impact patentability of the challenged
`
`claims.” Id. at 8 n.9.
`
`When deciding whether to exercise our discretion under § 325(d)
`
`in view of the Advanced Bionics framework, we weigh the following
`
`nonexclusive factors:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`the similarities and material differences between the
`asserted references and the prior art involved during
`prosecution;
`
`the cumulative nature of the asserted references and
`the prior art evaluated during prosecution;
`
`the extent to which the asserted references were
`evaluated during prosecution, including whether
`a rejection rested on any reference;
`
`the extent of overlap between the arguments made during
`prosecution and Petitioner’s reliance on the asserted
`references or Patent Owner’s contentions concerning
`them;
`
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in analyzing the asserted references; and
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`(f)
`
`the extent to which additional evidence and facts
`presented in the petition warrant reconsideration
`of the asserted references or arguments.
`
`See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
`paragraph) (“Becton”).
`
`B. Summary of the ’357 Patent’s Prosecution
`
`The following summary of the ’357 patent’s prosecution provides
`
`background that will assist in explaining our analysis.
`
`In December 2009, Patent Owner filed a U.S. national stage
`
`application based on a PCT application filed in Sweden in April 2008.
`
`Ex. 2002, 71–107; see Ex. 1001, codes (22), (86). As amended by a
`
`contemporaneous preliminary amendment, representative application
`
`claims 1 and 5 read as follows:3
`
`1. A method of transmitting system information on the
`downlink of a wireless communication network comprising:
`
`transmitting system information in recurring time
`windows overlaid on a sequence of transmit channel subframes;
`
`dynamically selecting which subframes within a given
`time window are to be used for carrying the system
`information; and
`
`including an indicator in each of the selected subframes
`to indicate to receiving user equipment that the subframe carries
`system information.
`
`5. The method of claim 1, wherein including an indicator in
`each of the selected subframes to indicate to receiving user
`equipment that the subframe carries system information
`comprises using an RNTI (Radio Network Temporary
`
`
`3 In this summary of the ’357 patent’s prosecution, the claim numbers
`reference the application claims, not the patent claims.
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`14
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`Identifier) to denote that the subframe carries system
`information.
`
`Ex. 2002, 2.
`
`In a December 2011 Office action, the Examiner rejected claims 1–4,
`
`7–10, 12, 15, 18, 21, and 25 under § 102(a) as anticipated by R2-072205.4
`
`Ex. 2002, 190–95. The Examiner rejected claim 5 under § 103(a) as obvious
`
`over R2-072205 and R2-071912.5 Id. at 196. The Examiner explained that
`
`“R2-071912 explicitly teaches subframes indicators are in RNTI format.”
`
`Id. As for the other pending claims, the Examiner rejected each claim under
`
`§ 103(a) as obvious over one of the following combinations of references:
`
`R2-072205 and Marinier;6 or R2-072205 and Kashima.7 Id. at 196–98.
`
`In a June 2012 response to the December 2011 Office action, Patent
`
`Owner amended various claims but did not amend claim 5. Ex. 2002,
`
`215–21. Further, Patent Owner argued that various claims distinguish over
`
`the references. Id. at 223–28. For instance, Patent Owner asserted that
`
`R2-072205 fails to disclose claim 1’s “dynamically selecting” and
`
`“including an indicator” limitations. Id. at 223–25. Regarding R2-072205’s
`
`
`4 See 3GPP TSG-RAN2 Meeting #58, R2-072205, titled “Draft Text
`Proposal Capturing Agreements on System Information” (May 2007)
`(“R2-072205”) (Ex. 2003).
`5 See 3GPP TSG-RAN2 Meeting #58, R2-071912, titled “System
`Information Scheduling and Change Notification” (May 2007)
`(“R2-071912”) (Ex. 2004).
`6 See U.S. Patent Application Publication No. 2008/0225765 A1, titled
`“Method and Apparatus for Reordering Data in an Evolved High Speed
`Packet Access System,” to Marinier et al. (“Marinier”).
`7 See U.S. Patent Application Publication No. 2007/0217362 A1, titled
`“Amended Control for Resource Allocation in a Radio Access Network,”
`to Kashima et al. (“Kashima”).
`
`15
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`IPR2022-00338
`Patent 8,995,357 B2
`
`value tags that the Examiner mapped to the claimed “indicator in each of the
`
`selected subframes,” Patent Owner asserted that the value tags “are simply
`
`not ‘in each of the selected subframes.’” Id. at 224. Patent Owner made no
`
`arguments about claim 5’s RNTI indicator or R2-071912. Id. at 223–28.
`
`In an October 2012 Office action, the Examiner rejected claims 1–4
`
`and 7–12 under § 103(a) as obvious over R2-072205, Arundale, and
`
`Dimou.8 Ex. 2002, 236–40. The Examiner rejected claim 5 under § 103(a)
`
`as obvious over R2-072205, Arundale, Dimou, and R2-071912. Id. at
`
`243–44. The Examiner again explained that “R2-071912 explicitly teaches
`
`subframes indicators are in RNTI format.” Id. at 244. As for the other
`
`pending claims, the Examiner rejected each claim under § 103(a) as obvious
`
`over one of the following combinations of references: R2-072205, Arundale,
`
`Dimou, and Love;9 R2-072205, Arundale, Dimou, Love, and Marinier; or
`
`R2-072205, Arundale, Dimou, and Kashima. Id. at 240–46.
`
`In March 2013, Patent Owner filed a Request for Continued
`
`Examination (RCE) along with an amendment that amended various claims
`
`but did not amend claim 5. Ex. 2002, 291–300. Further, Patent Owner
`
`argued that various claims distinguish over the references. Id. at 301–12.
`
`For instance, Patent Owner asserted that R2-072205, Arundale, and Dimou
`
`
`8 See U.S. Patent No. 7,675,852 B1, titled “System and Method of Providing
`Bounded Dynamic Waveform Allocation for Software Defined Radios,” to
`Arundale et al. (“Arundale”); U.S. Patent Application Publication No. 2009/
`0131057 A1, titled “Neighboring Cell Interference Management in SC-
`FDMA,” to Dimou (“Dimou”).
`9 See U.S. Patent Application Publication No. 2004/0219917 A1, titled
`“HARQ ACK/NAK Coding for a Communication Device During Soft
`Handoff,” to Love et al. (“Love”).
`
`16
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`fail to teach or suggest claim 1’s “transmitting,” “dynamically selecting” and
`
`“including an indicator” limitations. Id. at 302–09.
`
`Regarding R2-072205’s value tags that the Examiner mapped to the
`
`claimed “indicator in each of the selected subframes,” Patent Owner argued
`
`that “these value tags are carried in the” Master Information Block, which
`
`“is NOT part of SU-1, SU-2, or SU-3,” i.e., various scheduling units that
`
`span one or more subframes. Ex. 2002, 307; see Ex. 2003, 6. Patent Owner
`
`also argued that “there are simply not multiple subframes of the same ‘time
`
`window’” in R2-072205 “that carry indicators.” Ex. 2002, 307. Patent
`
`Owner made no arguments about claim 5’s RNTI indicator or R2-071912.
`
`Id. at 301–12.
`
`In an August 2013 Office action, the Examiner rejected claims 1–4
`
`and 7–12 under § 103(a) as obvious over R2-072205, Arundale, Dimou, and
`
`Nguyen.10 Ex. 2002, 324–29. The Examiner rejected claim 5 under
`
`§ 103(a) as obvious over R2-072205, Arundale, Dimou, Nguyen, and
`
`R2-071912. Id. at 333. The Examiner again explained that “R2-071912
`
`explicitly teaches subframes indicators are in RNTI format.” Id. As for the
`
`other pending claims, the Examiner rejected each claim except claim 26
`
`under § 103(a) as obvious over one of the following combinations of
`
`references: R2-072205, Arundale, Dimou, Love, and Cheng;11 R2-072205,
`
`Arundale, Dimou, Love, Nguyen, and Marinier; or R2-072205, Arundale,
`
`
`10 See U.S. Patent Application Publication No. 2006/0034245 A1, titled
`“Method and Apparatus for Wireless Communication Network Operating
`in Compressed Mode,” to Nguyen (“Nguyen”).
`11 See U.S. Patent No. 7,680,507 B2, titled “Shared Control and Signaling
`Channel for Users Subscribing to Data Services in a Communication
`System,” to Cheng et al. (“Cheng”).
`
`17
`
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`Dimou, and Kashima. Id. at 329–36. The Examiner objected to claim 26
`
`“as being dependent upon a rejected base claim” but noted that claim 26
`
`“would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and all intervening claims.” Id. at 326
`
`(emphases omitted).
`
`In a January 2014 response to the August 2013 Office action, Patent
`
`Owner amended various claims, e.g., by rewriting claim 26 in independent
`
`form, but did not amend claim 5. Ex. 2002, 340–47. Patent Owner also
`
`added claims 27–32. Id. at 347–50. Further, Patent Owner argued that
`
`various claims distinguish over the references. Id. at 352–64. For instance,
`
`Patent Owner asserted that R2-072205, Arundale, Dimou, and Nguyen fail
`
`to teach or suggest claim 1’s “transmitting,” “dynamically selecting,” and
`
`“including an indicator” limitations. Id. at 353–60.
`
`Regarding R2-072205’s value tags that the Examiner mapped to the
`
`claimed “indicator in each of the selected subframes,” Patent Owner argued
`
`that “these value tags are carried in the” Master Information Block, which
`
`“is NOT part of SU-1, SU-2, or SU-3,” i.e., various scheduling units that
`
`span one or more subframes. Ex. 2002, 358; see Ex. 2003, 6. Patent Owner
`
`also argued that “there are simply not multiple subframes of the same ‘time
`
`window’” in R2-072205 “that carry indicators.” Ex. 2002, 358. Patent
`
`Owner made no arguments about claim 5’s RNTI indicator or R2-071912.
`
`Id. at 352–64.
`
`In a May 2014 Office action, the Examiner again rejected claims 1–4
`
`and 7–12 under § 103(a) as obvious over R2-072205, Arundale, Dimou, and
`
`Nguyen. Ex. 2002, 371–77. The Examiner again rejected claim 5 under
`
`§ 103(a) as obvious over R2-072205, Arundale, Dimou, Nguyen, and
`
`18
`
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`R2-071912. Id. at 381–82. The Examiner again explained that “R2-071912
`
`explicitly teaches subframes indicators are in RNTI format.” Id. at 381. As
`
`for the other pending claims, the Examiner rejected each claim except claims
`
`26–32 under § 103(a) as obvious over one of the following combinations of
`
`references: R2-072205, Arundale, Dimou, Love, and Cheng; R2-072205,
`
`Arundale, Dimou, Love, Nguyen, and Marinier; or R2-072205, Arundale,
`
`Dimou, and Kashima. Id. at 377–84. The Examiner stated that claims
`
`26–32 “are allowed over the prior art of record.” Id. at 373.
`
`In a July 2014 response to the May 2014 Office action, Patent Owner
`
`argued that the rejected independent claims distinguish over the references.
`
`Ex. 2002, 388, 399–401. Patent Owner made no arguments about claim 5’s
`
`RNTI indicator or R2-071912. Id. at 399–400.
`
`In a September 2014 supplemental response to the May 2014 Office
`
`action, Patent Owner amended the rejected independent claims to include the
`
`following limitations from dependent claims that the Examiner indicated
`
`were allowable: (1) “wherein the wireless communication network is
`
`configured for operation in accordance with 3GPP E-UTRA standards”;
`
`and (2) “wherein the indicator is a System information Radio Network
`
`Temporary Identifier (SI-RNTI).” Ex. 2002, 411–17. Patent Owner
`
`canceled the corresponding dependent claims. Id. at 418.
`
`In a November 2014 Notice of Allowability, the Examiner provided
`
`the following statement of reasons for allowance:
`
`With respect to claim 1, 10, 12, 15, 21, the prior art, either
`alone or in combination, fails to teach the feature of
`“transmitting system information on the 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
`
`19
`
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`
`information and wherein the indicator is a System information
`Radio Network Temporary Identifier (SI-RNTI)”.
`
`Ex. 2002, 435, 437–38.
`
`In March 2015, the ’357 patent issued. Ex. 1001, code (45).
`
`C. Patent Owner’s Assertions
`
`Patent Owner asserts that R2-072183 cited in the Petition is
`
`“substantially similar” and “cumulative” to R2-071912 and R2-072205 cited
`
`by the Examiner during the ’357 patent’s prosecution. Prelim. Resp. 17,
`
`21–22. In particular, Patent Owner contends that all three documents “relate
`
`to system information and were submitted by Samsung during meeting #58
`
`of the RAN2 working group in Kobe, Japan.” Id. at 17–18. Patent Owner
`
`also contends that R2-072183 and R2-072205 “contain the same list of
`
`decisions made during the Kobe meeting.” Id. at 18–19.
`
`Patent Owner asserts that R2-072183 presents “no new information as
`
`compared to the what” the Examiner considered in R2-071912 because both
`
`documents “describe a ‘RNTI’ that is related to system information on the
`
`BCCH and associated with the PDCCH.” Prelim. Resp. 20–21 (emphasis
`
`omitted). According to Patent Owner, R2-072183’s disclosure of a “BCCH-
`
`related RNTI” is “substantially similar” to “the previously-cited BCCH-
`
`related RNTI” in R2-071912. Id. at 21. Patent Owner also asserts that
`
`Petitioner relies on R2-072183’s “BCCH-related RNTI” in the “same
`
`manner” as the Examiner relied on R2-071912’s “BCCH-related RNTI,” in
`
`particular, “to fill a gap in the primary reference of a RNTI that indicates
`
`system information.” Id. at 23.
`
`Further, Patent Owner asserts that Petitioner “fails to suggest any
`
`error” in the Examiner’s finding that R2-071912’s “BCCH-related RNTI”
`
`20
`
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`does not teach the claimed SI-RNTI. Prelim. Resp. 25. According to Patent
`
`Owner, “the Petition can be viewed merely as a general disagreement
`
`regarding” the Examiner’s treatment of the art. Id. at 26.
`
`D. Analysis
`
`As explained below, we have analyzed the Becton factors in view of
`
`the Advanced Bionics framework and the record before us, and we determine
`
`that, on balance, the factors do not favor denying an inter partes review.
`
`1. THE FIRST PART OF THE ADVANCED BIONICS FRAMEWORK
`
`Under the Advanced Bionics framework, we initially consider Becton
`
`factors (a), (b), and (d) in determining “whether the 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 Office.”
`
`Advanced Bionics, Paper 6 at 8, 10. Becton factors (a) and (b) “broadly
`
`provide guidance as to whether the art presented in the petition is the ‘same
`
`or substantially the same’ as the prior art previously presented to the Office
`
`during any proceeding.” Id. at 10 (emphasis in the original). “Previously
`
`presented art includes art made of record by the Examiner, and art provided
`
`to the Office by an applicant,” e.g., with an information-disclosure
`
`statement. Id. at 7–8.
`
`(a) The Same or Substantially the Same Art
`
`For “the same or substantially the same art” inquiry under the
`
`Advanced Bionics framework, we disagree with Pat
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