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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________________
`
`Case IPR2022-00348
`Patent No. 10,484,915
`____________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2022-00348
`PATENT OWNER’S PRELIMINARY RESPONSE
`TABLE OF CONTENTS
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`The Petition fails because it does not demonstrate that any of its Grounds
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`The Petition’s prior art contentions must be assessed against the
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`Introduction .....................................................................................................1
`I.
`Background of the ’915 Patent and the challenged claims .............................3
`II.
`Person of ordinary skill in the art ....................................................................8
`III.
`IV. Claim construction ..........................................................................................9
`V.
`relies upon prior art .........................................................................................9
`A.
`Petition’s November 4, 2016 assumed critical date ........................................9
`B.
`Petition relies upon ........................................................................................15
`C.
`Abedini provisionals disclose the subject matter relied upon .......................18
`D.
`Petition relies upon ........................................................................................22
`i. The Agiwal Provisional does not disclose the subject matter the
`Petition relies upon .............................................................................22
`ii. The Abedini Provisional does not disclose the subject matter the
`Petition relies upon .............................................................................27
`VI. Conclusion .....................................................................................................30
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`To establish that Agiwal and Abedini are prior art, the Petition must
`show with particularity that their provisionals disclose the subject matter the
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`The Petition does not even attempt to show that the Agiwal and
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`The Petition could not meet its burden because neither the Agiwal
`Provisional nor the Abedini Provisional discloses the subject matter the
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`- i -
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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`
`EXHIBIT LIST
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`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice
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`Exhibit No.
`2001
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`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
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`- ii -
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`I.
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`
`Case IPR2022-00348
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Introduction
`The Petition’s unpatentability theories compare the Petition’s alleged prior
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`art references to a critical date of November 4, 2016 for the challenged claims. Pet.
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`at 1. The Petition provides no other possible critical date for the challenged claims,
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`and raises no dispute as to whether the November 4, 2016 critical date should
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`apply. Accordingly, the Petition’s theories and evidence must be assessed against a
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`November 4, 2016 critical date. Section V.A, supra.
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`Each of the Petition’s three grounds, however, relies on references that on
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`their faces do not pre-date the critical date of the challenged claims. Agiwal, the
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`Petition’s primary reference for Grounds 1 and 2, was filed on February 27, 2017
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`and published on August 31, 2017. Abedini, the Petition’s sole reference for
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`Ground 3, was filed on October 20, 2017 and published on April 26, 2018.
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`The Petition contends that Agiwal and Abedini are nonetheless prior art
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`because each is entitled to the priority date of its underlying provisional
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`application. Pet. at 2.
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`To establish those assertions, however, it is well-settled that the Petition
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`must at least demonstrate that the Agiwal Provisional and the Abedini Provisional
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`each disclose the subject matter the Petition relies upon from Agiwal and Abedini.
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`Section V.B, supra.
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` 1
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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`But the Petition does not even attempt to make that showing, and thus fails
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`to meet its burden of demonstrating obviousness on that basis alone. Section V.C,
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`supra. Moreover, the Petition relies extensively on teachings from Agiwal and
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`Abedini that are entirely absent from the underlying provisionals, as this
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`Preliminary Response demonstrates in detail. Section V.D, supra. Abedini and
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`Agiwal thus cannot constitute prior art in view of the applicable critical date.
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`The Petition’s glaring deficiencies are unsurprising given its provenance.
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`Apple’s Petition is essentially a cut-and-paste of a prior petition filed by Samsung
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`challenging the same claims of U.S. Patent 10,484,915 (the “’915 Patent”). See
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`IPR2021-00644. Apple’s Petition essentially mirrors Samsung’s prior petition,
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`asserting the same grounds and arguments. Yet the ’915 Patent is not currently
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`asserted against Apple in any pending litigation, so Apple’s Petition is not a means
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`for “providing a quick and cost-effective alternative[] to litigation,” which is the
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`purpose of inter partes review as outlined in the legislative history. H.R. Rep. No.
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`112–98, pt. 1, at 40 (2011). The use of inter partes review in this manner
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`“frustrate[s] the purpose of the section as providing quick and cost-effective
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`alternatives to litigation” and “divert[s] resources from the research and
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`development of inventions.” See, e.g., id. at 40 (2011) (Legislative history
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`establishing inter partes review) (emphasis added).
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`2
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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`Because the Petition does not and cannot meet its burden of demonstrating
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`that Agiwal and Abedini are prior art, institution must be denied.
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`II. Background of the ’915 Patent and the challenged claims
`The ’915 Patent is directed to handover methods performed by a wireless
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`device for handing over the wireless device from a source cell to a target cell. See
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`Ex. 1001, Abstract.
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`The ’915 Patent teaches that “[o]ne of the design goals of the New Radio
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`(NR) for 5G wireless communication is to support operation on high frequencies
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`(e.g., 28 GHz), where massive beamforming is needed to maintain adequate radio
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`coverage. This has an impact on a number of system functions, including mobility
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`procedures such as handover (HO).” Id. 1001, Col 1:22-27. The ’915 patent
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`teaches “[t]he mechanisms designed in LTE for mobility do not provide sufficient
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`mechanisms for mobility in beam based systems. In particular, in a beam-based
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`system like NR, and especially in higher frequency bands, the serving radio link to
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`the UE may become impaired much more rapidly than in conventional LTE
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`deployments. As the UE is moving out of the current serving beam coverage area,
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`it may not be possible to conduct RRC signaling via the serving node to complete
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`the HO procedure.” Id. Col 1:48-56.
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`As shown in Figure 2 of the ’915 Patent, reproduced below, the cell
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`currently being used by a wireless device (WD) 210 may be referred to as a source
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`3
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`

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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`cell while the cell to which WD 210 is to be handed over may be referred to as a
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`target cell. While it may be that both the source cell and the target cell are provided
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`by the same network node, typically, the source cell is associated with network
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`node 220 and the target cell is a cell associated with a separate network
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`node 220 a. Id. Col 11: 32-44. Target network node 220 a uses a plurality of beams
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`in providing wireless coverage within the target cell. Id. Col 11:44-47.
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`The ’915 Patent teaches that the wireless interface 211 is configured to
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`receive a first handover message from network node 220. Id. Col 11:51-53. The
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`PATENT OWNER’S PRELIMINARY RESPONSE
`first handover message includes an identification of the target cell and access
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`information associated with the target cell, such as information related to the
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`beams provided by target network node 220 a for the target cell. Id. 11:56-60. The
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`beams provided may include all the beams associated with the target cell, or a
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`subset thereof. The subset may be a predetermined subset (e.g., certain beams
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`reserved for handover) or selected based on one or more conditions (e.g., current
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`load of the beams associated with the target cell). Id. 11:60-65. The access
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`information may be Random Access Channel (RACH) information associated with
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`the target cell, or it may include a random access preamble mapped to each of the
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`allowed beams of the target cell or it may include common random access
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`configuration information and dedicated random access resources for the allowed
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`beams. The allowed beams may be those beams which WD 210 will be allowed to
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`use to access the target cell. Id. Col 11:60-12:5.
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`The ’915 patent explains “[t]he handover message is determined and
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`transmitted by source network node 220. Specifically, interface 221 of source
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`network node 220 may receive certain information from target network
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`node 220 a (e.g., available beams, allowed beams, configuration/synchronization
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`information for the beams, etc.). Processing circuitry 222 may then use the
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`information along with information from WD 210 to determine the access
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`PATENT OWNER’S PRELIMINARY RESPONSE
`information that is to be included in the handover message provided to WD 210.”
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`Id., Col 12:10-15.
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`Processing circuitry 212 of wireless device 210 identifies at least one beam
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`from among the one or more beams of the target cell. If more than one beam is
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`provided, processor 212 may determine the beam best suited for WD 210. The
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`beam(s) is identified based on the identification of the target cell and the access
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`information from the first handover message. Id., Col 12:19-26.
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`The ’915 Patent explains “[o]nce processing circuitry 212 has selected the
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`appropriate beam, and any other handover pre-requisites have been satisfied,
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`wireless interface 211 may be configured to access the target cell using the
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`identified at least one beam. In some embodiments wireless interface 211 may
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`access the target cell using a contention based random access procedure.” Id. Col.
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`12:41-46.
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`Exemplary claim 1 of the ’915 Patent thus recites:
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`Element Claim 1
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`1[Pre]
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`A method performed by a wireless device for handover, the
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`method comprising:
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`1.a
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`receiving an RRC connection reconfiguration message from a
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`source network node associated with a source cell
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`PATENT OWNER’S PRELIMINARY RESPONSE
`the RRC connection reconfiguration message comprising an
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`1.b
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`identification of a target cell and access information associated
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`with the target cell,
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`1.c
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`wherein the target cell is different than the source cell and
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`comprises one or more beams to be transmitted by the target cell
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`and
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`1.d
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`the access information comprises beam related information that
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`comprises common random access configuration information
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`associated with the one or more beams and dedicated random
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`access configuration information associated with the one or more
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`beams;
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`1.e
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`identifying at least one beam transmitted from the target cell
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`from among the one or more beams of the target cell based on
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`the identification of the target cell and the access information
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`from the RRC connection reconfiguration message; and
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`1.f
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`accessing the target cell using the identified at least one beam.
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`The Petition challenges claims 1-15 of the ’915 Patent on three grounds. In
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`ground 1, the Petition relies on US Patent Application Publication Number
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`2017/0251460 filed by Agiwal et al. and published on August 31, 2017 (“Agiwal”)
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`(Ex. 1005) in view of 3GPP TS 36.331 V12.10.0 (2016-06), 3rd Generation
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`7
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`PATENT OWNER’S PRELIMINARY RESPONSE
`Partnership Project; Technical Specification Group Radio Access Network;
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`Evolved Universal Terrestrial Radio Access (E-UTRA); Radio Resource Control
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`(RRC); Protocol specification (Release 12) (“TS36.331”) (Ex. 1008 ). In ground 2,
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`the Petition relies on the combination of Agiwal in view of TS36.331 and further in
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`view of WO 2014/078676A2 filed by Murray et al. and published on May 22, 2014
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`(“Murray”) (Ex. 1009). In ground 3, the Petition relies solely on US Patent
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`Application Publication Number 2018/0115990 filed by Abedini et al. and
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`published on April 26, 2018 (“Abedini”) (Ex. 1010).
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`The Petition’s grounds are summarized in the table below.
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`Ground
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`References
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`Basis
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`Challenged
`Claims
`1-3, 6
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`8-10, 13-15
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`1-5, 7-12,
`14-15
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`1
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`2
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`3
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`Agiwal in view of TS36.331
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`Agiwal in view of TS36.331 and
`Murray
`Abedini
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`35 U.S.C. §
`103
`35 U.S.C. §
`103
`35 U.S.C. §
`103
`
`
`III. Person of ordinary skill in the art
`For purposes of this Preliminary Response, Patent Owner does not dispute
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`the Petition’s proposed level of skill for a person of skill in the art (“POSA”),
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`because the level of skill in the art is not necessary for addressing any disputes
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`between the parties.
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IV. Claim construction
`The Board does not construe claim terms unnecessary for resolving the
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`controversy. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
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`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No terms need be construed at
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`this stage. See Pet. at 2 (“Apple submits that all terms should be given their plain
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`meaning”).
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`V. The Petition fails because it does not demonstrate that any of its Grounds
`relies upon prior art
`A.
`The Petition’s prior art contentions must be assessed against the
`Petition’s November 4, 2016 assumed critical date
`The Petition assumes, and does not dispute, that the challenged claims of the
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`’915 patent are entitled to a critical date of November 4, 2016. Pet. at 1. The
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`Petition’s prior art contentions are made in reference to that critical date. Pet. at 2.
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`Because the Petition raises no dispute as to the priority date of the
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`challenged claims, and instead bases its argument around an earliest effective filing
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`date of November 4, 2016, Pet. at 1-2, Patent Owner has no burden at this stage to
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`demonstrate that the challenged claims are entitled to a November 4, 2016 priority
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`date. In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375-76 (Fed. Cir. 2016).
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`As the Federal Circuit explained in Magnum Oil Tools, the burden only shifts to
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`the patentee to demonstrate that its patent is entitled to a particular priority date if
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`the “patentee affirmatively seeks to establish a proposition not relied on by the
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`PATENT OWNER’S PRELIMINARY RESPONSE
`patent challenger and not a necessary predicate for the unpatentability claim
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`asserted—effectively an affirmative defense.” Id. But where (as here) the patentee
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`does not seek to challenge the petition’s position as to the patent’s critical date, and
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`instead argues “that the patent challenger failed to meet its burden of proving
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`obviousness,” “the notion of burden-shifting is inapposite.” Id. at 1376 (emphasis
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`original).
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`Consistent with Federal Circuit precedents and the law governing inter
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`partes review, Board decisions have repeatedly assessed the petition’s prior art
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`contentions against the petition’s own statements and assumptions as to the critical
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`date of the challenged claims.
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`In Comcast Cable Commc’ns, LLC v. Promptu Systems Corp., IPR2018-
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`00343, Paper 56 (PTAB July 18, 2019), for instance, the challenged patent was
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`filed on November 17, 2005. Id. at 69. The challenged patent, however, ultimately
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`claimed priority to a June 8, 2000 provisional application. Id. The petition
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`presented its theories based on a June 8, 2000 critical date—the date of the
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`challenged patent’s underlying provisional, not the filing date of the patent itself.
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`Id. at 68-69. The petition’s primary reference, Murdock, “was filed on November
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`15, 2000, after the June 8, 2000 effective filing date that was adopted in the
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`[p]etition.” Id. at 69. Murdock, however, claimed priority to a provisional filed in
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`1999, and petitioner argued that Murdock was prior art to the challenged claims
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`PATENT OWNER’S PRELIMINARY RESPONSE
`“because Murdock is entitled to the benefit of priority to the filing date of the
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`Murdock Provisional.” Id.
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`Once patent owner disputed the adequacy of the petition’s showing that
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`Murdock was in fact entitled to the priority date of the Murdock Provisional,
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`petitioner sought to argue that “Murdock still constitutes applicable prior art
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`because Murdock predates the actual filing date of the ’326 patent” and that “it was
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`incumbent on Patent Owner to establish entitlement to an earlier effective filing
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`date” prior to Murdock’s filing date, citing Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). Comcast, IPR2018-00343,
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`Paper 56 at 72.
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`The Board rejected petitioner’s argument and instead held petitioner to the
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`June 8, 2000 critical date that the petition had relied upon, without requiring any
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`showing from the patent owner that the challenged claims were in fact entitled to
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`the priority date of the challenged patent’s underlying provisional application. Id.
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`at 72-77.
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`The Board rested that decision on three bases. First, it explained that the
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`petition’s reliance on a June 8, 2000 critical date, and its lack of “any notice to
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`Patent Owner that any other date than June 8, 2000 need be considered as the
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`effective filing date,” constituted a “judicial admission” that was “binding” on
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`petitioner for purposes of the inter partes review and on appeal. Id. at 73.
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`PATENT OWNER’S PRELIMINARY RESPONSE
`Second, the Board emphasized that patent owners are “entitled to notice of
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`and a fair opportunity to meet the grounds of rejection based on due-process and
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`APA guarantees.” Id. at 73-74 (quoting In re NuVasive, Inc., 841 F.3d 966, 971
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`(Fed. Cir. 2016) and Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
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`2015)). The Board then held that “pursuant to . . . the APA’s requirement for notice
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`of and fair opportunity to meet the grounds of rejection, Petitioner’s adoption of an
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`effective filing date in its Petition acts as notice to Patent Owner of the scope of the
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`proceeding. . . .” Id. at 74. The Board thus distinguished the situation where a
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`petition operates based on an assumed critical date from petitioner’s cited passages
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`in Dynamic Drinkware, which were inapposite under such facts. Id. (“Thus, the
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`proceeding before us is distinct from Dynamic Drinkware cited by Petitioner.”).
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`Third, the Board held that “Petitioner must first raise the issue of entitlement
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`to any earlier effective filing date in order to require Patent Owner to establish that
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`the asserted claims in the [challenged] patent are entitled to the benefit of a filing
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`date (constructive or otherwise).” Id. Where a petition fails to dispute that the
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`challenged claims are entitled to their earliest effective filing date, and instead
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`simply states that the claims are entitled to a priority date “no earlier than” the
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`underlying provisional, the petition must be assessed against the date of the
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`challenged patent’s provisional application, without the need for any showing from
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`patent owner. Id. at 75 (“In the proceeding before us, the Petitioner states that ‘the
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`12
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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`effective filing date of the claims of the ’326 Patent is no earlier than June 8,
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`2000.’ Petitioner never raised any doubt as to this June 2000 priority date for the
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`’326 patent. Thus, in this circumstance, the effective filing date of the ’326 Patent
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`is June 8, 2000, without any additional showing from Patent Owner.”).
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`Numerous other Board decisions have reached the same conclusion and
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`operated on the same premises. See Ariosa Diagnostics, Inc. v. Illumina, Inc.,
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`IPR2014-01093, Paper 69 at 13-14 (PTAB Jan. 7, 2016) (“[T]here was no
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`argument in the Petition that the ’794 patent was not entitled to its earliest possible
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`effective filing date of September 2000. . . . [A]s Petitioner . . . never argued that
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`the ’794 patent was not entitled to its earliest effective filing date, it did not shift
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`the burden of production to Patent Owner to demonstrate that the ’794 patent was
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`entitled to its earliest effective filing date.”); Haag-Streit AG v. Eidolon Optical,
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`LLC, IPR2018-01309, Paper 14 at 7-9 (PTAB Jan. 11, 2019) (assessing petition
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`against the October 20, 1998 filing date of a prior application underlying the
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`challenged patent because “Petitioner’s positions as to the alleged prior art status
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`of Lys are based on the premise that the claims of the’394 patent are in fact entitled
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`to the effective filing date asserted by Patent Owner—October 20, 1998,”
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`including the petition’s assertion that Lys was prior art because it was entitled to
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`the date of its underlying provisional application, which predated October 20,
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`1998); Schlumberger Tech. Corp. v. Dynaenergetics Europe GmbH, PGR2021-
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`PATENT OWNER’S PRELIMINARY RESPONSE
`00089, Paper 13 at 6-7, 39-49 (PTAB Dec. 14, 2021) (assessing the petition based
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`on the petition’s “assertion that the earliest effective filing date of the ’696 patent
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`is July 17, 2018”).
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`Moreover, it is of no moment that the Petition here states that “Petitioner
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`does not concede that the ’915 Patent is entitled to the claimed priority.” Pet. at 1
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`n. 1. As the Board has held, a petition’s lack of concession that the critical date it
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`relies upon is the correct date has no effect when the petition “does not present any
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`arguments that another date is the proper priority date.” Google LLC v. Ikorongo
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`Tech. LLC, IPR2021-00058, Paper 14 at 7-8 (PTAB May 10, 2021) (relying on the
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`petition’s statement as to the challenged patent’s earliest possible priority date and
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`noting that “[w]hile not expressly conceding that this should be the priority date
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`accorded for the ’704 patent, Petitioner does not present any arguments that
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`another date is the proper priority date.”).
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`Accordingly, the Petition’s prior art contentions must be assessed against a
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`November 4, 2016 critical date for the challenged claims without the need for any
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`further showing from Patent Owner. Pet. at 1 (“each reference pre-dates November
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`4, 2016 (‘Critical Date’), which is the earliest date to which the ’915 patent claims
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`priority.”).
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`B.
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` Case IPR2022-00348
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`PATENT OWNER’S PRELIMINARY RESPONSE
`To establish that Agiwal and Abedini are prior art, the Petition
`must show with particularity that their provisionals disclose the
`subject matter the Petition relies upon
`The Petition’s first and second Grounds rely on Agiwal. Pet. at 1. Agiwal
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`was filed on February 27, 2017 and published on August 31, 2017. Thus, on its
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`face, Agiwal is not prior art to the ’915 patent. The Petition’s third and final
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`Ground relies on Abedini. Abedini was filed on October 20, 2017 and published on
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`April 26, 2018, and thus is also not prior art on its face.
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`To establish Agiwal and Abedini as prior art, the Petition in both instances
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`relies upon the filing dates of provisional applications underlying each reference.
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`Pet. at 2. With respect to Agiwal, the Petition claims the February 26, 2016 filing
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`date of U.S. provisional application 62/300,333, which it refers to as “Agiwal-
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`Prov1.” Id. For Abedini, the Petition claims the October 21, 2016 filing date of
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`U.S. provisional application 62/411,400, which it calls “Abedini-Prov1.” Id.
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`The burden of demonstrating that Agiwal and Abedini are in fact prior art,
`
`and thus entitled to the priority dates of the relied upon provisionals, lies with the
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`Petition. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380
`
`(Fed. Cir. 2015) (“placing the burden on Dynamic, the petitioner in the inter partes
`
`review, to prove that the prior art [ ] patent was entitled to the filing date of its
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`provisional application”).
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`PATENT OWNER’S PRELIMINARY RESPONSE
`As the Board and Federal Circuit have held, that burden as to the priority
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`date requires the Petition to prove that the subject matter the Petition relies upon
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`from each of Agiwal and Abedini was also fully disclosed in their respective
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`provisionals. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (requiring
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`that the provisional application disclose the subject matter relied upon in the
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`reference patent or publication in order for the patent or publication to qualify for
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`the priority date of the provisional); Forescout Techs., Inc., v. Fortinet, Inc.,
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`IPR2021-01328, Paper 12 at 8-10 (PTAB Jan. 27, 2021) (“the subject matter in
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`Thomas is only available as prior art to the ‘421 patent to the extent it also is
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`described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial
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`burden, not just to compare the challenged claims with the disclosure in Thomas,
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`but to show that the subject matter that Forescout relies on in Thomas is also found
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`in the Thomas Provisional.”).
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`As the Board explained in Forescout, that burden is codified in 35 U.S.C. §
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`102(d)(2), which states that a patent challenger may only establish an
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`earlier priority date for “any subject matter described in the patent or application
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`. . . as of the filing date of the earliest such application that describes the
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`subject matter.” Forescout, IPR2021-01328, Paper 12 at 9.
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`Moreover, because the petition must “articulate specific reasoning, based on
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`evidence of record, to support the legal conclusion of obviousness,” institution
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`PATENT OWNER’S PRELIMINARY RESPONSE
`must be denied where a petition fails to demonstrate with particularity how a
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`provisional in fact discloses the subject matter the petition relies upon from a post-
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`critical date patent or application. Forescout, IPR2021-01328, Paper 12 at 9-10
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`(denying institution because petition sought to rely on the Thomas Provisional’s
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`filing date to establish that the Thomas Patent was prior art, but made no attempt to
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`show that “the subject matter that Forescout relies on in Thomas is also found in
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`the Thomas Provisional.”) (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1380 (Fed.Cir. 2016)).
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`The Board faced the same circumstances, and reached the same conclusion,
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`in Schlumberger Tech. Corp. v. Dynaenergetics Europe GmbH, PGR2021-00089,
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`Paper 13 at 39-49 (PTAB Dec. 14, 2021). There, the petition relied on Sokolove
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`’009, which post-dated the earliest effective filing date of the challenged patent. Id.
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`at 40. The petition therefore asserted that Sokolove ’009 was prior art under 35
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`U.S.C. § 102(a)(2) and § 102(d)(2) based on the filing dates of two earlier
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`provisionals, Sokolove Provisional ’999 and Sokolove Provisional ’591. Id.
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`As the Board made clear, however, “the subject matter disclosed in
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`Sokolove ’009 are available as prior art to the ’696 patent to the extent described in
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`the earlier-filed Sokolove Provisional ’999 or Sokolove Provisional ’591.” Id.
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`(emphasis original).
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`Moreover, the Board emphasized that a petition must identify “in writing
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`and with particularity, each claim challenged, the grounds on which the challenge
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`to each claim is based, and the evidence that supports the grounds for the challenge
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`to each claim,” id. (citing 37 C.F.R. § 42.204(b)), and that it is “of the utmost
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`importance” that the initial petition make that showing. Id. (citing Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)).
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`The Board then found that the petition had failed to meet its burden in those
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`respects, and denied institution on that basis. Id. at 41-50. In particular, the Board
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`concluded that “Petitioner cites to several aspects of Sokolove ’009 without
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`adequate explanation as to how the subject matter relied upon in Sokolove ’009 is
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`described in Sokolove Provisional ’999 or Sokolove Provisional ’591.” Id. at 42.
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`Accordingly, the Board concluded that “[g]iven the multiple instances in which
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`Petitioner relies on subject matter in Sokolove ’009 without a detailed explanation
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`of how either of the two earlier provisional applications support its position, we
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`determine that Petitioner has not adequately identified the grounds and evidence
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`that support the grounds with the required particularity.” Id. at 48-49.
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`C.
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`The Petition does not even attempt to show that the Agiwal and
`Abedini provisionals disclose the subject matter relied upon
`With respect to Agiwal, the Petition’s mapping entirely cites to Agiwal
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`itself, but provides no citations purporting to show that the same relied-upon
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`disclosures were provided in the Agiwal provisional. See Pet. at 17-48.
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`Instead, the Petition asserts that Agiwal-Prov1 “is incorporated in its entirety
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`in Agiwal.” Pet. at 6. That contention, however, does nothing to show that the
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`Agiwal Provisional contains all of the content the Petition relies upon from
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`Agiwal. Although Agiwal may contain all of the teachings from the Agiwal
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`Provisional, it does not follow that Agiwal discloses no more than the Agiwal
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`Provisional. Nor does it establish that the Petition relies only upon portions of
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`Agiwal that were also disclosed in the Agiwal Provisional, as the Petition must.
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`The Petition’s alleged showing that the Agiwal Provisional supports
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`Agiwal’s claim 1 is likewise inadequate. See Pet. at 7-9 (citing Dynamic
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`Drinkware, 800 F.3d at 1382). As the Board has made clear, there are “‘two
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`distinct requirements’ for determining that a published patent application’s
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`effective date may be based on a prior application from which it claims priority.”
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`Google LLC v. Ikorongo Tech. LLC, IPR2021-00058, Paper 14 at 10 (PTAB May
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`10, 2021). The requirement that “the provisional must provide sufficient support
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`for at least one claim in the reference patent or published patent application” is
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`only one of those two requirements. Id. at 12. Even where the requirement is met,
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`the Petition still fails if it does not show that “the provisional application [ ]
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`provide[s] sufficient support for the subject matter relied upon for prior art
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`purposes in the reference patent or published patent application.” Id. at 13
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`(emphasis added).
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`Indeed, the Board has emphatically stated that “absurd results would be
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`reached if a subject matter test were not required . . . . in addition to the
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`comparison of claims required by Dynamic Drinkware.” Ex Parte Mann, No.
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`2015-003571, 2016 Pat. App. LEXIS 12592, *13-14 (PTAB Dec. 23, 2016).
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`As demonstrated, the Petition does not make any showing that the Agiwal
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`Provisional supports all of the subject matter the Petition relies upon from Agiwal.
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`Rather, the Petition contains only seven citations to the Agiwal Provisional (Ex.
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`1006), and each citation appears in connection with the Petition’s mapping of
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`Agiwal’s claim 1 to the Agiwal Provisional. The Petition never cites to the Agiwal
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`Provisional to show that it contains the same subject matter the Petition relies upon
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`from Agiwal in order to allegedly meet the challenged claims of the ’915 Patent.
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`Accordingly, the Petition does not meet its burden of demonstrating, with
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`particularity, that Agiwal is prior art, and Grounds 1 and 2 should be rejected on
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`that basis. Dynamic Drinkware, 800 F.3d at 1380 (“placing the burden on
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`Dynamic, the petitioner in the inter partes review, to prove that the prior art [ ]
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`patent was entitled to the filing date of its provisional application”); In re
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`Giacomini, 612 F.3d at 1383 (requiring that the provisional application disclose the
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`subject matter relied upon in the reference patent or publication in order for the
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`patent or publication to qualify for the priority date of t