UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON
`Patent Owner
`__________________
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`
` 
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`SUMMARY OF ARGUMENT ....................................................................... 1 
`II. 
`III.  THE ’658 PATENT ......................................................................................... 4 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8 
`V.  OVERVIEW OF THE CITED ART ............................................................... 8 
`A.  Overview of Zhou (Ex. 1005) ............................................................... 8 
`B. 
`Overview of Wu (Ex. 1006, Ex. 1007) ............................................... 10 
`VI.  CLAIM CONSTRUCTION .......................................................................... 12 
`VII.  PETITIONER FAILED TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY OF THE CHALLENGED CLAIMS
`ARE UNPATENTABLE ............................................................................... 12 
`A.  Grounds 2 and 3 (All Claims): Wu Is Not Prior Art ........................... 12 
`Overview of the Standards Required by Dynamic
`Drinkware and In re Giacomini ................................................ 14 
`  Wu Does Not Qualify as Prior Art Under the Dynamic
`Drinkware Standard .................................................................. 15 
`  Wu Does Not Qualify as Prior Art Under the Giacomini
`Standard. ................................................................................... 22 
`Ground 1 .............................................................................................. 26 
`Petitioner Has Not Demonstrated that Zhou Renders
`Obvious Independent Claim 1 (or Dependent Claims 2-
`5). .............................................................................................. 26 
`Petitioner Has Not Demonstrated that Zhou Renders
`Obvious Independent Claim 12 (or Dependent Claims
`13-16). ....................................................................................... 35 
`
`B. 
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` 
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`C. 
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Petitioner Has Not Demonstrated that Zhou Renders
`Obvious Independent Claims 22 and 26 (or Dependent
`Claim 30). .................................................................................. 35 
`Ground 2 .............................................................................................. 41 
`Petitioner Has Not Demonstrated that Zhou and Wu
`Teach All Limitations of Claim 1. ............................................ 41 
`Petitioner Has Not Demonstrated that Zhou and Wu
`Teach All Limitations of Claim 12. .......................................... 46 
`Petitioner Has Not Demonstrated that Zhou and Wu
`Teach All Limitations of Claims 22 and 26. ............................. 46 
`D.  Ground 3 .............................................................................................. 46 
`Petitioner Has Not Demonstrated that Wu Teaches All
`Limitations of Claim 1. ............................................................. 47 
`Petitioner Has Not Demonstrated that Wu Teaches All
`Limitations of Claim 12. ........................................................... 47 
`Petitioner Has Not Demonstrated that Wu Teaches All
`Limitations of Claims 22 and 26. .............................................. 48 
`VIII.  CONCLUSION .............................................................................................. 49 
`
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Abiomed, Inc. v. Maquet Cardiovascular, LLC,
`IPR2017-01204, Paper 9 (P.T.A.B. Oct. 23, 2017) ............................................ 23
`Arendi SARL v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 34
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ...................................................................... 35, 36
`Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .................................................... 2, 14, 15, 21, 22
`In re Fought,
`941 F.3d 1175 (Fed. Cir. 2019) .......................................................................... 36
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ........................................... 14, 15, 22, 25, 26, 43
`Intex Recreation Corp. v. Team Worldwide Corp.,
`IPR2018-00859, Paper 128 (P.T.A.B. Oct. 21, 2019) .................................. 15, 22
`Lemoine v. Mossberg Corp.,
`No. 2020-2140, 2021 WL 4199934 (Fed. Cir. Sept. 15, 2021) .......................... 36
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .................................................................... 14, 21
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 12
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .......................................................................... 36
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 14
`
`i
`
`

`

`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 12
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`I.
`
`INTRODUCTION
`
`Patent Owner Telefonaktiebolaget LM Ericsson (“Ericsson”) submits this
`
`Preliminary Response to the Petition for Inter Partes Review (“Petition”) of claims
`
`1-5, 12-16, 22-24, 26-28, and 30 (“Challenged Claims”) of U.S. Patent No.
`
`8,798,658 (“the ’658 Patent”) (Ex. 1001). Ericsson respectfully requests that the
`
`Board deny institution, because there is not a reasonable likelihood that Petitioner
`
`would prevail with respect to any claim challenged in the petition. 35 U.S.C.
`
`§314(a).
`
`II.
`
`SUMMARY OF ARGUMENT
`
`The Challenged Claims of the ’658 Patent are divided into two sets.
`
`Independent claims 1 and 12 (and dependent claims 2-5 and 13-16) are written from
`
`the perspective of a network node, and independent claims 22 and 26 (and dependent
`
`claims 23, 24, 27, 28, and 30) are written from the perspective of a “UE” (User
`
`Equipment).
`
`The Petition proposes three grounds, asserting two references.
`
` Ground 1: Obviousness of claims 1-5, 12-16, 22, 26, and 30 over Zhou (Ex.
`1005).
`
` Ground 2: Obviousness of claims 1-5, 12-16, 22-24, 26-28, and 30 in view of
`Zhou (Ex. 1005) and Wu (Ex. 1006).
`
` Ground 3: Obviousness of claims 1-5, 12-16, 22-24, 26-28, and 30 over Wu
`(Ex. 1006).
`
`Pet. at 6.
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`-1-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Grounds 2 and 3 should be rejected at the outset because Petitioner has not
`
`demonstrated that Wu (Ex. 1006) qualifies as prior art. Wu is a patent that was filed
`
`after the ’658 Patent, and Petitioner has not demonstrated that Wu is entitled to
`
`priority to its provisional application (Ex. 1007). “[B]ecause the PTO does not
`
`examine priority claims unless necessary, the Board has no basis to presume that a
`
`reference patent is necessarily entitled to the filing date of its provisional
`
`application.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1380
`
`(Fed. Cir. 2015).
`
`Grounds 2 and 3 (each relying on Wu, Ex. 1006) and Ground 1 (relying on
`
`Zhou, Ex. 1005) should also be rejected because Petitioner has failed to demonstrate
`
`that the prior art teaches all claim limitations.
`
`For independent Claims 1 and 12, Petitioner has not demonstrated that the
`
`prior art teaches: a network node “deciding if the additional logged measurements
`
`are to be requested” (Claim 1) or “a network node processor circuit configured … to
`
`decide if the additional logged measurements need be requested” (Claim 12). The
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`Petition does not identify any disclosure in the prior art where an indicator first
`
`indicates that additional logged measurements are present, and a network node then
`
`decides whether or not to request those messages.
`
`For independent Claims 22 and 26, each directed to the user equipment (UE),
`
`the prior art again does not operate in a manner required by the claims. For example,
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Claims 22 and 26 require the UE to be configured to “perform radio condition
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`measurements” while the UE is “in connection with a serving network node.” As
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`the Petition admits, however, Zhou (Grounds 1 and 2) only discloses performing
`
`radio condition measurements while the UE is “in idle mode” (Pet. at 32), and Zhou
`
`does not disclose performing radio measurements while in connection with the
`
`network node. In Ground 3 (obviousness over Wu alone), the Petition fails to
`
`provide any analysis whatsoever for these limitations of Claim 22 and Claim 26, and
`
`instead merely refers back to Claim 1 (which does not contain these limitations).
`
`See Pet. at 72-74.
`
`Accordingly, Petitioner has not shown a likelihood of unpatentability for any
`
`claim in any of its grounds. Ground 1 relies on a reference (Zhou) that does not
`
`teach all limitations of any claim, and Grounds 2-3 rely on a reference that is not
`
`prior art and also does not teach all limitations of any claim.
`
`Moreover, Apple’s Petition is nothing more than a cut-and-paste of a prior
`
`petition filed by Samsung challenging the same claims of the ’658 Patent. See
`
`IPR2021-00537 (filed on Feb. 12, 2021). The ’658 Patent is not currently asserted
`
`against Apple in any pending litigation, so Apple’s Petition is not a means for
`
`“providing a quick and cost-effective alternative[] to litigation,” which is the purpose
`
`of inter partes review as outlined in the legislative history. H.R. Rep. No. 112–98,
`
`pt. 1, at 40 (2011). The use of inter partes review in this manner, particularly where
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`-3-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Petitioner has failed to show that it has a reasonable likelihood of 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 “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, as Apple
`
`admits, it “largely repurposes the Samsung IPR” (Pet. at 75) at little or no cost to
`
`Apple, relying on the same expert retained by Samsung, and presenting the same
`
`weak arguments challenging the claims of the ’658 Patent.
`
`III. THE ’658 PATENT
`
`The ’658 Patent relates to “network based control of report messages
`
`comprising logged measurements in a wireless communications network.” Ex. 1001
`
`at 1:15-18. Each of the preambles in independent Claims 1, 12, 22, and 26 likewise
`
`recite the “network based control of report messages.” The ’658 Patent discusses
`
`prior art “solutions for Minimizing Drive Tests (MDT),” in which the User
`
`Equipment (UE) periodically takes measurements of network conditions. Id. at 2:4-
`
`25. The UE logs the measurements and can then deliver the measurements in a
`
`report to the network node. See id. at 2:30-36.
`
`One approach in the prior art involved the UE being “required to maintain
`
`only one log at a time,” but a disadvantage is that “[i]f the UE is requested to start
`
`
`1 Unless otherwise noted, all emphasis is added by Patent Owner.
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`logging, e.g., by configuration, a possibly old log and configuration stored in UE is
`
`erased.” Id. at 2:37-44. Another approach discussed fitting all of the logged
`
`measurements “to be sent in a single packet, and keeping that single packet within
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`the size limits” of protocols. Id. at 2:49-53. However, this approach would involve
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`“limiting the maximum size of a log in a UE” to one that can fit within the packet.
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`Id. at 2:59-60. Several other disadvantages of the above approaches include
`
`suffering adverse radio link failures and losing log data. Id. at 3:1-13.
`
`Accordingly, the ’658 Patent proposes a solution in which report messages
`
`are allowed to be larger than a single transmission packet. The report message is
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`segmented such that the UE “sends only a portion of the data that fits into a single
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`report message, and also indicates that more logged measurements exists at the UE.”
`
`Ex. 1005 at 3:27-32. A network node receives a report message, determines whether
`
`that report message comprises an indicator of additional measurements, “and if so,
`
`decides if the additional logged measurements need to be requested.” Id. at 3:39-44.
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`The ’658 Patent provides examples of the multi-step process, such as shown
`
`in Figure 4.
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`-5-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
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`Ex. 1001 at Fig. 4. In step 72 (S72), the network tells the UE “to start reporting and
`
`receives S74 a report message as a response.” Id. at 8:17-18. As shown in step S76,
`
`the network node will then determine whether or not an indicator of additional
`
`logged measurements is present. “If so, the network may decide S78 to request these
`
`additional logged measurements and therefore restarts at S72.” Id. at 8:22-24
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`-6-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`(emphasis added). “If no indicator is included, the network 28 will await S77 a new
`
`indication S71, and restart the procedure at S72.” Id. at 8:24-26.
`
`The ’658 Patent includes multiple examples explaining that just because an
`
`indicator of additional measurements is present, that does not mean the network node
`
`automatically requests those measurements. The network node may decide to
`
`request or may decide not to request those additional logged measurements from the
`
`UE. Conditions that may affect the decision of the network node include
`
`“interference level experienced in a cell; radio condition measurements experience
`
`in a cell; available radio resource; network node capacity; UE buffer state condition
`
`etc.” Id. at 7:35-41. For example, the network may choose to receive a bulk transfer
`
`of measurements, and “may decide to request S79 all logged measurements in one
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`decision instead of requesting one subsequent report message at a time.” Id. at 8:26-
`
`29; see also id. at 8:34 (“if the network node 28 so wants”). A network decide may
`
`decide to request or to not request additional measurements now, but a “new decision
`
`may be taken after a new report message is received, and so on.” Id. at 7:42-44.
`
`Similarly, the network node may request additional measurements “now or request
`
`it at a later point in time.” Id. at 7:46-48.
`
`Thus, the ’658 Patent discloses a multi-step process in which the network node
`
`determines if an indicator of additional logged measurements is present in the
`
`-7-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`received report, and if such an indicator is present, the network node may then decide
`
`to request (or decide not to request) those additional measurements.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`Solely for purposes of this Preliminary Response, Ericsson has used
`
`Petitioner’s proposed definition of a person of ordinary skill in the art (“POSITA”).
`
`Pet. at 5. Ericsson reserves the right to propose its own definition if this IPR is
`
`instituted.
`
`V. OVERVIEW OF THE CITED ART
`A. Overview of Zhou (Ex. 1005)
`
`International Patent Application WO2011/160274 to Weihua Zhou (“Zhou”)
`
`relates to the reporting of minimizing drive tests (MDT) measurements. Ex. 1005 at
`
`8:16-23. Zhou discusses two approaches to reporting MDT measurements from a
`
`user equipment (UE) to a base station: Immediate MDT reporting and Logged MDT
`
`reporting. In Immediate MDT reporting, “a UE needs to report MDT measurements
`
`immediately to a base station right after MDT measurement has been made.” Id. at
`
`8:25-29. In Logged MDT reporting, a UE performs measurements “in an idle
`
`mode,” and the UE will then “report these measurements to the network when the
`
`UE connects again to the network. The idle mode occurs when the UE is switched
`
`on and not actively connected to the network.” Id. at 8:30-35. The Petition is
`
`directed to this latter mode of operation.
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`-8-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`In a passage relied upon by the Petition, Zhou discusses the process when a
`
`UE first connects or re-connects to the network, after having been in idle mode. Ex.
`
`1005 at 12:7-16; Pet. at 22. When the UE reconnects to the base station from idle
`
`mode, the UE informs the base station that the UE has MDT logs that it had collected
`
`in idle mode. The network may initiate logged MDT measurements reporting (e.g.,
`
`request that the UE start transmitting measurements), or if the “network is busy, the
`
`network may not initiate logged MDT measurements reporting before the UE goes
`
`into the idle mode again.” Ex. 1005 at 12:6-16. This can be seen in Figures 3 and 4
`
`of Zhou, highlighted below.
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`
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`-9-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
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`Ex. 1005 at Figs. 3-4 (highlighted). After the eNB has requested the UE to initiate
`
`transmission of MDT measurements, the UE continues to send messages until it has
`
`no more. If the UE indicates it has measurements to send (“=Yes”), then the network
`
`node automatically requests the measurements. If the UE indicates that it does not
`
`have measurements to send (“=No”), then the network node does not request the
`
`measurements. See Pet. at 20 (“The indicator may be positive (e.g., ‘Yes’) or
`
`negative (e.g., ‘No’). Zhou does not disclose any embodiments in which the network
`
`node receives an indicator that additional measurements are present, but then decides
`
`not to request those additional measurements.
`
`B. Overview of Wu (Ex. 1006, Ex. 1007)
`
`Petitioner cites two documents naming Chih-Hsiang Wu as an inventor.
`
`Exhibit 1006 (“Wu”) is U.S. Patent No. 8,594,657, which was filed as Non-
`
`-10-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Provisional Application No. 13/159,269 on June 13, 2011. Because this date is after
`
`the priority date for the Challenged Patent, Petitioner cites to Exhibit 1007 (“Wu
`
`Provisional”) in an attempt to pre-date the Challenged Patent. Exhibit 1007 refers
`
`to Provisional Application No. 61/378,400 (filed August 31, 2010), to which Wu
`
`(Ex. 1006) purports to claim priority.
`
`Though Figure 12 from Wu is not supported by Wu Provisional, as discussed
`
`in Section VII.A, Petitioner repeatedly relies on Figure 12 and other such
`
`unsupported passages:
`
`
`Ex. 1006 at Fig. 12; Pet. at 41, 46, 52, 63-66, 68-71. In Wu, the network acts in
`
`response to what is provided by the UE. If an indicator indicates that “MDT log
`
`reporting is not finished or at least one more sub-MDT is available,” then the
`
`-11-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`network essentially says “keep going;” but if a message “does not contain” the above
`
`indicator, then the network sends nothing further. See Ex. 1006 at 9:33-37; see also
`
`Pet. at 42, 54. The network automatically acts in response to what is sent by the UE,
`
`and there is no deciding that takes place. Wu does not disclose any embodiments in
`
`which the network node receives an indicator that additional measurements are
`
`present, but then decides not to request those the additional measurements.
`
`VI. CLAIM CONSTRUCTION
`
`For purposes of this preliminary response, Ericsson construes the claims to
`
`have their plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need
`
`be construed that are in controversy, and only to the extent necessary to resolve the
`
`controversy”).
`
`VII. PETITIONER FAILED TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY OF THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`A. Grounds 2 and 3 (All Claims): Wu Is Not Prior Art
`
`In Ground 2 and Ground 3, Petitioner relies on Wu for all Challenged Claims.
`
`Pet. at 6. Grounds 2 and 3 should be rejected at the outset, because Petitioner has
`
`failed to demonstrate that Wu (Ex. 1006) qualifies as prior art. A timeline is below:
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`-12-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`
`The ’658 Patent was filed December 9, 2010 and asserts priority to a
`
`provisional application filed October 4, 2010 (App. No. 61/389,581). Ex. 1001. In
`
`the Petition, “Petitioner adopts October 4, 2010, as the invention date for the
`
`Challenged Claims.” Pet. at 4. Thus, there is no dispute as to the effective filing
`
`date of the ’658 Patent. However, Wu was filed on June 13, 2011, which is after the
`
`filing of both the ’658 Patent and its 61/389,581 Provisional. Ex. 1006.
`
`Accordingly, on its face, Wu is not prior art to the ’658 Patent.
`
`Nevertheless, Petitioner contends Wu qualifies as prior art, because Wu
`
`purportedly traces priority to a provisional application filed August 31, 2010. Ex.
`
`1007 (“Wu Provisional”); Pet. at 44, 78.2 The “burden [is on] the petitioner in the
`
`
`2 Ericsson has adopted Patent Owner’s nomenclature. “Wu” refers to U.S. Patent
`No. 8,594,657 (Ex. 1006). “Wu Provisional” refers to U.S. Provisional Patent
`Application No. 61/378,400 (Ex. 1007). See Pet. at 78.
`
`Though the cover of Wu cites to three separate provisional applications, the Petition
`has only analyzed one of them, provisional application no. 61/378,400 (Wu
`Provisional, Ex. 1007). Accordingly, this POPR analyzes Wu Provisional.
`
`-13-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`inter partes review, to prove that the prior art … patent was entitled to the filing date
`
`of its provisional application.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`800 F.3d 1375, 1379 (Fed. Cir. 2015). In performing that analysis, Petitioner must
`
`demonstrate that the earlier provisional application “convey[s] with reasonable
`
`clarity to those skilled in the art that, as of the filing date sought, [inventor] was in
`
`possession of the invention.… Entitlement to a filing date does not extend to subject
`
`matter which is not disclosed, but would be obvious over what is expressly
`
`disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir.
`
`2008) (emphasis added); see Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-
`
`72 (Fed. Cir. 1997) (“The question is not whether a claimed invention is an obvious
`
`variant of that which is disclosed in the specification.”).
`
` Overview of the Standards Required by Dynamic Drinkware
`and In re Giacomini
`
`In determining whether Petitioner has met its burden to demonstrate that a
`
`non-provisional patent has section 112 support in its provisional patent application,
`
`two separate requirements must each be met: the Dynamic Drinkware standard and
`
`the In re Giacomini standard. Petitioner cannot meet its burden under either
`
`standard.
`
`Under Dynamic Drinkware, Petitioner must demonstrate that the provisional
`
`“contain[s] a written description of the invention and of the manner and process of
`
`making and using it, in such full, clear, concise, and exact terms, 35 U.S.C. § 112 ¶
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`-14-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`1, to enable an ordinarily skilled artisan to practice the invention claimed in at least
`
`one claim of the non-provisional application.” Intex Recreation Corp. v. Team
`
`Worldwide Corp., IPR2018-00859, Paper 128 at 26 (P.T.A.B. Oct. 21, 2019)
`
`(internal quotations removed). In other words, Petitioner must show that at least one
`
`claim from Wu has written description support in Wu Provisional.
`
`Under In re Giacomini, “Petitioner must demonstrate that the subject matter
`
`in [the non-provisional] relied upon by Petitioner in its unpatentability contentions
`
`is sufficiently supported in the … provisional, this test being in addition to the
`
`comparison of claimed subject matter required by Dynamic Drinkware.” Id. (citing
`
`In re Giacomini,, 612 F.3d 1380, 1383 (Fed. Cir. 2010)) (emphasis added). In other
`
`words, Petitioner must show that the portions from Wu that it relies on for its
`
`unpatentability contentions in Grounds 2 and 3 have written description support in
`
`Wu Provisional.
`
` Wu Does Not Qualify as Prior Art Under the Dynamic
`Drinkware Standard
`
`The Petition provides a table that compares Wu (Ex. 1006) to Wu Provisional
`
`(Ex. 1007). Pet. at 48-50. In doing so, Petitioner analyzed only Claim 7 of Wu. Id.
`
`at 47 (“The table below identifies where written description support can be found in
`
`Wu Provisional for claim 7 of Wu.”). Petitioner cannot demonstrate that Wu
`
`Provisional provides written description support for Claim 7 of Wu. Claim 7
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`-15-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`requires transmission of a partial MDT log, but Wu Provisional only discloses
`
`transmission of a complete MDT log.
`
`Claim 7 of Wu requires indicating and transmission of MDT logs at the sub-
`
`MDT (partial MDT log) level. As seen in the express language of Claim 7, a
`
`“message comprising a part of the MDT log” is transmitted with an indicator, and
`
`that message must also indicate whether reporting is finished or “whether at least
`
`one more part” of the log is available:
`
`Transmitting, by the mobile communication device, a first response
`message comprising a part of the MDT log to the service network;
`
`wherein the first response message indicates whether the MDT log
`reporting is finished or whether at least one more part of the MDT log
`is available; and
`
`receiving, by the mobile communication device, a second request
`message for the MDT log from the service network when the first
`response message indicates that the MDT log reporting is not finished
`or at least one more part of the MDT log is available.
`
`Ex. 1006, Cl. 7 (emphasis added). The subdividing of a single MDT log into various
`
`component parts, with a message transmitting one part and indicating the availability
`
`of remaining parts, is further discussed in the specification of Wu:
`
`The control module 102 (or 202) divides the complete MDT log into a
`plurality of parts (each part of the MDT log is referred as a sub-MDT
`log below).
`
`Ex. 1006 at 8:34-36 (emphasis added); see also id. at 9:29-30 (“an indicator
`
`indicating that the MDT log reporting is not finished or at least one more sub-MDT
`
`-16-
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`log is available”). Figure 12 of Wu exemplifies this embodiment, showing how
`
`multiple messages are sent, each with a “sub-MDT log” (i.e., part of an log).
`
`
`
`Ex. 1006 at Fig. 12 (highlighting added).
`
`Wu Provisional does not provide written description support for Claim 7 of
`
`Wu. Unlike the requirements for the “a part of the MDT log” in Claim 7 of Wu, Wu
`
`Provisional contains no such disclosure. Wu transmits a complete log, and does not
`
`subdivide it for transmission of “a part of the MDT log” or “sub-MDT log.” This
`
`can be seen in Figure 3 of Wu Provisional, with annotations provided by Petitioner:
`
`-17-
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`
`Pet. at 50; Ex. 1007 at Fig. 3. Petitioner highlights the “UEInformationResponse
`
`(MDT logs)” in Figure 3 of Wu Provisional as meeting the Claim 7 limitation of Wu
`
`regarding “whether at least one more part of the MDT log is available.” Pet. at 50
`
`(emphasis added). However, as can be seen by contrasting Figure 3 of Wu
`
`Provisional (“MDT logs”) with Figure 12 of Wu (“sub-MDT logs”), Wu Provisional
`
`sends a complete MDT log in a message, while Claim 7 of Wu requires sending of
`
`only a part of an MDT log in a message and indicating that additional parts of that
`
`same MDT log are available for later transmission.
`
`-18-
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`

`

`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`Ex. 1007 at Fig. 3 (highlighting added).
`
`
`
`-19-
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`
`Ex. 1006 (Fig. 12) (highlighting added). The “sub-MDT log” is nowhere present in
`
`Wu Provisional.
`
`In addition to Figure 3, Petitioner cites to page 5 of Wu Provisional. Pet. at
`
`49. Petitioner quotes Wu Provisional, where it states: “The UE transmits a response
`
`message containing the MDT logs and an indicator to indicate whether the response
`
`message contains the last part of the MDT logs or indicates whether the UE has more
`
`MDT logs.” Pet. at 49 (emphasis added); Ex. 1007 at 5. This is simply stating that
`
`the collection of multiple complete MDT logs are split across multiple messages
`
`(such as one or more complete MDT logs in one message, one or more complete
`
`MDT logs in another message, and so on). However, this does not disclose
`
`-20-
`
`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`subdividing a single MDT log across multiple messages, with one message
`
`transmitting part of an MDT log and indicating that another “part” of the same
`
`MDT log is still available. Notably, this quotation from Wu Provisional is consistent
`
`with what is illustrated in Figure 3 of Wu Provisional (“MDT Logs”), as described
`
`above.
`
`In contrast to Wu Provisional, Claim 7 of Wu and the specification of Wu
`
`divide a single MDT log into component parts for transmission across multiple
`
`messages (partial MDT log or “sub-MDT log”). Wu Provisional does not disclose
`
`sub-dividing a single MDT log into portions or parts for transmission across multiple
`
`messages. Petitioner does not contend that Claim 7 of Wu would have been obvious
`
`over Wu Provisional, nor can it. See Lockwood, 107 F.3d at 1571-72 (“The question
`
`is not whether a claimed invention is an obvious variant of that which is disclosed
`
`in the specification.”).
`
`Because Wu Provisional fails to provide written description support for Claim
`
`7 of Wu, and because the Petition has not addressed any other claims of Wu,
`
`Petitioner has not demonstrated that Wu is prior art under Dynamic Drinkware.
`
`Accordingly, Petitioner cannot demonstrate a
`
`reasonable
`
`likelihood of
`
`unpatentability of any claim under Grounds 2 and 3.
`
`-21-
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
` Wu Does Not Qualify as Prior Art Under the Giacomini
`Standard.
`
`Even if Petitioner could somehow fulfill the standard in Dynamic Drinkware
`
`(it cannot), that does not end the inquiry. “[I]n addition to the comparison of the
`
`claimed subject matter required by Dynamic Drinkware,” Petitioner must also
`
`“demonstrate that the subject matter in [the non-provisional] relied upon by
`
`Petitioner in its unpatentability contentions is sufficiently supported in the …
`
`provisional.” Intex Recreation, IPR2018-00859, Paper 128 at 26 (citing In re
`
`Giacomini, 612 F.3d at 1383). For similar reasons as described above concerning
`
`the “sub-MDT logs” of Wu, Petitioner cannot demonstrate that Wu has written
`
`description support in Wu Provisional under the Giacomini standard. This is another
`
`reason that Petitioner cannot demonstrate a reasonable likelihood of unpatentability
`
`of any claim under Grounds 2 and 3.
`
`(i) Wu Provisional Does Not Support Ground 2.
`
`The Petition provides no analysis for why or how the passages it relies on
`
`from Wu to challenge the claims find written description support in Wu Provisional.
`
`For example, in its analysis of Claim Element 1(c) in Ground 2, Petitioner relies on
`
`Figures 4, 10, and 12 of Wu. Pet. at 52. However, these figures are not present in
`
`Wu Provisional. Moreover, Figures 10 and 12 of Wu each disclose a “sub-MDT
`
`log,” as does the passage from Wu quoted by Petitioner: “indicates whether the MDT
`
`log reporting is finished or whether at least one more sub-MDT log is available.”
`
`-22-
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`

`

`Case No. IPR2022-00459
`Patent No. 8,798,658
`Pet. at 52. But as discussed above in Section VII.A.2, Wu Provisional does not
`
`disclose a “sub-MDT log.” Wu Provisional (e.g., Fig. 3) only discloses “MDT
`
`Logs.”
`
`The only discussion of Wu Provisional provided by Petitioner for Claim
`
`Element 1(c) is a barebones citation—“see a