Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: July 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`
`
`
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Entered: July 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`
`
`
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`Apple Inc. (“Petitioner”) filed a petition for inter partes review
`
`challenging claims 1–5, 12–16, 22–24, 26–28, and 30 (“challenged claims”)
`
`of U.S. Patent 8,798,658 B2 (Ex. 1001 (“’658 patent”)). Paper 1 (“Pet.” or
`
`“Petition”). Telefonaktiebolaget LM Ericsson (“Patent Owner”) timely filed
`
`a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`The Board has authority to determine whether to institute an inter
`
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under
`
`35 U.S.C. § 314(a), we may not authorize an inter partes review unless the
`
`information in the Petition and the Preliminary Response “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.” For the reasons that follow,
`
`we institute an inter partes review as to the challenged claims of the
`
`’658 patent on all grounds of unpatentability presented.
`
`B.
`
`Real Parties in Interest
`
`Petitioner identifies only itself as the real party in interest. Pet. 77.
`
`Patent Owner identifies Telefonaktiebolaget LM Ericsson and
`
`Ericsson Inc. as the real parties in interest. Paper 5 (Patent Owner’s
`
`Mandatory Notices), 2.
`
`C.
`
`Related Matters
`
`Petitioner and Patent Owner each indicate the ’658 patent was
`
`previously challenged in IPR2021-00537. Pet. 77; Paper 5, 2. Petitioner
`
`notes that this IPR was terminated pursuant to a settlement prior to a
`
`preliminary response. Pet. 75.
`
`2
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`D.
`
`The ’658 Patent
`
`The ’658 patent is titled “Minimizing Drive Test Logged Data
`
`Reporting” and generally relates to “network based control of report
`
`messages comprising logged measurements in a wireless communications
`
`network.” Ex. 1001, codes (54), (57), 1:14–19. The ’658 patent describes
`
`situations in which a user equipment (UE) has stored logged data for
`
`reporting that is bigger than the size of a report message, and the UE “sends
`
`only a portion of the logged measurements that fits into a single report
`
`message” in each report message to a network node and multiple partial
`
`report messages are sent. Id. at code (57), 3:22–32. A partial report
`
`message may also contain an indication that more logged measurements
`
`exist at the UE. Id. at code (57), 3:27–32.
`
`The ’658 patent describes, as background, that according to 3GPP
`
`radio access technology, UE’s may take measurements called Minimizing
`
`Drive Tests (MDT) measurements, maintain a log of MDT measurements,
`
`and report the logged measurements to a network node upon request of the
`
`network node. Id. at 2:4–36. A UE may include a UE buffer for storing
`
`logged measurements. Id. at 5:32–35. The ’658 patent discloses that, in the
`
`MDT implementation then current, “logging of measurements . . . may only
`
`be done when the UE is in ‘idle’ state and the sending of logged
`
`measurements (MDT logs) in report messages may only be done when the
`
`UE is in the ‘connected’ state.” Id. at 9:47–51; see id. at 2:41–42.
`
`According to one exemplary embodiment, a network node’s
`
`communications interface sends a request to UE 30 to start transmitting
`
`logged measurements in report messages and receives the report messages
`
`comprising the logged measurements. Id. at 5:49–53.
`
`3
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`One embodiment, focused on the network node’s actions and
`
`determinations, is depicted in Figure 3, reproduced immediately below. Id.
`
`at 7:58–59.
`
`
`
`Figure 3 depicts a flow chart including actions and a decision by the network
`
`node. Id. The network node decides to send a request to the UE to start
`
`reporting, and receives a report message as a response. Id. at 7:66–67, Fig. 3
`
`(step S62). The network node receives a report message comprising the
`
`logged measurements. Id. at 7:67–8:1, Fig. 3 (step S64). The network
`
`4
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`determines whether the received report message comprises an indicator of
`
`additional logged measurements not yet transmitted. Id. at 8:1–3, Fig. 3
`
`(step S66). If so, the network node decides if the additional logged
`
`measurements need to be requested. Id. at 8:3–5, Fig. 3 (step S68). In
`
`another embodiment, these steps are preceded by the network node receiving
`
`from the UE, in existing signaling, an indication of the existence1 and
`
`availability of logged measurements. Id. at 5:61–67; 8:9–15, Fig. 4.
`
`One embodiment, focused on the UE’s actions and determinations, is
`
`depicted in Figure 6, reproduced immediately below. Id. at 8:50–53.
`
`
`1 The claims and specification of the ’658 patent use the word “existents” in
`an apparent typographical error for the word “existence.” Ex. 1001, 4:21–
`24, 5:61–64, 6:61–65, 8:9–13, Fig. 4 (element S71), 12:40–42 (claim 2),
`13:24–27 (claim 12), 14:45–49 (claim 26); see Pet. 7–8. A certificate of
`correction was requested and issued, but does not address this issue.
`Ex. 1002, 317–325. As we hereby institute, the parties may address this
`issue in the briefing if they choose.
`
`5
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`Figure 6 depicts a flow chart including actions and a decision by a UE. Id.
`
`The UE periodically performs and logs measurements and “stores the
`
`measurements as logged measurements in the UE buffer 44[,] i.e. in internal
`
`memory of the UE 30.” Id. at 8:53–57, Fig. 6 (step S90). The UE receives a
`
`
`
`6
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`request from the network node to start transmitting logged measurements,
`
`and determines if the logged messages fit in a single report message. Id. at
`
`9:1–14, Fig. 6 (steps S92, S94). The UE prepares and transmits a first
`
`message with logged measurements, including an indication regarding
`
`whether additional report messages are necessary to transmit more logged
`
`measurements. Id. at 9:1–8, 9:12–22, 9:31–36, Fig. 6 (steps S94–S98).
`
`E.
`
`Challenged Claims
`
`Challenged claims 1, 12, 22, and 26 are independent. Challenged
`
`claims 2–5 depend from claim 1, claims 13–16 depend from claim 12,
`
`claims 23 and 24 depend from claim 22, and claims 27, 28, and 30 depend
`
`from claim 26.
`
`Challenged claims 1 and 22 are reproduced below, with the addition
`
`of reference numbers in brackets.2
`
`1. A method in a network node for network based control
`of report messages in a wireless communications network, the
`network node being configured to serve a user equipment, UE,
`and to receive report messages from the UE, the method
`comprising:
`
`[1.a] sending a request to the UE to start transmitting
`logged measurements in a report message;
`
`[1.b] receiving the report message comprising logged
`measurements;
`
`[1.c] determining if the received report message comprises
`an indicator of additional logged measurements not yet
`transmitted; and [1.d] if so,
`
`deciding if the additional logged measurements are to be
`requested.
`
`
`2 These references generally correspond to the identification of limitations in
`the Petition, with the exception of 1.d.
`
`7
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`Ex. 1001, 12:16–39, Cert. of Corr. dated Mar. 3, 2015.
`
`22. A method in a User Equipment, UE, for assisting in
`network based control of report messages in a wireless
`communications network, the UE being in connection with a
`serving network node and configured to transmit report messages
`to the network node upon request, and wherein the UE is
`configured
`to
`periodically
`perform
`radio
`condition
`measurements
`and
`store
`the
`periodically
`performed
`measurements in a UE buffer as logged measurements, the
`method comprising:
`
`[22.a] receiving a request from the network node to start
`transmitting logged measurements in a report message;
`
`[22.b] determining if the logged measurements fit in the
`report message; and if not,
`
`[22.c] including in the report message an indicator of
`additional logged measurements not yet transmitted;
`and,
`
`[22.d] transmitting the report message, comprising the
`indicator, to the network node as a response to the
`request.
`
`Ex. 1001, 14:6–22, Cert. of Corr. dated Mar. 3, 2015.
`
`F.
`
`References Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Reference
`
`Zhou, et. al., WO 2011/160274 A1, published Dec. 29, 2011
`(“Zhou”)
`
`Wu, US 8,594,657 B2, issued Nov. 26, 2013
`
`Exhibit
`
`1005
`
`1006
`
`Pet. 6.
`
`Petitioner also relies on the Declaration of Dr. Matthew C. Valenti.
`
`(Ex. 1003).
`
`8
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`G.
`
`Prior Art and Asserted Grounds
`
`Petitioner asserts that the claims are unpatentable on the following
`
`grounds:
`
`Claim(s) Challenged
`1–5, 12–16, 22, 26,
`30
`1–5, 12–16, 22–24,
`26–28, 30
`1–5, 12–16, 22–24,
`26–28, 30
`
`Pet. 6.
`
`35 U.S.C. §3
`
`Reference(s)/Basis
`
`103
`
`103
`
`103
`
`Zhou
`
`Zhou, Wu
`
`Wu
`
`II. ANALYSIS
`
`A.
`
`Legal Standards
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [inter partes] review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden never shifts to
`
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in inter partes review).
`
`Furthermore, Petitioner must explain with particularity how the prior
`
`art would have rendered the challenged claims unpatentable. 35 U.S.C.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. The ’658 patent was
`filed before March 16, 2013 (the effective date of the relevant amendment),
`so the pre-AIA version of § 103 applies.
`
`9
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`§ 312(a)(3); 37 C.F.R. § 42.104 (“The petition must specify where each
`
`element of the claim is found in the prior art patents or printed publications
`
`relied upon.”).
`
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious to a person
`
`having ordinary skill in the art to which said subject matter pertains. See
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) objective evidence of nonobviousness, i.e., secondary
`
`considerations4. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`The level of skill in the art is a factual determination that provides a
`
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`
`VSI Int’l Inc., 174 F.3d 1308, 1323–1324 (Fed. Cir. 1999) (citing Graham v.
`
`John Deere Co., 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d
`
`714, 718 (Fed. Cir. 1991)).
`
`Relying on the testimony of Dr. Valenti, Petitioner contends that:
`
`a person of ordinary skill in the art (“POSITA”) at the time of the
`alleged invention would have had a Master’s degree in Electrical
`Engineering, Computer Science, Physics, Applied Mathematics, or
`equivalent and three to five years of experience working with wireless
`digital communication systems and cellular networks, including
`working with LTE or its predecessor UMTS. Ex. 1003, ¶35. That
`
`
`4 Neither party presents arguments or evidence of secondary considerations,
`therefore, secondary considerations do not constitute part of our analysis
`here.
`
`10
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`person might be working on developing a standard or on implementing
`it. Id. Additional education might compensate for less experience, and
`vice-versa. Id.
`
`Pet. 5.
`
`Patent Owner adopts this definition for the purposes of its Preliminary
`
`Response. Prelim. Resp. 8.
`
`Based on the present record including the disclosure in the
`
`’658 patent, for the purposes of institution, we adopt Petitioner’s articulation
`
`of the level of ordinary skill in the art.
`
`C.
`
`Claim Construction
`
`In interpreting the claims of the ’658 patent, we “us[e] the same
`
`claim construction standard that would be used to construe the claim[s] in a
`
`civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2021).
`
`The claim construction standard includes construing claims in accordance
`
`with the ordinary and customary meaning of such claims as would have
`
`been understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312–14 (Fed. Cir. 2005) (en banc).
`
`“Importantly, the person of ordinary skill in the art is deemed to read
`
`the claim term not only in the context of the particular claim in which the
`
`disputed term appears, but in the context of the entire patent, including the
`
`specification.” Phillips, 415 F.3d at 1312. An inventor may rebut the
`
`presumption that the claim carries its ordinary and customary meaning by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In the absence of such a definition, limitations are not to be read
`
`from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`
`11
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`1184 (Fed. Cir. 1993). Only those terms that are in controversy need be
`
`construed, and only to the extent necessary to resolve the controversy.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`Petitioner, while noting the issue addressed above at footnote 1,
`
`asserts that no claim terms require express construction. Pet. 7–8. Patent
`
`Owner does not request any specific claim construction. Prelim. Resp. 12.
`
`However, during its arguments with respect to claims 22 and 26, Patent
`
`Owner takes the view that the preambles of these claims is limiting, and that,
`
`according to the preambles, the UE is required to “be configured ‘to
`
`periodically perform radio condition measurements’ while in a connected
`
`state with the base station (‘being in connection with a serving network
`
`node’).” Prelim. Resp. 38. Patent Owner then makes an argument based on
`
`this interpretation. Id. at 38–40. We provide a preliminary construction of
`
`the preambles of claims 22 and 26 to address certain of Patent Owner’s
`
`arguments. As set forth below, Petitioner meets its burden for institution
`
`even if the preambles were limiting. Accordingly, we need not, and do not,
`
`determine whether the preambles are, in fact, limiting at this juncture..
`
`The preamble of claim 22 recites
`
`[a] method in a User Equipment, UE, for assisting in network
`based control of report messages in a wireless communications
`network, the UE being in connection with a serving network
`node and configured to transmit report messages to the network
`node upon request, and wherein the UE is configured to
`periodically perform radio condition measurements and store the
`periodically performed measurements in a UE buffer as logged
`measurements.
`
`Ex. 1001, 14:6–13. Similarly, the preamble of claim 26 recites
`
`12
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`[a] User Equipment, UE, for assisting in network based control
`of report messages in a wireless communications network, the
`UE being in connection with a serving network node and
`configured to transmit report messages to the network node, and
`wherein the UE is configured to periodically perform radio
`condition measurements and store the periodically performed
`measurements in a buffer as logged measurements.
`
`Id. at 14:31–38.
`
`Under Phillips, we begin with the language of the claim itself.
`
`Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial
`
`guidance as to the meaning of particular claim terms”). While Patent Owner
`
`argues that the claim language requires that the UE be performing radio
`
`condition measurements “while in a connected state with a base station,” we
`
`disagree. Prelim. Resp. 38. Rather, the claim language is at best ambiguous
`
`regarding whether a UE “in connection with a serving network node,” which
`
`is also “configured to periodically” perform and store measurements, must
`
`still be in connection with the serving network node during any periodic
`
`performance and storage of such measurements. On the present record, we
`
`read the language of the preamble of claim 22, if limiting, as requiring the
`
`connection with the serving network node to be present during the method
`
`steps recited in the claim, but not necessarily during the periodic
`
`performance and storage of measurements.
`
`We thus next turn to consider the “fully integrated written instrument
`
`. . . consisting principally of a specification that concludes with the claims.”
`
`Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc.,
`
`52 F.3d 967, 978 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)).
`
`Patent Owner supports its interpretation with this quotation from the
`
`specification of the ’658 patent:
`
`13
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`Note, that in current “MDT” general implementation the logging
`of measurements as logged measurements may only be done
`when UE is in “idle” state and the sending of logged
`measurements (MDT logs) in report messages may only be done
`when the UE is in “connected” state.
`
`Ex. 1001, 9:47–51 (quoted at Prelim. Resp. 38). Patent Owner describes this
`
`portion of the specification as “cricitiz[ing] the prior art that only takes
`
`measurements in an idle state.” Prelim. Resp. 38. However, we do not
`
`understand this to be necessarily a criticism of the prior art or even a contrast
`
`being drawn with it.
`
`We note that the specification does not describe in detail what state
`
`the UE is in (connected or “idle”) during the logging and storage of
`
`measurements. The abstract describes a UE that “has stored logged data.”
`
`Ex. 1001, code (57). The portions of the disclosure that appear to
`
`correspond most closely to claims 22 and 26, describing embodiments
`
`“[f]rom a UE perspective,” describe the UE performing and storing
`
`measurements, and subsequently receiving a request from a network node
`
`for the logged measurements, but do not describe when a connection to that
`
`network node has been made. Id. at 8:35–44, 8:50–9:8. The specification
`
`indicates that the periodic performance and logging of measurements (step
`
`S90) occurs “alternatively, or in combination with the reporting” of
`
`measurements. Id. at 9:40–46. It is immediately after this that the portion of
`
`the specification Patent Owner quotes appears. In context, it is not clear that
`
`the specification is, as Patent Owner asserts, criticizing “current ‘MDT’
`
`implementation” that requires the UE to be in an idle state during reporting.
`
`Instead, it appears to be providing an indication that for implementations in
`
`conformance with “current ‘MDT’ implementation,” the step of performing
`
`and logging measurements could not be performed “in combination with the
`
`14
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`reporting” of logged measurements. Id. at 9:40–51. The specification notes
`
`that “3GPP [(Third Generation Partnership Project)] is in the process of
`
`defining solutions for Minimizing Drive Tests,” that “Stage 2 of Minimizing
`
`Drive Tests . . . is currently being developed,” and that certain proposals for
`
`management of measurement reports, each with disadvantages, had been
`
`mooted. Id. at 2:4–17, 2:45–3:18. This appears to present the claimed
`
`invention as an alternative to other proposals for management of
`
`measurement reports in MDT, and not as a replacement for MDT.
`
`
`
`Thus, preliminarily and on the current record, without determining
`
`whether or not the preambles of claim 22 and claim 26 are limiting, we
`
`construe the preambles of claim 22 and claim 26 as encompassing a UE
`
`where the UE’s connection with the serving network node is not necessarily
`
`maintained during periodic performance of radio condition measurements
`
`and storage of the periodically performed measurements in a UE buffer as
`
`logged measurements.
`
`This is the only claim construction issue that needs to be addressed at
`
`this point for the purposes of institution. Nidec Motor Corp., 868 F.3d at
`
`1017. This determination is preliminary. The parties may choose to address
`
`this claim language further during trial, including on the threshold question
`
`of whether the preambles are, in fact, limiting.
`
`D.
`
`Asserted Obviousness Over Zhou
`
`Petitioner contends claims 1–5, 12–16, 22, 26, and 30 would have
`
`been obvious over Zhou. Pet. 8–40.
`
`1.
`
`Zhou (Ex. 1005)
`
`Zhou is titled “Methods and Apparatus for Reporting Measurement
`
`Information” and relates to causing a plurality of measurements to be
`
`performed by UE, causing a measurement to be sent from the UE to a
`
`15
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`network element indicating that measurement information is available, and,
`
`responsive to a request from the network element, causing a response to be
`
`sent from the UE including some of the measurement information and an
`
`indication that further information is available from the UE. Ex. 1005, codes
`
`(54), (57). Zhou describes one embodiment with respect to a signal flow
`
`between a UE and an access node such as a base station or enhanced NodeB
`
`(eNB) according to the 3GPP specification, as shown in Zhou’s Figure 4,
`
`reproduced below. Id. at 5:1–2, 6:32–35, 11:8–28, 13:23–14:3.
`
`Figure 4 shows the flow of messages between UE 1 and eNB 12. Id.
`
`In a first step T1, UE 1 sends eNB 12 a message indicating that a connection
`
`has been set up and including an availability indicator indicating that UE 1
`
`
`
`16
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`has logged MDT messages to report. Id. at 11:10–15, 13:27–28. In a
`
`second step, T2, eNB 12 sends UE 1 a message requesting the logged MDT
`
`measurements. Id. at 11:17–20, 13:27–28. In step T3, UE 1 provides eNB
`
`12 with a response with a list of logged MDT measurements and an
`
`availability indicator indicating that there are additional MDT reports yet to
`
`be sent. Id. at 11:22–28, 13:28–31. In step T4, eNB 12 requests further
`
`logged MDT measurement information from UE 1. Id. at 13:33–34. “In
`
`step T5, the UE sends the remainder of the logged MDT measurements and
`
`the availability indicator is set to indicate that no further MDT reports are
`
`available.” Id. at 14:1–3. Zhou describes alternate embodiments: one in
`
`which more than two messages are sent from UE 1 with logged
`
`measurements, and another where the UE sends multiple messages with
`
`logged measurements without a second or subsequent request for logged
`
`information. Id. at 14:5–12.
`
`Zhou also includes a flow diagram of a method, in Figure 6,
`
`reproduced immediately below. Id. at 5:4–5, 15:11–16:18.
`
`17
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`
`In Figure 6, actions described as being performed by a UE are shown
`
`on the left, with the action described as being performed by a base station on
`
`the right, and arrows indicate the sequence of steps performed. Id. at 15:11–
`
`16:18. Figure 6 shows the UE successively entering idle mode (step A1),
`
`performing MDT measurements (step A2), entering active mode (step A3),
`
`and sending an availability indicator to the base station (step A4). Id. at
`
`15:14–28. In step A5, the base station sends a request for logged
`
`18
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`measurements. Id. at 15:30–32. In step A6, the UE determines if there will
`
`be any remaining logged MDT measurements after its next response has
`
`been sent. Id. at 16:1–3. If so, step A8, some of the logged measurements
`
`are sent to the base station with an availability indicator indicating there are
`
`remaining logged measurements, and the flow returns to step A5. Id. at
`
`16:11–18. If in step A6 the UE determines that there will not be any
`
`remaining logged MDT measurements after its next response is sent, all
`
`remaining MDT measurements are sent to the base station in that response,
`
`along with an availability indicator indicating no logged MDT
`
`measurements remaining. Id. at 16:5–9.
`
`Figure 6 and the related description describes the UE as making
`
`measurements in idle mode (steps A1 and A2) and entering active mode
`
`(step A3) before performing any remaining steps. Id. at 15:14–23. Zhou
`
`also states that:
`
`the MDT
`The embodiments described above have had
`measurements taking place in the idle mode. Alternatively or
`additionally, the measurements may made at other times, for
`example where the UE is connected or in an active mode. In this
`alternative, reporting would take place in a similar manner, as
`described previously[.]
`
`Id. at 17:9–13.
`
`2.
`
`Independent Claim 1
`
`Petitioner contends claim 1 would have been obvious over Zhou. Pet.
`
`12–23. Patent Owner presents arguments relating to limitation 1.d of
`
`claim 1. Prelim. Resp. 26–35.
`
`a)
`
`Claim 1 – Preamble, Limitations 1.a, 1.b, and 1.c
`
`Petitioner contends that “to the extent this preamble is limiting” it is
`
`taught by Zhou. Pet. 12. Petitioner argues that Zhou’s base station (BS)/
`
`19
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`network element controlling UEs to provide responses including logged
`
`MDT measurements teaches the claimed network node configured to serve a
`
`UE and to receive report messages from the UE. Id. at 12–15 (citing
`
`Ex. 1005, 2:29–3:3, 11:7–8, 11:22–23, 13:27–29, 15:30–32, 16:11–13, Figs.
`
`4, 6; Ex. 1003 ¶¶ 78–79).
`
`Petitioner argues that limitation 1.a of claim 1, “sending a request to
`
`the UE to start transmitting logged measurements in a report message,” is
`
`taught by Zhou’s message sent by the base station in step T2 of Figure 4 and
`
`the “request for logged measurements” that Zhou’s base station sends as
`
`shown in and further described with reference to step A5 of Figure 6. Id. at
`
`15–16 (citing Ex. 1005, 11:17–18, 13:27–28, 15:25–32, Figs. 4, 6; Ex. 1003
`
`¶¶ 82–83).
`
`Petitioner argues that limitation 1.b of claim 1, “receiving the report
`
`message comprising logged measurements,” is taught by Zhou’s receipt of a
`
`list of logged MDT measurements shown in step T3 of Figure 4 and
`
`described with reference to that figure, and in Zhou’s receipt of logged
`
`measurements as described with reference to step A8 of Figure 6. Id. at 17–
`
`19 (citing Ex. 1005, 11:7–8, 11:22–23, 13:28–29, 16:11–13, Figs. 4, 6;
`
`Ex. 1003 ¶¶ 86–87).
`
`Petitioner contends that limitation 1.c of claim 1, “determining if the
`
`received report message comprises an indicator of additional logged
`
`measurements not yet transmitted,” is taught by Zhou’s UE transmitting in
`
`the report message an availability indicator that “indicates that . . . there are
`
`further logged MDT reports which have yet to be sent.” Pet. 20 (citing
`
`Ex. 1005, 11:22–25, 13:28–31, Fig. 4; Ex. 1003 ¶ 88). Petitioner notes that
`
`this indicator may be positive or negative. Id. (citing Ex. 1005, Fig. 4).
`
`Petitioner argues that, in Zhou, “after the BS receives the indicator in step
`
`20
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`T3 that there is additional logged measurement data to retrieve, the BS sends
`
`a request to the UE for the additional logged measurement data.” Id.
`
`Petitioner argues that one of ordinary skill in the art would have understood,
`
`from the base station’s actions based on the presence of an indicator with
`
`two possible values regarding the presence of additional logged
`
`measurement data, that a determination is made by the base station regarding
`
`if the received report message comprises an indicator of additional logged
`
`measurements yet transmitted. Id. at 21 (citing Ex. 1003 ¶ 88).
`
`With respect to the preamble and limitations 1.a, 1.b, and 1.c of
`
`claim 1, Patent Owner presents no arguments regarding Petitioner’s
`
`showing.
`
`On this record, Petitioner sufficiently shows that Zhou teaches a
`
`method in a network node configured to serve a UE and receive report
`
`messages from that UE, including sending a request to the UE to start
`
`transmitting logged MDT measurements and receiving a list of logged MDT
`
`measurements from the UE. Ex. 1005, 2:29–3:3, 11:17–18, 11:22–25,
`
`13:27–31, 15:30–32, 16:11–13, Fig. 4, Fig. 6; Ex. 1003 ¶¶ 78–79, 82–83,
`
`86–88. Without determining whether the preamble is limiting, on the
`
`present record and for the purposes of institution, we determine that
`
`Petitioner has sufficiently shown Zhou teaches the preamble and limitations
`
`1.a, 1.b, and 1.c of claim 1.
`
`b)
`
`Claim 1 – Limitation 1.d
`
`(1) Petitioner’s Contentions
`
`Petitioner argues that limitation 1.d of claim 1, “if so, deciding if the
`
`additional logged measurements are to be requested,” is taught or suggested
`
`by the request for additional logged information, because one of ordinary
`
`21
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`skill “would have understood that before a BS requests additional logged
`
`information, it must decide to do so.” Pet. 21 (citing Ex. 1003 ¶ 89).
`
`Additionally, Petitioner notes Zhou’s disclosure that a base station
`
`might not initiate logged MDT measurement reporting under certain
`
`circumstances. Id. at 21–22 (citing Ex. 1005, 12:7–16). Petitioner argues
`
`that one of ordinary skill in the art would have understood that, because the
`
`base station might not initiate reporting of measurements when the network
`
`is busy, the base station also would decide whether to request additional
`
`MDT reports based the same factors. Id. (citing Ex. 1003 ¶ 91).
`
`Lastly, Petitioner argues that, because Zhou’s base station decides not
`
`to request additional logged measurements if there is no indication that such
`
`measurements exist, this teaches or suggests the decision of limitation 1.d.
`
`Pet. 22–23 (citing Ex. 1005, 13:28–34, 14:1–3, Fig. 4; Ex. 1003 ¶ 93).
`
`(2) Patent Owner’s Arguments
`
`Patent Owner argues that Petitioner does not show Zhou teaches or
`
`suggests that if a determination of whether “an indicator of additional logged
`
`measurements not yet transmitted” is found in a received report message, the
`
`base station makes a decision regarding whether to request the additional
`
`logged measurements. Prelim. Resp. 26–33.
`
`Patent Owner argues that in Zhou, the description cited by Petitioner
`
`of a decision to request a report message relates to a network receiving a
`
`first availability indicator (before any reporting), and that, therefore, it “at
`
`best” corresponds to limitation 1.a of claim 1. Id. at 28–32 (citing Ex. 1005,
`
`12:7–16, Fig. 3 (element S1), Fig. 4 (element T1)). Patent Owner argues
`
`that Zhou “does not disclose or teach the network node deciding whether . . .
`
`‘additional’ measurements are to be requested,” but rather that in Zhou “[i]f
`
`the UE indicates it has measurements to send . . . then the network node
`
`22
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`requests the measurements. If the UE indicates that it does not have
`
`measurements to send . . . then the network node does not request the
`
`measurements.” Id. at 32.
`
`Patent Owner further argues that Petitioner’s reliance, for limitation
`
`1.d, on Zhou’s disclosure that the base station requests a
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
