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 NON-CONTINGENT MOTION TO AMEND
`
`
`_________________
`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 NON-CONTINGENT MOTION TO AMEND
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`PRELIMINARY GUIDANCE FROM THE BOARD .................................... 1
`LEGAL STANDARD FOR AMENDING CLAIMS ..................................... 1
`A.
`The Substitute Claims are Provided in a Claims Listing ...................... 2
`B.
`The Number of Substitute Claims is Reasonable .................................. 2
`C.
`The Amendments Are Responsive ........................................................ 3
`D.
`The Amendments are Non-Broadening ................................................ 4
`E.
`The Amendments Have Written Description Support .......................... 4
`IV. CONCLUSION ..............................................................................................23
`
`i
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`I.
`
`INTRODUCTION
`
`Patent Owner Telefonaktiebolaget LM Ericsson (“Ericsson”) moves under 35
`
`U.S.C. § 316(d) and 37 C.F.R. § 42.121 to amend U.S. Patent No. 8,798,658 (“the
`
`’658 Patent”). To more clearly define the scope of the claims and address the
`
`invalidity grounds set forth by Petitioner, Patent Owner respectfully requests that the
`
`Board grant this Non-Contingent Motion to Amend (the “Motion to Amend”) and
`
`issue the corresponding substitute claims presented herein.
`
`Substitute independent claims 31, 36, 41, and 44 retain the features of original
`
`independent claims 1, 12, 22, and 26, respectively. The substitutions add narrowing
`
`features, such as by including limitations from dependent claims. The proposed
`
`substitute claims are responsive to the grounds of unpatentability at issue in this
`
`proceeding and are supported by the application as originally filed.
`
`II.
`
`PRELIMINARY GUIDANCE FROM THE BOARD
`
`Patent Owner requests preliminary guidance from the Board on this Motion
`
`to Amend pursuant to the Motion to Amend (MTA) Pilot Program. 86 Fed. Reg.
`
`51656.
`
`III. LEGAL STANDARD FOR AMENDING CLAIMS
`
`“Before considering the patentability of any substitute claims, … the Board
`
`first must determine whether the motion to amend meets the statutory and regulatory
`
`requirement set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” Lectrosonics,
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`-1-
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`
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Inc. v. Zaxcom, Inc., IPR2018-01129, -01130, Paper 15 at 4 (PTAB Feb. 25, 2019).
`
`The substitute claims must be i) presented in a claim listing; ii) reasonable in
`
`number; iii) responsive to a ground of unpatentability involved in the trial; iv) non-
`
`broadening; and v) supported by the written description. Id. at 4-8. The substitute
`
`claims of this Motion to Amend satisfy these requirements.
`
`A.
`
`The Substitute Claims are Provided in a Claims Listing
`
`The claim listing is attached as Appendix A. The claim listing cancels original
`
`claims 1-5, 12-16, 22-24, 26-28, and 30 and includes substitute claims 31-47. The
`
`substitute claims include annotations pursuant to 37 C.F.R. § 1.121(c)(2). Moreover,
`
`as stated herein, the remaining statutory and regulatory requirements for a motion to
`
`amend are met. A chart showing the substitute claims compared to the original
`
`claims is attached as Appendix B.
`
`B.
`
`The Number of Substitute Claims is Reasonable
`
`Pursuant to 37 C.F.R. § 42.121(a)(3), the number of substitute claims is
`
`reasonable. “There is a rebuttable presumption that a reasonable number of substitute
`
`claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at
`
`4. Patent Owner proposes 17 non-contingent substitute claims, each of which
`
`corresponds to a challenged claim. The number of substitute claims is presumptively
`
`reasonable based on the one-to-one relationship. Id. Patent Owner does not seek to
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`amend claims that have not been challenged in the petition. See Paper 1 (Pet.) at 1
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`(defining the “Challenged Claims” as claims 1-5, 12-16, 22-24, 26-28, and 30).
`
`C.
`
`The Amendments Are Responsive
`
`The proposed substitute claims are responsive to the grounds at issue in this
`
`proceeding, because they further distinguish the claims from the art of record. More
`
`specifically, the substitute claims provide clarity over the context of use of logged
`
`measurements, reporting, and indicators of additional logged measurements.
`
`Furthermore, the substitute claims also recite features not disclosed in the prior art
`
`of record.
`
`By way of non-limiting example, independent Substitute Claims 31 and 36
`
`are amended to recite that “the deciding is based on radio condition measurements
`
`experienced in a cell.” Dr. Valenti admitted that there is “probably not” any
`
`disclosure in Zhou (Ex. 1005) of this claim limitation. Ex. 2001 at 35:13-36:6. Nor
`
`is this limitation present in Wu (Ex. 1006) or Wu Provisional (Ex. 1007).
`
`Independent Substitute Claims 31, 36, 41, and 44 are amended to recite that
`
`“the logged measurements comprise measurement time stamps for each performed
`
`measurement.” Dr. Valenti was not aware of any disclosure of time stamps in Zhou.
`
`Ex. 2001 (Valenti Dep. Tr.) at 40:5-16. Nor do Wu or Wu Provisional disclose time
`
`stamps for each measurement. The prior art of record also does not disclose the other
`
`features added to the independent claims, such as logged measurements that
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`-3-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`“comprise one or more of serving cell conditions, transmit power headroom
`
`conditions, paging channel failures, maximum required memory supported by the
`
`UE, and broadcast channel failures.”
`
`For this reason, and as further explained below, the substitute claims are
`
`patentable over the instituted Grounds.
`
`D.
`
`The Amendments are Non-Broadening
`
`The substitute claims do not seek to enlarge the scope of the original claims.
`
`The proposed substitute claims add additional elements to the issued claims of the
`
`’658 Patent that narrow their scope. See 37 C.F.R. §41.121(a)(2)(i)-(ii). For
`
`example, Substitute Claim 31 (which replaces Claim 1) brings in limitations from
`
`Original Claims 2 and 3 (as shown in the strikethroughs for Substitute Claims 32
`
`and 33).
`
`The substitute dependent claims are also narrower than the original claims due
`
`to their dependency from the substitute independent claims, the addition of further
`
`limitations in the dependent claims, and the inclusion of limitations from dependent
`
`claims into the independent claims from which they depend. As a result, the
`
`substitute claims do not enlarge the scope of the original claims.
`
`E.
`
`The Amendments Have Written Description Support
`
`Each of the proposed substitute claims have written description support in
`
`U.S. Patent Application No. 13/001,687 (the “’687 Application”). The non-
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`-4-
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`exhaustive table below provides examples of how each limitation of the substitute
`
`claims is disclosed in the specification and/or figures of the ’687 Application as filed.
`
`The table below includes cites to the page and line number from the ’687
`
`Application, as found in Exhibit 1002. See Ex. 1002 (File History of ’687
`
`Application) at 5-33.
`
`Substitute Claims
`
`Support in the ’687 Application
`
`31. A method in a network node
`
`4:16-19 (“In a first example of embodiment,
`
`for network based control of
`
`there is disclosed a method in a network node
`
`report messages in a wireless
`
`for network based control of report messages
`
`communications network, the
`
`in a wireless communications network. The
`
`network node being configured
`
`network node being configured to serve a
`
`to serve a user equipment, UE,
`
`user equipment, UE, and to receive report
`
`and to receive report messages
`
`messages from the user equipment.”); see
`
`from the UE, the method
`
`also 4:24-27; 18:1-5
`
`comprising:
`
`receiving, by the network node,
`
`8:9-11 (“the network node communications
`
`from the UE an indication of the
`
`interface 52 may be configured to receive,
`
`existence of logged
`
`from the UE 30, an indication of existents of
`
`-5-
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`
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`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`measurements that are available
`
`logged measurements that are available”); see
`
`in the UE;
`
`also 9:25-27; 11:14-19; Fig. 4 (Step S71)
`
`sending a request from the
`
`4:19-20 (“The method comprises sending a
`
`network node to the UE to start
`
`request to the UE to start transmitting logged
`
`transmitting the logged
`
`measurements in a report message”); see also
`
`measurements in a report
`
`Fig. 3 (Step S62); Fig. 4 (Step S72)
`
`message;
`
`receiving, by the network node,
`
`4:20-21 (“The network node then receives the
`
`the report message comprising
`
`report message comprising the logged
`
`logged measurements,
`
`measurements from the UE”); see also Fig. 3
`
`(Step S64); Fig. 4 (Step S74)
`
`wherein the logged
`
`8:4-5 (“The logged measurements may
`
`measurements comprise
`
`comprise one or more of the following:
`
`measurement time stamps for
`
`measurement time stamps for each performed
`
`each performed measurement,
`
`measurement; … positioning information of
`
`and the logged measurements
`
`UE; serving cell conditions; transmit power
`
`further comprise one or more of
`
`headroom conditions; paging channel
`
`serving cell conditions, transmit
`
`failure(s); maximum required memory
`
`-6-
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`
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`Substitute Claims
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`power headroom conditions,
`
`supported by UE; and broadcast channel
`
`paging channel failures,
`
`failure(s).”); see also 18:14-18
`
`maximum required memory
`
`supported by the UE, and
`
`broadcast channel failures;
`
`determining, by the network
`
`4:20-22 (“The network node then …
`
`node, if the received report
`
`determines if the received report
`
`message comprises an indicator
`
`message comprises an indicator of additional
`
`of additional logged
`
`logged measurements not yet transmitted, and
`
`measurements not yet
`
`if so…”); see also 4:30-5:3; Fig. 3 (Step
`
`transmitted; and if so,
`
`S66); Fig. 4 (Step S76)
`
`deciding if the additional logged
`
`4:20-23 (“The network node then … decides
`
`measurements are to be
`
`if the additional logged measurements need to
`
`requested, wherein the deciding
`
`be requested”); 8:27-31 (“According to one
`
`is based on radio condition
`
`embodiment, the network node processor
`
`measurements experienced in a
`
`circuit 50 may be configured to decide if the
`
`cell.
`
`additional logged measurements need to be
`
`requested based on one or more of the
`
`-7-
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`
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`Substitute Claims
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`following: . . . radio condition measurements
`
`experienced in a cell[.]”); see also 4:30-5:3;
`
`Fig. 3 (Step S68); Fig. 4 (Step S78)
`
`32. The method according to
`
`18:10-12 (“deciding (S68) if the additional
`
`claim 31, wherein the method
`
`logged measurements are to be requested”);
`
`comprises: the network node
`
`2:28-30 (“The network node i.e. eNB/RNC
`
`deciding that the additional
`
`determines if it should request the logged
`
`logged measurements are not to
`
`measurements or not”); see also Fig. 3 (Step
`
`be requested.
`
`S68); Fig. 4 (Step S78)
`
`33. The method according to
`
`8:4-11 (The logged measurements may
`
`claim 31, wherein each of the
`
`comprise one or more of the following:
`
`logged measurements further
`
`measurement time stamps for each performed
`
`comprises UE buffer state
`
`measurement; UE buffer state condition;
`
`condition.
`
`positioning information of UE; … .”); see
`
`also 8:27-31.
`
`34. The method according to
`
`18:19-20 (“wherein the report message is
`
`claim 31, wherein the report
`
`received directly from the UE or via another
`
`message is received directly
`
`network node”); see also 8:14-16; 20:3-5
`
`-8-
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`
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`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`Substitute Claims
`
`from the UE or via another
`
`network node.
`
`35. The method according to
`
`10:28-31 (“the network node 28 takes a
`
`claim 31, wherein the network
`
`decision (based on current radio conditions,
`
`node decides that the additional
`
`node capacity) whether the network node 28
`
`logged measurements are to be
`
`shall request more logged measurements
`
`requested at a later predefined
`
`"data" from the UE now or request it at a later
`
`point in time and the deciding is
`
`point in time. This "later point in time" could
`
`further based on one or more of
`
`be predefined e.g. 15s later.”)
`
`the following: interference level
`
`18:20-25 (“The method according to any
`
`experienced in a cell; available
`
`preceding claim, wherein the deciding (S68)
`
`radio resource; network node
`
`is based on one or more of the following:
`
`capacity; and UE buffer state
`
`interference level experienced in a cell; radio
`
`condition
`
`condition measurements experienced in a
`
`cell; available radio resource; network node
`
`capacity; UE buffer state condition etc.”); see
`
`also 20:6-10.
`
`-9-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`36. A network node for network
`
`4:16-19 (“In a first example of embodiment,
`
`based control of report messages
`
`there is disclosed a method in a network node
`
`in a wireless communications
`
`for network based control of report messages
`
`network, the network node being
`
`in a wireless communications network. The
`
`configured to serve a user
`
`network node being configured to serve a
`
`equipment, UE, and to receive
`
`user equipment, UE, and to receive report
`
`report messages from the user
`
`messages from the user equipment.”); see
`
`equipment, the network node
`
`also 4:24-27; 18:1-5; 19:12-15
`
`comprises:
`
`a network node communications
`
`8:9-11 (“According to one embodiment, the
`
`interface configured to receive,
`
`network node communications interface 52
`
`from the UE, an indication of an
`
`may be configured to receive, from the UE 30,
`
`existence of logged
`
`an
`
`indication of existents of
`
`logged
`
`measurements that are available;
`
`measurements that are available.”); see also
`
`9:25-27; 11:14-19; 19:16-18; 19:22-24; Fig. 4
`
`(Step S71); 4:28-29 (“The network node
`
`comprises a network node communications
`
`-10-
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`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`interface and a network node processor
`
`circuit.”); Fig. 2.
`
`the network node
`
`19:16-18 (“a network node communications
`
`communications interface also
`
`interface (52) configured to send a request to
`
`configured to send a request to
`
`the UE to start transmitting logged
`
`the UE to start transmitting
`
`measurements in a report message, and to
`
`logged measurements in a report
`
`receive the report message comprising the
`
`message, and to receive the
`
`logged measurements;”); see also 4:19-21;
`
`report message comprising the
`
`Fig. 3 (Steps S62, S64); Fig. 4 (Steps S72,
`
`logged measurements,
`
`S74)
`
`wherein the logged
`
`8:4-5 (“The logged measurements may
`
`measurements comprise
`
`comprise one or more of the following:
`
`measurement time stamps for
`
`measurement time stamps for each performed
`
`each performed measurement,
`
`measurement; … positioning information of
`
`and the logged measurements
`
`UE; serving cell conditions; transmit power
`
`further comprise one or more of
`
`headroom conditions; paging channel
`
`serving cell conditions, transmit
`
`failure(s); maximum required memory
`
`-11-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`power headroom conditions,
`
`supported by UE; and broadcast channel
`
`paging channel failures,
`
`failure(s).”); see also 18:14-18; 19:25-20;
`
`maximum required memory
`
`20:6-10
`
`supported by the UE, and
`
`broadcast channel failures;
`
`a network node processor circuit
`
`4:30-5:3 (“The network node processor
`
`configured to determine if the
`
`circuit being configured to determine if the
`
`received report message
`
`received report message comprises an
`
`comprises an indicator of
`
`indicator of additional logged measurements
`
`additional logged measurements
`
`not yet transmitted; and if so, to decide if the
`
`not yet transmitted;
`
`additional logged measurements need to be
`
`requested”); see also 8:24-26; 19:19-21.
`
`and if so, to decide if the
`
`4:30-5:3 (“The network node processor
`
`additional logged measurements
`
`circuit being configured to determine if the
`
`need to be requested, wherein
`
`received report message comprises an
`
`the deciding is based on radio
`
`indicator of additional logged measurements
`
`condition measurements
`
`not yet transmitted; and if so, to decide if the
`
`experienced in a cell.
`
`-12-
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`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`additional logged measurements need to be
`
`requested”); 8:27-31 (“According to one
`
`embodiment, the network node processor
`
`circuit 50 may be configured to decide if the
`
`additional logged measurements need to be
`
`requested based on one or more of the
`
`following: . . . radio condition measurements
`
`experienced in a cell[.]”); see also 4:20-23;
`
`Fig. 3 (Step S68); Fig. 4 (Step S78); 8:26-
`
`8:31; 19:20-21
`
`37. The network node according
`
`18:10-12 (“deciding (S68) if the additional
`
`to claim 36, wherein the network
`
`logged measurements are to be requested”);
`
`node communications interface
`
`2:28-30 (“The network node i.e. eNB/RNC
`
`is configured to decide that the
`
`determines if it should request the logged
`
`additional logged measurements
`
`measurements or not”); see also Fig. 3 (Step
`
`from a report message are not to
`
`S68); Fig. 4 (Step S78)
`
`be requested.
`
`-13-
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`
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`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`38. The network node according
`
`8:4-11 (The logged measurements may
`
`to claim 36, wherein each of the
`
`comprise one or more of the following:
`
`logged measurements further
`
`measurement time stamps for each performed
`
`comprises UE buffer state
`
`measurement; UE buffer state condition;
`
`condition.
`
`positioning information of UE; … .”); see
`
`also 8:27-31; 19:25-20:2.
`
`39. The network node according
`
`18:19-20 (“wherein the report message is
`
`to claim 36, wherein the network
`
`received directly from the UE or via another
`
`node communications interface
`
`network node”); see also 8:14-16; 20:3-5
`
`is configured to request the
`
`report message directly from the
`
`UE or from another network
`
`node.
`
`40. The network node according
`
`10:28-31 (“the network node 28 takes a
`
`to claim 36, wherein the network
`
`decision (based on current radio conditions,
`
`node processor circuit is
`
`node capacity) whether the network node 28
`
`configured to decide if the
`
`shall request more logged measurements
`
`additional logged measurements
`
`"data" from the UE now or request it at a later
`
`-14-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`need to be requested at a later
`
`point in time. This "later point in time" could
`
`predefined point in time and the
`
`be predefined e.g. 15s later.”)
`
`deciding is further based on one
`
`18:20-25 (“The method according to any
`
`or more of the following:
`
`preceding claim, wherein the deciding (S68)
`
`interference level experienced in
`
`is based on one or more of the following:
`
`a cell; available radio resource;
`
`interference level experienced in a cell; radio
`
`network node capacity; and UE
`
`condition measurements experienced in a
`
`buffer state condition.
`
`cell; available radio resource; network node
`
`capacity; UE buffer state condition etc.”); see
`
`also 19:25-20:2, 20:6-10.
`
`41. A method in a User
`
`5:4-9 (“a method in a User Equipment, UE,
`
`Equipment, UE, for assisting in
`
`for assisting in network based control of
`
`network based control of report
`
`report messages in a wireless
`
`messages in a wireless
`
`communications network. The UE is being in
`
`communications network, the
`
`connection with a serving network node and
`
`UE being in connection with a
`
`configured to transmit report messages to the
`
`serving network node and
`
`network node upon request. The UE is further
`
`configured to transmit report
`
`configured to periodically perform radio
`
`-15-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`messages to the network node
`
`condition measurements and store the
`
`upon request, and wherein the
`
`periodically performed measurements in a UE
`
`UE is configured to periodically
`
`buffer as logged measurements. The method
`
`perform radio condition
`
`comprising …”).
`
`measurements and store the
`
`periodically performed
`
`measurements in a UE buffer as
`
`logged measurements, the
`
`method comprising:
`
`receiving a request from the
`
`5:9-10 (“The method comprising: receiving a
`
`network node to start
`
`request, in the UE, from the network node to
`
`transmitting logged
`
`start transmitting logged measurements in a
`
`measurements in a report
`
`report message;”)
`
`message;
`
`determining if the logged
`
`5:11-12 (“determining if the logged
`
`measurements fit in the report
`
`measurements fit in the report message; and if
`
`message; and if not, including in
`
`not, including in the report message an
`
`the report message an indicator
`
`-16-
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`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`of additional logged
`
`indicator of additional logged measurements
`
`measurements not yet
`
`not yet transmitted”)
`
`transmitted;
`
`wherein the additional logged
`
`8:4-5 (“The logged measurements may
`
`measurements comprise
`
`comprise one or more of the following:
`
`measurement time stamps for
`
`measurement time stamps for each performed
`
`each performed measurement,
`
`measurement; … positioning information of
`
`and the additional logged
`
`UE; serving cell conditions; transmit power
`
`measurements further comprise
`
`headroom conditions; paging channel
`
`one or more of serving cell
`
`failure(s); maximum required memory
`
`conditions, transmit power
`
`supported by UE; and broadcast channel
`
`headroom conditions, paging
`
`failure(s).”); see also 18:14-18
`
`channel failures, maximum
`
`required memory supported by
`
`the UE, and broadcast channel
`
`failures;
`
`-17-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`transmitting the report message,
`
`5:12-14 (“and, transmitting the report
`
`comprising the indicator, to the
`
`message, comprising the indicator, to the
`
`network node as a response to
`
`network node as a response to the request.”)
`
`the request;
`
`and transmitting the additional
`
`10:28-31 (“the network node 28 takes a
`
`logged measurements to the
`
`decision (based on current radio conditions,
`
`network node at a later,
`
`node capacity) whether the network node 28
`
`predefined point in time.
`
`shall request more logged measurements
`
`"data" from the UE now or request it at a later
`
`point in time. This "later point in time" could
`
`be predefined e.g. 15s later.”)
`
`42. The method according to
`
`13:11-12 (“A "Time stamp" value i.e.
`
`claim 41, wherein the including
`
`"Reporting time stamp" or other identifier is
`
`comprises including a reporting
`
`added to the report message at report message
`
`time stamp in the report
`
`transmission.”); see also 21:12-13.
`
`message.
`
`-18-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`43. The method according to
`
`21:14-15 (“wherein the logged measurements
`
`claim 41, wherein the logged
`
`that are transmitted to the network node are
`
`measurements that are
`
`further deleted from the buffer of the UE”).
`
`transmitted to the network node
`
`are further deleted from the
`
`buffer of the UE.
`
`44. A User Equipment, UE, for
`
`5:4-9 (“a method in a User Equipment, UE,
`
`assisting in network based
`
`for assisting in network based control of
`
`control of report messages in a
`
`report messages in a wireless
`
`wireless communications
`
`communications network. The UE is being in
`
`network, the UE being in
`
`connection with a serving network node and
`
`connection with a serving
`
`configured to transmit report messages to the
`
`network node and configured to
`
`network node upon request. The UE is further
`
`transmit report messages to the
`
`configured to periodically perform radio
`
`network node, and wherein the
`
`condition measurements and store the
`
`UE is configured to periodically
`
`periodically performed measurements in a UE
`
`perform radio condition
`
`buffer as logged measurements. The method
`
`measurements and store the
`
`comprising …”); see also 5:15-26.
`
`-19-
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`Substitute Claims
`
`periodically performed
`
`measurements in a buffer as
`
`logged measurements, the UE
`
`comprises:
`
`a UE communications interface
`
`5:20-23 (“The UE comprises a UE
`
`configured to receive a request
`
`communications interface and a UE processor
`
`from the network node to start
`
`circuit. The UE communications interface is
`
`transmitting logged
`
`configured to receive a request from the
`
`measurements in a report
`
`network node to start transmitting logged
`
`message, and to transmit the
`
`measurements in a report message, and to
`
`report message comprising the
`
`transmit the report message comprising the
`
`logged measurements;
`
`logged measurements.”).
`
`a UE processor circuit
`
`5:23-26 (“The UE processor circuit is
`
`configured to determine if the
`
`configured to determine if the logged
`
`logged measurements fits in the
`
`measurements fits in the report message, and
`
`report message, and if not,
`
`if not, indicating in the report message to be
`
`indicating in the report message
`
`transmitted an existents of additional logged
`
`to be transmitted an existence of
`
`measurements not yet transmitted.”).
`
`-20-
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`Substitute Claims
`
`additional logged measurements
`
`not yet transmitted,
`
`wherein the additional logged
`
`8:4-5 (“The logged measurements may
`
`measurements comprise
`
`comprise one or more of the following:
`
`measurement time stamps for
`
`measurement time stamps for each performed
`
`each performed measurement,
`
`measurement; … positioning information of
`
`and the additional logged
`
`UE; serving cell conditions; transmit power
`
`measurements further comprise
`
`headroom conditions; paging channel
`
`one or more of serving cell
`
`failure(s); maximum required memory
`
`conditions, transmit power
`
`supported by UE; and broadcast channel
`
`headroom conditions, paging
`
`failure(s).”); see also 18:14-18
`
`channel failures, maximum
`
`required memory supported by
`
`the UE, and broadcast channel
`
`failures;
`
`and the UE processor circuit is
`
`10:28-31 (“the network node 28 takes a
`
`configured to transmit the
`
`decision (based on current radio conditions,
`
`additional logged measurements
`
`node capacity) whether the network node 28
`
`-21-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`to the network node at a later,
`
`shall request more logged measurements
`
`predefined point in time.
`
`"data" from the UE now or request it at a later
`
`point in time. This "later point in time" could
`
`be predefined e.g. 15s later.”)
`
`18:20-25 (“The method according to any
`
`preceding claim, wherein the deciding (S68)
`
`is based on one or more of the following:
`
`interference level experienced in a cell; radio
`
`condition measurements experienced in a
`
`cell; available radio resource; network node
`
`capacity; UE buffer state condition etc.”); see
`
`also 20:6-10.
`
`45. The User Equipment
`
`13:11-12 (“A "Time stamp" value i.e.
`
`according to claim 44, wherein
`
`"Reporting time stamp" or other identifier is
`
`the UE processor circuit is
`
`added to the report message at report message
`
`configured to add a reporting
`
`transmission.”); see also 21:12-13.
`
`time stamp to the reporting
`
`message.
`
`-22-
`
`
`
`Substitute Claims
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`Support in the ’687 Application
`
`46. The User Equipment
`
`21:14-15 (“wherein the logged measurements
`
`according to claim 44, wherein
`
`that are transmitted to the network node are
`
`the logged measurements that
`
`further deleted from the buffer of the UE”).
`
`are transmitted to the network
`
`node are further deleted from the
`
`buffer of the UE.
`
`47. The User equipment
`
`22:11-12 (“The User equipment (30)
`
`according to claim 44, wherein
`
`according to any of claims 26 to 29, wherein
`
`the logged measurements are
`
`the logged measurements are Minimizing
`
`Minimizing Drive Tests, MDT,
`
`Drive Tests, MDT, log data.”).
`
`log data.
`
`IV. CONCLUSION
`
`This Non-Contingent Motion to Amend meets the statutory and regulatory
`
`requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. For the reasons
`
`set forth above, Patent Owner respectfully requests the Board grant this Non-
`
`Contingent Motion to Amend for each of Substitute Claims 31-47.
`
`-23-
`
`
`
`Dated: October 13, 2022
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`Respectfully submitted,
`
`By: /Chad C. Walters/
`Chad C. Walters
`Reg. No. 48,022
`Lead Counsel for Patent Owner
` Telefonaktiebolaget LM Ericsson
`
`-24-
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`
`APPENDIX A: CLAIM LISTING
`
`Patent Owner presents the following listing of non-contingent substitute
`
`claims. Pursuant to 37 C.F.R. § 1.121(c)(1)-(4), Patent Owner indicates those claims
`
`that have been cancelled.
`
`1.-5. (Cancelled)
`
`6. (Original) The method according to claim 1, wherein the determining
`
`comprises determining if the indicator indicates that there is logged measurements
`
`in a buffer of the UE that do, or do not, fit in a single subsequent report message.
`
`7. (Original) The method according to claim 6, wherein the deciding
`
`comprises deciding to request all the logged measurements in the buffer of the UE
`
`in one subsequent request.
`
`8. (Original) The method according to claim 1, wherein the method comprises
`
`receiving a previously sent report message from another network node(s),
`
`automatically or upon request.
`
`9. (Original) The method according to claim 1, wherein the sending of a
`
`request is initiated by a UE handover procedure from another network node to the
`
`network node.
`
`1
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`10. (Original) The method according to claim 9, wherein the method
`
`comprises receiving a network node message from the other network node
`
`comprising UE specific information.
`
`11. (Original) The method according to claim 10, wherein the UE specific
`
`information comprises the indicator of additional logged measurements not yet
`
`transmitted.
`
`12.-16. (Cancelled)
`
`17. (Original) The network node according to claim 12, wherein the network
`
`node processor circuit is configured to the determine if the indicator indicates that
`
`there is logged measurements in a buffer of the UE that do, or do not, fit in a single
`
`subsequent report message.
`
`18. (Original) The network node according to claim 17, wherein the network
`
`node processor circuit is configured to decide to request all the logged measurements
`
`in the buffer of the UE in one subsequent request.
`
`19. (Original) The network node according to claim 12, wherein the network
`
`node communications interface is configured to request the report message upon
`
`receiving a UE access request initiated by a UE handover procedure from another
`
`network node to the network node.
`
`2
`
`
`
`Case No. IPR2022-00459
`Patent No. 8,798,658
`20. (Original) The network node according to claim 19, wherein the network
`
`node communications interface is configured to receive a network node message
`
`from the other network node comprising UE specific information.
`
`21. (Original) The network node according to claim 19 wherein the UE
`
`specific information comprises the indicator of additional logged measurements not
`
`yet transmitted.
`
`22.-24. (Cancelled)
`
`25. (Original) The method according to claim 22, wherein the logged
`
`measurements that are oldest in the buffer are reported first.
`
`26.-28. (Cancelled)
`
`29. (Original) The User Equip
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