UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON
`
`Patent Owner
`
`_________________
`
`
`
`Inter Partes Review Case No. IPR2021-00459
`
`U.S. Patent No. 8,798,658
`
`
`
`
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`
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`DECLARATION OF DR. MATTHEW C. VALENTI
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`
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`
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`IPR2022-00459
`Apple EX1003 Page 1
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`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON
`
`Patent Owner
`
`_________________
`
`
`
`Inter Partes Review Case No. IPR2021-00459
`
`U.S. Patent No. 8,798,658
`
`
`
`
`
`
`
`DECLARATION OF DR. MATTHEW C. VALENTI
`
`
`
`
`
`
`
`IPR2022-00459
`Apple EX1003 Page 1
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
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`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................ 3
`BACKGROUND AND QUALIFICATIONS ............................................. 4
`II.
`III. UNDERSTANDING OF PATENT LAW ................................................... 8
`IV. PERSON OF ORDINARY SKILL IN THE ART .................................... 13
`V.
`SUMMARY OF OPINIONS ...................................................................... 15
`VI. OVERVIEW OF THE TECHNOLOGY .................................................. 15
`VII. SUMMARY OF THE ’658 PATENT ........................................................ 20
`VIII. OVERVIEW OF THE PRIOR ART ......................................................... 23
`A. OVERVIEW OF ZHOU ................................................................................. 23
`B. OVERVIEW OF WU .................................................................................... 28
`IX. DETAILED ANALYSIS ............................................................................ 37
`A. GROUND 1: CLAIMS 1-5, 12-16, 22, 26, AND 30 ARE RENDERED OBVIOUS BY
`ZHOU ........................................................................................................ 37
`B. GROUND 2: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
`OBVIOUS BY ZHOU IN VIEW OF WU .......................................................... 67
`C. GROUND 3: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
`OBVIOUS BY WU ...................................................................................... 80
`CONCLUSION ........................................................................................... 96
`
`X.
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
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`I, Matthew Valenti, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained as an expert witness by Apple Inc. in connection
`
`with the above-captioned Petition for Inter Partes Review of U.S. Patent No.
`
`8,798,658 (“’658 Patent”).
`
`2.
`
`I have been asked to prepare this Declaration to provide my opinions
`
`regarding whether or not claims 1-5, 12-16, 22-24, 26-28, and 30 (“the Challenged
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`Claims”) of the ’658 Patent would have been obvious to a person having ordinary
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`skill in the art at the time of the alleged invention. I have been asked to assume that
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`the priority date of the alleged invention recited in the ’658 Patent is October 4, 2010
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`(hereinafter “Priority Date”).
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`3.
`
`In preparing this Declaration, I reviewed the ’658 Patent, its file history
`
`and related applications, the prior art references discussed herein, the exhibits to the
`
`Petition, and the other documents discussed herein. I also relied upon my education
`
`and experience, and I considered the viewpoint of a person having ordinary skill the
`
`art (“POSITA”) as of the Priority Date.
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`4.
`
`It is my opinion that the Challenged Claims of the ’658 Patent are
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`invalid as obvious to a POSITA at the time of the alleged invention in view of the
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`prior art references discussed herein.
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`I am not, and never have been, an employee of Apple. I am being
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`5.
`
`compensated for my work at my normal hourly compensation, based on time
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`actually spent analyzing the ’658 patent, the prior art publications cited here, and the
`
`issues related to these materials, but my compensation is not contingent in any way
`
`on the content of my opinions or the outcome of this proceeding.
`
`II. BACKGROUND AND QUALIFICATIONS
`6.
`I am currently a Professor of Computer Science and Electrical
`
`Engineering at West Virginia University in Morgantown, West Virginia. I have over
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`25 years of experience in telecommunications and communication technology, with
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`an emphasis on wireless and cellular networks. I am a Fellow of the Institute of
`
`Electrical and Electronic Engineers (IEEE). My full qualifications and experience
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`are set out in my Curriculum Vitae (“CV”), attached to this Declaration as Exhibit
`
`1004.
`
`7.
`
`I received my Bachelor of Science in Electrical Engineering from
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`Virginia Polytechnic Institute and State University (Virginia Tech) in 1992, and a
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`Master of Science in Electrical Engineering at Johns Hopkins University in 1995. I
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`subsequently completed a Ph.D. in Electrical Engineering from Virginia Tech in
`
`1999.
`
`8.
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`In 1992, I started as a full-time Electronics Engineer at the U.S. Naval
`
`Research Laboratory in Washington D.C. I subsequently became a Graduate
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`Research Assistant and Instructor as the Bradley Fellow at Bradley Department of
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`Electrical and Computer Engineering, Virginia Tech, from August 1995 to July
`
`1999.
`
`9.
`
`Following this, in August 1999, I joined West Virginia University,
`
`initially as an Assistant Professor. I was promoted to Associate Professor in August
`
`2005 and to Professor in August 2010, a position I still hold today.
`
`10.
`
`I acted as Interim Department Chair from July 2019 to June 2020, and
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`from July 2020 to June 2021, I served as the Raymond Lane Department Chair.
`
`11.
`
`I am a registered Professional Engineer in the State of West Virginia
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`and have held that license since 2011.
`
`12.
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`I have published 38 journal papers and technical magazine articles and
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`over 100 conference papers in the telecommunications field, focusing on wireless
`
`technologies, including ten papers in the journal IEEE Transactions on Wireless
`
`Communications. My CV contains a complete list of my publications. I have served
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`as Editor-in-Chief of IEEE Communications Society Best Readings since 2015, an
`
`online repository of curated content focusing on current technologies including
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`Device- to-Device Communication, Internet of Things, Multi-Tier Cellular, and Full
`
`Duplex Wireless Communications. I was Chair, between 2016 and 2017, and a
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`Member, from 2014 to 2017, of the Executive Editorial Committee of IEEE
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`Transactions on Wireless Communications. I have acted as a Reviewer of a
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`multitude of Journals since 2000,
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`including for IEEE Transactions on
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`Communications. I am currently Chair of the IEEE Globecom/ICC Technical
`
`Content (GITC) committee, which is the technical steering committee for IEEE
`
`Global Communications Conference (GLOBECOM) and IEEE International
`
`Conference on Communications (ICC), the flagship global conferences on
`
`communication technology, and I have been a member of this committee since 2015.
`
`I have been a member of the IEEE Military Communications Conference (MILCOM)
`
`Board and have held the Chair positions for a significant number of IEEE
`
`international conferences around the world since 2007, including those on wireless
`
`communications and next-generation networks.
`
`13.
`
`I have received several academic awards and honors over the years,
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`including awards for Outstanding Researcher in the Statler College of Engineering
`
`and Mineral Resources of West Virginia University in 2000, 2001, and 2008. In
`
`2019, I received the IEEE MILCOM Award for Sustained Technical Achievement.
`
`14.
`
`In my academic role, I am responsible for the design and delivery of
`
`academic courses in communication technologies at the undergraduate and graduate
`
`level. I have taught courses on Digital Signal Processing, Communication Theory
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`and Communications Systems at West Virginia University, and have developed
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`new courses in Wireless Networking, Wireless Communications, and Coding
`
`Theory.
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`I run an active research program focused on the development and
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`15.
`
`evaluation of advanced communication
`
`transmission
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`technology,
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`including
`
`physical-layer
`
`technologies such as error control coding, hybrid ARQ,
`
`synchronization, and channel estimation. I have secured external competitive
`
`funding from agencies including the National Science Foundation (NSF) and the
`
`Office of Naval Research (ONR) to support my work. My duties include the
`
`mentoring of graduate students, many of whom support my research activities as
`
`research assistants. To date, I have supervised the research of 50 students
`
`successfully graduating with advanced degrees, 10 at the Ph.D. level and 40 at the
`
`M.S. level.
`
`16. My work in the area of channel estimation includes a well-cited paper
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`“Iterative channel estimation and decoding of pilot symbol assisted turbo codes over
`
`flat-fading channels,” published in 2001 in IEEE Journal on Selected Areas of
`
`Communication, where I consider the reception and processing of pilot symbols in
`
`a wireless receiver for the purposes of estimating the channel. I also consider the
`
`estimation of the signal-to-noise ratio (a kind of channel quality measurement) in a
`
`paper “Joint synchronization and SNR estimation for turbo codes in AWGN
`
`channels,” published in 2005 in IEEE Transactions on Communications.
`
`17.
`
`I have extensive experience in developing software for the simulation
`
`and implementation of various aspects of wireless communication systems,
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`including key portions of the LTE, UMTS, HSDPA, WiMAX, cdma2000, and DVB-
`
`S2 standards. My software is available to the public in a package called the Coded
`
`Modulation Library (CML).1 The code has been incorporated into several
`
`commercial products.
`
`18.
`
`I previously have been retained as an expert witness in numerous
`
`proceedings in different jurisdictions, including the United States District Courts,
`
`the United States Patent and Trademark Office, and the International Trade
`
`Commission (ITC). This has included acting as an expert witness for major
`
`technology companies and wireless carriers in patent disputes and investigations
`
`involving telephone modems, mobile phone handsets, LTE, WCDMA/UMTS and
`
`other core wireless technologies.
`
`III. UNDERSTANDING OF PATENT LAW
`19.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law is as listed below.
`
`20.
`
`I understand that claims in an IPR are construed under the case Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), decided by the Federal Circuit in
`
`2005. I further understand that under the rule in Phillips, words of claims are given
`
`
`
`1See https://github.com/wvu-wcrl/CML.
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`their plain and ordinary meaning as understood by a person of ordinary skill in the
`
`art in view of the specification and prosecution history, unless those sources show
`
`an intent to depart from such meaning. In this declaration, I have applied plain and
`
`ordinary meaning to the claims of the ’658 patent.
`
`21.
`
`I understand that a patent cannot be properly granted for subject matter
`
`that would have been obvious to a POSITA at the time of the claimed invention, and
`
`that a patent claim directed to such obvious subject matter is invalid under 35 U.S.C.
`
`§ 103.
`
`22.
`
`I understand that obviousness of a claim requires that the claim be
`
`obvious from the perspective of a POSITA at the time of the alleged invention. I
`
`understand that a claim may be obvious in view of a single prior art reference, or a
`
`combination of two or more prior art references. I understand that prior art to the
`
`’658 Patent includes patents and printed publications in the relevant art that predate
`
`the Priority Date of the ’658 Patent.
`
`23.
`
`I understand that an obviousness analysis requires an understanding of
`
`the scope and content of the prior art, any differences between the alleged invention
`
`and the prior art, and the level of ordinary skill in evaluating the pertinent art.
`
`24.
`
`I understand
`
`that certain
`
`factors—often called “secondary
`
`considerations”—may support or rebut an assertion of obviousness of a claim. I
`
`understand that such secondary considerations include, among other things,
`
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`commercial success of the alleged invention, skepticism of those having ordinary
`
`skill in the art at the time of the alleged invention, unexpected results of the alleged
`
`invention, any long-felt but unsolved need in the art that was satisfied by the alleged
`
`invention, the failure of others to make the alleged invention, praise of the alleged
`
`invention by those having ordinary skill in the art, and copying of the alleged
`
`invention by others in the field. I further understand that there must be a nexus—a
`
`connection—between any such secondary considerations and the alleged invention.
`
`I also understand that contemporaneous and independent invention by others is a
`
`secondary consideration tending to show obviousness.
`
`25.
`
`I further understand that a claim can be found obvious if it unites old
`
`elements with no change to their respective functions, or alters prior art by mere
`
`substitution of one element for another known in the field, with that combination
`
`yielding predictable results. While it may be helpful to identify a reason for this
`
`combination, common sense should guide, and there is no rigid requirement for a
`
`teaching, suggestion, or motivation to combine. When a product is available, design
`
`incentives and other market forces can prompt variations of it, either in the same
`
`field or different one. If a person having ordinary skill in the relevant art can
`
`implement a predictable variation, obviousness likely bars patentability. Similarly,
`
`if a technique has been used to improve one device, and a person having ordinary
`
`skill in the art would recognize that the technique would improve similar devices in
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`the same way, use of the technique is obvious. I further understand that a claim may
`
`be obvious if common sense directs one to combine multiple prior art references or
`
`add missing features to reproduce the alleged invention recited in the claims.
`
`26.
`
`I also understand that the following rationales may support a finding of
`
`obviousness:
`
`a. Combining prior art elements according to known methods to yield
`predictable results;
`b. Simple substitution of one known element for another to obtain
`predictable results;
`c. Use of known technique to improve similar devices (methods, or
`products) in the same way;
`d. Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`e. “Obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`f. Known work in one field of endeavor may prompt variations of it for use
`in either the same field or a different one based on design incentives or
`other market forces if the variations are predictable to one of ordinary skill
`in the art;
`g. Some teaching, suggestion, or motivation in the prior art that would have
`led one of ordinary skill to modify the prior art reference or to combine
`prior art reference teachings to arrive at the claimed invention.
`
`27.
`
`It is also my understanding that to determine whether it would have
`
`been obvious to combine known elements in a manner claimed in a patent, one may
`
`consider such things as the interrelated teachings of multiple pieces of prior art, the
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`Patent No. 8,798,658
`effects of demands known to the design community or present in the marketplace,
`
`and the background knowledge of an individual having ordinary skill in the art.
`
`28.
`
`It is further my understanding that determining obviousness is
`
`expansive and flexible. I understand that there is no requirement for an obviousness
`
`analysis to find precise teachings that are directed to specific subject matter of a
`
`claim; rather, the common sense, inferences, and creative steps that a person of
`
`ordinary skill in the art would employ should be taken into account.
`
`29.
`
`It is also my understanding that a need or problem known in the field at
`
`the time of an invention can provide an obvious reason to combine elements in the
`
`manner claimed. A patent’s subject matter would have been obvious, for example,
`
`if at the time of the invention, there was a known problem for which the patent claims
`
`encompassed an obvious solution. Further, if a patent claims a structure known in
`
`the prior art that only substitutes one element for another that is known in the field.
`
`30.
`
`I understand that the combination would have been obvious unless the
`
`result is unexpected and fruitful. Therefore, a predictable variation of prior art is
`
`obvious. It is also my understanding that when there are a finite number of identified,
`
`predictable solutions to a known problem, the combination was obvious to try and
`
`thus might be obvious under 35 U.S.C. § 103. It is my additional understanding that
`
`items may have obvious uses beyond their primary purposes. I understand that
`
`neither a particular motivation nor an avowed purpose of a patentee controls how a
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`Declaration of Dr. Matthew Valenti
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`piece of prior art may be used. It is also common sense that familiar items may have
`
`obvious uses beyond their primary purposes, and that a person of ordinary skill often
`
`will be able to fit the teachings of multiple patents together like pieces of a puzzle.
`
`It is my understanding that this list of rationales is not exclusive and that other
`
`rationales may support a conclusion of obviousness.
`
`31.
`
`It is further my understanding that multiple prior art references can be
`
`combined to show that a claim is obvious. Any need or problem known in the field
`
`and addressed by a patent claim can provide a reason for combining multiple
`
`references in the manner claimed. I understand that a claim can be obvious in light
`
`of a single reference, without the need to combine references, if the elements of the
`
`claim that are not found explicitly or inherently in the reference can be supplied by
`
`the knowledge of an ordinarily skilled artisan.
`
`32.
`
` As informed by Apple’s counsel, I understand that the obviousness
`
`analysis requires a comparison of the properly construed claim language to the prior
`
`art on a limitation-by-limitation basis.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`33.
`It is my understanding that the level of ordinary skill in the art is based
`
`on a study of the patents at issue and their file histories, a study of the prior art cited
`
`therein, and knowledge of the following:
`
`a. The level of education and experience of persons actively working in the
`field at the time the subject matter at issue was developed;
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`b. The types of problems encountered in the art at the time the subject
`matter was developed;
`c. The prior art patents and publications;
`d. The activities of others working in that field;
`e. Prior art solutions to those problems; and
`f. The sophistication of the technology at issue in this case.
`34.
`It is also my understanding that for determining the level of ordinary
`
`skill in the art, consideration should also be given to factors such as: (1) the
`
`sophistication of the relevant technology; (2) the rapidity with which innovations are
`
`made in that field; (3) the educational level of active workers in that field; and (4)
`
`the education and experience of the alleged inventors. It is further my understanding
`
`that these factors are not exhaustive and are merely a useful guide to determine the
`
`level of ordinary skill in the art.
`
`35.
`
`Taking all of these consideration into account, it is my opinion that a
`
`POSITA at the time of the ’658 Patent 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. That person might be working on developing a standard or on
`
`implementing it. Additional education might compensate for less experience, and
`
`vice-versa. Such a person would possess sufficient knowledge and experience to
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`understand the types of problems and subject matter technology at issue here, in
`
`view of the relevant technology as described in the ’658 Patent and the prior art
`
`discussed herein.
`
`36.
`
`Based on that level of ordinary skill, I have been a POSITA since at least
`
`1998. The opinions I am offering are from the perspective of a POSITA at the time
`
`of the alleged invention, which for purposes of this Declaration I assume is October
`
`4, 2010.
`
`37.
`
`I also note that my opinions provided in this Declaration would not
`
`change in view of any minor modifications to this level of skill.
`
`V.
`
`SUMMARY OF OPINIONS
`38.
`It is my opinion that claims 1-5, 12-16, 22, 26, and 30 of the ’658 Patent
`
`are rendered obvious under 35 U.S.C. § 103 by Zhou (Ground 1 below).
`
`39.
`
`It is my opinion that claims 1-5, 12-16, 22-24, 26-28, and 30 of the ’658
`
`Patent are rendered obvious under 35 U.S.C. § 103 by Zhou in view of Wu (Ground
`
`2 below).
`
`40.
`
`It is my opinion that claims 1-5, 12-16, 22-24, 26-28, and 30 of the ’658
`
`Patent are rendered obvious under 35 U.S.C. § 103 by Wu (Ground 3 below).
`
`VI. OVERVIEW OF THE TECHNOLOGY
`41.
`In the paragraphs that follow, I discuss technical principles that are
`
`pertinent to the ’658 Patent and the related prior art.
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`42. The ’658 patent is generally directed to methods and apparatuses for
`
`network-based control of report messages in a wireless communications network,
`
`such as an LTE network. Ex. 1001 at Abstract, 1:63-65.
`
`43.
`
`As is well known in the prior art, a wireless communication system,
`
`such as an LTE network, generally includes a wireless device referred to as a User
`
`Equipment (UE), such as a mobile, handset, cell phone, laptop, tablet, or the like,
`
`and a network node referred to as Base Station (BS). Ex. 1001 at 1:23-37. Depending
`
`on the particular implementation, a BS may be referred to by different terminology,
`
`including for example, “Base Transceiver Station (BTS),” “NodeB,” “eNodeB,” or
`
`the like. Ex. 1001 at 1:33-37.
`
`44.
`
`A BS typically covers a geographic area, called a “cell,” within a radio
`
`access network (“RAN”), and communicates wirelessly over the air with the UEs
`
`therein. Ex. 1001 at 1:33-38.
`
`45. Generally, wireless network operators monitor their networks to ensure
`
`that they are providing the best network coverage and quality of service for their
`
`customers. Ex. 1008 at 28. Prior to December 2010 when the 3rd Generation
`
`Partnership Project (3GPP) TS 37.320 v.10.0.0 standard was released, network
`
`operators traditionally sent network technicians or engineers into the field to collect
`
`radio measurements, to discover problems such as coverage holes in the network,
`
`and to determine whether certain parameter tuning was needed. Ex. 1008 at 28; Ex.
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`1011. Network technicians performed these radio measurements by conducting
`
`“drive test[ing].” Ex. 1008 at 28; Ex. 1009, § 5.1. It is called drive testing because
`
`the engineers would drive a vehicle, such as a van, containing mobile radio network
`
`air interface measurement equipment, e.g., specially developed test terminals,
`
`measurement devices, and a Global Positioning System (GPS) receiver, to collect
`
`data about the network’s performance. Ex. 1008 at 28. Drive tests, however,
`
`required large Operational Expenditure (OPEX). Ex. 1008 at 28.
`
`46. The 3rd Generation Partnership Project (3GPP) is an umbrella
`
`organization that facilities standard setting by seven telecommunications standard
`
`setting organizations, including the Alliance for Telecommunications Industry
`
`Solutions (ATIS) in the USA and the European Telecommunications Standards
`
`Institute (ETSI) in Europe. In an effort to reduce the OPEX expenditures associated
`
`with drive testing, 3GPP studied and specified solutions to reduce this OPEX for
`
`drive tests, under the work item named “Minimization of Drive Tests (MDT).” Id.;
`
`see e.g., Ex. 1010; Ex. 1011.
`
`47. The MDT solution resulting from 3GPP’s study is described in
`
`technical specifications such as 3GPP TS 37.320 V.1.0.0 (2010-08), which provides
`
`procedures for the MDT functionality in LTE networks. For example, TS 37.320
`
`provides that “A UE configured to perform Logged MDT measurements in IDLE
`
`indicates the availability of MDT measurements, by means of a one bit indicator, in
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`RRCConnectionSetupComplete message during connection establishment.” Ex.
`
`1010, § 5.1.1.3.1. “The network can decide to retrieve the logged measurements
`
`based on this indication.” Id. TS 37.320 further explains that “the measurement
`
`reporting is triggered by on-demand mechanism, i.e., the UE is asked by the network
`
`to send the collected measurement logs via RRC signalling.” Id., § 5.1.1.3.2. Thus,
`
`MDT has been known in the art since at least August 2010.
`
`48. With these solutions, the need for operator-conducted drive tests could
`
`be replaced by customer-owned UEs taking the measurements and reporting this
`
`information, thereby reducing or eliminating the need to deploy network technicians
`
`or engineers for drive tests. See Ex. 1008 at 28; Ex. 1009, § 5.1. Examples of
`
`measurements so collected include: periodically measured downlink pilot strength,
`
`serving cell conditions, transmit power headroom conditions, paging channel
`
`failure(s), maximum required memory supported by UE, broadcast channel
`
`failure(s), and UE buffer state condition. Each performed measurement is typically
`
`associated with information pertaining to the time and positioning of the UE. Ex.
`
`1001 at 2:18-25.
`
`49. Because of certain limitations, such as the desire to reduce power
`
`consumption, the desire to avoid producing unnecessary interference, and limited
`
`bandwidth resources, a UE does not continuously collect and report MDT
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`IPR2022-00459
`Apple EX1003 Page 18
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`
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`measurements to a BS. Rather, an event (e.g., a handover to another cell) or a request
`
`from the BS may trigger a UE to take measurements. Ex. 1001 at 2:26-27, 6:5-9.
`
`50.
`
`In addition, a UE is not always connected to a BS. A UE may not be
`
`connected to a BS because, for example, it is located in an area without coverage or
`
`might be located within an overloaded cell with insufficient capacity. When the UE
`
`is not connected to a BS, it cannot report a log. Ex. 1001 at 2:37-44.
`
`51. Therefore, at the time the measurements are taken, a UE may either be
`
`in a connected state (i.e., connected to a BS), or in an idle state (i.e., not connected
`
`to a BS). See Ex. 1008 at 30-33. When in a connected state, the UE may take
`
`measurements and promptly report the information to the BS. Ex. 1008 at 32-33.
`
`However, if in an idle state, the UE logs the data for future transmission to the BS.
`
`Ex. 1008 at 28, 30-33. When the UE subsequently connects to a BS, it transmits a
`
`notification to the BS indicating that the UE has logged measurements available for
`
`the BS. Ex. 1008 at 30-33. Then, the BS decides whether to request the logged
`
`measurements from the UE. Ex. 1008 at 30-33. If the BS decides to request the
`
`logged measurements, it sends a request message to the UE instructing the UE to
`
`transmit the logged measurements to the BS. In response to the request from the BS,
`
`the UE sends a report message containing the logged measurements to the BS. Ex.
`
`1008 at 30-33.
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`
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`VII. SUMMARY OF THE ’658 PATENT
`
`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`
`52. The ’658 Patent has 30 claims, including four independent claims
`
`(claims 1, 12, 22, and 26) and 26 dependent claims. Independent claims 1, 12, 22,
`
`and 26, as well as dependent claims 2-5, 13-16, 23-24, 27-28, and 30, are the claims
`
`challenged in the Petition (the “Challenged Claims”).
`
`53. The ’658 Patent relates to MDT and logged data reporting. Ex. 1001 at
`
`3:22-32. The ’658 Patent addresses a problem arising when the quantity of logged
`
`data available for reporting cannot fit within a single Radio Resource Control RRC
`
`message, which is a message sent from the UE to the BS providing its measurements.
`
`Id. at 2:49-3:18.
`
`54. The ’658 Patent explains that one previously suggested solution was to
`
`limit the maximum size of a log in a UE to one RRC message that fits within the
`
`single packet size limits of the Packet Data Convergence Protocol (PDCP). Id. at
`
`2:49-60. Another prior suggestion was to send a log that is larger than a RRC
`
`message with several RRC messages. The ’658 Patent contends that these solutions
`
`have disadvantages. For example, the ’658 Patent notes that limiting the log size
`
`could prevent logging to complete for the whole configured run time. Id. at 2:65-
`
`3:1. The log could fill the limited buffer space before a report message is sent out
`
`to the network (which would free up space in the buffer), and therefore the UE would
`
`cease taking measurements. Id. at 2:65-3:7.
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`In addition, the ’658 Patent contends that “sending too many RRC
`
`55.
`
`packets in a row could, in poor radio environments or when handover would occur,
`
`create problems with the radio connections and could also create unnecessary radio
`
`link failures that will make the users suffer and logged data be lost.” Id. at 3:14-18.
`
`56. As a solution, the ’658 Patent proposes segmenting the data when the
`
`logged measurements exceed the maximum size of the report message and including
`
`an indication in the report message from the UE that additional logged measurements
`
`remain in the UE buffer. Id. at 7:10-17. The BS receives the indication and decides
`
`whether and when to request the additional logged data, depending on current
`
`conditions (e.g., interference level experienced in a cell; radio condition
`
`measurements experienced in a cell; available radio resource network node capacity;
`
`or UE buffer state condition). Id. at 7:31-42. This way, the BS is enabled to decide
`
`when
`
`the
`
`logged measurements are
`
`transmitted and when more
`
`logged
`
`measurements should be requested. Id. at 7:24-28. Figure 3 illustrates this method:
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`
`
`
`Ex. 1001, Fig. 3.
`
`57. As discussed below, however, this MDT scheme was well known in the
`
`art, and disclosed by Zhou and Wu.
`
`58.
`
`I reviewed the prosecution history of the ’658 Patent. The application
`
`included the same thirty (30) claims as the issued ’658 Patent. Ex. 1002, 22-26
`
`(listing Claims 1-30 of national phase entry), 41-48 (listing preliminary amendments
`
`to Claims 1-30). The Examiner did not reject any of the claims of the application,
`
`and a Notice of Allowance issued on March 24, 2014. Id. at 288.
`
`59.
`
`In the Notice of Allowance, the Examiner identified the following as
`
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`Declaration of Dr. Matthew Valenti
`Patent No. 8,798,658
`the point of novelty of each independent claim: (1) using an in
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