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. IPR2022-00468
`
`U.S. Patent No. 10,512,027
`
`DECLARATION OF JONATHAN WELLS UNDER 37 C.F.R. § 1.68
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,512,027
`
`IPR2022-00468
`Apple EX1005 Page 1
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 3
`
`II. QUALIFICATIONS ..................................................................................... 4
`
`III. UNDERSTANDING OF PATENT LAW .................................................. 10
`
`IV.
`
`SUMMARY OF MY OPINIONS ............................................................... 12
`
`V.
`
`OVERVIEW OF THE TECHNOLOGY................................................... 13
`
`VI. OVERVIEW OF THE ’027 PATENT ....................................................... 18
`
`VII. PERSON OF ORDINARY SKILL IN THE ART ..................................... 19
`
`VIII. OVERVIEW OF THE PRIOR ART.......................................................... 21
`
`A. U.S. PATENT NO. 10,455,621 TO AGIWAL ET AL. (EX. 1002) ......................... 21
`
`B. U.S. PATENT APPLICATION PUBLICATION NO. 2019/0174554 TO DEENOO ET
`AL. (EX. 1003)................................................................................................ 31
`
`C. U.S. PATENT APPLICATION PUBLICATION NO. 2016/0234736 TO KUBOTA ET
`AL. (EX. 1004)................................................................................................ 41
`
`IX. ANALYSIS .................................................................................................. 43
`
`A. GROUND I: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF AGIWAL
` ....................................................................................................................... 43
`
`B. GROUND II: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF DEENOO
` ....................................................................................................................... 76
`
`C. GROUND III: CLAIMS 3, 4, 11-18, AND 20 ARE OBVIOUS IN VIEW OF AGIWAL AND
`KUBOTA ....................................................................................................... 102
`
`D. GROUND IV: CLAIMS 3, 4, 13, AND 14 ARE OBVIOUS IN VIEW OF DEENOO AND
`KUBOTA ....................................................................................................... 113
`
`X.
`
`CONCLUSION.......................................................................................... 119
`
`IPR2022-00468
`Apple EX1005 Page 2
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`I, Jonathan Wells, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained as an expert witness by Apple Inc. (“Petitioner”)
`
`in connection with the above- captioned Petition for Inter Partes Review (“IPR”)
`
`of U.S. Patent No. 10,512,027 (“the ’027 patent”) (Ex. 1001).
`
`2.
`
`I have been asked to prepare this Declaration to provide my opinions
`
`regarding whether or not claims 1-8, 10-18, and 20-21 of the ’027 patent are valid
`
`in view of the prior art cited in the Petition. I refer to claims 1-8, 10-18, and 20-21
`
`of the ʼ027 patent as the “Challenged Claims.”
`
`3.
`
`In preparing my Declaration, I reviewed the ’027 patent, including its
`
`file history, prior art references, technical references, and other publications from
`
`the time of the alleged invention, which I discuss herein, including 3rd Generation
`
`Partnership Project (“3GPP”) meeting notes R2-166120 from October 10-14, 2016;
`
`LTE for UMTS, Evolution to LTE- Advanced, Harri Holma and Antti Toskala (2d
`
`IPR2022-00468
`Apple EX1005 Page 3
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`Ed., 2011) (“Holma”);1 and LTE - The UMTS Long Term Evolution: From Theory
`
`to Practice, Stefania Sesia Baker and Issam Toufik (2nd ed., 2011) (“Sesia”).2
`
`4.
`
`In forming the opinions expressed in my Declaration, I relied upon my
`
`education and experience, and I considered the viewpoint of a person having
`
`ordinary skill the art (“POSA”), as discussed in Section VII below, as of the priority
`
`date of the ’027 patent.
`
`5.
`
`I am not currently, and never have been, an employee of Apple. I
`
`received no compensation for this Declaration beyond my normal hourly
`
`compensation based on my time spent analyzing the ’027 patent, the prior art patents
`
`and publications cited below, and issues related thereto. My compensation is not
`
`affected by or dependent in any way on the outcome of this matter. I have no
`
`financial interest in Apple.
`
`II. QUALIFICATIONS
`
`6. My educational background, career history, publications, and other
`
`relevant qualifications provided here are only a summary. My full curriculum vitae,
`
`
`
`1 Holma was published and publicly available no later than July 1, 2011. Ex. 1018
`
`(Mullins Declaration In Support of Public Availability of Holma), ¶48.
`
`2 Sesia was published and publicly available no later than April 14, 2012. Ex. 1018
`
`(Mullins Declaration In Support of Public Availability of Sesia), ¶63.
`
`
`
`IPR2022-00468
`Apple EX1005 Page 4
`
`

`

`including cases in which I have previously given testimony, is attached as Exhibit
`
`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`1006.
`
`7.
`
`I have over 35 years of academic and industry experience in wireless
`
`networks, including 2G, 3G, 4G and 5G networks, comprising GSM, WCDMA,
`
`LTE and NR technologies; cellular infrastructure equipment, including handsets,
`
`base stations and backhaul; and wireless standards, rules and regulations (e.g., 3GPP,
`
`ETSI and FCC). Over my career, I have developed and deployed radio frequency
`
`(RF) hardware for telecommunication infrastructure equipment for worldwide
`
`export, implemented marketing and product development strategies for cellular
`
`wireless products, and participated in European Telecommunications Standards
`
`Institute (“ETSI”), Federal Communications Commission (“FCC”) and other
`
`technical body meetings. I have been a member of 3GPP, and have direct knowledge
`
`and experience with 3GPP and its operations and specifications. I have worked as
`
`an expert in matters related to the infringement and validity of patents on multiple
`
`occasions, including for patents related to wireless technologies and standards.
`
`8.
`
`In 1987, I received my Bachelor of Science (B.Sc.) degree in Physics
`
`with Physical Electronics, awarded with 1st Class Honours, from the University of
`
`Bath, Bath, United Kingdom. In 1991, I received my Doctor of Philosophy (Ph.D.)
`
`degree from the University of Bath. In 1998, I received my Master of Business
`
`
`
`IPR2022-00468
`Apple EX1005 Page 5
`
`

`

`Administration (M.B.A.) degree, awarded with distinction, from Massey University,
`
`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`New Zealand.
`
`9.
`
`I began my career in 1985, as an engineer for Plessey Research,
`
`Caswell, United Kingdom, developing high-speed fiber optic transmitter/receiver
`
`devices. In 1987, I worked at British Aerospace, Bristol, United Kingdom,
`
`designing and fabricating novel mixer devices to support my Ph.D. research. From
`
`1990 to 1992, I worked at the University of Bath as a Postdoctoral Research
`
`Officer. During
`
`this
`
`time, I researched and developed novel
`
`integrated
`
`semiconductor devices, including developing software models to predict the
`
`performance of these and other devices. I also taught undergraduate classes and ran
`
`laboratory sessions.
`
`10.
`
`From 1993 to 1994, I was a Senior Design Engineer at Matra Marconi
`
`Space, where I developed integrated electronic components and space-qualified sub-
`
`systems for two satellite payloads.
`
`11.
`
`From 1994 to 1998 I was employed by MAS Technology (now Aviat
`
`Networks) in Wellington, New Zealand; first as a Senior Design Engineer before
`
`being promoted to Engineering Group Manager. During this time, I was responsible
`
`for hardware development for three families of telecommunication equipment and
`
`sustaining development for a family of satellite ground station terminals. I
`
`IPR2022-00468
`Apple EX1005 Page 6
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`personally designed a wide range of RF devices, and was also responsible for the
`
`company’s European regulatory approvals.
`
`12.
`
`From 1998 to 2000, I was with Adaptive Broadband (now GE Digital
`
`Energy) in Rochester, NY; first as an Engineering Group Leader, and then as
`
`Director of Wideband Products. In this latter role, I had full profit and loss
`
`responsibility for the Terrestrial Infrastructure Group, where I also oversaw the
`
`development of a family of digital radios and associated switching and multiplexing
`
`equipment.
`
`13.
`
`From 2000 to 2004, I was Director of Product Development at Stratex
`
`Networks (now Aviat Networks) in San Jose, CA. At Stratex Networks I was
`
`responsible for global product development of a portfolio of high-end digital
`
`microwave radios primarily for cellular applications. I led a development team of
`
`35 engineers, and provided technical leadership of Stratex’s flagship Eclipse
`
`product.
`
`14.
`
`From 2005 to 2007, I was Director of Product Management and Global
`
`Regulatory Affairs at GigaBeam Corporation in Herndon, VA. At GigaBeam, I was
`
`responsible for overall product strategy for a novel, industry-transforming wireless
`
`communication product. During this time, I had responsibility for establishing a
`
`global regulatory framework for this new product, which included developing FCC,
`
`CEPT and ETSI standards to cover the specification and regulation of the system. I
`
`IPR2022-00468
`Apple EX1005 Page 7
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`participated in multiple FCC, CEPT and ETSI standard setting meetings, and met
`
`multiple times with more than a dozen different international regulatory bodies to
`
`help setup wireless regulations within their countries.
`
`15.
`
`I have been Managing Partner of AJIS Consulting since 2007. As an
`
`independent consultant, I provide expertise on various aspects of wireless
`
`communications, including, but not limited to, cellular technologies, wireless
`
`devices, network infrastructure, and wireless rules and regulations. In that capacity,
`
`I have undertaken multiple projects consulting on these topics, as well as analyzing
`
`patents and commercial equipment, for a variety of clients in the communications
`
`industry. This analysis of commercial equipment includes analysis and reverse
`
`engineering of equipment including cellular base stations and user devices, and both
`
`Wi-Fi and Bluetooth equipment. I have conducted a number of technical workshops
`
`on various aspects of wireless technology, including cellular networks, mm-wave
`
`radios, security sensors and short range radios. I have also helped public companies,
`
`private entities, and startups with product development and marketing strategies for
`
`wireless products.
`
`16.
`
`I have written multiple books, industry reports and journal and
`
`conference papers, most of which focus on wireless communications system. For
`
`example, I am the author of “Multi-Gigabit Microwave and Millimeter-Wave
`
`Wireless Communications” (Artech House, 2010). I have authored four
`
`IPR2022-00468
`Apple EX1005 Page 8
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`comprehensive industry reports on cellular connectivity for Mobile Experts, which
`
`provides analysis and consulting services to mobile device manufacturers. I have
`
`lectured as part of undergraduate programs at UC Berkeley, Carnegie Mellon
`
`University and University of Bath, and have given over two dozen lectures and
`
`conference presentations on topics germane to wireless communications.
`
`17.
`
`I have been a member of the Institute of Electrical and Electronic
`
`Engineers (“IEEE”) since 1995 and a Senior Member of IEEE since 1999. I am also
`
`a Member of the IEEE Communications Society and the IEEE Microwave Theory
`
`and Techniques Society. I was a reviewer for the U.S. Government’s Broadband
`
`Technology Opportunity Program and the Broadband Initiatives Program, both part
`
`of the American Recovery and Reinvestment Act of 2009. I have been a Chair or
`
`Co-Chair of numerous technology workshops and symposia related to wireless
`
`communications technology. In 2019 I was recognized by the IEEE Santa Clara
`
`Valley Section as their “Outstanding Engineer” of the year. The IEEE Santa Clara
`
`Valley Section encompasses Silicon Valley and is the largest IEEE Section in the
`
`world. This was awarded “For his acknowledged expertise in the field of wireless
`
`communication and wireless technology, for his willingness to mentor others in the
`
`field, and for his work in the development of the next generation of creative and
`
`innovative technical products.”
`
`IPR2022-00468
`Apple EX1005 Page 9
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`III. UNDERSTANDING OF PATENT LAW
`
`18.
`
`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 this law is listed below.
`
`19.
`
`I understand that prior art to the ’027 patent includes patents and printed
`
`publications in the relevant art that predate the priority date of the ’027 patent.
`
`20.
`
`I understand that words of claims in an IPR are given 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.
`
`21.
`
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed expressly
`
`or inherently in a single prior art reference, arranged in the prior art reference as
`
`arranged in the claim. Obviousness of a claim requires that the claim be obvious
`
`from the perspective of a person having ordinary skill in the relevant art at the time
`
`of the alleged invention. I understand that a claim may be obvious in view of a
`
`combination of two or more prior art references, and 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.
`
`IPR2022-00468
`Apple EX1005 Page 10
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`22.
`
`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, I understand 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. It is my understanding that 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 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.
`
`23.
`
`I also understand that the following rationales may support a finding of
`
`obviousness, particularly where multiple references disclose the claimed subject
`
`matter:
`
`(i). Combining prior art elements according to known methods to yield
`predictable results;
`
`IPR2022-00468
`Apple EX1005 Page 11
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`(ii).
`
`simple substitution of one known element for another to obtain
`predictable results;
`
`(iii). use of known technique to improve similar devices (methods, or
`products) in the same way;
`
`(iv). applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`
`(v).
`
`“obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`
`(vi). 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; and
`
`(vii). 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
`r art reference teachings to arrive at the claimed invention.
`
`IV. SUMMARY OF MY OPINIONS
`
`24.
`
`It is my opinion that claims 1-8, 10-18, and 20-21 of the ’027 patent are
`
`obvious in view of Agiwal (Ground I below).
`
`25.
`
`It is also my opinion that claims 1-8, 10-18, and 20-21 of the ’027 patent
`
`are obvious in view of Deenoo (Ground II below).
`
`26.
`
`It is also my opinion that claims 3, 4, 11-18, and 20 of the ’027 patent
`
`are obvious in view of Agiwal and Kubota (Ground III below).
`
`27.
`
`It is also my opinion that claims 3, 4, 13, and 14 of the ’027 patent are
`
`obvious in view of Deenoo and Kubota (Ground IV below).
`
`
`
`IPR2022-00468
`Apple EX1005 Page 12
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`V. OVERVIEW OF THE TECHNOLOGY
`
`A. Cellular Networks
`
`28. A cellular wireless network typically includes a number of base stations
`
`(BS) that communicate with many user equipment (UE) wirelessly. Ex. 1004
`
`(Kubota) at ¶¶ 5-6 (“[A] wireless multiple-access communication system may
`
`include a number of base stations, each simultaneously supporting communication
`
`for multiple communication devices, otherwise known as user equipments (UEs).”).
`
`A base station is a network node in a cellular wireless system that may be known by
`
`various terminologies in different contexts, such as, for example, a nodeB (NB),
`
`evolved NodeB (eNodeB or eNB), or next generation NodeB (gNodeB or gNB) .
`
`Ex. 1008 (Sesia) at 2.2 (“[T]he access network is made up of essentially just one
`
`node, the evolved NodeB (eNodeB), which connects to the UEs.”); Ex. 1002
`
`(Agiwal) at 2:33-34 (“In the fourth generation wireless communication system,
`
`enhanced node B (eNB) or base station (BS) in cell broadcast system information.”)
`
`A user equipment (UE) may be, for example, a handset, mobile cell phone,
`
`smartphone, laptop computer or any related wireless transmit/receive unit (WTRU).
`
`Ex. 1003 (Deenoo) at ¶ 25 (“By way of example, the WTRUs 102 a, 102 b, 102
`
`c, 102 d may be configured to transmit and/or receive wireless signals and may
`
`include user equipment (UE), a mobile station, a fixed or mobile subscriber unit, a
`
`pager, a cellular telephone, a personal digital assistant (PDA), a smartphone, a
`
`
`
`IPR2022-00468
`Apple EX1005 Page 13
`
`

`

`laptop, a netbook, a personal computer, a wireless sensor, consumer electronics,
`
`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`and the like.”).
`
`29. A UE and base station will communicate with one another wirelessly,
`
`using radio waves. Communication is sent on a channel, which can comprise a band
`
`of frequency within the frequency spectrum. When a UE sends a communication to
`
`a base station, this may be referred to as sending a message on an “uplink.” Ex.
`
`1004 (Kubota) at ¶ 5 (“A base station may communicate with UEs on downlink
`
`channels (e.g., for transmissions from a base station to a UE) and uplink channels
`
`(e.g., for transmissions from a UE to a base station).”). When a base station sends a
`
`communication to a UE, this may be referred to as sending a message on a
`
`“downlink.” Id.
`
`B.
`
`Long-Term Evolution (LTE) and New Radio (NR)
`
`30. Development of the 4th generation (4G) of the wireless technology,
`
`also known as Long-Term Evolution (LTE), standard started in 2004. Ex. 1007
`
`(Holma) at 4. LTE was developed by the 3rd Generation Partnership Project
`
`(3GPP), which is the dominant standards development group for mobile radio
`
`systems. Ex. 1008 (Sesia) at 1.1.2. According to the LTE scheme, information is
`
`transmitted from one or more user equipments (UEs) on uplink channels to a base
`
`station (BS or eNodeB). Information can also be transmitted in the other direction,
`
`from the base station to the UEs on downlink channels. Ex. 1007 (Holma) at 5.
`
`
`
`IPR2022-00468
`Apple EX1005 Page 14
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`Whereas the uplink uses a Single Carrier Frequency Division Multiple Access (SC-
`
`FDMA) scheme, the downlink uses a multiple-access scheme using Orthogonal
`
`Frequency Division Multiplexing (OFDMA). Ex. 1007 (Holma) at 5. By the mid-
`
`2010s, development was underway on the 5th generation of wireless technology,
`
`known as 5G or NR (“new radio”). In 5G, a UE communicates with a base station
`
`known as a gNodeB. 5G wireless devices typically accommodate higher bandwidth
`
`and provide higher data rates to more users in a fixed area in comparison to 4G.
`
`C.
`
`System Information (SI) and System Information Blocks (SIBs)
`
`31.
`
`In a wireless communication network, like a cellular network, a base
`
`station (BS) and a user device or user equipment (UE) communicate through
`
`channels, which are signals transmitted between the base station and the UE over an
`
`air-interface. In cellular systems, the basic System Information (SI), which allows
`
`the other channels in the cell to be configured and operated, is usually carried by a
`
`Broadcast Channel (BCH). Ex. 1008 (Sesia) at 9.2.1.
`
`32.
`
`Sesia is a well-known textbook on LTE and provides an overview of
`
`system information. System information is structured by System Information Blocks
`
`(SIBs). Ex. 1008 (Sesia) at 3.2.2. Each SIB contains a set of functionally-related
`
`parameters. Id. For example, Sesia describes that SIB types have included:
`
`• The Master Information Block (MIB), which includes a limited
`number of the most frequently transmitted parameters which are
`essential for a UE’s initial access to the network.
`
`IPR2022-00468
`Apple EX1005 Page 15
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`• System Information Block Type 1 (SIB1), which contains
`parameters needed to determine if a cell is suitable for cell
`selection, as well as information about the time-domain
`scheduling of the other SIBs.
`• System Information Block Type 2 (SIB2), which includes
`common and shared channel information.
`• SIB3–SIB8, which include parameters used to control
`intra-frequency,
`inter-frequency
`and
`inter-RAT cell
`reselection.
`• SIB9, which is used to signal the name of a Home eNodeB
`(HeNBs).
`• SIB10–SIB12, which include the Earthquake and Tsunami
`Warning Service (ETWS) notifications and Commercial
`Mobile Alert System (CMAS) warning messages (See
`Section 13.7).
`• SIB13, which includes MBMS related control information (See
`Section 13.6.3.2.)
`
`Id. There may be several SI messages, and each SI message includes one or more
`
`SIBs that have the same scheduling requirements, for example, the same
`
`transmission periodicity. Id. Sesia further provides an example of possible SI
`
`scheduling configuration:
`
`IPR2022-00468
`Apple EX1005 Page 16
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`Id. at Table 3.1.
`
`D.
`
`Using Preambles to Request System Information
`
`33.
`
`System Information (SI) can either be continuously broadcast from the
`
`base station (i.e., “always on”) or delivered to a UE on demand. Ex. 1009 (R2-
`
`166120, Oct. 10-14, 2016) at 1. In order to increase network efficiency, for example,
`
`by reducing signaling overhead, companies have long tried to reduce the amount of
`
`continuously broadcast system information and replacing it with on-demand system
`
`information. Id. at 1-2.
`
`34. A known implementation of such on-demand SI delivery, which was
`
`discussed by 3GPP at least as early as October 2016, is requesting SI using preamble
`
`transmission associated with the requested SI. Id. at 3. A preamble is a message
`
`sent by a UE to a base station, the content and characteristics of which are known in
`
`advance, and which can
`
`indicate a request for SI. Id. at 3. Under this
`
`implementation, each preamble can be mapped to an individual SI or to a set of SI.
`
`Id. (“each reserved preamble is mapped to a set of system information.”). When the
`
`UE wants to acquire specific SI, it sends the corresponding preamble to the base
`
`station (e.g., gNodeB or gNB) to request the specific SI. In addition to requesting
`
`one specific SI, this approach also includes the UE requesting “system information
`
`in more than one group.” Id.
`
`IPR2022-00468
`Apple EX1005 Page 17
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`
`
`Id. at Fig. 4.
`
`VI. OVERVIEW OF THE ’027 PATENT
`
`35.
`
`I understand that the ’027 patent issued on December 17, 2019 from
`
`U.S. Application No. 15/568,431, filed September 13, 2017. I understand that the
`
`ʼ027 patent purports to claim priority to PCT Application No. PCT/CN2017/070130,
`
`filed on January 4, 2017.
`
`36. The ’027 patent describes requesting and transmitting SI using a
`
`preamble, which indicates at least one system information block (SIB) group that
`
`are grouped based on feature. The ’027 patent states that prior art systems used one
`
`preamble to request all other SI which may lead to transmitting some undesired other
`
`SI. Ex. 1001 (’027 patent) at 4:46-48. This is because there are other SI in the
`
`system, all of which the network may broadcast in response to receiving such
`
`preamble. This is inefficient because the requesting UE may not need all of the other
`
`SI. Id. at 4:48-52. As a solution to this inefficiency, the ’027 patent proposes “on-
`
`demand request for SI.” Id. at 4:58-59. In particular, the ’027 patent explains that
`
`one or more SIBs may be grouped into to a SIB group, and a UE may request a SIB
`
`
`
`IPR2022-00468
`Apple EX1005 Page 18
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`group that contains the specific SI the UE is seeking. Id. at 4:59-63. The ’027 patent
`
`states that this way, “the network node can know which SIB group the user terminal
`
`actually needs” resulting in a more efficient transmission. Id. at 4:63-5:5.
`
`37.
`
`I have reviewed the prosecution history for the ʼ027 patent. The
`
`Examiner issued a non-final rejection of then-pending claims 1, 6-10, 12, 17-22, and
`
`24 under 35 U.S.C. § 103 over Ishii (US 2018/0167918) in view of Shukla
`
`(US2015/0351011). Ex. 1010 (’027 File History) at 254-59. The Applicant amended
`
`then-pending independent claims 1, 12, and 24 to include an extra limitation where
`
`the step of transmitting (claims 1, 12) or receiving (claim 24) a request include
`
`“using a preamble for indicating at least one system information block group . .
`
`. .” Id. at 274-77. After Applicants amended these claims, the Examiner issued a
`
`Notice of Allowance. Id. at 341.
`
`38. As discussed below, however, this additional limitation was well
`
`known in the prior art, which explicitly disclose a UE using a preamble to request
`
`and indicate one or more SIB groups from a base station.
`
`VII. PERSON OF ORDINARY SKILL IN THE ART
`
`39.
`
`I understand that a person of ordinary skill in the art is a hypothetical
`
`person who is presumed to have the skill and experience of an ordinary worker in
`
`the field at the time of the alleged invention.
`
`
`
`IPR2022-00468
`Apple EX1005 Page 19
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`40.
`
`I understand that there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including the educational level of active
`
`workers in the field at the time of the alleged invention, the sophistication of the
`
`technology, the type of problems encountered in the art, and the prior art solutions
`
`to those problems.
`
`41.
`
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art of the ’027 patent at the time of the claimed invention, I considered
`
`several things, including the type of problems encountered in this field, and the
`
`rapidity with which innovations were made. I also considered the sophistication of
`
`the technology involved, and the educational background and experience of those
`
`actively working in the field, and the level of education that would be necessary to
`
`understand the ’027 patent.
`
`42.
`
`I also placed myself back in the relevant period of time, and considered
`
`the state of the art and the level of skill of the engineers working in this field at that
`
`time.
`
`43.
`
`In my opinion, a person of ordinary skill in the art (“POSA”) at the time
`
`of the alleged invention would have had a Master’s degree in Electrical Engineering,
`
`Applied Mathematics, Computer Science, Physics, or equivalent and three to five
`
`years of experience working with wireless digital communication systems.
`
`
`
`IPR2022-00468
`Apple EX1005 Page 20
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`Additional education might compensate for less experience, and conversely,
`
`significant additional experience might compensate for less education.
`
`44.
`
`I also note that my opinions provided in this Declaration would not
`
`change in view of any minor modifications to this level of skill.
`
`VIII. OVERVIEW OF THE PRIOR ART
`
`45.
`
`In my opinion, all of the Challenged Claims are invalid as obvious, for
`
`the reasons I discuss herein. Before providing a detailed analysis of how the prior
`
`art invalidates the Challenged Claims, I provide a brief summary of the key prior art
`
`references upon which my opinions are based.
`
`A. U.S. Patent No. 10,455,621 to Agiwal et al. (Ex. 1002)
`
`46. Agiwal (U.S. Patent No. 10,455,621), which is entitled “Apparatus and
`
`Method for Signaling System Information,” pertains to an apparatus and method for
`
`requesting, transmitting, and receiving system information between a UE and a base
`
`station, which are part of a wireless communication system. Ex. 1002 (Agiwal) at
`
`1:17-20. In a wireless communication system, inefficiencies arise when a base
`
`station broadcasts SIBs periodically even when a UE may not need to receive such
`
`SIBs. Id. at 4:5-7 (“broadcasting . . . SIBs periodically is unnecessary and leads to
`
`significant wastage of resources and increased energy consumption.”). As a solution
`
`to this problem, Agiwal proposes a method that allows a UE to request and receive
`
`system information from a base station on demand. Id. at 19:41. This is a much
`
`
`
`IPR2022-00468
`Apple EX1005 Page 21
`
`

`

`Declaration of Jonathan Wells
`Patent No. 10,512,027
`
`more efficient method of requesting and transmitting SI in a wireless communication
`
`system. Id. at 5:19-22. Agiwal describes that system information parameters are
`
`categorized into SIBs, and one or more SIBs are grouped into a SIB set, also known
`
`as an SI message. Id. at 9:26-32. Agiwal explains that the grouping of SIBs can be
`
`based on a feature of the underlying SI, which can include grouping based on service.
`
`Id. at 9:34-39 (“Grouping . . . based on service (e.g. mobile broadband (MBB),
`
`URLL, mobile telecommunications company (MTC), device to device (D2D) . . . or
`
`UE type (MT CUE, MBB UE, D2D UE, etc.).”).
`
`47. Agiwal discloses a multi-step method where first the UE receives a first
`
`type SI from a base station and then transmits to the base station a physical random
`
`access channel (PRACH) preamble based on the first type SI. Id. at 4:39-46. Then,
`
`the UE receives a second type SI from the base station where the second type SI is
`
`associated with at least one SI that the UE needs and requested. Id. In particular,
`
`Agiwal discloses that a UE sends a specific request for a SIB group using a PRACH-
`
`SI preamble. Id. at 20:29-31 (“UE sends random access preamble (PRACH-SI)
`
`[that] acts as SI request in this method.”). Agiwal shows in Figure 11 that the
`
`PRACH-SI preamble, which I highlighted in yellow below, is specific to the SIB
`
`group requested, and thus returned by the base station in response, which I
`
`highlighted green below. Id. at 20:40-41 (“PRACH-SI preamble can be specific to
`
`system information or a set of system information or