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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________________
`
`Case IPR2022-00468
`Patent No. 10,512,027
`____________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2022-00468
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TABLE OF CONTENTS
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`
`1
`Introduction
`I.
`3
`Background of the ’027 Patent and the challenged claims
`II.
`7
`Person of ordinary skill in the art
`III.
`8
`IV. Claim construction
`V.
`The Petition’s Ground 1 fails because it relies on Agiwal, which the Petition
`fails to demonstrate is prior art.
`8
`VI. The Petition’s Ground 2 fails to establish that Deenoo teaches or suggests
`the challenged claims’ requirement of using a single preamble to indicate “system
`information block groups” comprised of system information blocks that are
`grouped according to a feature.
`VII. Conclusion
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`16
`30
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`EXHIBIT LIST
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`Exhibit No.
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`2001
`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice
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`I.
`
`Introduction
`
`The Petition fails to demonstrate a reasonable likelihood of success as to
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`either of its two primary grounds.
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`The Petition concedes that its primary reference, Agiwal, does not constitute
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`prior art unless it is entitled to the priority date of two earlier provisional
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`applications. Yet the Petition falls far short of its burden of demonstrating, with
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`particularity, how each and every element of Agiwal’s Claim 1 is supported by the
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`disclosure of the earlier provisional applications, as the Petition must do under
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
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`Cir. 2015) and its progeny. In particularly, the Petition simply glosses over
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`Agiwal’s claimed requirement that “the configuration information includes . . .
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`information on a PRACH preamble corresponding to each SI [system information]
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`message for the other SI [system information].” The Petition makes no effort to
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`identify any specific teachings of the Agiwal Provisionals, with particularity, that
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`allegedly disclose that requirement. And nothing in the broad swaths of text that
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`the Petition haphazardly cites from the Agiwal Provisionals provides any such
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`support. Accordingly, Agiwal is not prior art to the challenged claims, and cannot
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`demonstrate unpatentability.
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`The Petition’s second ground, which rests on Deenoo, is likewise deficient.
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`The challenged claims require organizing system information at two levels—first
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`into system information blocks, and second into system information block groups
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`according to a “feature” of the system information blocks. Deenoo, by contrast,
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`repeatedly and consistently only teaches one level of organization: grouping
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`system information into blocks, but not further organizing those blocks into system
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`information block groups, much less according to a “feature” of the system
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`information blocks. Moreover, while the challenged claims require that only a
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`single preamble be used to indicate the system information block groups as part of
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`the request sent to the network, Deenoo teaches using multiple preambles to
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`request its disclosed system information blocks. The Petition’s attempts to
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`demonstrate that Deenoo in fact matches the challenged claims rest on conclusory
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`assertions, mischaracterizations of Deenoo’s actual teachings, and selective
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`readings of fleeting language taken out of context and interpreted contrary to
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`Deenoo’s teachings as a whole.
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`The Petition’s glaring deficiencies are unsurprising given its provenance.
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`Apple’s Petition is essentially a cut-and-paste of a prior petition filed by Samsung
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`challenging the same claims the ’027 Patent. See IPR2021-00487. Apple’s Petition
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`is substantively identical to the earlier Samsung Petition. Indeed, Apple states that
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`“the instant petition largely repurposes the Samsung IPR.” Pet. at 70. Yet the ’027
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`Patent is not currently the subject of any patent infringement claims against Apple
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`in any pending litigation, so Apple’s Petition is not a means for “providing a quick
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`and cost-effective alternative[] to litigation,” which is the purpose of inter partes
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`review as outlined in the legislative history. H.R. Rep. No. 112–98, pt. 1, at 40
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`(2011). The use of inter partes review in this manner “frustrate[s] the purpose of
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`the section as providing quick and cost-effective alternatives to litigation” and
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`“divert[s] resources from the research and development of inventions.” See, e.g.,
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`id. at 40 (2011) (Legislative history establishing inter partes review) (emphasis
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`added).
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`Because the Petition fails to demonstrate a reasonable likelihood of success,
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`institution should be denied.
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`II. Background of the ’027 Patent and the challenged claims
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`United States Patent 10,512,027 (“the ’027 Patent”), titled “On-Demand
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`Request for System Information,” is directed to “[a] method for requesting system
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`information” comprising “transmitting a request for at least one system
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`information block group, each of which comprises one or more system information
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`blocks,” where the “system information blocks is/are grouped according to a
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`feature of the one or more system information blocks.” Ex. 1001 at 1, Abstract.
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`Figure 1 of the ’027 Patent, reproduced below, reflects that same design.
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`The ’027 Patent teaches that “[i]n the proposed solution, one or more SIBs
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`[system information blocks] may be classified into a SIB group according to their
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`relevance or correlation. When a user terminal wants to request some specific SI
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`[system information], it can request from a network node a SIB group in which the
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`specific SI is contained.” Ex. 1001 at 4:58-63.
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`
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`The ’027 Patent further teaches that “Table 1 exemplarily shows the
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`functional description of some SIBs in LTE. It can be seen from Table 1 that the
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`SIBs carrying SI are not fully independent to each other. For example, SIB3 to
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`SIB8 are all related to how to do cell reselection, although each SIB has different
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`responsibility. Therefore, SIB3 to SIB8 can be grouped together. For SIB10 to
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`SIB12, these SIBs are all related to warning and alert. Therefore, SIB10 to SIB12
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`can be grouped together.” Id. at 5:40-55. The specification further explains how
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`SIB18 and SIB19 can be grouped together, and how the remaining SIBs can be
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`grouped together. Id. “Thus, the SIBs listed in Table 1 may be classified into four
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`groups.” Id. Table 1, reproduced below, shows the groupings separated by ellipses.
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`Id. at 5:55-6:10.
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`Exemplary claim 1 correspondingly recites:
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`Element Claim 1
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`1[a]
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`1[b]
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`A method for requesting system information, comprising:
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`transmitting a request using a preamble for indicating at least one
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`system information block group, each of which comprises one or
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`more system information blocks, from a user terminal to a network
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`node;
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`1[c]
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`wherein the one or more system information blocks are grouped
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`according to a feature of the one or more system information blocks;
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`and
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`receiving one or more system information block groups from the
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`1[d]
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`network node, wherein the one or more system information block
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`groups comprise the at least one system information block group.
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`The Petition challenges claims 1-8, 10-18, and 20-21. The Petition’s
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`Grounds are summarized below.
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`Ground References
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`Basis Challenged
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`Claims
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`Agiwal
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`§ 103
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`1-8, 10-18, 20-21
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`
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`Deenoo
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`§ 103
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`1-8, 10-18, 20-21
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`Agiwal and Kubota § 103
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`3, 4, 11-18, 20
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`Deenoo and Kubota § 103
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`3-4, 13-14
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`1
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`2
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`3
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`4
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`III. Person of ordinary skill in the art
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`For purposes of this Preliminary Response, Patent Owner does not dispute
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`the Petition’s proposed level of skill for a person of skill in the art (“POSA”),
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`because the level of skill in the art is not necessary for addressing any disputes
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`between the parties.
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`IV. Claim construction
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`The Board does not construe claim terms that are not in dispute. Shenzhen
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`Liown Electronics Co. v. Disney Enterprises, Inc., IPR2015-01656, Paper 7 at 10
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`(Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999)). The Petition does not raise a dispute as to any claim
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`construction issues. Pet. at 6 (“the Board does not need to construe any terms to
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`resolve the arguments presented herein”). Patent Owner does not believe the Board
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`need resolve any claim construction issues at this stage.
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`V. The Petition’s Ground 1 fails because it relies on Agiwal, which the
`Petition fails to demonstrate is prior art.
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`The Petition’s Ground 1 rests on U.S. Patent 10,455,621 to Agiwal et al
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`(“Agiwal”). Pet. at 21. Agiwal issued from Application No. 15/433,307 (“the ’307
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`Application”), filed on February 27, 2017. Pet. at 7. The challenged ’027 Patent is
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`entitled to a priority date no later than January 4, 2017, which the Petition does not
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`dispute. Pet. at 4 (“Petitioner adopts January 4, 2017, as the invention date for the
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`Challenged Claims.”). Accordingly, Agiwal is not prior art to the ‘027 Patent
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`unless the Petition can prove that Agiwal is entitled to the priority date of one or
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`more applications pre-dating the ’307 Application.
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`In an attempt to do so, the Petition contends that Agiwal is entitled to the
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`priority dates of Provisional Application Nos. 62/301,016 (“Agiwal ’016”) and
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`62/334,706 (“Agiwal ’706”) (collectively, “the Agiwal Provisionals”).
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`“[F]or a non-provisional application to claim priority to a provisional
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`application for prior art purposes, the specification of the provisional application
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`must contain a written description of the invention . . . in such full, clear, concise,
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`and exact terms, to enable an ordinarily skilled artisan to practice the invention
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`claimed in the non-provisional application. Further, . . . to be afforded the priority
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`date of the provisional application, . . . the written description of the provisional
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`must adequately support the claims of the non-provisional application.” Amgen
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`Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017) (citing and quoting Dynamic
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`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015),
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`and New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed.
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`Cir. 2002)).
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`The Petition acknowledges that exacting legal standard, Pet. at 9, but fails to
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`meet it. The Petition purports to show that the Agiwal Provisionals fully support
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`claim 1 of the Agiwal patent. Pet. at 11-12. Yet the Petition’s entire showing as to
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`Agiwal’s Claim 1 limitation [b] constitutes merely two sentences, whereas
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`Agiwal’s limitation 1[b] itself spans 70 words in length. Id.
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`As the Federal Circuit made clear in Dynamic Drinkware, “the Board has no
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`basis to presume that a reference patent is necessarily entitled to the filing date of
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`its provisional application.” 800 F.3d at 1380. The burden of proving that Agiwal
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`is entitled to the priority date of the Agiwal Provisionals rests at all times with
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`Petitioner. Id. And while the Agiwal Provisionals need not provide in haec verba
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`recitation of Agiwal’s claim 1 in order to show that Agiwal is entitled to the
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`priority date of the Agiwal Provisionals, the Agiwal Provisionals’ disclosures must
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`do more than “merely render[ ] the invention obvious.” Ariad Pharm., Inc. v. Eli
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`Lilly & Co., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010) (en banc).
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`Moreover, the Petition must meet its burden of mapping the teachings of the
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`Agiwal Provisionals to each and every limitation of Agiwal’s Claim 1 with
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`particularity. See 35 U.S.C. § 312(a)(3); Harmonic Inc. v. Avid Tech., Inc., 815
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`F.3d 1356, 1363 (Fed. Cir. 2016) (requiring petitions to identify “with particularity
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`. . . the evidence that supports the grounds for the challenge to each claim”).
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`Thus, when presented with a petition’s allegation that an alleged prior art
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`patent is entitled to the priority date of an underlying provisional, the Board will
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`not “play archaeologist with the record,” and will not parse through a petition’s
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`sweeping citations to extensive portions of the underlying provisional in order to
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`guess at which aspects of the provisional may or may not support each aspect of
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`the issued claims. See, e.g., Lyft, Inc. v. Ikorongo Tech. LLC, IPR2021-00423,
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`Paper 10, at 18-19 (July 26, 2021) (denying institution).
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`The Petition’s Ground 1 here fails for the same reason as in Lyft. Neither the
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`Petition nor the underlying expert declaration provide any clear or coherent
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`mapping of the numerous and detailed requirements of Agiwal’s Claim 1 limitation
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`[b] to specific teachings in the Agiwal Provisionals, as the Petition must. Instead,
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`the Petition merely states in conclusory fashion that certain aspects of Agiwal’s
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`Claim 1 limitation [b] can be found throughout several entire pages of the Agiwal
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`Provisionals. See Pet. at 11-12. That haphazard, half-hearted, and entirely vague
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`statement cannot suffice to meet the Petition’s burden, and the Board should
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`neither undertake nor overlook the Petition’s failed duty to show with particularity
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`that the Agiwal Provisional’s support Claim 1 limitation [b].
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`Indeed, the Petition makes no attempt whatsoever to show that the Agiwal
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`Provisionals support Agiwal Claim 1[b]’s requirement that “the configuration
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`information includes . . . information on a PRACH preamble corresponding to each
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`SI [system information] message for the other SI [system information].” See Pet. at
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`11-12 (entirely ignoring that requirement in its discussion as to how the Agiwal
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`Provisionals allegedly support Agiwal’s Claim 1[b]). The Board should reject the
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`Petition’s Ground 1 on that basis alone.
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`Nonetheless, to the extent the Board were inclined to independently
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`investigate the adequacy of the Agiwal Provisionals’ disclosure vis a vis Agiwal’s
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`Claim 1[b] (which the Board need not and should not do), the Board would readily
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`find that the Agiwal Provisionals provide no support for Claim 1[b]’s requirement
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`that “the configuration information includes . . . information on a PRACH
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`preamble corresponding to each SI message for the other SI.”
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` The Petition cites the Agiwal ’016 Provisional at pages 8, 18, and 17, the
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`
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`Agiwal ‘706 Provisional at pages 23 and 33, and the expert declaration of Dr.
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`Wells at ¶ 51. None of those passages shows support for the requirement that “[1]
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`the configuration information includes . . . [2] information on a PRACH preamble
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`[3] corresponding to each SI message for the other SI.” See Agiwal Claim 1[b]
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`(numbering added).
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`
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`The Agiwal ’016 Provisional at Ex. 1011 page 8 describes various
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`embodiments of the purported invention, but nothing on page 8 discusses
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`“information on a PRACH preamble,” much less such information “corresponding
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`to each SI message for the other SI.” The Agiwal ’016 Provisional at Ex. 1011
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`page 18 likewise says nothing about configuration information “corresponding to
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`each SI message for the other SI.” The same is true for the Agiwal ’016
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`Provisional at Ex. 1011 page 17, which primarily consists of Figures 10 and 11
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`along with related description at the bottom of the page. Neither Figures 10 and 11
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`nor the accompanying text teach “receiving . . . configuration information . . .
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`corresponding to each SI message for the other SI,” as Agiwal’s Claim 1[b] recites.
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`Accordingly, the Agiwal ’016 Provisional does not support the full scope of
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`Agiwal’s Claim 1.
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`The Agiwal ’706 Provisional is similarly devoid of the necessary
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`disclosures. At Ex. 1012 page 24, upon which the Petition relies, the Agiwal ’706
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`Provisional discusses embodiments in which a UE may receive system information
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`blocks, but says nothing about “receiving . . . configuration information . . . on a
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`PRACH preamble corresponding to each SI message for the other SI.” And at Ex.
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`1012 page 33—the only other page from Ex. 1012 on which the Petition relies with
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`respect to Agiwal’s Claim 1[b]—the Agiwal ’706 Provisional once again provides
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`no teaching regarding “receiving . . . configuration information . . . corresponding
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`to each SI message for the other SI.”
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`The Petition’s only other citation in support of its haphazard and cursory
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`mapping of Agiwal’s Claim 1[b] to the Agiwal Provisionals is to Petitioner’s
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`expert, Dr. Wells, at Paragraph 51 of his declaration. See Pet. at 11-12 (citing Ex.
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`1005 ¶ 51). Dr. Wells’ declaration testimony at paragraph 51, however, merely
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`cites to the same passages of the Agiwal Provisionals discussed above, none of
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`which support or discuss “receiving . . . configuration information . . . on a
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`PRACH preamble corresponding to each SI message for the other SI.”
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`Crucially, Dr. Wells’ declaration does not even attempt to allege that any
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`aspect of the Agiwal Provisionals specifically teaches “receiving . . . configuration
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`information . . . on a PRACH preamble corresponding to each SI message for the
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`other SI.” Instead, like the Petition, Dr. Wells simply ignores that claim language.
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`Thus, while Dr. Wells states that the Agiwal Provisionals teach “that minimum SI
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`(‘essential SI’) includes information about PRACH resources and preambles that
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`are used to request other SI,” Ex. 1005 ¶ 51, that contention does not match the
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`claim’s requirement of “configuration information . . . corresponding to each SI
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`message for the other SI.”
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`Moreover, the Petition and Dr. Wells never attempt to show a single
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`embodiment from the Agiwal Provisionals that, as a whole, supports the entirety of
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`Claim 1, or even Claim 1[b]. Instead, the Petition and Dr. Wells rely upon a hodge-
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`podge of various scattered teachings extending across multiple different figures
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`and embodiments in a (failed) attempt at cobbling together the elements of
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`Agiwal’s Claim 1 in hindsight. That approach fails as a matter of law. Ariad
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`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010) (en banc)
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`(“a description that merely renders the invention obvious does not satisfy the
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`requirement”); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
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`1997) (“A description which renders obvious the invention for which an earlier
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`filing date is sought is not sufficient.”).
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`Without satisfying the requirements of Dynamic Drinkware and its progeny,
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`the Petition fails to establish that Agiwal is entitled to any prior date before
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`February 27, 2017. Accordingly, the Petition’s Ground 1 fails because the Petition
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`has not demonstrated, and could not demonstrate, that Agiwal constitutes prior art.
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`VI. The Petition’s Ground 2 fails to establish that Deenoo teaches or suggests
`the challenged claims’ requirement of using a single preamble to indicate
`“system information block groups” comprised of system information
`blocks that are grouped according to a feature.
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`Under the Board’s regulations, “the petition must set forth,” “must identify,”
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`and “must specify where each element of the claim is found in the prior art patents
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`or printed publications relied upon.” 37 C.F.R. § 42.104 (b)(4) (emphasis added).
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`The Board may not reach a conclusion of unpatentability where the Petition
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`fails to provide evidence that the prior art meets every element of a challenged
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`claim. See, e.g., Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc., 771 F.
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`App’x. 1012, 1016-18 (Fed. Cir. 2019) (reversing because there was “no
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`reasonable support” for the conclusion that the prior art met the “only after”
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`limitation of the claim); Nidec Motor Corp. v. Zhonghan Broad Ocean Motor Co.,
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`851 F.3d 1270, 1273-74 (Fed. Cir. 2017) (reversing because the challenged claim
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`required the recited signal to be “in the rotating frame of reference,” whereas the
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`evidence did not show that the prior art taught a signal in a rotating frame of
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`reference); IBM v. Iancu, 759 F. App’x. 1002 (Fed. Cir. 2019) (reversing because
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`there was “no substantial evidence . . . that Mellmer teaches” the “single-sign-on
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`limitation” of the claims); Innovative Memory Sys., Inc. v. Micron Tech., Inc., 781
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`F. App’x 1013, 1017-18 (Fed. Cir. 2019) (vacating where the record failed to show
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`that the prior art actually met every limitation).
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`Thus, when a Petition side-steps an element of the challenged claims, or
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`otherwise fails to “specify where each element of the claim is found in the prior art
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`. . . relied upon,” institution must be denied.
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`The Petition’s Ground 2, which rests on U.S. Application Publication No.
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`2019/0174554 to Deenoo, et al. (“Deenoo”), fails to establish Deenoo teaches or
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`suggests Claim 1[b] of the challenged claims, i.e., “transmitting a request using a
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`preamble for indicating at least one system information block group, each of which
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`comprises one or more system information blocks,” and the further requirement of
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`Claim 1[c] that the information blocks must be grouped “according to a feature.”
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`As explained in the ’027 Specification, a system information block (SIB) is
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`an LTE-defined grouping of system information used to transmit information
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`efficiently. See, e,g, ’027 Patent, Col. 5, Table 1. These LTE definitions may be
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`viewed as a first level grouping. The ‘027 Patent’s Limitations 1[b] and [c] recite a
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`“method for requesting system information . . . using a preamble for indicating at
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`least one system information block group [SIB group] . . . wherein the one or more
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`system information blocks are grouped according to a feature of the one or more
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`system information blocks.”1 The ’027 Patent thus also recites a second level of
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`grouping. Specifically, system information blocks (with each block already
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`containing groups of system information grouped according to LTE definitions)
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`are further grouped according to a feature of the system information blocks to
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`create one or more System Information Block groups (or SIB groups).
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`The ’027 Specification clearly delineates this second level of grouping:
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`“Table 1 exemplarily shows the functional description of some SIBs in
`LTE. It can be seen from Table 1 that the SIBs carrying SI are not fully
`independent to each other. For example, SIB3 to SIB8 are all related to
`how to do cell reselection, although each SIB has different
`responsibility. Therefore, SIB3 to SIB8 can be grouped together. For
`SIB10 to SIB12, these SIBs are all related to warning and alert.
`Therefore, SIB 10 to SIB 12 can be group together. For SIB 18 to SIB
`19, the SIBs are both related to device- to-device (D2D) sidelink
`communication. Accordingly, SIB18 to SIB19 can be grouped
`together.”
`….
`Another feature of SIBs which may be used to classify the SIBs is
`periodicity. For example, SIBs with the same or similar
`transmission periodicity may be grouped together.”
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`’027 Patent at 5:40-6:28. The ’027 Patent thus organizes the first-level LTE system
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`information blocks (SIBs) shown in Table 1 into a second level grouping of system
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`information block groups (SIB groups). These second level groupings are
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`1 Each independent claim of the ‘027 Patent includes this secondary level of
`grouping.
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`separated by ellipses between groups, with each series of SIBs listed before the
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`next ellipses constituting an SIB group. ‘027 Patent at 5:55-6:12.
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`Thus, in Table 1, SIB3, SIB4, SIB5, SIB6, SIB7, and SIB8 together are one
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`SIB group, which is made up of six information blocks, with each system
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`information block itself containing a grouping of multiple items of system
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`information.
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`Moreover, crucial to the invention of Claim 1 is the requirement that a single
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`preamble is used for indicating one or more system information block groups,
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`which groups constitute system information blocks grouped together according to a
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`feature. Thus, Claim 1[b] recites: “transmitting a request using a preamble for
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`indicating at least one system information block group.” The recitation of the
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`singular “a preamble” in Claim 1[b] plainly restricts the claim to the use of one
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`preamble to indicate information grouped at two levels: first as system information
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`grouped into “blocks,” and then as system information blocks grouped together as
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`system information “block groups.”
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`Dependent claim 2 further confirms that claim 1’s recitation of “a preamble”
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`limits the claim to the use of a single preamble. Claim 2 recites the method of
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`claim 1 “wherein the transmitting of the request comprises: selecting, from a
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`plurality of preambles, a preamble associated with the at least one system
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`information block group; and transmitting the selected preamble.” Ex. 1001 at 10.
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`Claim 2 further narrows claim 1 by requiring that the singular preamble of claim 1
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`must be selected from a plurality of preambles “associated with the at least one
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`system information block group.”2 Claim 2 thus further confirms that “a preamble”
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`as recited in Claim 1 is limited to the use of one and only one preamble to indicate
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`a system information block group.
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`The ’027 Patent’s specification further supports that understanding. The
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`’027 Patent teaches that “when the user terminal wants to request a certain SIB
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`group, it can send a preamble as a request to the network node at the specific
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`timing or frame. When the network node detects this preamble, it can determine
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`which SIB group the user terminal wants to request, according to the transmission
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`timing of the preamble.” Ex. 1001 at 8:51-56 (emphasis added).
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`By contrast, as demonstrated below, nothing in Deenoo teaches or suggests
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`the second level of grouping required by Claim 1[b] and 1[c] of the challenged
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`patents, i.e., system information block groups that are grouped “according to a
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`feature.” And nothing in Deenoo teaches or suggests indicating system information
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`block groups, that are grouped according to a feature, using a single preamble, as
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`opposed to multiple preambles.
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`2 Claim 1, by contrast, does not require the existence of multiple preambles
`associated with the system information block group or the selection of one
`preamble from such a plurality of preambles. Claim 1 may instead by met by the
`simpler scenario where there is one and only one preamble associated with the
`system information block group.
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`In Paragraph 333, Deenoo teaches that “[s]ystem information may grouped
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`and/or may be controlled…by different logical functions” (including “feature”)
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`(emphasis added).
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`
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`This grouping of system information creates “system information blocks,”
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`but not “system information block groups,” which require a further level of
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`grouping “according to a feature of the one or more system information blocks.”
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`Claim 1 limitation c.
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`Deenoo’s Paragraph 334 further confirms that Deenoo only teaches the first
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`level organization of the ’027 Patent’s claims, i.e., system information blocks, not
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`system information block groups that are grouped by feature.
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`As Paragraph 334 states, Deenoo teaches “groupings” of system
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`“information,” such as “information that may be essential for system access.”
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`These “groupings,” according to Deenoo, are in the nature of “SIB1, SIB2” and
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`other SIBs “in LTE.” Id.
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`But as discussed above, an advancement of the ’027 Patent is that it teaches
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`(and claims) further grouping the existing SIBs in LTE into SIB groups. Thus, in
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`the ’027 Patent’s Table 1 (reproduced below), standard LTE system information
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`blocks such as SIB1, SIB2, SIB3, SIB4, SIB5, SIB6, SIB7, and SIB8 are further
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`grouped into SIB groups, according to a common feature, as reflected by the
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`ellipses that separate each SIB group. ’027 Patent at 5:40-6:28.
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`Deenoo does not teach that further grouping of SIBs into SIB groups
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`according to a feature, and additionally does not teach indicating one or more SIB
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`groups using a single preamble, as Claim 1 limitations [b] and [c] recite.
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`In attempting to meet its burden of proof as to Claim 1[b] and [c], the
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`Petition relies heavily on Deenoo’s paragraphs 367 and 403. Pet. at 43-46. The
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`Petition, however, misrepresents and alters the actual language of Deenoo’s
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`paragraphs 367 and 403.
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`With respect to Paragraph 367, the Petition purports to quote Deenoo as
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`stating that “RACH preambles may be used to indicate a specific [SIB] and/or
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`group thereof.” Pet. at 44. The Petition’s implication is that the words “group
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`thereof” as used in Paragraph 367 modify “a specific [SIB],” and thus teach using
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`“RACH preambles . . . to indicate” an SIB group. Pet. at 43-44. But that is not
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`what Deenoo’s Paragraph 367 actually states. Instead, the relevant passage reads:
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`“RACH preambles may be used to indicate a specific system information block
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`and/or group thereof.” Ex. 1003, ¶367. Whereas the Petition alters Deenoo’s use of
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`“system information block and/or group thereof” to “SIB and/or group thereof” in
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`order to make it appear that “group thereof” modifies “system information block,”
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`rather than “system information,” the rest of Deenoo’s paragraph 367 makes clear
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`that Deenoo is referring to groups of system information, not groups of system
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`information blocks. In particular, Deenoo’s Paragraph 367 continues to state that
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`“such reserved RACH preambles may be used to . . . indicate the system
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`information for a type of service and/or group thereof. . . .” Thus, Deenoo’s
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`Paragraph 367 plainly uses “group thereof” to refer to a group of system
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`information, not of system information blocks. The Petition only makes Deenoo
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`appear otherwise by rewriting Deenoo to say “SIB and/or group thereof,” which
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`Deenoo never states.
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`Deenoo’s next paragraph, Paragraph 368, further confirms that reality.
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`Paragraph 368 states: “A WTRU may indicate a specific type/group of other-SI
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`requested.” Once again, Deenoo here refers to the grouping of system information,
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`not the two-level process of (1) organizing system information into blocks and then
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`(2) organizing the system information blocks further into groups, as Claim 1[b]
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`requires.
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`Deenoo’s Paragraph 405 again contains the s
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