Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: August 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00468
`Patent 10,512,027
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes review of
`claims 1–8, 10–18, and 20–21 (the “challenged claims”) of U.S. Patent
`No. 10,512,027 (Ex. 1001, “the ’027 patent”). Paper 1 (“Pet.”).
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) timely filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes review
`under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be
`instituted unless it is determined that “the information presented in the petition
`filed under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at least 1
`of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37
`C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The
`reasonable likelihood standard is “a higher standard than mere notice pleading,”
`but “lower than the ‘preponderance’ standard to prevail in a final written decision.”
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13
`(PTAB Dec. 20, 2019) (precedential).
`For the reasons provided below and based on the record before us, we
`determine Petitioner has demonstrated a reasonable likelihood that it would prevail
`in showing the unpatentability of at least one of the challenged claims.
`Accordingly, we institute an inter partes review of the ’027 patent and all of the
`asserted challenges to patentability.
`
`
`
`2
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`B. Real Parties in Interest
`Petitioner states that it is the real-party-in-interest. Pet. 72. Patent Owner
`lists Telefonaktiebolaget LM Ericsson and Ericsson Inc. as real-parties-in-interest.
`Paper 3 (Patent Owner’s Mandatory Notices), 1.
`
`C. Related Proceedings
`Petitioner identifies the following matter involving the ’027 patent:
`Samsung v. Ericsson, IPR2021-00487 (January 29, 2021). Pet. 72. Petitioner also
`indicates that the matter has terminated. Id. Patent Owner does not identify any
`related proceedings. See Paper 3, 1.
`
`D. The ’027 Patent (Ex. 1001)
`The ’027 patent is titled “On-Demand Request for System Information,” and
`issued on Dec. 17, 2019. Ex. 1001, codes (45), (54). The ’027 patent claims
`priority to a foreign-filed application filed on January 4, 2017. Id. at code (30).
`
`1. Written Description
`The ’027 patent relates to a “ method for requesting system information.”
`Id. at code (57). The method comprises transmitting a request for at least one
`system information block group, each of which comprises one or more system
`information blocks, from a user terminal to a network node. Id. at 12:25–30. The
`one or more system information blocks is/are grouped according to a feature of the
`one or more system information blocks. Id. at 12:30–34. The method may further
`comprise “receiving one or more system information block groups from the
`network node. The one or more system information block groups may comprise
`the at least one system information block group.” Id. at code (57).
`The ’027 patent purports to solve problems with on-demand system
`information (“SI”) transmission in wireless communication networks. Id. at 4:58–
`59. SI may be transmitted to a user terminal in a system information bock (“SIB”).
`3
`
`
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`Id. at code (57). SIBs may be classified into SIB groups according to their
`relevance or correlation. Id. at 4:59–61. When a user terminal wants to select a
`specific SI, it may request from the network node (a SIB group), which contains
`the specific SI. Id. at 4:61–62. The network can then know which SIB group the
`user terminal needs and broadcast the requested group, increasing the energy
`efficiency of SI transmission to user terminals. Id. at 4:63–66. A flowchart of one
`embodiment of the present invention is shown in Figure 1, reproduced below:
`
`
`Figure 1 is a flowchart of a method for requesting SI according to one
`embodiment of the ’027 patent. Id. at 4:4–5. The ’027 patent discloses that, in the
`exemplary embodiment, a request for “at least one SIB group, each of which
`comprises one or more SIBs, may be transmitted from a user terminal to a network
`node, as shown in block 102.” Id. at 5:18–20. The ’027 patent further discloses
`that one or more SIBs may be grouped or classified according to their features,
`4
`
`
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`such as functionality or periodicity. Ex. 1001, 5:20–22, 5:55–6:14, 6:26–27, Table
`1. A SIB group may be associated with a preamble that may be transmitted to the
`network node along with the SIB group. Id. at 6:55–60. The user terminal may
`then receive one or more SIB groups from the network node using a preamble for
`indicating which SIB group is requested. Id. at 6:60–64.
`According to the ’027 patent, prior art systems used “one preamble” to
`“carry a request for all other SI” which may result in unnecessary transmission of
`undesired SI because “a user terminal may not need all the other SI.”
`Ex. 1001, 4:46–52. The ’027 patent “proposes a solution of on-demand request for
`SI.” Id. at 4:58–59. Specifically, “one or more SIBs may be classified into a SIB
`group,” and “when a user terminal wants to request some specific SI, it can request
`. . . a SIB group in which the specific SI is contained.” Id. at 4:59–63.
`The ’027 patent indicates that this method means “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.
`
`Illustrative Claims
`2.
`As noted previously, Petitioner challenges claims 1–8, 10–18, and 20–21 of
`the ’027 patent, of which claims 1 and 11 are independent. See Pet. 22. Claims 1
`and 11 are illustrative of the challenged subject matter and are reproduced below.
`1. A method for requesting system information, comprising:
`transmitting a request using a preamble for indicating at least one
`system information block group, each of which comprises one or
`more system information blocks, from a user terminal to a network
`node, wherein the one or more system information blocks are
`grouped according to a feature of the one or more system
`information blocks; and
`
`
`
`5
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`receiving one or more system information block groups from the
`network node, wherein the one or more system information block
`groups comprise the at least one system information block group.
`Ex. 1001, 12:25–38
`11. An apparatus for requesting system information, comprising:
`at least one processor; and
`at least one memory comprising computer program code which,
`when executed by the at least one processor, cause the apparatus to:
`transmit a request using a preamble for indicating at least one
`system information block group, each of which comprises one or
`more system information blocks, to a network node, wherein the
`one or more system information blocks are grouped according to a
`feature of the one or more system information blocks; and
`receive one or more system information block groups from the
`network node, wherein the one or more system information block
`groups comprise the at least one system information block group.
`Id. at 13:11–29.
`
`Asserted Challenges to Patentability and Evidence of Record
`E.
`Petitioner challenges the patentability of claims 1–8, 10–18, and 20–21 of
`the ’027 patent based on the following references:
`
`
`
`6
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`Claims Challenged
`1–8, 10–18, 20–21
`1–8, 10–18, 20–21
`3–4, 11–18, 20
`3–4, 13–14
`
`35 U.S.C. §
`1031
`103
`103
`103
`
`Reference(s)/Basis
`
`Agiwal2
`Deenoo3
`Agiwal, Kubota4
`Deenoo, Kubota
`
`Petitioner also relies on the Declaration of Jonathan Wells, Ph.D. (“Dr. Wells”) to
`support its assertions. See Ex. 1005.
`II.
`PRELIMINARY MATTERS
`A. Claim Construction
`A claim “shall be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).”
`37 C.F.R. § 42.100(b) (2022). Under that standard, the “words of a claim ‘are
`generally given their ordinary and customary meaning.’” Phillips v. AWH Corp.,
`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The ordinary and customary
`meaning of a claim term applies “unless the patentee demonstrated an intent to
`deviate from [it] . . . by redefining the term or by characterizing the invention in
`the intrinsic record using words or expressions of manifest exclusion or restriction,
`representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); see Hill-Rom Servs., Inc. v. Stryker
`Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Thus, although we “look to the
`specification and prosecution history to interpret what a patentee meant by a word
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
`284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’027 patent was
`effectively filed after March 16, 2013, the effective date of the relevant
`amendment, the AIA version of § 103 applies.
`2 US 10,455,621 B2, issued Oct. 22, 2019 (“Agiwal,” Ex. 1002).
`3 US 2019/0174554 A1, published June 6, 2019 (“Deenoo,” Ex. 1003).
`4 US 2016/0234736 A1, published Aug. 11, 2016 (“Kubota,” Ex. 1004).
`7
`
`
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`or phrase in a claim,” we do not read “extraneous limitations . . . into the claims
`from the specification or prosecution history” absent an express definition or clear
`disavowal of claim scope. Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348 (Fed.
`Cir. 2002).
`Petitioner states that the Board does not need to construe any terms to
`resolve the arguments presented in this Petition. Pet. 6. Patent Owner indicates it
`does not believe any terms require construction to resolve any dispute at this stage.
`Prelim. Resp. 8. Based on our preliminary analysis of the matter, we agree with
`the parties that no express construction is needed to resolve any dispute in this
`proceeding at this time. Accordingly, we do not construe any of the claim
`limitations, except as otherwise provided herein. See, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`A final determination as to claim construction will be made at the close of
`the proceeding, after any hearing, based on all the evidence of record. The parties
`are expected to assert all their claim-construction arguments and evidence in the
`Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-Reply,
`or otherwise during trial, as permitted by our rules.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 “if the differences between
`the claimed invention and the prior art are such that the claimed invention as a
`whole would have been obvious before the effective filing date of the claimed
`invention to a person having ordinary skill in the art to which the claimed
`invention pertains.” 35 U.S.C. § 103; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`
`
`8
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`398, 406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of the prior
`art; (2) any differences between the claimed subject matter and the prior art; (3) the
`level of skill in the art; and (4) where in evidence, objective evidence of non-
`obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether there was
`an apparent reason to combine the known elements in the fashion claimed by the
`patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)). Whether a combination of prior art elements would have produced a
`predictable result weighs in the ultimate determination of obviousness. Id. at 416–
`417.
`
`In an inter partes review, the petitioner must show with particularity why
`each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion
`never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance with the
`above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art at the time of the alleged
`invention, various factors may be considered, including the “type of problems
`encountered in the art; prior art solutions to those problems; rapidity with which
`innovations are made; sophistication of the technology; and educational level of
`active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`
`5 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
`
`
`
`9
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`1995) (quotation marks omitted). Further, the prior art itself can reflect the
`appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001).
`Here, Petitioner asserts, a person of ordinary skill in the art at the time of the
`invention would “have had a Master’s degree in Electrical Engineering, Computer
`Science, Physics, Applied Mathematics, or equivalent and three to five years of
`experience working with wireless digital communication systems.” Pet. 5 (citing
`Ex. 1005 ¶ 43) (noting additional education might compensate for less experience,
`and vice-versa).
`
`At this stage of the proceeding, Patent Owner does not contest Petitioner’s
`definition of a person of ordinary skill in the art. Prelim. Resp. 23. For the
`purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in
`the art, which is not opposed substantively by Patent Owner and appears to
`comport with the teachings of the ’027 patent and the asserted prior art.
`
`D. Objective Indicia of Non-Obviousness
`Neither party presents any evidence or argument regarding objective indicia
`of non-obviousness relating to any challenged claim. Thus, we do not address any
`such considerations in this Decision.
`
`E. Overview of Asserted Prior Art of Record
`1.
`Agiwal (Ex. 1002)
`Agiwal is a U.S. Patent, issued on October 22, 2019, titled “Apparatus and
`Method for Signaling System Information.” Ex. 1002, codes (10), (45), (54).
`Agiwal discloses “[a] method for receiving system information (SI) by a user
`equipment (UE) in a wireless communication system” by “receiving, from a base
`station (BS), first type SI associated with SI which is essential for communication
`with the BS, transmitting, to the BS, a physical random access channel (PRACH)
`
`
`
`10
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`preamble based on the first type SI, receiving, from the BS, a random access
`response (RAR) message, and receiving, from the BS, second type SI associated
`with at least one SI which the UE needs.” Id. at code (57).
`One embodiment of Agiwal is shown in Figure 2, reproduced below.
`
`
`Figure 2, above, is an illustration showing a method for categorizing system
`information parameters into system information blocks (SIBs). Ex. 1002, 5:37–39.
`Referring to Figure 2, Agiwal explains that “system information parameters are
`categorized into SIBs. In SI request, a bitmap of size N bits is included wherein
`each bit corresponds to an SIB.” Id. at 9:18–20. Alternately, according to Agiwal,
`“instead of bitmap, UE can include a list of SIBs in SI-request.” Id. at 9:24–23.
`Agiwal discloses that SIBs can be “grouped into an SIB set (or SI message)
`wherein each set comprises one or more SIBs.” Id. at 9:30–31.
`Another embodiment of Agiwal is shown in Figure 11, reproduced below.
`
`
`
`11
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`
`
`Agiwal’s Figure 11, above, is a schematic illustration of one embodiment of a
`method of acquiring SI. Id. at 19:30–32. Agiwal explains, SI “is categorized into
`two categories: The first category . . . minimum SI or essential SI . . . is
`broadcasted periodically[.] The second category . . . Other SI . . . is provided to
`UE on demand or can be broadcasted periodically.” Id. at 19:35–42. Additionally,
`Agiwal discloses that “to receive the [Other SI] . . . S1120 UE sends random
`access preamble (PRACH-SI).” Id. at 20:28–30. After receipt of PRACH-SI “in
`operation S1130, BS transmits a RAR. The RAR includes the requested [SI].” Id.
`at 20:63–65.
`
`Deenoo (Ex. 1003)
`2.
`Deenoo is a U.S. Patent Publication, published on June 6, 2019, titled
`“Distributed Control in Wireless Systems.” Ex. 1003, codes (10), (43), (54).
`
`
`
`12
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`Deenoo is directed to systems and methods for distributed control in wireless
`systems. Id. at code (57). Deenoo discloses wireless transmit/receive units
`(“WTRUs”) that may transmit reserved RACH preambles to indicate a specific
`type or group of other-SI requested. Id. ¶¶ 367–368. Deenoo also discloses a base
`station, which can be an eNodeB or similar structure. Id. ¶ 26.
`One embodiment of Deenoo is illustrated in Figure 1A, reproduced below:
`
`
`Figure 1A of Deenoo, above, is a diagram of an example communications
`system 100. Id. ¶ 24. Deenoo discloses that “the communications system 100
`may include wireless transmit/receive units (WTRUs) . . . 102a, 102b, 102c . . .”
`and base stations. Id. ¶¶ 25–26. Deenoo discloses that a WTRU can transmit a
`message to a base station to request other-SI. Id. ¶¶ 366, 368. According to
`Deenoo, when requesting SI, a WTRU may transmit a RACH preamble to indicate
`specific SI blocks or groups. Id. ¶ 367.
`
`
`
`13
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`Kubota (Ex. 1004)
`3.
`Kubota is a U.S. Patent Publication, published on August 11, 2016, titled
`“On-Demand System Information.” Ex. 1004, codes (10), (43), (54). Kubota is
`directed to the transmission of on-demand system information in a wireless
`communication system. Id. at code (57), ¶ 3. Kubota discloses a user equipment
`(“UE”) centric network which may be deployed as a plurality of base stations. Id.
`¶ 83. Kubota also discloses a wireless network providing “system information by
`either a fixed periodic broadcast or . . . in response to a request by a UE . . . .” Id.
`¶ 84. When a UE determines it needs specific SI, it “may transmit a SIB transmit
`(Tx) request 372 . . . in response to the receipt of the SIB Tx requests 372, one or
`more base stations may transmit service-specific SIBs 375 to the UE.” Id. ¶ 122.
`One embodiment of Kubota is illustrated in Figure 3B, reproduced below:
`
`
`
`
`
`14
`
`
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`Figure 3B of Kubota, above, is a diagram of reception timelines in accordance with
`various aspects of Kubota. Id. ¶ 36. Kubota discloses the base station sending a
`service-specific period sync signal, which may indicate that the service-specific SI
`is available. Id. ¶ 122. Kubota further discloses the UE then sending a request for
`service-specific SI, referred to in Kubota as SIB Tx requests 372a & 372b, which
`is received by the base station. Id. In response to receipt of the UE”s request, one
`or more base stations may transmit the service specific SIBs 375 requested to the
`UE. Id.
`
`III. ANALYSIS
`A. Alleged Obviousness of Claims 1–8, 10–18, and 20–21 in View of Agiwal
`Petitioner contends claims 1–8, 10–18, and 20–21 of the ’027 patent are
`unpatentable under 35 U.S.C. § 103 as obvious in view of Agiwal. Pet. 22–43.
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 8–16. For reasons
`that follow, we determine Petitioner has demonstrated a reasonable likelihood of
`demonstrating that the challenged claims would have been obvious under
`35 U.S.C. § 103 in view of Agiwal.
`1. Alleged Qualifications of Agiwal as Prior Art
`The parties dispute whether Agiwal qualifies as prior art to the ’027 patent.
`Specifically, Petitioner asserts that it qualifies as prior art under 35 U.S.C.
`§ 102(d)(2) because it is entitled to the priority dates of its provisional applications,
`No. 62/301,016 filed on Feb. 29, 2015 and No. 62/334,706 filed on May 11, 2016,
`respectively. Pet. 9–12 (citing Exs. 1011, 1012). Patent Owner argues Petitioner
`failed to meets its burden to properly establish that Agiwal is entitled to the earlier
`priority date. Prelim. Resp. 8–16. Specifically, Patent Owner argues that
`Petitioner has failed to show that the Agiwal Provisional Applications provide
`support for the following limitation of claim 1: “the configuration information
`
`
`
`15
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`includes . . . information on a PRACH preamble corresponding to each SI message
`for the other SI.” Id. at 12.
`To gain the benefit of a provisional application filing date a patent must
`satisfy 35 U.S.C. § 119(e)(1). See Dynamic Drinkware, 800 F.3d 1375, 1378 (Fed.
`Cir. 2015). According to the Federal Circuit, this requirement includes that “the
`specification of the provisional must ‘contain a written description of the invention
`. . . in such full, clear, concise, and exact terms,’ . . . to enable an ordinarily skilled
`artisan to practice the invention claimed in the non-provisional application.” New
`Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)
`(quoting 35 U.S.C. § 112, first paragraph) (emphasis omitted), quoted in Dynamic
`Drinkware, 800 F.3d at 1378. Therefore, a patent may be considered prior art as of
`the date of a provisional application so long as the provisional disclosed
`(sufficiently under § 112) the same invention eventually claimed in the patent.
`In the present case, the parties do not dispute that Petitioner bears the burden
`of establishing Agiwal’s qualifications as prior art, including that the Agiwal
`provisional application provides sufficient written description support for Agiwal
`to confer the benefit of its priority date.
`Petitioner contends Agiwal is entitled to the filing date of its provisional
`applications because they disclose and enable Agiwal’s claimed invention. Pet. 10
`(citing Ex. 1005 ¶ 51). Petitioner notes that Agiwal claimed priority to and
`incorporated by reference the disclosures in its provisional applications. Id. (citing
`Ex. 1002, 1:7–13). According to Petitioner, Agiwal’s provisional applications
`“each disclose Agiwal’s claimed invention that provides SI to UEs on-demand.”
`
`
`
`16
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`Id. (citing Ex. 1002, 19:41; Ex. 1011, 13; Ex. 1012, 33; Ex. 1005 ¶ 49).6 Petitioner
`argues that like Agiwal, Agiwal’s provisional applications “each teach that a
`category of minimum SI ‘is broadcasted periodically by the cell.’” Id. (citing
`Ex. 1002, 19:33–42; Ex. 1012, 33; Ex. 1011, 17–18; Ex. 1005 ¶ 49). Petitioner
`further argues that the “UE acquires this minimum SI, and then sends a random
`access preamble (PRACH-SI preamble) to request additional SI.” Id. (citing
`Ex. 1002, 20:15–34; Ex. 1011, 17; Ex. 1012, 33; Ex. 1005 ¶ 49).
`Petitioner then contends Agiwal’s provisional applications “each explain
`that the PRACH-SI preamble can be specific to a set of SI (SIB group).” Id.
`(citing Ex. 1011, 9, 17; Ex. 1012, 24, 33; Ex. 1005 ¶ 50). According to Petitioner,
`the “BS then responds by sending the requested SIB group.” Id. at 10–11 (citing
`Ex. 1002, 20:63–67; Ex. 1011, 18; Ex. 1012, 34). Petitioner notes that “Figure 11
`of the Provisional Applications depicts Agiwal’s framework for using a PRACH-
`SI preamble to request and receive a SIB group.” Id. at 11 (citing Ex. 1012, Fig.
`11; Ex. 1002, Fig. 11; Ex. 1011, Fig. 11; Ex. 1005 ¶ 50).
`Patent Owner disputes Petitioner’s position and argues that “neither the
`Petition nor the underlying expert declaration provide any clear or coherent
`mapping of the numerous and detailed requirements of Agiwal’s Claim 1
`limitation [b] to specific teachings in the Agiwal Provisionals, as the Petition
`must.” Prelim. Resp. 11. Instead, according to Patent Owner, “the Petition merely
`states in conclusory fashion that certain aspects of Agiwal’s Claim 1 limitation [b]
`can be found throughout several entire pages of the Agiwal Provisionals.” Id.
`at 11–12 (citing Pet. 11–12). Patent Owner contends that “the Petition makes no
`
`
`6 For Exhibits 1011 and 1012, we follow Petitioner’s practice and cite to the page
`numbers that Petitioner applied to the exhibits rather than the page numbers that
`appear in the applications.
`
`
`
`17
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`attempt whatsoever to show” that Agiwal’s provisional applications support the
`limitation that “the configuration information includes . . . information on a
`PRACH preamble corresponding to each SI [system information] message for the
`other SI [system information].” Id. at 12 (citing Pet. 11–12). Patent Owner then
`argues that the Petition cites numerous pages but none “of its haphazard and
`cursory mapping” show support for the above limitation. Id. at 13–14 (citing
`Pet. 11–12; Ex. 1005 ¶ 51). Rather than demonstrating that the provisional
`applications support Agiwal’s claim 1, Patent Owner contends “the Petition and
`Dr. Wells rely upon a hodgepodge of various scattered teachings extending across
`multiple different figures and embodiments in a (failed) attempt at cobbling
`together the elements of Agiwal’s Claim 1 in hindsight.” Id. at 15.
`At this stage of the proceeding, we do not agree with Patent Owner. First,
`with regard to Patent Owner’s position that the Petition “merely states in
`conclusory fashion that certain aspects of Agiwal’s Claim 1 limitation [b] can be
`found throughout several entire pages” of Agiwal’s provisional application, we
`note Petitioner cites to only three pages in Ex. 1011, two pages in Ex. 1012, and
`one paragraph in its expert declaration for support. See Pet. 11–12. Second, these
`citations demonstrate that Agiwal’s provisional applications contain almost the
`exact same disclosure as that found in Agiwal. Compare Ex. 1011, 8, with
`Ex. 1002, 9:18–24; compare Ex. 1011, Figs. 2, 11, with Ex. 1002, Figs. 2, 11;
`compare Ex. 1011, 17–18, with Ex. 1002, 19:33–34.
`Lastly, the citations provided by the Petition demonstrate that Agiwal’s
`provisional applications disclose all of Agiwal’s claim 1, including the challenged
`limitation “the configuration information includes . . . information on a PRACH
`preamble corresponding to each SI [system information] message for the other SI
`[system information].” See Ex. 1011, 8, 17, 18, Figs. 2, 11. Specifically, Ex. 1011
`
`
`
`18
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`discloses the use of either a bitmap of size N bits to be included wherein each bit
`corresponds to a SIB or the UE can include a list of SIBs in SI-request. See id.
`at 8. Additionally, Ex. 1011 discloses that a PRACH-SI preamble can be specific
`to system information or a set of system information or service of UE type. See id.
`at 18.
`
`Accordingly, based on the current record, we are satisfied for purposes of
`institution that Petitioner has shown Agiwal is entitled to the filing dates of its
`provisional applications. Therefore, we find Agiwal is prior art to the ’027 patent
`under 35 U.S.C. §§ 102(a)(2) and 102(d).
`2. Analysis of Independent Claim 1
`Petitioner contends each limitation of claim 1 in the ’027 patent is taught or
`at least suggested by Agiwal. Pet. 22–28 (citing Ex. 1005 ¶¶ 60–69). Specifically,
`Petitioner argues Agiwal teaches a method where a user terminal (i.e., UE)
`transmits a request to a network node (i.e., BS) using a PRACH-SI preamble,
`which can be “pre-defined” or “can be specific to system information or a set of
`system information or service of UE type.” Id. at 23 (citing Ex. 1002, 4:37–46,
`20:29–41; Ex. 1011, 17; Ex. 1012, 33; Ex. 1005 ¶¶ 61–62). Petitioner further
`argues Agiwal teaches PRACH-SI preambles that indicate a SIB group comprising
`one or more SIBs because the preamble is “specific to SI or a set of SI(s) . . . ”
`where “SIs” means SIBs. Id. at 24 (citing Ex. 1002, Fig. 11, 20:1–3, 20:40–41;
`Ex. 1011, 17–18, Fig. 11; Ex. 1012, 33–34, Fig. 11; Ex. 1005 ¶ 63).
`According to Petitioner, Agiwal teaches or at least suggests SIBs are
`grouped according to features as required by the ’027 patent, because it discloses
`“SIBs having same periodicity can be transmitted in one SI message” in response
`to a received preamble corresponding to the group containing those SIBs. Pet. 25
`(citing Ex. 1002, 2:52–53). Petitioner relies on the testimony of Dr. Wells to
`
`
`
`19
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`support its position. Dr. Wells testifies that “[a]s reflected in Figure 3, Agiwal
`discloses that SIBs are grouped by features. As reflected in Figure 11, a UE can
`request these grouped SIBs by transmitting a preamble to indicate the SIB group it
`desires.” Ex. 1005 ¶ 66.
`Patent Owner does not address specifically the limitations of independent
`claim 1, but nonetheless the burden remains on Petitioner to demonstrate
`unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
`At this stage of the proceeding and based on the record before us, we are
`persuaded Petitioner has shown adequately for purposes of institution that
`Agiwal’s disclosure would have rendered claim 1 of the ’027 patent obvious to a
`person of ordinary skill in the art.
`3. Analysis of Claims 2–8, 10–18, and 20–21
`Petitioner contends claims 2–8, 10–18, and 20–21 of the ’027 patent are
`unpatentable under 35 U.S.C. § 103 as obvious in view of Agiwal and provides
`specific arguments for each challenged claim. Pet. 28–43 (citing Ex. 1005 ¶¶ 70–
`113). Patent Owner does not address the additional limitations of claims 2–8, 10–
`18, and 20–21, but the burden remains on Petitioner to demonstrate
`unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
`We have considered carefully all arguments and supporting evidence in light
`of the limitations recited in challenged claims 2–8, 10–18, and 20–21. At this
`stage of the proceeding, we are persuaded that Petitioner’s analysis as supported by
`Dr. Wells’s testimony is sufficient for institution regarding the specific limitations
`recited in these claims. Accordingly, we conclude Petitioner has established a
`reasonable likelihood it would prevail in showing that challenged claims 2–8, 10–
`18, and 20–21 would have been obvious to a person of ordinary skill in the art
`under 35 U.S.C. § 103 in view of Agiwal.
`
`
`
`20
`
`

`

`IPR2022-000468
`Patent 10,512,027
`
`
`B. Alleged Obviousness of Claims 1–8, 10–18, and 20–21 in View of Deenoo
`Petitioner contends claims 1–8, 10–18, and 20–21 of the ’027 patent are
`unpatentable under 35 U.S.C. § 103 as obvious in view of Deenoo. Pet. 43–59
`(citing Ex. 1005 ¶¶ 116–159). Patent Owner disputes Petitioner’s contentions.
`Prelim. Resp. 15–29. For reasons that follow, we determine Petitioner has
`demonstrated a reasonable likelihood of demonstrating that the challenged claims
`would have been obvious under 35 U.S.C. § 103 in view of Deenoo.
`1. Analysis of Independent Claim 1
`Petitioner contends each limitation of claim 1 in the ’027 patent is taught or
`at least suggested by Deenoo. Pet. 43–47 (citing Ex. 1005 ¶¶ 116–124).
`Specifically, Petitioner argues Deenoo teaches a method for a UE (which Deenoo
`refers to as a “WTRU”) to acquire various types of SI from a BS by using a
`preamble to request the SI. Id. at 43 (citing Ex. 1003, code (57), ¶ 367).
`According to Petitioner, Dee