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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.
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`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________________
`
`Case IPR2022-00468
`Patent No. 10,512,027
`____________________
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`PATENT OWNER’S CONTINGENT MOTION TO AMEND
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`IPR2022-00468
`MOTION TO AMEND
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`Table of Contents
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`I.
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`Introduction ....................................................................................................... 1
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`II.
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`Statement of Relief Requested .......................................................................... 2
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`III. The Substitute Claims Satisfy 37 C.F.R. § 42.121(a) ....................................... 2
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`IV. The Substitute Claim Satisfies 37 C.F.R. § 42.121(b) ..................................... 7
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`V. Level of Ordinary Skill in the Art ...................................................................11
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`VI. Claim Construction .........................................................................................11
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`VII. Patentability Over the Prior Art ......................................................................11
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`VIII. Conclusion ......................................................................................................12
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`- i -
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`IPR2022-00468
`MOTION TO AMEND
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`EXHIBIT LIST
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`Declaration of Kayvan B. Noroozi in Support of
`Motion for Admission Pro Hac Vice
`U.S Publication No. 2018/0302841 (Application
`No. 15/568,431 filed September 13, 2017)
`International Application No.
`PCT/CN2017/101576 filed Sep. 13, 2017
`PCT/CN2017/070130 filed Jan. 4, 2017
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`- ii -
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`IPR2022-00468
`MOTION TO AMEND
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`I.
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`Introduction
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`Telefonaktiebolaget LM Ericsson (“Ericsson” or “Patent Owner”)
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`respectfully moves under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 to
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`conditionally amend challenged claims 1-8, 10-18, and 20-21 of the ’027 patent. In
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`the event the Board finds the challenged claims unpatentable, Ericsson respectfully
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`requests that the Board grant this motion to amend with respect to the
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`corresponding proposed substitute claims.
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`“Before considering the patentability of any substitute claims, the Board first
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`must determine whether the motion to amend meets the statutory and regulatory
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`requirement set forth in 35 U.S.C. § 316(d) and 37 C.F.R. §42.121.” Lectrosonics,
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`Inc. v. Zaxcom, Inc., IPR2018-01129, -01130, Paper 15 at 4 (PTAB Feb. 25, 2019).
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`The substitute claims must be i) presented in a claim listing; ii) reasonable in
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`number; iii) responsive to a ground of unpatentability involved in the trial; iv) non-
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`broadening; and v) supported by the written description. Id. at 4-8. As shown
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`below, this motion and the substitute claims meet all requirements of 37 C.F.R §
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`42.121. Moreover, the motion confirms Patent Owner’s belief that the proposed
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`substitute claims are patentable over all known prior art, whether alone or in
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`combination.
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`In light of the Federal Circuit’s en banc decision in Aqua Products v. Matal,
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`872 F.3d 1290 (Fed. Cir. 2017), Patent Owner need not do more. Having met its
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`- 1 -
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`IPR2022-00468
`MOTION TO AMEND
`burdens, Patent Owner is entitled to the contingent substitute claim unless
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`Petitioner “prove[s] all propositions of unpatentability.” Id. at 1310.
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`II.
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`Statement of Relief Requested
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`Pursuant to the Board’s Pilot Program, Patent Owner requests the Board’s
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`Preliminary Guidance as to this Motion to Amend.
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`To the extent the Board finds any of original claims 1-8, 10-18 and 20-21
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`unpatentable, Ericsson respectfully requests that the Board grant this motion to
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`amend with respect to the corresponding proposed substitute claim(s) presented
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`herein.
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`III. The Substitute Claims Satisfy 37 C.F.R. § 42.121(a)
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`A. The substitute claims are non-broadening.
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`As shown in the attached claims appendix, the proposed substitute claims
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`retain all features of the corresponding original claims, and only add narrowing
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`limitations. The proposed claims thus do not enlarge the scope of the
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`corresponding original claims in any way. The following table specifies how each
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`proposed substitute claim narrows the corresponding original claim.
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`Substitute
`claim #
`22
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`Original
`claim #
`1
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`Narrowing Amendments
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` The preamble is associated with at
`least one system information block
`group;
` The received system information
`block groups comprise only the at
`least one system information block
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`- 2 -
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`Broadening
`Amendments
`None
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`IPR2022-00468
`MOTION TO AMEND
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`group associated with said preamble
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` Claim depends from narrower claim
`22 instead of claim 1;
` Selecting, from a plurality of
`preambles, a unique preamble
`associated with the at least one
`system information block group;
` Transmitting the unique preamble
` Claim depends from narrower claim
`22 instead of claim 1;
` The request is transmitted to the
`network node in accordance with a
`selected transmission timing
`associated with the at least one
`system information block group
` Claim depends from narrower claim
`22 instead of claim 1;
` The at least one system information
`block group is indicated by
`transmission timing of the preamble;
` The transmission timing is an integer
`multiple period of the minimum
`periodicity of the system information
`block group
` Claim depends from narrower claim
`22 instead of claim 1
` Claim depends from narrower claim
`26 instead of claim 5
` Claim depends from narrower claim
`22 instead of claim 1
` Claim depends from narrower claim
`22 instead of claim 1;
` Determining whether to send a
`request for a system information
`block group based on said indicator
` Claim depends from narrower claim
`26 instead of claim 5
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`- 3 -
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`None
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`None
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`None
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`None
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`None
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`None
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`None
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`None
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`23
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`2
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`24
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`3
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`25
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`4
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`26
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`27
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`28
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`29
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`5
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`6
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`7
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`8
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`30
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`10
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`IPR2022-00468
`MOTION TO AMEND
`None
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` The preamble is associated with at
`least one system information block
`group;
` The received system information
`block groups comprise only the at
`least one system information block
`group associated with said preamble
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`
`
` Claim depends from narrower claim
`31 instead of claim 11;
` Selecting, from a plurality of
`preambles, a unique preamble
`associated with the at least one
`system information block group;
` Transmitting the unique preamble
` Claim depends from narrower claim
`31 instead of claim 11;
` The request is transmitted to the
`network node in accordance with a
`selected transmission timing
`associated with the at least one
`system information block group
` Claim depends from narrower claim
`33 instead of claim 13;
` The at least one system information
`block group is indicated by
`transmission timing of the preamble;
` The transmission timing is an integer
`multiple period of the minimum
`periodicity of the system information
`block group
` Claim depends from narrower claim
`31 instead of claim 11
` Claim depends from narrower claim
`35 instead of claim 15
` Claim depends from narrower claim
`31 instead of claim 11
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`None
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`None
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`None
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`None
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`None
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`None
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`- 4 -
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`31
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`11
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`32
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`12
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`33
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`13
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`34
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`14
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`15
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`16
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`17
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`35
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`36
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`37
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`38
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`18
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`39
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`40
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`20
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`21
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`IPR2022-00468
`MOTION TO AMEND
`None
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`None
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`None
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` Claim depends from narrower claim
`31 instead of claim 11;
` Determining whether to send a
`request for a system information
`block group based on said indicator
` Claim depends from narrower claim
`35 instead of claim 15
` The preamble is associated with at
`least one system information block
`group;
` The transmitted system information
`block groups comprise only the at
`least one system information block
`group associated with said preamble
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`B.
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`The substitute claims are responsive to a ground of
`unpatentability involved in the trial.
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`The proposed substitute claims are also responsive to at least one ground of
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`unpatentability in the trial. See 37 C.F.R. § 42.121(a)(2)(i). Petitioner has alleged
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`that U.S. Pat. No. 10,455,621 to Agiwal et al., Ex. 1008 (“Agiwal”), teaches a
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`method for requesting system information by transmitting a preamble for
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`indicating at least one system information block group, which comprises one or
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`more system information blocks grouped according to a feature of the system
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`information blocks; and receiving one or more system information block groups
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`from the network node, as recited in the original claims. Each proposed substitute
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`claim: (1) narrows the preamble to be associated with at least one system
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`information block group; and (2) receives only the system information block group
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`associated with the transmitted preamble. Agiwal does not teach or suggest a
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`- 5 -
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`IPR2022-00468
`MOTION TO AMEND
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`system or method with those limitations.
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`Substitute claims 23 and 32 further require that transmitting the request
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`includes selecting from a plurality of preambles a unique preamble associated with
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`the system information block group and transmitting the unique preamble, which
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`Agiwal also does not teach or suggest. Substitute claims 24, 33 and their
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`dependents require transmitting the request in accordance with a selected
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`transmission timing associated with a system information block group. Agiwal
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`does not disclose or suggest such a method or system, and instead merely teaches,
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`at best, transmitting “using a PRACH time/frequency resource” that can be specific
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`to system information or set of system information. Ex. 1002 Fig.11.
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`Substitute claims 25 and 34 further require that the at least one system
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`information block group is indicated by transmission timing of the preamble and
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`that the transmission timing is an integer multiple period of the minimum
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`periodicity of the system information block group. Agiwal cannot meet that
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`requirement. Agiwal never teaches the use of integer multiple periods of the
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`minimum periodicity and merely teaches transmitting a preamble using “a PRACH
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`time/frequency resource” that can be specific to system information or set of
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`system information. Ex. 1002, Fig.11.
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`Further, substitute claims 29 and 38 require receiving an indicator from the
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`network node and determining whether to send a request for a system information
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`- 6 -
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`IPR2022-00468
`MOTION TO AMEND
`block group based on said indicator. Agiwal does not teach whether to send a
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`request or not based on the indicator.
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`The other art cited and relied upon in the Petition likewise does not disclose
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`the above limitations.
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`At the same time, it is not necessary “that every word added to or removed
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`from a claim in a motion to amend must be solely for the purpose of overcoming
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`an instituted ground.” Veeam Software Corp. v. Veritas Techs., LLC, IPR2014-
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`00090, Paper 48 at 28 (Jul. 17, 2017). Rather, the question is whether “the
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`proposed claim as a whole is ‘responsive to a ground of unpatentability involved in
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`the trial.’” Id. at 29. Beyond that threshold, Patent Owner may add other
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`amendments that “serve[ ] the public interest by ensuring issuance of valid and
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`clear patents,” including “additional limitations to address potential § 101 or § 112
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`issues.” Id. To the extent the Board finds that any other proposed amendments in a
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`given substitute claim are not directly responsive to a ground of unpatentability
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`here, those amendments are appropriate in view of the legal principles above.
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`C. The substitute claims are reasonable in number.
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`For each original challenged claim, Ericsson proposes only one substitute
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`claim, fitting the “presumption . . . that only one substitute claim would be needed
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`to replace each challenged claim.” 37 C.F.R. § 42.121(a)(3).
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`IV. The Substitute Claim Satisfies 37 C.F.R. § 42.121(b)
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`- 7 -
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`IPR2022-00468
`MOTION TO AMEND
`A. The substitute claims are presented in claim listing.
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`As required by 37 C.F.R. § 42.121(b), this motion is accompanied by an
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`appendix that lists the proposed substitute claim and clearly shows the proposed
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`amendments to the claim in light of the corresponding original claim.
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`B.
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`The substitute claims are supported by the original and earlier-
`filed disclosures for each claim.
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`Pursuant to 37 C.F.R. § 42.121(b)(1) and (b)(2), the below table
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`demonstrates that each substitute claim is supported by each earlier-filed disclosure
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`as to which the benefit of the filing date is sought.1 In particular, the ’027 patent
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`issued from Application No. 15/568,431 that was published as Patent Application
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`No. 2018/0302841 (September 13, 2017)(Ex. 2002), which is a National Stage
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`Application of International Application No. PCT/CN2017/101576 (Sep. 13, 2017)
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`(Ex. 2003) which claims priority to International Application No.
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`PCT/CN2017/070130 (Jan. 4, 2017) (Ex. 2004).
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`1 The support citations herein are not necessarily exhaustive or meant to
`limit the meaning of the corresponding limitations.
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`- 8 -
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`Limitation2 Ex. 2002
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`Ex. 2003
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`IPR2022-00468
`MOTION TO AMEND
`Ex. 20043
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`[pre]
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`[a]
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`[b]
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`
`Abstract, cl. 1,
`12
`Abstract, Figs
`1, 2 ¶¶ 5, 12,
`15 22, 27, 28,
`41, 44, 46, 48,
`53, 61, 62
`¶¶5, 10, 15, 30,
`72; Fig. 4
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`¶68
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`¶¶14, 23, 28,
`47-48, 55, 58,
`62, 69; cls. 5,
`15, 16
`¶¶49, 56, 57
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`Abstract cl. 1, 8,
`15
`cls.1, 3, 5, 14,
`26, 37; ¶¶10,
`12, 15, 22, 28,
`29, 32, 45
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`¶¶5, 9, 14, 55;
`cls. 1, 15, 16;
`Fig. 4
`¶51
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`¶¶16, 33, 39,
`42, 52; cls. 3,
`10, 18, 25
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`¶¶40-41
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`Abstract, ¶¶5, 19, 28,
`45; cl. 1
`¶¶5, 51, 10, 15, 29; Cl.
`1, 8, 15, 16, 23
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`¶¶5, 9, 14, 25, 43, 55;
`cls. 1, 8, 15, 16, 23, 30,
`52
`¶¶34, 35, 38, 39, 46,
`51, 52
`¶¶16, 33, 39, 42, 52;
`cls. 3, 10, 18, 25
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`¶¶15, 16, 29, 32, 33,
`39, 40, 41, 42, 45, 52;
`cls. 3, 5 10, 12, 18, 25
`¶¶16, 37; cls. 4, 11, 19,
`26
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`Claim
`#
`22
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`23
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`24
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`25
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`26
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`27
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`28
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`29
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`¶¶6, 16, 25, 26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶¶6, 16, 25-26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶¶27, 41, 44,
`56, 57, 61; cls.
`8, 19
`¶¶ 7, 17, 64-
`66, 69; cls. 9,
`20
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`2 Limitation citations correspond to numbering shown in the claims
`appendix attached hereto.
`3 Cites are to provisional page number and line (not page number from file
`history)
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`
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`¶¶16, 37, cls. 4, 11, 19,
`26
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`¶¶15, 29, 32,
`40, 41, 45; cls.
`5. 12. 20, 27
`¶¶6, 11, 47-52;
`cls. 6, 13, 21, 28
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`¶¶15, 29, 32, 40, 41,
`45; cls. 5, 12, 20, 27
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`¶¶6, 11, 47-52; cls. 6,
`13, 21, 28
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`- 9 -
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`¶¶6, 16, 25-26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶Abstract; cls.
`1, 12
`¶Abstract, Figs
`1, 2 ¶¶5, 12, 15
`22, 27, 28, 41,
`44, 46, 48, 53,
`61, 62
`¶¶5, 10, 15, 30,
`72; Fig. 4
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`¶¶68
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`¶¶14, 23, 28,
`47-48, 55, 58,
`62, 69; cls. 5,
`15, 16
`¶¶49, 56-57
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`¶¶6, 16, 25-26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶¶6, 16, 25-26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶¶27, 41, 44,
`56, 57, 61; cls.
`8, 19
`¶¶7, 17, 64 -
`66, 69; cls. 9,
`20
`¶¶6, 16, 25-26,
`28, 52, 53; cls.
`6, 17, 18, 22
`¶Abstract, cls.
`1, 12
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`¶Abstract cls. 1,
`8, 15
`cls.1, 3, 5, 14,
`26, 37; ¶¶10,
`12, 15, 22, 28,
`29, 32, 45
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`¶¶5, 9, 14, 55;
`cls. 1, 15, 16;
`Fig. 4
`¶¶51
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`¶¶16, 33, 39,
`42, 52; cls. 3,
`10, 18, 25
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`¶¶40-41
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`IPR2022-00468
`MOTION TO AMEND
`¶¶16, 37; cls. 4, 11, 19,
`26
`
`¶Abstract, ¶¶5, 19, 28,
`45; cl. 1
`¶¶5, 51, 10, 15, 29; cls.
`1, 8, 15, 16, 23
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`¶¶5, 9, 14, 25, 43, 55;
`cls. 1, 8, 15, 16, 23, 30
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`¶34, 35, 38, 39, 46, 51,
`52
`¶¶16, 33, 39, 42, 52;
`cls. 3, 10, 18, 25
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`¶¶15, 16, 29, 32, 33,
`39, 40, 41, 42, 45, 52;
`cls. 3, 5 10, 12, 18, 25
`¶¶16, 37; cls. 4, 11, 19,
`26
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`¶¶16, 37; cls. 4, 11, 19,
`26
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`¶¶15, 29, 32,
`40, 41, 45; cls.
`5. 12. 20, 27
`¶¶6, 11, 47-52;
`cls. 6, 13, 21, 28
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`¶¶15, 29, 32, 40, 41,
`45; cls. 5, 12, 20, 27
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`¶¶6, 11, 47-52; cls. 6,
`13, 21, 28
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`¶¶16, 37; cls. 4,
`11, 19, 26
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`¶¶16, 37; cls. 4, 11, 19,
`26
`
`¶Abstract cls. 1,
`8, 15
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`- 10 -
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`¶¶Abstract, 5, 19, 28,
`45; cl. 1
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`30
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`31
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`[pre]
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`32
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`33
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`34
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`35
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`36
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`37
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`38
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`39
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`[a]
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`[b]
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`40
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`[pre]
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`[a]
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`[b]
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`¶¶Abstract, 5,
`12, 15, 22, 27,
`28, 41, 44, 46,
`48, 53, 61, 62;
`Figs 1, 2
`¶¶5, 10, 15,
`30,72; Fig. 4
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`cls.1, 3, 5, 14,
`26, 37; ¶¶10,
`12, 15, 22, 28,
`29, 32, 45
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`¶¶5, 9, 14, 55,
`cls. 1, 15, 16;
`Fig. 4
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`V. Level of Ordinary Skill in the Art
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`
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`IPR2022-00468
`MOTION TO AMEND
`¶¶5, 51, 10, 15, 29; cls.
`1, 8, 15, 16, 23
`
`¶¶5, 9, 14, 25, 43, 55;
`cls. 1, 8, 15, 16, 23, 30
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`Patent Owner agrees with Petitioner’s expert regarding the level of ordinary
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`skill in the art. Ex. 1005 ¶43.
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`VI. Claim Construction
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`At this stage, Patent Owner does not propose any specific claim
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`constructions as it is not Patent Owner’s burden to demonstrate patentability of the
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`proposed substitute claim over the prior art. While Patent Owner believes the new
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`proposed limitations, plainly understood, establish patentability of the proposed
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`claim, Patent Owner reserves the right to propose claim constructions as needed to
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`respond to any allegations of unpatentability presented by Petitioner.
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`VII. Patentability Over the Prior Art
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`In light of the Federal Circuit’s en banc decision in Aqua Products v. Matal,
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`872 F.3d 1290, 1296, 1310 (Fed. Cir. 2017), Patent Owner need not prove the
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`patentability of the proposed substitute claim. And as the Patent Office has
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`acknowledged before the Federal Circuit, and the Federal Circuit has held, Patent
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`Owner adequately meets its duty of candor by simply confirming—as it does
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`IPR2022-00468
`MOTION TO AMEND
`here—its belief that the proposed substitute claim is patentable over all known
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`
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`prior art, alone or combined. Nike Inc. v. Adidas AG, 812 F.3d 1326, 1350 (Fed.
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`Cir. 2016) (overruled en banc on other grounds). Nonetheless, the proposed
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`amended claims are patentable at least for the reasons set forth in Section III.A.
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`VIII. Conclusion
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`Patent Owner respectfully requests the Board’s Preliminary Guidance as to
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`this Motion, and further requests that, to the extent any original claim is deemed
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`unpatentable, the Board grant the corresponding proposed substitute claim.
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`Respectfully submitted,
`
`/s Kayvan Noroozi/
`Kayvan B. Noroozi, Admitted Pro Hac Vice
`Peter C. Knops, Reg. No. 37,659
`NOROOZI PC
`11601 Wilshire Blvd., Suite 2170
`Los Angeles, CA 90025
`Attorneys for the Patent Owner
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`Date: November 10, 2022
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`IPR2022-00468
`MOTION TO AMEND
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`CLAIMS APPENDIX
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`Underlining and strikethrough text show the modifications to the original
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`claim being made in the corresponding substitute claim.
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`1-8.
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`9.
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`(Canceled)
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`(Not challenged in this proceeding)
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`10-18.
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`(Canceled)
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`19.
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`(Not challenged in this proceeding)
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`20-21.
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`(Canceled)
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`22.
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`(Substitute for claim 1, if found unpatentable)
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`[pre] A method for requesting system information, comprising:
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`[a] transmitting a request from a user terminal to a network node using a preamble
`associated with for indicating at least one system information block group, each
`said system information block group of which comprises comprising 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
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`[b] receiving one or more system information block groups from the network node,
`wherein the received one or more system information block groups comprise only
`the at least one system information block group associated with said preamble.
`
`23.
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`
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`(Substitute for claim 2, if found unpatentable)
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`The method according to claim 221, wherein the transmitting of the request
`comprises:
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`selecting, from a plurality of preambles, a unique preamble associated with the at
`least one system information block group; and
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`- i -
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`IPR2022-00468
`MOTION TO AMEND
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`transmitting the selected unique preamble.
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`24.
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`
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`(Substitute for claim 3, if found unpatentable)
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`The method according to claim 221,wherein the at least one system information
`block group is indicated by transmission timing of the preamble wherein the
`transmission of the request comprises transmitting the request to the network node
`in accordance with a selected transmission timing associated with the at least one
`system information block group.
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`25.
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`
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`(Substitute for claim 4, if found unpatentable)
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`The method according to claim 221,wherein the at least one system information
`block group is indicated by transmission timing of the preamble and wherein said
`transmission timing is an integer multiple period of the minimum periodicity of the
`system information block grouptransmission of the request comprises transmitting
`the request to the network node in accordance with a selected transmission timing
`associated with the at least one system information block group.
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`26.
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`
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`(Substitute for claim 5, if found unpatentable)
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`The method according to claim 221, further comprising:
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`receiving notification information from the network node, wherein transmission of
`the at least one system information block group is predefined or derived based at
`least partly on the notification information.
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`27.
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`
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`(Substitute for claim 6, if found unpatentable)
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`The method according to claim 265, wherein the notification information is
`included in minimum system information.
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`28.
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`(Substitute for claim 7, if found unpatentable)
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`The method according to claim 221, wherein the feature of the one or more system
`information blocks comprises at least one of functionality and periodicity of the
`one or more system information blocks.
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`- ii -
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`IPR2022-00468
`MOTION TO AMEND
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`29.
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`
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`(Substitute for claim 8, if found unpatentable)
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`The method according to claim 221, further comprising:
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`receiving an indicator from the network node, wherein the indicator indicates at
`least one of: which system information block group is being transmitted from the
`network node, and which system information block group is scheduled to be
`transmitted from the network node and
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`determining whether to send a request for a system information block group based
`on said indicator.
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`30.
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`
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`(Substitute for claim 10, if found unpatentable)
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`The method according to claim 265, wherein the notification information indicates
`a correspondence between preambles and system information block groups.
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`31.
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`(Substitute for claim 11, if found unpatentable)
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`[pre] An apparatus for requesting system information, comprising:
`
`[a] at least one processor; and
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`[b] at least one memory comprising computer program code which, when executed
`by the at least one processor, cause the apparatus to:
`
`transmit a request from a user terminal to a network node using a preamble
`associated with for indicating at least one system information block group, each
`said system information block group of which comprises comprising 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 received one or more system information block groups comprise
`only the at least one system information block group associated with said
`preamble.
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`- iii -
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`IPR2022-00468
`MOTION TO AMEND
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`
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`32.
`
`
`
`(Substitute for claim 12, if found unpatentable)
`
`The apparatus according to claim 3111, wherein the computer program code cause
`the apparatus to:
`
`select, from a plurality of preambles, a unique preamble associated with the at least
`one system information block group; and
`
`transmit the selected unique preamble.
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`33.
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`
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`(Substitute for claim 13, if found unpatentable)
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`The apparatus according to claim 3111, wherein the at least one system
`information block group is indicated by transmission timing of the preamble,
`wherein the transmitting the request comprises transmitting the request to the
`network node in accordance with a selected transmission timing associated with
`the at least one system information block group.
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`34.
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`
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`(Substitute for claim 14, if found unpatentable)
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`The apparatus according to claim 3313, wherein the at least one system
`information block group is indicated by the computer program code causing cause
`the apparatus to transmit the request to the network node in accordance with a the
`transmission timing of the preamble and wherein said transmission timing is an
`integer multiple period of the minimum periodicity of the system information
`block group a selected transmission timing associated with the at least one system
`information block group.
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`35.
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`
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`(Substitute for claim 15, if found unpatentable)
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`The apparatus according to claim 3111, wherein computer program further cause
`the apparatus to:
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`- iv -
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`IPR2022-00468
`MOTION TO AMEND
`receive notification information from the network node, wherein transmission of
`the at least one system information block group is predefined or derived based at
`least partly on the notification information.
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`
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`36.
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`
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`(Substitute for claim 16, if found unpatentable)
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`The apparatus according to claim 3515, wherein the notification information is
`included in minimum system information.
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`37.
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`
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`(Substitute for claim 17, if found unpatentable)
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`The apparatus according to claim 3111, wherein the feature of the one or more
`system information blocks comprises at least one of functionality and periodicity
`of the one or more system information blocks.
`
`38.
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`
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`(Substitute for claim 18, if found unpatentable)
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`The apparatus according to claim 3111, wherein the computer program further
`cause the apparatus to:
`
`receive an indicator from the network node, wherein the indicator indicates at least
`one of: which system information block group is being transmitted from the
`network node, and which system information block group is scheduled to be
`transmitted from the network node and
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`determine whether to send a request for a system information block group based on
`said indicator.
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`39.
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`
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`(Substitute for claim 20, if found unpatentable)
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`The apparatus according to claim 3515, wherein the notification information
`indicates a correspondence between preambles and system information block
`groups.
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`40.
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`(Substitute for claim 21, if found unpatentable)
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`[pre] A method for transmission of system information, comprising:
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`- v -
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`IPR2022-00468
`MOTION TO AMEND
`[a] receiving a request from a user terminal to a network node using a preamble
`associated with for indicating at least one system information block group, each
`said system information block group of which comprises comprising 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
`
`[b] transmitting one or more system information block groups from the network
`node, wherein the transmitted one or more system information block groups
`comprise only the at least one system information block group associated with said
`preamble.
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`- vi -
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`CERTIFICATE OF SERVICE
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`IPR2022-00468
`MOTION TO AMEND
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`
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`CONTINGENT MOTION TO AMEND was served electronically via e-mail on
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`November 10, 2022, on the following counsel of record for Petitioner:
`
`Paul R. Hart
`Paul.Hart@eriseip.com
`Erise IP, P.A.
`5299 DTC Blvd., Ste. 1340
`Greenwood Village, CO
`80111
`
`Adam P. Seitz
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`
`
`Jennifer C. Bailey
`Jennifer.Bailey@eriseip.com
`Erise IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
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`Date: November 10, 2022
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`/Kayvan Noroozi/
`Kayvan Noroozi
`NOROOZI PC
`11601 Wilshire Blvd., Suite 2170
`Los Angeles, CA 90025
`Tel.: 310-975-7074
`
`Counsel for Patent Owner
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