`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2022-00468
`U.S. Patent No. 10,512,027
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,512,027
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ..................................................................................... 1
`STATE OF THE ART AND THE ’027 PATENT’S ALLEGED
`INVENTION .............................................................................................. 1
`A. OVERVIEW OF THE TECHNOLOGY ................................................................. 1
`B. THE ’027 PATENT’S ALLEGED INVENTION .................................................... 3
`C. THE ’027 PATENT’S PROSECUTION ............................................................... 4
`D. A PERSON OF ORDINARY SKILL IN THE ART ................................................. 5
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ...................... 5
`A. STANDING UNDER 37 C.F.R. § 42.104(A) .................................................... 5
`B. CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED ........... 6
`C. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)............................. 6
`IV. OVERVIEW OF THE PRIOR ART ........................................................ 7
`A. AGIWAL (EX. 1002) ..................................................................................... 7
`B. DEENOO (EX. 1003) ....................................................................................12
`C. KUBOTA (EX. 1004) ...................................................................................19
`V.
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ....................22
`A. SUMMARY OF GROUNDS .............................................................................22
`B. GROUND I: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF AGIWAL
` ..................................................................................................................22
`C. GROUND II: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF
`DEENOO .....................................................................................................43
`D. GROUND III: CLAIMS 3, 4, 11-18, AND 20 ARE OBVIOUS IN VIEW OF AGIWAL
`AND KUBOTA..............................................................................................60
`E. GROUND IV: CLAIMS 3, 4, 13, AND 14 ARE OBVIOUS IN VIEW OF DEENOO AND
`KUBOTA .....................................................................................................67
`VI. DISCRETIONARY FACTORS ...............................................................70
`A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION .................................70
`VII. CONCLUSION .........................................................................................70
`VIII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................72
`A. REAL PARTY-IN-INTEREST ..........................................................................72
`B. RELATED MATTERS ....................................................................................72
`C. LEAD AND BACK-UP COUNSEL ...................................................................72
`
`i
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`

`

`I.
`
`INTRODUCTION
`
`IPR2022-00468
`U.S. Patent No. 10,512,027
`
`Petitioner Apple Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of
`
`Claims 1-8, 10-18, and 20-21 (“Challenged Claims”) of U.S. Patent No. 10,512,027
`
`(“ʼ027 patent”) (Ex. 1001).
`
`II.
`
`STATE OF THE ART AND THE ’027 PATENT’S ALLEGED
`INVENTION
`A. Overview of the Technology
`1.
`Long-Term Evolution and New Radio
`Long-Term Evolution (LTE) is a 3rd Generation Partnership Project
`
`(“3GPP”) wireless technology standard, the development of which began in 2004 as
`
`a 4th generation (4G) of the wireless standard. Ex. 1005, ¶30, Ex. 1007 (Holma),1 4;
`
`Ex. 1008 (Sesia),2 1.1.2. In LTE, information is transmitted from one or more user
`
`equipment (UEs) on uplink channels to a base station (BS), and on downlink
`
`channels from BS to UE. Ex. 1007, 5; Ex. 1005, ¶30. In 2019, companies began
`
`deploying a 5th generation, as 5G or NR (“new radio”). Ex. 1005, ¶30. In 5G, a UE
`
`communicates with a BS known as a gNodeB. Id. While 5G wireless devices have
`
`
`1 Holma was published and publicly available no later than July 1, 2011. Ex. 1018
`
`(Mullins Declaration In Support of Public Availability of Holma), ¶48.
`
`2 Sesia was published and publicly available no later than April 14, 2012. Ex. 1018
`
`(Mullins Declaration In Support of Public Availability of Sesia), ¶63.
`
` 1
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`4G capability, they typically accommodate higher bandwidth and users in a fixed
`
`area. Id.
`
`System Information and System Information Blocks
`
`2.
`As Dr. Wells explains, in a wireless communication network, a BS and a UE
`
`communicate via transmitted signals over an air-interface generally known as a
`
`channel. Id., ¶31. A broadcast channel is often used to transmit basic System
`
`Information (SI), which allows other channels in the cell to be configured and
`
`operated. Ex. 1008, 9.2.1.
`
`The transmitted SI is structured as System Information Blocks (SIBs), each of
`
`which contains a set of functionally related parameters. Id., 3.2.2. An SI message, of
`
`which there may be several, includes one or more SIBs that have the same scheduling
`
`requirements (i.e., the same transmission periodicity). Id. SI scheduling can be
`
`configured based on the content of the SI. Ex. 1005, ¶32.
`
`Preambles
`
`3.
`SI can either be continuously broadcast from the BS or sent on demand. Ex.
`
`1009, 1. Companies have long sought to reduce the amount of continuously
`
`broadcast SI in favor of on-demand SI, for example, to reduce network signaling
`
`overhead. Id., 1-2; Ex. 1005, ¶33.
`
`In one well-known method of implementing on-demand SI delivery, which
`
`was discussed by 3GPP at least as early as October 2016, SI is requested based on
`
` 2
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`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`an associated preamble transmission. Ex. 1009 (R2-166120), 3; Ex. 1005, ¶34. A
`
`preamble is a message sent from a UE to a BS that indicates a request for SI. Ex.
`
`1009, 3. Under this approach, each preamble is mapped to a particular set of SI. Id.
`
`To acquire specific SI, the UE sends the corresponding preamble to the BS. This
`
`approach also allows the UE to request “system information in more than one
`
`group.” Id.
`
`Id., Fig. 4.
`
`
`
`The ’027 Patent’s Alleged Invention
`
`B.
`The alleged invention of the ’027 patent relates to requesting and transmitting
`
`SI using a preamble for indicating at least one SIB group, where SIBs are grouped
`
`according to a feature such as functionality or periodicity. The ’027 patent states that
`
`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., 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.,
`
` 3
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`

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`IPR2022-00468
`U.S. Patent No. 10,512,027
`4:59-63. This way, “the network node can know which SIB group the user terminal
`
`actually needs” resulting in a more efficient transmission. Id., 4:63-5:5. As stated
`
`above and described in detail in the sections below, on-demand SI delivery was well-
`
`known in the art prior to the earliest effective filing date of the ’027 patent.
`
`C. The ’027 Patent’s Prosecution
`The ’027 patent issued on December 17, 2019 from U.S. Application No.
`
`15/568,431, filed on October 20, 2017, as a national stage International Application
`
`PCT/CN2017/101576 filed on September 13, 2017. Ex. 1001, Cover. This
`
`International Application claims priority to an earlier PCT filed on January 4, 2017
`
`Id. For purposes of this petition and without waiving its right to challenge priority
`
`in this or any other proceeding, Petitioner adopts January 4, 2017, as the invention
`
`date for the Challenged Claims. Notably, all prior art relied on herein is dated 2016
`
`and earlier.
`
`During prosecution of the ’027 Patent, the Examiner issued a non-final
`
`rejection of then-pending claims 1, 6-10, 12, 17-22, and 24 as obvious under 35
`
`U.S.C. § 103 over Ishii (US 2018/0167918) in view of Shukla (US2015/0351011).
`
`Ex. 1010, 254-59. Applicants amended then-pending independent claims 1, 12, and
`
`24 to require that transmitting (claims 1, 12) or receiving (claim 24) a request include
`
`“using a preamble for indicating at least one [SIB] group . . . ” Id., 274-77. Applicant
`
`argued that claims 1, 12, and 24 “now incorporate[] the preamble limitation” and
`
` 4
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`

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`IPR2022-00468
`U.S. Patent No. 10,512,027
`“[a]ccordingly [are] now allowable.” Id., 278. Applicant also argued that then
`
`pending dependent claims 3-11 and 14-22 depend from independent claims 1 and
`
`12, and thus also contain allowable subject matter. Id. The Examiner thereafter
`
`issued a Notice of Allowance. Id., 341.
`
`D. A Person of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) at the time of the alleged
`
`invention would have had a Master’s degree in Electrical Engineering, Computer
`
`Science, Physics, Applied Mathematics, or equivalent and three to five years of
`
`experience working with wireless digital communication systems. Ex. 1005, ¶43
`
`(noting additional education might compensate for less experience, and vice-versa).
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`Standing Under 37 C.F.R. § 42.104(A)
`
`A.
`Petitioner certifies that the ’027 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the claims of the ’027
`
`Patent. Specifically, (1) Petitioner is not the owner of the ’027 Patent; (2) Petitioner
`
`has not filed a civil action challenging the validity of any claim of the ’027 Patent;
`
`(3) Petitioner has not been served with a complaint alleging infringement of the ’027
`
`Patent; (4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR;
`
`and (5) this Petition is filed after the ’027 Patent was granted.
`
` 5
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`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`B. Challenge Under 37 C.F.R. § 42.104(B) and Relief Requested
`In view of the prior art and evidence presented, claims 1-8, 10-18, and 20-21
`
`of the ’027 Patent are unpatentable and should be cancelled. 37 C.F.R. §
`
`42.104(b)(1). Further, based on the prior art references identified below, IPR of the
`
`Challenged Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Section IV identifies where each element of the Challenged Claims is found
`
`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the evidence relied
`
`upon to support the challenges are provided above and the relevance of the evidence
`
`to the challenges raised is provided in Section IV. 37 C.F.R. § 42.104(b)(5). Exhibits
`
`1001-1021 are also attached.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(B)(3)
`
`In this proceeding, claims are interpreted under the same standard applied by
`
`Article III courts (i.e., the Phillips standard). See 37 C.F.R § 42.100(b); see also 83
`
`Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`
`Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
`
`meaning which is the meaning understood by a person of ordinary skill in the art in
`
`view of the patent and file history. Phillips, 415 F.3d 1303, 1312–13. Petitioner
`
`submits that the Board does not need to construe any terms to resolve the arguments
`
`presented herein. Realtime Data v. Iancu, 912 F. 3d 1368, 1375 (Fed. Cir. 2019)
`
` 6
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`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`(“The Board is required to construe only those terms ... that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”) (internal quotes omitted).
`
`IV. OVERVIEW OF THE PRIOR ART
`
`The challenge is based on the following references, none of which was before
`
`the Patent Office during the prosecution of the ’027 Patent.
`
`A. Agiwal (Ex. 1002)
`U.S. Patent No. 10,455,621 to Agiwal et al., issued on October 22, 2019. Ex.
`
`1002, Cover. Agiwal issued from Application No. 15/443,307, which was filed
`
`February 27, 2017, and claims priority to Provisional Application No. 62/301,016,
`
`filed on February 29, 2016 and Provisional Application No. 62/334,706, filed on
`
`May 11, 2016. Id. Agiwal is prior art under at least 35 U.S.C. §§ 102(a)(2) and
`
`102(d).3
`
`Agiwal relates to a wireless communication system, including a method for a
`
`UE and BS to transmit and receive SI. Id., 1:17-20. Agiwal states broadcasting SIBs
`
`periodically is unnecessary and leads to wasted resources and increased energy
`
`consumption. Id., 4:5-7. Instead, Agiwal proposes a method for on-demand
`
`provision of SI. Id., 19:41. In the method, “[t]he UE and BS are capable of signaling
`
`
`3 References to subsections of 35 U.S.C. §102 are to the AIA version unless
`
`otherwise indicated.
`
` 7
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`[SI] efficiently in a wireless communication system.” Id., 5:19-22. Specifically,
`
`Agiwal discloses categorizing SI into SIBs, which can be “grouped into an SIB set
`
`(or SI message) wherein each set comprises one or more SIBs.” Id., 9:26-32. SIB
`
`grouping is based on the feature of the underlying SI. Id., 9:34-39.
`
`Agiwal discloses a UE receiving a first SI message, sending a request
`
`preamble to the BS based on that first SI, and receiving the requested second SI from
`
`the BS. Id., 4:39-46. The UE requests a specific SIB group using a PRACH-SI
`
`preamble. Id., 20:29-31. As shown below, and explained by Dr. Wells, the PRACH-
`
`SI preamble (yellow) is specific to the SIB group requested, and thus returned by the
`
`BS in response (green). Id., 20:40-41, Fig. 11.
`
`
`
`Id., Fig. 11; Ex. 1005, ¶47.
`
`Because Agiwal, like the ’027 Patent, discloses a technique for wireless
`
`network system information (“SI”) transmission between a network system and user
`
` 8
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`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`device, Agiwal is in the same field of endeavor as the ’027 Patent. Compare Agiwal
`
`(Ex. 1002), Abstract, with ’027 Patent (Ex. 1001), 1:16-37. Agiwal is also
`
`reasonably pertinent to the problem faced by the inventor of the ’027 Patent. Ex.
`
`1005, ¶47 (noting Agiwal and the ’027 patent seek to improve overhead efficiency).
`
`Accordingly, Agiwal is analogous art to the ’027 Patent. Id.
`
`1.
`
`Agiwal’s Provisional Applications
`
`Agiwal claims priority to Provisional Application Nos. 62/301,016 and
`
`62/334,706 (“Agiwal ʼ016” and “Agiwal ʼ706,” respectively, and collectively the
`
`“Agiwal Provisionals”). Exs. 1011-1012. “[A] patent must satisfy 35 U.S.C.
`
`§119(e)(1) to gain the benefit of a provisional application filing date.” Amazon.com,
`
`Inc. v. Customplay, LLC, IPR2018-01496, 2020 WL 1080501, at *20 (P.T.A.B. Mar.
`
`4, 2020) (non-precedential) (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`800 F.3d 1375, 1378 (Fed. Cir. 2015)). To claim the benefit of this earlier filing date,
`
`the provisional application must contain sufficient written description of the
`
`invention to enable a POSA to practice the invention claimed in the non-provisional
`
`application. Id., *21. Where a prior art patent “is shown to have at least one claim to
`
`an invention that is supported by the disclosure of a provisional application,” that
`
`provisional necessarily discloses the same invention eventually claimed and the prior
`
`art patent is entitled to the provisional application’s effective filing date. Id.
`
` 9
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`Here, Agiwal is entitled to an earlier effective filing date in view of its
`
`provisional applications which pre-date the effective filing date of the ʼ027 patent4
`
`and disclose and enable Agiwal’s claimed invention as described in Dr. Wells’
`
`declaration. Ex. 1005, ¶51. Agiwal claimed priority to and incorporated by reference
`
`the disclosures in the Agiwal Provisionals. Ex. 1002, 1:7-13. The Agiwal
`
`Provisionals each disclose Agiwal’s claimed invention that provides SI to UEs on-
`
`demand. Ex. 1002, 19:41; Ex. 1011, 13; Ex. 1012, 33; Ex. 1005, ¶49. Like Agiwal,
`
`the Agiwal Provisionals each teach that a category of minimum SI “is broadcasted
`
`periodically by the cell.” Ex. 1002, 19:33-42; Ex. 1012, 33; Ex. 1011, 17-18; Ex.
`
`1005, ¶49. The UE acquires this minimum SI, and then sends a random access
`
`preamble (PRACH-SI preamble) to request additional SI. Ex. 1002, 20:15-34; Ex.
`
`1011, 17; Ex. 1012, 33; Ex. 1005, ¶49.
`
`The Agiwal Provisionals each explain that the PRACH-SI preamble can be
`
`specific to a set of SI (SIB group). Ex. 1011, 9, 17; Ex. 1012, 24, 33; Ex. 1005, ¶50.
`
`The BS then responds by sending the requested SIB group. Ex. 1002, 20:63-67; Ex.
`
`
`4 Petitioner has included citations to relevant disclosures from Agiwal and the Agiwal
`
`Provisionals throughout Grounds I and III below to demonstrate invalidity of the
`
`’027 Patent. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Ex Parte Mann,
`
`Appeal No. 2015-003571, 2016 WL 7487271, at *6 (PTAB Dec. 21, 2016).
`
` 10
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`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`1011, 18; Ex. 1012, 34. Figure 11 of the Provisional Applications depicts Agiwal’s
`
`framework for using a PRACH-SI preamble to request and receive a SIB group. Ex.
`
`1012, Fig. 11; Ex. 1002, Fig. 11; Ex. 1011, Fig. 11; Ex. 1005, ¶50. Citations to
`
`Agiwal in the Grounds below are accompanied by citations to corresponding
`
`disclosures in the Agiwal Provisionals.
`
`2.
`
`The Agiwal Provisionals Support Claim 1 of Agiwal
`a)
`A method for receiving system information (SI) by a user
`equipment (UE) in a wireless communication system, the
`method comprising:
`
`The Agiwal Provisionals disclose “[a] method for receiving system
`
`information (SI) by a user equipment (UE) in a wireless communication system,”
`
`because they all disclose UEs receiving SI in a wireless network. Ex. 1011, 17; Ex.
`
`1012, 33; Ex. 1005, ¶51.
`
`b)
`receiving, from a base station (BS), minimum SI which
`is broadcasted periodically,
`the minimum SI
`including
`information indicating whether a SI message for other SI is
`broadcast periodically or provisioned on demand, and
`configuration information on a physical random access
`channel (PRACH), wherein the configuration information
`includes information on PRACH resource for the other SI and
`information on a PRACH preamble corresponding to each SI
`message for the other SI;
`
`The Agiwal Provisionals disclose receiving minimum SI broadcasted
`
`periodically from a BS. Ex. 1011, 17-18; Ex. 1012, 33; Ex. 1005, ¶51. The Agiwal
`
`Provisionals further disclose the minimum (“essential”) SI can indicate whether
`
`other SI will be provided periodically or on demand and includes information about
`
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`PRACH resources and preambles for requesting other SI (i.e., “configuration
`
`information on a physical random access channel”). Ex. 1011, 8, 18, 17; Ex. 1012,
`
`24, 33 (same); Ex. 1005, ¶51.
`
`c)
`in a case that the information indicates that the SI
`message for
`the other SI
`is provisioned on demand,
`transmitting, to the BS, a PRACH preamble corresponding to
`the SI message based on the configuration information; and
`
`First, the Agiwal Provisionals disclose other SI can be requested on demand.
`
`Ex. 1011, 8, 17; Ex. 1012, 24, 33; Ex. 1005, ¶51. Second, the Agiwal Provisionals
`
`disclose that the UE transmits a PRACH preamble to a BS. Ex. 1011, 13, Fig. 11;
`
`Ex. 1012, 33, Fig. 11; Ex. 1005, ¶51. Third, the Agiwal Provisionals explain that the
`
`PRACH preamble corresponds to the requested SI (i.e., the “SI message”) based on
`
`the information in the essential SI (“configuration information”). Ex. 1011, 17-18,
`
`Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶51.
`
`d)
`receiving, from the BS, the SI message for the other SI
`in response to the PRACH preamble.
`
`The Agiwal Provisionals disclose receiving SI sent in response to the PRACH
`
`preamble. Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶51. Agiwal
`
`is thus prior art with an effective filing date no later than that afforded to its earliest
`
`provisional application, which is February 29, 2016.
`
`B. Deenoo (Ex. 1003)
`U.S. Application Publication No. 2019/0174554 to Deenoo, et al., published
`
`on June 6, 2019. Ex. 1003, Cover. Deenoo is the publication of Application No.
`
` 12
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`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`16/099,390, which is the national stage filing of PCT/US2017/032069 on May 11,
`
`2017. Id. Deenoo claims priority to Provisional Application No. 62/334,704, filed
`
`on May 11, 2016, Provisional Application No. 62/400,810, filed September 28,
`
`2016, Provisional Application No. 62/416,499, filed on November 2, 2016. Id.
`
`Deenoo is prior art under at least 35 U.S.C. §§ 102(a)(2) and 102(d).
`
`Deenoo is directed to systems and methods for distributed control in a wireless
`
`system, including the acquisition of SI in 5G-compliant devices. Deenoo discloses a
`
`wireless transmit/receive unit (WTRU), which is often referred to as a UE in other
`
`sources. Ex. 1003, ¶3. Deenoo also discloses a BS which can be an eNodeB, access
`
`point, or similar structure. Id., ¶26. The WTRUs (yellow) and BSs (blue) are
`
`depicted in Figure 1A below.
`
`
`
`Id., Fig. 1A; Ex. 1005, ¶52.
`
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`The WTRU can be comprised of a processor and memory, i.e., hardware,
`
`firmware, and/or software that operates to carry out the methods and processes
`
`described in Deenoo. Ex. 1003, ¶¶648-649. Figure 1B depicts the hardware
`
`components of a WTRU, including a processor (orange) and memory (purple).
`
`
`
`Id., Fig. 1B; Ex. 1005, ¶53.
`
`Deenoo also describes how SIBs or SIB groups are transmitted from a BS to
`
`WTRU. Ex. 1003, ¶367. The disclosure in Deenoo is broken into multiple steps,
`
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`IPR2022-00468
`U.S. Patent No. 10,512,027
`including multiple messages exchanged between the WTRU and BS (e.g., msg1,
`
`msg2, msg3, and/or msg4).
`
`Step 0: The BS can transmit minimum SI to a WTRU. Id., ¶¶10, 322, 366,
`
`368, 371.
`
`Step 1: A WTRU may transmit to the BS a first message (e.g., “msg1”) which
`
`comprises a preamble and/or is sent on a dedicated time/frequency Physical Random
`
`Access Channel (PRACH) resource. Id., ¶¶10, 367, 389. This preamble/PRACH
`
`resource may indicate a specific SIB or SIB group that is requested from the BS. Id.,
`
`¶367.
`
`Step 2: After receiving a preamble/PRACH resource in msg1, the BS will
`
`transmit a response (msg2) that includes, for example, information about the
`
`identity, timing, and format of the requested SIB group that will be transmitted from
`
`the BS (the SIB group potentially following in a subsequent transmission). Id.,
`
`¶¶369-370, 373, 392. The WTRU uses this information to correctly receive the SIB
`
`group that is transmitted by the BS. Id.
`
`Step 3: Depending on msg2, the WTRU may need to send a third message
`
`(msg3), which can also include another preamble/PRACH resource indicating a
`
`request for SI. Id., ¶¶373, 381-383.
`
`Step 4: In response to msg3, the BS may transmit a fourth message (msg4),
`
`which may similarly include additional SI. Id., ¶¶382, 383.
`
` 15
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`Because Deenoo, like the ’027 Patent, discloses a technique for wireless
`
`network system information (“SI”) transmission between a network system and user
`
`device, Deenoo is in the same field of endeavor as the ’027 Patent. Compare Deenoo
`
`(Ex. 1003), ¶3, with ’027 Patent (Ex. 1001), 1:16-37. Deenoo is also reasonably
`
`pertinent to the problem faced by the inventor of the ’027 Patent. Ex. 1005, ¶54
`
`(noting Deenoo and the ’027 patent seek to improve overhead efficiency).
`
`Accordingly, Deenoo is analogous art to the ’027 Patent. Id.
`
`1.
`
`Deenoo’s Provisional Applications
`
`Deenoo claims priority to Provisional Applications Nos. 62/334,704
`
`(“Deenoo ’704”), 62/400,810 (“Deenoo ’810”), and 62/416,499 (“Deenoo ’499”)
`
`(collectively the “Deenoo Provisionals”). Exs. 1013-1015. As discussed above, a
`
`patent application publication is afforded the effective filing date of its provisional
`
`application if the provisional application supports at least one claim of the
`
`publication.5
`
`The Deenoo Provisionals each describe the same “on-demand acquisition of
`
`SI” as Deenoo and disclose the techniques described in steps 0-4 (above). Ex. 1013,
`
`
`5Petitioner has included citations to relevant disclosures from Deenoo and the
`
`Deenoo Provisionals throughout Grounds II and IV below to demonstrate invalidity
`
`of the ’027 Patent. See cases cited supra note 4.
`
`
`
` 16
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`¶¶2-4, 266-71, 244; Ex. 1014, ¶¶2, 84, 116, 211-18, 234, 238-39; Ex. 1015, ¶¶2-4,
`
`87, 175, 220-27, 243, 247-48; Ex. 1005, ¶56. The Deenoo Provisionals each disclose
`
`using reserved RACH preambles to indicate a specific SIB or group thereof. Ex.
`
`1013, ¶266; Ex. 1014, ¶¶223, 238; Ex. 1015, ¶¶232, 247-48. They each disclose
`
`broadcasting minimum SI like “notification information” to permit the WTRU to
`
`access a system using preamble/PRACH resources. Ex. 1013, ¶231; Ex. 1014, ¶221;
`
`Ex. 1015, ¶230. They also each disclose that SI may be grouped or controlled by
`
`different logical functions, such as “periodicity, latency, feature, etc.” Ex. 1013,
`
`¶233; Ex. 1014, ¶223; Ex. 1015, ¶232. The Deenoo Provisionals each disclose that
`
`the WTRU acquires SIB groups using dedicated resources like time. Ex. 1013,
`
`¶¶241, 248, 255, 284, 296; Ex. 1014, ¶¶231, 238-40, 242; Ex. 1015, ¶¶240, 247-49,
`
`261, 273. The Deenoo Provisionals each disclose implementing techniques on
`
`hardware that includes a processor configured to execute instructions stored to
`
`memory. Ex. 1013, ¶¶256, 449; Ex. 1014, ¶¶26, 30, 375; Ex. 1015, ¶¶29, 33, 426.
`
`Thus, Deenoo qualifies as prior art to the ʼ027 patent because its provisional
`
`applications (Exs. 1013-1015) disclose and enable its invention described in Dr.
`
`Wells’ declaration and shown by the analysis in §IV.B.2, above. Ex. 1005, ¶57.
`
`Citations to Deenoo in §X below are accompanied by citations to corresponding
`
`disclosures in the Deenoo Provisionals.
`
` 17
`
`

`

`2.
`
`IPR2022-00468
`U.S. Patent No. 10,512,027
`The Deenoo Provisionals Support Claim 1 of Deenoo
`a)
`in
`(WTRU)
`transmit/receive unit
`A wireless
`communication with a communication network, the WTRU
`comprising:
`
`The Deenoo Provisionals disclose a WTRU communicating with a BS, which
`
`discloses “communication with a communication network.” Ex. 1014, ¶¶14-17; Ex.
`
`1015, ¶¶17-20; Ex. 1013, ¶¶18-19; Ex. 1005, ¶57.
`
`a memory;
`
`The Deenoo Provisionals disclose the WTRU includes a memory. Ex. 1014,
`
`¶¶25-26, 30, 375; Ex. 1015, ¶¶28-29, 33, 426; Ex. 1013, ¶¶256, 449; Ex. 1005, ¶57.
`
`a processor, the processor configured at least to:
`
`The Deenoo Provisionals disclose the WTRU includes a processor that
`
`enables the WTRU to operate in a wireless environment. Ex. 1014, ¶¶25-26, 30, 375;
`
`Ex. 1015, ¶¶28-29, 33, 426; Ex. 1013, ¶¶256, 449; Ex. 1005, ¶57.
`
`b)
`determine to request one or more system information
`(SI) messages from the communication network; and
`
`The Deenoo Provisionals disclose the WRTU determining to request one or
`
`more system information messages from a BS (communication network). Ex. 1013,
`
`¶¶227-28, 239, 241-45, 248; Ex. 1014, ¶¶214-18, 229, 231-35, 238; Ex. 1015, ¶¶223-
`
`27, 238, 240-44, 247; Ex. 1005, ¶57.
`
` 18
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`c)
`determine if a transmission of the one or more SI
`message from the communication network will utilize at least
`one beamformed communication based on one or more
`communication parameters; and
`
`The Deenoo Provisionals disclose the WRTU determining if one or more SI
`
`message from the communication network will utilize at least one beamformed
`
`communication based on one or more communication parameters. Ex. 1014, ¶¶94,
`
`134, 257, 279; Ex. 1015, ¶¶251-61, 308, 330; Ex. 1013, ¶¶274-84, 331, 353; Ex.
`
`1005, ¶57.
`
`d)
`a transceiver, the transceiver configured at least to:
`receive at least one of the one or more SI messages from the
`communication network via the at least one beamformed
`communication.
`
`The Deenoo Provisionals disclose the WTRU comprising a transceiver
`
`configured to receive SI messages, which may be coupled with a transmit/receive
`
`element, from a BS via beamformed communication. Ex. 1014, ¶¶24-26, 27-29, 94,
`
`134, 257, 279; Ex. 1015, ¶¶27-29, 30-32, 251-61, 308, 330; Ex. 1013, ¶¶28-30, 31-
`
`33, 274-84, 331, 353; Ex. 1005, ¶57. Deenoo is thus prior art with an effective filing
`
`date no later than that afforded to its earliest provisional application, which is May
`
`11, 2016.
`
`C. Kubota (Ex. 1004)
`
`U.S. Application Publication No. 2016/0234736 to Kubota et al. was
`
`published on August 11, 2016. Ex. 1004, Cover. Kubota is the publication of
`
`Application No. 14/803,793, filed on July 20, 2015. Kubota claims priority to
`
` 19
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`Provisional Application No. 62/114,157, filed on February 10, 2015 and Provisional
`
`Application 62/121,326, filed on February 26, 2015. Id. On February 5, 2019, U.S.
`
`Patent No. 10,200,920 issued from Kubota. Ex. 1017, Cover. Kubota is prior art
`
`under at least 35 U.S.C. §§ 102(a)(1)-(2).
`
`Kubota teaches techniques for wireless communication of SI between a BS
`
`(“cell”) and UE, including transmitting on-demand SI. Ex. 1004, Abstract, ¶8. Figure
`
`3B of Kubota (below) depicts the system’s operation with reference to exemplary
`
`Fifth and Sixth Base Stations.
`
`Step 1: The BS sends a service-specific periodic sync signal (yellow). This
`
`signal may indicate that service-specific SI is available and include information
`
`about a schedule for when that SI can be requested or transmitted. Id., ¶¶122-23.
`
`Step 2: The UE sends one or more requests for service-specific SI (green). Id.,
`
`¶¶122-23. Kubota refers to these as “SIB Tx requests.” Id., ¶¶122-23, 259-60. The
`
`BS receives the SIB Tx request according to the schedule provided by the sync signal
`
`in Step 1. Id., ¶260.
`
`Step 3: The timing of the request from Step 2 indicates to the BS that it must
`
`transmit certain service-specific SI back to the UE. Id., ¶260. The BS responds to
`
`the request in Step 2 by sending the service-specific SI (orange) back to the
`
`requesting UE. Id., ¶¶122-23, 260-61.
`
` 20
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`
``
`
`Id., Fig. 3B. Kubota’s teachings can be applied to transmitting any number of SIBs
`
`“individually or in groups.” Id., ¶150 (emphasis added).
`
`Because Kubota, like the ’027 Patent, discloses a technique for wireless
`
`network system information (“SI”) transmission between a network system and user
`
`device, Kubota is in the same field of endeavor as the ’027 Patent. Compare Kubota
`
`(Ex. 1004), Abstract, with ’027 Patent (Ex. 1001), 1:16-37. Kubota is also
`
`reasonably pertinent to the problem faced by the inventor of the ’027 Patent. Ex.
`
`1005, ¶58 (noting Kubota and the ’027 patent seek to improve overhead efficiency).
`
`Accordingly, Kubota is analogous art to the ’027 Patent. Id.
`
`
`
`
`
` 21
`
`

`

`IPR2022-00468
`U.S. Patent No. 10,512,027
`V. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A.
`
`Summary of Grounds
`
`
`
`
`
`Proposed Ground of Unpatentability
`Ground I: Claims 1-8, 10-18, 20-21 are obvious under pre-AIA
`35 U.S.C. § 103 in view of Agiwal
`Ground II: Claims 1-8, 10-18, 20-21 are obvious under pre-AIA
`35 U.S.C. § 103 in view of Deenoo
`Ground III: Claims 3, 4, 11-18, and 20 are obvious under pre-
`AIA 35 U.S.C. § 103 in view of Agiwal and Kubota
`Ground IV: Claims 3-4, 13-14 are obvious under pre-AIA 35
`U.S.C. § 103 in view of Deenoo and Kubota
`
`Exhibits
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1002,
`Ex. 1004
`Ex. 1003,
`Ex. 1004
`
`B. Ground I: Claims 1-8, 10-18, and 20-21 are Obvious in view of
`Agiwal
`1.
`
`for
`
`requesting
`
`system
`
`information,
`
`Claim 1
`a)
`A method
`comprising:
`
`Agiwal teaches a “method for transmitting and rece