`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`Apple Inc.,
`Petitioner
`
`v.
`
`Telefonaktiebolaget LM Ericsson,
`Patent Owner
`___________________
`
`Case IPR2022-00607
`U.S. Patent No. 10,517,133
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`

`

`IPR2022-00607
`U.S. Patent No. 10,517,133
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`
`TABLE OF CONTENTS
`
`C.
`
`2.
`
`INTRODUCTION ........................................................................................... 1
`I.
`CHALLENGED CLAIMS .............................................................................. 2
`II.
`III. GROUND 1: PETITIONER HAS FAILED TO SHOW THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE IN VIEW OF
`THE COMBINATION OF SCHLIWA-BERTLING AND 3GPP ’279. ........ 2
`A. Overview of Schliwa-Bertling and 3GPP ’279. ..................................... 3
`B.
`Petitioner has failed to establish that a POSITA would have been
`motivated to combine Schliwa-Bertling and 3GPP ’279. ...................... 4
`Petitioner has failed to demonstrate that the combination of
`Schliwa-Bertling and 3GPP ’279 renders any Challenged Claim
`obvious. ................................................................................................... 9
`1.
`The combination of Schliwa-Bertling and 3GPP ’279
`does not teach or suggest “receiving a resume message
`from the network node, the message comprising an
`indication to perform a full configuration” recited in
`Claim 1. ....................................................................................... 9
`The combination of Schliwa-Bertling and 3GPP ’279
`does not teach or suggest “applying the full
`configuration, without receiving a reconfiguration
`message” recited in Claim 1. ....................................................14
`The combination of Schliwa-Bertling and 3GPP ’279
`does not render obvious Claim 6. .............................................15
`The combination of Schliwa-Bertling and 3GPP ’279
`does not render obvious Claim 11. ...........................................16
`The combination of Schliwa-Bertling and 3GPP ’279
`does not anticipate or render obvious Claims 2-5, 7-10, or
`12-20. ........................................................................................17
`IV. GROUNDS 2A/2B: PETITIONER HAS FAILED TO SHOW THAT
`THE CHALLENGED CLAIMS ARE UNPATENTABLE IN VIEW
`OF 3GPP ’208 ALONE OR IN COMBINATION WITH LEISHOUT. ......18
`A. Ground 2A: Petitioner has failed to demonstrate that 3GPP ’208
`anticipates or renders obvious Challenged Claims 1-5 of the
`’133 Patent. ...........................................................................................18
`i
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`3.
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`4.
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`5.
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`

`

`1.
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`3GPP ’208 does not teach or suggest “receiving a resume
`message from the network node, the message comprising
`an indication to perform a full configuration” as recited
`in Claim 1. .................................................................................18
`3GPP ’208 does not teach or suggest “applying the full
`configuration, without receiving a reconfiguration
`message” as recited in Claim 1. ................................................21
`3GPP ’208 does not anticipate or render obvious Claims
`2-5. ............................................................................................24
`B. Ground 2B: Petitioner has failed to demonstrate that the
`combination of 3GPP ’208 and Leishout renders Claims 6-20
`obvious. .................................................................................................24
`1.
`The combination does not render Claim 6 obvious. .................24
`2.
`The combination does not render Claim 11 obvious. ...............25
`3.
`The combination does not anticipate or render obvious
`Claims 7-10 or 12-20. ...............................................................27
`CONCLUSION ..............................................................................................27
`
`2.
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`3.
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`ii
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`V.
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`
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`TABLE OF AUTHORITIES
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`IPR2022-00607
`U.S. Patent No. 10,517,133
`
`
` Page(s)
`
`Cases
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 4, 6
`In re NTP,
`654 F.3d 1279 (Fed. Cir. 2011) ...................................................................... 8, 10
`PNC Bank, N.A. v. United Services Automobile Association,
`IPR2022-00050 ......................................................................................... 9, 10, 20
`TQ Delta, LLC v. Cisco Systems, Inc.,
`
`942 F.3d 1352, 1358 (Fed. Cir. 2019) ..................................................... 9, 11, 21
`Statutes
`35 U.S.C. § 314(a) ................................................................................................. 1, 2
`Other Authorities
`37 C.F.R. § 42.65(a) ....................................................................................... 9, 10, 20
`37 C.F.R. § 42.108(c) ............................................................................................... 28
`
`
`
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`
`
`iii
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`

`

`INTRODUCTION
`Apple’s Petition is nothing more than a cut-and-paste of a prior meritless
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`
`I.
`
`petition filed by Samsung challenging the claims of U.S. Patent No. 10,517,133 (“the
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`’133 Patent”). See IPR2021-00643 (filed on March 12, 2021). The ’133 Patent is not
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`currently the subject of any patent infringement claims against Apple in any pending
`
`litigation, so Apple’s Petition is not a means for “providing a quick and cost-
`
`effective alternative[] to litigation,” which is the purpose of inter partes review as
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`outlined in the legislative history. H.R. Rep. No. 112–98, pt. 1, at 40 (2011). The use
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`of inter partes review in this manner, particularly where Apple has failed to show
`
`that it has a reasonable likelihood of prevailing as to any Challenged Claim pursuant
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`to § 314(a), “frustrate[s] the purpose of the section as providing quick and cost-
`
`effective alternatives to litigation” and “divert[s] resources from the research and
`
`development of inventions.” See, e.g., id. at 40 (2011) (Legislative history
`
`establishing inter partes review).1 Here, Apple repurposes the Samsung IPR at little
`
`or no cost to Apple, relying on the same experts retained by Samsung, and presenting
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`the same weak arguments challenging the claims of the ’133 Patent.
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`Nevertheless, Petitioner fails to show that either asserted ground is reasonably
`
`likely to render Claims 1-20 of the ’133 patent unpatentable. In both grounds,
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`
`1 Unless otherwise noted, all emphasis is added by Patent Owner.
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`
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`1
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`Petitioner relies on mostly Ericsson-generated documents, but stretches their
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`teachings to the point of blatant mischaracterization, all with the benefit of hindsight
`
`with the Challenged Claims in mind.
`
`II. CHALLENGED CLAIMS
`Apple challenges Claims 1–20 of the ’133 Patent. Independent Claim 1 is
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`illustrative and is shown below:
`
`1. A method in a wireless device, the method comprising:
`
`sending to a network node a request to resume a connection in a
`communication network;
`
`receiving a resume message from the network node, the message
`comprising an indication to perform a full configuration; and
`
`applying the full configuration, without receiving a reconfiguration
`message.
`
`Ex. 1001, 21:65-22:5.
`
`III. GROUND 1: PETITIONER HAS FAILED TO SHOW THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE IN VIEW OF THE
`COMBINATION OF SCHLIWA-BERTLING AND 3GPP ’279.
`To justify the institution of an inter partes review, a petitioner must establish
`
`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(a). As shown
`
`below, Petitioner has failed to establish that a POSITA would have combined
`
`Schliwa-Bertling and 3GPP ’279 or that the resulting combination would teach or
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`
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`2
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`

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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`suggest each element of any Challenged Claim. Therefore, Petitioner has failed to
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`show that any of the Challenged Claims are unpatentable over the asserted art.
`
`A. Overview of Schliwa-Bertling and 3GPP ’279.
`Schliwa-Bertling is an Ericsson U.S. Patent Application Publication claiming
`
`priority to 2014 (Ex. 1006, Face), and 3GPP ’279 is a 3GPP NR document for
`
`discussion and decision at an October 2017 meeting (Ex. 1007 at 1). Petitioner cites
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`to just a few paragraphs of Schliwa-Bertling’s more than 400 paragraph
`
`specification. E.g., Pet. at 9-11. Of particular relevance, Figure 4(a), annotated
`
`below, illustrates signaling relating to resuming a connection. In Schliwa-Bertling’s
`
`system, an eNB can respond to an RRC Connection Resume Request sent by the UE,
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`with an RRC Connection Resume Pending message sent to the UE. Finalizing the
`
`resume process, the eNB—not the UE—sends the RRC Connection Resume
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`Complete message.
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`3
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`In contrast, 3GPP ’279 discloses a different sequences of messages for
`
`
`
`resuming a connection. Ex. 1007, Figure 3. Figure 3, annotated below and cited by
`
`Petitioner
`
`as
`
`“nearly
`
`identical”
`
`to
`
`Schliwa-Bertling,
`
`includes
`
`an
`
`RRCConnectionResume message sent to the UE, followed by the UE—not the
`
`eNB—sending the RRCConnectionResumeComplete message.
`
`
`
`As shown below, Petitioner ignores these differences and relies solely on
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`unsupported conclusory statements to justify its combination of Schliwa-Bertling
`
`and 3GPP ’279.
`
`B.
`
`Petitioner has failed to establish that a POSITA would have
`been motivated to combine Schliwa-Bertling and 3GPP ’279.
`Petitioner ignores the structural differences between Schliwa-Bertling and
`
`3GPP ’279, mischaracterizes
`
`the references, and
`
`justifies
`
`the references’
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`combination with a series of citations to KSR factors that lack any support in the
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`record. KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Petitioner failed to
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`
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`4
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`U.S. Patent No. 10,517,133
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`articulate any reason, grounded in the record, that a POSITA would have combined
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`these references in the proposed manner.
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`Recognizing that Schliwa-Bertling lacks disclosure of a resume message
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`containing an indication to perform full configuration, Petitioner relies heavily on a
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`single sentence in 3GPP ’279. Specifically, Petitioner asserts that the “dedicated
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`radio resource configuration” in the RRCConnectionResume message would
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`eliminate the need for “a separate RRCConnectionReconfiguration message to
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`update the wireless device’s configuration.” Pet. at 7. 3GPP ’279 does not describe
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`any such elimination, nor does Petitioner quote any passage showing such
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`mitigation. Nor does any record evidence support Petitioner’s conclusion that 3GPP
`
`’279’s RRCConnectionResume message “would greatly
`
`improve network
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`efficiency,” “eliminate
`
`the need
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`for
`
`the wireless device
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`to send an
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`RRCConnectionReconfigurationRequest to start the reconfiguration process,”
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`“decrease[] network load,” or provide “greater performance for not only the network
`
`as a whole, but possibly for individual users.” Pet. at 7.
`
`Petitioner’s entire premise is that 3GPP ’279’s “dedicated radio resource
`
`configuration” was a major improvement to prior art networks. The record shows
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`the contrary. 3GPP ’279 shows that the “dedicated radio resource configuration” was
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`already included in the RRCConnectionResume message from the much earlier LTE
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`standard.
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`Specifically,
`
`Table
`
`2,
`
`annotated
`
`below,
`
`shows
`
`the
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`
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`5
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`“radioResourceConfigDedicated-r13(for all SRBs and DRBs)” in the existing LTE
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`message.
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`
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`If including this configuration in an RRCConnectionResume message solved
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`the problem being addressed by the ’133 Patent—the problem addressed by the
`
`3GPP in adopting Ericsson’s contribution related to the ’133 Patent for the new 5G
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`NR standard—no enhancement would have been needed to the resume process in
`
`5G NR. But enhancement was needed. See ’133 Patent, 13:59-61 (“[T]he resume
`
`procedure is enhanced to support a full configuration.”).
`
`After its initial arguments based on mischaracterizations of 3GPP ’279,
`
`Petitioner resorts to platitudes based on KSR. Pet. at 8 (The combination “entails the
`
`use of known solutions to improve similar systems and methods in the same way,”
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`“would have led to predictable results,” and “achieve[s] the predictable benefits
`
`described in 3GPP ’279.”).
`
`
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`6
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`

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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`Petitioner ends with an assertion that ignores the clear differences between the
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`
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`two references: “[I]n the combination, 3GPP ’279’s features are implemented in
`
`combination with the Schliwa-Bertling system just as they are in 3GPP ’279.” Pet.
`
`at 8. This cannot be true at least because Schliwa-Bertling does not disclose an
`
`RRCConnectionResume message. Instead, for the “resume message” of Claim 1,
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`Petitioner cites to an “RRC Connection Resume Complete” sent by the network node
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`(eNB) to the UE. Figure 4a of Schliwa-Bertling shows this message.
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`Ex. 1006, Figure 4(a). In contrast, the RRCConnectionResumeComplete message in
`
`3GPP ’279 is sent by the UE to the network node (eNB)—the opposite direction of
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`the message in Schliwa-Bertling.
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`
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`
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`7
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`

`

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`U.S. Patent No. 10,517,133
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`Ex. 1007, Figure 3. Petitioner attempts to gloss over this incompatibility by applying
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`the contents of 3GPP ’279’s resume message with Schliwa-Bertling’s resume
`
`complete message. Pet. at 7, 11-12. But Petitioner ignores these differences and
`
`proceeds to combine the references with the hindsight goal of mapping them to the
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`Challenged Claims. In re NTP, 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“Care must
`
`be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide
`
`through the maze of prior art references, combining the right references in the right
`
`way so as to achieve the result of the claims in suit.’”).
`
`For at least these reasons, a POSITA would not have been motivated to
`
`combine Schliwa-Bertling with 3GPP ’279, and Petitioner’s deficient analysis does
`
`not establish a reasonable likelihood that the combination of Schliwa-Bertling and
`
`3GPP ’279 renders any Challenged Claim obvious.
`
`
`
`8
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`

`

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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`Petitioner has failed to demonstrate that the combination of
`Schliwa-Bertling and 3GPP ’279 renders any Challenged
`Claim obvious.
`Petitioner’s analysis rests on hindsight conclusions made without any support
`
`C.
`
`in the record. Petitioner’s declarant, Dr. Akl, parrots the Petition and offers nothing
`
`more, and his opinion is entitled to no weight. 37 C.F.R. § 42.65(a); see, e.g., PNC
`
`Bank, N.A. v. United Services Automobile Association, IPR2022- 00050, Paper
`
`22 at 26-27 (Decision Denying Institution) (PTAB May 11, 2022) (assigning
`
`“little weight” to expert testimony where expert “does not sufficiently explain his
`
`conclusions”) (citing TQ Delta, LLC v. Cisco Systems, Inc., 942 F.3d 1352, 1358
`
`(Fed. Cir. 2019)).
`
`1.
`
`The combination of Schliwa-Bertling and 3GPP ’279
`does not teach or suggest “receiving a resume message
`from the network node, the message comprising an
`indication to perform a full configuration” as recited
`in Claim 1.
`Petitioner failed to show that the combination of Schliwa-Bertling and 3GPP
`
`’279 teaches or suggests “receiving a resume message from the network node, the
`
`message comprising an indication to perform a full configuration” as recited in
`
`Claim 1. Petitioner cites to 3GPP ’279’s disclosure that the “RRC Connection
`
`Resume kind of message can optionally include the dedicated radio resource
`
`configuration.” Pet. at 13. This statement—the only disclosure Petitioner cites in
`
`either Schliwa-Bertling or 3GPP ’279—says nothing about indicating the need for a
`
`
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`9
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`

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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`full configuration. Petitioner must therefore make a number of inferences to try to
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`bridge the gap between 3GPP ’279’s disclosure and the claim language. But
`
`Petitioner’s inferences are conclusory and unsupported by any evidence.
`
`First, Petitioner states that the presence of the dedicated radio resource
`
`configuration in the “RRC Connection Resume kind of message” (Ex. 1007 at 3) “is
`
`an indication to the UE to perform a configuration.” Pet. at 13 (emphasis added).
`
`Conversely, Petitioner asserts that “the absence of the configuration information is
`
`an indication to the UE not to perform a configuration.” Pet. at 13 (emphasis
`
`added). Nothing in the record supports these conclusions. The quoted passage says
`
`nothing about what the dedicated radio resource configuration would indicate—if
`
`anything—to a UE. Nor does the quoted passage disclose what a UE would
`
`understand by not including the dedicated radio resource configuration. Petitioner’s
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`conclusions are pure speculation motivated by hindsight. In re NTP, 654 F.3d 1279,
`
`1299 (Fed. Cir. 2011) (“Care must be taken to avoid hindsight reconstruction by
`
`using ‘the patent in suit as a guide through the maze of prior art references,
`
`combining the right references in the right way so as to achieve the result of the
`
`claims in suit.’”). Petitioner cites to Paragraph 59 of Dr. Akl’s declaration, which
`
`only parrots Petitioner’s conclusion without any additional support or explanation.
`
`The Board should not give any weight to Dr. Akl’s mirrored declaration. 37 C.F.R.
`
`§ 42.65(a); see, e.g., PNC Bank, N.A. v. United Services Automobile Association,
`
`
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`10
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`IPR2022- 00050, Paper 22 at 26-27 (Decision Denying Institution) (PTAB May
`
`11, 2022) (assigning “little weight” to expert testimony where expert “does not
`
`sufficiently explain his conclusions”) (citing TQ Delta, LLC v. Cisco Systems,
`
`Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019)).
`
`Second, Petitioner uses a conclusory obviousness argument in an attempt to
`
`bridge the gap between a “configuration” and the “full configuration” recited in
`
`Claim 1. Petitioner states that “the LTE ‘full configuration’ procedure described in
`
`the ’133 patent ‘includes an initialization of the radio configuration’ of the wireless
`
`device” and concludes—with no support or explanation—that “[i]t would have been
`
`obvious to a POSITA to reinitialize the radio configuration of the wireless device in
`
`response to receiving the ‘dedicated radio resource configuration’ included in the
`
`RRC Connection Resume message.” Pet. at 13-14. Petitioner appears to make a
`
`claim construction argument that a “full configuration” can mean “an initialization
`
`of the radio configuration” without requiring anything more. Pet. at 13. But the
`
`passage Petitioner quotes from the ’133 Patent is merely summarizing a detailed
`
`procedure for a full configuration. See Ex. 1001, 6:51-7:45. The ’133 Patent further
`
`states that “the full configuration option includes an initialization of the radio
`
`configuration,” which does not suggest, let alone mandate, that initialization of the
`
`radio configuration is sufficient for a full configuration. Further, where the full
`
`configuration described in the ’133 Patent sets the configuration for each Signaling
`
`
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`11
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`

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`Radio Bearer (SRB) to a “known state from which the reconfiguration message can
`
`do further configuration” (Ex. 1001, 7:24-27), the dedicated resource configuration
`
`of 3GPP ’279 separately includes the configuration “for all SRBs and [Data Radio
`
`Bearers (DRBs)],” and discloses that this was true in LTE as well.
`
`Ex. 1007, Table 2. Petitioner’s construction that equates “initialization of the radio
`
`configuration” to a “full configuration” ignores the fact that the dedicated radio
`
`resource configuration was already included in the LTE RRCConnectionResume
`
`message. This fact shows that the inventors did not consider a “full configuration”
`
`to be limited to the configuration supplied by the existing resume message because
`
`the inventors explicitly acknowledged that they had to “enhance[]” the “resume
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`procedure” from LTE in the newer NR standard “to provide a full configuration.”
`
`Ex. 1001, 13:59-60.
`
`Petitioner ignores all of these aspects of the ’133 Patent disclosure in an
`
`attempt to rewrite Claim 1 to suit its Petition. Lacking any justification, and based
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`
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`12
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`solely on the hindsight reconstruction of Claim 1, Petitioner’s unsupported
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`arguments and apparent attempt
`
`to construe “initialization of
`
`the radio
`
`configuration” to constitute the claimed “full configuration” should be rejected.
`
`Nevertheless, even if “initialization of the radio configuration” were sufficient
`
`to perform a “full configuration,” nothing in 3GPP ’279 constitutes an indication to
`
`perform an “initialization of the radio configuration.” The quoted passage of 3GPP
`
`’279 merely states that the dedicated radio resource configuration can be included in
`
`a message—it does not describe what that configuration indicates to a UE.
`
`Moreover, even assuming that the UE used the dedicated radio resource
`
`configuration to configure its radio resource configuration, that would not constitute
`
`an “initialization” or a “reinitialization,” which connote setting parameters to an
`
`“initial” value; rather, the UE would simply set the configuration to the values sent
`
`in the message, not initialize or reinitialize them to an initial value. Cf. Ex. 1001,
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`7:24-27 (showing that in LTE’s full configuration, the SRB configuration is
`
`initialized to known default values before later reconfiguration).
`
`
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`13
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`

`

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`2.
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`The combination of Schliwa-Bertling and 3GPP ’279
`does not
`teach or suggest “applying
`the
`full
`configuration, without receiving a reconfiguration
`message” as recited in Claim 1.
`Petitioner fails to show that the combination of Schliwa-Bertling and 3GPP
`
`’279 teaches or suggests “applying the full configuration, without receiving a
`
`reconfiguration message” as recited in Claim 1. Petitioner’s analysis for this Claim
`
`limitation is simply based on hindsight. Petitioner relies on its improper hindsight
`
`conclusions about the dedicated radio resource configuration indicating performance
`
`of a full configuration (discussed above in relation to the “receiving” element) to
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`conclude, with no support, that “it would have been obvious to a POSITA for the
`
`wireless device to apply the configuration received in the RRCConnectionResume
`
`message, because otherwise the eNB sending the configuration to the UE would be
`
`pointless.” Pet. at 15. Petitioner overlooks that Claim 1 requires “applying the full
`
`configuration,” and Petitioner failed to justify its conclusion that the dedicated radio
`
`resource configuration would indicate performing a full configuration as discussed
`
`in the previous section.
`
`Petitioner then concludes—again with no support—that “it would have
`
`obvious [sic] to a POSITA that sending a reconfiguration message after the
`
`RRCConnectionResume message would be both inefficient (due to an extra message
`
`being sent on the network), and pointless (due to the RRCConnectionResume
`
`
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`14
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`IPR2022-00607
`U.S. Patent No. 10,517,133
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`including the same configuration parameters).” Pet. at 15. Petitioner never justifies
`
`its assumption that the RRCConnectionResume message includes “the same
`
`configuration parameters” as a reconfiguration message. Pet. at 15.
`
`3.
`
`The combination of Schliwa-Bertling and 3GPP ’279
`does not render obvious Claim 6.
`Independent Claim 6 recites:
`
`6. A wireless device, comprising a communication interface; and one
`
`or more processing circuits communicatively connected
`
`to
`
`the
`
`communication interface, the one or more processing circuits comprising
`
`at least one processor and memory, the memory containing instructions
`
`that, when executed, cause the at least one processor to:
`
`send to a network node a request to resume a connection in a
`
`communication network;
`
`receive a resume response message from the network node, the message
`
`comprising an indication to perform a full configuration; and
`
`apply the full configuration, without receiving a reconfiguration
`
`message.
`
`The last two elements of Claim 6—receiving a resume response message
`
`comprising an indication to perform a full configuration, and applying the full
`
`configuration without receiving a reconfiguration message—are substantially
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`similar to the claim elements of Claim 1 for which Petitioner failed to meet its burden
`
`as discussed above.
`
`Petitioner does not separately analyze the resume response or full
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`configuration elements of Claim 6. Instead, Petitioner merely refers the Board to its
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`Claim 1 analysis. Pet. at 18-19. Patent Owner showed above for Claim 1 that
`
`Petitioner failed to meet its burden with respect to Claim 1. For the same reasons,
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`Petitioner failed to meet its burden for Claim 6.
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`4.
`
`The combination of Schliwa-Bertling and 3GPP ’279
`does not render obvious Claim 11.
`Independent Claim 11 recites:
`
`11. A network node comprising:
`
`a communication interface; and
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`one or more processing circuits communicatively connected to the
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`communication interface, the one or more processing circuits comprising
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`at least one processors and memory, the memory containing instructions
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`that, when executed, cause the at least one processor to:
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`receive, from a wireless device, a request to resume a connection in a
`
`communication network;
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`send a resume response message to the wireless device, the message
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`comprising an indication to perform a full configuration, without sending
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`a reconfiguration message.
`
`The last element of Claim 11—sending a resume response message
`
`comprising an indication to perform a full configuration, without sending a
`
`reconfiguration message—is substantially similar to the claim elements of Claim 1
`
`for which Petitioner failed to meet its burden as discussed above. Petitioner relies on
`
`its flawed Claim 1 analysis for Claim 11. Pet. at 24. Accordingly, Petitioner failed
`
`to establish a reasonable likelihood that the combination of Schliwa-Bertling and
`
`3GPP ’279 renders Claim 11 invalid.
`
`5.
`
`The combination of Schliwa-Bertling and 3GPP ’279
`does not anticipate or render obvious Claims 2-5, 7-10,
`or 12-20.
`Claims 2-5 depend from Claim 1, Claims 7-10 depend from Claim 6, and
`
`Claims 12-20 depend from Claim 11. Nothing in Petitioner’s analysis of any
`
`dependent claims cures the deficiencies of the combination of Schliwa-Bertling and
`
`3GPP ’279 in relation to the independent claims, nor does Petitioner assert as such.
`
`Accordingly, Petitioner failed to establish a reasonable likelihood that Claims 2-5,
`
`7-10, and 12-20 are unpatentable in view of the combination of Schliwa-Bertling
`
`and 3GPP ’279 at least because of their dependence on Claims 1, 6, and 11,
`
`respectively.
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`IV. GROUNDS 2A/2B: PETITIONER HAS FAILED TO SHOW THAT
`THE CHALLENGED CLAIMS ARE UNPATENTABLE IN VIEW OF
`3GPP ’208 ALONE OR IN COMBINATION WITH LEISHOUT.
`A. Ground 2A: Petitioner has failed to demonstrate that 3GPP
`’208 anticipates or renders obvious Challenged Claims 1-5 of
`the ’133 Patent.
`3GPP ’208 is a summary, by Ericsson, of a discussion regarding two Ericsson
`
`proposals relating to connection re-establishment and resume: R2-1713388 and R2-
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`1713399. Petitioner attempts to extend the statutory bounds of its cited prior art
`
`(3GPP ’208) to include the actual Ericsson discussions underlying that art. But
`
`Petitioner’s attempts to attribute Ericsson’s ideas to discussions held with Intel are a
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`sideshow, unsupported by the record.
`
`1.
`
`3GPP ’208 does not teach or suggest “receiving a
`resume message from the network node, the message
`comprising an
`indication
`to perform a
`full
`configuration” as recited in Claim 1.
`Petitioner mischaracterizes 3GPP ’208 by stating that it “describes that the
`
`resume message includes a ‘full configuration flag’ that indicates to the UE to
`
`perform a ‘full configuration.’” Pet. at 39. Although 3GPP ’208 mentions a “full
`
`configuration flag,” it does not describes that flag as being included in the
`
`RRCConnectionResume message on which Petitioner cites as the alleged “resume
`
`message” recited in Claim 1.
`
`The only disclosure about a “full configuration flag” in 3GPP ’208 merely
`
`discusses what “PDCP version for SRB2/DRB”—LTE PDCP or NR PDCP—should
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`be used for different scenarios. Ex. 1004 at 10. Specifically, the comment suggests
`
`that the LTE PDCP should be used when the “UE receives a full configuration flag
`
`with no radio bearer configuration,” and that the NR PDCP should be used when the
`
`“UE receives a full configuration flag with radio bearer configuration or UE receives
`
`only optionally radio bearer configuration.” Ex. 1004 at 10. Nothing in this
`
`disclosure teaches or suggests that the UE receives a full configuration flag in the
`
`resume message (i.e., the RRCConnectionResume message) as recited in Claim 1.
`
`Petitioner also mischaracterizes 3GPP ’208 by stating that “3GPP ’208
`
`describes aligning the ‘resume message’ with the ‘RRCConnectionReconfiguration
`
`message,’ which enables the eNB to instruct the UE to perform a ‘full configuration’
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`using the resume message.” Pet. at 39. Petitioner appears to cobble together
`
`disclosures from three separate pages of 3GPP ’208 in its argument. Pet. at 39 (citing
`
`Ex. 1004 at 6, 7, 10). But nothing in these disclosures constitutes a disclosure or
`
`suggestion that the RRCConnectionResume message comprises an indication to
`
`perform a full configuration.
`
`First, the top of page 6 of 3GPP ’208 refers to a “full configuration” but relates
`
`to connection re-establishment and not to the resume functionality on which
`
`Petitioner relies. Ex. 1004 at 6. Next, a “full configuration” is mentioned on page 6
`
`of 3GPP ’208 in the context of “Solution 4.” Ex. 1004 at 6. In the first case, the eNB
`
`“does not perform a full configuration.” Ex. 1004 at 6. In the second case, the eNB
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`“will perform RRC Resume with Full configuration over SRB1 with LTE PDCP.”
`
`Ex. 1004 at 6. Notably, neither Petitioner nor its declarant cite to this specific
`
`disclosure, which is not surprising because it does not teach or suggest that the
`
`RRCConnectionResume message—which is sent from the eNB to the UE—includes
`
`an “indication to perform a full configuration” as required by Claim 1. It merely
`
`states that the eNB will perform a full configuration, but does not disclose any
`
`indication of performing a full configuration in an RRCConnectionResume message.
`
`Finally, pages 7 and 10 disclose a “Proposal 2: The resume message to be
`
`aligned with RRCConnectionReconfiguration message to enable configuration of
`
`bearers with NR PDCP.” Ex. 1004 at 7, 10. But this proposal does not suggest a “full
`
`configuration.” Further, in the discussion on page 10, 3GPP ’208 discloses that this
`
`question relates to the fact that “the resume message contains radio bearer
`
`configurations.” Ex. 1004 at 10. Nowhere does 3GPP ’208 teach or suggest that the
`
`resume message contains a full configuration flag. And notably, neither Petitioner
`
`nor its declarant cite to or explain any of the foregoing passages.
`
`Petitioner cites to paragraphs 110-111 of Dr. Akl’s declaration to support its
`
`arguments, but Dr. Akl does nothing more than repeat—verbatim—Petitioner’s
`
`mischaracterizations. Ex. 1003, ¶¶ 110-11. This parroting of attorney argument from
`
`an expert is not entitled to any weight. 37 C.F.R. § 42.65(a); see, e.g., PNC Bank,
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`N.A. v. United Services Automobile Association, IPR2022- 00050, Paper 22 at
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`26-27 (Decision Denying Institution) (PTAB May 11, 2022) (