`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`UNIFIED PATENTS, LLC
`Petitioner,
`
`v.
`
`TOGAIL TECHNOLOGIES, LTD.
`Patent Owner.
`____________
`
`U.S. Patent 10,791,502
`Issue Date: September 29, 2020
`
`Title: ON-DEMAND SYSTEM INFORMATION REQUEST
`PROCEDURE AND ERROR HANDLING
`
`_____________________
`
`Inter Partes Review No.: 2023-00338
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`TABLE OF CONTENTS
`
`
`OVERVIEW ....................................................................................... 1
`I.
`II. GROUNDS FOR STANDING .............................................................. 1
`III. U.S. PATENT 10,791,502 .................................................................... 2
`A.
`Summary ...................................................................................2
`B.
`Prosecution History.....................................................................4
`C. Claim Construction .....................................................................5
`D.
`Priority of the Challenged Claims .................................................6
`E.
`Person of Ordinary Skill in the Art (POSA) ....................................6
`F.
`State of the Art ...........................................................................6
`1.
`3GPP ...............................................................................7
`2. Well Known 3GPP Concepts...............................................8
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE ...................... 15
`A. Ground 1: Claims 1, 4-7, 11, 14-17 Are Obvious Over Lee ............ 15
`1.
`Lee................................................................................. 15
`2.
`Detailed Application to the Challenged Claims .................... 18
`B. Grounds 2 and 3: Claims 1, 4-7, 11, 14-17 Are Obvious Over
`Oppo; and Claim 1 Is Anticipated by Oppo .................................. 49
`1.
`Oppo .............................................................................. 49
`2.
`Detailed Application to the Challenged Claims .................... 53
`THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION UNDER §314 .................................................. 72
`VI. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ............................. 73
`
`V.
`
`
`
`
`
`ii
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1))............................... 73
`B. Related Matters (37 C.F.R. §42.8(b)(2))....................................... 73
`1.
`Judicial Matters ............................................................... 73
`2.
`Administrative Matters: .................................................... 74
`Lead/Back-up Counsel (37 C.F.R. §42.8(b)(3)): ............................ 75
`C.
`D. Notice of Service Information (37 C.F.R. §42.8(b)(4)): .................. 76
`
`
`
`iii
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`TABLE OF AUTHORITIES
`
`Cases
`AC Techs., S.A. v. Amazon.com, Inc., 912 F.3d 1358 (Fed. Cir. 2019) ........... 34, 61
`Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46, 10
`(Jan. 18, 2022) ....................................................................................... 50
`Flex Logix Techs Inc. v Venkat Konda, PGR2019-00042, Paper 35
`(Mar. 16, 2021) ...................................................................................... 16
`Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir.
`2003) ............................................................................................... 34, 61
`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir.
`2020) ............................................................................................. Passim
`M & K Holdings, Inc. v. Samsung Elecs. Co., Ltd., 985 F.3d 1376
`(Fed. Cir. 2021) ..................................................................................... 51
`Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001 (Fed. Cir.
`2009) ............................................................................................... 34, 61
`Venkat Konda v. Flex Logix Techs., Inc., No. 2022-1162, 2022 U.S.
`App. LEXIS 12248 (Fed. Cir. May 6, 2022) .............................................. 16
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).............................. 73
`Statutes
`35 U.S.C. §102 ...................................................................................1, 15-16
`35 U.S.C. §103 ............................................................................................. 1
`
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`
`
`
`iv
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Exhibit #
`
`Petitioner’s Exhibit List
`Description
`
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent 10,791,502 (“the ’502 Patent”)
`Prosecution history of the ’502 Patent (“File History”)
`Declaration of Petitioner’s Expert, Dr. Zygmunt J. Haas
`U.S. Provisional Application 62/334,418 to Lee (“Lee”)
`OPPO, Discussion on SI Request Prohibit Timer, 3GPP TSG-RAN
`WG2#101, R2-1801795, Athens, Greece, (Feb. 26 – Mar. 2, 2018),
`(“Oppo”)
`U.S. Publication No. 2017/0332372 (“the ’372 Pub.”)
`U.S. Patent 9,832,686 to Belghoul
`Declaration of Friedhelm Rodermund
`3GPP Partners, available at https://www.3gpp.org/about-us/partners
`
`3GPP Working Procedures, 20 October 2016
`Introducing 3GPP, available at https://www.3gpp.org/about-
`us/introducing-3gpp
`
`3GPP Membership database, identifying individual members from “all
`partners”, report available at
`https://webapp.etsi.org/3gppmembership/Results.asp?Member=ALL_P
`ARTNERS&SortMember=Name&DirMember=ASC&SortPartner=Na
`me&DirPartner=ASC&SortMarket=Name&DirMarket=ASC&SortOb
`server=Name&DirObserver=ASC&SortGuest=Name&DirGuest=ASC
`&Name=&search=Search
`
`3GPP RAN2 – Radio Layer 2 and Radio Layer 3 RRC, available at
`https://www.3gpp.org/3gpp-groups/radio-access-networks-ran/ran-
`wg2
`3GPP Specifications for Working Group RAN2, available at
`https://www.3gpp.org/dynareport?code=TSG-WG--R2.htm
`
`
`
`
`
`v
`
`
`
`Exhibit #
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Description
`
`Ericsson Post, LTE-NR tight-interworking and the first steps to 5G
`(Nov. 21, 2017), available at
`https://www.ericsson.com/en/blog/2017/11/lte-nr-tight-interworking-
`and-the-first-steps-to-5g
`
`3GPP 4th Generation (LTE), available at
`https://www.etsi.org/technologies/mobile/4G
`
`3GPP 5th Generation, available at
`https://www.etsi.org/technologies/mobile/5g
`
`J. Baron, Unpacking 3GPP standards, March 24, 2015, available at
`https://wwws.law.northwestern.edu/research-
`faculty/clbe/innovationeconomics/documents/baron_gupta_unpacking
`_3gpp_standards.pdf
`5G NR RRC Procedure and Its States (Nov. 19, 2017), available at
`https://www.techplayon.com/5g-nr-rrc-procedure-states/
`
`3GPP TR 21.905 v15.0.0 (2018-03), Vocabulary for 3GPP
`Specifications (Release 15), available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=558 (“Versions” tab, link “15.0.0” uploaded
`April 1, 2018)
`
`3GPP TS 23.501 v15.1.0 (2018-03), System Architecture for the 5G
`System; Stage 2 (Release 15), available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=3144 (“Versions” tab, link “15.1.0”
`uploaded March 28, 2018)
`
`
`
`
`
`
`vi
`
`
`
`Exhibit #
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Description
`
`3GPP TS 36.300 v15.0.0 (2017-12), Evolved Universal Terrestrial
`Radio Access (E-UTRA) and Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN); Overall description; Stage 2 (Release
`15), available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=2430 (“Versions” tab, link “15.0.0”
`uploaded January 7, 2018)
`
`3GPP TS 36.304 v14.5.0 (2017-12), Evolved Universal Terrestrial
`Radio Access (E-UTRA); User Equipment (UE) procedures in idle
`mode, available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=2432 (“Versions” tab, link “14.5.0”
`uploaded January 7, 2018)
`
`3GPP TS 36.331 v14.5.1 (2018-01), Evolved Universal Terrestrial
`Radio Access (E-UTRA); Radio Resource Control (RRC) Protocol
`Specification (Release 14), (“4G RRC Specification”), available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=2440 (“Versions” tab, link “14.5.1”
`uploaded January 9, 2018)
`
`3GPP TS 38.300 v15.0.0 (2017-12), NR; NR and NG-RAN Overall
`description; Stage 2 (Release 15), available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=3191 (“Versions” tab, link “15.0.0”
`uploaded January 4, 2018)
`
`3GPP TS 38.331 v15.0.0 (2017-12), NR Radio Resource Control
`(RRC) protocol specification (Release 15), (“5G RRC Specification”),
`available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=3197 (“Versions” tab, link “15.0.0”
`uploaded January 4, 2018)
`
`
`
`
`
`
`vii
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`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Description
`
`3GPP TS 38.401 v15.0.0 (2017-12), NG-RAN; Architecture
`description,” available at
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDe
`tails.aspx?specificationId=3219 (“Versions” tab, link “15.0.0”
`uploaded January 19, 2018)
`
`3GPP Meetings for Group RAN2
`
`https://www.3gpp.org/dynareport?code=Meetings-R2.htm#R2-101
`
`3GPP FTP page for the 101st meeting of RAN2 WG, held Feb. 26-
`2018 to March 2, 2018, available at
`
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/
`3GPP RAN2#101 Meeting Information page, available at
`
`https://portal.3gpp.org/Meetings.aspx#/meeting?MtgId=18770
`3GPP FTP page publishing each technical contribution associated with
`the RAN2#101 meeting of RAN2 WG, held Feb. 26-2018 to March 2,
`2018, available at
`
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Docs
`RAN2#101 Documents Index - 3GPP index of the technical
`contributions associated with the RAN2#101 meeting of RAN2 WG
`(last modified March 2, 2018), available at
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Tdoclis
`ts (uploaded March 2, 2018).
`Filtered RAN2#101 Documents Index – Filtered version of 3GPP index
`of the technical contributions associated with the RAN2#101 meeting
`of RAN2 WG (last modified March 2, 2018), available at
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Tdoclis
`ts (uploaded March 2, 2018) (filtered to documents indexed to “On
`demand system information”).
`RAN2#101 Agenda - 3GPP TSG-RAN WG2 Meeting #101 Agenda
`(R2-1801700), available at
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Docs
`(link “R2-1801700.zip”)
`
`viii
`
`Exhibit #
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`
`
`
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Description
`
`RAN2#101 Report - Report of 3GPP TSG RAN WG2 meeting #101
`Athens, Greece, 26 February - 2 March, 2018, available at
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Report
`
`RAN2#101 Report TDoc_List - TDoc-list attached to RAN2#101
`Report, available at
`https://www.3gpp.org/ftp/TSG_RAN/WG2_RL2/TSGR2_101/Report
`
`Docket excerpts showing dismissals in Togail Technologies Ltd.
`litigations against Motorola Mobility LLC, N.D. Ill. Case No. 1:22-cv-
`02176; Google LLC, W.D. Tex. Case No. 6:22-cv-00327; and
`Samsung Electronics Co., Ltd., W.D. Tex. Case No. 6:22-cv-00328.
`Docket for Togail Technologies Ltd. v. Apple Inc., W.D. Tex. Case No.
`6:22-cv-00326 (“Apple case”).
`Scheduling Order, Dkt. 33 in Apple case
`First Amended Complaint in Apple case
`Median Time to Trial Statistics - Judicial Caseload Profile –Western
`District of Texas, Northern District of California, and Eastern District
`of Texas excerpted from:
`https://www.uscourts.gov/sites/default/files/fcms_na_distprofile0630.2
`022_0.pdf
`
`Decl. of K. Jakel
`ETSI 3GPP page, available at https://www.etsi.org/committee/3gpp
`Complaint in Togail Technologies Ltd. v. TCL Technology Group,
`Corp. et al., ED. Tex. Case No. 2:23-cv-00039 (“TCL case”).
`
`ix
`
`Exhibit #
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`1040
`1041
`
`1042
`1043
`1044
`
`
`
`
`
`
`
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`I.
`
`OVERVIEW
`Unified Patents, LLC (“Unified” or “Petitioner”) requests inter partes review
`
`of Claims 1, 4-7, 11, 14-17 (the “Challenged Claims”) of U.S. Patent 10,791,502
`
`(“the ’502 Patent, Ex-1001) under AIA 35 U.S.C. §103 and §102 based on the
`
`following grounds:1
`
`Ground
`
`Claims
`
`Challenge
`
`1
`2
`3
`
`
`
`1, 4-7, 11, 14-17
`1, 4-7, 11, 14-17
`1
`
`Obvious over Lee (Ex-1004)
`Obvious over Oppo (Ex-1005)
`Anticipated by Oppo
`
`On information and belief, the ’502 Patent is owned by Togail Technologies,
`
`Ltd. (“Togail” or “Patent Owner”).
`
`
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that the Challenged Patent is available for inter partes
`
`review and that Petitioner is not barred or estopped from requesting this review. 37
`
`C.F.R. §42.104(a). This Petition is filed under 37 C.F.R. §42.106(a).
`
`
`1 Lee and Oppo each qualify as prior art to the ’502 Patent under at least AIA 35
`
`U.S.C. §102(a). Neither was cited nor discussed during examination. Ex-1001 (56);
`
`Ex-1002 (generally).
`
`
`
`
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`1
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`III. U.S. PATENT 10,791,502
`Summary
`A.
`The ’502 Patent discloses an “on-demand system information request
`
`procedure and the corresponding error handling procedure for the next generation
`
`wireless communication networks.” Ex-1001 1:40-43. While the ’502 Patent
`
`acknowledges that the pre-existing 5G new radio (NR) network had “on-demand
`
`system information (SI) request” procedures, the applicant believed that the
`
`procedures lacked “an efficient mechanism for error handling associated with the
`
`on-demand SI request procedure.” Ex-1001 1:23-36.
`
`The purportedly inventive error handling procedure involved storing failure
`
`information for an SI request: “The error handling procedure includes storing SI
`
`request failure information.” Ex-1001 Abstract; see also Ex-1001 1:40-62. 2 This
`
`purported invention, however, is not recited in the Challenged Claims, which are
`
`instead directed to an optional “prohibit timer” that prevents the user equipment
`
`(“UE”) from resending an SI request for a period of time:
`
`In one implementation, the error handling procedure may further
`include at least one of following: a prohibit timer activation, a cell
`re-selection procedure, and a re-establishment procedure.
`
`Ex-1001 15:51-62, see also 8:12-22 (similar).
`
`
`2 Unless otherwise stated, Petitioner added the bold font for emphasis.
`
`
`
`
`
`2
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`The specification states that the prohibit timer can be used in an “unconnected
`
`state” (Ex-1001 6:47-49, 7:50-60) and a “connected state” (id., 7:61-62, 8:12-22).
`
`While the specification does not explain what these states are, a POSA would have
`
`known them as the particular states of radio interface connectivity specified by the
`
`3rd Generation Partnership Project (3GPP) standards body, as discussed below. Ex-
`
`1003 ¶37; Infra §III.F. Generally, UEs in an unconnected state had more limited
`
`radio resources established for communication, whereas the connected state
`
`established specific bi-directional, point-to-point bearer channels between the UE
`
`and the network. Id.
`
`Although
`
`the specification references a few differences in optional
`
`implementation details for the prohibit timer in the two states, the differences are not
`
`described as being particularly important. Compare Ex-1001 6:47-49, 7:7-26, 7:50-
`
`60 (prohibit timer in the unconnected state) with id. 7:61-62, 8:12-22 (prohibit timer
`
`in the connected state). The prohibit timer is not shown in the ’502 Patent’s figures,
`
`which are instead directed to the storing of failure information:
`
`
`
`
`
`3
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`
`
`Ex-1001 Fig. 6.
`
`Prosecution History
`B.
`The ’502 Patent issued from U.S. Application 16/372,389, filed on April 1,
`
`2019, and claims priority to Provisional Application 62/651,312, filed on April 2,
`
`2018. Ex-1001 Cover, 1:8-14. The Examiner allowed the application after the
`
`applicant amended the claims to replace the failure storage feature with the prohibit
`
`timer:
`
`
`
`
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`4
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Ex-1002 244.
`
`The applicant argued that the art of record did not disclose a prohibit timer or
`
`the connected state (Ex-1002 251), and the Examiner allowed the claims (Ex-1002
`
`
`
`221).
`
`As explained below, the references of the Grounds of this Petition––which
`
`were not cited or relied upon during prosecution of the ’502 Patent––disclosed the
`
`limitations allegedly missing from the art.
`
`C. Claim Construction
`Each claim term in the Challenged Claims should be given its plain and
`
`ordinary meaning. No specific construction of any claim term is required, because
`
`the prior art herein meets each of the claim terms under any reasonable construction.
`
`
`
`
`
`5
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`Priority of the Challenged Claims
`D.
`This Petition relies on prior art as of the earliest claimed priority date of the
`
`’502 Patent (April 2, 2018), hereafter “Priority Date.” Ex-1001 Cover; §III.B.
`
`Person of Ordinary Skill in the Art (POSA)
`E.
`A POSA in April 2018 would have had at least (1) a Bachelor’s degree in
`
`electrical engineering or a similar degree and (2) at least two years of professional
`
`experience with cellular wireless communications, including the 3GPP radio
`
`interface architecture and protocols for 4th and 5th Generation cellular wireless
`
`systems. Ex-1003 ¶48. More experience can supplement for less education and vice
`
`versa. Id. The level of skill in the art is further demonstrated by the references cited
`
`herein, including the Grounds’ references and the background references discussed
`
`in the State of the Art section below. While this petition or accompanying expert
`
`testimony may occasionally use the present tense, the analysis is from the
`
`perspective of a POSA as of the Priority Date.
`
`State of the Art
`F.
`This section describes and informs the general knowledge, skill, common
`
`sense, and creativity possessed by a POSA as of the Priority Date. Ex-1003 ¶¶50-
`
`67.
`
`
`
`
`
`6
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`3GPP
`1.
`A POSA was well aware of standards development of cellular technology by
`
`the 3rd Generation Partnership Project (3GPP), including 3GPP’s Technical
`
`Specifications (TS’s, e.g., TS-38.331 (Ex-1026)) and technical contributions (e.g.,
`
`Oppo (Ex-1005)). Ex-1003 ¶51; Ex-1009. 3GPP is responsible for the 4th
`
`Generation (4G) (e.g., Evolved-Universal Terrestrial Radio Access (E-UTRA)/Long
`
`Term Evolution (LTE)) and 5th Generation (5G) (e.g., the New Radio (NR))
`
`standards. Ex-1015; Ex-1017; Ex-1011 (e.g., “With LTE and 5G work, 3GPP has
`
`become the focal point for the vast majority of mobile systems beyond 3G.”); Ex-
`
`1043 (3GPP coordinates “some 140 meetings per year handling 100,000
`
`contribution documents.”); Ex-1012 (over 800 individual members, including the
`
`likes of Apple, Samsung, Ericsson, Nokia). Ex-1003 ¶¶51-55.
`
`A POSA was well aware that 3GPP develops its Technical Specifications (TS)
`
`in working groups (WG) organized by subject matter, in which delegates from
`
`industry members are tasked with preparing and considering proposals for the next
`
`version of a TS, including technological proposals for the information, discussion
`
`and approval of the WG. Ex-1010; Baron (Ex-1018) 014; Ex-1003 ¶53.
`
`The general knowledge of a POSA included the 4G and 5G radio access
`
`technologies in 3GPP technical specifications. See, e.g., Ex-1020 to Ex-1027; Ex-
`
`1003 ¶55. Of particular importance here were the specifications directed to Radio
`
`
`
`
`
`7
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`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`Resource Control (RRC) (Ex-1024, Ex-1026) in the context of other RAN
`
`specifications (e.g., Ex-1022, Ex-1025, Ex-1023). Ex-1003 ¶55.
`
`The technical specifications were known and publicly accessible. Ex-1008
`
`¶¶21, 58-61. 3GPP maintained a database accessible via its 3GPP portal website,
`
`where current and historical versions of the 3GPP technical specifications were
`
`organized and available for download by anyone with access to the Internet.
`
`Rodermund
`
`Decl.
`
`(Ex-1008)
`
`¶¶36,
`
`58-61
`
`(explaining
`
`https://portal.3gpp.org/Specifications.aspx). For example, Ex-1024 to 1026 were
`
`publicly available on the 3GPP portal just before the Priority Date (Ex-1024 by
`
`January 9, 2018; Ex-1025 and 1026 by January 4, 2018). Ex-1008 ¶¶21, 58-61.
`
`2. Well Known 3GPP Concepts
`Radio Access Network
`a.
`It was well known to a POSA that user equipment (UE) (e.g., a mobile phone)
`
`communicated with the network via the Radio Access Network (RAN), specifically
`
`with base stations (BS) of the RAN. Ex-1003 ¶56.
`
`For example, the architecture of the 4G RAN (also called E-UTRAN or LTE)
`
`was well known to a POSA:
`
`
`
`
`
`8
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`
`
`Ex-1022 Fig. 4-1, 27. A 4G base station is referred to as an “E-UTRAN NodeB” or
`
`simply “eNB.” Ex-1022 23, 27; Ex-1003 ¶57.
`
`The 5G RAN architecture was also well known, including that it was specified
`
`to use both New Radio (NR), i.e., 5G, and E-UTRA, i.e., 4G, technology:
`
`
`
`
`
`9
`
`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`
`Ex-1025 Fig. 4.1-1, 10; Ex-1003 ¶58. In the 5G RAN, a “gNB” base station
`
`provided a UE with 5G wireless connectivity, and an “ng-eNB” base station
`
`provided the UE with 4G wireless connectivity, to the 5G core network (“5GC”).
`
`Ex-1003 ¶59; Ex-1025 9-10, 16. Thus, it was well known to a POSA that some
`
`aspects of 4G would continue to be relied upon in 5G. Id. Id.
`
`b. Radio Resource Control (RRC)
`It was well known to a POSA that the UE-to-RAN radio interface was
`
`governed by 3GPP’s Radio Resource Control (RRC) protocols. Ex-1003 ¶60; Ex-
`
`1024; Ex-1026 §§1, 4.1; Ex-1015 (“RRC refers to the signaling language spoken
`
`and associated behaviors undertaken between the network and a mobile device.”).
`
`
`
`
`
`10
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`RRC STATES – IDLE, INACTIVE, CONNECTED
`c.
`It was well known to a POSA that 3GPP specified an RRC state machine for
`
`UEs that depended on the UE’s state of radio interface connectivity with the RAN.
`
`Ex-1003 ¶61; Ex-1024 30-31; Ex-1026 12-14; Ex-1019. For example, a UE
`
`operating 4G (E-UTRA) was either in an “RRC_ IDLE” or “RRC_CONNECTED”
`
`state, depending on whether an “RRC connection” with the RAN was established:
`
`
`Ex-1024 31 Fig. 4.2.1-1 (reproduced in part). Ex-1003 ¶61.
`
`In RRC_IDLE, the UE had limited radio resources established for
`
`communicating with
`
`the RAN.
`
` Ex-1003 ¶62; Ex-1024 30.
`
` In
`
`the
`
`RRC_CONNECTED state, the RRC connection supported bidirectional, point-to-
`
`point communication between the UE and RAN. Ex-1003 ¶62; Ex-1024 30-31.
`
`5G added a third state, RRC_INACTIVE:
`
`
`
`
`
`11
`
`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`
`
`Ex-1026 Fig. 4.2.2-1, 13. The RRC_IDLE and RRC_CONNECTED states are
`
`similar to 4G. Ex-1003 ¶63; Ex-1026 12-13.
`
`d. RRC’s System Information Acquisition
`It was well known to a POSA that 3GPP UEs acquired specific system
`
`information (“SI”) necessary for connectivity. Ex-1024 §5.2.2 (“System
`
`Information Acquisition”); Ex-1026 16-21, §5.2.2; Ex-1003 ¶64.
`
`
`
`
`
`12
`
`
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`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`
`
`
`Ex-1024 41 (Fig. 5.2.2.1-1); see also Ex-1026 17, Fig. 5.2.2.1-1. As part of SI
`
`acquisition, the UE monitored SI messages broadcast from the network. Id. For
`
`example, in RRC_CONNECTED, the UE “shall ensure having a valid version of (at
`
`least) the MasterInformationBlock, SystemInformationBlockType1 as well as
`
`SystemInformationBlockTypeX (depending on support of mobility towards the
`
`concerned RATs).” Ex-1026 17. 4G defined some 22 different SIBs,
`
`SystemInformationBlockType1 to SystemInformationBlockType22-NB. Ex-1024 46-
`
`56, 261-262, 321-355; Ex-1026 16, §5.2.1, 64-65 (SIB1); Ex-1025 31-32.
`
`“On-demand” System Information
`e.
`It was well known to a POSA that the SI acquisition procedures of 4G were
`
`being augmented in 5G with an “on-demand” option, in which the UE sent a “system
`
`information request” to ask the network for SI when needed. Ex-1003 ¶65; Ex-1001
`
`
`
`
`
`13
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`Abstract; Ex-1026 17, 20; Ex-1025 31-32. The new SI requests were reflected in
`
`3GPP specifications before the Priority Date, e.g.:
`
`
`
`
`
`TS 38.331 (Ex-1026) 17, Fig. 5.2.2.1-1 (annotated).
`
`TS 38.300 (Ex-1025) Fig. 7.3-1, 31-32 (annotated). Ex-1003 ¶65.
`
`
`
`
`
`14
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`The 5G RRC Specification included a section titled “Request for on demand
`
`system information,” detailing how SI would be “provided upon UE request.” Ex-
`
`1026 20. The on-demand SI procedures applied to all RRC states. Ex-1025 32.
`
`Further details were reflected in publicly available technical contributions, such as
`
`Oppo (Ex-1005) of Grounds 2 and 3, in connection with 3GPP work leading up to
`
`the Priority Date. Ex-1005; Ex-1013; Ex-1014; Ex-1029; Ex-1032; Ex-1033; Ex-
`
`1003 ¶67; see also Rodermund Decl. (Ex-1008) ¶¶20, 44-57. Thus, on-demand SI
`
`acquisition was well known to a POSA due to 3GPP standardization. Ex-1025; Ex-
`
`1026; Ex-1033; Ex-1003 ¶67.
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: Claims 1, 4-7, 11, 14-17 Are Obvious Over Lee
`Lee
`1.
`Lee Is Pertinent, Analogous Prior Art
`a.
`U.S. provisional application 62/334,418 to Lee (“Lee”) was filed on May 10,
`
`2016, describing an “On-Demand Delivery of System Information with RAN [Radio
`
`Access Network] Based Polling.” Ex-1004 001-002. 3 Lee is prior art under AIA 35
`
`
`3 Citations herein to Lee begin with the three digit pagination of Petitioner’s exhibit
`
`label, followed by Lee’s specific identifiers (e.g. section or paragraph numbers), if
`
`present.
`
`
`
`
`
`15
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`U.S.C. §102(a)(1) as of the publication on November 16, 2017 of U.S. patent
`
`application publication 2017/0332372 (“the ’372 Pub.”), which claimed priority to
`
`Lee and incorporated it by reference in its entirety. Ex-1006 [0001]; MPEP §901.02
`
`(Subject matter ... available to the public under 37 C.F.R. 1.14 may be used as prior
`
`art ... under ... 35 U.S.C. 102(a)(1) as of the date the subject matter became publicly
`
`available.”); 37 C.F.R. §1.14(a)(1)(iv); Venkat Konda v. Flex Logix Techs., Inc., No.
`
`2022-1162, 2022 U.S. App. LEXIS 12248, at *9 (Fed. Cir. May 6, 2022) (affirming
`
`Board and holding provisional application became printed publication reference as
`
`of date of publication of incorporating PCT); Flex Logix Techs Inc. v Venkat Konda,
`
`PGR2019-00042, Paper 35 (Final Written Decision), (Mar. 16, 2021), at 17-18, 18
`
`n.7, 29. Here, because the entirety of the Lee provisional became accessible to any
`
`interested member of the public on November 16, 2017, Lee became a printed
`
`publication as of that date. Id.; 37 CFR §1.14(a)(1)(iv).
`
`Lee is analogous art to the ’502 Patent. Ex-1003 ¶69. For example, the field
`
`of endeavor of the ’502 Patent “generally relates to wireless communication, and
`
`more particularly, to the on-demand system information (SI) request procedure for
`
`the next generation wireless communication networks.” Ex-1001 1:17-20. Lee is in
`
`the same field of endeavor, “on-demand delivery of system information” (Ex-1004
`
`013), for not only 4G radio access technology (i.e., “LTE”, “eNB”), but also
`
`subsequent generations, i.e., 5G radio access technology (RAT): “In the inventions,
`
`
`
`
`
`16
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`RAN is LTE base station i.e. eNB or replaced by a New RAT.” Ex-1004 046; Ex-
`
`1003 ¶69. Lee is also reasonably pertinent to at least one problem addressed by the
`
`’502 Patent, namely “that when UE frequently requests system information, uplink
`
`is congested.” Ex-1004 045; Ex-1003 ¶69. Indeed, as discussed below, Lee
`
`described the same solution––a prohibit timer. Ex-1003 ¶69.
`
`b. Overview of Lee
`Lee taught on-demand SI acquisition improvements to 3GPP’s Radio
`
`Resource Control (RRC) protocols. Ex-1003 ¶70. As background on “Prior Art,”
`
`Lee reproduced extensive material from TS 36.331, the 4G RRC Protocol
`
`Specification. Compare Ex-1004 014-45 with Ex-1024 35-84.
`
`Lee taught using a prohibit timer as part of an on-demand SI procedure:
`
`Prohibit Timer
`
`Ex-1004 049 (annotated), Title (“On-Demand Delivery of System Information”).
`
`Lee’s prohibit timer limited the UE’s ability to send repeated on-demand SI
`
`
`
`requests:
`
`
`
`
`
`17
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`SI request when UE detects that any essential (i.e. required) SIB
`[System Information Block] is missing at a cell
`
`If a cell does not broadcast essential SIBs which UE needs to acquire
`at a cell, the SI request from a UE may alternatively indicate to RAN
`that essential SIBs are missing...
`
`After sending the SI request at a cell, UE starts a timer. If UE does
`not receive the essential SIBs at the cell until the timer expires, UE
`considers the cell as barred, or UE re-sends the SI request to RAN at
`the cell after the timer expires.
`
`Ex-1004 049. The timer prevented uplink congestion by prohibiting frequent UE SI
`
`requests. Ex-1004 045.
`
`Because a POSA would have understood Lee’s invention was disclosed with
`
`reference to the 3GPP 4G and 5G standards (Ex-1004 e.g. 014-45, 051-60, 046 “In
`
`the inventions, RAN is LTE base station i.e. eNB or replaced by a New RAT.”), a
`
`POSA would have understood the terms, phrases and natural consequences of Lee’s
`
`disclosure in the context of those 3GPP standards, as detailed below. Ex-1003 ¶70.
`
`2.
`
`Detailed Application to the Challenged Claims
`Claim 1
`a.
`[1Pre] A method of an on-demand system information (SI) request procedure
`performed by a user equipment (UE), the method comprising:
`To the extent limiting, Lee disclosed or at least rendered obvious the preamble,
`
`[Pre], as explained below. Ex-1003 ¶¶73-76.
`
`
`
`
`
`18
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`First, Lee taught a method of an on-demand system information (SI) request
`
`procedure. For example, Lee taught that a UE may request SI information if the
`
`“UE detects that any essential (i.e., required) SIB [System Information Block] is
`
`missing at a cell,” explaining:
`
`If a cell does not broadcast essential SIBs which UE needs to acquire
`at a cell, the SI request from a UE may alternatively indicate to RAN
`[i.e., Radio Access Network] that essential SIBs are missing. Upon
`receiving the SI request, RAN sends the essential SIBs that are not
`broadcast to the UE.
`
`Ex-1004 049. Lee illustrated the SI request procedure:
`
`
`
`Ex-1004 049.
`
`Lee’s procedure was on-demand because the UE was permitted to ask the
`
`network for particular SI, when needed. Ex-1004 045-046, 049-050; Ex-1003 ¶75.
`
`For example, Lee disclosed that a “UE may request system information at a cell.
`
`Then, when the network receives this request, the network sends system information
`
`
`
`
`
`19
`
`
`
`IPR2023-00338, Petition
`U.S. Patent 10,791,502
`to the UE.” Ex-1004 045. Indeed, Lee was expressly directed to “On-Demand
`
`Delivery of System Information.” Ex-1004 Title, see also 014, 045-046, 049-059;
`
`Ex-1003 ¶75. In fact, by the Priority Date, a POSA would have recognized that
`
`Lee’s disclosure was directed to “on demand system information acquisition”––a
`
`3GPP concept known from development of the 5G standard. Ex-1003 ¶75;
`
`§III.F.2.d-e, supra (discussing TS 38.331 (Ex-1026) 20 (“§5.2.2.3.3 Request for on
`
`demand system information”), TS 38.300 (Ex-1025) 31-32 (discussing on-demand
`
`SI request procedures for 5G)); cf. Ex-1001 1:23-34 (admi
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