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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TOGAIL TECHNOLOGIES LTD.,
`Patent Owner.
`———————
`
`IPR2023-00645
`U.S. Patent No. 10,743,238
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`
`
`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION .........................................................................................10
`
`GROUNDS FOR STANDING ......................................................................10
`
`III. NOTE .............................................................................................................11
`
`IV. TECHNOLOGY BACKGROUND ...............................................................11
`
`A.
`
`B.
`
`C.
`
`Remaining Minimum System Information (RMSI) ........................... 11
`
`Frequency Bandwidth Parts (BWPs) ................................................. 13
`
`System Information (SI) Updates ....................................................... 15
`
`V.
`
`BACKGROUND OF THE ’238 PATENT ...................................................16
`
`VI. PROSECUTION HISTORY .........................................................................18
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................19
`
`VIII. CLAIM CONSTRUCTION ..........................................................................20
`
`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................22
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....22
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 22
`
`Statutory Grounds for Challenges ...................................................... 22
`
`Ground 1: Claims 1-2, 4-5, 11-12, and 14-15 are obvious under 35
`U.S.C. § 103 over ITRI in view of Liao and Jeon ............................. 24
`
`1.
`
`2.
`
`Summary of ITRI ..................................................................... 24
`
`Summary of Jeon ..................................................................... 26
`
`2
`
`
`
`
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Reasons to Combine ITRI and Jeon ........................................ 29
`
`Summary of Liao ..................................................................... 38
`
`Reasons to Combine ITRI and Jeon with Liao ........................ 39
`
`Claim 1 ..................................................................................... 44
`
`Claim 2 ..................................................................................... 58
`
`Claim 4 ..................................................................................... 61
`
`Claim 5 ..................................................................................... 62
`
`10. Claim 11 ................................................................................... 63
`
`11. Claim 12 ................................................................................... 69
`
`12. Claim 14 ................................................................................... 69
`
`13. Claim 15 ................................................................................... 69
`
`D. Ground 2: Claims 3 and 13 are obvious under 35 U.S.C. § 103
`over ITRI in view of Liao, Jeon, and Huawei .................................... 69
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Huawei ................................................................ 69
`
`Reasons to Combine ITRI, Liao, and Jeon with Huawei ........ 71
`
`Claim 3 ..................................................................................... 73
`
`Claim 13 ................................................................................... 76
`
`XI. PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ..........76
`
`A.
`
`The Fintiv Factors Favor Institution Under § 314 ............................. 76
`
`1.
`
`2.
`
`No evidence regarding a stay ................................................... 76
`
`Parallel proceeding trial date ................................................... 77
`
`3
`
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`3.
`
`4.
`
`5.
`
`6.
`
`Investment in the parallel proceeding ...................................... 78
`
`Overlapping issues with the parallel proceeding ..................... 78
`
`Petitioner is a defendant ........................................................... 79
`
`Other circumstances ................................................................. 79
`
`The Fintiv Framework Should Be Overturned................................... 79
`
`The Advanced Bionics Test Favors Institution Under § 325(d) ......... 80
`
`B.
`
`C.
`
`XII. CONCLUSION ..............................................................................................81
`
`XIII. MANDATORY NOTICES ...........................................................................82
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ......................................................................... 82
`
`Related Matters ................................................................................... 82
`
`Lead and Back-up Counsel and Service Information ........................ 83
`
`CERTIFICATE OF WORD COUNT ......................................................................84
`
`CERTIFICATE OF SERVICE ................................................................................85
`
`4
`
`
`
`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`Ex.1017
`Ex.1018
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 10,743,238
`
`Prosecution History of U.S. Patent No. 10,743,238
`
`Declaration of Dr. Zhi Ding under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Zhi Ding
`
`Declaration of Mr. Craig Bishop under 37 C.F.R. § 1.68
`Curriculum Vitae of Mr. Craig Bishop
`
`3GPP TSG RAN WG2 Meeting #99bis R2-1711767, “Discussion
`on the granularity of SI change notification,” Source: ITRI
`
`U.S. Patent No. 10,505,803 to Liao
`
`U.S. Provisional Patent Application No. 62/544,118 to Liao
`U.S. Patent Publication No. 2019/0132824 to Jeon et al.
`
`U.S. Provisional Patent Application No. 62/577,995 to Jeon et al.
`
`3GPP TSG RAN WG1 NR Ad Hoc Meeting R1-1709972,
`“Overview of wider bandwidth operations,” Source: Huawei,
`HiSilicon
`
`U.S. Patent Publication No. 2019/0260530 to Yi et al.
`Draft Report of 3GPP TSG RAN WG1 Meeting #90bis v0.1.0 R1-
`171xxxx, Source: MCC Support
`
`3GPP TSG RAN WG2 Meeting #99bis R2-1710181, “Discussion
`on NR SI Modification,” Source: OPPO
`
`U.S. Patent Publication No. 2019/0182884 to Deenoo et al.
`U.S. Patent Publication No. 2019/0053029 to Agiwal et al.
`
`U.S. Provisional Patent Application No. 62/543,581 to Agiwal et
`
`5
`
`
`
`
`
`Ex.1019
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`Ex.1024
`Ex.1025
`Ex.1026
`Ex.1027
`
`Ex.1028
`
`Ex.1029
`
`Ex.1030
`
`Ex.1031
`
`Ex.1032
`
`Ex.1033
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`al.
`3GPP TSG RAN WG1 Meeting #90bis R1-1718327, “Remaining
`Details on Bandwidth Part Operation in NR,” Source: MediaTek
`3GPP TSG RAN WG1 Meeting #90bis R1-1718580, “Open Issues
`on BWP,” Source: Qualcomm
`
`3GPP TSG RAN WG1 Meeting #90 R1-1713654, “Wider
`Bandwidth Operations,” Source: Samsung
`WDTX case 622-cv-00326, Plaintiff’s Infringement Contentions,
`Exhibit A (’238), served Oct. 3, 2022
`PCT Publication No. WO 2019/068224 to Dawid et al.
`U.S. Patent Publication No. 2018/0234917 to Kim et al.
`U.S. Patent Publication No. 2016/0192292 to Hoglund et al.
`U.S. Patent Publication No. 2014/0106793 to Lee et al.
`U.S. Patent No. 10,237,810 to Nigam et al.
`WDTX case 622-cv-00326, Dkt. 33, Scheduling Order, filed Oct.
`24, 2022
`WDTX case 622-cv-00326, Dkt. 53, Defendant’s Reply re Motion
`to Transfer Venue, filed Feb. 9, 2023
`U.S. District Courts Combined Civil and Criminal Federal Court
`Management Statistics (Sept. 30, 2022), available at
`https://www.uscourts.gov/statistics/table/na/federal-court-
`management-statistics/2022/09/30-1
`WDTX case 622-cv-00326, Dkt. 49, Apple’s Opening Markman
`Brief, filed Jan. 26, 2023
`WDTX case 622-cv-00326, Dkt. 54, Togail’s Responsive Markman
`Brief, filed Feb. 16, 2023
`
`WDTX case 622-cv-00326, Dkt. 55, Apple’s Reply Markman
`
`6
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`
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`
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`Ex.1101
`
`Ex.1102
`
`Ex.1103
`
`Ex.1104
`
`Ex.1105
`
`Ex.1106
`
`Ex.1107
`
`Ex.1108
`
`Ex.1109
`
`Ex.1110
`Ex.1111
`Ex.1112
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`Brief, filed Mar. 2, 2023
`Excerpts from F. Hillebrand, GSM and UMTS: The Creation of
`Global Mobile Communication, Wiley 2002
`
`Excerpts from H. Myung et al., Single Carrier FDMA: A New Air
`Interface for Long Term Evolution, Wiley 2008
`
`Excerpts from H. Holma et al., WCDMA for UMTS: Radio Access
`for Third Generation Mobile Communications, Revised Edition,
`Wiley 2001
`
`Email dated Dec. 1998 from 3GPP TSG RAN WG2 Archives,
`available at
`https://list.etsi.org/scripts/wa.exe?A2=ind9812&L=3GPP_TSG_R
`AN_WG2&O=D&P=65
`
`Wayback Machine capture of 3GPP-IETF Standardization
`Collaboration, RFC 3113 (as of Nov. 24, 2001), available at
`https://web.archive.org/web/20011124104400/http://www.ietf.org/r
`fc/rfc3113.txt (combined PDF of seven individual screenshots due
`to formatting)
`
`Third Generation Partnership Project, 3GPP Working Procedures
`(July 17, 2000)
`
`F. Harrison & K.A. Holley, The development of mobile is critically
`dependent on standards, 19 BT Tech. J. 32 (Jan. 2001)
`
`RAN1 - Radio layer 1 June 2017, web archive of
`https://www.3gpp.org/specifications-groups/ran-plenary/ran1-
`radio-layer-1
`
`3GPP FTP, TSG RAN WG2 RL2 TSGR2 99bis Tdoclists, Nov.
`2017
`RAN WG1 NR AH 17 06 meeting participants list
`
`RAN WG2 #99b meeting participants list
`
`Invitation to 3GPP TSG RAN WG1 NR AH 17 06 email
`
`7
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`Inter Partes Review of U.S. 10,743,238
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`Ex.1113
`
`Draft Agenda for 3GPP TSG RAN WG1 NR AH 17 06 email
`
`Ex.1114
`
`Ex.1115
`
`Ex.1116
`
`Ex.1117
`Ex.1118
`Ex.1119
`Ex.1120
`Ex.1121
`Ex.1122
`Ex.1123
`Ex.1124
`Ex.1125
`Ex.1126
`Ex.1127
`
`Ex.1128
`
`Ex.1129
`Ex.1130
`Ex.1131
`Ex.1132
`
`Preliminary report from 3GPP TSG RAN WG1 NR AH 17 06
`
`Invitation to 3GPP TSG RAN WG2 #99b email
`GSMA - Number of Mobile Subscribers Worldwide Hits 5 Billion -
`Newsroom
`RAN2 99bis Prague, draft meeting report v1
`
`GSMA Mobile Technology - About Us webpage
`
`Specifications Groups Home - June 2017 webpage
`3GPP FAQs - July 2017 webpage
`
`MCC Activity Report, presented at Vienna, Austria, Sept. 2017
`
`Draft Agenda for 3GPP TSG RAN WG2 #99b email
`Skeleton report from 3GPP TSG RAN WG2 #99b email
`
`3GPP ftp TSG RAN WG1 RL1 - August 2017
`
`3GPP ftp TSG RAN WG2 RL2 - October 2017
`3GPP, ftp webpage
`
`3GPP TSG RAN, ftp webpage
`3GPP TSG RAN WG1 RL1 TSGR1 AH NR AH 1706 Docs, ftp
`webpage
`R2-17xxxxx-RAN2-99bis-Prague-Proposed-Agenda-v1.0
`
`3GPP TSG RAN WG2 RL2 TSGR2 99bis, ftp webpage
`
`Draft Minutes report RAN1#AH NR 17 06 v010
`RAN2 #99bis tdocList (excerpted to include left-most columns)
`
`8
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`R1-179972 word doc properties
`
`3GPP WP - October 2016
`
`3GPP Calendar Home June 2017
`RAN2 - Radio layer 2 and Radio layer 3 RR - June 2017
`
`TDoc List Meeting RAN1-NR#2 (excerpted to include left-most
`columns)
`
`LISTSERV Archives at LIST.ETSI.ORG - Jan 2021
`List archives at LIST.ETSI.ORG - Dec 2012
`
`3GPP email lists link - June 2017
`
`E-mail lists - July 2017
`TSG RAN WG2 RL2 TSGR2 99bis Docs, ftp website
`
`R2-1711767 word doc properties
`
`
`
`
`
`
`Ex.1133
`Ex.1134
`Ex.1135
`Ex.1136
`
`Ex.1137
`
`Ex.1138
`Ex.1139
`Ex.1140
`Ex.1141
`Ex.1142
`Ex.1143
`
`9
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`
`
`
`I.
`
`INTRODUCTION
`
`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
`
`U.S. Patent No. 10,743,238 (the “’238 patent,” Ex.1001) is directed to
`
`performing a “bandwidth part (BWP) switching operation … to receive the
`
`changed contents of system information.” Ex.1001, Abstract. The alleged invention
`
`is merely “switching from the currently active BWP to an initial active BWP for an
`
`SI update,” which is done “in response to receiving the SI [system information]
`
`change indication.” Ex.1001, 12:49-51. However, the ’238 patent itself admits it
`
`was known in the art that, upon receiving a “system information change
`
`[notification], the Connected_UE may have to switch from the currently active
`
`BWP to the initial active BWP for accessing the [SI update].” Ex.1001, 1:36-39.
`
`Indeed, the prior art references discussed below confirm this was already known.
`
`See, e.g., Ex.1008, 7:41-53, 8:50-53; Ex.1010, ¶¶0290, 0297, 0299; Ex.1013,
`
`¶¶0113, 0284.
`
`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
`
`Apple Inc. (“Petitioner”) respectfully requests that the Board review and cancel as
`
`unpatentable under 35 U.S.C. §103 claims 1-5 and 11-15 (hereinafter, the
`
`“Challenged Claims”) of the ’238 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’238 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`10
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`
`
`C.F.R. § 42.104(a).
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`IV. TECHNOLOGY BACKGROUND
`
`The declaration of Dr. Zhi Ding provides the following discussion of SI
`
`updates and BWPs related to the ’238 patent. Ex.1003, ¶¶29-47.
`
`A. Remaining Minimum System Information (RMSI)
`
`It was commonly known that when a cellular phone user first turns on the
`
`device, called user equipment (UE), the UE needs to know certain parameters or
`
`information about the cellular network—called system information (SI)—to
`
`function properly. In a 5G network (as well as 3G and 4G), after powering on, the
`
`UE may acquire the first piece of SI: the master information block (MIB). The
`
`MIB is repeatedly broadcast by all network base stations so that it is easily
`
`accessible to UEs that initially had little or no other information about the system.
`
`See Ex.1007, 1; Ex.1013, [0091]; Ex.1014, 55-56.
`
`The MIB includes information on where the UE can acquire additional
`
`pieces of SI that the UE needs. One such information is called SI block 1 (SIB1).
`
`The MIB includes the time and frequency scheduling information of a “search
`
`space” for the UE to monitor for SIB1. The UE scans this search space to find and
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`11
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`
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`receive a broadcast of SIB1. See Ex.1007, 1; Ex.1003, ¶¶30-31.
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`The UE needs both MIB and SIB1 before it can enter a connected mode to,
`
`for example, make calls and exchange other data. Together, these pieces of SI—
`
`MIB and SIB1—are referred to as “required SI” or “minimum SI.” Ex.1007, 1;
`
`Ex.1015, 1. Once the UE has MIB, the UE still needs the “remaining minimum
`
`system information” (RMSI) to enter connected mode; the UE still needs SIB1.
`
`The terms SIB1 and RMSI are sometimes used interchangeably. Ex.1003, ¶32.
`
`Because the RMSI (SIB1) needs to be readily available, so that all UEs in
`
`the network can enter and maintain connected mode, the frequency band
`
`scheduling location of RMSI is included in MIB, which is repeatedly broadcasted.
`
`Ex.1012, 2. The RMSI, in turn, includes scheduling information for other SI blocks
`
`(SIBs, called SIB2, SIB3, etc.) used during connected mode; and while the UE
`
`needs at least MIB and RMSI (SIB1) to enter connected mode, the UE may or may
`
`not need some of these other SIBs. See Ex.1007, 1-3; Ex.1015, 2; Ex.1003, ¶33.
`
`It was commonly known that these SIBs and the RMSI itself may be updated
`
`over time; for instance, the value tags of other SIBs listed in SIB1 may change,
`
`indicating the SIB(s) has updated. Ex.1007, 1. The UE then needs to reacquire the
`
`updated RMSI to maintain connected mode. Ex.1007, 2. The UE may locate RMSI
`
`based on the frequency band scheduling information provided in MIB, which is the
`
`same way the UE locates RMSI after powering on. Ex.1007, 1-2; Ex.1003, ¶35.
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`When there is an SI update, the 5G network may broadcast a notification, via
`
`
`
`paging message, to all UEs. Ex.1007, 1-2; Ex.1027, 4:1-11; Ex.1008, 7:48-51;
`
`Ex.1024, ¶0284. If the UE receives the SI update notification, the UE may
`
`reacquire RMSI/SIB1 from the frequency location indicated in the MIB to
`
`maintain connected mode. Ex.1001, 1:35-41; Ex.1007, 2; Ex.1003, ¶36.
`
`B.
`
`Frequency Bandwidth Parts (BWPs)
`
`It was commonly known that 5G could include a frequency partitioning
`
`concept called “bandwidth parts” (BWPs) where a UE’s frequency bandwidth can
`
`be divided into frequency sub-bands or parts called BWPs. Ex.1010, ¶¶0276, 0290;
`
`Ex.1012, 2. One or more downlink BWP(s) and uplink BWP(s) can be configured
`
`for a UE. Ex.1010, ¶0277. The ’238 patent and following discussion refer to
`
`downlink BWPs. Ex.1003, ¶¶37-39.
`
`Two main kinds of downlink BWPs were commonly known. First, the
`
`“initial active BWP” is defined as the location of RMSI. Ex.1014, 68. A UE that
`
`powers on may read the broadcasted MIB, which tells the UE the frequency
`
`location of the RMSI and thus the initial active BWP. Ex.1014, 68. The second
`
`kind of BWP, referred to as a “currently active BWP” or simply “active BWP,”
`
`provides a larger bandwidth for UEs to receive data in connected mode. See
`
`Ex.1014, 68, 88. It was known that the UE can switch between an active BWP and
`
`the initial BWP as the UE’s need for bandwidth changes. Ex.1010, ¶0272;
`
`13
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`
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`Ex.1003, ¶¶40-41.
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`An active BWP, however, typically does not carry RMSI. Ex.1001, 1:33-41;
`
`Ex.1012, Fig.1; Ex.1010, ¶¶0290, 0299. It was thus known to make RMSI (SIB1)
`
`available in the same frequency location for all UEs—i.e., the initial active BWP—
`
`so it can be located no matter what frequency band or bandwidth is currently being
`
`used. Ex.1003, ¶42. A POSITA thus would have known that the UE would switch
`
`to this initial active BWP when updated RMSI is available. Ex.1008, 7:41-53;
`
`Ex.1003, ¶43.
`
`The annotated figure below illustrates a 5G configuration of an initial active
`
`BWP (labeled BWP1), which carries RMSI, and other active BWPs (BWP2 and
`
`BWP3). See Ex.1012, Fig.1. The active BWPs (BWP2 and BWP3) carry certain
`
`control information (paging messages) and other connected-mode data but do not
`
`carry RMSI. See Ex.1010, ¶¶0290, 0297, 0299, 0376; Ex.1003, ¶44.
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`Initial Active BWP:
`Defined as location
`of RSMI
`
`Active BWPs:
`BWP2 and BWP3
`do not carry RMSI
`(but can carry other
`control or paging
`messages)
`
`Ex.1012, Fig.1 (annotated to include Ex.1010, ¶¶0290,
`0297, 0376); Ex.1003, ¶44.
`
`
`
`C.
`
`System Information (SI) Updates
`
`It was commonly known that in 5G networks, a connected-mode UE may
`
`receive a paging message notification that the SI has been updated or changed.
`
`Ex.1007, 1-2; Ex.1027, 4:7-12. In response to the SI update notification, the UE
`
`may then reacquire RMSI (SIB1) according to the frequency scheduling
`
`information in MIB, since the UE’s stored SIB1 or other SIBs may no longer be
`
`valid. Ex.1007, 2-3; Ex.1008, 7:41-53. The background of the ’238 patent itself
`
`explains this known concept. Ex.1001, 1:36-39; Ex.1003, ¶45.
`
`It was also commonly known that the UE could switch between configured
`
`BWPs using one or more of any common broadcast and/or multicast signaling
`
`methods. Ex.1008, 7:41-47. In particular, it was known for a BWP switch to occur
`
`15
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`
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`based on a broadcasted paging message used for system information update; once
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`IPR2023-00645 Petition
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`the UE receives the SI update paging message, it automatically or autonomously
`
`switches BWPs to the initial active BWP. See Ex.1008, 7:41-53, 8:50-53; Ex.1010,
`
`¶¶0297, 0299, 0376; Ex.1003, ¶47.
`
`V. BACKGROUND OF THE ’238 PATENT
`
`The ’238 patent generally relates to a “user equipment (UE) for wireless
`
`communication” that needs to update its stored system information (SI) upon
`
`“receiving a system information change indication.” Ex.1001, Abstract.
`
`The ’238 patent is directed in part to a “5G Access Network,” in which
`
`frequency bandwidth is partitioned into BWPs. Ex.1001, 3:49-50, 1:25-30. The
`
`Background section describes it was known in 5G networks that a UE can be
`
`configured for one or more downlink (DL) BWPs but only uses one “active DL
`
`BWP” at a time. Ex.1001, 1:25-30. According to the ’238 patent, “an initial active
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`DL BWP is defined as the frequency location and bandwidth dedicated for
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`broadcasting remaining minimum SI (RMSI).” Ex.1001, 1:33-35.
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`The ’238 patent’s Background section further describes it was already
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`known that the UE may need to switch BWPs in response to receiving a SI
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`change indication:
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`When the NW sends to a Connected_UE a system information (SI)
`change indication that notifies of system information change, the
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`Connected_UE may have to switch from the currently active BWP
`to the initial active BWP for accessing the RMSI and updating to the
`changed SI if there is no SI broadcasting on the currently active BWP.
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`Ex.1001, 1:35-41. However, the limitation added in the last claim amendment
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`before allowance—“in response to receiving the SI change indication, switching
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`from the currently active BWP to an initial active BWP for an SI update”—is this
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`exact same functionality quoted above and described in the Background section as
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`already being known to POSITAs. Ex.1001, 12:49-51; Ex.1002, 163, 187. The
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`prior art discussed below confirms that this technique was already known. See,
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`e.g., Ex.1008, 7:41-53, 8:50-53; Ex.1010, ¶¶0290, 0297, 0299.
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`Further, the ’238 patent’s background section incorrectly suggests it was
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`only known to use a “single scheduled downlink control information (DCI)” for
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`“switching one active BWP to another.” Ex.1001, 1:31-32. Again, the prior art
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`confirms it was known for a UE to switch BWPs upon receiving a broadcasted SI
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`update paging message (as opposed to a scheduled DCI). See, e.g., Ex.1008, 7:41-
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`53.
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`The ’238 patent also describes receiving the updated RMSI “during a next
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`modification period” followed by “receiv[ing] the required changed SIBs [system
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`information blocks].” Ex.1001, 2:7-9, 2:13. For instance, Fig.3 below illustrates a
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`UE switching from an active BWP to the initial BWP for modification period n+1,
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`17
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`to get updated SIBs, after receiving an SI change indication paging message 301 in
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`modification period n. Ex.1001, Fig.3, 6:17-34; Ex.1003, ¶¶48-52.
`
`In response to SI change paging message 301, UE
`switches from indicated active BWP to initial active BWP
`to receive updated RMSI in modification period n+1
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`Ex.1001, Fig. 3 (annotated); Ex.1003, ¶52.
`
`
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`However, these concepts of using modification periods to demarcate SI
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`updates and using a paging message for the SI update notification were known and
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`used in the prior generation 4G (LTE) network. See, e.g., Ex.1015, 1 (“NR can take
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`the modification period concept in LTE as the baseline for NR SI change. … In
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`LTE [] Paging message is used to notify the [] UEs in RRC_CONNECTED about
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`the system information change.”); Ex.1003, ¶53.
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`VI. PROSECUTION HISTORY
`
`The ’238 patent was filed in the U.S. on Nov. 15, 2018 as application no.
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`18
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`16/191,465 and claims priority to provisional application no. 62/586,598 filed on
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`IPR2023-00645 Petition
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`Nov. 15, 2017. It is unnecessary to determine whether the ’238 patent is entitled to
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`its earliest alleged priority date of Nov. 15, 2017 because the prior art relied upon
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`herein pre-dates this date.
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`During a brief prosecution, the Patent Office issued a single office action
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`rejecting as obvious the independent claims. Ex.1002, 197-208. To overcome the
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`office action, Applicant amended the independent claims to add the underlined
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`language: “receiving a [SI] change indication … in response to receiving the SI
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`change indication, switching from the currently active BWP to an initial active
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`BWP for an SI update.” Ex.1002, 187. In response to this amendment, the Patent
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`Office issued a notice of allowance and the ’238 patent issued on August 11, 2020.
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`Ex.1002, 163, 137; Ex.1003, ¶¶54-55.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) in the field of the ’238
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`patent, as of Nov. 15, 2017, would have been someone knowledgeable and familiar
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`with the cellular telecommunications arts that are pertinent to the ’238 patent. That
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`person would have at least a master’s degree in electrical engineering, computer
`
`engineering, computer science, or a related field from an accredited program and
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`one year of relevant experience in mobile communications or wireless networks. A
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`Ph.D. degree in a relevant field may substitute for some work experience. Ex.1003,
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`¶¶19-21.
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`VIII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b).
`
`However, only those claim terms that are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy. See Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017); see also Samsung Electronics Co., Ltd. v. Smart Mobile Technologies,
`
`Inc., IPR2022-01248, Paper 13, at 58-60 (PTAB Jan. 24, 2023) (explaining that it
`
`is “not uncommon” for a petitioner to advance different constructions in district
`
`court and before the Board; for example, a petition may “present[] an
`
`unpatentability argument based on a broader construction, such as one advanced by
`
`a patent owner that is seeking to broadly construe the claims to prove
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`infringement”).1 For example, although there is a dispute in the district court that
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`the preamble of claim 1 is limiting (see Exs. 1031-1033), the dispute is irrelevant
`
`for this proceeding because that dispute is not in controversy in light of the prior
`
`art relied upon in this instant Petition, which discloses or renders the preamble
`
`obvious. Petitioner submits that for the purposes of this proceeding, the terms of
`
`the challenged claims should be given their plain and ordinary meaning, and no
`
`terms require specific construction in this proceeding. Ex.1003, ¶56.
`
`Petitioner does not concede that any term in the challenged claims meets the
`
`requirements of 35 U.S.C. § 112 or that the challenged claims recite patentable
`
`subject matter under 35 U.S.C. § 101. The prior art renders obvious the claims
`
`under their plain and ordinary meaning, which is Patent Owner’s construction of
`
`all disputed claim terms of the ’238 patent in the district court. See e.g., Ex.1031,
`
`6-14.
`
`
`1 The parties have filed claim construction briefs in district court (see Exs. 1031-
`
`1033) but there has been no claim construction decision to date nor is there likely
`
`to be one as of the time of institution due to the parties’ agreement that the district
`
`court case should be transferred (see Ex.1029, 3).
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`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
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`cancel the Challenged Claims.
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-5 and 11-15, which are asserted by Patent
`
`Owner in the related district court litigation. Ex.1022, 1.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`#2
`
`Claim(s)
`1-2, 4-5, 11-
`12, 14-15
`3, 13
`
`Basis
`35 U.S.C. 103 obvious over ITRI in view of Liao
`and Jeon
`35 U.S.C. 103 obvious over ITRI in view of Liao,
`Jeon, and Huawei
`
`
`
`ITRI: 3GPP TSG RAN WG2 Meeting #99bis R2-1711767, “Discussion on
`
`the granularity of SI change notification,” Source: ITRI (“ITRI,” Ex.1007). ITRI
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`was uploaded to the 3GPP FTP site and available to the public by Sept. 29, 2017.
`
`Ex.1005, ¶¶46-52. ITRI is prior art under 35 U.S.C. § 102(a)(1).2
`
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`2 Apple does not concede that any aspect of a 3GPP document was actually
`
`implemented in any version of the 5G NR Standard.
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`Liao: U.S. Patent No. 10,505,803 to Liao (“Liao,” Ex.1008). Liao was filed
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`
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`Jun. 14, 2018 and claims priority to U.S. Provisional Patent Application No.
`
`62/544,118 to Liao (“Liao Provisional,” Ex.1009), filed Aug. 11, 2017. Liao issued
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`Dec. 10, 2019. Liao is prior art under 35 U.S.C. § 102(a)(2). Liao’s subject matter
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`relied upon in the challenges herein is entitled to the Aug. 11, 2017 priority date, as
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`shown in the chart in Dr. Ding’s declaration, Ex.1003, ¶¶183-184, and as also
`
`shown by the parallel citations to the Liao provisional in the claim mapping
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`section. Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2022-00341, Paper 10,
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`19 (Sept. 14, 2022) (quoting 35 U.S.C. § 102(d)(2) (“under the AIA … the
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`provisional [] to which the reference patent document claims a right of priority
`
`must ‘describe[] the subject matter’ relied upon in the reference patent document
`
`as prior art”)).
`
`Jeon: U.S. Patent Pub. No. 2019/0132824 to Jeon et al. (“Jeon,” Ex.1010).
`
`Jeon was filed Oct. 26, 2018 and claims priority to U.S. Provisional Patent
`
`Application No. 62/577,995 to Jeon et al. (“Jeon Provisional,” Ex.1011), filed Oct.
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`27, 2017. Jeon published May 2, 2019. Jeon is prior art under 35 U.S.C. §
`
`102(a)(2). Jeon’s subject matter relied upon in the challenges herein is entitled to
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`the Oct. 27, 2017 priority date as shown in the chart in Dr. Ding’s declaration
`
`Ex.1003, ¶¶181-182, and as also shown by the parallel citations to the Jeon
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`provisional in the claim mapping section.
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`Huawei: 3GPP TSG RAN WG1 NR Ad Hoc Meeting R1-1709972,
`
`
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`“Overview of wider bandwidth operations,” Source: Huawei, HiSilicon (“Huawei,”
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`Ex.1012). Huawei was uploaded to the 3GPP FTP site and available to the public
`
`by Jun. 17, 2017. Ex.1005, ¶¶53-60. Huawei is prior art under 35 U.S.C. §
`
`102(a)(1).
`
`Petitioner’s analysis also cites additional prior art to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
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`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
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`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Arendi S.A.R.L. v. Apple
`
`Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016).
`
`C. Ground 1: Claims 1-2, 4-5, 11-12, and 14-15 are obvious under 35
`U.S.C. § 103 over ITRI in view of Liao and Jeon
`
`1.
`
`Summary of ITRI
`
`ITRI describes “SI change notification” in the context of 3GPP’s 5G
`
`working group meetings. Ex.1007, 1-2; Ex.1003, ¶60; Ex.1005, ¶¶46-52.
`
`ITRI teaches that, “[u]pon system information change, the change could be
`
`notified from gNB to UE (e.g., by paging message).” Ex.1007, p.2. In response to
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`24
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`receiving the “SI change notification” paging message, the “UE acquires the latest
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`IPR2023-00645 Petition
`Inter Partes Review of U.S. 10,743,238
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`S
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