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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON, INC.
`Petitioners
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
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`
`
`
`Case IPR2018-01380
`Patent 8,682,357 B2
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`DECLARATION OF JONATHAN WELLS, PH.D.
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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
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`Intellectual Ventures II LLC Ex. 2004
`Ericsson Inc. v. Intellectual Ventures
`IPR2018-01380
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`

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`I.
`
`II.
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`
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`U.S. Patent No. 8,682,357 B2
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`TABLE OF CONTENTS
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`BACKGROUND ............................................................................................. 1
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`QUALIFICATIONS AND EXPERTISE ........................................................ 5
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`III. LEGAL UNDERSTANDING ......................................................................... 9
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`A. My Understanding of Claim Construction ............................................ 9
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`B. My Understanding of a Person Having Ordinary Skill in the Art ...... 10
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`C. My Understanding of Obviousness ..................................................... 11
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`IV.
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`’357 PATENT ................................................................................................ 13
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`V.
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`PROSECUTION HISTORY OF THE ’357 PATENT .................................. 19
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`VI. UNDERSTANDING OF CERTAIN CLAIM TERMS ................................ 20
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`A.
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`B.
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`“the message having an allocation of resources for a shared
`channel and a radio network temporary identity (RNTI)
`associated with a plurality of UEs” .................................................... 20
`
`“first network device,” “second network device,” and “network
`device” ................................................................................................. 23
`
`VII. THE ASSERTED REFERENCES ................................................................ 24
`
`A.
`
`B.
`
`C.
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`CATT ................................................................................................... 24
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`LG ........................................................................................................ 28
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`CATT2 ................................................................................................. 29
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`D. HUAWEI ............................................................................................. 31
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`VIII. THE CHALLENGED CLAIMS ARE PATENTABLE ............................... 32
`
`A.
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`CATT in view of LG fails to disclose “a radio network
`temporary identity (RNTI) associated with a plurality of UEs”
`as recited in independent claims 11, 30, and 47. ................................. 33
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`U.S. Patent No. 8,682,357 B2
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`B.
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`C.
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`CATT in view of LG fails to disclose a “message having an
`allocation of resources for a shared channel” as recited in
`independent claims 11, 30, and 47. ..................................................... 43
`
`A POSITA would not have been motivated to include an IMSI
`or a TMSI in CATT’s paging message. .............................................. 51
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`IX. CONCLUSION .............................................................................................. 59
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`U.S. Patent No. 8,682,357 B2
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`I, Jonathan Wells, declare as follows:
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`I. BACKGROUND
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`1.
`
`I have been retained by Sterne, Kessler, Goldstein & Fox, P.L.L.C.
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`(“SKGF”), which represents Intellectual Ventures II LLC (“IV” and/or “Patent
`
`Owner”) in connection with this inter partes review of U.S. Patent No. 8,682,357
`
`to Worrall, titled Paging in a Wireless Network (Ex. 1001, “’357 patent”).
`
`2.
`
`I have reviewed and am familiar with the ’357 patent, which was filed
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`on May 2, 2006 and issued on March 25, 2014. I understand that the ’357 patent
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`includes 54 claims. Claims 1, 11, 21, 30, and 47 are the independent claims.
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`3.
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`It is my understanding that the Petition in IPR2018-01380 seeks to
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`cancel claims 11-14, 19, 30-33, 38, 47-50, and 54 of the ’357 patent (“the
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`challenged claims”) based on the following grounds. My analysis and opinions will
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`focus on the challenged claims and the asserted grounds.
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`U.S. Patent No. 8,682,357 B2
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`
`
`Ground References
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`Claims
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`1
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`2
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`3
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`CATT1 and LG2
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`11, 13, 30, 32, 47, 49
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`CATT, LG, and CATT23
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`12, 19, 31, 38, 48, 54
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`CATT, LG, Huawei4
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`14, 33, 50
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`4.
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`I have been asked to consider how a person of ordinary skill in the art
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`(“POSITA”) would have understood the challenged claims in light of the
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`specification of the ’357 patent. I have also been asked to consider how a POSITA
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`would have understood the prior art. Further, I have been asked to consider and
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`provide my technical review, analysis, insights, and opinions on whether: (1)
`
`
`1 CATT, PCH mapping and Paging control, 3GPP RAN1/RAN2 Joint
`
`meeting on LTE (Ex. 1005).
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`2 LG Electronics, Discussion on LTE Paging and DRX, Joint RAN WG1
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`and RAN WG2 on LTE (Ex. 1006).
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`3 CATT & RITT (“CATT2”), Access procedure for TDD, 3GPP
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`RAN1/RAN2 Joint Meeting on LTE (Ex. 1007).
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`4 Huawei, Inter-cell Interference Mitigation, 3GPP TSG RAN WG1 Ad Hoc
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`on LTE (Ex. 1008).
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`U.S. Patent No. 8,682,357 B2
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`CATT in combination with LG renders obvious claims 11, 13, 30, 32, 47, and 49;
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`(2) CATT in combination with LG and CATT2 renders obvious claims 12, 19, 31,
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`38, 48, and 54; and (3) CATT in combination with LG and Huawei renders
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`obvious claims 14, 33, and 50.
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`5.
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`In preparing this declaration, I have reviewed the following materials.
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`Exhibit Description
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`1001 U.S. Patent No. 8,682,357 to Worrall (“’357 Patent”)
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`1002 Prosecution File History of the ’357 Patent
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`1003 Declaration of Dr. Vijay K. Madisetti
`1005 CATT, PCH mapping and Paging control, 3GPP RAN1/RAN2 Joint
`meeting on LTE (“CATT”)
`1006 LG Electronics, Discussion on LTE Paging and DRX, Joint RAN WG1
`and RAN WG2 on LTE (“LG”)
`1007 CATT & RITT, Access procedure for TDD, 3GPP RAN1/RAN2 Joint
`Meeting on LTE (“CATT2”)
`1008 Huawei, Inter-cell Interference Mitigation, 3GPP TSG RAN WG1 Ad
`Hoc on LTE (“Huawei”) (Ex. 1008)
`
`1009 PCT Publication No. WO2004/057896 to Seidel et al. (“Seidel”)
`1010 Harri Holma & Antti Toskala, WCDMA for UMTS: Radio Access for
`Third Generation Mobile Communications, Rev. ed. (“Holma”)
`
`1011 Andrew Richardson, WCDMA Design Handbook (“Richardson”)
`1012 Theodore S. Rappaport, Wireless Communications, Principles &
`Practices, 1st ed., (“Rappaport”)
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`U.S. Patent No. 8,682,357 B2
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`1013
`
`Exhibit Description
`3GPP Technical Report, Technical Specification Group Radio Access
`Network, Evolved Universal Terrestrial Radio Access (E-UTRA) and
`Evolved Universal Terrestrial Radio Access Network (E-UTRAN),
`Radio Interface Protocol Aspects (Release 7), TR 25.813, v.0.6.0
`(“TR25.813”)
`1014 Hannes Ekström et al., “Technical Solutions for the 3G Long-Term
`Evolution,” IEEE Communications Magazine, pp. 38-45 (“Ekström”)
`
`1017 Harry Newton, Newton’s Telecom Dictionary, 14th ed. (“Newton”)
`
`1020 U.S. Patent Publication No. 2003/0123382 to Wang et al. (“Wang”)
`
`1021 PCT Publication No. WO2004/036947 to Bakri (“Bakri”)
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`1022 PCT Publication No. WO2004/056145 to Ratford et al. (“Ratford”)
`
`1023 U.S. Patent No. 6,091,781 to Mujtaba (“Mujtaba”)
`
`1024 U.S. Patent No. 6,137,785 to Bar-Ness (“Bar-Ness”)
`
`1025 U.S. Patent No. 6,289,203 to Smith et al. (“Smith”)
`2001 P.R. 4-5 Joint Claim Construction Chart, Intellectual Ventures II, LLC v.
`Sprint Spectrum L.P., Case No. 2:17-cv-662-JRG-RSP (Oct. 17, 2018)
`
`2005 Curriculum Vitae of Jonathan Wells, Ph.D.
`2006 CATT, R1-061537, Paging control and paging channels, 3GPP TSG
`RAN1#45 meeting (“CATT3”)
`
`2009 Deposition Testimony of Dr. Madisetti (Apr. 9, 2019)
`2010 Taiwo Oyedele, Charging Requirements for UMTS Packet-Switched
`Data Services, Chalmers University of Technology (2001)
`2011 Zhongping Zhang et al., Advanced Baseband Technology in Third-
`Generation Radio Base Stations, 1 Ericsson Review (2003)
`
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`U.S. Patent No. 8,682,357 B2
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`Exhibit Description
`2012 Satoshi Maruyama et al., Base Transceiver Station for W-CDMA
`System, 38, 2 Fujitsu Sci. Tech. J. 167 (2002)
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`
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`Paper Description
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`2
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`6
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`7
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`6.
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`Petition for Inter Partes Review
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`Patent Owner’s Preliminary Response
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`Decision to Institute
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`I am being compensated at my standard hourly rate. My compensation
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`does not depend on the outcome of this inter partes review and in no way impacts
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`the substance of my statements in this declaration.
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`II. QUALIFICATIONS AND EXPERTISE
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`7.
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`I am an expert in the field of wireless communications. I have studied,
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`taught, practiced, and researched this field for thirty years. I summarize in this
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`section my educational background, work experience, and other relevant
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`qualifications. My curriculum vitae is attached as Exhibit 2005.
`
`8.
`
`I earned my Bachelor of Science degrees in Physics and Physical
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`Electronics, awarded with First Class Honors, from the University of Bath in 1987.
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`In 1991, I earned my Ph.D. from the University of Bath. I earned my Masters of
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`Business Administration, awarded with distinction, in 1998 from Massey
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`University in New Zealand.
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`U.S. Patent No. 8,682,357 B2
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`9.
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`From 1990 to 1992, I worked at the University of Bath as a
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`Postdoctoral Research Officer. During this time, I researched and developed novel
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`integrated semiconductor devices, including developing software models to predict
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`the performance of these and other devices. I also taught undergraduate classes and
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`ran laboratory sessions.
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`10. From 1993 to 1994, I was a Senior Design Engineer at Matra Marconi
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`Space, where I developed integrated electronic components and space-qualified
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`sub-systems for two satellite payloads.
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`11. From 1994 to 1998, I was employed by MAS Technology (now Aviat
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`Networks) in Wellington, New Zealand; first as a Senior Design Engineer before
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`being promoted to Engineering Group Manager. During this time, I was
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`responsible for hardware development for three families of telecommunication
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`equipment and sustaining development for a family of satellite ground station
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`terminals. I personally designed a wide range of RF devices and was responsible
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`for the company’s European regulatory approvals.
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`12. From 1998 to 2000, I was with Adaptive Broadband (now GE Digital
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`Energy) in Rochester, NY, first as an Engineering Group Leader and then as
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`Director of Wideband Products. In this latter role, I had full profit and loss
`
`responsibility for the Terrestrial Infrastructure Group, where I also oversaw the
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`development of a family of digital radios and associated switching and
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`multiplexing equipment.
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`13. From 2000 to 2004, I was Director of Product Development at Stratex
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`Networks (now Aviat Networks) in San Jose, CA. At Stratex Networks, I was
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`responsible for global product development of a portfolio of high-end digital
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`microwave radios primarily for cellular applications. I led a development team of
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`35 engineers and provided technical leadership of Stratex’s flagship Eclipse
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`product.
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`14. From 2005 to 2007, I was Director of Product Management and
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`Global Regulatory Affairs at GigaBeam Corporation in Herndon, VA. At
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`GigaBeam, I was responsible for overall product strategy for a novel, industry-
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`transforming wireless communication product. During this time, I was responsible
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`for establishing a global regulatory framework for this new product, which
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`included developing FCC, CEPT, and ETSI standards to cover the specification
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`and regulation of the system. I participated in multiple FCC, CEPT, and ETSI
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`standard setting meetings, and I personally met multiple times with over a dozen
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`different international regulatory bodies to help setup wireless regulations within
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`their countries.
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`15.
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`I have been Managing Partner of AJIS Consulting since 2007. As an
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`independent consultant, I provide expertise on various aspects of wireless
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`communications, including, but not limited to, cellular technologies, wireless
`
`devices, network infrastructure, and wireless rules and regulations. In that capacity,
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`I have undertaken multiple consulting projects on these topics, as well as analyzing
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`patents and commercial equipment for a variety of clients in the communications
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`industry. I have conducted a number of technical workshops on various aspects of
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`wireless technology, including cellular networks, mm-wave radios, security
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`sensors, and short-range radios. I have also helped public companies, private
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`entities, and startups with product development and marketing strategies for
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`wireless products.
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`16.
`
`I have written multiple books, industry reports, and journal and
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`conference papers, most of which focus on wireless communications systems. For
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`example, I am the author of “Multi-Gigabit Microwave and Millimeter-Wave
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`Wireless Communications” and have authored four comprehensive industry reports
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`on cellular connectivity for Mobile Experts. I have lectured as part of
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`undergraduate programs at UC Berkeley, Carnegie Mellon University, and
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`University of Bath. I have also given over two dozen lectures and conference
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`presentations on topics germane to wireless communications.
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`17.
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`I am a named inventor on the following issued patents and published
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`patent applications.
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`U.S. Patent No. 8,682,357 B2
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`• U.S. Patent No. 7,623,829: Transceiver power detection and control
`architecture
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`• U.S. Patent No. 7,236,745: Transceiver power detection architecture
`
`• European Patent Publication No. EP 1599952: Transceiver power
`detection architecture
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`• International Publication No. WO 2004/080035: Transceiver power
`detection architecture
`
`18.
`
`I have been a member of the Institute of Electrical and Electronic
`
`Engineers (“IEEE”) since 1995 and a Senior Member of IEEE since 1999. I am
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`also a Member of the IEEE Communications Society and the IEEE Microwave
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`Theory and Techniques Society. I was a reviewer for the U.S. Government’s
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`Broadband Technology Opportunity Program and the Broadband Initiatives
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`Program, both part of the American Recovery and Reinvestment Act of 2009. I
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`have been a Chair or Co-Chair of numerous technology workshops and symposia
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`related to wireless communications technology.
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`III. LEGAL UNDERSTANDING
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`A. My Understanding of Claim Construction
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`19.
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`I understand that for this inter partes review proceeding, the Board
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`will apply the broadest reasonable interpretation. I understand that under the
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`broadest reasonable interpretation, claim terms are given their plain and ordinary
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`meaning, unless such meaning is inconsistent with the specification. I also
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`understand that for a construction of a claim term to be reasonable, the claim term
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`must be read in view of the specification.
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`20.
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`In this declaration, I have used the broadest reasonable interpretation
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`standard when interpreting the claims.
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`B. My Understanding of a Person Having Ordinary Skill in the Art
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`21.
`
`I have been advised and understand that a person having ordinary skill
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`in the art (“POSITA”) is presumed to be aware of all pertinent art, thinks along
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`conventional wisdom in the art, and is a person of ordinary creativity, not an
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`automaton. With this understanding and based on the disclosures in the ’357
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`patent, it is my opinion that a POSITA at the time of the alleged invention claimed
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`in the ’357 patent would have been a person who had either: (1) a bachelor’s
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`degree in electrical engineering and at least two years of experience relating to the
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`design and developments of telecommunication systems, (2) a master’s degree in
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`electrical engineering and at least one year of experience relating to the design and
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`developments of telecommunication systems, or (3) equivalent education and
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`experience.
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`22.
`
`I understand Dr. Madisetti defined the POSITA as: “someone who
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`had a bachelor’s degree in electrical engineering, computer engineering, computer
`
`science or similar filed, and three to five years of experience in digital
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`communications systems, such as wireless communications systems and networks,
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`or equivalent, or a Master’s degree in electrical engineering, computer engineering,
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`computer science or similar field, and at least two years of work or research
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`experience in digital communications systems, such as wireless communications
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`systems and networks, or equivalent.” (Ex. 1003, ¶25.) I also understand that Dr.
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`Madisetti said that “someone with more technical education but less experience
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`could have also met this standard.” (Ex. 1003, ¶25.)
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`23. My definition of a POSITA is generally consistent with that of Dr.
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`Madisetti, albeit his requiring more work experience or research experience in
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`more tangential digital communications systems. Nevertheless, my opinions in this
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`declaration hold under both my and Dr. Madisetti’s definition.
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`C. My Understanding of Obviousness
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`24.
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`I have been advised and understand that a claimed invention is
`
`unpatentable if the differences between the invention and the prior art are such that
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`the subject matter as a whole would have been obvious to a POSITA at the time
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`the invention was made. This means that even if all of the requirements of the
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`claim cannot be found in a single prior-art reference, the claim can still be
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`unpatentable.
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`25.
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`It is my understanding that obviousness is a question of law based on
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`underlying factual findings: (1) the scope and content of the prior art; (2) the
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`differences between the claims and the prior art; (3) the level of skill in the art; and
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`(4) objective considerations of nonobviousness. I understand that for a single
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`reference or a combination of references to render the claimed invention obvious, a
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`POSITA must have been able to arrive at the claims by altering or combining the
`
`applied references.
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`26.
`
`I understand that there must be some articulated reasoning to explain
`
`why a POSITA would have altered or combined the applied references. I
`
`understand that the following rationales may support a finding of obviousness.
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`• Combining prior art elements according to known methods to yield
`predictable results;
`• Simple substitution of one known element for another to obtain
`predictable results;
`• Use of a known technique to improve similar devices in the same way;
`• Obvious to try – choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`• Known work in one field of endeavor may prompt variations of it for use
`in either the same field or a different one based on design incentives or
`other market forces if the variations are predictable to one of ordinary
`skill in the art; and
`• Some teaching, suggestion, or motivation in the prior art that would have
`led one of ordinary skill to modify the prior art reference or to combine
`prior art reference teachings to arrive at the claimed invention.
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`27.
`
`I understand that certain objective indicia can be important evidence
`
`for whether a patent is obvious. Such indicia include: commercial success of
`
`products covered by the patent claims; a long-felt need for the invention; failed
`
`attempts by others to make the invention; copying of the invention by others in the
`
`field; unexpected results achieved by the invention as compared to the closest prior
`
`art; praise of the invention by the infringer or others in the field; the taking of
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`licenses under the patent by others; expressions of surprise by experts and those
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`skilled in the art at the making of the invention; and the patentee proceeded
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`contrary to the accepted wisdom of the prior art. I have not been asked to opine on
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`objective indicia in this case.
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`IV.
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`’357 PATENT
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`28. The ’357 patent describes a method of paging user equipment (UE)
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`within a wireless network. Figure 1 shows a cellular communication system
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`according to an embodiment of the invention. (Ex. 1001, 4:40-41.) As shown
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`below, “[t]he network includes a UE domain, a radio access network (RAN)
`
`domain, and a core network domain.” (Ex. 1001, 4:41-43.)
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`(Ex. 1001, FIG. 1.)
`
`
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`29. To preserve power and network resources, UEs (e.g., mobile
`
`terminals) in the UE domain stay in an idle mode when not in use. (Ex. 1001, 1:10-
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`17, 1:36-38.) “In idle mode, the mobile terminal has no connection to the RAN;
`
`however, it is connected to the core network.” (Ex. 1001, 1:38-40.) When the RAN
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`wants to establish a connection to an idle UE, the core network initiates the
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`connection. (Ex. 1001, 1:21-24.)
`
`30. As one example embodiment, a network device within the core
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`network initiates a connection to an idle UE by transmitting a paging message to a
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`Node B. (Ex. 1001, 2:60-3:2.) The Node B receives the paging message and affixes
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`information to the message. (Ex. 1001, 2:60-3:2.) The paging message and the
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`affixed information are then broadcast to the UE, which periodically wakes up to
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`listen for the incoming paging message according to a DRX5 occasion. (See Ex.
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`1001, 3:7, 5:44-47, 6:56-58, FIG. 9.) When the UE receives the paging message,
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`the UE will read the paging message and then either connect to the network or
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`perform an instructed task. (Ex. 1001, 1:30-35.)
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`31. The paging message and information added by the Node B may, for
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`example, take the format shown in Figure 5 below. (Ex. 1001, 5:47-48.) In this
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`embodiment, the network-initiated paging message has the paging cause and a UE
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`identity known by the core network (e.g., an International Mobile Subscriber
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`Identity (IMSI) or a Temporary Mobile Subscriber Identity (TMSI)). (Ex. 1001,
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`5:26-34.) The Node B adds a radio network temporary identity (RNTI), which the
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`system uses to identify a UE or a group of UEs. (Ex. 1001, 3:7-10, 5:8-10, 5:32-34,
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`6:36-41, 7:26-29.) The Node B can also add an “SCCH index” to identify the
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`shared control channel that will carry the paging message. (Ex. 1001, 5:8-10, 7:26-
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`29.) Additionally, in this embodiment, the Node B adds allocated dedicated access
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`resources for the UE’s paging response. (Ex. 1001, 5:40-47.)
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`5 DRX stands for Discontinuous Reception, which allows UEs in a sleeping
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`mode to periodically wake up to receive data. (See Ex. 1001, 2:5-20.)
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`(Ex. 1001, FIG. 5.)
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`32. The Node B can send the elements shown in Figure 5 to a UE on
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`separate channels. The ’357 patent provides several examples of ways that a Node
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`B may divide the elements across various channels during transmission:
`
`The paging message may be conveyed to the UE using: (1)
`paging indicators mapped onto a paging indicator channel
`(PICH), and the paging message mapped onto separate paging
`channels (PCH), (2) paging indicators mapped onto a shared
`control channel (SCCH) and the paging message mapped onto
`separate paging channels (PCH); or (3) paging indicators mapped
`onto a shared control channel (SCCH) and the paging message
`mapped onto a downlink shared transport channel (SCH).
`(Ex. 1001, 3:21-29.)
`
`33. The ’357 patent calls the division of these elements across separate
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`channels “two-stage paging.” (Ex. 1001, 5:66-6:3.) According to an embodiment
`
`of two-stage paging in Figure 9 (reproduced below), each UE listens to a separate
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`control channel (e.g., SCCH) for a paging indicator: “The UEs listen to the
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`appropriate SCCH for paging indicators . . . .” (Ex. 1001, 6:56-58.) The UEs find
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`the paging indicator using a Group Id: “The UEs belonging to the user group
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`defined by the user group ID read the SCCH corresponding to the UEs’ user group
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`for their paging indicators.” (Ex. 1001, 6:39-41.) The SCCH will not only indicate
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`the existence of a paging message but also include the allocated resources for a
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`corresponding SCH channel: “The message part of SCCH indicates the resources
`
`allocated for a corresponding SCH channel, which carries the paging message(s)
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`(paging signal 2).” (Ex. 1001, 6:60-63.) If the UE hears a paging indicator on the
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`SCCH (e.g., its Group Id), “the UE reads the allocated SCH for its paging
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`message.” (Ex. 1001, 6:63-65.) This paging message can include the IMSI or
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`TMSI for the paged UE so that the UEs associated with the Group ID know
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`whether they are being paged. (See Ex. 1001, 5:26-31, 8:37-38.)
`
`(Ex. 1001, FIG. 9.)
`
`
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`34.
`
`Independent claim 11, which explicitly recites the paging process of
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`the invention, is reproduced below:
`
`A method performed by a wireless network, the method
`comprising:
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`U.S. Patent No. 8,682,357 B2
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`sending, by a first network device, a paging signal to a second
`network device;
`
`paging, by the second network device, a user equipment (UE)
`in idle mode by sending a message on a control channel, the
`message having an allocation of resources for a shared channel
`and a radio network temporary identity (RNTI) associated with
`a plurality of UEs including the UE;
`
`sending, by the second network device, a paging message in the
`allocated resources for the shared channel; and
`
`wherein the paging message includes an International Mobile
`Subscriber Identity (IMSI) or a Temporary Mobile Subscriber
`Identity (TMSI).
`
`(Ex. 1001, 12:18-32.)
`
`35. As claim 11 recites, a first network device (e.g., a device within the
`
`core network) sends a paging signal to a second network device (e.g., a Node B).
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`The second network device pages a UE by sending a message having both: (1) an
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`allocation of resources for a shared channel; and (2) an RNTI associated with a
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`plurality of UEs including the UE. The second network device also sends, in the
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`allocated resources, a paging message that includes an IMSI or a TMSI. Claims 30
`
`and 47 similarly recite these two messages.
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`V. PROSECUTION HISTORY OF THE ’357 PATENT
`
`36. U.S. Patent Application No. 11/416,865 (“’865 Application”) was
`
`filed on May 2, 2006 and led to the issuance of the ’357 patent on March 25, 2014.
`
`37. During the prosecution of the ’865 Application, the United States
`
`Patent and Trademark Office issued several office actions, rejecting the then-
`
`pending claims. (Ex. 1002, pp. 229-244, 288-304, 384-401, 448-63.) The applicant
`
`then cancelled the claims and added new claims. (Ex. 1002, pp. 138-49.) For the
`
`new claims, the applicant argued that the prior art did not disclose a message
`
`having an allocation of resources for a shared channel. (Ex. 1002, pp. 155-56.) The
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`applicant also argued that the prior art did not disclose “sending a paging message
`
`having an International Mobile Subscriber Identity (IMSI) or a Temporary Mobile
`
`Subscriber Identity (TMSI).” (Ex. 1002, p. 156.) Specifically, the applicant said:
`
`3GPP reference I, 3GPP reference II, 3GPP reference III, or Tenny,
`alone or [in] combination, do not at least teach or suggest sending or
`receiving a message on a control channel having an allocation of
`resources for a shared channel and a radio network temporary
`identity (RNTI) associated with a plurality of UEs including a UE.
`This “message” may initiate a paging process. The reference further
`do not at least teach or suggest then sending a paging message
`having an International Subscriber Identity (IMSI) or a Temporary
`Mobile Subscriber Identity (TMSI).
`(Ex. 1002, pp. 155-56 (emphasis in original).)
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`38. After the applicant’s argument that the prior art did not disclose an
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`allocation of resource for a shared channel and sending a paging message having
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`an IMSI or a TMSI, the examiner allowed the claims. (Ex. 1002, pp. 12-18.)
`
`VI. UNDERSTANDING OF CERTAIN CLAIM TERMS
`
`39.
`
`I have been asked to provide my opinion on the term “the message
`
`having an allocation of resources for a shared channel and a radio network
`
`temporary identity (RNTI) associated with a plurality of UEs.”
`
`A.
`
`“the message having an allocation of resources for a shared
`channel and a radio network temporary identity (RNTI) associated
`with a plurality of UEs”
`
`40. The claim term “the message having an allocation of resources for a
`
`shared channel and a radio network temporary identity (RNTI) associated with a
`
`plurality of UEs” appears in claims 1, 11, 21, 30, 39, and 47 of the ’357 patent. A
`
`POSITA would have understood this claim term to mean: the message having both
`
`(1) an allocation of resources for a shared channel and (2) a radio network
`
`temporary identity (RNTI) associated with a plurality of UEs.
`
`41.
`
`I understand that Dr. Madisetti did not explicitly construe this term
`
`but instead implicitly construed the term within a bracketed header of his
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`declaration. (See Ex. 1003, p. 49.) Subheading VIII.A.4.v.[11.4] is titled “[the
`
`message having an allocation of] a radio network temporary identity (RNTI)
`
`associated with a plurality of UEs including the UE.” (Ex. 1003, p. 49 (brackets in
`
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`original).) In other words, Dr. Madisetti apparently believes that the “allocation of”
`
`element applies to both “resources for the shared channel” and a “radio network
`
`temporary identity.”
`
`42.
`
`I disagree with Dr. Madisetti’s position that the “allocation of”
`
`element applies to the RNTI. The most straightforward reading of this claim
`
`language, especially in view of the specification, is that the message includes at
`
`least two elements: (1) an allocation of resources for a shared channel and (2) an
`
`RNTI associated with a plurality of UEs.
`
`43. The specification of the ’357 patent, in reference to Figure 5 (below),
`
`explains that for one embodiment a Node B can add both an RNTI and allocated
`
`dedicated resources. (Ex. 1001, 5:23-26, 5:42-47, 6:50-67.) Figure 5 shows the
`
`RNTI and allocated resources as two separate elements. (See Ex. 1001, FIG. 5.)
`
`(Ex. 1001, FIG. 5 (annotated).)
`
`
`
`44.
`
`In reference to another embodiment shown in Figure 9 (below), the
`
`’357 patent states that the message has an allocation of resources for a shared
`
`channel: “The message part of SCCH indicates the resources allocated for a
`
`corresponding SCH channel, which carries the paging message(s) (paging signal
`
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`2).” (Ex. 1001, 6:60-63.) The message in paging signal 1 not only indicates the
`
`allocated resources for a shared channel, but the message also includes an identifier
`
`associated with a plurality of UEs: “Each group [of UEs] is given a user group ID,
`
`as indicated in the SCCH ID field.” (Ex. 1001, 6:59-60.) The message therefore
`
`includes both (1) an allocation of resources for a shared channel and (2) an ID
`
`associated with a plurality of UEs.
`
`(Ex. 1001, FIG. 9.)
`
`
`
`45. The specification of the ’357 patent never says that the message
`
`includes “an allocation of an RNTI.”
`
`46. The prosecution history also indicates that the term “the message
`
`having an allocation of resources for a shared channel and a radio network
`
`temporary identity (RNTI) associated with a plurality of UEs” should be construed
`
`as the message having both: (1) an allocation of resources for a shared channel and
`
`(2) a radio network temporary identity (RNTI) associated with a plurality of UEs.
`
`During prosecution, the applicant stated: “3GPP reference I, 3GPP reference II,
`
`3GPP reference III, or Tenny, alone or [in] combination, do not at least teach or
`
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`suggest sending or receiving a message on a control channel having an allocation
`
`of resources for a shared channel and a radio network temporary identity (RNTI)
`
`associated with a plurality of UEs including a UE.” (Ex. 1002, pp. 155-56
`
`(emphasis in original).) The applicant emphasized in bold italics “an allocation of
`
`resources for a shared channel.” (See Ex. 1002, pp. 155-56.) The applicant did not
`
`refer to the “allocation” claim term in