Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 10
`Entered: March 18, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC.; T-MOBILE US, INC.;
` SPRINT SPECTRUM L.P.; SPRINTCOM, INC.
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01775
`Patent 8,682,357 B2
`____________
`
`
`
`Before DAVID C. MCKONE, MINN CHUNG, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 10
`Entered: March 18, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC.; T-MOBILE US, INC.;
` SPRINT SPECTRUM L.P.; SPRINTCOM, INC.
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01775
`Patent 8,682,357 B2
`____________
`
`
`
`Before DAVID C. MCKONE, MINN CHUNG, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-01775
`Patent 8,682,357 B2
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`A. Background
`
`I. INTRODUCTION
`
`T-Mobile USA, Inc., T-Mobile US, Inc., Sprint Spectrum L.P., and
`
`SprintCom, Inc. (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`to institute an inter partes review of claims 11–14, 19, 30–33, 38, 47–50,
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`and 54 of U.S. Patent No. 8,682,357 B2 (Ex. 1001, “the ’357 patent”).
`
`Petitioner indicates that Sprint Corporation is a real party in interest. Pet. 2.
`
`Intellectual Ventures II LLC (“Patent Owner”) filed a Preliminary Response
`
`(Paper 9, “Prelim. Resp.”). Upon consideration of the Petition and
`
`Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that there is
`
`not a reasonable likelihood that Petitioner would prevail with respect to at
`
`least one challenged claim. Accordingly, we do not institute an inter partes
`
`review of the ’357 patent.
`
`
`
`B. Related Matters
`
`The parties indicate that the ’357 patent has been asserted in
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`Intellectual Ventures II LLC v. T-Mobile USA, Inc., Case No. 2:17-cv-661-
`
`JRG (E.D. Tex.), and Intellectual Ventures II LLC v. Sprint Spectrum L.P.,
`
`Case No. 2:17-cv-662-JRG (E.D. Tex.). Pet. 3; Paper 8, 1. The ’357 patent
`
`also is being challenged currently in Ericsson Inc. v. Intellectual Ventures II
`
`LLC, Case IPR2018-01380 (PTAB). Pet. 3; Paper 8, 1.
`
`
`
`C. Evidence Relied Upon
`
`Petitioner relies on the following prior art:
`
`Ex. 1009 (“Montojo”) US 8,914,048 B2 Dec. 16, 2014
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`
`
`
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`
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`(filed Mar. 1, 2007)
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`2
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`Patent 8,682,357 B2
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`Ex. 1010 (“Lee”)1 US 8,135,420 B2
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`
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`Mar. 13, 2012
`(filed Jan. 5, 2007)
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`Petitioner also relies on the Declaration of Martin G. Walker, Ph.D.
`
`(Ex. 1002).
`
`
`
`D. The Asserted Ground
`
`Petitioner alleges that claims 11–14, 19, 30–33, 38, 47–50, and 54
`
`would have been obvious, under 35 U.S.C. § 103, over Lee and Montojo.
`
`Pet. 14.
`
`
`
`E. The ’357 Patent
`
`The ’357 patent is directed to a method of paging user equipment
`
`(“UE”), such as a mobile terminal, within a wireless network. Ex. 1001,
`
`1:10–12, 30–31. Figure 1, reproduced below, depicts a cellular
`
`communication system according to embodiments of the invention. Id. at
`
`4:40–41.
`
`
`1 Petitioner refers to this reference as “LG Patent,” while Patent Owner
`refers to it as “Lee.” We follow the convention of referring to the reference
`by its first named inventor, i.e., “Lee.”
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`Patent 8,682,357 B2
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`Figure 1 is a diagram of a cellular communication network including “a UE
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`domain, a radio access network (RAN) domain, and a core network
`
`domain.” Id. at 3:52–53, 4:41–43. Figure 2 of the patent, reproduced below,
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`illustrates an exemplary wireless network comprising an access gateway
`
`(aGW, 118), various Node-B base stations each servicing a cell, and UE
`
`
`
`(110).
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`Figure 2 is a diagram of a network-initiated connection establishment. Id. at
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`
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`3:54–55.
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`According to the ’357 patent, to preserve power and network
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`resources, UEs (e.g., mobile terminals) in the UE domain, when not in use,
`
`stay in one of two different types of “sleep mode.” Id. at 1:10–17, 1:36–53.
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`“In idle mode, the mobile terminal has no connection to the RAN; however,
`
`it is connected to the core network.” Id. at 1:38–40. In “dormant state,” the
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`UE is connected to the RAN. Id. at 1:40–41. When the RAN wants to
`
`establish a connection to an idle UE, the core network initiates the
`
`connection via a paging process. Id. at 1:21–29. A network device within
`
`the core network (the aGW) initiates the connection by transmitting a paging
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`Patent 8,682,357 B2
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`message to a Node-B. Id. at 2:60–3:2. The Node-B receives the paging
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`message and affixes information to the message. Id. In an embodiment, the
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`affixed information includes a “cell-specific radio network temporary
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`identity” (“RNTI”) and “index(es) to one or a set of shared control channels
`
`(SCCHs).” Id. at 2:66–3:2. The Node-B then broadcasts the modified
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`message to the UE, which periodically wakes up to listen for an incoming
`
`paging message. Id. at 3:7, 6:50–65, Fig. 9. In particular, the UE uses
`
`Discontinuous Reception (DRX) in sleep mode to monitor the paging signals
`
`at one paging occasion per DRX cycle. Id. at 2:5–12.
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`The Node-B may send the paging message to a UE on separate
`
`channels. Id. at 3:21–3:30. In particular, the ’357 patent describes examples
`
`of ways that a Node-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).
`
`Id. The ’357 patent calls the division of these elements across separate
`
`channels “two-stage paging.” Id. at 5:66–6:3. According to an embodiment
`
`of two-stage paging shown below in Figure 9, each UE listens to a separate
`
`control channel (e.g., SCCH) for a paging indicator: “The UEs listen to the
`
`appropriate SCCH for paging indicators . . . .” Id. at 6:56–58.
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`Figure 9 is a diagram of a data structure for mapping a paging message.
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`Id. at 3:65–67.
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`The SCCH will indicate not only the existence of a paging message
`
`but also the allocated resources for a corresponding SCH channel: “The
`
`message part of SCCH indicates the resources allocated for a corresponding
`
`SCH channel, which carries the paging message(s) (paging signal 2).” Id. at
`
`6:60–63. If the UE detects a paging indicator on the SCCH (e.g., its Group
`
`Id), “the UE reads the allocated SCH for its paging message.” Id. at 6:63–
`
`65. When the UE receives the paging message, it will read the paging
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`message and then either connect to the network or perform an instructed
`
`task. Id. at 1:30–35.
`
`According to the ’357 patent:
`
`Idle state UEs are not known at the cell level because they are
`generally not connected to the RAN. Therefore, the UE would
`not have a c-RNTI or SCCH specified for its use in shared
`channel operation. However, the level of connection to the
`network may have two definitions. In one definition, the UE
`has no connection to the RAN, but it is connected to the core
`network. The network does not store UE capability or security
`information regarding Idle mode UEs (this is the definition used
`for idle mode in conventional systems).
`
`According to the second definition of the idle state, the UE is
`connected to the core network and has limited connection to the
`RAN. With this limited connection, however, the UE does not
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`IPR2018-01775
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`have c-RNTI, SCCH or radio resources allocated.
`Nevertheless, the UE is registered within the network, in which
`case the network would have a UE context (such as UE
`capabilities) stored in the network.
`
`Id. at 8:7–22.
`
`Figure 13 is reproduced below:
`
`Figure 13 is a signaling flow diagram of a network–initiated establishment in
`
`the case of an idle mode UE with limited connection to the RAN. Id. at
`
`
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`8
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`IPR2018-01775
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`4:11–12, 8:33–36. A paging message indicating, with a UE identifier such
`
`as IMSI, which UE has been paged, and including a c-RNTI and SCCH
`
`allocation index, is sent from the aGW to a Node B, which broadcasts it to
`
`the cell. Id. at 8:37–42. After the UE receives the page, it sends a paging
`
`acknowledgement to the Node B, which conveys it to the aGW. Id. at 8:42–
`
`45. When the network receives the paging acknowledgment, the connection
`
`is established between the UE and the network for shared channel operation.
`
`Id. at 8:49–51. The c-RNTI and SCCH index signaled with the paging
`
`message is used by the UE as the shared channel ID. Id. at 8:51–53.
`
`Claim 11, reproduced below, is illustrative of the claimed subject
`
`matter:
`
` A method performed by a wireless network, the
`11.
`method comprising:
`
`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).
`
`
`
`
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`IPR2018-01775
`Patent 8,682,357 B2
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`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`For petitions filed before November 13, 2018, we interpret claims of
`
`an unexpired patent using the broadest reasonable construction in light of the
`
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b)
`
`(2018)2; Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016).
`
`Neither party proposes an express construction of any claim term. Pet. 13–
`
`14; Prelim. Resp. 14–15. We need not construe any terms expressly to
`
`resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the
`
`context of an inter partes review).
`
`
`
`B. Prior Art Status of Lee and Montojo
`
`The filing date for the ’357 patent is May 2, 2006, earlier than the
`
`filings dates of both Lee (Jan. 5, 2007) and Montojo (Mar. 1, 2007).
`
`Recognizing this, Petitioner contends that both Lee and Montojo should be
`
`given the filing dates of provisional applications to which they claim the
`
`benefit. Pet. 15–30. The relevant statutory provision states:
`
`
`2 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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`An application for patent filed under section 111(a) or section
`363 of this title for an invention disclosed in the manner
`provided by the first paragraph of section 112 of this title in a
`provisional application filed under section 111(b) of this title,
`by an inventor or inventors named in the provisional
`application, shall have the same effect, as to such invention, as
`though filed on the date of the provisional application filed
`under section 111(b) of this title, if the application for patent
`filed under section 111(a) or section 363 of this title is filed not
`later than 12 months after the date on which the provisional
`application was filed and if it contains or is amended to contain
`a specific reference to the provisional application.
`
`35 U.S.C. § 119(e)(1) (2006).3
`
`“A reference patent is only entitled to claim the benefit of the filing
`
`date of its provisional application if the disclosure of the provisional
`
`application provides support for the claims in the reference patent in
`
`compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). “A provisional application’s
`
`effectiveness as prior art depends on its written description support for the
`
`claims of the issued patent of which it was a provisional.” Id. at 1382.
`
`Petitioner bears the burden to prove that Lee and Montojo are entitled to the
`
`
`3 We cite to the pre-AIA version of § 119, as both Lee and Montojo were
`filed before September 16, 2012. See Leahy-Smith America Invents Act,
`Public Law 112-29, sec. 15(b), 125 Stat. 284 (2011).
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`11
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`Patent 8,682,357 B2
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`filing date of the provisional applications. See Dynamic Drinkware, 800
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`F.3d at 1378, 1380.4
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`Sufficiency of a specification’s written description is a fact question,
`
`and “the test for sufficiency is whether the disclosure of the application
`
`relied upon reasonably conveys to those skilled in the art that the inventor
`
`had possession of the claimed subject matter as of the filing date.” Ariad
`
`Pharm., Inc. v. Mass. Inst. of Tech., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`
`(en banc). “And while the description requirement does not demand any
`
`particular form of disclosure, or that the specification recite the claimed
`
`invention in haec verba, a description that merely renders the invention
`
`obvious does not satisfy the requirement.” Id. at 1352 (internal citations
`
`omitted). “Assessing ‘possession as shown in the disclosure’ requires ‘an
`
`objective inquiry into the four corners of the specification.’” Novozymes A/S
`
`v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013)
`
`(quoting Ariad, 598 F.3d at 1351).
`
`
`
`1. Overview of Lee
`
`Lee describes a paging procedure for finding a cell location of a UE in
`
`idle mode within a tracking area (TA). Ex. 1011, 6:14–17. Because the cell
`
`
`4 Dynamic Drinkware explained that Petitioner bears the initial burden of
`production, which shifts to Patent Owner to argue or produce evidence that
`Lee and Montojo are not prior art. 800 F.3d at 1379–80. Nevertheless, as
`Petitioner recognizes, it is clear on the faces of the ’357 patent, Lee, and
`Montojo that Lee and Montojo are not prior art unless they are entitled to the
`benefit of earlier provisional applications. Ex. 1001, [22]; Ex. 1009, [22],
`[60]; Ex. 1011, [22], [60]; Pet. 15–16, 23. Any burden of production on
`Patent Owner is satisfied and we evaluate whether Petitioner has met its
`burden of persuasion.
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`does not allocate a short UE identity to a UE in idle mode, the paging
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`message includes a long UE identity such as IMSI or TMSI. Id. at 6:17–20.
`
`The UE in idle mode monitors a paging channel (PCH) using the long UE
`
`identity. Id. at 6:38–40.
`
`In contrast, Lee describes using the DRX procedure for contacting a
`
`UE in connected mode. Id. at 6:22–29. For a UE in connected mode, a
`
`short UE identity is included in an L1/2 control channel or paging indication
`
`channel (PICH). Id. at 6:30–37. A UE in connected mode monitors the
`
`L1/2 control information using the short UE identity within a DRX cycle. If
`
`the UE is scheduled, an e-Node B (eNB) will insert the short UE identity of
`
`the UE into the L1/2 control information including scheduling information
`
`with a pre-defined cycle. Id. at 6:40–45. According to Lee, “[i]n one
`
`preferred embodiment of the present invention, the paging indication
`
`information for a UE in the idle mode and a UE in the RRC connection
`
`mode can be included in the L1/2 control channel to be transmitted using a
`
`short UE identity. In this case, the UEs monitor the L1/2 channel
`
`notwithstanding the state of the UEs.” Id. at 6:65–7:3. As Petitioner notes
`
`(Pet. 32), Lee does not explain in detail how the UE in idle mode can be
`
`contacted using less than the long UE identity.
`
`
`
`2. Prior Art Status of Lee
`
`Petitioner asserts that Lee is entitled to the benefit of three
`
`provisionals, 60/757,063 (Ex. 1012, filed Jan. 5, 2006, “the ’063
`
`provisional”), 60/783,250 (Ex. 1013, filed Mar. 16, 2006, “the ’250
`
`provisional”), and 60/784,680 (Ex. 1014, filed Mar. 21, 2006, “the ’680
`
`provisional”). Pet. 15–16. As noted above, Petitioner must show that the
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`provisionals provide written description support for at least one claim of
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`Lee. See Dynamic Drinkware, 800 F.3d at 1382. Petitioner (Pet. 17)
`
`contends that the provisionals provide support for claim 8 of Lee,
`
`reproduced below:
`
` A method of transmitting a paging message at a
`8.
`network in a wireless communication system, the method
`comprising:
`
`transmitting, to a User Equipment (UE), paging
`indication information including UE identification
`information and scheduling information for a
`paging channel (PCH) on which a paging message
`is transmitted, the scheduling information
`including allocation information indicating a time-
`frequency region through which the paging
`message is transmitted; and
`
`transmitting the paging message through the time-
`frequency region indicated by the paging
`indication information.
`
`Each of the three provisional applications is itself a collection of
`
`documents, specifically, documents that appear to be LG submissions to
`
`working groups of standards bodies such as 3rd Generation Partnership
`
`Project (3GPP). Petitioner does not contend that a single one of the three
`
`provisionals, by itself, provides written description support for claim 8.
`
`Rather, Petitioner identifies portions of each (and separate documents within
`
`each) that allegedly map to different limitations of claim 8, as explained
`
`below.
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`Petitioner contends that a document within the ’680 provisional
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`teaches the preamble of claim 8. Pet. 17–19. 5 The cited portion of the ’680
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`provisional is an LG Electronics submission, titled “Discussion on LTE
`
`Paging and DRX,” to an unidentified working group. Ex. 1014, 13. This
`
`document “discusses how to specify Paging and DRX procedure and PCH
`
`channel in LTE.” Id. According to the submission, “[t]he paging procedure
`
`is applied only to a UE in idle mode.” Id. Nevertheless, shortly after, the
`
`submission states that “[t]he DRX procedure for active mode is used by
`
`eNodeB to offer efficient UE battery power management,” and “[t]he paging
`
`procedure is applied only to a UE in active mode.” Id. Here, the submission
`
`appears to be using “active mode” in a manner similar to “dormant state,” as
`
`used in the ’357 patent (discussed above), and as distinguished from “idle
`
`mode,” which is distinguished in the ’357 patent from “dormant state.”
`
`Petitioner relies on both of these statements to show disclosure of the
`
`preamble of claim 8, but does not explain the apparent contradiction
`
`between these two statements. In context, it is the paging procedure that is
`
`used only in the idle mode, while the DRX procedure is applied only to a UE
`
`in active mode, and, thus, the second statement appears to be a typographical
`
`error. Ex. 1014, 13–14.
`
`
`5 Petitioner cites to Exhibit 1013, the ’250 provisional, at page 13, which is a
`portion of an untranslated foreign language document. Pet. 18. Patent
`Owner contends that this violates our rules and that we should not consider
`this evidence. Prelim. Resp. 17–19 (citing 37 C.F.R. § 42.63(b)).
`Petitioner’s citations to Exhibit 1013 on page 18 of the Petition are obvious
`typographical errors (just a few of the many citation errors throughout the
`Petition). The material cited, including the quotations, comes from
`Exhibit 1014, the ’680 provisional, at pages 13 and 14.
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`Petitioner argues that “in the idle mode procedure, the aGW initiates
`
`the page by sending the paging message to the eNodeB, which in turn,
`
`transmits it to the applicable UE.” Pet. 18. This is not supported either by
`
`the cite Petitioner provides (Ex. 1013, 13) or by the most probable intended
`
`cite (Ex. 1014, 13–14), but does not appear to be inconsistent with Exhibit
`
`1014. Petitioner further argues that “in the idle mode, ‘eNode B can lead a
`
`UE with DRX to wake up by indicating the short UE.’” Pet. 18. Here,
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`Petitioner misrepresents a quote from the ’680 provisional, at 13, which is
`
`discussing waking up an active UE, not an idle UE. Ex. 1014, 13. The ’680
`
`provisional describes “[a] method of transmitting a paging message at a
`
`network in a wireless communication system,” as recited in claim 8, but only
`
`with respect to a UE in idle mode, and not a UE in active mode.
`
`Claim 8 further recites “transmitting to a User Equipment (UE),
`
`paging indication information and scheduling information for a paging
`
`channel (PCH) on which a paging message is transmitted.” Petitioner
`
`contends that this is disclosed by the ’680 provisional’s description of a UE
`
`in active mode discontinuously monitoring a DRX signal sent on the
`
`downlink (DL) channel. Pet. 19 (citing Ex. 1014, 13–14). The ’680
`
`provisional describes, “[i]f an active UE with DRX is scheduled, eNode B
`
`will insert the short identity of the UE into L1/2 control information
`
`including scheduling information according to the set cycle.” Ex. 1014, 14.
`
`This scheduling information is for the Downlink Shared Channel (DL-SCH),
`
`not the Paging Channel (PCH). Id.
`
`Petitioner acknowledges that “[c]laim 8 of the LG Patent also requires
`
`that the indicated paging message be sent on ‘a paging channel (PCH),’” and
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`argues that a skilled artisan would have understood a paging channel to
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`include “a proposed transport channel supporting DRX, such as that
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`described in the cited 3GPP specification.” Pet. 19–20. Here, Petitioner
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`appears to argue that DL-SCH, although titled differently, nevertheless is a
`
`paging channel. See also id. at 21 (“The LG Provisionals disclose sending to
`
`the UE a paging indicator containing a short UE ID and scheduling
`
`information on where to find the paging message on the PCH or the ‘DL/
`
`UL SCH.’”).
`
`Patent Owner argues that, even if a short identity could be used to
`
`schedule resources for DL-SCH, that would not show scheduling
`
`information “for a paging channel (PCH),” as recited in claim 8. Prelim.
`
`Resp. 19. According to Patent Owner, “[w]hereas an SCH is a downlink or
`
`uplink shared transport channel, a PCH is a specific transport channel that
`
`carries a paging message.” Id. at 19–20 (citing Ex. 1006, 11–14; Ex. 2003,
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`13–14, 84–90).
`
`Petitioner refers to Exhibit 1006, at page 12, as “the cited 3GPP
`
`specification,” and argues that it depicts only the PCH and the DL-SCH as
`
`having support for DRX. Pet. 19–20. Exhibit 1006, page 12, does not
`
`support Petitioner’s argument and, indeed, appears to be another
`
`typographical error. If Petitioner intended to cite page 11, that page shows
`
`only PCH, not DL-SCH, as having support for DRX. Petitioner also cites to
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`Dr. Walker’s testimony. Pet. 19–20 (citing Ex. 1002 ¶¶ 88–91).
`
`Dr. Walker, however, does not testify that DL-SCH is “a paging channel
`
`(PCH),” as recited in claim 8.
`
`Petitioner (Pet. 20) also cites to a document in the ’063 provisional
`
`that provides:
`
`17
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`
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`IPR2018-01775
`Patent 8,682,357 B2
`
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`If PCH channel always uses fixed radio resource i.e. frequency
`and time, E-NB has less flexibility of SCH scheduling. Thus,
`we could consider that E-NB schedules PCH channel as well as
`SCH channel within a UE specific paging occasion of every
`paging DRX cycle. A paging indication within the paging
`occasion could inform the UE of whether or not a paging
`message for the UE is scheduled within the paging occasion.
`Also, the paging indication could signal scheduled
`time/frequency of the paging message like the SCH scheduling.
`
`Ex. 1012, 29.6 Petitioner does not explain the relevance of this disclosure, or
`
`why separate documents from two provisionals together should constitute a
`
`single written description of claim 8. In any case, the ’063 provisional does
`
`not support an argument that DL-SCH is a paging channel. Rather,
`
`consistent with Patent Owner’s argument (Prelim. Resp. 19–20), it
`
`highlights that DL-SCH and PCH are different channels with different
`
`purposes. Petitioner (Pet. 20) also cites to page 44 of the ’063 provisional,
`
`which is a document different from that of page 29 of the ’063 provisional.
`
`Page 44 provides: “For the reason above, a benefit of transferring pagings
`
`on SCH is not so clear. Thus, it is proposed to specify a paging channel
`
`different from SCH i.e. PCH (Paging Channel). That means a logical
`
`channel PCCH is mapped to a transport channel PCH, rather than SCH.”
`
`Ex. 1012, 44. This additionally undercuts Petitioner’s apparent argument
`
`that DL-SCH is a paging channel, as it expressly distinguishes between PCH
`
`and SCH.
`
`
`6 Petitioner cites to Ex. 1014, 13. Nevertheless, Petitioner quotes a portion
`of Ex. 1012, at 29, reproduced above. Thus, we assume that Petitioner’s
`citation is a typographical error.
`
`18
`
`
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`IPR2018-01775
`Patent 8,682,357 B2
`
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`Petitioner also argues that the provisionals disclose another
`
`embodiment in which an idle mode UE receives on a Paging Indicator
`
`Channel (PICH) a short UE ID, while the full UE ID is scheduled on the DL
`
`data channel and, accordingly, they “describe sending an indicator on a fast
`
`control channel and the paging message on a ‘paging channel’ that is a
`
`downlink shared data channel.” Pet. 20 (citing Ex. 1014, 13; Ex. 1002 ¶ 90).
`
`As explained above, Petitioner does not show that a downlink shared data
`
`channel (presumably DL-SCH) is a Paging Channel (PCH). Dr. Walker’s
`
`testimony, which is directed to disclosure in the ’250 provisional not cited
`
`by Petitioner, does not appear to be relevant to Petitioner’s argument.
`
`Ex. 1002 ¶ 90.
`
`In sum, the ’680 provisional’s description of transmitting a short ID to
`
`a UE in active mode, indicating scheduling on DL-SCH, does not disclose
`
`transmitting to the UE a paging indication with scheduling information for
`
`PCH. Thus, Petitioner’s evidence does not support a finding that the
`
`provisionals provide written description support for “transmitting to a User
`
`Equipment (UE), paging indication information and scheduling information
`
`for a paging channel (PCH) on which a paging message is transmitted,” as
`
`recited in claim 8 of Lee.
`
`Claim 8 also recites “the scheduling information including allocation
`
`information indicating a time-frequency region through which the paging
`
`message is transmitted.” Petitioner cites to a document in the ’063
`
`provisional to support an argument that “[t]he LG Provisionals suggest
`
`sending a paging indicator during the paging occasion on the DRX cycle
`
`with scheduling information to inform the target UE at what time-frequency
`
`19
`
`
`
`IPR2018-01775
`Patent 8,682,357 B2
`
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`region on the shared channel (SCH) the UE can locate the paging message.”
`
`Pet. 21–22. In particular, the ’063 provisional states:
`
`If PCH channel always uses fixed radio resource, i.e. frequency
`and time, E-NB has less flexibility of SCH scheduling. Thus,
`we could consider that E-NB schedules PCH channel as well as
`SCH channel within a UE specific paging occasion of every
`paging DRX cycle. . . . [T]he paging indication could signal
`scheduled time/frequency of the paging message like SCH
`scheduling.
`
`Ex. 1012, 29.
`
`Patent Owner argues that even if the various documents in the
`
`provisionals disclose each limitation of claim 8 individually, Petitioner has
`
`not shown how they are disclosed as arranged in the same manner as in
`
`claim 8. Prelim. Resp. 21. We agree with Patent Owner. Assuming
`
`Petitioner is correct, and that the ’063 provisional shows scheduling
`
`information including allocation information indicating a time-frequency
`
`region through which the paging message is transmitted, Petitioner has not
`
`shown persuasively that the ’063 provisional is part of the same disclosure
`
`as the ’680 provisional, or that the particular example Petitioner identifies in
`
`the ’063 provisional is part of the same example or embodiment as it
`
`identifies in the ’680 provisional. See Novozymes, 723 F.3d at 1349 (finding
`
`a lack of priority to an earlier application when “the [earlier] application
`
`provides formal textual support for each individual limitation recited in the
`
`claims of the [later] patent, it nowhere describes the actual functioning”
`
`species of the claims and provided no “‘blaze marks’ that would lead an
`
`ordinarily skilled investigator toward such a species among a slew of
`
`competing possibilities”). Thus, Petitioner has not shown that the ’063
`
`provisional describes “the scheduling information including allocation
`
`20
`
`
`
`IPR2018-01775
`Patent 8,682,357 B2
`
`
`information indicating a time-frequency region through which the paging
`
`message is transmitted” in the context of the same embodiment in the ’680
`
`provisional in which it purportedly finds other limitations of claim 8.
`
`For these reasons, Petitioner is not likely to meet its burden to show
`
`that the ’063, ’250, and ’680 provisionals provide written description
`
`support for claim 8 of Lee. Petitioner has not attempted to map these
`
`provisional disclosures to any other claim of Lee. Accordingly, Petitioner is
`
`not likely to show that Lee is entitled to the benefit of the filing dates of
`
`those provisionals or that Lee is prior art to the ’357 patent. Thus, there is
`
`not a reasonable likelihood that Petitioner would prevail with respect to
`
`claims 11–14, 19, 30–33, 38, 47–50, and 54 as obvious over Lee and
`
`Montojo.
`
`
`
`3. Overview of Montojo
`
`Montojo describes various techniques for paging UEs in a wireless
`
`communication system. Ex. 1009, 1:12–14. In one example, UEs are
`
`mapped in a pseudo-random manner to specific paging occasions based on a
`
`hash of their UE identities. Id. at 8:19–22. Multiple shared down-link
`
`control channels (SDCCH) can be used to send paging indicators. Id. at
`
`8:24–25. According to Montojo, “[a] goal of the hashing is to have UEs
`
`with the same least significant bit (LSB) portion of the UE IDs to be hashed
`
`to different SDCCHs so that a paging indicator at a given time can target a
`
`single UE or a small number of UEs.” Id. at 8:31–34.
`
`Montojo describes another example in which “the UE identification
`
`information comprises a partial UE ID, e.g., a predetermined number of
`
`LSBs of a UE ID, e.g., RNTI,” and notes that, “[i]n general, any portion of
`
`21
`
`
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`IPR2018-01775
`Patent 8,682,357 B2
`
`
`the UE ID and any number of bits may be used for the partial UE ID.” Id. at
`
`8:42–45. “The UEs may be mapped to paging occasions such that no two
`
`UEs with the same partial UE ID are mapped to the same paging occasion.”
`
`Id. at 8:51–54. “For example, a hash function may map UEs to paging
`
`occasions based on their UE IDs but avoid mapping two UEs with the same
`
`partial UE ID to the same paging occasion.” Id. at 8:59–63.
`
`
`
`4. Prior Art Status of Montojo
`
`Petitioner asserts that Montojo is entitled to the benefit of provisional
`
`application 60/795,675 (Ex. 1010, filed Apr. 28, 2006, “the ’675
`
`provisional”). Pet. 23. As noted above, Petitioner must show that the ’675
`
`provisional provides written description support for at least one claim of
`
`Montojo. See Dynamic Drinkware, 800 F.3d at 1382. Petitioner (Pet. 23)
`
`contends that the ’675 provisional provides written description support for
`
`claim 10 of Montojo, reproduced below:
`
`10.
`
` A method comprising:
`
`sending a paging indicator on a shared control channel
`distinct from a paging indicator channel (PICH) to
`a user equipment (UE);
`
`receiving channel quality information from the UE;
`
`selecting a modulation and coding scheme or a transmit
`power based on the received channel quality
`information; and
`
`sending a page message on
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