IPR2020-00250 (9,265,063)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Ericsson Inc.
`
`Petitioner
`
`v.
`
`Electronics and Telecommunications Research Institute
`
`Patent Owner
`
`
`Patent No. 9,265,063
`Filing Date: June 21, 2007
`Issue Date: February 16, 2016
`
`Title: METHOD TO TRANSMIT DOWNLINK SIGNALNG MESSAGE ON
`CELLULAR SYSTEMIS FOR PACKET TRANSMISSION AND METHOD FOR
`RECEIVING THE MESSAGE
`
`Inter Partes Review No. IPR2020-00250
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
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`IPR2020-00250 (9,265,063)
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`TABLE OF CONTENTS
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`Page
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`PRELIMINARY STATEMENT ..................................................................... 1
`I.
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 2
`II.
`III. TECHNOLOGICAL BACKGROUND .......................................................... 2
`A.
`The ’063 Patent ..................................................................................... 3
`B.
`Challenged Claim .................................................................................. 4
`C.
`Prosecution History .............................................................................10
`D.
`Claimed Priority Date ..........................................................................20
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 20
`V.
`CLAIM CONSTRUCTION .......................................................................... 20
`VI. PRIOR ART ................................................................................................... 23
`A.
`R2-071562 ...........................................................................................26
`B.
`Jen and Jen Provisional .......................................................................28
`C.
`Park ......................................................................................................33
`D.
`3GPP TS 36.300 v.1.0.0 (2007-03) .....................................................36
`VII. THE CHALLENGED CLAIM IS UNPATENABLE ................................... 38
`A. Ground 1: R2-071562 in combination with 3GPP TS 36.300 v.1.0.0
`(2007-03) and Park Renders Obvious Claim 3. ..................................38
`Ground 2: R2-071562 in combination with 3GPP TS 3GPP TS 36.300
`v.1.0.0 (2007-03) and Jen Renders Obvious Claim 3. ........................60
`Ground 3: Jen in combination with 3GPP TS 36.300 v.1.0.0 (2007-03)
`Renders Obvious Claim 3 ...................................................................62
`VIII. CONCLUSION .............................................................................................. 76
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................. 76
`A.
`Real Parties-In-Interest ........................................................................76
`B.
`Related Matters ....................................................................................76
`CERTIFICATION UNDER 37 C.F.R. §42.24(D) ........................................ 77
`X.
`XI. PAYMENT OF FEES ................................................................................... 77
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`C.
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`B.
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`IPR2020-00250 (9,265,063)
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`XII. TIME FOR FILING PETITION.................................................................... 77
`XIII. GROUNDS FOR STANDING ...................................................................... 77
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`IPR2020-00250 (9,265,063)
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Cisco Sys., Inc. v. Capella Photonics, Inc.,
`IPR2014-01276, Paper No. 40 (P.T.A.B. Feb. 17, 2016) ................................... 29
`Dow Chem. Co. v. Sumitomo Chem. Co.,
`257 F.3d 1364 (Fed. Cir. 2001) .......................................................................... 20
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 29
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) .......................................................................... 29
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 20, 21
`Polaris Indus., Inc. v. Arctic Cat Inc.,
`IPR2016-01713, Paper 9 (P.T.A.B. Feb. 27, 2017) ............................................ 29
`Statutes
`35 U.S.C. .................................................................................................................... 2
`35 U.S.C. 102(a) ...................................................................................................... 26
`35 U.S.C. 102(e) ...................................................................................................... 10
`35 U.S.C. 103(a) .................................................................................... 10, 12, 13, 14
`35 U.S.C. § 102(a) ............................................................................................. 20, 36
`35 U.S.C. § 102(e) ....................................................................................... 29, 31, 33
`35 U.S.C. §112 ................................................................................................... 29, 30
`35 U.S.C. § 119(e)(1) ............................................................................................... 29
`35 U.S.C. §§ 311-319................................................................................................. 1
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`IPR2020-00250 (9,265,063)
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`Other Authorities
`37 C.F.R. § 42.100(b) .............................................................................................. 20
`37 C.F.R. § 42.100 et seq. .......................................................................................... 1
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`IPR2020-00250 (9,265,063)
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`Exhibit
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`LIST OF EXHIBITS
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`Description
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`1001
`1002
`1003
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`1004
`1005
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`1006
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`1007
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`1008
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`1009
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`1010
`1011
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`1012
`1013
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`
`
`U.S. Patent No. 9,265,063 to Kim (“the ’063 Patent”)
`CV of Dr. Sumit Roy
`Declaration of Sumit Roy, Ph.D in Support of Petition for Inter
`Partes Review
`U.S. Patent No. 9,265,063 Prosecution History
`Tdoc R2-071562, NTT DoCoMo, Inc. contribution to 3GPP titled
`“Text proposal on random access procedures.” (“R2-071562”)
`3GPP TS 36.300 v.1.0.0 (2007-03) Technical Specification for the
`3rd Generation Partnership Project (“3GPP TS 36.300”)
`U.S. Patent Application Publication No. 2007/0047493 A1 titled
`“Method of Transmitting and Receiving Radio Access Information
`in a Wireless Mobile Communications System” to Park et al.
`(“Park”)
`United States Patent Application Publication No. 2008/0233941 A1
`titled “Method and Apparatus for Handling Random Access
`Procedure in a Wireless Communications System” to Yu-Chih Jen
`(“Jen”)
`United States Provisional Application No. 60/895,987 (“Jen
`Provisional”)
`Declaration of Craig Bishop (“Bishop Declaration”)
`Sol IP, LLC v. AT&T Mobility First Amended Complaint for Patent
`Infringement
`Sol IP, LLC v. AT&T Mobility Joint Claim Construction Brief
`Sol IP, LLC v. AT&T Mobility Preliminary Constructions on
`December 4, 2019
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`
`
`
`
`v
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`I.
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`IPR2020-00250 (9,265,063)
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`
`PRELIMINARY STATEMENT
`Petitioner Ericsson Inc. (“Ericsson”) respectfully requests inter partes review
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`and cancellation of claim of U.S. Patent 9,265,063 (“the ’063 Patent”) under 35
`
`U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’063 Patent relates to the wireless communication between cellular
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`devices and base stations, and in particular, a concept called random access. Patent
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`Owner Electronics and Telecommunications Research Institute, by and through its
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`licensing agent Sol IP, LLC (collectively “Patent Owner”), allege that claim 3 of the
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`’063 Patent is essential to LTE Release 8.1 Ex. 1011, ¶ 322. However, ETRI did not
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`contribute what it now claims as its invention to the LTE standard. Instead, all of
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`the concepts claimed in the ’063 Patent were developed during the 4G LTE standard-
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`setting process by others and included in printed publications that were submitted to
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`the standard-setting body and made publically available via an email reflector. Ex.
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`1010, ¶¶ 24-47. Shortly thereafter, ETRI filed a patent application on these ideas in
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`South Korea. Ex. 1001, p. 1.
`
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`1 Petitioner disagrees. Nevertheless, the invalidity analysis herein is based on
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`Patent Owner’s allegation that practicing the LTE Release 8 standard infringes the
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`Challenged Claims.
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`1
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`IPR2020-00250 (9,265,063)
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`This Petition, supported by the Declaration of Dr. Sumit Roy, explains why
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`there is a reasonable likelihood that claim 3 of the ’063 Patent is unpatentable as
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`obvious to a person of ordinary skill in the art (“POSITA”) in view of the prior art
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`cited herein, the knowledge and understanding of a POSITA, and the ’063 Patent
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`itself. Accordingly, claim 3 of the ’063 Patent should be cancelled.
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`II.
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`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`Ericsson requests review under 35 U.S.C. § 311 of Challenged Claim 3 of the
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`’063 patent, and that the Board cancel the same as being unpatentable in view of the
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`cited prior art and the Grounds described below.
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`Ground 1: Claim 3 is obvious over R2-071562 in view of 3GPP TS 36.300
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`v.1.0.0 (2007-03) (to the extent necessary) and Park (to the extent necessary).
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`Ground 2: Claim 3 is obvious over R2-071562 in view of 3GPP TS 36.300
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`v.1.0.0 (2007-03) and Jen (to the extent necessary).
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`Ground 3: Claim 3 is obvious over Jen (incorporating the Jen Provisional) in
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`view of 3GPP TS 36.300 v.1.0.0 (2007-03) (to the extent necessary).
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`III. TECHNOLOGICAL BACKGROUND
`The technology at issue in this petition was developed by members of the
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`Third Generation Partnership Project (“3GPP”) during the 4G standard setting
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`process. To create the 4G standard, 3GPP held standard setting meetings at which
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`3GPP members proposed technology to include in the standard. These proposals
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`IPR2020-00250 (9,265,063)
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`were typically submitted in documents called “contributions.” The 3GPP members
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`emailed their contributions to a 3GPP email list and posted them to the publicly
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`available 3GPP FTP site before each meeting. Ex. 1010, ¶¶ 21-34.
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`A. The ’063 Patent
`The ’063 Patent relates to random access procedures, as used in mobile
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`communication systems. See, e.g., Ex. 1001, 1:20-40, 3:39-46. It notes that in a
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`conventional circuit based communication system, a base station transmits a control
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`signal to a user terminal using a downlink-dedicated channel. Id., 1:18-20. As the
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`patent admits, the technology at issue was already being researched for the long term
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`evolution (LTE) network. Id., 1:35-40. Indeed, as the prior art will demonstrate,
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`this research, among companies participating in LTE standardization, had already
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`disclosed the method of claim 3 of the ’063 Patent.
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`With respect to mobile communication systems such as LTE, the ’063 Patent
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`argues that “there is a demand for developing a method for effectively forming
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`uplink control information such as an uplink signaling message using a downlink
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`from a base station to a terminal and transmitting the uplink control information with
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`minimum radio resource occupied.” Id., 2:19-23.
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`As a technical solution to this problem, the ’063 Patent discloses “a method
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`for transmitting downlink data generation indication information for a base station
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`to inform a terminal of packet data transmission in a packet-based cellular system.”
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`IPR2020-00250 (9,265,063)
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`Id., 2:48-51. This method includes “a) generating the downlink data generation
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`indication information; b) recording radio resource allocation information in
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`downlink scheduling information for transmitting the downlink data generation
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`indication information, and allocating information for the downlink data generation
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`indication information to downlink-shared radio resources; and c) transmitting the
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`downlink scheduling information and the information for the downlink data
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`generation indication information according to a transmission cycle.” Id., 2:51-60.
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`B. Challenged Claim
`This Petition challenges claim 3 of the ’063 Patent. Claim 3 is reproduced
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`below and emphasized for reference in the following discussion:
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`3. A method for supporting random access of a terminal in a base station
`of a wireless communication system, the method comprising:
`transmitting, when downlink data to the terminal during discontinuous
`reception (DRX) in an active state, where the terminal has set up a data
`channel for transmitting/receiving data to/from a base station, is
`generated, downlink data generation indication information indicating
`an own random access preamble used for the random access to the
`terminal;
`receiving the single random access preamble indicated by the downlink
`data generation indication information from the terminal; and
`transmitting a response for the random access to the terminal after
`receiving the single random access preamble, wherein the response is
`allocated to downlink-shared radio resource and transmitted to the
`terminal;
`wherein the response for the random access is addressed using an
`identifier informing transmission of the response for the random access;
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`IPR2020-00250 (9,265,063)
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`wherein the identifier is reserved and allocated among scheduling
`identifiers used in the wireless communication system, and transmitted
`through a channel carrying downlink scheduling information;
`wherein the identifier is determined based on a resource region for
`random access, the resource region being expressed in a frequency and
`a time;
`wherein the downlink data generation indication information is
`transmitted through a control message using a unique scheduling
`identifier for the terminal during Radio Resource Control (RRC)
`connected state.
`As shown above, claim 3 generally recites a base station (i) transmitting to the
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`terminal (e.g. a mobile terminal or user device), during discontinuous reception
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`(DRX) in an active state and Radio Resource Control (RRC) connected state,
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`downlink data generation indication information indicating an own random access
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`preamble through a control message using a unique scheduling identifier; (ii)
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`receiving from the terminal the single random access preamble; (iii) transmitting a
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`response for the random access to the terminal; and (iii) wherein the response for the
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`random access is addressed using an identifier that is transmitted through a channel
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`carrying downlink scheduling information, reserved and allocated among scheduling
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`identifiers and determined based on a resource region being expressed in a frequency
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`and a time.
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`This method of the ’063 Patent is described with respect to a base station and
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`a terminal device. “At first, a base station generates control information” which
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`includes “scheduling control information allocated to each of [the] terminals by a
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`IPR2020-00250 (9,265,063)
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`base station” as well as “response information for uplink random access” among
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`other things. Id., 3:39-46.
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`The ’063 Patent describes a procedure for transmitting downlink data
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`generation indication information from a base station to a terminal if there is packet
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`data to transmit to the terminal. The ’063 Patent explains that in a packet-based
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`mobile communication system, terminals may perform a low-power consuming
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`operation using a discontinuous reception cycle (DRX) and a discontinuous
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`transmission cycle (DTX). Id., 9:10–15. For terminals performing a lower power
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`consuming operation in an RRC connected state RRC_CONNECTED where a radio
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`bearer is set, the “downlink data generation informing procedure” is referred to as
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`“MAC paging.” Id., 9:15-23.
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`The ’063 Patent’s Figure 2 (copied below) “illustrates transmitting downlink
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`packet generation indication information in accordance with an embodiment of the
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`present invention.”
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`IPR2020-00250 (9,265,063)
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`
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`Ex. 1001, Figure 2. Part of the radio resource allocation information (13 in Figure
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`2), includes “information about a scheduling identifier,” which is “a scheduling
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`identifier uniquely allocated to each of the terminals or a group scheduling identifier
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`that is reserved and allocated for downlink data generation indication information.”
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`Id., 9:52–58. A base station uses a group scheduling identifier “when the number of
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`terminals to transmit the downlink data generation indication information in a
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`IPR2020-00250 (9,265,063)
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`monitoring duration is large and when the available radio resources are insufficient.”
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`Id., 10:52–57. When the group scheduling identifier is used, “terminals confirm the
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`downlink data generation indication information 26 using the radio resource block
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`location information in the radio resource allocation information 13 if the terminal
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`detects a group scheduling identifier allocated to an own low power consuming
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`operation group.” Id., 10:57–62.
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`On the other hand, “a base station can form radio resource allocation
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`information in downlink scheduling information using a scheduling identifier
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`allocated to each of [the] terminals instead of using a group scheduling identifier
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`when the number of terminals to transmit the downlink data generation indication
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`information in a monitoring duration is small and when the available radio resources
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`are sufficient.” Id., 10:66–11:5.
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`The ’063 Patent goes on to describe a method for using downlink scheduling
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`information for transmitting response information for random access. See, e.g., Id.,
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`7:1–3. The ’063 Patent summarizes this method as follows:
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`A part of a scheduling identifier used for scheduling is reserved and
`allocated as a group scheduling identifier, and the transmission of
`response information for random access is addressed using the group
`scheduling identifier. Therefore, the terminals can check a group
`scheduling identifier and allocated radio resources for informing the
`transmission of the grant information for random access by searching
`downlink scheduling information. After the terminals confirm the
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`group scheduling identifier, each of the terminals obtains data
`transmitted with a shared radio resource of an allocated radio resource
`location based on the corresponding group scheduling information,
`demodulates and decodes the obtained data. As a result, each of the
`terminals can obtain response information for random access, which is
`transmitted from a base station.
`Id., 7:3–17.
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`Figure 3, reproduced below, “is a diagram illustrating reserving and using a
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`group scheduling identifier allocated for transmitting a part of a scheduling
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`identifier, grant information, and downlink data generation indication information
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`for scheduling radio resources.” Id., 11:27–32.
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`IPR2020-00250 (9,265,063)
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`The ’063 Patent explains that “[a] group scheduling identifier for
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`transmitting the grant information can be used by reserving and allocating a
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`group scheduling identifier according to a random access burst that is
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`configured by a base station where the random access burst may be a random
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`access resource region expressed in a frequency and a time.” Id., 11:36–41.
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`Prosecution History
`C.
`The claims of the ’063 Patent were amended several times to traverse prior art
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`rejections. Claims 1-16 were cancelled and claims 17, 19-23 and 25-28 were initially
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`rejected on February 17, 2012 under 35 U.S.C. 102(e) as being anticipated by U.S.
`
`20070047493 A1 to Park et al. (“Park”). Ex. 1004, 253. The examiner also rejected
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`claims 18 and 24 under 35 U.S.C. 103(a) as being unpatentable over Park in view of
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`U.S. 5918170 A to Oksanen et al. (“Oksanen”). Ex. 1004, 256.
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`The examiner found that “Park teaches a method for performing random
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`access in a terminal of a wireless communication system.” Ex. 1004, 253. The
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`examiner found that the following elements were not novel in light of Park:
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`• Receiving, when downlink data is generated in a Radio Resource
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`Control Connection (RRC_CONNECTED) state, an information
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`indicating a random access preamble used for the random access from
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`a base station.
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`IPR2020-00250 (9,265,063)
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`• Transmitting the random access preamble corresponding to the
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`information to the base station.
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`• Receiving a response for the random access from the base station,
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`wherein the response is allocated to downlink-shared radio resource
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`and transmitted from the base station.
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`• Wherein the response for the random access is addressed using an
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`identifier informing transmission of the response for the random access
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`• Wherein the identifier is reserved and allocated among scheduling
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`identifiers used in the wireless communication system, and received
`
`through a channel carrying downlink scheduling information.
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`• Wherein the identifier is determined based on a resource region for
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`random access, the resource region being expressed in a frequency and
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`a time
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`Ex. 1004, 253-255.
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`
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`Additionally, examiner found that “Oksanen teaches wherein the information
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`indicating the random access preamble used for the random access is received when
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`downlink data is generated during discontinuous reception (DRX) in the
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`RRC_CONNECTED state.” Ex. 1004, 256.
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`
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`On June 7, 2012, the applicant amended the independent claims to include the
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`discontinuous reception (DRX) language of claims 18 and 24. Ex. 1004, 332-34.
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`The applicant further argued that Oksanen does not teach the discontinuous
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`reception limitation because “Oksanen [] is directed to ‘a mobile station operation
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`in idle sleep mode,’ but fails to disclose ‘receiving, when downlink data is generated
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`during discontinuous reception (DRX) in a Radio Resource Control Connection
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`(RRC CONNECTED) state, an information indicating a random access preamble
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`used for the random access from a base station; and transmitting the random access
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`preamble corresponding to the information to the base station’ as recited in claim
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`17.” Ex. 1004, 335 (emphasis retained).
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`
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`On July 3, 2012, the examiner again rejected the claims, this time under 35
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`U.S.C. 103(a) as being unpatentable over Park in view of U.S. 2005/0101351 A1 to
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`Lee et al. (“Lee”). Ex. 1004, 345. Specifically, the examiner found that Lee
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`discloses receiving downlink data using discontinuous reception (DRX) while in an
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`RRC_CONNECTED state. Ex. 1004, 346. In pertinent part, Lee teaches:
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`A UE in RRC connected state is further divided into a URA_PCH state,
`a CELL_PCH state, a CELL_FACH state, and a CELL_DCH state. For
`those UEs in idle state, in URA PCH state, or in CELL_PCH state, a
`discontinuous reception (DRX) method is employed to minimize power
`consumption by discontinuously receiving a SCCPCH (Secondary
`Common Control Physical Channel) to which a PICH (Paging Indicator
`Channel) and a PCH (Paging Channel) are mapped. During the time
`periods other than for receiving the PICH or the SCCPCH, the UE is in
`sleeping mode state.
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`IPR2020-00250 (9,265,063)
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`Ex. 1004, 346 (citing Lee at 0010).
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`
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`In light of the above, the applicant again amended the claims on November 5,
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`2012, removing the RRC_CONNECTED language and replacing it with “active
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`state” language as depicted below:
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`
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`Ex. 1004, 359.
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`The applicant argued that Lee did not disclose this “active state” limitation.
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`More
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`specifically,
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`the
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`applicant
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`argued
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`that Lee
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`is
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`related
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`to
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`URA_PCH/CELL_DCH states and dedicated control channels and dedicated traffic
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`channels are unavailable in these states, and therefore Lee cannot disclose “downlink
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`data is generated during discontinuous reception (DRX) in an active state where the
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`terminal has set up a data channel for transmitting/receiving data to/from a base
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`station. Ex. 1004, 363.
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`
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`On February 13, 2013 claims 17, 19, 21, 23, 25 and 27 were again rejected
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`under 35 U.S.C. 103(a) as being unpatentable over Park in view of U.S.
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`2007/0135080 to Islam et al. (“Islam”). Ex. 1004, 389. Specifically, the examiner
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`argued that Islam teaches the “active state” limitation. The examiner noted that
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`“[t]he terminal [of Islam] receives paging messages during DRX in the CELL_PCH
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`state. The CELL_PCH state is one of four states of the RRC connected mode, which
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`is an active state.” Ex. 1004, 391.
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`Claims 20, 22, 26 and 28 were rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Park et al. (US 2009/0011769) in view of Islam et al. (US
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`2007/0135080) and further in view of WO 2005/057822 A1 to Jung et al. (“Jung”).
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`Ex. 1004, 393. The examiner found that Jung teaches a random access response that
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`is addressed using an identifier informing transmission of the response for the
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`random access. Specifically, Jung discloses a “scheduling ID.” Ex. 1004, 393.
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`Furthermore, the examiner found that Jung discloses the limitation “wherein
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`the identifier is reserved and allocated among scheduling identifiers used in the
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`wireless communication system, and received through a channel carrying downlink
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`scheduling information” as Jung teaches “an ID manager for assigning a specific
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`scheduling ID.” Ex. 1004, 393.
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`
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`On April 26, 2013, applicant again amended the claims, this time adding the
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`word “single” preceding “random access preamble” as shown below.
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`Ex. 1004, 428.
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`
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`The applicant argued that Park is related to receiving “grouped” not single
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`signatures from a base station and “selecting one signature group from the signature
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`groups” and does not provide “a single specific preamble for the terminal.” Ex.
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`
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`1004, 432.
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`
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`On August 7, 2013, the examiner again rejected the claims as being
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`unpatentable over Park in view of Islam and U.S. 2009/0011718 to Chun et al.
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`(“Chun”). Ex. 1004, 441. The examiner found that Chun teaches the “single
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`preamble” limitation, because it discloses that a base station allocates a “particular
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`RACH signature to terminals to allow an unsynchronized terminal to quickly
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`synchronize toward the uplink direction.” Ex. 1004, 443. In particular, the examiner
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`found that it would have been obvious to modify Park to include a “single” preamble
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`because “doing so would [] decrease the occurrence of collisions between terminals
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`transmitting on the random access channel, since each terminal has its own dedicated
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`preamble signature.” Ex. 1004, 443.
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`IPR2020-00250 (9,265,063)
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`On February 7, 2014, the applicant again amended several of the claims, this
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`time removing “a single” and replacing it with “an own” as shown below.
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`
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`Ex. 1004, 469.
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`
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`The applicant argued that Park related to “grouping using system information
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`or a paging message, instead of ‘an information indicating an own random access
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`preamble used for the random access from a base station.” Ex. 1004, 473 (emphasis
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`retained). Additionally, the applicant distinguished the terminal in Chun, which,
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`“performs a RACH transmission using a signature allocated from the base station,
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`instead of “an information indicating an own random access preamble used for the
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`random access from a base station.” Ex. 1004, 474 (emphasis retained).
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`
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`On October 2, 2014, the examiner again rejected the claims, this time
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`combining the references with R2-061002, “UE state transition in LTE_ACTIVE”
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`(“LG”), which disclosed the “own random access preamble.” Ex. 1004, 482.
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`Specifically, LG disclosed a “dedicated RACH signature.” Ex. 1004, 483-84.
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`
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`On December 22, 2014, the applicant again amended the claims as follows:
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`IPR2020-00250 (9,265,063)
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`Ex. 1004, 504.
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`
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`However, on January 16, 2015, the examiner again rejected the claims,
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`arguing that these additions were obvious in light of the prior references combined
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`with 3GPP TS 25.331 V5.4.0 (“3GPP”). Ex. 1004, 518. In particular, the examiner
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`argued that 3GPP teaches sending/receiving paging messages via “RRC signaling in
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`the RRC layer.” Ex. 1004, 520.
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`
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`On April 8, 2015, the applicant again amended the claims. For instance, claim
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`17 is depicted below.
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`IPR2020-00250 (9,265,063)
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`
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`Ex. 1004, 543. Upon making this amendment, the applicant focused on the last
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`limitation arguing that the prior art does not teach or disclose “the identifier is
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`determined based on a resource region for random access, the resource region being
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`expressed in a frequency and a time.” Ex. 1004, 546. However, on April 21, 2015,
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`the examiner issued an advisory action disagreeing with these arguments. Ex. 1004,
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`555-58.
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`The applicant again amended the claims on June 16, 2015 as shown below.
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`IPR2020-00250 (9,265,063)
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`Ex. 1004, 563. Notably, with respect to the added limitation, the applicant argued
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`that in “the claimed invention, the downlink data generation indication information
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`is transmitted from a base station to a terminal via a control message using a unique
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`scheduling identifier during a RRC_CONNECTED state in which a radio bearer is
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`set. In this case, the unique scheduling identifier can be a C-RNTI.” Ex. 1004, 566.
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`The claims subsequently issued with these amendments.
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`IPR2020-00250 (9,265,063)
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`D. Claimed Priority Date
`The application leading to the ’063 Patent was filed on June 21, 2007 and
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`claims priority to two foreign Korean applications filed on June 21, 2006 and August
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`16, 2006 respectively. For the purposes of this Petition, June 21, 2007 is presumed
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`as the priority date of the ’354 patent. Based on this presumed priority date, the
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`references presented in this Petition are prior art under at least 35 U.S.C. § 102(a) or
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`(e).
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would have (i) an undergraduate degree
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`in Electrical Engineering, Computer Science, or Computer Engineering, or a related
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`field, and around two years of experience in the theory, design, and/or development
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`of cellular technology, or (ii) a Master’s degree in one of the foregoing fields with a
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`focus on cellular technology. See Ex. 1003, ¶ 32. Someone with less or different
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`technical education but more relevant practical experience, or more relevant
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`education but less practical experience, could also be considered a POSITA. Id.
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`V. CLAIM CONSTRUCTION
`Claim construction in inter partes review is governed by the same standard as
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`it would be in a district court. 37 C.F.R. § 42.100(b). Terms should be interpreted in
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`view of “their ordinary and accustomed meaning as understood by one of ordinary
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`skill in the art.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed.
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`Cir. 2001); Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
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`IPR2020-00250 (9,265,063)
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`banc). “The construction that stays true to the claim language and most naturally
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`aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.” Phillips, 415 F.3d at 1316.
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`In the Related Litigations, the parties disagree on the construction of three
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`terms with respect to the claim at issue in the present IPR Petition. Ex. 1012. The
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`parties have agreed to the construction of one term. A claim construction order has
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`not issued at the time of the present IPR Petition, but the Court in the Related
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`Litigations issued Preliminary Constructions for these terms on December 4, 2019.
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`Ex. 1013. The parties’ positions and the Court’s preliminary constructions are set
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`forth below. For the purpose of this IPR Petition, Petitioner asserts that Court’s
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`preliminary construction for the “the single random access preamble” term is
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`adopted. The Board does not need to construe the other terms because, as shown
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`herein, the prior art encompasses both sides’ proposed constructions for these terms,
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`as well as the Court’s Preliminary Constructions.
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`IPR2020-00250 (9,265,063)
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`Claim Term
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`Sol IP’s
`Construction
`
`Defendants’
`Construction
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`Plain and ordinary
`meaning.
`Alternatively, “a
`terminal’s single
`random access
`preamble.”
`
`Plain and ordinary
`meaning.
`
`
`“random access
`preamble not shared
`with other
`equipment”
`
`“the group
`scheduling identifier
`is determined based
`on a resource region
`for random access,
`the resource region
`being expressed in a
`frequency and time”
`
`“own rand