Trials@uspto.gov Paper 11
`571-272-7822 Date: November 14, 2025
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`APEX BEAM TECHNOLOGIES LLC,
`Patent Owner.
`_____________
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`IPR2025-00901
`Patent 11,374,721 B2
`____________
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`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
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`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2025-00901
`Patent 11,374,721 B2
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`I. INTRODUCTION
` Apple Inc. (“Petitioner”) filed a petition for inter partes review of
`claims 1–20 of U.S. Patent No. 11,374,721 B2 (Ex. 1001, “the ’721 patent”).
`Paper 2 (“Pet.”). Apex Beam Technologies LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). Patent Owner’s request
`for discretionary denial was denied and the Petition was forwarded to the
`Board. Paper 10.
` We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 (2023) and 37 C.F.R. § 42.4(a) (2024). An
`inter partes review may be instituted if “the information presented in the
`petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
` Upon consideration of the papers, we determine that the information
`presented in the Petition demonstrates that there is a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of at least
`one challenged claim of the ’721 patent.
` Real Parties-In-Interest
` The parties identify themselves as the real parties-in-interest. Pet. 90;
`Paper 4, 2.
` Related Matters
` The parties collectively identify Apex Beam Technologies LLC v.
`Apple Inc, 6:24-cv-00223 (W.D. Tex.) and Apex Beam Technologies LLC v.
`Samsung Electronics Co., No. 2:24-cv-00203 (E.D. Tex.) as matters that
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`may affect, or be affected by, a decision in this proceeding. Pet. 90;
`Paper 4, 2.
` The ’721 Patent
`The ’721 patent “relates to a transmission scheme in a wireless
`communication system, and in particular to . . . uplink transmission.”
`Ex. 1001, 1:17–20. More specifically, the ’721 patent relates to “[g]rant-free
`uplink transmission” where data “collision[s] may occur due to [a] lack of
`centralized dynamic scheduling and resource coordination.” Id. at 2:6–9.
`The ’721 patent “provides a solution” to reduce collisions “by distinguishing
`uplink synchronization time for the wireless resources of the uplink
`transmission.” Id. at 2:28–34. For example, the ’721 patent discloses an
`embodiment where for a user equipment (“UE”), a first wireless resource to
`use is determined based on a first time interval such that other uplink
`transmissions in different time ranges may use different wireless resources,
`reducing the possibility of collision. Id. at 2:59–67.
`Figure 1, shown below, is such an embodiment.
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`Patent 11,374,721 B2
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`Figure 1 “shows a wireless signal transmission flow diagram” in accordance
`with the disclosure of the ’721 patent. Id. at 11:37–38. As illustrated, UE
`U2 transmits a first wireless signal to base station N1. Id. at Fig. 1, 12:26–
`27. “[T]he first wireless signal is used to determine a first time interval,”
`where “the first time interval is . . . between a first time instant and a second
`time instant.” Id. at 12:31–32. The first time instant is when UE U2 starts to
`transmit the first wireless signal, and the second time instant is when UE U2
`starts to transmit a second wireless signal. Id. at 12:34–38.
` The ’721 patent discloses that “[t]he second wireless signal occupies a
`first wireless resource,” which “is one of J candidate wireless resources.” Id.
`at 12:39–42. “[T]he first time interval is used to determine the first wireless
`resource out of the J candidate wireless resources [used] by the base station
`N1 and UE U2.” Id. at 12:42–45. The ’721 patent discloses that “the J
`candidate wireless resources correspond to P time interval ranges,” and “any
`two time interval ranges of the P time interval ranges do not overlap.” Id. at
`12:49–51. Moreover, the ’721 patent teaches that “the transmission channel
`corresponding to the first wireless signal [can be] a Random Access Channel
`(RACH),” and that “a physical channel corresponding to the second wireless
`signal is a Physical Uplink Shared Channel (PUSCH).” Id. at 14:1–3,
`14:14–16.
` Illustrative Claim
` Of the challenged claims, claims 1, 6, 11, and 16 are independent.
`Claim 1 is illustrative of the challenged claims and is reproduced below.
`1. A method for wireless communication in a user equipment
`(UE), comprising:
` transmitting a first wireless signal; and
` transmitting a second wireless signal;
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`Patent 11,374,721 B2
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`Pet. 17–89. Petitioner submits in support of its arguments the Declaration of
`Dr. Robert Akl, D.Sc. (Ex. 1003).
`II. LEVEL OF ORDINARY SKILL IN THE ART
` To determine whether an invention would have been obvious before
`the effective filing date of the claimed invention, we consider the level of
`ordinary skill in the pertinent art at the time of the invention. Graham v.
`John Deere Co., 383 U.S. 1, 17 (1966). In assessing the level of ordinary
`skill in the art, various factors may be considered, including the “type of
`problems encountered in the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology;
`and educational level of active workers in the field.” In re GPAC, Inc., 57
`F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
`Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more
`factors may predominate.” Id. Petitioner argues that one of ordinary skill in
`the art at the time of the ’721 patent “would have a bachelor’s degree in
`electrical engineering, computer engineering, computer science, or a similar
`field, along with two years of experience designing or developing wireless
`networks, including long-term evolution LTE/4G and 5G new radio (NR)
`cellular technology.” Pet. 4 (citing Ex. 1003 ¶ 32). Petitioner adds that
`“[a]dditional education might substitute for some of the experience, and
`additional substantial experience might substitute for some of the
`educational background.” Id. at 4–5.
` Patent Owner at this stage of the proceeding does not provide an
`alternative definition for a level of skill in the art that one would have had at
`the time of the ’721 patent or identify any shortcoming in Petitioner’s
`formulation. See Prelim. Resp. 2.
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` For purposes of this Decision on Institution, we adopt Petitioner’s
`definition of the level of skill for one of ordinary skill in the art. Pet. 4–5.
`We view the definition for the level of ordinary skill as consistent with the
`’721 patent and the asserted prior art, and we apply it in our analysis below.
`III. CLAIM CONSTRUCTION
` Because the Petition was filed after November 13, 2018, we apply the
`same claim construction standard that would be used in a civil action under
`35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b);
`83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such
`standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art, at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
` Petitioner argues “that no claim terms need be construed to resolve
`issues of controversy in the present Petition.” Pet. 4. Patent Owner argues
`that at this stage, “claim construction is not required to resolve any issues.”
`Prelim. Resp. 2.
` W e determine that no express constructions are needed for us to
`render our Decision on Institution. See, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’”). Rather, at
`this stage of the proceeding, we apply the plain and ordinary meaning of the
`claim terms.
`IV. PRINCIPLES OF LAW
` A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious before the effective filing date
`of the claimed invention to a person having ordinary skill in the art. KSR
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of non-obviousness, if present.
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`See Graham, 383 U.S. at 17–18. When evaluating a claim for obviousness,
`we also must “determine whether there was an apparent reason to combine
`the known elements in the fashion claimed by the patent at issue.” KSR, 550
`U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`V. ALLEGED OBVIOUSNESS OVER LEE, FREDA, AND LY
` Petitioner argues that the combination of Lee, Freda, and Ly renders
`claims 1–20 obvious. Pet. 17–89. For the reasons that follow, we determine
`that Petitioner demonstrates a reasonable likelihood that it would prevail in
`showing that the combination renders obvious at least one of these claims.
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`5 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness. See generally Prelim. Resp.
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` Summary of Lee
` Lee “relates to a wireless communication system and, more
`particularly, to a method for allocating a temporary radio network temporary
`identifier [(T-RNTI)] to a terminal performing a random access procedure.”
`Ex. 1005 ¶ 1. In particular, Lee provides a method that includes
`transmitting, by a UE, a random access preamble to a base station,
`transmitting, by the UE, a radio resource control (RRC) request message to
`the base station through a contention-based PUSCH resource block in which
`uplink data can be transmitted without uplink resource allocation scheduling,
`and receiving, by the UE, an RRC connection setup message identified by a
`T-RNTI allocated to the UE in response to the RRC request message,
`wherein the T-RNTI is allocated on the basis of the contention-based
`PUSCH resource block in which the RRC request message has been
`transmitted. Id. at code (57).
` Summary of Freda
` Freda relates to random access in wireless systems, such as fifth
`generation (5G) and legacy fourth generation (4G) systems. Ex. 1006 ¶¶ 2–
`5. More specifically, Freda teaches that a wireless transmit/receive unit
`(“WTRU”) may initiate a random access by first determining whether to
`select a first RACH procedure or a second RACH procedure, where the first
`is a legacy RACH procedure, and the second is an enhanced RACH
`procedure. Id. at code (57). Freda teaches that this determination may be
`based at least on a type of uplink data to be transmitted. Id. Freda teaches
`that when the second RACH procedure is selected, the WTRU may
`determine at least one physical random access channel (“PRACH”) resource
`and a preamble sequence associated with the second RACH procedure. Id.
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`Freda adds that the WTRU may determine a data resource for the uplink
`data, and send a RACH transmission that includes the preamble sequence
`and the uplink data. Id.
` Summary of Ly
` Ly relates to wireless communication systems, and more particularly
`to uplink random access in 5G new radio networks to enable and provide
`improved communication techniques allowing communication devices to
`reduce random access latency for initial network access and uplink-based
`mobility procedures. Ex. 1007 ¶ 2.
` Challenged Claim 1
` Patent Owner disputes that the combination of Lee, Freda, and Ly
`teaches two limitations of independent claim 1. Prelim. Resp. 5–10. We
`first address the limitations disputed by Patent Owner and then turn to the
`undisputed limitations.
`1. Disputed Limitations
`a. First Time Interval
` Patent Owner argues that the combination of Lee and Freda fails to
`teach that “the first time interval is used to determine the first wireless
`resource out of the J candidate wireless resources,” as recited in claim 1.
`Prelim. Resp. 5–8. At this stage, we agree with Petitioner and find that the
`combination of Lee and Freda teaches this limitation. Pet. 45–47.
` First, we agree with Petitioner and find that Lee teaches “allocating
`resources for a UE’s PUSCH data depending on the UE’s
`selection/assignment of [a] RACH preamble” (i.e., a first wireless signal).
`Pet. 18; Ex. 1005 ¶¶ 281–290, Figs. 19(a)–(b). More specifically, as
`Petitioner argues, Lee teaches a UE that transmits a RRC message (i.e., the
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`second wireless signal) using a contention-based PUSCH resource block
`(“CPRB”)—which is a first wireless resource—that is selected from a set of
`CPRBs (i.e., J candidate wireless resources) in a contention-based PUSCH
`group (“CP group),6 depending on the selected RACH preamble. Pet. 40–
`46; Ex. 1005 ¶¶ 213, 223, 282–287, Figs. 19(a), 19(b).
` Lee’s Figure 19, as annotated and abridged by Petitioner, is shown
`below (Pet. 40).
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`Figure 19 “is a view illustrating a method for preventing CPRB collision
`according to” Lee’s teachings. Ex. 1005 ¶ 43. Petitioner (i) colors in green
`UE 1’s “select preamble #2” label and its corresponding PRACH block,
`(ii) colors in blue UE 1’s “transmit RRC message through C[PR]B #2” label
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`6 CP zone(s) are “resource regions in which a contention-based UL data
`transmission allocated within a subframe is available.” Ex. 1005 ¶ 204
`(emphasis added). More broadly, a CP group “may be comprised of one or
`more CP zone(s),” and “signifies a resource region in which the UEs that
`occupy the CPRB resources may contend in an arbitrary time, that is, a set of
`candidate CPRB(s) that an arbitrary UE may occupy.” Id. ¶ 209.
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`and its corresponding CPRB block, and (iii) labels the time interval between
`UE 1’s preamble and RRC message transmissions. Pet. 40. Lee explains
`that the time interval is due to “implicitly selecting a CPRB on the basis of a
`randomly selected preamble.” Ex. 1005 ¶¶ 282–288; Pet. 13.
` Second, we agree with Petitioner and find that Freda teaches a random
`access procedure that uses “time and/or frequency offsets between the
`RACH preamble and PUSCH data, where the offsets depend on the selection
`of the RACH preamble.” Pet. 18; Ex. 1006 ¶¶ 209, 211. More specifically,
`we agree that Freda teaches that “resources used for a preamble and the
`resources used for data may have some association, such as an implicit
`association” and that these association rules can be a “time and/or frequency
`offset” between preamble resources and data resources. Pet. 46; Ex. 1006
`¶¶ 147, 209. For example, Freda teaches “[a] relationship between preamble
`and data may be in a time domain,” and that “a start time of a transmission
`of a preamble and a start time of a transmission of a data portion may be
`offset from each other by a specific amount of time.” Ex. 1006 ¶ 209. In
`addition, Freda teaches that “[a] relationship between preamble and data
`may be in a frequency domain,” and “[f]or example, a first [physical
`resource block (“PRB”)] of a transmission of a preamble and a first PRB of
`a transmission of a data portion may be offset from each other by a specific
`amount of PRBs.” Id. ¶ 210; Pet. 46–47.
` Accordingly, as this stage, for the reasons above, we agree with
`Petitioner and find that Lee and Freda in combination teach “us[ing] Freda’s
`time-domain offset (first time interval) to determine a ‘PRB region’ for
`transmitting the PUSCH data (Lee’s RRC message), and further us[ing]
`Freda’s frequency-domain offset to determine a specific PRB (the first
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`wireless resource) within the PRB region for transmitting the PUSCH data”
`(i.e., the J candidate wireless resources). Pet. 47.
` At this stage, we find unavailing Patent Owner’s argument that
`“[b]ecause Freda’s ‘frequency-domain offset’ is not the ‘time-domain offset’
`that the selection of time resources must be determined by, the Petition is
`deficient on its face.” Prelim. Resp. 6. Rather, as we discuss above, Freda’s
`time-domain offset (i.e., the first time interval) is used to determine the first
`wireless resource, along with Freda’s frequency-domain offset. Notably, the
`claim language does not recite that only the time interval is used to
`determine the wireless resource. Ex. 1001, 27:24–26; In re Hiniker Co., 150
`F.3d 1362, 1369 (Fed. Cir. 1998) (stating “the name of the game is the
`claim”). To the extent that Patent Owner believes that this limitation should
`be construed to require that only the time interval is used, Patent Owner
`should provide detailed factual and legal support for such during trial, in
`accordance with our Rules.
` We also find unavailing Patent Owner’s argument that “Freda’s
`frequency-domain offset only indicates the ‘specific amount of PRBs’ or the
`amount of resources between the transmission of a preamble and
`transmission of a data portion.” Prelim. Resp. 6 (citing Ex. 1006 ¶ 210). At
`this stage, we view this as teaching an indication of a specific PRB in the
`frequency domain, and as such, indicates a first wireless resource in
`conjunction with the time-domain offset. Ex. 1006 ¶ 210.
` In addition, Petitioner argues that for the Lee and Freda combination
`“that these association rules can be a ‘time and/or frequency offset’ between
`preamble resources and data resources.” Pet. 46 (citing Ex. 1006 ¶¶ 147,
`209) (emphasis added). And as Lee’s Figure 19(a) above illustrates, certain
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`CPRB regions may be allocated in a time division manner only, not
`implicating a frequency offset. Ex. 1005 ¶ 287, Fig. 19(a).
` In sum, at this stage, we find that the combination of Lee and Freda
`teaches this limitation.
`b. Whether the Second Wireless Signal is Transmitted
` Patent Owner argues that Lee fails to teach that “the first wireless
`signal is used to determine whether the second wireless signal is transmitted
`or not,” as recited in claim 1. Prelim. Resp. 8–10. At this stage, we agree
`with Petitioner and find that Lee teaches this limitation. Pet. 49–51.
` In particular, we agree with Petitioner and find that Lee teaches
`embodiments for “which CPRBs are allocated to each of several UEs ‘in
`order of preamble [(RACH preamble (first wireless signal))] sequences’
`(e.g., ‘according to descending order or ascending order of the
`transmitted RACH preamble sequence number’).” Pet. 49–50; Ex. 1005
`¶ 306. But, as Petitioner argues, if for a UE with a lower order position
`“there is no available CPRB, a CPRB is not allocated thereto.” Pet. 50;
`Ex. 1005 ¶ 309. Lee thus teaches that the UE “abandons RRC message
`[(second wireless signal)] transmission to the [base station] at the
`corresponding point in time (subframe).” Pet. 50; Ex. 1005 ¶ 310.
` At this stage, we view this as sufficient for teaching that the first
`wireless signal (RACH preamble) is used to determine that the second
`wireless signal (RRC) is not transmitted. We agree, however, with Patent
`Owner that Lee teaches that RRC messages that are abandoned (not
`transmitted) for a subframe or more, may later be transmitted if a CPRB is
`available after a back-off time. Prelim. Resp. 8–9; Ex. 1005 ¶¶ 310–311.
`But at this stage, we do not view this limitation, in the context of the overall
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`claim and ’721 patent, as requiring that the RRC message never is sent.
`Rather, that the first signal was used at least once to determine that the
`second wireless signal is not transmitted is sufficient. To the extent that
`Patent Owner believes that this limitation should be construed as Patent
`Owner suggests, Patent Owner should provide detailed factual and legal
`support for such during trial, in accordance with our Rules.
` Next, we agree with Petitioner that Lee’s teachings at least suggest
`that RRC messages that are not abandoned are transmitted. See Pet. 49–50;
`Ex. 1005 ¶¶ 304–311; Ex. 1003 ¶ 147. For example, as Petitioner argues,
`Lee teaches “a scenario in which three UEs compete for allocation of two
`CPRBs based on their transmitted preamble sequences,” which at least
`suggests two UEs’ RRC messages are transmitted based on their higher
`preamble sequence order. Pet. 50–51 (citing Ex. 1005 ¶¶ 304–311).
` We also find unavailing Patent Owner’s argument that “Petitioner
`actually admits that Lee’s disclosure of this claim limitation is merely an
`‘implication.’” Prelim. Resp. 9 (citing Pet. 50). Rather, this argument from
`Petitioner relates to RRC messages that are not abandoned, and the
`implication is that they are transmitted because they are not abandoned.
`Pet. 50. Such an implication is supported by, inter alia, other arguments
`from Petitioner we discuss above.
` In sum, at this stage, we find that Lee teaches this limitation.
`2. Undisputed Limitations
`Petitioner asserts that the combination of Lee, Freda, and Ly teaches
`the preamble and the remaining limitations of claim 1. Pet. 30–45, 47–49.
`Petitioner identifies where the combination teaches these limitations,
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`supported with testimony from Dr. Akl, which Patent Owner does not
`specifically rebut at this stage. Id.
`We determine, on this record, that the combination of Lee, Freda, and
`Ly teaches the preamble (whether or not limiting) and the remaining
`undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant
`Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019)
`(nonprecedential) (“The Board is ‘not required to address undisputed
`matters’ or arguments about limitations with which it was never presented.”)
`(quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)).
`3. Summary
` In sum, for purposes of this institution decision, we determine that
`Petitioner shows a reasonable likelihood that the combination of Lee, Freda,
`and Ly renders obvious claim 1.
` Challenged Claims 2–20
` At this stage, Patent Owner does not address separately Petitioner’s
`arguments and evidence as to how the combination of Lee, Freda, and Ly
`teaches the limitations of claims 2–20. See Prelim. Resp. 10–11.
` We leave for trial, however, whether Petitioner establishes that this
`combination renders obvious claims 2–20. See 37 C.F.R. § 42.108(a).
`VI. CONCLUSION
` For the foregoing reasons, we determine that Petitioner shows a
`reasonable likelihood that it would prevail in proving the unpatentability of
`at least one of the challenged claims of the ’721 patent. We thus institute an
`inter partes review of all of the challenged claims of the ’721 patent on the
`ground asserted in the Petition. See 37 C.F.R. § 42.108(a).
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` Any findings or conclusions in this Decision are made only for the
`purposes of institution and are not dispositive of any issue. We have not
`made a final determination with respect to the patentability of any
`challenged claim. Our final determination will be based on the record as
`fully developed during trial, including any evidence or argument timely
`presented by the parties under our Rules.
`VII. ORDER
` In consideration of the foregoing, it is hereby:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ’721 patent is instituted on all of the challenged claims and all
`grounds asserted in the Petition; and
` FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this Decision.
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`FOR PETITIONER:
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`W. Karl Renner
`Won Yoon
`Richard Wong
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`yoon@fr.com
`rwong@fr.com
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`FOR PATENT OWNER:
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`Vincent J. Rubino
`Peter Lambrianakos
`Enrique W. Iturralde
`Julian G. Pymento
`Jacob D. Ostling
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturralde@fabricantllp.com
`jpymento@fabricantllp.com
`jostling@fabricantllp.com
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