22-01-19 Apple IPR Petition Against US10165601
22-01-19 Apple IPR Petition Against US10165601
_________________
APPLE INC.,
Petitioner
v.
TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner
_________________
I. INTRODUCTION ........................................................................................ 1
II. OVERVIEW OF THE TECHNOLOGY .................................................... 1
A. TELECOMMUNICATIONS AND STANDARDS.................................................... 1
B. RANDOM ACCESS PROCEDURES ................................................................... 3
C. TIMING OF RANDOM ACCESS ....................................................................... 7
III. THE ’601 PATENT ...................................................................................... 9
A. SUMMARY OF THE ALLEGED INVENTION ...................................................... 9
B. SUMMARY OF THE PROSECUTION HISTORY .................................................12
C. PERSON OF ORDINARY SKILL IN THE ART ...................................................13
IV. OVERVIEW OF THE PRIOR ART .........................................................13
A. OVERVIEW OF THE NOKIA PROPOSAL ...........................................................13
B. OVERVIEW OF 36.300 .................................................................................15
C. OVERVIEW OF 36.321 .................................................................................17
D. OVERVIEW OF 36.331 .................................................................................18
V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER §42.104 .19
A. GROUNDS FOR STANDING ...........................................................................19
B. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ............................19
C. CLAIM CONSTRUCTION...............................................................................20
VI. SPECIFIC GROUNDS OF UNPATENTABILITY ..................................21
A. GROUND 1: CLAIMS 1–7, 9–15, 17–24, 26–32, AND 34 ARE RENDERED
OBVIOUS BY THE NOKIA PROPOSAL IN VIEW OF THE KNOWLEDGE OF A POSITA .22
B. GROUND 2: CLAIMS 1–7, 9–15, 17–24, 26–32 AND 34 ARE RENDERED
OBVIOUS BY THE NOKIA PROPOSAL IN VIEW OF 36.300, 36.321, AND 36.331 ......45
VII. DISCRETIONARY CONSIDERATIONS ................................................68
A. INSTITUTION SHOULD NOT BE DENIED UNDER §325(D) ..............................68
B. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION .................................70
VIII. CONCLUSION ..........................................................................................70
IX. MANDATORY NOTICES .........................................................................72
ii
I. INTRODUCTION
(“IPR”) of claims 1–7, 9–15, 17–24, 26–32, and 34 (the “Challenged Claims”) of
non-contention random access procedure where a radio base station (such as those
preamble to the UE, which the UE may then transmit to the base station to initiate a
random access procedure. The purported novelty of the ’601 Patent is that the initial
message sent by the base station to the UE assigning the preamble further indicates
at least one “PRACH [physical random access channel] occurrence” during which
the assigned preamble is valid for the UE to use for random access. As demonstrated
below, signaling particular valid PRACH occurrences to the UE was also known in
the art at the time of the alleged invention, rendering the Challenged Claims obvious.
1
A telecommunication system such as a cellular telephone network consists of
wires. Examples of UEs include mobile phones and laptop computers. Kakaes Decl.,
¶35. Infrastructure equipment refers to equipment that cellular carriers (e.g., AT&T,
Verizon) use to provide services. See id., ¶36. Base stations are a type of
network—base stations wirelessly communicate with UEs and allow them to access
the network. Id. In LTE systems,1 base stations are called Evolved Nodes B (or
Geographic areas are divided into “cells,” each including a base station that
provides communications services within the cell. Kakaes Decl., ¶37. A set of
industry standards governs the communication between UEs and base stations. Id.,
¶¶38–39. These standards include rules dictating how a base station allocates
stratified. Currently, fifth generation (5G) technology is being developed. The 3rd
1
LTE stands for Long Term Evolution (also referred to as 4G).
2
develops Technical Specifications (TS’s)—technical documents describing specific
Specification Groups (TSGs), comprising several Working Groups (WGs). Id., ¶29.
TS’s developed by the same TSG cover related technological aspects and are meant
to be read in conjunction with one another. Ex. 1003, ¶41. 36.211, 36.300, 36.321,
are TS’s that were all developed by Radio Access Network WG2 and relate to
aspects of E-UTRA and belong to Series 36 (LTE technology).2 These TS’s are used
station servicing a cell. Id., ¶43. Because several UEs can be within a cell, the base
station must manage communications resources among these UEs. Id. A UE not
already accessing the network (e.g., a recently powered on cell phone) must first
2
E-UTRA refers to Evolved Universal Terrestrial Radio Access, one aspect of the
LTE standard.
3
To perform a random access procedure in LTE, the UE sends the eNB a signal
36.211, FIG. 5.7.1-1. In LTE systems, “[t]here are 64 preambles available in each
At the time of the ’601 patent, a person of ordinary skill in the art (“POSITA”)
would have known two types of random access procedures: contention-based and
procedures, the base station is unaware that the UE requests access to the network.
preambles (which the eNB makes known to the UEs) and transmits it to the eNB, as
4
36.300, FIG. 10.1.5.1-1. Subsequently, the eNB sends a response (step 2)
acknowledging receipt of the preamble. The UE then sends the first scheduled
network. This procedure risks collision: two or more UEs may attempt to transmit
the same preamble to the base station at the same time—necessitating step 4—
UE needs access to the network, and the eNB assigns the UE a specific preamble to
5
36.300, FIG. 10.1.5.2-1. After this assignment, the UE can transmit the preamble to
the eNB (step 1). The eNB sends a response (step 2) acknowledging receipt of the
preambles are reserved for non-contention random access. See 36.331, §6.3.2;
Kakaes Decl., ¶54. The remaining preambles are “non-dedicated” and do not get
See id.
channel (PDCCH). This message includes several Information Elements (IEs), each
6
conveying specific pieces of information. For instance, one such IE is
DedicatedRandomAccessParams:
36.331, §6.3.2. As shown above, this IE contains two pieces of information: an index
number identifying the assigned preamble, and the time of its expiration. See Kakaes
Decl., ¶56.
7
FDD LTE systems,3 each radio frame lasts 10 ms (or 0.01 seconds), and is divided
36.300, FIG. 5.1-1. Further, each subframe “consists of two equally sized slots.” Id.,
§5. For instance, slots #0 and #1 comprise subframe #0. After subframe #9 of each
radio frame comes subframe #0 of the next radio frame. See Kakaes Decl., ¶58.
to the eNB (to initiate random access). The UE may transmit a random access
3
FDD refers to Frequency Division Duplex and is one of two duplexing modes used
by LTE (along with TDD (Time Division Duplex)). Kakaes Decl., ¶58.
8
36.211, Table 5.7.1-2. For instance, in PRACH configuration 12, PRACH resources
occur in subframes #0, #2, #4, #6, and #8 of each frame—a UE may transmit a
random access preamble only during one of those subframes. The different PRACH
configurations allow the eNB to allocate more or fewer resources to the PRACH as
The ’601 Patent issued on December 25, 2018 and claims priority to a number
of earlier filings. For purposes of this proceeding, Petitioner has applied July 1,
Section II, which was known to a POSITA at the time of the alleged invention as
described in technical specifications related to LTE. See supra, §II; Kakaes Decl.,
9
¶64. For instance, the specification explains that UEs perform random access
describes contention and non-contention random access procedures, and that “pools”
of random access preambles are allocated to each type. Id., 2:20–61. The
specification states that for non-contention procedures, the eNB sends a message to
10
Because much of the technology described in the specification was disclosed
in LTE specifications and known to a POSITA, the ’601 alleges a narrow point of
which one or more PRACH occurrences[] the dedicated preamble is valid for the
UE.” ’601 Patent, 9:8–10. Using PRACH configuration 12 as an example, the ’601
specification describes information indicating that the dedicated preamble “is valid
Id., FIG. 3A, 9:22–26, 10:22–25 (explaining that other UEs may use the same
As shown below, this alleged invention was already known in the prior art.
11
B. Summary of the Prosecution History
under §102(e) in view of U.S. 2008/0310395 (“Kashima”). File History, 77. The 10
rejected claims later issued without revisions as Challenged Claims 1, 7, 9, 15, 17,
18, 24, 26, 32, and 34. Compare File History, 104–11, with ’601 Patent, cls. 1–34.
argued that Kashima did not disclose “information indicating in which one or more
PRACH occurrences, the dedicated preamble is valid for the UE.” Id., 60 (emphasis
Id., 60–61.
12
The Applicant took issue only with the prior art’s teachings with respect to
limitations reciting “PRACH occurrence,” and did not challenge the Examiner’s
findings that the other limitations were taught by the prior art.4 See id., 59–62. As
discussed below, however, this element was known in the prior art.
A POSITA at the time of the ’601 Patent would have had a Master’s degree
equivalent field and three to five years of experience working with wireless digital
education compensating for less experience, and vice-versa. Kakaes Decl., ¶76.
3GPP on October 30, 2007. Nokia Proposal, 1. The Nokia Proposal was presented
and “noted” on November 9, 2007, at the RAN Working Group 1 meeting. Ex. 1013,
8. This meeting was attended by 171 individuals. See id., 1; Ex. 1014. 3GPP made
4
The Applicant argued Kashima did not disclose “the transmitting comprises
only insofar as it required a showing of “at least one PRACH occurrence.” File
History, 61–62.
13
the Nokia Proposal publicly available no later than October 30, 2007. The Nokia
Proposal is therefore prior art to the ’601 Patent under Pre-AIA 35 U.S.C. §102(a).
Rodermund Decl., ¶42. The Nokia Proposal was not cited on the face of the ’601
Patent.
included when the “eNB needs to signal to the UE the identity of the dedicated
preamble.” The Nokia Proposal teaches inclusion of precisely the information that
the Applicant argued was missing from the prior art of record during prosecution.
during which the determined random access preamble is valid to be used by the UE
In more detail, the Nokia Proposal notes that this information includes
“validity period,” and “PRACH resource.” Id. With respect to signaling the
“PRACH resource,” the Nokia Proposal teaches that “an index to a PRACH time
slot could be given” such that the “UE would be allowed to transmit the dedicated
preamble only in a certain PRACH time slot of each radio frame.” Id. The Nokia
Proposal teaches that this information is provided as a binary value of at most four
bits, and provided to the UE along with the preamble identity “in a DL grant on
14
PDCCH.” Id., 2. The Nokia Proposal explains that because the overall PRACH
resources are already known by the UE, it is enough to simply indicate on which
systems. ’601 Patent, 1:24-28. Similarly, the Nokia Proposal is also related to
The Nokia Proposal is therefore in the same field of endeavor as the ’601 Patent.
Decl., ¶79. The Nokia Proposal is also reasonably pertinent to a problem sought to
be solved by the ’601 Patent because both the Nokia Proposal and the ’601 Patent
procedures. Compare Nokia Proposal, 2 (“This would very effectively increase the
. . .”), with ’601 Patent, 10:22-25 (“The embodiments of the present invention thus
increase the availability of dedicated preambles . . .”); Decl., ¶79. The Nokia
B. Overview of 36.300
36.300 was published in June 2007 and is therefore prior art to the ’601 Patent
under Pre-AIA 35 U.S.C. §102(a). 36.300 was cited on the face of the ’601 Patent,
15
36.300 is a TS that describes technical features related to the air interface of
LTE networks (“E-UTRA”). 36.300, Title. 36.300 teaches that radio frames, which
provides a framework for downlink and uplink transmissions, are each divided into
ten equal subframes, and each subframe is divided into two equal time slots, as
shown below:
Id., FIG. 5.1-1, §5.1. 36.300 explains the steps of non-contention-based random
Access Preamble” from the set of preambles other than those broadcasted on BCH,
and that “UE transmits the assigned non-contention Random Access Preamble.” Id.,
16
Id., FIG. 10.1.5.2-1.
telecommunications systems in the 3GPP standard. Compare id., §10.1.5, with ’601
Patent, 1:24-28. 36.300 is therefore in the same field of endeavor as the ’601 Patent
C. Overview of 36.321
36.321 was published in March 2008 and is therefore prior art to the ’601
Patent under 35 U.S.C. §102(a). 36.321 was cited on the face of the ’601 Patent, but
Control (MAC) within LTE networks, including random access procedures. 36.321,
§5. Specifically, 36.321 explains that random access may be initiated by a “PDCCH
order” specifying the assigned random access preamble and “PRACH resource.” Id.,
procedures. See id., §5.1.2 (“If the Random Access Preamble and PRACH resource
17
telecommunications systems in the 3GPP standard. Compare id., §5.1.2, with ’601
Patent, 1:24-28. 36.321 is therefore in the same field of endeavor as the ’601 Patent
D. Overview of 36.331
36.331 was published in March 2008 and is therefore prior art to the ’601
Patent under 35 U.S.C. §102(a). 36.331 was cited on the face of the ’601 Patent, but
Control (RRC) within LTE networks, including parameters for random access
18
Id. Because these parameters are within IE DedicatedRandomAccessParams, they
are signaled from the base station to the UE. See Kakaes Decl., ¶86.
Patent, 1:24-28. 36.331 is therefore in the same field of endeavor as the ’601 Patent
Petitioner certifies that the ’601 Patent is available for IPR and that Petitioner
is not barred or estopped from requesting an IPR challenging the claims of the ’601
In view of the prior art and evidence presented, the Challenged Claims of the
Further, based on the prior art references identified below, IPR of the Challenged
19
DL Data Arrival (R2-074575),” 3GPP TSG RAN WG1 #51 Meeting
R1-074857 (the “Nokia Proposal”) and the knowledge of a POSITA
Ground 2: Claims 1-7, 9-15, 17-24, 26-32, 34 are obvious under EX1008
EX1009
§103 in view of the Nokia Proposal in combination with “Evolved
EX1010
Universal Terrestrial Radio Access (E-UTRA) and Evolved EX1011
Universal Terrestrial Radio Access Network (E-UTRAN); Overall
Description,” 3GPP TS 36.300, Version 8.1.0 (Release 8) (“36.300”),
“Evolved Universal Terrestrial Radio Access (E-UTRA) Medium
Access Control (MAC) Protocol Specification,” 3GPP TS 36.321,
Version 8.1.0 (Release 8) (“36.321”), and “Evolved Universal
Terrestrial Radio Access (E-UTRA) Radio Resource Control (RRC);
Protocol Specification,” 3GPP TS 36.331, Version 8.1.0 (Release 8)
(“36.331”).
Section VI identifies where each element of the Challenged Claims is found in the
prior art. 37 C.F.R. §42.104(b)(4). The exhibit numbers of the supporting evidence
relied upon to support the challenges are provided above and the relevance of the
C. Claim Construction
forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
customary meaning,’” which is “the meaning that the term would have to a person
20
of ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. No
valid PRACH occurrence. As set forth below, the remaining limitations in the
Challenged Claims were well established in the art, and a POSITA would have
understood that the Nokia Proposal’s teachings were intended to modify the
proposes that the Nokia Proposal in view of the knowledge of a POSITA renders
obvious the Challenged Claims. To the extent Patent Owner argues any of the
remaining limitations would not have been obvious in view of the Nokia Proposal
and the knowledge of a POSITA, Ground 2 combines the Nokia Proposal with three
21
A. Ground 1: Claims 1–7, 9–15, 17–24, 26–32, and 34 Are Rendered
Obvious by the Nokia Proposal in view of the knowledge of a
POSITA
1. Claim 1
The Nokia Proposal teaches a method where the “eNB needs to signal to the
to the UE. Nokia Proposal, 1. An eNB is a radio base station in the 3GPP LTE
system. ’601 Patent, 1:42–44; §II.A., supra. The Nokia Proposal further teaches that
this signal is for “the assignment of the dedicated preamble” to the UE. Nokia
Proposal, 2.
preambles.”), 2 (“This [method] would very effectively increase the capacity of the
non-contention based random access[.]”); see also Claim 1 [preamble], supra (the
5
For the purposes of this proceeding, Petitioner does not concede that the
22
Nokia Proposal teaches “assigning a preamble to a user equipment (UE)”).
Specifically, the eNB identifies the “preamble identity” and assigns a “dedicated
totally at most 16 bits would be signaled. Assuming that TFI = 0 would be used to
identify the assignment of the dedicated preamble, all this information could be
included in a DL grant on PDCCH.”);6 id. (further explaining that “6 bits” are used
random access preamble. The Nokia Proposal discloses that the preambles are used
[method] would very effectively increase the capacity of the non-contention based
random access[.]”). As set forth in the technology overview, a POSITA would have
random access preamble to the eNB, which is referred to in the art as performing a
random access procedure. See supra, §II.B. A POSITA would further have been
familiar with the two types of random access procedures: contention-based and non-
contention-based. Id. A POSITA would also have known that both types of random
6
Unless otherwise noted, all emphasis is added.
23
random access procedures utilize dedicated (random access) preambles. Id. Based
on the known LTE random access procedures (e.g., discussed in §II), a POSITA
would have understood that the Nokia Proposal is in fact describing dedicated
A POSITA would have understood that the Nokia Proposal's eNB determines
which preamble to assign to the UE. A POSITA would have understood that because
the eNB assigns a preamble, the eNB would have determined the preamble before
assigning that preamble to the UE. Kakaes Decl., ¶91 (explaining that a preamble
must be determined prior to being assigned). Further, a POSITA would have been
A POSITA would have understood that the eNB determines the assigned
preamble from a set of dedicated random access preambles. A POSITA reading the
Nokia Proposal would have known that the preambles referred to by the Nokia
that can be used for random access. See id.; Kakaes Decl., ¶92. A POSITA would
have known that a subset of these preambles are non-dedicated and are used in
“contention based” random access procedures. See supra, §II.B.; Kakaes Decl., ¶92.
24
The remainder are “dedicated” random access preambles for use in non-contention
random access procedures. Id. Accordingly, because the Nokia Proposal discloses
dedicated random access preambles, a POSITA would have understood that the
Nokia Proposal determines the random access preamble from a set of dedicated
dedicated preambles. Nokia Proposal, 1–2. The Nokia Proposal also teaches that the
eNB “signal[s] to the UE the identity of the dedicated preamble,” further indicating
that there are several dedicated preambles constituting a set and the eNB identifies
the specific dedicated preamble to the UE. Id., 1. Further, even a single dedicated
preamble would meet this limitation, because by definition a “set” can have one
The Nokia Proposal discloses that the eNB transmits a signal, which is a
25
preamble.”). Furthermore, this message comprises an identification number of the
determined random access preamble. The Nokia Proposal explains that within the
“information fields” of the message transmitted to the UE, the “preamble identity”
is identified with “6 bits”— meaning that the determined random access preamble
A POSITA would have understood that the message transmitted from the eNB
which the determined random access preamble is valid to be used by the UE for
random access. Kakaes Decl., ¶96. The message includes “an index to a PRACH
time slot,” which provides the claimed information. Nokia Proposal, 1–2 (“[The]
transmit the random access preamble to the eNB. §II.B., supra. A POSITA would
have known from 3GPP Series 36 that the UE may only transmit the random access
preamble during specific subframes of a radio frame (as indicated in 36.211). Kakaes
26
Decl., ¶97; see also supra, §II.C. A POSITA would have known that these subframes
36.211, Table 5.7.1–2. A POSITA would have understood that the available
configuration. Kakaes Decl., ¶97. For instance, a POSITA would have known that
#0, #2, #4, #6, and #8—the only subframes during which the UE may transmit the
configuration 12 defines that PRACH resources occur in subframe #0; subframe #2,
subframe #4, subframe #6 and subframe #8 of each radio frame.”); Kakaes Decl.,
¶97.
The Nokia Proposal teaches that the UE knows which PRACH configuration
27
transmit the dedicated preamble.” Nokia Proposal, 1. Accordingly, the Nokia
Proposal teaches “time slots indexed over a radio frame” such that the “UE would
be allowed to transmit the dedicated preamble only in a certain PRACH time slot of
each radio frame.” Id., 1–2. In other words, these time slots indicate which of the
available subframes (PRACH occurrences) are valid for a UE to transmit its assigned
preamble. See Kakaes Decl., ¶¶98–99. The Nokia Proposal explains that eNB sends
these valid time slots to the UE in the same message identifying the preamble:
See Nokia Proposal, 2 (“[A]n index to a PRACH time slot could be given…0 to 4
bits would be needed for explicit signaling of the time access slot[.]”).
The Nokia Proposal explains that this method of specifying valid time slots
for a UE to transmit a dedicated preamble “would double the capacity because the
same preamble identity could be allocated for two UEs on overlapping validity
28
2. Claim 2: The method according to claim 1 wherein said
information indicating at least one PRACH occurrence
indicates at least one subframe during which the determined
random access preamble is valid to be used by the UE for
random access, said at least one subframe being tied to a frame
structure
The Nokia Proposal renders the method of claim 1 obvious. See supra, Claim
1. The Nokia Proposal also renders claim 2 obvious in that it teaches that the base
station sends the UE information (i.e., time slots within a radio frame) indicating at
least one PRACH occurrence during which the determined random access preamble
is valid to be used by the UE for random access. See supra, Claim [1.3]. These time
slots indicate at least one subframe during which the determined random access
preamble is valid to be used by the UE for random access, where the subframe is
tied to a frame structure (i.e., the radio frame structure). See Kakaes Decl., ¶102.
A POSITA would have known that radio frames (each 10 ms) are subdivided
into 10 equal subframes, which are further divided into two time slots. Kakaes Decl.,
¶103. Thus, a POSITA would have understood that “time slots” within a radio frame
correspond to subframes of the radio frame. Id., ¶104. Indeed, the Nokia Proposal
explains that the message from the eNB to the UE identifies valid PRACH
occurrences by radio frame time slots. See Nokia Proposal, 1–2 (“The time slots
would be indexed over a radio frame, and UE would be allowed to transmit the
dedicated preamble only in a certain PRACH time slot of each radio frame.”); see
Kakaes Decl., ¶104. These time slots also indicate subframes where the preamble is
29
valid to be used. See Nokia Proposal, 2 (“[T]he subframe of signaling would directly
A POSITA would have further known that the subframes of a radio frame are
The Nokia Proposal renders the method of claim 1 obvious. See supra, Claim
1. The Nokia Proposal also renders claim 3 obvious in that it teaches that the base
station sends the UE information (i.e., time slots) indicating at least one PRACH
occurrence during which the determined random access preamble is valid to be used
The Nokia Proposal further teaches that this information (i.e., time slots)
frame, which repeats in regular intervals. For instance, the Nokia Proposal teaches
that the “UE would be allowed to transmit the dedicated preamble only in a certain
30
PRACH time slot of each radio frame.” Nokia Proposal, 1–2. Moreover, the Nokia
Proposal teaches that “[i]n this scheme, preamble retransmissions would take place
with a separation of 10ms”—indicating that every radio frame repeats the same
pattern of valid time slots. Id., 2; Kakaes Decl., ¶107. A POSITA would have
therefore understood that the “period” of the PRACH occurrences valid to be used
The Nokia Proposal renders the method of claim 1 obvious. See supra, Claim
1. The Nokia Proposal also renders claim 4 obvious in that it teaches that the base
station signals the UE with information (i.e., time slots) indicating the PRACH
occurrences valid for the UE to transmit the assigned random access preamble. See
supra, Claim [1.3]. The Nokia Proposal further teaches that “0 to 4 bits would be
needed for explicit signaling of the time access slot in case of FDD.” Nokia
Proposal, 2. Indeed, the Nokia Proposal teaches that the “width[] of the information
field[]” indicating the valid PRACH occurrences is “0–4 bits (depending on the
RACH slot configuration in FDD).” Id., 2. A POSITA would have understood that
31
5. Claim 5: The method according to claim 4 wherein said binary
value is expressed by a predefined number of bits
The Nokia Proposal renders the method of claim 4 obvious. See supra, Claim
4. The Nokia Proposal also renders claim 5 obvious. As explained above, the “binary
value” indicating the valid PRACH occurrences is “0–4 bits (depending on the
RACH slot configuration in FDD).” See Nokia Proposal, 2 (“From 0 to 4 bits would
be needed for explicit signaling of the time access slot in case of FDD [frequency
division duplex].”). The Nokia Proposal explains the number of bits (0–4) is
FDD.” Nokia Proposal, 2. A POSITA would have understood that the Nokia
36.211, Table 5.7.1-2. For instance, in PRACH configuration 12, five subframes
have PRACH occurrences, so three bits are needed (because 23 > 5). Thus, the
32
“binary value” is expressed by a pre-determined number of bits, depending on the
The Nokia Proposal renders the method of claim 4 obvious. See supra, Claim
4. The Nokia Proposal also renders claim 6 obvious. As explained above, the Nokia
Proposal teaches that the base station sends the UE information (i.e., time slots)
indicating at least one PRACH occurrence during which the determined random
access preamble is valid to be used by the UE for random access. See supra,
§VI.A.1.d. The Nokia Proposal also teaches that a binary value (i.e. “0 to 4
bits…needed for explicit signaling of the time access slot”) is used to indicate which
time slots are valid for the UE to use for random access. See supra, Claim 4.
The Nokia Proposal teaches that this binary value corresponds to a “PRACH
PRACH occurrence during which the determined random access preamble is valid
to be used by the UE for random access. For instance, in an FDD system, “an index
“The time slots would be indexed over a radio frame, and UE would be allowed to
33
transmit the dedicated preamble only in a certain PRACH time slot of each radio
frame.” Id., 1–2. This PRACH index corresponds to the claimed binary value
because the binary value (0–4 bits) “explicit[ly] signal[s]” the valid time slots. Id.,
configuration because, the binary value (indicating the PRACH index) depends on
information fields would be…PRACH resource 0-4 bits (depending on the RACH
The Nokia Proposal renders the method of claim 1 obvious. See supra, Claim
1. The Nokia Proposal also renders claim 7 obvious in that it explains the eNB
transmits its message to the UE over a PDCCH. Specifically, the Nokia Proposal
preambles” and that the message “include[s] in a PDCCH format the information
Additionally, the Nokia Proposal teaches that “at most 16 bits would be signaled”
“in a DL [downlink] grant on PDCCH.” Id.; see also Kakaes Decl., ¶119.
34
8. Claim 9
The Nokia Proposal teaches a method where the “eNB needs to signal to the
UE the identity of the dedicated preamble.” Nokia Proposal, 1. The Nokia Proposal
further teaches that this “signaling is needed in order to prepare UE for transmission
The Nokia Proposal teaches transmitting a message from a base station to the
See supra, Claim [1.3], Claim [1.1] (explaining that the eNB determines a preamble
to assign the UE). It would have been obvious to a POSITA that because the base
station sends the message to the UE, the UE receives this message. Kakaes Decl.,
¶123.
35
c) [9.2]: “said message further comprising information
indicating at least one physical random access channel
(PRACH) occurrence during which the assigned random
access preamble is valid to be used by the UE for random
access; and”
See supra, Claim [1.3], Claim [1.1] (explaining that the eNB determines a
As explained above, the Nokia Proposal teaches that the eNB messages the
information indicating at least one PRACH occurrence for which the assigned
dedicated preamble is valid. See supra Claim [1.2-1.3]; Kakaes Decl., ¶125.
The Nokia Proposal further teaches that the UE performs random access
PRACH resources need not be signaled but it is enough to indicate on which of these
based on the information signaled by the base station—by doing so, the UE performs
36
9. Claim 10: The method according to claim 9 wherein said
information indicating at least one PRACH occurrence
indicates at least one subframe during which the assigned
random access preamble is valid to be used by the UE for
random access, said at least one subframe being tied to a frame
structure
37
14. Claim 15: The method according to claim 9 wherein the
transmitting comprises transmitting said message on a physical
downlink control channel (PDCCH)
15. Claim 17
38
e) [17.4]: “performing, by the UE, a random access based
on the received identification number of the available
random access preamble and based on the indicated
information concerning said at least one PRACH
occurrence.”
16. Claim 18
cellular phone) to communicate with a network. See supra, §II.A. A POSITA would
have understood that eNBs in LTE systems included memories and processors. For
the Nokia Proposal’s eNB comprises the claimed memory and processor, which
POSITA would have recognized that the Nokia Proposal’s eNB comprises the
39
c) [18.2]: “to determine from a set of dedicated random
access preambles, a random access preamble, to assign to
said UE; and”
17. Claim 19: The radio base station according to claim 18 wherein
said information indicating at least one PRACH occurrence
indicates at least one subframe during which the determined
random access preamble is valid to be used by the UE for
random access, said at least one subframe being tied to a frame
structure
18. Claim 20: The radio base station according to claim 18 wherein
said information indicating at least one PRACH occurrence
indicates a periodicity for said at least once PRACH occurrence
during which the determined random access preamble is valid
to be used by the UE for random access
40
19. Claim 21: The radio base station according to claim 18 wherein
said information indicating at least one PRACH occurrence
comprises a field with a binary value indicative of said at least
one PRACH occurrence
20. Claim 22: The radio base station according to claim 21 wherein
said binary value is expressed by a predefined number of bits
21. Claim 23: The radio base station according to claim 21 wherein
said binary value corresponds to a PRACH index, the PRACH
index being associated with a predefined configuration
indicating at least one PRACH occurrence during which the
determined random access preamble is valid to be used by the
UE for random access
22. Claim 24: The radio base station according to claim 18 wherein
said message is transmitted on a physical downlink control
channel (PDCCH)
23. Claim 26
is a device such as a cellular phone or Wi-Fi enabled computer that can communicate
41
with a network. See supra, §II.A. A POSITA would have understood that UEs in
LTE systems included memories and processors. For example, Phan explains that
UEs in LTE systems include “a data processor (DP)” and a “memory (MEM)…that
comprises the claimed memory and processor, which would have been obvious to a
POSITA. See Kakaes Decl, ¶¶166–68. Therefore, a POSITA would have recognized
that the Nokia Proposal’s UE comprises the claimed memory and processor. Id.,
¶166–68.
42
24. Claim 27: The user equipment according to claim 26 wherein
said information indicating at least one PRACH occurrence
indicates at least one subframe during which the assigned
random access preamble is valid to be used by the UE for
random access, said at least one subframe being tied to a frame
structure
43
29. Claim 32: The user equipment according to claim 26 wherein
said message is received on a physical downlink control
channel (PDCCH)
30. Claim 34
44
e) [34.4]: “the UE, configured to perform a random access
based on the identification number of the available
random access preamble and based on the indicated
information concerning said at least one PRACH
occurrence.”
1. Motivation to Combine
Nokia Proposal, 36.300, 36.321, and 36.331, which would have involved routine
Kakaes Decl., ¶¶191–202. This combination would have successfully achieved the
systems. Id. Thus, this combination combines prior art elements according to known
A POSITA would have understood for several reasons that the Nokia Proposal’s
teachings with one another. Id., ¶¶192-94. These three documents are closely
related—they all belong to Series 36 (which standardizes LTE technology) and were
prepared by the same TSG (RAN) and working group (WG2), indicating that they
should be read in conjunction with one another. Id., ¶194; supra §§II.A. Further,
45
each document covers related aspects of the same technology—namely, non-
contention random access procedures and their specific versions are also of the same
release (Release 8), further indicating that they should be read together. Id., ¶193.
Indeed, 36.300 makes clear that 36.321 and 36.331 “contain provisions which,
through reference in this text, constitute provisions of the present document.” Id.,
¶194; 36.300, §2. Relevant provisions of 36.331 expressly refer to 36.321, as shown
below:
36.331, §6.3.2. Thus, a POSITA would have understood that 36.300, 36.321, and
36.331 are more than compatible—in light of their common origin, overlapping
Second, a POSITA would have read the Nokia Proposal together with 36.300,
36.321, and 36.331. Id., ¶¶195-98. The Nokia Proposal was submitted to TSG RAN,
which developed 36.300, 36.321, and 36.331 (Nokia Proposal, 1), and was presented
at the November 9, 2007 TSG RAN meeting where several additional Series 36 TS’s
46
were discussed. See Ex. 1013. Moreover, the Nokia Proposal discusses specific
technical features found in 36.300, 36.321, and 36.331 including “eNB,” “UE,”
Nokia Proposal, 1–2 with e.g., 36.300, §10.1.5; 36.321, §5.1; 36.331, §6.3.2,
§5.3.1.3. Accordingly, a POSITA would have understood that the Nokia Proposal
discusses the same specific technological features presented in 36.300, 36.321, and
36.331, and would have been motivated to combine their teachings. Kakaes Decl.,
¶¶195–98.
these references. As noted, the Nokia Proposal and 36.300, 36.321, and 36.331 each
discuss the same specific technological features relating to the same standard
(3GPP). Thus, the combination would have been straightforward and would not have
understood that the Nokia Proposal’s teachings build on those of 36.300, 36.321,
and 36.331, further indicating that these references would work in conjunction. Id.
47
2. Claim 1
The Nokia Proposal in view of 36.300, 36.321, and 36.331 renders the
preamble obvious.
The Nokia Proposal discusses types of information included when the “eNB
needs to signal to the UE the identity of the dedicated preamble” in order to improve
contention-based random access in the 3GPP LTE system when implementing the
teachings of the Nokia Proposal, including 36.300, 36.321. Kakaes Decl., ¶203; see
48
36.300, FIG. 10.1.5.2-1; see also 36.321, §5.1.2 (explaining that the UE can “directly
proceed to its transmission” of the preamble if the “Random Access Preamble and
PRACH resource are explicitly signalled” by the eNB); 36.331, §6.3.2 (describing
the Information Elements sent by the eNB to the UE specifying the dedicated random
identity of the dedicated preamble, a POSITA would have understood that the Nokia
Kakaes Decl., ¶203; see also Nokia Proposal, 2 (discussing improvements to non-
method including the assignment of a preamble to a UE, the Nokia Proposal in view
49
b) [1.1]: “determining, from a set of dedicated random
access preambles, a random access preamble, to assign to
said UE; and”
The Nokia Proposal in view of 36.300, 36.321, and 36.331 render this
limitation obvious.
The teachings of the Nokia Proposal are discussed in detail above. See supra,
Ground 1, Claim [1.1]. As noted, the Nokia Proposal discusses types of information
included when the “eNB needs to signal to the UE the identity of the dedicated
Proposal, 1-2; see also Ground 1, Claim [1.1] (discussing teachings of the Nokia
when implementing the teachings of the Nokia Proposal, including 36.300, 36.321.
Kakaes Decl., ¶207; see also supra §VI.B.1. (discussing motivations to combine).
50
36.331, §6.3.2 (annotated).
Id.; see also 36.211, §5.7.2 (“There are 64 preambles available in each cell.”). As
number of non-dedicated random access preambles. See id. The remainder are
dedicated preambles for the random access in the target cell”); Kakaes Decl., ¶209.
dedicated random access preambles. Id. 36.331 teaches that, from this set, one
preamble. Id.; see Kakaes Decl., ¶210. Accordingly, a POSITA would have
understood that the 3GPP standard utilizes a dedicated set of random access
preambles.
51
36.321 teaches that the eNB selects a dedicated random access preamble from
a set of dedicated random access preambles. 36.321 explains that “the set of
available Random Access Preambles in each group” are known before a random
access procedure begins and that some of the available preambles are for explicit
signaling. 36.321, §§5.1.1, 5.1.2 (“If the Random Access Preamble and PRACH
resource are explicitly signalled…the UE can directly proceed to its transmission [of
the Random Access Preamble].”); see Kakaes Decl., ¶211. Accordingly, a POSITA
would have understood that the 3GPP standard determines a dedicated random
Random Access Preamble (a Random Access Preamble not within the set
have understood that preambles not broadcasted on BCH comprise the “set of
dedicated random access preambles.” Kakaes Decl., ¶212; 36.300. Thus, 36.300
random access, and because 36.300, 36.321, and 36.331 teach non-contention-based
52
random access involves determining a random access preamble to assign the UE
from a set of dedicated random access preambles, a POSITA would have understood
the Nokia Proposal in view of 36.300, 36.321, and 36.331 renders obvious this
The Nokia Proposal in view of 36.300, 36.321, and 36.331 render this
limitation obvious.
The teachings of the Nokia Proposal are discussed in detail above. See supra,
Ground 1, Claim [1.2]. The Nokia Proposal discusses types of information included
when the “eNB needs to signal to the UE the identity of the dedicated preamble” in
order to improve non-contention based random access. Nokia Proposal, 1-2; see also
Ground 1, Claim [1.2] (discussing teachings of the Nokia Proposal). The Nokia
Proposal discloses that the signal, which is a message, by the eNB to the UE,
preamble (i.e., 6-bit number included within the information fields of the message).
Nokia Proposal, 1; see also Ground 1, Claim [1.2], supra. Accordingly, a POSITA
random access in the 3GPP LTE system when implementing the teachings of the
53
Nokia Proposal, including 36.300, 36.321. Kakaes Decl., ¶214; see also supra
station transmits a message to the UE “via dedicated signaling in DL” that comprises
36.331 teaches that this message specifies the value ra-Preamble Index, which
message sent from the base station to the UE. See Kakaes Decl., ¶216.
random access, and 36.300 and 36.331 teach non-contention-based random access
said determined random access preamble, a POSITA would have understood the
Nokia Proposal in view of 36.300 and 36.331 renders obvious this limitation. Id. at
¶217.
54
d) [1.3]: “[the message] further comprising information
indicating at least one physical random access channel
(PRACH) occurrence during which the determined
random access preamble is valid to be used by the UE for
random access.
at least one physical random access channel (PRACH) occurrence during which the
determined random access preamble is valid to be used by the UE for random access.
See supra, Ground 1, Claim [1.3]. The teachings of 36.321 and 36.331 further
support and are compatible with the Nokia Proposal’s teachings as described below.
36.321, §5.1.2; Kakaes Decl., ¶219. Specifically, 36.321 teaches that the base station
signals to the UE at least three things: (1) the identity of the assigned dedicated
random access preamble, (2) the PRACH resource, and (3) the Random Access
Preamble expiration time. See 36.321, §5.1.2 (“If the Random Access Preamble and
PRACH resource are explicitly signalled and its expiration time was configured and
would have understood that the explicitly signalled PRACH resource discussed in
36.321 refers to the PRACH configuration, which includes the subframe number(s)
(as well as the frame number(s)) in which random access is allowed for a specific
configuration effectively identifies a single subframe that the UE may use. For
55
example, configuration 1 indicates PRACH resources occur only in subframe
number 4. Id. (discussing 36.211, Table 5.7.1–2). But other PRACH configurations
Rather than indicate an entire PRACH configuration that may cover multiple
the UE may use for random access. Namely, information indicating at least one
physical random access channel (PRACH) occurrence is transmitted, rather than the
overall PRACH resource. Kakaes Decl., ¶219; Nokia Proposal, 1 (“We assume that
Therefore, the overall PRACH resources need not be signaled but it is enough to
preamble”).
supplement to the process described in 36.321. Kakaes Decl., ¶219. Indeed, some
PRACH resource while others indicate multiple PRACH resources. Id. The Nokia
Proposal’s inclusion of the single PRACH resource, rather than the overall PRACH
56
the overall process by “telling” the UE which PRACH to use—making all PRACH
36.331 also teaches that the dedicated preamble assigned to the UE is invalid
past the signaled expiry time. 36.331, §6.3.2 (“Expiry time of the explicitly signalled
Random Access Preamble.”); Kakaes Decl., ¶220. Thus, a POSITA would have
understood that eNB’s typically included an expiry time when signaling the
have understood that Nokia Proposal’s eNB sends the UE the valid PRACH
valid for random access—namely, PRACH resources occurring before the expiry
time. Id.
36.300 and 36.331 and would have had a reasonable expectation of success in
making the proposed combination for the reasons discussed above. §VI.B.1., supra.
references. The Nokia Proposal suggests that the “UE would be allowed to transmit
the dedicated preamble only in a certain PRACH time slot of each radio frame.”
57
Nokia Proposal, 1–2. The Nokia Proposal explains that “[t]his would very
effectively increase the capacity of the non-contention based random access without
causing essential delay” and “would double the capacity because the same preamble
identity could be allocated for two UEs on overlapping validity periods.” Id., 2
(“This kind of capacity increase would be important when dedicated preambles are
motivated to combine these references to double the number of UEs that can perform
non-contention random access with the same number of dedicated preambles, and
reduce access delays and collisions. See Kakaes Decl., ¶¶198–99. For the same
reasons, applying the teachings of the Nokia Proposal to 36.300, 36.321, and 36.331
represents applying a known technique and/or known prior art elements (limiting
valid time slots for a UE to transmit an assigned preamble) to a known method ready
these references. Id., ¶202. The Nokia Proposal discloses specific benefits of its
58
3. Claim 2: The method according to claim 1 wherein said
information indicating at least one PRACH occurrence
indicates at least one subframe during which the determined
random access preamble is valid to be used by the UE for
random access, said at least one subframe being tied to a frame
structure
explained above, the Nokia Proposal teaches that the eNB indicates to the UE
specific time slots within a radio frame indicating at least one PRACH occurrence
during which the dedicated preamble is valid to be used by the UE for random
access. Nokia Proposal, 1–2. As discussed above, a POSITA would have been
familiar with the division of radio frames and subframes and also known that the
subframes of a radio frame are tied to a frame structure. Ground 1, Claim 2, supra.
36.300 discusses the division of radio frames and subframes and teaches that
the subframes of a radio frame are tied to a frame structure. Specifically, 36.300
teaches that each 10 ms radio frame consists of ten 1 ms subframes, and each
subframe consists of two “equally sized slots.” 36.300, §5. This frame structure is
59
Id., FIG. 5.1-1. Each of these time slots indicates at least one subframe. For instance,
slots #0 and #1 indicate the first subframe, slots #2 and #3 indicate the second
subframe, etc. See id.; Kakaes Decl., ¶224. As shown above, these subframes are
tied to a frame structure, namely, the 10 ms radio frame structure in an FDD system.
Id.
and the Nokia Proposal for the reasons discussed above. §§VI.B.1, Ground 2, Claim
[1.3].
4. Claim 3
5. Claim 4
6. Claim 5
7. Claim 6
60
This element is obvious in view of the Nokia Proposal. See supra, Ground 1,
“PDCCH order” which includes “[a] Random Access Preamble and PRACH
resource.” 36.321, §5.1.1. In view of this disclosure and the Nokia Proposal, a
POSITA would have understood that this “PDCCH order,” which includes the
Decl., ¶236. A POSITA would have been motivated to combine the teachings of
36.321 and the Nokia Proposal for the reasons discussed above. §VI.B.1, supra.
9. Claim 9
See supra, Ground 1, Claim [1.2], Claim [9.1]; Ground 2, Claim [1.2].
61
d) [9.3]: “performing a random access based on the received
identification number and based on the information
indicating said at least one PRACH occurrence.”
The teachings of the Nokia Proposal in view of 36.300 and 36.321 render this
limitation obvious.
The teachings of the Nokia Proposal are discussed in detail above. See supra,
Ground 1, Claim [1.1]. As noted, the Nokia Proposal discusses types of information
included when the “eNB needs to signal to the UE the identity of the dedicated
when implementing the teachings of the Nokia Proposal, including 36.300, 36.321.
Kakaes Decl., ¶241; see also supra §VI.B.1, VI.B.2.d (discussing motivations to
combine).
36.300 teaches that following the assignment of the random access preamble
to the UE by the eNB, the next step is the transmission of the assigned non-
contention random access preamble to the eNB by the UE. 36.300, §10.1.5.2. This
62
36.300, FIG. 10.1.5.2-1. A POSITA would have understood that the transmission of
36.321 teaches that “[i]f the Random Access Preamble and PRACH resource
are explicitly signaled and its expiration time was configured and has not expired,”
then “the UE can directly proceed to its transmission.” 36.321, §5.1.2. A POSITA
random access is performed based on the received identification number (i.e., the
identified random access preamble) and on the PRACH resource—both of which are
signaled from the eNB to the UE. Indeed, 36.321 further teaches that the selected
A POSITA would have understood that in light of the Nokia Proposal, which
supra, Ground 1, Claim [1.2]; Ground 2, Claim [1.2]), this step would be performed
63
based on this information rather than the overall PRACH resources. Kakaes Decl.,
¶243; Nokia Proposal, 1 (“We assume that UE knows the RACH parameters that are
included in System Information. Therefore, the overall PRACH resources need not
transmit the dedicated preamble.”). A POSITA would have understood that the
allowed for a specific configuration. Id. Thus, a POSITA would have understood
random access, and because 36.300 and 36.321 teach non-contention-based random
access involves performing random access based on the received signal from the
eNB, a POSITA would have understood that the Nokia Proposal in view of 36.300
10. Claim 10
11. Claim 11
64
12. Claim 12
13. Claim 13
14. Claim 14
15. Claim 15
16. Claim 17
a) Claim 17 Preamble
b) Claim [17.1]
c) Claim [17.2]
d) Claim [17.3]
e) Claim [17.4]
65
17. Claim 18
a) Claim 18 Preamble
b) Claim [18.1]
c) Claim [18.2]
d) Claim [18.3]
e) Claim [18.4]
See supra, Ground 1, Claims [1.1], [1.3]; Ground 2, Claims [1.1], [1.3].
18. Claim 19
19. Claim 20
20. Claim 21
21. Claim 22
22. Claim 23
66
23. Claim 24
24. Claim 26
a) Claim 26 Preamble
b) Claim [26.1]
c) Claim [26.2]
d) Claim [26.3]
e) Claim [26.4]
25. Claim 27
26. Claim 28
27. Claim 29
28. Claim 30
67
29. Claim 31
30. Claim 32
31. Claim 34
a) Claim 34 Preamble
b) Claim [34.1]
c) Claim [34.2]
d) Claim [34.3]
e) Claim [34.4]
factors, the Board first considers whether the same or substantially the same prior
68
IPR2019-01469, Paper 6, 8. The first condition of the Advanced Bionics framework
this Petition: the Nokia Proposal, 36.300, 36.321, and 36.331. The Nokia Proposal
was not cited on the face of the ’601 Patent or considered by the examiner. Thus, no
prior art in Ground 1 was cited or considered. With regard to Ground 2, although
36.300, 36.321, and 36.331 were cited on the face of the ’601 Patent, they were not
references are not used to teach the point of novelty of the ’601 Patent.
The Board has found that where presented prior art references include
references that were not before the examiner in combination with a reference that
was not substantively considered by an examiner, such combinations are not the
same or substantially the same art or arguments previously presented to the Office.
No. 21 at 33 (P.T.A.B. Jul. 9, 2021); see also Intel Corporation v. Koninklijke Philips
N.V., IPR2021-00370, No. 10 at 9 (P.T.A.B. Jul. 6, 2021) (finding that the first
condition of Advanced Bionics was not satisfied where a single reference had been
cited on the face of the Challenged Patent while the other references were not before
the examiner and declining to consider the material error condition of Advanced
Bionics).
69
B. The General Plastic Factors Favor Institution
institution under § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
response. Because Apple was not a party to Samsung IPR, this is Apple’s first
challenge to the ’601 Patent, and Apple has no relationship with Samsung, the first
five factors weigh against denial. Unified Patents, Inc. v. Certified Measurement,
LLC, IPR2018-00548, Paper No. 7 at 7-8 (Sep. 5, 2018); Valve Corp. v. Elec.
Scripting Prod., Inc., IPR2019-00062, Paper No. 11 at 2, 9-10, 12-13 (Apr. 2, 2019).
As to the sixth factor, the instant petition largely repurposes the Samsung IPR, which
respects the Board’s finite resources and allows it to complete any analysis it started
with the Samsung IPR. Regarding the seventh factor, there is no readily identifiable
roadblock for the Board to issue a final determination within the statutory one-year
limit.
VIII. CONCLUSION
Claims.
70
Respectfully submitted,
71
IX. MANDATORY NOTICES
A. Real Party-In-Interest
B. Related Matters
72
D. 37 C.F.R. §42.8(b)(4): Service Information
consents to electronic service directed to the counsel email addresses listed above
and [email protected].
73
CLAIMS LISTING APPENDIX
U.S. Patent No. 10,165,601, Claims 1–7, 9–15, 17–24, 26–32, and 34
1
Claim 7 7. The method according to claim 1 wherein the transmitting
comprises transmitting said message on a physical downlink control
channel (PDCCH).
Claim 9 9. A method of enabling a user equipment (UE) to perform a
Preamble random access in a telecommunications system, the method
comprising:
Claim 9.1 receiving a message from a radio base station, the message
comprising an identification number of a dedicated random access
preamble assigned to the UE;
Claim 9.2 said message further comprising information indicating at least one
physical random access channel (PRACH) occurrence during
which the assigned random access preamble is valid to be used by
the UE for random access; and
Claim 9.3 performing a random access based on the received identification
number and based on the information indicating said at least one
PRACH occurrence.
Claim 10 10. The method according to claim 9 wherein said information
indicating at least one PRACH occurrence indicates at least one
subframe during which the assigned random access preamble is
valid to be used by the UE for random access, said at least one
subframe being tied to a frame structure.
Claim 11 11. The method according to claim 9 wherein said information
indicating at least one PRACH occurrence indicates a periodicity
for said at least one PRACH occurrence during which the assigned
access preamble is valid to be used by the UE for random access.
Claim 12 12. The method according to claim 9 wherein said information
indicating at least one PRACH occurrence comprises a field with a
binary value indicative of said at least one PRACH occurrence.
Claim 13 13. The method according to claim 12 wherein said binary value is
expressed by a predefined number of bits.
Claim 14 14. The method according to claim 12 wherein said binary value
corresponds to a PRACH index, said PRACH index being
associated with a predefined configuration indicating of at least one
PRACH occurrence during which the assigned random access
preamble is valid to be used by the UE for random access.
Claim 15 15. The method according to claim 9 wherein the receiving
comprises receiving said message on a physical downlink control
channel (PDCCH).
2
Claim 17 17. A method in a telecommunications system, of assigning a
Preamble preamble to a user equipment (UE) for enabling said UE to perform
a random access, said system comprising a radio base station being
allocated a set forming a pool of dedicated random access
preambles, the method comprising:
Claim 17.1 determining in the radio base station, a dedicated random access
preamble, of the set, to assign to the UE;
Claim 17.2 receiving at the UE, a message from the radio base station, the
message comprising an identification number of the assigned
random access preamble and
Claim 17.3 further comprising information indicating in which of at least one
physical random access channel (PRACH) occurrence, the assigned
random access preamble is valid to be used by the UE for random
access; and
Claim 17.4 performing, by the UE, a random access based on the received
identification number of the available random access preamble and
based on the indicated information concerning said at least one
PRACH occurrence.
Claim 18 18. A radio base station to assign a preamble to a user equipment
Preamble (UE), the radio base station comprising:
Claim 18.1 a memory configured to store instructions; and
Claim 18.2 a processor configured to execute said instructions and thereby
cause the radio base station:
Claim 18.3 to determine, from a set of dedicated ransom access preambles, a
random access preamble, to assign to said UE; and
Claim 18.4 to transmit a message to the UE, the message comprising an
identification number of said determined random access preamble
and
Claim 18.5 further comprising information indicating at least one physical
random access channel (PRACH) occurrence during which the
determined random access preamble is valid to be used by the UE
for random access.
Claim 19 19. The radio base station according to claim 18 wherein said
information indicating at least one PRACH occurrence indicates at
least one subframe during which the determined random access
preamble is valid to be used by the UE for random access, said at
least one subframe being tied to a frame structure.
Claim 20 20. The radio base station according to claim 18 wherein said
information indicating at least one PRACH occurrence indicates a
3
periodicity for said at least one PRACH occurrence during which
the determined random access preamble is valid to be used by the
UE for random access.
Claim 21 21. The radio base station according to claim 18 wherein said
information indicating at least one PRACH occurrence comprises a
field with a binary value indicative of said at least one PRACH
occurrence.
Claim 22 22. The radio base station according to claim 21 wherein said
binary value is expressed by a predefined number of bits.
Claim 23 23. The radio base station according to claim 21 wherein said
binary value corresponds to a PRACH index, the PRACH index
being associated with a predefined configuration indicating at least
one PRACH occurrence during which the determined random
access preamble is valid to be used by the UE for random access.
Claim 24 24. The radio base station according to claim 18 wherein said
message is transmitted on a physical downlink control channel
(PDCCH).
Claim 26 26. A user equipment (UE) capable of performing a random access
Preamble in a telecommunications system, the UE comprising:
Claim 26.1 a memory configured to store instructions; and
Claim 26.2 a processor configured to execute the instructions causing the UE:
Claim 26.3 to receive a message from a radio base station, the message
comprising an identification number of a dedicated random access
preamble assigned to the UE and further comprising information
indicating at least one physical random access channel (PRACH)
occurrence during which the assigned random access preamble is
valid to be used by the UE for random access; and
Claim 26.4 to perform a random access based on the received identification
number and based on the information indicating said at least one
PRACH occurrence.
Claim 27 27. The user equipment according to claim 26 wherein said
information indicating at least one PRACH occurrence indicates at
least one subframe during which the assigned random access
preamble is valid to be used by the UE for random access, said at
least one subframe being tied to a frame structure.
Claim 28 28. The user equipment according to claim 26 wherein said
information indicating at least one PRACH occurrence indicates a
periodicity for said at least one PRACH occurrence during which
4
the assigned access preamble is valid to be used by the UE for
random access.
Claim 29 29. The user equipment according to claim 26 wherein said
information indicating at least one PRACH occurrence indicates
comprises a field with a binary value indicative of said at least one
PRACH occurrence.
Claim 30 30. The user equipment according to claim 29 wherein said binary
value is expressed by a predefined number of bits.
Claim 31 31. The user equipment according to claim 29 wherein said binary
value corresponds to a PRACH index, the PRACH index being
associated with a predefined configuration indicating of at least one
PRACH occurrence during which the assigned random access
preamble is valid to be used by the UE for random access.
Claim 32 32. The user equipment according to claim 26 wherein said
message is received on a physical downlink control channel
(PDCCH).
Claim 34 34. A telecommunications system to enable a radio base station to
Preamble assign a preamble to a user equipment (UE) for enabling the UE to
perform a random access, said radio base station being allocated a
set forming a pool of dedicated random access preambles, the
telecommunications system comprising:
Claim 34.1 the radio base station, configured to determine a dedicated random
access preamble, of the set, to assign to the UE;
Claim 34.2 the UE, configured to receive a message from said radio base
station, the message comprising an identification number of the
assigned random access preamble of the set and
Claim 34.3 further comprising information indicating in which of at least one
physical random access channel (PRACH) occurrence, the assigned
random access preamble is valid to be used by the UE for random
access; and
Claim 34.4 the UE, configured to perform a random access based on the
identification number of the available assigned dedicated random
access preamble and based on the indicated information concerning
said at least one PRACH occurrence.
5
APPENDIX OF EXHIBITS
Exhibit Description
No.
1001 U.S. Patent No. 10,165,601
1002 File History of U.S. Patent No. 10,165,601
1003 Declaration of Dr. Apostolos (Paul) K. Kakaes in Support of Inter
Partes Review of U.S. Patent No. 10,165,601
1004 Curriculum Vitae of Dr. Apostolos (Paul) K. Kakaes
1005 Declaration of Friedhelm Rodermund in Support of Inter Partes Review
of U.S. Patent No. 10,165,601
1006 Curriculum Vitae of Friedhelm Rodermund
1007 U.S. Provisional Patent Application No. 61/077,295
1008 3GPP TSG RAN WG1 #51 Meeting R1-074857, Proposed Response to
RAN2 LS on Signaling for DL Data Arrival (R2-074575), (“Nokia
Proposal”)
1009 3GPP TS 36.300, Evolved Universal Terrestrial Radio Access
(EUTRA) and Evolved Universal Terrestrial Radio Access Network
(EUTRAN); Overall Description, Version 8.1.0 (Release 8)
1010 3GPP TS 36.321, Evolved Universal Terrestrial Radio Access
(EUTRA) Medium Access Control (MAC) Protocol Specification,
Version 8.1.0 (Release 8)
1011 3GPP TS 36.331, Evolved Universal Terrestrial Radio Access
(EUTRA) Radio Resource Control (RRC); Protocol Specification,
Version 8.1.0 (Release 8)
1012 3GPP TS 36.211, Evolved Universal Terrestrial Radio Access
(EUTRA) Physical Channels and Modulation, Version 8.1.0 (Release
8)
1013 Draft Report of 3GPP TSG RAN WG1 #51 v1.0.0 (Jeju, South Korea,
5 – 9 November, 2007)
1014 3GPP TSG RAN WG1 #51 List of Attendees
1015 U.S. Patent Application No. 2008/0051091 (“Phan”)
6
CERTIFICATION OF COMPLIANCE
C.F.R. §42.24, totaling 13,374 words. Counsel has relied upon the word count
7
CERTIFICATE OF SERVICE ON PATENT OWNER
UNDER 37 C.F.R. §42.105
The undersigned hereby certifies that a copy of the foregoing document with
accompanying Exhibits 1001—1015 was served on January 19, 2022, via overnight
delivery, upon agreement under 37 CFR §42.105, directed to the attorney of record
for the patent as identified on USPTO PAIR and associated with USPTO Customer