22-01-19 Apple IPR Petition Against US8798658
22-01-19 Apple IPR Petition Against US8798658
_________________
APPLE INC.,
Petitioner
v.
TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner
_________________
I. INTRODUCTION ..........................................................................................1
II. SUMMARY OF THE ’658 PATENT ............................................................1
A. STATE OF THE ART AND THE ’658 PATENT’S ALLEGED INVENTION .............1
B. THE ’658 PATENT’S PROSECUTION..............................................................4
C. A PERSON OF ORDINARY SKILL IN THE ART ................................................5
III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ..........................6
A. STANDING UNDER 37 C.F.R. § 42.104(A) ...................................................6
B. CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED .........6
C. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ..........................7
IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE .........................8
A. GROUND 1: CLAIMS 1-5, 12-16, 22, 26, AND 30 WOULD HAVE BEEN
OBVIOUS UNDER PRE-AIA 35 U.S.C. § 103 OVER ZHOU IN VIEW OF THE
KNOWLEDGE OF A POSITA ........................................................................8
1. OVERVIEW OF ZHOU ..............................................................................8
B. GROUND 2: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
OBVIOUS BY ZHOU IN VIEW OF WU ...........................................................40
1. OVERVIEW OF WU ...............................................................................40
A) WU IS ENTITLED TO A PRIORITY DATE BASED ON THE WU
PROVISIONAL ..................................................................................44
B) WU HAS AT LEAST ONE CLAIM TO AN INVENTION THAT IS
SUPPORTED BY THE DISCLOSURE OF THE WU PROVISIONAL .........47
C. GROUND 3: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
OBVIOUS BY WU .......................................................................................62
V. DISCRETIONARY FACTORS ..................................................................75
A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION ..............................75
VI. CONCLUSION .............................................................................................76
VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................77
A. REAL PARTY-IN-INTEREST ........................................................................77
B. RELATED MATTERS...................................................................................77
C. LEAD AND BACK-UP COUNSEL .................................................................77
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I. INTRODUCTION
of claims 1-5, 12-16, 22-24, 26-28, and 30 (the “Challenged Claims”) of U.S. Patent
Term Evolution (“LTE”) network. Ex. 1001, 1:63-65, Ex. 1003, ¶42. As
infrastructure equipment. Ex. 1003, ¶43; Ex. 1001, 1:23-26. A UE will typically be
a wireless device such as a mobile, handset, cell phone, laptop, tablet, or the like.
Ex. 1003, ¶43; Ex. 1001, 1:26-32. Infrastructure equipment refers to equipment such
as a base station (“BS”). Ex. 1003, ¶43; Ex. 1001, 1:33-37. Depending on the
the like. Ex. 1003, ¶43; Ex. 1005, 1:33-37. A BS typically covers a geographical
area, called a “cell,” within a radio access network (“RAN”), and communicates
wirelessly over the air with the UEs within the cell. Ex. 1003, ¶44; Ex. 1001, 1:33-
38.
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To ensure that a wireless communications network performs optimally, the
network may collect certain information that the UE measures to assess radio
coverage. Ex. 1003, ¶45; Ex. 1008, 28. Traditionally, these measurements were
performed by network operator technicians using “drive test[ing].” Ex. 1003, ¶45;
Ex. 1008, 28; Ex. 1009 § 5.1; Ex. 1012. Drive tests, however, were costly, and could
reducing or eliminating the need to deploy network technicians for drive tests. Ex.
1003, ¶48; see Ex. 1008, 28; Ex. 1009, § 5.1; Ex. 1012. When a UE takes
an idle state, in which it is not connected to a BS. Ex. 1003, ¶51; see Ex. 1008, 30-
33. When the UE is in an idle state, the UE logs the data for later transmission to the
BS. Ex. 1003, ¶51; Ex. 1008, 28, 30-33. When the UE subsequently connects to a
measurements for the BS. Ex. 1003, ¶51; Ex. 1008, 30-33. The BS then decides
whether to request the logged measurements from the UE. Ex. 1003, ¶51; Ex. 1008,
30-33. In response to a request from the BS, the UE may transmit a report message
comprising the logged measurements. Ex. 1003, ¶51; Ex. 1008, 30-33.
The ’658 Patent addresses a purported problem arising when the quantity of
logged data cannot fit within a single Radio Resource Control (“RRC”) message,
which is a message sent from a user equipment (“UE”) to the base station (“BS”)
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providing its measurements. Ex. 1001, 2:49-3:18. The patent proposes a purported
solution of segmenting the data when the logged measurements exceed the
maximum size of the report message and including an indication in the report
buffer. Id., 7:10-17. The BS receives the indication of whether additional logged data
exists in the UE buffer and then decides whether and when to request the additional
network node capacity, UE buffer state condition, etc.). Id., 7:31-42. This way, the
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The ’658 Patent was filed as Application No. 13/001,687 on October 14, 2011.
Ex. 1002, 272. The application claims priority to PCT Application No.
61/389,581, filed on October 4, 2010. Id. For purposes of this petition and without
waiving its right to challenge priority in this or any other proceeding, Petitioner
adopts October 4, 2010, as the invention date for the Challenged Claims.
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As originally filed, the application included the same thirty (30) claims as the
issued ’658 Patent. Ex. 1002, 22-26 (listing Claims 1-30 of national phase entry),
41-48 (listing preliminary amendments to Claims 1-30); Ex. 1003, ¶58. The
Examiner did not reject any of the claims of the application and issued a Notice of
Allowance on March 24, 2014. Ex. 1002, 288. The Examiner identified the use of
an indicator of additional logged measurements not yet transmitted by the UE, and
purported point of novelty of each independent claim. Id., 289-90. The ’658 Patent
at the time of the alleged invention would have had a Master’s degree in Electrical
systems and cellular networks, including working with LTE or its predecessor
UMTS. Ex. 1003, ¶35. That person might be working on developing a standard or
on implementing it. Id. Additional education might compensate for less experience,
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III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
Petitioner certifies that the ’658 Patent is available for IPR and that Petitioner
is not barred or estopped from requesting IPR challenging the claims of the ’658
Patent. Specifically, (1) Petitioner is not the owner of the ’658 patent; (2) Petitioner
(or any real party-in-interest) has not filed a civil action challenging the validity of
any claim of the ’658 patent; (3) Petitioner has not been served with a complaint
315(e)(1) do not prohibit this IPR; and (5) this Petition is filed after the ’658 Patent
was granted.
In view of the prior art and evidence presented, claims 1-5, 12-16, 22-24, 26-
28, and 30 of the ’658 Patent are unpatentable and should be cancelled. 37 C.F.R.
§ 42.104(b)(1). Further, based on the prior art references identified below, IPR of
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Section IV 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 evidence relied
upon to support the challenges are provided above and the relevance of the evidence
In this proceeding, claims are interpreted under the same standard applied by
Article III courts (i.e., the Phillips standard). See 37 C.F.R § 42.100(b); see also 83
Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
meaning which is the meaning understood by a person of ordinary skill in the art in
view of the patent and file history. Phillips, 415 F.3d at 1312–13. Petitioner submits
that the Board does not need to construe any terms to resolve the arguments
presented herein. Realtime Data v. Iancu, 912 F. 3d 1368, 1375 (Fed. Cir. 2019)
(“The Board is required to construe only those terms ... that are in controversy, and
only to the extent necessary to resolve the controversy.”) (internal quotes omitted).
error in the ’658 Patent. Specifically, the claims and specification repeatedly refer to
1001, 4:23-24, 5:63, 6:64-65, 8:12, 12:41-42, 13:26-27, 14:48, Fig. 4. For purposes
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of this petition, Petitioner understands “existents” to mean “existence.” To the extent
Patent Owner contends that “existents” does not mean “existence,” Petitioner
contrary.
claim language in the ’658 Patent. Ex. 1001, 15. The following corrections were
A. Ground 1: Claims 1-5, 12-16, 22, 26, and 30 would have been
obvious under pre-AIA 35 U.S.C. § 103 over Zhou in View of the
Knowledge of a POSITA
1. Overview of Zhou
(“Zhou”) (Ex. 1005) was filed on June 21, 2010, designating the United States, and
was published under the Patent Cooperation Treaty in the English language. Ex.
1005, Cover. Zhou is prior art to the ’658 Patent under 35 U.S.C. § 102(e) (pre-AIA).
Zhou was not cited or considered during prosecution of the ’658 Patent. Ex. 1001,
Cover.
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Zhou explains that there are two approaches to MDT reporting. Id., 25. First,
immediately to a BS after they have been taken. Id., 8:25-29. Second, in logged
MDT reporting, a UE in an idle mode will take some MDT measurements and report
them to the network when the UE reconnects, and will include an indicator in the
elaborates in Figure 6:
measurements (steps A1 and A2). Id. Once the UE goes into active mode, e.g., it
connects back to the network (step A4), it sends a message to the BS indicating that
measurement data is available (step A4). Id. The BS then sends a request to the UE
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for the logged measurements (step A5). Id. The UE then determines if all of the
message, or whether there will remaining measurements after the reporting message
is sent (step A6). Id. If there will be remaining measurements, the UE will send a
reporting message to the BS with less than all of the logged measurements, along
with an indication to the BS that additional measurements are available (step A8).
Id. Then the BS can decide whether to request the additional information (step A5).
See also id., 16:11-15 (“[I]f the UE determines that there are some remaining logged
MDT measurements, some of the logged measurements are sent to the base station
along with the availability indicator which will indicate that there are still logged
MDT measurements.”).
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Id., Fig. 4. As depicted in Figure 4, the BS (denoted “eNB”) sends a
an availability indicator that there are further logged MDT reports which have not
yet been sent (i.e., step T3). Id., 13:28-31 (“Step T3 is the same as step S3, but this
time the availability indicator indicates that the [sic] there are further logged MDT
reports which have yet to be sent.”), Fig. 3. If the indicator is positive, the BS may
which have not yet to be sent (i.e., step T4). Id., Fig. 4. On the other hand, if the
indicator is negative (i.e., step T5), the BS does not send a UEInformationRequest
Because Zhou, like the ’658 Patent, discloses a method of reporting logged
MDT measurement data in a 3rd Generation Partnership Project (“3GPP”) long term
evolution (“LTE”) wireless network, Zhou is in the same field of endeavor as the
’658 Patent. Compare Zhou (Ex. 1005), 2:8-27 (describing 3GPP LTE network
base station shown in Fig. 3), with ’658 Patent (Ex. 1001), 1:63-2:44 (describing
measurement reporting).
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Further, since both Zhou and the ’658 Patent indicate whether additional MDT
pertinent to the problem faced by the inventor of the ’658 Patent. Compare Zhou
(Ex. 1005), Abstract (describing a method causing a response to be sent from the
user equipment to said network with only some of said measurement information
15 (describing Fig. 6, steps A6-A8, where the UE determines whether logged MDT
are still logged MDT measurements”), with ’658 Patent (Ex. 1001), Abstract
measurements exist at the UE buffer” when a UE “sends only a portion of the logged
Zhou is therefore analogous art to the ’658 Patent. Ex. 1003, ¶60.
i. Claim 1
1[P] A method in a network node for network based control of report messages in
a wireless communications network, the network node being configured to serve
a user equipment, UE, and to receive report messages from the UE, the method
comprising:
To the extent this preamble is limiting, Zhou teaches it to a POSITA. See Ex.
1005, 2:29-3:3; see also id., Figs. 4, 6; Ex. 1003, ¶78. As discussed above, Zhou
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Referring to Figure 4, Zhou discloses that “[i]n step S2, the base station 12 is
Ex. 1005, 11:17-18; see also id., 13:27-28 (“Steps T1 and T2 are the same as steps
response with a list of logged MDT measurements” to the network, which requires
the network to be configured to receive the report message from the UE. Id., 11:22-
23; see also id., 13:28-29 (“Step T3 is the same as step S3,” except as indicated).
A POSITA would have understood and found it obvious that the response is a report
message, which Zhou calls an RRC message because it reports information to the
network. See Ex. 1005, 11:7-8 (“The MDT measurement reporting may share the
Signaling Radio Bearers SRB2 with one or more other RRC messages.”); Ex. 1003,
¶79.
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And, referring to Figure 6, Zhou further discloses that “the base station sends
a request for [] logged measurements” to the UE. Id., 15:30-32. In response, “if the
UE determines that there are some remaining logged MDT measurements, some of
the logged MDT measurements are sent to the base station,” which requires the BS
to be configured to receive the report message from the UE. Id., 16:11-13.
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Id., Fig. 6.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 15:30-32; see also
id., 11:17-18 (“In step S2, the base station 12 is arranged to send a message to the
UE requesting the logged MDT measurements.”), Fig. 4; Ex. 1003, ¶82. Referring
to Figure 6, Zhou teaches that after the UE sends an availability indicator to the BS
indicating that the UE has logged measurements data, “the base station sends a
request for the logged measurement data,” which the UE provides in a RRC report
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message. Ex. 1005, 15:25-32. A POSITA would have understood and found it
obvious that a RRC message is a report message because it reports the MDT data.
See id., 11:7-8 (“The MDT measurement reporting may share the Signaling Radio
Bearers SRB2 with one or more other RRC messages.”); Ex. 1003, ¶83.
Referring to Figure 4, Zhou further teaches that “[i]n step S2, the base station
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measurements.” Id., 11:17-18; see also id., 13:27-28 (“Steps Tl and T2 are the same
Id., Fig. 4.
response with a list of logged MDT measurements,” which is a report message. Id.,
11:22-23; see also id., 13:28-29 (“Step T3 is the same as step S3,” except as
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Referring to Figure 6, Zhou further discloses that “if the UE determines that
there are some remaining logged MDT measurements, some of the logged MDT
measurements are sent to the base station,” which receives the measurements. Id.,
16:11-13. Zhou additionally discloses that the BS receives the logged MDT
measurements in a RRC message. See Ex. 1005, 11:7-8 (“The MDT measurement
reporting may share the Signaling Radio Bearers SRB2 with one or more other RRC
messages.”).
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Id., Fig. 6. A POSITA would have recognized the base station must receive the
message. Ex. 1003, ¶87 (explaining that the base station determines whether to
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1[c] determining if the received report message comprises an indicator of
additional logged measurements not yet transmitted; and if so,
Zhou teaches this limitation to a POSITA. See id., 13:28-31; Ex. 1003, ¶88.
Zhou teaches that “[s]tep T3 is the same as step S3, but this time the availability
indicator indicates that [] there are further logged MDT reports which have yet to be
sent.” Ex. 1005, 13:28-31; see also id., 11:22-25 (“In step S3, the UE is arranged to
embodiment, the availability indicator is provided with a value indicating that there
are no logged measurements still to retrieve.”). The indicator may be positive (e.g.,
“Yes”) or negative (e.g., “No”). See id., Fig. 4. As illustrated in Figure 4, after the
BS receives the indicator in step T3 that there is additional logged measurement data
to retrieve, the BS sends a request to the UE for the additional logged measurement
data.
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Id., Fig. 4.
A POSITA would have understood and found it obvious that before sending
a request to the UE for additional logged measurement data based on the presence
of the indicator, the BS first determines whether the received report messages
transmitted before sending a request for those additional measurements. Ex. 1003,
information, it must decide to do so. Ex. 1003, ¶89. Additionally, Zhou discloses
that a BS may not initiate logged MDT measurement reporting under certain
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circumstances. Ex. 1005, 12:7-16. When “the network is busy, the network may not
initiate logged MDT measurements reporting before the UE goes into the idle mode
again.” Id., 12:9-11. Zhou’s disclosure is consistent with the disclosure of the
“deciding” step in the ’658 patent, which explains that the BS “may be configured
capacity; UE buffer state condition etc.” Ex. 1001, 6:21-27. That a network is busy
can be reflected in the “available radio resource” and the “network node capacity.”
Ex. 1003, ¶90. A POSITA would have understood that because the BS may not
initiate reporting of logged MDT measurements when the “network is busy” (i.e.,
the BS decides whether to request MDT reports depending on how busy the network
depending on the “available radio resource” and the “network node capacity.” Id.,
¶9l.
response message indicating that there are further logged MDT reports that have not
yet been sent, the BS requests those logged MDT reports from the UE. Ex. 1005,
13:28-34. On the other hand, if the BS receives a response message indicating that
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there are no such further logged MDT reports, the BS does not request them from
Id., Fig. 4.
A POSITA would have understood and found it obvious that the BS decides
indicator indicates that further logged MDT reports exist but have not yet been sent
(e.g., whether a “yes” indicator has been received). Ex. 1003, ¶93. In this manner,
requested. Id.
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ii. Claim 2
The method according to claim 1, wherein the method comprises receiving, from
the UE, an indication of existents of logged measurements that are available.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 13:28-31; 16:11-15;
Ex. 1003, ¶95. Zhou discloses that “[s]tep T3 is the same as step S3, but this time
the availability indicator indicates that [] there are further logged MDT reports which
have yet to be sent.” Ex. 1005, 13:28-31; see also id., 11:22-25 (“In step S3, the UE
one embodiment, the availability indicator is provided with a value indicating that
there are no logged measurements still to retrieve.”). The indicator may be positive
(e.g., “Yes”), indicating that there are further logged MDT reports which have not
yet been sent, or negative (e.g., “No”) if no such additional reports exist. See id., Fig.
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Referring to Figure 6, Zhou further discloses that “if the UE determines that
there are some remaining logged MDT measurements, some of the logged MDT
measurements are sent to the base station along with the availability indicator which
will indicate that there are still logged MDT measurements,” which the base station
receives and then responds accordingly upon. Id., 16:11-15. Ex. 1003, ¶97.
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iii. Claim 3
Zhou teaches this limitation to a POSITA. See Ex. 1005, 9:4-8; Ex. 1003, ¶99.
Zhou discloses that the MDT measurements “may be of any suitable parameter such
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as signal strength of the respective cell as received at the UE. The signal strength
of a reference signal, for example a pilot signal, may be measured.” Id. (emphasis
added). The signal strength of the respective cells indicates an aspect of the serving
cell conditions, and the signal strength of a pilot reference signal corresponds to the
downlink pilot signal strength. Ex. 1003, ¶99. A POSITA would have understood
and found it obvious that this pilot is also a downlink pilot signal, because the UE
receives it over the downlink channel from the BS. Id. Zhou also teaches that MDT
- this may be the frequency at which periodic measurement are made.”); Ex. 1003,
¶99.
iv. Claim 4
The method according to claim 1, wherein the report message is received directly
from the UE or via another network node.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 13:22-25, 16:5-15;
Ex. 1003, ¶101. Referring to Figure 4, Zhou discloses that “the UE is arranged to
which a POSITA would have understood is a report message. Ex. 1005, 11:22-23;
see also id., 13:28-29 (“Step T3 is the same as step S3,” except as indicated). And
as illustrated in Figure 4, the UE transmits the logged MDT measurements to the B5,
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Id., Fig. 4.
Referring to Figure 6, Zhou further discloses that “if the UE determines that
there are some remaining logged MDT measurements, some of the logged MDT
measurements are sent to the base station,” which receives those measurements. Id.,
16:11-13.
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Id., Fig. 6.
v. Claim 5
The method according to claim 1, wherein the deciding is based on one or more
of the following: interference level experienced in a cell; radio condition
measurements experienced in a cell; available radio resource; network node
capacity; UE buffer state condition etc.
Zhou teaches this limitation to a POSITA. Ex. 1003, ¶104. Zhou discloses that
circumstances. Ex. 1005, 7-16. When “the network is busy, the network may not
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initiate logged MDT measurements reporting before the UE goes into the idle mode
again.” Id., 12:9-11. That a network is busy can be reflected in the claimed “available
radio resource” and the “network node capacity.” Zhou’s teaching that the BS may
not initiate reporting of logged MDT measurements when the “network is busy” (i.e.,
the BS decides whether to request MDT reports depending on how busy the network
is) discloses the ’658 Patent’s limitation of deciding whether to request additional
logged measurements depending on the “available radio resource” and the “network
node capacity.” Ex. 1003, ¶104. Further, a POSITA would have understood and
found it obvious that when the BS decides whether to initiate reporting of logged
MDT measurements based on that the “network is busy,” the BS is deciding whether
vi. Claim 12
vii. Claim 13
The network node according to claim 12, wherein the network node
communications interface is configured to receive, from the UE, an indication of
an existents of logged measurements that are available.
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viii. Claim 14
The network node according to claim 12, wherein the logged measurements
comprises one or more of the following: measurement time stamps for each
performed measurement; UE buffer state condition; positioning information of
UE; periodically measured downlink pilot signal strength; serving cell conditions;
transmit power headroom conditions; paging channel failure(s); maximum
required memory supported by UE; and broadcast channel failure(s).
ix. Claim 15
The network node according to claim 12, wherein the network node
communications interface is configured to request the report message directly
from the UE or from another network node.
x. Claim 16
The network node according to claim 12, wherein the network node processor
circuit is configured to decide if the additional logged measurements need to be
requested based on one or more of the following: interference level experienced
in a cell; radio condition measurements experienced in a cell; available radio
resource; network node capacity; UE buffer state condition etc.
xi. Claim 22
22[P] A method in a User Equipment, UE, for assisting in network based control
of report messages in a wireless communications network, the UE being in
connection with a serving network node and configured to transmit report
messages to the network node upon request, and wherein the UE is configured to
periodically perform radio condition measurements and store the periodically
performed measurements in a UE buffer as logged measurements, the method
comprising:
To the extent that this preamble is limiting, Zhou teaches it in Claim 1[P],
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immediate MDT reporting and logged MDT reporting. Ex. 1005, 8:25-31
(“Currently, in 3GPP two MDT reporting approaches have been agreed and
measurements immediately to a base station right after MDT measurement has been
made.” Id., 8:26-29. In logged MDT reporting, on the other hand, “a UE in idle mode
will make some MDT measurement results,” store them as logged measurements in
a UE buffer, and “report these measurements to the network when the UE connects
again to the network.” Id., 8:31-34; see id., 10:15-17 (“When the UE becomes active,
after being in the idle mode, the UE indicates the availability of stored logged MDT
Further, Zhou teaches that MDT measurements can be taken periodically and
may comprise radio condition measurements. Ex. 1005, 9:4-8 (The measurements
“may be of any suitable parameter such as signal strength of the respective cell as
received at the UE. The signal strength of a reference signal, for example a pilot
22[a] receiving a request from the network node to start transmitting logged
measurements in a report message;
See Claim 1[a], supra. Zhou teaches this limitation to a POSITA. Ex. 1003,
¶120. Figure 4 illustrates that the UE receives the request for logged MDT data from
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22[b] determining if the logged measurements fit in the report message; and if not,
Zhou teaches this limitation to a POSITA. See Ex. 1005, 16:1-3; Ex. 1003,
¶121. Referring to Figure 6, Zhou teaches that “[i]n the sixth step A6, the UE
response has been sent to the request from the base station.” Id.
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Notably, Zhou discloses the “base station may[,] in its request for the logged
data or size of message incorporating the logged MDT data.” Ex. 1005, 14:27-29. A
POSITA would have understood and found it obvious that in order to determine if
there will be any remaining measurements after the report message has been sent,
the UE must determine if all of the logged messages fit in the report message
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according to total MDT log and/or MDT measurement size constraints. Ex. 1003,
¶121.
Zhou additionally states that “[s]tep T3 is the same as step S3, but this time
the availability indicator indicates that [] there are further logged MDT reports which
have yet to be sent.” Id., 13:28-31; see also id., 11:22-25 (“In step S3, the UE is
arranged to provide a response with a list of logged MDT measurements, and, in one
embodiment, the availability indicator is provided with a value indicating that there
are no logged measurements still to retrieve.”). The indicator may be positive (e.g.,
“Yes”) or negative (e.g., “No”). See id., Fig. 4. As illustrated in Figure 4, after the
BS receives the indicator that additional logged measurement data exists to retrieve
in step T3, the BS sends a request to the UE for the additional logged measurement
data in step T4. Id. On the other hand, after the BS receives the indication that no
additional logged measurement data exists to retrieve in step T5, the BS does not
send a request to the US for the additional logged measurement data. Id.
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Id., Fig. 4. Accordingly, in order to transmit the appropriate indicator along with the
logged measurement data, a POSITA would have understood that the UE determines
whether the remaining logged measurement data fits in the report message. Ex. 1003,
¶122.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 16:11-15; Ex. 1003,
¶l23. Referring to Figure 6, Zhou teaches that in step A8, “if the UE determines that
there are some remaining logged MDT measurements, some of the logged MDT
measurements are sent to the base station along with the availability indicator which
will indicate that there are still logged MDT measurements.” Ex. 1005, 16:11-15.
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Id., Fig. 6.
step S3, but this time the availability indicator indicates that [] there are further
logged MDT reports which have yet to be sent.” Id., 13:28-31; see also id., 11:22-
25 (“In step S3, the UE is arranged to provide a response with a list of logged MDT
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Id., Fig. 4.
22[d] transmitting the report message, comprising the indicator, to the network
node as a response to the request.
xii. Claim 26
26[P] A User Equipment, UE, for assisting in network based control of report
messages in a wireless communications network, the UE being in connection with
a serving network node and configured to transmit report messages to the network
node, and wherein the UE is configured to periodically perform radio condition
measurements and store the periodically performed measurements in a buffer as
logged measurements, the UE comprises:
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Further, Zhou discloses a UE with a communications interface and processor
xiii. Claim 30
The User Equipment according to claim 26, wherein the logged measurements are
Minimizing Drive Tests, MDT, log data.
Zhou teaches this to a POSITA. See, e.g., Ex. 1005, 13:22-25, Fig. 4; Ex.
1003, ¶130. Zhou discloses that “it is proposed to use a UE information response to
availability indicator to the base station.” Ex. 1005, 13:22-25, Fig. 4. Further, Figure
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Id., Fig. 4.
As described and mapped in Ground 1, Zhou renders Claims 1-5, 12-16, 22,
26, and 30 obvious to a POSITA. See Section IV.A., supra. All arguments and
1. Overview of Wu
1006, 9:16-37.
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Wu explains that first, “the RAN initiates MDT log retrieval by issuing a
5:12-15 (describing Figure 4); see also id., 8:29 (indicating that the method
illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18 (indicating that
the method illustrated in Fig. 12 is the same as Fig. 10, except as indicated). Second,
“[i]n response to the request message, the communication module 100 (or 200)
indicates whether the MDT log reporting is finished or whether at least one more
sub-MDT log is available.” Id., 5:15-17, 8:47-49; see also id., 8:29 (indicating that
the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
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UEInformationRequest message based on the indication of the
indicator indicating that the MDT log reporting is not finished or at least one more
continue the MDT log reporting process or to request for another sub-MDT log.”
does not contain the above indicator, the RAN ceases to send any
Wu further discloses that the “MDT log includes MDT measurements for the
location information.” Id., 4:58-62. The logged measurements that are transmitted
to the network node are further deleted from the buffer of the UE. Id., 6:42-45
(“After the MDT log is received by the RAN, the MDT log retrieval is completed,
and the control module 102 (or 202) discards, clears, deletes, removes, or invalidates
Because Wu, like the ’658 Patent, discloses a method of reporting logged
MDT measurement data in a 3rd Generation Partnership Project (“3GPP”) long term
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evolution (“LTE”) wireless network, Wu is in the same field of endeavor as the ’658
Patent. Compare Wu (Ex. 1006), 4:2-8 (describing UE compliance with 3GPP LTE
access network (“RAN”) node), with ’658 Patent (Ex. 1001), 1:63-2:44 (describing
measurement reporting).
Further, because both Wu and the ’658 Patent indicate whether additional
reasonably pertinent to the problem faced by the inventor of the ’658 Patent.
message may comprise an indicator for explicitly indicating whether the MDT log
reporting is finished or whether at least one more sub-MDT log is available” given
“the size of the sub-MDT log”), with ’658 Patent (Ex. 1001), Abstract (describing
exist at the UE buffer” when a UE “sends only a portion of the logged measurements
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a) Wu Is Entitled To A Priority Date Based On The Wu
Provisional
Wu claims priority to the Wu Provisional. Ex. 1006, Cover. “[A] patent must
v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)). To claim the benefit
of this earlier filing date, the provisional application must contain sufficient written
the non-provisional application. Id. Where a prior art patent “is shown to have at
claimed and the prior art patent is entitled to the provisional application’s effective
pre-dates the effective filing date of the ’658 patent.1 Ex. 1003, ¶70. Wu expressly
1
Petitioner has included citations to relevant disclosures from Wu and the Wu
Patent. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (holding that a claim
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claims priority and incorporates by reference the disclosures in the Wu Provisional.
Like Wu, the Wu Provisional discloses Wu’s claimed method for logged
is unpatentable “if another’s patent discloses the same invention, which was carried
(PTAB Dec. 21, 2016) (requiring a showing that the disclosure of the provisional
2
Reference to a page number of the Wu Provisional herein indicates the internal
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The Wu Provisional explains that first, “[a] network [(i.e., a base station)]
transmits a first request message to request the UE to transmit MDT logs.” Ex. 1007,
5; Ex. 1006, 5:12-15 (describing Figure 4); see also Ex. 1006, 8:29 (indicating that
the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
the MDT logs and an indicator to indicate whether the response message contains
the last part of MDT logs or indicates whether the UE has more MDT logs.” Ex.
1007, 5; Ex. 1006, 5:15-17, 8:47-49; see also Ex. 1006, 8:29 (indicating that the
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
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indicated). Third, upon receiving the indicator, the network “determines whether the
UE has MDT logs which have not been transmitted to the network.” Ex. 1007, 5;
Ex. 1006, 9:24-27. If it determines that the UE has more MDT logs available, “the
network sends a second request message to request the UE to transmit MDT logs.”
Ex. 1007, 5; Ex. 1006, 9:28-33. On the other hand, if the network determines the UE
has no additional MDT logs, “the network stops sending a second request message
to request the UE to transmit MDT logs.” Ex. 1007, 5; Ex. 1006, 9:33-37.
Like Wu, the Wu Provisional discloses a reporting time stamp in the report
message. Ex. 1003, ¶73. Specifically, “[t]he logged measurement report consists of
measurement results for the serving cell (the measurement object and the
measurement quantity), time stamp and location information.” Ex. 1007, 2; Ex.
1006, 4:58-62.
to the network node are deleted from the buffer of the UE. Ex. 1003, ¶74.
Specifically, “the UE removes, deletes, clears or invalidates the first part of MDT
logs if the UE transmits the first part of the MDT logs in the response message.” Ex.
The table below identifies where written description support can be found in
the Wu Provisional for claim 7 of Wu. Also, as explained by Dr. Valenti, the
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disclosure of the Wu Provisional provides similar detail to Wu itself, and would have
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request See, e.g., id., Fig. 33:
message for the
MDT log from
the service
network; and
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network;
wherein the
first response
message
indicates
whether the
MDT log
reporting is
finished or
whether at least
one more part
of the MDT log
is available;
and
receiving, by See, e.g., id., 5: “[T]he network receives the indicator and
the mobile determines whether the UE has MDT logs which have not been
communication transmitted to the network. . . [I]f the network determines the
device, a UE has more MDT logs acc, the network sends a second request
second request message to request the UE to transmit MDT logs.”
message for the
MDT log from See, e.g., id., Fig. 3:
the service
network when
the first
response
message
indicates that
the MDT log
reporting is not
finished or at
least one more
part of the
MDT log is
available.
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i. Claim 1
1[P] A method in a network node for network based control of report messages in
a wireless communications network, the network node being configured to serve
a user equipment, UE, and to receive report messages from the UE, the method
comprising:
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1[b] receiving the report message comprising logged measurements;
To the extent Patent Owner contends that Zhou does not teach a POSITA the
device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. Wu further discloses that its
contains an indicator of whether there is additional logged data that has not yet been
reported: “[T]he communication module 100 (or 200) transmits the collected MDT
log reporting is finished or whether at least one more sub-MDT log is available.” Ex.
1006, 5:15-17, 8:47-49; see also id., 8:29 (indicating that the method illustrated in
Fig. 10 is the same as Fig. 4, except as indicated), 9:18 (indicating that the method
illustrated in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5, 7.
Zhou and Wu. Ex. 1003, ¶137. Zhou and Wu are both directed to the same wireless
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communication functionality, namely MDT reporting, and the same wireless
the BS. See, e.g., Ex. 1005, 16:11-15. Wu builds upon Zhou’s foundation and
provides additional details of MDT reporting. See, e.g., Ex. 1006, 8:27-65. Thus, as
procedure. Ex. 1003, ¶137. To the extent that Patent Owner contends that Zhou does
not teach the required “determining” step to a POSITA, a POSITA would have
turned to Wu’s determining step and the advantage that it provides. Ex. 1003, ¶138.
(S1312) and the MDT log reporting method is completed,” resulting in a complete
and more efficient MDT reporting procedure. Ex. 1006, 9:33-37; Ex. 1003, ¶138. A
POSITA would have been motivated to add such a determining step to Zhou to
provide similar efficiency and increase of available network bandwidth. Ex. 1003,
improve similar devices in the same way and the POSITA would have had a
reasonable expectation of success. Id.; see also KSR Int’l Co. v. Teleflex Inc., 550
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U.S. 398, 417 (2007). Further, given that the implementation would have been
handled in software, Dr. Valenti explains that the modification to Zhou would have
been simple for a POSITA, and successfully yielded predictable results. Ex. 1003,
See Claim 1[d], supra. To the extent Patent Owner contends that Zhou does
not teach a POSITA the required “deciding” step, Wu teaches it. Ex. 1003, ¶139.
device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. If “the received
reporting is not finished or at least one more sub-MDT is available, the RAN sends
the next UEInformationRequest message to continue the MDT log reporting process
or to request for another sub-MDT log.” Ex. 1006, 9:28-33; see also Ex. 1007, 5. If,
on the other hand, “the received UEInformationResponse message does not contain
the above indicator, the RAN ceases to send any UEInformationRequest message
(S1312) and the MDT log reporting method is completed.” Ex. 1006, 9:33-37; see
also Ex. 1007, 5. Therefore, based on whether the indicator indicates additional
logged measurements available, the RAN decides whether to request them. Plainly,
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“[t]he RAN can decide to retrieve the MDT log based on the indication.” Ex. 1006,
A POSITA would have been motivated to combine Wu and Zhou for the
reasons discussed above. Ex. 1003, ¶140. In addition, as Dr. Valenti explains, adding
a deciding step to Zhou (to the extent Zhou does not already teach it) as taught by
Wu would improve Zhou’s efficiency, because the BS would not needlessly use
from the UE. See Ex. 1006, 9:33-37; see also Ex. 1007, 5; Ex. 1003, ¶141.
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ii. Claims 2-5
Zhou teaches Claims 2-5 as incorporated from Ground 1, Claims 2-5, supra.
iii. Claim 12
12[P] A network node for network based control of report messages in a wireless
communications network, the network node being configured to serve a user
equipment, UE, and to receive report messages from the user equipment, the
network node comprises:
To the extent Patent Owner contends that Zhou does not teach to a POSITA
v. Claim 23
The method according to claim 22, wherein the including comprises including a
reporting time stamp in the report message.
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Zhou teaches a method, in Ground 1, Claim 22, supra.
message. Ex. 1003, ¶167. Wu discloses that the “MDT log includes MDT
measurements for the serving cell (e.g. the measurement quantity) and available UE
stamps and location information.” Ex. 1006, 4:58-62; see also Ex. 1007, 2. A
POSITA would have been motivated to combine Wu and Zhou for the reasons
would have been motivated to include Wu’s time stamps in Zhou’s reporting
message in order to enable the BS to properly weigh, and therefore better analyze,
the MDT data, and detect and respond to periodic behaviors (e.g., busy periods) in
the channel to minimize drive tests, as taught by Wu, and would have had a
reasonable expectation of success. Ex. 1003, ¶167; see Ex. 1006, Abstract, 9:16-18;
vi. Claim 24
The method according to claim 22, wherein the logged measurements that are
transmitted to the network node are further deleted from the buffer of the UE.
the logged measurements that are transmitted to the network node are further deleted
from the buffer of the UE. Ex. 1006, 6:42-45 (“After the MDT log is received by the
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RAN, the MDT log retrieval is completed, and the control module 102 (or 202)
discards, clears, deletes, removes, or invalidates the Logged MDT logs stored
therein.”); see also Ex. 1007, 7. A POSITA would have been motivated to combine
Wu and Zhou for the reasons discussed in Claim 1[c], supra. Additionally, as Dr.
Valenti explains, a POSITA would have been motivated to include Wu’s teaching
recover buffer space and, for example, log new reports. Ex. 1003, ¶169.
vii. Claim 26
26[P] A User Equipment, UE, for assisting in network based control of report
messages in a wireless communications network, the UE being in connection
with a serving network node and configured to transmit report messages to the
network node, and wherein the UE is configured to periodically perform radio
condition measurements and store the periodically performed measurements in a
buffer as logged measurements, the UE comprises:
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A POSITA would have been motivated to combine Wu and Zhou for the
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transmission functions).
A POSITA would have been motivated to combine Wu and Zhou for the
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Ex. 1006, Fig. 1, 3:43-45 (describing a “control module 102” embedded in the
processing).
A POSITA would have been motivated to combine Wu and Zhou for the
viii. Claim 27
The User Equipment according to claim 26, wherein the UE processor circuit is
configured to add a reporting time stamp to the reporting message.
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ix. Claim 28
The User Equipment according to Claim 26, wherein the logged measurements
that are transmitted to the network node are further deleted from the buffer of
the UE.
x. Claim 30
The User equipment according to claim 26, wherein the logged measurements
are Minimizing Drive Tests, MDT, log data.
1003, ¶66. See Section IV.B., supra. All arguments and evidence citing to Wu
i. Claim 1
1[P] A method in a network node for network based control of report messages in
a wireless communications network, the network node being configured to serve
a user equipment, UE, and to receive report messages from the UE, the method
comprising:
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Wu discloses “[m]ethods and mobile communication devices for reporting an
MDT log.” Ex. 1006, Abstract, 9:16-18 (“Fig. 12 is a message sequence chart of
another Logged MDT reporting method”); see also Ex. 1007, 5. Wu further teaches
that “when receiving a UEInformationRequest message from the RAN, the mobile
reports information to the RAN. Ex. 1006, 9:21-24. Wu further includes Figure 12
to illustrate that the service network (RAN) interfaces with the mobile
communication device (UE) and receives report messages from the UE. Ex. 1003,
¶181-82.
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Ex. 1006, Fig. 12; see also Ex. 1007, Fig. 3.
(describing Figure 4); see id., 11:10-12 (The UE “receive[s] . . . a first request
message for the MDT log from the service network.”); see also id., 8:29 (indicating
that the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
indicated); Ex. 1007, 5. Wu further includes Figure 12 to illustrate that the RAN
communication device.
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“[i]n response to the request message, the communication module 100 (or 200)
indicates whether the MDT log reporting is finished or whether at least one more
sub-MDT log is available.” Ex. 1006, 5:15-17, 8:47-49; see id., 11:13-18 (“[I]n
device, a first response message comprising a part of the MDT log to the service
network[.]”); see also id., 8:29 (indicating that the method illustrated in Fig. 10 is
the same as Fig. 4, except as indicated), 9:18 (indicating that the method illustrated
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in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5. Further, Wu
report message comprising logged measurements (i.e., “sub-MDT log”) to the RAN.
mobile communication device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. To analyze
whether to send the next request message based on the indicator, a POSITA would
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have understood and found it obvious that Wu first requires the RAN to determine
whether the indicator indicates that there are additional logged measurements not
mobile communication device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. If “the
MDT log reporting is not finished or at least one more sub-MDT is available, the
RAN sends the next UEInformationRequest message to continue the MDT log
reporting process or to request for another sub-MDT log.” Ex. 1006, 9:28-33; see
also Ex. 1007, 5. If, on the other hand, “the received UEInformationResponse
message does not contain the above indicator, the RAN ceases to send any
completed.” Ex. 1006, 9:33-37; see also Ex. 1007, 5. Plainly, “[t]he RAN can decide
to retrieve the MDT log based on the indication.” Ex. 1006, 4:42-43 (emphasis
added). Therefore, a POSITA would have understood and found it obvious that the
RAN decides whether to request additional measurement logs based on whether the
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ii. Claim 2
The method according to claim 1, wherein the method comprises receiving, from
the UE, an indication of existents of logged measurements that are available.
“[i]n response to the request message, the communication module 100 (or 200)
indicates whether the MDT log reporting is finished or whether at least one more
sub-MDT log is available.” Ex. 1006, 5:15-17, 8:47-49; see also id., 8:29 (indicating
that the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
indicated); Ex. 1007, 5. Further, Wu includes Figure 12 to illustrate that the response
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iii. Claim 3
the “MDT log includes MDT measurements for the serving cell (e.g. the
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frequency/inter-frequency/inter-RAT, time stamps and location information.” Ex.
iv. Claim 4
The method according to claim 1, wherein the report message is received directly
from the UE or via another network node.
v. Claim 5
The method according to claim 1, wherein the deciding is based on one or more
of the following: interference level experienced in a cell; radio condition
measurements experienced in a cell; available radio resource; network node
capacity; UE buffer state condition etc.
that first, “the RAN initiates MDT log retrieval by issuing a request message
(describing Figure 4); see also id., 8:29 (indicating that the method illustrated in Fig.
10 is the same as Fig. 4, except as indicated), 9:18 (indicating that the method
illustrated in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5. Second,
“[i]n response to the request message, the communication module 100 (or 200)
indicates whether the MDT log reporting is finished or whether at least one more
sub-MDT log is available.” Id., 5:15-17, 8:47-49; see also id., 8:29 (indicating that
the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
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(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
indicated); Ex. 1007, 5. Wu further teaches that when the UE buffer contains MDT
data, the RAN will request data based on the buffer state condition. Ex. 1006, 9:24-
vi. Claim 12
12[P] A network node for network based control of report messages in a wireless
communications network, the network node being configured to serve a user
equipment, UE, and to receive report messages from the user equipment, the
network node comprises:
and the additional limitations of Claims 13-16 as presented above in Claims 2-5,
respectively.
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viii. Claim 22
22[P] A method in a User Equipment, UE, for assisting in network based control
of report messages in a wireless communications network, the UE being in
connection with a serving network node and configured to transmit report
messages to the network node upon request, and wherein the UE is configured to
periodically perform radio condition measurements and store the periodically
performed measurements in a UE buffer as logged measurements, the method
comprising:
22[a] receiving a request from the network node to start transmitting logged
measurements in a report message;
22[b] determining if the logged measurements fit in the report message; and if not,
comprise an indicator for explicitly indicating whether the MDT log reporting is
finished or whether at least one more sub-MDT log is available” given “the size of
the sub-MDT log.” Ex. 1006, 8:27-65; Ex. 1007, 7. In order for the UE to select the
supra, it must first determine if the logged measurements fit in a single report
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22[d] transmitting the report message, comprising the indicator, to the network
node as a response to the request.
ix. Claim 23
The method according to claim 22, wherein the including comprises including a
reporting time stamp in the report message.
that the “MDT log includes MDT measurements for the serving cell (e.g. the
x. Claim 24
The method according to claim 22, wherein the logged measurements that are
transmitted to the network node are further deleted from the buffer of the UE.
that “[a]fter the MDT log is received by the RAN, the MDT log retrieval is
completed, and the control modules 102 (or 202) discards, clears, deletes, removes,
or invalidates the Logged MDT logs stored therein.” Ex. 1006, 6:42-45; see also Ex.
1007, 7.
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xi. Claim 26
26[P] A User Equipment, UE, for assisting in network based control of report
messages in a wireless communications network, the UE being in connection with
a serving network node and configured to transmit report messages to the network
node, and wherein the UE is configured to periodically perform radio condition
measurements and store the periodically performed measurements in a buffer as
logged measurements, the UE comprises:
See Claims 1[c] and 22[b-c]. In order for the UE to select the appropriate
first determine if the logged measurements fit in the report message. Ex. 1003, ¶217.
Wu teaches the user equipment of Claims 27-28 in Claim 26, supra, and the
respectively, supra.
xiii. Claim 30
The User Equipment according to claim 26, wherein the logged measurements are
Minimizing Drive Tests, MDT, log data.
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Wu further teaches this limitation to a POSITA. Ex. 1003, ¶223. Wu discloses
that “[t]he present invention relates to Minimization of Device Test (MDT), and in
V. DISCRETIONARY FACTORS
institution under § 314(a). Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
response. Because Apple was not a party to the Samsung IPR, this is Apple’s first
challenge to the ’658 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
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roadblock for the Board to issue a final determination within the statutory one-year
limit.
VI. CONCLUSION
For the forgoing reasons, Petitioner respectfully requests inter partes review
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VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
A. Real Party-In-Interest
B. Related Matters
The ’658 Patent was challenged in the following matter, now terminated:
Petitioner provides the following designation and service information for lead
Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
[email protected] [email protected]
[email protected]
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U.S. Patent No. 8,798,658
APPENDIX OF EXHIBITS
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U.S. Patent No. 8,798,658
CERTIFICATION OF WORD COUNT
Petition for Inter Partes Review, excluding any table of contents, mandatory notices
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U.S. Patent No. 8,798,658
CERTIFICATE OF SERVICE ON PATENT OWNER
UNDER 37 C.F.R. § 42.105
January 19, 2022, a complete and entire copy of this Petition for Inter Partes Review
including exhibits was provided via Federal Express to the Patent Owner by serving
the correspondence address of record for the ’658 Patent as listed on PAIR:
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