UNITED STATES PATENT AND TRADEMARK OFFICE

_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

APPLE INC.,
Petitioner

v.

TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner
_________________

Inter Partes Review Case No. IPR2022-00468

U.S. Patent No. 10,512,027

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 10,512,027
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U.S. Patent No. 10,512,027
TABLE OF CONTENTS
I. INTRODUCTION ..................................................................................... 1
II. STATE OF THE ART AND THE ’027 PATENT’S ALLEGED
INVENTION .............................................................................................. 1
A. OVERVIEW OF THE TECHNOLOGY ................................................................. 1
B. THE ’027 PATENT’S ALLEGED INVENTION .................................................... 3
C. THE ’027 PATENT’S PROSECUTION ............................................................... 4
D. A PERSON OF ORDINARY SKILL IN THE ART ................................................. 5
III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104...................... 5
A. STANDING UNDER 37 C.F.R. § 42.104(A) .................................................... 5
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)............................. 6
IV. OVERVIEW OF THE PRIOR ART ........................................................ 7
A. AGIWAL (EX. 1002) ..................................................................................... 7
B. DEENOO (EX. 1003) ....................................................................................12
C. KUBOTA (EX. 1004) ...................................................................................19
V. THE CHALLENGED CLAIMS ARE UNPATENTABLE ....................22
A. SUMMARY OF GROUNDS .............................................................................22
B. GROUND I: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF AGIWAL
..................................................................................................................22
C. GROUND II: CLAIMS 1-8, 10-18, AND 20-21 ARE OBVIOUS IN VIEW OF
DEENOO .....................................................................................................43
D. GROUND III: CLAIMS 3, 4, 11-18, AND 20 ARE OBVIOUS IN VIEW OF AGIWAL
AND KUBOTA..............................................................................................60
E. GROUND IV: CLAIMS 3, 4, 13, AND 14 ARE OBVIOUS IN VIEW OF DEENOO AND
KUBOTA .....................................................................................................67
VI. DISCRETIONARY FACTORS ...............................................................70
A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION .................................70
VII. CONCLUSION .........................................................................................70
VIII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................72
A. REAL PARTY-IN-INTEREST ..........................................................................72
B. RELATED MATTERS ....................................................................................72
C. LEAD AND BACK-UP COUNSEL ...................................................................72

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I. INTRODUCTION

Petitioner Apple Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of

Claims 1-8, 10-18, and 20-21 (“Challenged Claims”) of U.S. Patent No. 10,512,027

(“ʼ027 patent”) (Ex. 1001).

II. STATE OF THE ART AND THE ’027 PATENT’S ALLEGED

INVENTION

A. Overview of the Technology

1. Long-Term Evolution and New Radio

Long-Term Evolution (LTE) is a 3rd Generation Partnership Project

(“3GPP”) wireless technology standard, the development of which began in 2004 as

a 4th generation (4G) of the wireless standard. Ex. 1005, ¶30, Ex. 1007 (Holma),1 4;

Ex. 1008 (Sesia),2 1.1.2. In LTE, information is transmitted from one or more user

equipment (UEs) on uplink channels to a base station (BS), and on downlink

channels from BS to UE. Ex. 1007, 5; Ex. 1005, ¶30. In 2019, companies began

deploying a 5th generation, as 5G or NR (“new radio”). Ex. 1005, ¶30. In 5G, a UE

communicates with a BS known as a gNodeB. Id. While 5G wireless devices have

1
Holma was published and publicly available no later than July 1, 2011. Ex. 1018

(Mullins Declaration In Support of Public Availability of Holma), ¶48.

2
Sesia was published and publicly available no later than April 14, 2012. Ex. 1018

(Mullins Declaration In Support of Public Availability of Sesia), ¶63.

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4G capability, they typically accommodate higher bandwidth and users in a fixed

area. Id.

2. System Information and System Information Blocks

As Dr. Wells explains, in a wireless communication network, a BS and a UE

communicate via transmitted signals over an air-interface generally known as a

channel. Id., ¶31. A broadcast channel is often used to transmit basic System

Information (SI), which allows other channels in the cell to be configured and

operated. Ex. 1008, 9.2.1.

The transmitted SI is structured as System Information Blocks (SIBs), each of

which contains a set of functionally related parameters. Id., 3.2.2. An SI message, of

which there may be several, includes one or more SIBs that have the same scheduling

requirements (i.e., the same transmission periodicity). Id. SI scheduling can be

configured based on the content of the SI. Ex. 1005, ¶32.

3. Preambles

SI can either be continuously broadcast from the BS or sent on demand. Ex.

1009, 1. Companies have long sought to reduce the amount of continuously

broadcast SI in favor of on-demand SI, for example, to reduce network signaling

overhead. Id., 1-2; Ex. 1005, ¶33.

In one well-known method of implementing on-demand SI delivery, which

was discussed by 3GPP at least as early as October 2016, SI is requested based on

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an associated preamble transmission. Ex. 1009 (R2-166120), 3; Ex. 1005, ¶34. A

preamble is a message sent from a UE to a BS that indicates a request for SI. Ex.

1009, 3. Under this approach, each preamble is mapped to a particular set of SI. Id.

To acquire specific SI, the UE sends the corresponding preamble to the BS. This

approach also allows the UE to request “system information in more than one

group.” Id.

Id., Fig. 4.

B. The ’027 Patent’s Alleged Invention

The alleged invention of the ’027 patent relates to requesting and transmitting

SI using a preamble for indicating at least one SIB group, where SIBs are grouped

according to a feature such as functionality or periodicity. The ’027 patent states that

prior art systems used “one preamble” to “carry a request for all other SI” which

may result in unnecessary transmission of undesired SI because “a user terminal may

not need all the other SI.” Ex. 1001, 4:46-52. The ’027 patent “proposes a solution

of on-demand request for SI.” Id., 4:58-59. Specifically, “one or more SIBs may be

classified into a SIB group” and “when a user terminal wants to request some

specific SI, it can request . . . a SIB group in which the specific SI is contained.” Id.,

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4:59-63. This way, “the network node can know which SIB group the user terminal

actually needs” resulting in a more efficient transmission. Id., 4:63-5:5. As stated

above and described in detail in the sections below, on-demand SI delivery was well-

known in the art prior to the earliest effective filing date of the ’027 patent.

C. The ’027 Patent’s Prosecution

The ’027 patent issued on December 17, 2019 from U.S. Application No.

15/568,431, filed on October 20, 2017, as a national stage International Application

PCT/CN2017/101576 filed on September 13, 2017. Ex. 1001, Cover. This

International Application claims priority to an earlier PCT filed on January 4, 2017

Id. For purposes of this petition and without waiving its right to challenge priority

in this or any other proceeding, Petitioner adopts January 4, 2017, as the invention

date for the Challenged Claims. Notably, all prior art relied on herein is dated 2016

and earlier.

During prosecution of the ’027 Patent, the Examiner issued a non-final

rejection of then-pending claims 1, 6-10, 12, 17-22, and 24 as obvious under 35

U.S.C. § 103 over Ishii (US 2018/0167918) in view of Shukla (US2015/0351011).

Ex. 1010, 254-59. Applicants amended then-pending independent claims 1, 12, and

24 to require that transmitting (claims 1, 12) or receiving (claim 24) a request include

“using a preamble for indicating at least one [SIB] group . . . ” Id., 274-77. Applicant

argued that claims 1, 12, and 24 “now incorporate[] the preamble limitation” and

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“[a]ccordingly [are] now allowable.” Id., 278. Applicant also argued that then

pending dependent claims 3-11 and 14-22 depend from independent claims 1 and

12, and thus also contain allowable subject matter. Id. The Examiner thereafter

issued a Notice of Allowance. Id., 341.

D. A Person of Ordinary Skill in the Art

A person of ordinary skill in the art (“POSA”) at the time of the alleged

invention would have had a Master’s degree in Electrical Engineering, Computer

Science, Physics, Applied Mathematics, or equivalent and three to five years of

experience working with wireless digital communication systems. Ex. 1005, ¶43

(noting additional education might compensate for less experience, and vice-versa).

III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104

A. Standing Under 37 C.F.R. § 42.104(A)

Petitioner certifies that the ’027 Patent is available for IPR and that Petitioner

is not barred or estopped from requesting IPR challenging the claims of the ’027

Patent. Specifically, (1) Petitioner is not the owner of the ’027 Patent; (2) Petitioner

has not filed a civil action challenging the validity of any claim of the ’027 Patent;

(3) Petitioner has not been served with a complaint alleging infringement of the ’027

Patent; (4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR;

and (5) this Petition is filed after the ’027 Patent was granted.

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B. Challenge Under 37 C.F.R. § 42.104(B) and Relief Requested

In view of the prior art and evidence presented, claims 1-8, 10-18, and 20-21

of the ’027 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 the

Challenged Claims should be granted. 37 C.F.R. § 42.104(b)(2).

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

to the challenges raised is provided in Section IV. 37 C.F.R. § 42.104(b)(5). Exhibits

1001-1021 are also attached.

C. Claim Construction Under 37 C.F.R. § 42.104(B)(3)

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 1303, 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)

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(“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).

IV. OVERVIEW OF THE PRIOR ART

The challenge is based on the following references, none of which was before

the Patent Office during the prosecution of the ’027 Patent.

A. Agiwal (Ex. 1002)

U.S. Patent No. 10,455,621 to Agiwal et al., issued on October 22, 2019. Ex.

1002, Cover. Agiwal issued from Application No. 15/443,307, which was filed

February 27, 2017, and claims priority to Provisional Application No. 62/301,016,

filed on February 29, 2016 and Provisional Application No. 62/334,706, filed on

May 11, 2016. Id. Agiwal is prior art under at least 35 U.S.C. §§ 102(a)(2) and

102(d).3

Agiwal relates to a wireless communication system, including a method for a

UE and BS to transmit and receive SI. Id., 1:17-20. Agiwal states broadcasting SIBs

periodically is unnecessary and leads to wasted resources and increased energy

consumption. Id., 4:5-7. Instead, Agiwal proposes a method for on-demand

provision of SI. Id., 19:41. In the method, “[t]he UE and BS are capable of signaling

3
References to subsections of 35 U.S.C. §102 are to the AIA version unless

otherwise indicated.

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[SI] efficiently in a wireless communication system.” Id., 5:19-22. Specifically,

Agiwal discloses categorizing SI into SIBs, which can be “grouped into an SIB set

(or SI message) wherein each set comprises one or more SIBs.” Id., 9:26-32. SIB

grouping is based on the feature of the underlying SI. Id., 9:34-39.

Agiwal discloses a UE receiving a first SI message, sending a request

preamble to the BS based on that first SI, and receiving the requested second SI from

the BS. Id., 4:39-46. The UE requests a specific SIB group using a PRACH-SI

preamble. Id., 20:29-31. As shown below, and explained by Dr. Wells, the PRACH-

SI preamble (yellow) is specific to the SIB group requested, and thus returned by the

BS in response (green). Id., 20:40-41, Fig. 11.

Id., Fig. 11; Ex. 1005, ¶47.

Because Agiwal, like the ’027 Patent, discloses a technique for wireless

network system information (“SI”) transmission between a network system and user

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device, Agiwal is in the same field of endeavor as the ’027 Patent. Compare Agiwal

(Ex. 1002), Abstract, with ’027 Patent (Ex. 1001), 1:16-37. Agiwal is also

reasonably pertinent to the problem faced by the inventor of the ’027 Patent. Ex.

1005, ¶47 (noting Agiwal and the ’027 patent seek to improve overhead efficiency).

Accordingly, Agiwal is analogous art to the ’027 Patent. Id.

1. Agiwal’s Provisional Applications

Agiwal claims priority to Provisional Application Nos. 62/301,016 and

62/334,706 (“Agiwal ʼ016” and “Agiwal ʼ706,” respectively, and collectively the

“Agiwal Provisionals”). Exs. 1011-1012. “[A] patent must satisfy 35 U.S.C.

§119(e)(1) to gain the benefit of a provisional application filing date.” Amazon.com,

Inc. v. Customplay, LLC, IPR2018-01496, 2020 WL 1080501, at *20 (P.T.A.B. Mar.

4, 2020) (non-precedential) (citing Dynamic Drinkware, LLC 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 description of the

invention to enable a POSA to practice the invention claimed in the non-provisional

application. Id., *21. Where a prior art patent “is shown to have at least one claim to

an invention that is supported by the disclosure of a provisional application,” that

provisional necessarily discloses the same invention eventually claimed and the prior

art patent is entitled to the provisional application’s effective filing date. Id.

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Here, Agiwal is entitled to an earlier effective filing date in view of its

provisional applications which pre-date the effective filing date of the ʼ027 patent4

and disclose and enable Agiwal’s claimed invention as described in Dr. Wells’

declaration. Ex. 1005, ¶51. Agiwal claimed priority to and incorporated by reference

the disclosures in the Agiwal Provisionals. Ex. 1002, 1:7-13. The Agiwal

Provisionals each disclose Agiwal’s claimed invention that provides SI to UEs on-

demand. Ex. 1002, 19:41; Ex. 1011, 13; Ex. 1012, 33; Ex. 1005, ¶49. Like Agiwal,

the Agiwal Provisionals each teach that a category of minimum SI “is broadcasted

periodically by the cell.” Ex. 1002, 19:33-42; Ex. 1012, 33; Ex. 1011, 17-18; Ex.

1005, ¶49. The UE acquires this minimum SI, and then sends a random access

preamble (PRACH-SI preamble) to request additional SI. Ex. 1002, 20:15-34; Ex.

1011, 17; Ex. 1012, 33; Ex. 1005, ¶49.

The Agiwal Provisionals each explain that the PRACH-SI preamble can be

specific to a set of SI (SIB group). Ex. 1011, 9, 17; Ex. 1012, 24, 33; Ex. 1005, ¶50.

The BS then responds by sending the requested SIB group. Ex. 1002, 20:63-67; Ex.

4
Petitioner has included citations to relevant disclosures from Agiwal and the Agiwal

Provisionals throughout Grounds I and III below to demonstrate invalidity of the

’027 Patent. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Ex Parte Mann,

Appeal No. 2015-003571, 2016 WL 7487271, at *6 (PTAB Dec. 21, 2016).

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1011, 18; Ex. 1012, 34. Figure 11 of the Provisional Applications depicts Agiwal’s

framework for using a PRACH-SI preamble to request and receive a SIB group. Ex.

1012, Fig. 11; Ex. 1002, Fig. 11; Ex. 1011, Fig. 11; Ex. 1005, ¶50. Citations to

Agiwal in the Grounds below are accompanied by citations to corresponding

disclosures in the Agiwal Provisionals.

2. The Agiwal Provisionals Support Claim 1 of Agiwal

a) A method for receiving system information (SI) by a user

equipment (UE) in a wireless communication system, the
method comprising:

The Agiwal Provisionals disclose “[a] method for receiving system

information (SI) by a user equipment (UE) in a wireless communication system,”

because they all disclose UEs receiving SI in a wireless network. Ex. 1011, 17; Ex.

1012, 33; Ex. 1005, ¶51.

b) receiving, from a base station (BS), minimum SI which

is broadcasted periodically, the minimum SI including
information indicating whether a SI message for other SI is
broadcast periodically or provisioned on demand, and
configuration information on a physical random access
channel (PRACH), wherein the configuration information
includes information on PRACH resource for the other SI and
information on a PRACH preamble corresponding to each SI
message for the other SI;

The Agiwal Provisionals disclose receiving minimum SI broadcasted

periodically from a BS. Ex. 1011, 17-18; Ex. 1012, 33; Ex. 1005, ¶51. The Agiwal

Provisionals further disclose the minimum (“essential”) SI can indicate whether

other SI will be provided periodically or on demand and includes information about

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PRACH resources and preambles for requesting other SI (i.e., “configuration

information on a physical random access channel”). Ex. 1011, 8, 18, 17; Ex. 1012,

24, 33 (same); Ex. 1005, ¶51.

c) in a case that the information indicates that the SI

message for the other SI is provisioned on demand,
transmitting, to the BS, a PRACH preamble corresponding to
the SI message based on the configuration information; and

First, the Agiwal Provisionals disclose other SI can be requested on demand.

Ex. 1011, 8, 17; Ex. 1012, 24, 33; Ex. 1005, ¶51. Second, the Agiwal Provisionals

disclose that the UE transmits a PRACH preamble to a BS. Ex. 1011, 13, Fig. 11;

Ex. 1012, 33, Fig. 11; Ex. 1005, ¶51. Third, the Agiwal Provisionals explain that the

PRACH preamble corresponds to the requested SI (i.e., the “SI message”) based on

the information in the essential SI (“configuration information”). Ex. 1011, 17-18,

Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶51.

d) receiving, from the BS, the SI message for the other SI

in response to the PRACH preamble.

The Agiwal Provisionals disclose receiving SI sent in response to the PRACH

preamble. Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶51. Agiwal

is thus prior art with an effective filing date no later than that afforded to its earliest

provisional application, which is February 29, 2016.

B. Deenoo (Ex. 1003)

U.S. Application Publication No. 2019/0174554 to Deenoo, et al., published

on June 6, 2019. Ex. 1003, Cover. Deenoo is the publication of Application No.

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16/099,390, which is the national stage filing of PCT/US2017/032069 on May 11,

2017. Id. Deenoo claims priority to Provisional Application No. 62/334,704, filed

on May 11, 2016, Provisional Application No. 62/400,810, filed September 28,

2016, Provisional Application No. 62/416,499, filed on November 2, 2016. Id.

Deenoo is prior art under at least 35 U.S.C. §§ 102(a)(2) and 102(d).

Deenoo is directed to systems and methods for distributed control in a wireless

system, including the acquisition of SI in 5G-compliant devices. Deenoo discloses a

wireless transmit/receive unit (WTRU), which is often referred to as a UE in other

sources. Ex. 1003, ¶3. Deenoo also discloses a BS which can be an eNodeB, access

point, or similar structure. Id., ¶26. The WTRUs (yellow) and BSs (blue) are

depicted in Figure 1A below.

Id., Fig. 1A; Ex. 1005, ¶52.

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The WTRU can be comprised of a processor and memory, i.e., hardware,

firmware, and/or software that operates to carry out the methods and processes

described in Deenoo. Ex. 1003, ¶¶648-649. Figure 1B depicts the hardware

components of a WTRU, including a processor (orange) and memory (purple).

Id., Fig. 1B; Ex. 1005, ¶53.

Deenoo also describes how SIBs or SIB groups are transmitted from a BS to

WTRU. Ex. 1003, ¶367. The disclosure in Deenoo is broken into multiple steps,

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including multiple messages exchanged between the WTRU and BS (e.g., msg1,

msg2, msg3, and/or msg4).

Step 0: The BS can transmit minimum SI to a WTRU. Id., ¶¶10, 322, 366,

368, 371.

Step 1: A WTRU may transmit to the BS a first message (e.g., “msg1”) which

comprises a preamble and/or is sent on a dedicated time/frequency Physical Random

Access Channel (PRACH) resource. Id., ¶¶10, 367, 389. This preamble/PRACH

resource may indicate a specific SIB or SIB group that is requested from the BS. Id.,

¶367.

Step 2: After receiving a preamble/PRACH resource in msg1, the BS will

transmit a response (msg2) that includes, for example, information about the

identity, timing, and format of the requested SIB group that will be transmitted from

the BS (the SIB group potentially following in a subsequent transmission). Id.,

¶¶369-370, 373, 392. The WTRU uses this information to correctly receive the SIB

group that is transmitted by the BS. Id.

Step 3: Depending on msg2, the WTRU may need to send a third message

(msg3), which can also include another preamble/PRACH resource indicating a

request for SI. Id., ¶¶373, 381-383.

Step 4: In response to msg3, the BS may transmit a fourth message (msg4),

which may similarly include additional SI. Id., ¶¶382, 383.

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Because Deenoo, like the ’027 Patent, discloses a technique for wireless

network system information (“SI”) transmission between a network system and user

device, Deenoo is in the same field of endeavor as the ’027 Patent. Compare Deenoo

(Ex. 1003), ¶3, with ’027 Patent (Ex. 1001), 1:16-37. Deenoo is also reasonably

pertinent to the problem faced by the inventor of the ’027 Patent. Ex. 1005, ¶54

(noting Deenoo and the ’027 patent seek to improve overhead efficiency).

Accordingly, Deenoo is analogous art to the ’027 Patent. Id.

1. Deenoo’s Provisional Applications

Deenoo claims priority to Provisional Applications Nos. 62/334,704

(“Deenoo ’704”), 62/400,810 (“Deenoo ’810”), and 62/416,499 (“Deenoo ’499”)

(collectively the “Deenoo Provisionals”). Exs. 1013-1015. As discussed above, a

patent application publication is afforded the effective filing date of its provisional

application if the provisional application supports at least one claim of the

publication.5

The Deenoo Provisionals each describe the same “on-demand acquisition of

SI” as Deenoo and disclose the techniques described in steps 0-4 (above). Ex. 1013,

5
Petitioner has included citations to relevant disclosures from Deenoo and the

Deenoo Provisionals throughout Grounds II and IV below to demonstrate invalidity

of the ’027 Patent. See cases cited supra note 4.

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¶¶2-4, 266-71, 244; Ex. 1014, ¶¶2, 84, 116, 211-18, 234, 238-39; Ex. 1015, ¶¶2-4,

87, 175, 220-27, 243, 247-48; Ex. 1005, ¶56. The Deenoo Provisionals each disclose

using reserved RACH preambles to indicate a specific SIB or group thereof. Ex.

1013, ¶266; Ex. 1014, ¶¶223, 238; Ex. 1015, ¶¶232, 247-48. They each disclose

broadcasting minimum SI like “notification information” to permit the WTRU to

access a system using preamble/PRACH resources. Ex. 1013, ¶231; Ex. 1014, ¶221;

Ex. 1015, ¶230. They also each disclose that SI may be grouped or controlled by

different logical functions, such as “periodicity, latency, feature, etc.” Ex. 1013,

¶233; Ex. 1014, ¶223; Ex. 1015, ¶232. The Deenoo Provisionals each disclose that

the WTRU acquires SIB groups using dedicated resources like time. Ex. 1013,

¶¶241, 248, 255, 284, 296; Ex. 1014, ¶¶231, 238-40, 242; Ex. 1015, ¶¶240, 247-49,

261, 273. The Deenoo Provisionals each disclose implementing techniques on

hardware that includes a processor configured to execute instructions stored to

memory. Ex. 1013, ¶¶256, 449; Ex. 1014, ¶¶26, 30, 375; Ex. 1015, ¶¶29, 33, 426.

Thus, Deenoo qualifies as prior art to the ʼ027 patent because its provisional

applications (Exs. 1013-1015) disclose and enable its invention described in Dr.

Wells’ declaration and shown by the analysis in §IV.B.2, above. Ex. 1005, ¶57.

Citations to Deenoo in §X below are accompanied by citations to corresponding

disclosures in the Deenoo Provisionals.

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2. The Deenoo Provisionals Support Claim 1 of Deenoo

a) A wireless transmit/receive unit (WTRU) in

communication with a communication network, the WTRU
comprising:

The Deenoo Provisionals disclose a WTRU communicating with a BS, which

discloses “communication with a communication network.” Ex. 1014, ¶¶14-17; Ex.

1015, ¶¶17-20; Ex. 1013, ¶¶18-19; Ex. 1005, ¶57.

a memory;

The Deenoo Provisionals disclose the WTRU includes a memory. Ex. 1014,

¶¶25-26, 30, 375; Ex. 1015, ¶¶28-29, 33, 426; Ex. 1013, ¶¶256, 449; Ex. 1005, ¶57.

a processor, the processor configured at least to:

The Deenoo Provisionals disclose the WTRU includes a processor that

enables the WTRU to operate in a wireless environment. Ex. 1014, ¶¶25-26, 30, 375;

Ex. 1015, ¶¶28-29, 33, 426; Ex. 1013, ¶¶256, 449; Ex. 1005, ¶57.

b) determine to request one or more system information

(SI) messages from the communication network; and

The Deenoo Provisionals disclose the WRTU determining to request one or

more system information messages from a BS (communication network). Ex. 1013,

¶¶227-28, 239, 241-45, 248; Ex. 1014, ¶¶214-18, 229, 231-35, 238; Ex. 1015, ¶¶223-

27, 238, 240-44, 247; Ex. 1005, ¶57.

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c) determine if a transmission of the one or more SI
message from the communication network will utilize at least
one beamformed communication based on one or more
communication parameters; and

The Deenoo Provisionals disclose the WRTU determining if one or more SI

message from the communication network will utilize at least one beamformed

communication based on one or more communication parameters. Ex. 1014, ¶¶94,

134, 257, 279; Ex. 1015, ¶¶251-61, 308, 330; Ex. 1013, ¶¶274-84, 331, 353; Ex.

1005, ¶57.

d) a transceiver, the transceiver configured at least to:

receive at least one of the one or more SI messages from the
communication network via the at least one beamformed
communication.

The Deenoo Provisionals disclose the WTRU comprising a transceiver

configured to receive SI messages, which may be coupled with a transmit/receive

element, from a BS via beamformed communication. Ex. 1014, ¶¶24-26, 27-29, 94,

134, 257, 279; Ex. 1015, ¶¶27-29, 30-32, 251-61, 308, 330; Ex. 1013, ¶¶28-30, 31-

33, 274-84, 331, 353; Ex. 1005, ¶57. Deenoo is thus prior art with an effective filing

date no later than that afforded to its earliest provisional application, which is May

11, 2016.

C. Kubota (Ex. 1004)

U.S. Application Publication No. 2016/0234736 to Kubota et al. was

published on August 11, 2016. Ex. 1004, Cover. Kubota is the publication of

Application No. 14/803,793, filed on July 20, 2015. Kubota claims priority to

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U.S. Patent No. 10,512,027
Provisional Application No. 62/114,157, filed on February 10, 2015 and Provisional

Application 62/121,326, filed on February 26, 2015. Id. On February 5, 2019, U.S.

Patent No. 10,200,920 issued from Kubota. Ex. 1017, Cover. Kubota is prior art

under at least 35 U.S.C. §§ 102(a)(1)-(2).

Kubota teaches techniques for wireless communication of SI between a BS

(“cell”) and UE, including transmitting on-demand SI. Ex. 1004, Abstract, ¶8. Figure

3B of Kubota (below) depicts the system’s operation with reference to exemplary

Fifth and Sixth Base Stations.

Step 1: The BS sends a service-specific periodic sync signal (yellow). This

signal may indicate that service-specific SI is available and include information

about a schedule for when that SI can be requested or transmitted. Id., ¶¶122-23.

Step 2: The UE sends one or more requests for service-specific SI (green). Id.,

¶¶122-23. Kubota refers to these as “SIB Tx requests.” Id., ¶¶122-23, 259-60. The

BS receives the SIB Tx request according to the schedule provided by the sync signal

in Step 1. Id., ¶260.

Step 3: The timing of the request from Step 2 indicates to the BS that it must

transmit certain service-specific SI back to the UE. Id., ¶260. The BS responds to

the request in Step 2 by sending the service-specific SI (orange) back to the

requesting UE. Id., ¶¶122-23, 260-61.

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Id., Fig. 3B. Kubota’s teachings can be applied to transmitting any number of SIBs

“individually or in groups.” Id., ¶150 (emphasis added).

Because Kubota, like the ’027 Patent, discloses a technique for wireless

network system information (“SI”) transmission between a network system and user

device, Kubota is in the same field of endeavor as the ’027 Patent. Compare Kubota

(Ex. 1004), Abstract, with ’027 Patent (Ex. 1001), 1:16-37. Kubota is also

reasonably pertinent to the problem faced by the inventor of the ’027 Patent. Ex.

1005, ¶58 (noting Kubota and the ’027 patent seek to improve overhead efficiency).

Accordingly, Kubota is analogous art to the ’027 Patent. Id.

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V. THE CHALLENGED CLAIMS ARE UNPATENTABLE

A. Summary of Grounds

Proposed Ground of Unpatentability Exhibits

Ground I: Claims 1-8, 10-18, 20-21 are obvious under pre-AIA Ex. 1002
35 U.S.C. § 103 in view of Agiwal
Ground II: Claims 1-8, 10-18, 20-21 are obvious under pre-AIA Ex. 1003
35 U.S.C. § 103 in view of Deenoo
Ground III: Claims 3, 4, 11-18, and 20 are obvious under pre- Ex. 1002,
AIA 35 U.S.C. § 103 in view of Agiwal and Kubota Ex. 1004
Ground IV: Claims 3-4, 13-14 are obvious under pre-AIA 35 Ex. 1003,
U.S.C. § 103 in view of Deenoo and Kubota Ex. 1004

B. Ground I: Claims 1-8, 10-18, and 20-21 are Obvious in view of

Agiwal

1. Claim 1

a) A method for requesting system information,

comprising:

Agiwal teaches a “method for transmitting and receiving system information.”

Ex. 1002, 1:19-20; Ex. 1011, 13; Ex. 1012, 33; Ex. 1005, ¶60. Agiwal’s method of

transmitting SI is initiated when a UE “sends random access preamble (PRACH-

SI)…[which] acts as SI request in this method.” Ex. 1002, 20:29-31. Thus, Agiwal

discloses a method whereby the UE requests system information.

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b) transmitting a request using a preamble for indicating at
least one system information block group, each of which
comprises one or more system information blocks, from a user
terminal to a network node,

Agiwal teaches a method in which a user terminal (i.e., UE) transmits a

request for SI to a network node (i.e., BS) as claimed. Ex. 1002, 4:37-46. First,

Agiwal teaches the UE transmits a request to a BS using a PRACH-SI preamble,

which can be “pre-defined” or “can be specific to system information or a set of

system information or service of UE type.” Ex. 1002, 4:37-46, 20:29-41; Ex. 1011,

17; Ex. 1012, 33; Ex. 1005, ¶¶61-62. Agiwal’s Figure 11 (below) discloses step

S1120, in which the UE transmits a request using the preamble PRACH-SI.

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Id., Fig. 11;6 Ex. 1011, Fig. 11; Ex. 1012, Fig. 11. When the “UE sends random

access preamble (PRACH-SI)...[t]he random access preamble acts as SI request in

this method.” Ex. 1002, 20:29-31; Ex. 1011, 14; Ex. 1012, 23.

Second, Agiwal’s PRACH-SI preamble indicates a SIB group comprising one

or more SIBs because the preamble is “specific to SI or a set of SI(s) . . . ” Ex. 1002,

Fig. 11, 20:40-41; Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶63.

As used in Figure 11, “SIs” means SIBs. Ex. 1002, 20:1-3 (“[M]inimum SI or

essential SI may include a separate indication for each SI (e.g. SIB) or set of SIs

(i.e., SIBs) . . . ”), 20:6-8; 21:5, 2:35-37; Ex. 1011, 9, 17; Ex. 1012, 24, 33; Ex. 1005,

¶64. Agiwal also states an “SIB set” is a “grouping of SIBs,” which a POSA would

have understood to be a SIB group as recited by the ʼ027 patent. Ex. 1002, 9:33-34

(“An SIB can be present in more than one SIB set. Grouping of SIBs into SIB set

can be done based on service...”). Thus, where a set of SIs is requested, the preamble

indicates a SIB group comprising one or more SIBs.

Third, Agiwal discloses the request is transmitted from a user terminal (i.e.,

UE) to a network node (BS). Ex. 1002, 20:26-27; Ex. 1011, 18, Fig. 11; Ex. 1012,

34, Fig. 11; Ex. 1005, ¶65. As shown above in Fig. 11, the UE transmits the request

using a preamble (“SI Request: PRACH-SI”) to the BS at step S1120. Ex. 1012, Fig.

11. Agiwal confirms that “in operation S1120, UE sends random access preamble

6
All emphases and annotations added unless otherwise noted.

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(PRACH-SI)” which “acts as [an] SI request in this method.” Id., 20:29-31. A POSA

would have understood Agiwal’s BS is the claimed “network node” because the ʼ027

patent states a network node can be a BS. Ex. 1001, 4:35-38, 9:16-21; Ex. 1002,

2:34-35, 20:23-27; Ex. 1005, ¶65.

c) wherein the one or more system information blocks are

grouped according to a feature of the one or more system
information blocks; and

Agiwal teaches SIBs are grouped according to feature. The ’027 patent

discloses that the “feature of the one or more SIBs may be learned from the SIB

definition in LTE” and can include functionality and periodicity of the SIBs. Ex.

1001, 3:47-49; 5:34-37; 6:26-28; Ex. 1011, 9-10; Ex. 1012, 24-25; Ex. 1005, ¶66.

Agiwal renders obvious this feature-based grouping by explaining that “SIBs having

same periodicity can be transmitted in one SI message” in response to a received

preamble corresponding to the group containing those SIBs. Ex. 1002, 2:52-53. In

other words, Agiwal discloses that its SIBs are grouped according to these features,

for example as disclosed in Figure 3, and then requested by transmission of a

preamble to indicate those SIB groups, for example as disclosed in Figure 11. Ex.

1005, ¶66.

Agiwal further teaches grouping more than one SIB (i.e., SIB set) based on

service (which is a type of “feature”). Ex. 1002, 9:30-39; Ex. 1011, 9-10; Ex. 1012,

24-25; Ex. 1005, ¶67. These services can include ultra-reliable low latency (URLL),

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device-to-device communication, or vehicle-to-vehicle communication, which a

POSA would have understood are examples of features. Id. Agiwal’s Figure 3

(below) illustrates the feature-based grouping technique:

In Figure 3, SIBs undergo a “Pre-Defined Mapping” based on features (e.g., service,

UE type, etc.) to be grouped together in sets (e.g., SIB Set 1, SIB Set 2...SIB Set P).

Ex. 1002, 9:26-28, Fig. 3; Ex. 1005, ¶67.

Finally, like the ’027 patent, Agiwal discloses a chart (“Table 1”) with the

content and feature of each LTE SIB, which allows for grouping according to said

features.

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Compare, e.g., Ex. 1001, 5:55-6:12, with, Ex. 1002, 2:60-3:25; Ex. 1005, ¶68.

d) receiving one or more system information block groups

from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

Agiwal teaches the UE receiving the requested SIB groups (i.e., SIB sets)

from the network node (BS), shown in Figure 11 by the “SI Response/RAR-SI

[Requested System Information]” (S1130) sent from the BS to the UE. A POSA

would have understood step S1130 comprises the SI requested in step S1120, which

Agiwal states can be a set of SI(s) (i.e., a SIB group). Ex. 1002, Fig. 11; Ex. 1011,

18, Fig. 11; Ex. 1012, 34, Fig. 11; Ex. 1005, ¶69.

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Ex. 1002, Fig. 11, 20:63-65 (“On receiving the PRACH-SI, in operation S1130, BS

transmits a RAR. RAR includes the requested system information.”); Ex. 1005, ¶69.

The UE listens for the requested SI during a response window, and will retransmit

the request if needed, thus ensuring that the UE receives the SIB group(s) it

requested. Ex. 1002, 21:5-11; Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-34, Fig. 11;

Ex. 1005, ¶69.

2. Claim 2

a) The method according to claim 1, wherein the

transmitting of the request comprises: selecting, from a
plurality of preambles, a preamble associated with the at least
one system information block group; and

Agiwal teaches selecting from a plurality of preambles, a preamble associated

with the at least one SIB group. Agiwal discloses PRACH-SI is a “random access

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preamble” which can be “pre-defined” or can be “specific to system information or

a set of system information.” Ex. 1002, 20:29-41. Different preambles (i.e., a

“plurality of preambles”) are available to the UE based on its SI request. Id., 20:31-

34 (“PRACH preambles and/or PRACH opportunities for obtaining [SI] in RAR can

be different from the PRACH preambles and/or PRACH opportunities for other

purposes.”). Ex. 1005, ¶70. A POSA also would have understood “selecting, from a

plurality of preambles” is obvious in view of Figure 11 and its accompanying

description of alternatives (“Alt 1,” “Alt 2,” “Alt 3”) and the specific preambles

available in each alternative. Ex. 1002, 20:28-63, Fig. 11; Ex. 1011, 17-18, Fig. 11;

Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶70.

The PRACH-SI preamble is associated with a SIB group. Specifically, Agiwal

discloses the “PRACH-SI preamble can be specific to . . . a set of system information

or service of UE type.” Ex. 1002, 20:40-41; Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-

34, Fig. 11; Ex. 1005, ¶71. A POSA would have understood that, because Agiwal’s

method discloses different preambles based on the type of SI being requested, the

preamble would be selected from that plurality to be transmitted. Ex. 1005, ¶71. A

POSA would have understood that without selecting the desired preamble to be

transmitted, Agiwal’s system would not enable the SI to be “provided to UE on

demand,” which is a stated goal of the system. Ex. 1002, 10:22-24; Ex. 1005, ¶71.

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b) transmitting the selected preamble.

Agiwal teaches transmitting a request using the selected PRACH-SI

preamble. Agiwal’s Figure 11 discloses that at step S1120, the UE transmits a

request using the preamble PRACH-SI. See Claim 1(b), supra7; Ex. 1002, Fig. 11;

Ex. 1011, 17-18, Fig. 11; Ex. 1012, 33-34, Fig. 11; Ex. 1005, ¶72.

3. Claim 3

a) The method according to claim 1, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

Agiwal teaches transmission timing of the preamble indicating a SIB group

(i.e., set of SIs or SIB set). For example, Agiwal explains the PRACH-SI preamble

can be sent on a “PRACH time/frequency resource” (i.e., transmission timing) that

is “specific to [SI] or a set of [SI].” Ex. 1002, 20:40-48, 20:49-62, Fig. 11; Ex. 1011,

17-18; Ex. 1012, 33-34; Ex. 1005, ¶73. The BS will be able to determine the

transmission timing and SIB group that is specific to (i.e., “indicated by”) that timing

and respond to the UE by sending that requested SIB group. Ex. 1002, 20:40-62,

Fig. 11.

7
Throughout this petition, an internal reference in a ground to another claim should

be interpreted to refer to the claim in that ground unless indicated otherwise.

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Ex. 1002, Fig. 11.

4. Claim 4

a) The method according to claim 3, wherein the

transmission of the request comprises transmitting the request
to the network node in accordance with a selected transmission
timing associated with the at least one system information block
group.

Agiwal teaches the UE transmitting a request using a PRACH-SI preamble to

the BS in Claim 2, supra. Such requests are transmitted according to a transmission

timing associated with a SIB group (SIB set or set of SIs) as described in Claim 3,

supra.

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5. Claim 5

a) The method according to claim 1, further comprising:

receiving notification information from the network node,
wherein transmission of the at least one system information
block group is predefined or derived based at least partly on the
notification information.

First, Agiwal teaches receiving “notification information” from the network

node (BS) in the form of “minimum” SI. Ex. 1002, 20:35-38; Ex. 1011, 17-18; Ex.

1012, 33; Ex. 1005, ¶75. The ’027 specification states, for example, that “the

notification information may be included in minimum SI.” Ex. 1001, 3:42-43, 7:29-

30. The ʼ027 patent explains, for example, that the notification information (e.g., in

minimum SI) can indicate to a UE (or WTRU) the specific preamble(s) it should

transmit to receive specific SIB groups in response. Ex. 1001, 7:31-37; 9:47-51.

Similarly, Agiwal discloses transmitting notification information (i.e., information

to correspond a SIB set with a preamble). Indeed, Agiwal’s “PRACHSI preamble

can be specific to system information or a set of system information.” Ex. 1002,

20:40-41; Ex. 1011, 17; Ex. 1012, 33; Ex. 1005, ¶76. As shown above in Claim 3,

Agiwal’s Figure 11 specifies that PRACH-SI preamble is “specific to SI or a set of

SI(s)” and can be “pre-defined or configured in essential [SI]” which is received by

the UE at step S1110. Ex. 1002, Fig. 11. A POSA would have understood that

Agiwal discloses receiving notification information to correlate the PRACH-SI

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preamble with the requested SIB set to transmit and receive that SI on-demand. Id.,

5:20-22, 21:13-15; Ex. 1005, ¶77.

Second, Agiwal teaches the transmission of SIB groups (i.e., set of SIs or SIB

sets) is predefined or derived based on the notification information. Agiwal’s

PRACH-SI preamble is transmitted as a request for specific SIB sets as stated in

Claim 1, supra. This request is based on notification information, which is either

predefined or signaled in minimum SI. Ex. 1002, 20:35-38; Ex. 1011, 17; Ex. 1012,

33; Ex. 1005, ¶78.

Third, Agiwal teaches the UE receives the above notification information

from the network node (i.e., BS). Agiwal’s notification information can be signaled

in minimum SI or essential SI. Ex. 1002, 20:35-38. Agiwal further discloses that this

minimum SI—which can signal notification information—is acquired by the UE

from broadcasted information from the BS. Id., 19:51-53 (“In operation S1110, UE

acquires . . . minimum SI . . . from broadcasted information.”), Fig. 11; Ex. 1011,

Fig. 11; Ex. 1012, Fig. 11 (step S1110); Ex. 1005, ¶79.

6. Claim 6

a) The method according to claim 5, wherein the

notification information is included in minimum system
information.

Agiwal teaches notification information included in minimum SI as described

in Claim 5, supra.

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7. Claim 7

a) The method according to claim 1, wherein the feature of

the one or more system information blocks comprises at least
one of functionality and periodicity of the one or more system
information blocks.

Agiwal teaches one or more SIBs are “grouped” according to feature as

described in Claim 1, supra. In Agiwal, a feature comprises at least one of

functionality and periodicity. Ex. 1002, 2:52-53 (“SIBs having same periodicity can

be transmitted in one SI message.”), 9:33-39; Ex. 1011, 9-10; Ex. 1012, 24-25; Ex.

1005, ¶83. A POSA would have understood that these groupings are consistent with

the transmission of SI as indicated above. Ex. 1005, ¶84. In other words, Agiwal

discloses that its SIBs are grouped according to these features, for example as

disclosed in Figure 3 (below), and then requested by transmission of a preamble to

indicate those SIB groups, for example as disclosed in Figure 11. Id.

Agiwal further teaches more than one SIB (SIB set) is grouped based on

“service,” which is a type of “functionality.” Ex. 1002, 9:30-39; Ex. 1011, 9-10; Ex.

1012, 24-25; Ex. 1005, ¶85. These services can include ultra-reliable low latency,

device-to-device communication, or vehicle-to-vehicle communication, which a

POSA would have understood are examples of “functionalities.” Ex. 1005, ¶85. A

POSA would have further understood that Table 1 of the ʼ027 patent and Table 1 of

Agiwal provide examples of functionalities for grouping SIBs, including as

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described above in Claim 1(c). Compare, e.g., Ex. 1001, 5:55-6:12, with, Ex. 1002,

2:60-3:25; Ex. 1005, ¶85.

Agiwal’s Figure 3 illustrates how SIBs undergo a “Pre-Defined Mapping”

based on features (e.g., “based on service”) to be grouped together in sets (e.g., SIB

Set 1, SIB Set 2...SIB Set P):

Ex. 1002, 9:26-28, Fig. 3; Ex. 1005, ¶86.

8. Claim 8

a) The method according to claim 1, further comprising:

receiving an indicator from the network node, wherein the
indicator indicates at least one of: which system information
block group is being transmitted from the network node, and
which system information block group is scheduled to be
transmitted from the network node.

Agiwal teaches receiving an indicator, in the form of a network signal, from

the network node (BS) indicating which SIB group (i.e., SIBs or SIB set) is being

transmitted from the network node. For example, Agiwal discloses that the BS

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signals the UE, via minimum SI, to indicate whether the BS will transmit SI

periodically or on-demand. Ex. 1002, 19:54-57; Ex. 1011, 17-18; Ex. 1012, 33-34.

A POSA would have understood that “[n]etwork signals” are signals from the

claimed “network node” because they include minimum SI transmitted from the BS

to the UE, for instance at step S1110 in Figure 11. Ex. 1005, ¶¶87-88. A POSA

would have also understood that these “[n]etwork signals” are transmitted from the

BS to communicate to the UE which SI is “broadcasted” from the BS without the

need for a SIB request. Id. Agiwal also calls these network signals “indications”

which may include a “separate indication for each SI (e.g. SIB) or set of SIs (i.e.,

SIBs) wherein each indication indicates whether the associated SI or set of SIs are

periodically broadcasted or are provided on demand.” Ex. 1002, 20:1-5; Ex. 1011,

17-18; Ex. 1012, 33-34. If the minimum SI “indicates that SI which UE wants to

acquire is not periodically broadcasted (or provided on demand), then UE sends

request to BS to receive that SI.” Ex. 1002, 20:23-27, 20:17-23; Ex. 1011, 17-18;

Ex. 1012, 33-34.

Agiwal also teaches receiving an indicator from the BS indicating which SIB

set is scheduled to be transmitted from the BS (i.e., scheduling control information

comprising UE ID). Agiwal discloses that “[s]cheduling control information

indicating the SI-response can be masked with UE’s ID (e.g., C-RNTI, RA-RNTI)

or a pre-defined ID (e.g., SI-RNTI).” Ex. 1002, 20:67-21:3. A POSA would have

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understood that Agiwal’s scheduling control information being “masked” with UE

ID means that the UE ID is encoded into the scheduling control information, and

sent with it from the BS to UE. Id.; Ex. 1005, ¶90. Agiwal then states that the

predefined ID can be different for different SI or SI sets. Ex. 1002, 21:3-4, Fig. 11.

A POSA would therefore have understood that the scheduling information

comprising UE ID indicates which SIB group is scheduled to be transmitted. Ex.

1005, ¶91. A POSA also would have understood that the SIB group is scheduled to

be transmitted from the network node because Agiwal states that the “SI response

can be broadcasted or provided in unicast manner,” which is step S1130 in Fig. 11,

and transmits SI from the BS. Ex. 1005, ¶91.

9. Claim 10

a) The method according to claim 5, wherein the

notification information indicates a correspondence between
preambles and system information block groups.

Agiwal teaches notification information that indicates correspondence

between the PRACH-SI preamble a set of SIs or SIB set. See Claim 5, supra.

10. Claim 11

a) An apparatus for requesting system information,

comprising:

Agiwal teaches an apparatus for requesting SI, including for example in the

form of a UE sending a random access preamble (PRACH-SI) which acts as a SI

request. See Claim 1, supra.

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b) at least one processor; and

Agiwal teaches a processor. Ex. 1002, 4:58-5:2. A POSA would have

understood that this processor would be configured to perform all of the recited

functions of the UE, including the transceiver for transmitting and receiving a signal.

Id., 4:58-5:2; Ex. 1005, ¶94.

c) at least one memory comprising computer program code

which, when executed by the at least one processor, cause the
apparatus to:

Agiwal teaches this element, even though Agiwal does not use the words

“memory” and “computer program code,” because a POSA would have understood

that Agiwal’s processor cannot function without them. Ex. 1005, ¶95. Agiwal’s

system includes a UE that acquires SI. Ex. 1002, 19:33-35, 19:35-21:29; Fig. 11.

Even if prior art does not expressly or inherently disclose an aspect of the challenged

patent claim, it may still be invalidating if a POSA would have found that aspect

obvious in view of the disclosure of the prior art. WesternGeco LLC v. ION

Geophysical Corp., 889 F.3d 1308, 1326-27 (Fed. Cir. 2018); Boundary Sols., Inc.

v. CoreLogic, Inc., 711 F. App’x 627, 632 (Fed. Cir. 2017); 35 U.S.C. §103. A POSA

would have understood, and thus found it obvious, to implement a UE that includes

memory comprising computer program code for causing the UE to perform required

functions. Ex. 1005, ¶96. In particular, a POSA at the time of invention would have

understood that implementing a UE with memory containing computer program

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code (e.g., software or instructions to be executed on a processor), is a matter of

routine engineering. Id. Such an implementation would be extremely advantageous

and desirable because it would allow a UE to have the instructions needed for its

operation stored internally, obviating the need for providing instructions from an

external source (e.g., wirelessly or over a wire), which would be extremely

inefficient. Id. A POSA also would have understood that that implementing a UE

with memory to store computer program code would have an extremely high

likelihood of success. Id.

Furthermore, a POSA would have understood that the processor, including as

disclosed in limitation 11(b), supra, would execute the stored computer program

code to implement the UE’s functions described below, including its transceiver for

transmitting and receiving a signal. Ex. 1002, 4:58-5:2; Ex. 1005, ¶97.

d) transmit a request using a preamble for indicating at

least one system information block group, each of which
comprises one or more system information blocks, to a network
node, wherein the one or more system information blocks are
grouped according to a feature of the one or more system
information blocks; and

See Claim 1, supra.

e) receive one or more system information block groups

from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

See Claim 1, supra.

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11. Claim 12

a) The apparatus according to claim 11, wherein the

computer program code cause the apparatus to:

See Claim 11, supra.

b) select, from a plurality of preambles, a preamble

associated with the at least one system information block
group; and

See Claim 2, supra.

c) transmit the selected preamble.

See Claim 2, supra.

12. Claim 13

a) The apparatus according to claim 11, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

See Claims 3 and 11, supra.

13. Claim 14

a) The apparatus according to claim 13, wherein the

computer program code cause the apparatus to transmit the
request to the network node in accordance with a selected
transmission timing associated with the at least one system
information block group.

See Claims 4 and 13, supra.

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14. Claim 15

a) The apparatus according to claim 11, wherein computer

program further cause the apparatus to: receive notification
information from the network node, wherein transmission of
the at least one system information block group is predefined
or derived based at least partly on the notification information.

See Claims 5 and 11, supra.

15. Claim 16

a) The apparatus according to claim 15, wherein the

notification information is included in minimum system
information.

See Claims 6 and 15, supra.

16. Claim 17

a) The apparatus according to claim 11, wherein the

feature of the one or more system information blocks comprises
at least one of functionality and periodicity of the one or more
system information blocks.

See Claims 7 and 11, supra.

17. Claim 18

a) The apparatus according to claim 11, wherein the

computer program further cause the apparatus to: receive an
indicator from the network node, wherein the indicator
indicates at least one of: which system information block group
is being transmitted from the network node, and which system
information block group is scheduled to be transmitted from
the network node.

See Claims 8 and 11, supra.

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18. Claim 20

a) The apparatus according to claim 15, wherein the

notification information indicates a correspondence between
preambles and system information block groups.

See Claims 10 and 15, supra.

19. Claim 21

a) A method for transmission of system information,

comprising:

See Claim 1, supra.

b) receiving a request using a preamble for indicating at

least one system information block group, each of which
comprises one or more system information blocks, from a user
terminal to a network node,

This limitation is identical to claim 1, except it requires “receiving a request

using a preamble,” whereas claim 1 requires “transmitting a request using a

preamble.” Agiwal teaches the PRACH-SI preamble is transmitted by the UE and

received by the BS. See Claim 1, supra; Ex. 1005, ¶111.

c) wherein the one or more system information blocks are

grouped according to a feature of the one or more system
information blocks; and

See Claim 1, supra.

d) transmitting one or more system information block

groups from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

This limitation is identical to claim 1, except that it requires “transmitting

one or more [SIB] groups from the network node,” whereas claim 1 requires

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“receiving one or more [SIB] groups from the network node.” Agiwal teaches sets

of SI or SIB sets are transmitted by the BS and received by the UE, and therefore

this limitation is also rendered obvious in view of Agiwal. See Claim 1, supra; Ex.

1005, ¶113.

C. Ground II: Claims 1-8, 10-18, and 20-21 are Obvious in view of
Deenoo

1. Claim 1

a) A method for requesting system information,

comprising:

Deenoo teaches a method for transmitting and receiving system information.

Ex. 1003, ¶¶7-10; Ex. 1005, ¶115. Deenoo teaches methods for “triggering a system

information (‘SI’) request procedure.” Ex. 1003, ¶6, ¶350; Ex. 1014, ¶¶210, 240;

Ex. 1015, ¶¶249, 219; Ex. 1013, ¶¶6, 220. Deenoo also teaches techniques for a UE

(which Deenoo refers to as a “WTRU”) to request and acquire various types of SI

from a BS. Ex. 1003, Abstract; Ex. 1014, Abstract; Ex. 1015, Abstract; Ex. 1013,

Abstract.

b) transmitting a request using a preamble for indicating at

least one system information block group, each of which
comprises one or more system information blocks, from a user
terminal to a network node,

First, Deenoo discloses a WTRU that “transmit[s] a reserved RACH

preamble to request system information” as part of a first message. Ex. 1003, ¶367;

Ex. 1014, ¶238; Ex. 1015, ¶247; Ex. 1013, ¶266. The RACH preamble indicates at

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least one SIB group. Ex. 1003, ¶367 (“RACH preambles may be used to indicate a

specific [SIB] and/or group thereof”), ¶368 (“A WTRU may indicate a specific

type/group of other-SI requested (e.g., based on the reserved identity in the message

portion).”), ¶¶395, 401, 405; Ex. 1014, ¶¶238-39; Ex. 1015, ¶¶247-48; Ex. 1013,

¶¶248, 266-67. Deenoo further teaches “specific combinations of preamble and

resources may be reserved for the WTRU to request one or more, or multiple other-

SI and/or a set of SIBs (e.g., a set of SIBs and/or SI related to a specific feature).”

Ex. 1003, ¶403; Ex. 1014, ¶239; Ex. 1015, ¶248; Ex. 1013, ¶266; see also Ex. 1003,

¶344 (“on-demand acquisition of additional SI”); Ex. 1014, ¶233; Ex. 1015, ¶241;

Ex. 1013, ¶244. A POSA would have understood Deenoo’s teaching of a preamble

reserved for a “set of SIBs” discloses “a request using a preamble for indicating at

least one [SIB] group.” Ex. 1005, ¶¶116-18.

Second, Deenoo teaches each SIB group “comprises one or more system

information blocks.” For example, Deenoo discloses that each of the SIB groups

include at least one SIB. Ex. 1003, ¶367; Ex. 1013, ¶266; Ex. 1014, ¶239; Ex. 1015,

¶248. Deenoo further teaches the preamble is used “to request one or more, or

multiple other-SI and/or a set of SIBs (e.g., a set of SIBs and/or SI related to a

specific feature).” Ex. 1003, ¶403; ¶333; Ex. 1013, ¶¶88, 241, 248-49, 266; Ex. 1014,

¶¶84, 231, 238-39; Ex. 1015, ¶¶87, 240, 247-48. Deenoo’s teaching of “groups” and

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“sets” of SIBs discloses a SIB group that “comprises one or more [SIBs].” Ex. 1005,

¶119.

Third, Deenoo teaches the request is transmitted “from a user terminal to a

network node.” Ex. 1005, ¶120. Deenoo refers to its “user terminal” as a “WTRU”

and its “network node” as a BS. Ex. 1003, ¶¶3, 25, 26; Ex. 1014, ¶¶15, 375; Ex.

1015, ¶¶18, 426; Ex. 1013, ¶¶19, 449. Figure 1A illustrates user terminals (yellow)

and network nodes (blue).

Ex. 1003, Fig. 1A.

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c) wherein the one or more system information blocks are
grouped according to a feature of the one or more system
information blocks; and

The ʼ027 patent explains that the recited “feature” of this limitation includes

“functionality and periodicity of the one or more SIBs.” Ex. 1001, 3:47-49. Deenoo

teaches grouping SIBs according to “logical functions” such as periodicity, latency,

or feature. Ex. 1003, ¶333; Ex. 1014, ¶223; Ex. 1015, ¶232; Ex. 1013, ¶233. Thus, a

POSA would have understood that Deenoo renders obvious grouping SIBs

according to a feature thereof. Ex. 1005, ¶121. A WTRU can request SIB groups

related to a specific feature. Ex. 1003, ¶403; Ex. 1014, ¶239; Ex. 1015, ¶248; Ex.

1013, ¶266. A POSA would have understood that this feature-based grouping in

Deenoo would be applied to essential and non-essential SI. Ex. 1005, ¶122.

d) receiving one or more system information block groups

from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

First, Deenoo teaches a WTRU receives one or more SIB blocks from the

network node (BS). Ex. 1003, ¶¶320-21 (“System information [including a SIB

group] may be acquired, for example...by broadcast.”); ¶344; Ex. 1014, ¶¶210-11,

234; Ex. 1015, ¶¶219-20, 243; Ex. 1013, ¶¶220-21, 224, ¶¶268-69. Furthermore,

Deenoo explains that WTRUs use BSs (“network nodes”) to access information

from the network. Ex. 1003, ¶¶25-26; Ex. 1013, ¶19; Ex. 1014, ¶15; Ex. 1015, ¶18.

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Thus, a POSA would have understood that the WTRU receives messages—

including requested SIB groups—from the network node. Ex. 1005, ¶123.

Second, Deenoo teaches the WTRU receives the requested SIB group (i.e.,

“the at least one [SIB] group,” from Claim 1.b). For example, Deenoo explains that

the WTRU monitors the second message (sent from the BS to the WTRU) for a

response to the message sent by the WTRU (msg1). Ex. 1003, ¶¶369-70; Ex. 1013,

¶¶268-69; Ex. 1014 , ¶245; Ex. 1015, ¶¶275-76; Ex. 1005, ¶124. This response

(msg2) can include an indication that the BS will broadcast (and the WTRU will

receive) the requested SIB group. Ex. 1003, ¶¶374, 375; Ex. 1013, ¶¶268, 269; Ex.

1014, ¶¶247, 251; Ex. 1015, ¶¶278, 282; Ex. 1005, ¶124. The requested SIB group

may be carried in the BS’s response to the preamble the WTRU sent. Ex. 1003, ¶378;

Ex. 1013, ¶¶268-71; Ex. 1014, ¶239; Ex. 1015, ¶248; Ex. 1005, ¶124.

2. Claim 2

a) The method according to claim 1, wherein the

transmitting of the request comprises: selecting, from a
plurality of preambles, a preamble associated with the at least
one system information block group; and

First, Deenoo teaches a plurality of preambles from which a selection may be

made. For example, Deenoo discloses that “reserved RACH preambles may be used

to indicate a specific [SIB] and/or group thereof.” Ex. 1003, ¶367; Ex. 1013, ¶266;

Ex. 1014, ¶¶223, 238; Ex. 1015, ¶¶232, 247-48. A POSA would have understood

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Deenoo’s disclosure of “RACH preambles” (plural) to teach that of those plurality

of preambles is to be selected. Ex. 1005, ¶125.

Second, Deenoo teaches selecting a preamble associated with the at least one

SIB group. Deenoo’s WTRU requests “other SI” from the BS, and this other SI

includes specific SIBs or SIB groups. Ex. 1003, ¶¶10, 367-68; Ex. 1013, ¶¶6, 266-

67; Ex. 1014, ¶¶238-39; Ex. 1015, ¶¶247-48. Deenoo discloses that “[a] WTRU may

indicate a request for other SI [i.e., a SIB group] (e.g., based on a selection of a

preamble sequence).” Ex. 1003, ¶¶368, 377 (“WTRU may have indicated (e.g.,

based on the selection of the reserved RACH preamble)”), ¶¶381-82; Ex. 1013,

¶¶267, 271, 273; Ex. 1014, ¶¶231, 238-39; Ex. 1015, ¶¶240, 247-48. A WTRU can

select a preamble to indicate which SIB group the BS should provide. Ex. 1003, ¶386

(“[A] WTRU may use the selected preamble and/or the resources on which the

preamble is transmitted (e.g., to indicate the desire for other-SI and/or the specific

other-SI [i.e., SIB groups] being requested)”; Ex. 1003, ¶389, ¶¶400-402; Ex. 1014,

¶¶214-18, 229, 231-35, 238; Ex. 1015, ¶¶223-27, 238, 240-44, 247; Ex. 1013, ¶¶227-

28, 239, 241-45, 248; Ex. 1005, ¶127.

b) transmitting the selected preamble.

Deenoo teaches the WTRU transmits the selected preamble. Ex. 1003, ¶367,

¶386 (“the preamble is transmitted”); Ex. 1013, ¶¶266-67, 272; Ex. 1014, ¶¶238-39;

Ex. 1015, ¶¶247-48; see Claims 1(b) and 2(b), supra; Ex. 1005, ¶128.

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3. Claim 3

a) The method according to claim 1, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

Deenoo teaches a WTRU can select and use the resources (defined to include

“time” and “frequency”) on which a preamble is transmitted to indicate which SI the

BS should provide. Ex. 1003, ¶401 (“[T]he WTRU may determine the other-SI it

requires to request and/or may select a resource [e.g., transmission time] from the

set of configured time/frequency resources, which corresponds to the specific other-

SI being requested.”), id., ¶¶8, 189, 297, 378, 386, 397, 402-03, 348; Ex. 1014, ¶¶84,

231, 238-40, 242; Ex. 1015, ¶¶87, 240, 247-49, 261, 273; Ex. 1013, ¶¶88, 241, 248,

255, 284, 296; Ex. 1005, ¶129.

4. Claim 4

a) The method according to claim 3, wherein the

transmission of the request comprises transmitting the request
to the network node in accordance with a selected transmission
timing associated with the at least one system information block
group.

Deenoo teaches the additional limitations of this claim. See Claim 3, supra.

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5. Claim 5

a) The method according to claim 1, further comprising:

receiving notification information from the network node,
wherein transmission of the at least one system information
block group is predefined or derived based at least partly on the
notification information.

First, Deenoo teaches the WTRU receives notification information (in

minimum SI) from the network node. The ’027 specification states, for example, that

“the notification information may be included in minimum SI.” Ex. 1001, 3:42-43,

7:29-30. The ʼ027 patent explains, for example, that the notification information

(e.g., in minimum SI) can indicate to a UE the specific preamble(s) it should transmit

to receive specific SIB groups in response. Ex. 1001, 7:31-37; 9:47-51. Similarly,

Deenoo discloses that the WTRU receives notification information in minimum SI

broadcasted from the network node (BS). Ex. 1003, ¶¶366, 379, 389, 392, 394, 396,

404; Ex. 1014, ¶221; Ex. 1015, ¶230; Ex. 1013, ¶231; Ex. 1005, ¶132.

Second, Deenoo teaches the SIB group is predefined or derived at least partly

on the notification information (minimum SI). A WTRU can process a response

message (msg2) from the BS within a predefined time period or window which is

determined by the minimum SI (notification information). Ex. 1003, ¶371; Ex. 1013,

¶¶222, 248, 268-69, 276, 300; Ex. 1014, ¶¶238-39, 244, 246; Ex. 1015, ¶¶247-48,

277, 285. A POSA would have understood the minimum SI is “notification

information” that indicates to the WTRU which preamble is to be sent and how to

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process the response msg2 (e.g., based on timing). Ex. 1003, ¶¶379, 392; Ex. 1013,

¶¶268-69; Ex. 1014, ¶¶238-39, 244, 246; Ex. 1015, ¶¶247-48, 277, 285; Ex. 1005,

¶133.

Deenoo further explains that the preamble/PRACH resource allocation of

msg1 can be determined based on minimum SI, predefined or preconfigured in the

WTRU, or a default configuration. Ex. 1003, ¶¶282, 389, 394, 396, 404; Ex. 1014,

¶¶242-46; Ex. 1015, ¶¶273-77; Ex. 1013, ¶¶296-300. The transmitted SIB group

correlates to the preamble/PRACH resource transmitted by the WTRU, which in

turn depends on minimum SI or a pre-configuration in the WTRU. Therefore, a

POSA would have understood that the transmission of the SIB group is predefined

(e.g., “preconfigured in the WTRU”) or derived based at least partly on the

notification information (minimum SI). Ex. 1005, ¶134.

6. Claim 6

a) The method according to claim 5, wherein the

notification information is included in minimum system
information.

Deenoo teaches notification information included in minimum SI. See Claim

5, supra.

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7. Claim 7

a) The method according to claim 1, wherein the feature of

the one or more system information blocks comprises at least
one of functionality and periodicity of the one or more system
information blocks.

Deenoo teaches grouping SIBs according to at least functionality and

periodicity. Ex. 1003, ¶333; Ex. 1013, ¶233; Ex. 1014, ¶223; Ex. 1015, ¶232; Ex.

1005, ¶134; see Claim 1(c), supra. A POSA would have understood that this feature-

based organization is implemented in the transmission and receiving scheme

described in claim 1. Ex. 1005, ¶134.

8. Claim 8

a) The method according to claim 1, further comprising:

receiving an indicator from the network node, wherein the
indicator indicates at least one of: which system information
block group is being transmitted from the network node, and
which system information block group is scheduled to be
transmitted from the network node.

First, Deenoo teaches receiving an indicator from the network node. For

example, Deenoo discloses that a response (msg2) sent from a BS (network node) to

a WTRU (see Claim 1(d), supra) can include indicators of the SIB group transmitted

(e.g., “temporary identifier” or “type field”), or when a SIB group is to be transmitted

(e.g., using a bitmap or other scheduling information). Ex. 1003, ¶¶369-70, 373, 392;

Ex. 1013, ¶¶237, 268-70, 297; Ex. 1014, ¶¶227, 243, 257-58; Ex. 1015, ¶¶236, 274,

308-09; Ex. 1005, ¶137.

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Second, Deenoo teaches an indicator that indicates which SIB group is being

transmitted from the BS (network node). The WTRU can look for an identifier in

msg2 that is specific to the SI requested, which a POSA would have understood

indicates which SIB group is being transmitted. Ex. 1003, ¶369 (“[A] WTRU may

be configured to monitor for a temporary identifier (e.g. a RNTI) [indicator] specific

to the other-SI request [i.e., transmitted SIB group].”); ¶370 (“[T]he MSG2 format

may be specific to the other-SI request [i.e., transmitted SIB group], perhaps

indicated by a separate type field [and] may include the identity of the

preamble...and/or may directly include an indication of the other-SI type.”); Ex.

1014, ¶243; Ex. 1015, ¶274; Ex. 1013, ¶297; Ex. 1005, ¶138.

Third, Deenoo teaches an indicator that indicates which SIB group is

scheduled to be transmitted from the BS (network node). For example, Deenoo

teaches that msg2 received by the WTRU can include a bitmap of the other types of

SI that may be transmitted in an upcoming window. Ex. 1003, ¶370; Ex. 1014, ¶227;

Ex. 1015, ¶236; Ex. 1013, ¶237; Ex. 1005, ¶¶138-39. Deenoo’s “msg2” can also

indicate when other SI will be transmitted by the network or that the WTRU needs

to make an additional request for such SI. Ex. 1003, ¶373, ¶392; Ex. 1013, ¶¶237,

268-70; Ex. 1014, ¶¶227, 257-58; Ex. 1015, ¶¶236, 308-09; Ex. 1005, ¶139.

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9. Claim 10

a) The method according to claim 5, wherein the

notification information indicates a correspondence between
preambles and system information block groups.

Deenoo teaches notification information (e.g., a minimum SI) indicating

correspondence between preambles and SIB groups. See Claim 5, supra.

10. Claim 11

a) An apparatus for requesting system information,

comprising:

Deenoo teaches an apparatus for requesting SI, including for example in the

form of a WTRU. See Claim 1, supra; Ex. 1003, Abstract, ¶3, Fig. 1A; Ex. 1013, ¶2,

Fig. 1A; Ex. 1014, ¶2, Fig. 1A; Ex. 1015, ¶2, Fig. 1A.

b) at least one processor; and

Deenoo teaches the WTRU comprises a processor (orange). Ex. 1003, ¶¶6-

10, 36, 37, 41-44, 357, 368, 373, 390, 393, 648, 649, Fig. 1B; Ex. 1013, ¶¶256, 449;

Ex. 1014, ¶¶26, 30, 375; Ex. 1015, ¶¶29, 33, 426.

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Ex. 1003, Fig. 1B; Ex. 1005 ¶142.

c) at least one memory comprising computer program code

which, when executed by the at least one processor, cause the
apparatus to:

First, Deenoo teaches two memories comprising computer program code

(highlighted purple in Figure 1b, above). Second, Deenoo discloses that the

processor executes instructions (“computer program code”) stored in the memory to

cause the WTRU to perform Deenoo’s on-demand SI acquisition steps. Ex. 1003,

¶¶357, 368, 373, 390, 393; Ex. 1013, ¶¶6, 29-30, 256, 267-68, 449; Ex. 1014, ¶¶25-

26, 375; Ex. 1015, ¶¶28-29, 426. Deenoo teaches all of its disclosed techniques

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(including for claims 1-8 and 10 above) can be implemented via a processor that

executes computer program code stored in a memory. Ex. 1003, ¶¶648-49; Ex. 1013,

¶449; Ex. 1014, ¶375; Ex. 1015, ¶426; Ex. 1005, ¶143.

d) transmit a request using a preamble for indicating at

least one system information block group, each of which
comprises one or more system information blocks, to a network
node, wherein the one or more system information blocks are
grouped according to a feature of the one or more system
information blocks; and

See Claim 1, supra.

e) receive one or more system information block groups

from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

See Claim 1, supra.

11. Claim 12

a) The apparatus according to claim 11, wherein the

computer program code cause the apparatus to:

See Claim 11, supra.

b) select, from a plurality of preambles, a preamble

associated with the at least one system information block
group; and

See Claim 2, supra.

c) transmit the selected preamble.

See Claim 2, supra.

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12. Claim 13

a) The apparatus according to claim 11, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

See Claim 3, supra.

13. Claim 14

a) The apparatus according to claim 13, wherein the

computer program code cause the apparatus to transmit the
request to the network node in accordance with a selected
transmission timing associated with the at least one system
information block group.

See Claims 4 and 13, supra.

14. Claim 15

a) The apparatus according to claim 11, wherein computer

program further cause the apparatus to: receive notification
information from the network node, wherein transmission of
the at least one system information block group is predefined
or derived based at least partly on the notification information.

See Claims 1, 5, and 11, supra.

15. Claim 16

a) The apparatus according to claim 15, wherein the

notification information is included in minimum system
information.

See Claims 6 and 15, supra.

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16. Claim 17

a) The apparatus according to claim 11, wherein the

feature of the one or more system information blocks comprises
at least one of functionality and periodicity of the one or more
system information blocks.

See Claims 7 and 11, supra.

17. Claim 18

a) The apparatus according to claim 11, wherein the

computer program further cause the apparatus to: receive an
indicator from the network node, wherein the indicator
indicates at least one of: which system information block group
is being transmitted from the network node, and which system
information block group is scheduled to be transmitted from
the network node.

See Claims 8 and 11, supra.

18. Claim 20

a) The apparatus according to claim 15, wherein the

notification information indicates a correspondence between
preambles and system information block groups.

See Claims 9 and 15, supra.

19. Claim 21

a) A method for transmission of system information,

comprising:

See Claim 1, supra.

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b) receiving a request using a preamble for indicating at
least one system information block group, each of which
comprises one or more system information blocks, from a user
terminal to a network node,

This limitation is identical to claim 1, except it requires “receiving a request

using a preamble,” whereas claim 1 requires “transmitting a request using a

preamble.” Deenoo teaches the preamble is transmitted by the WTRU and received

by the BS. See Claim 1, supra; Ex. 1005, ¶157.

c) wherein the one or more system information blocks are

grouped according to a feature of the one or more system
information blocks; and

See Claim 1, supra.

d) transmitting one or more system information block

groups from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

This limitation is identical to claim 1, except it requires “transmitting one or

more [SIB] groups from the network node,” whereas claim 1 requires “receiving

one or more [SIB] groups from the network node.” Deenoo teaches sets or groups of

SIBs are transmitted by the BS and received by the WTRU. See Claim 1, supra; Ex.

1005, ¶159.

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D. Ground III: Claims 3, 4, 11-18, and 20 are obvious in view of
Agiwal and Kubota

1. Claim 3

a) The method according to claim 1, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

Agiwal in combination with Kubota also renders Claim 3 obvious. First,

Kubota teaches transmission of SIBs “in groups.” Ex. 1004, ¶150. Because Kubota

and Agiwal state that their teachings can be applied to SIBs in groups, a POSA would

have understood that Agiwal in combination with Kubota discloses “at least one

[SIB] group.” Ex. 1005, ¶162. Second, Kubota teaches using preamble transmission

timing to indicate which SIB group is requested. Id., ¶¶150, 260 (“An SIB Tx request

372 may be received by the base station service-specific SI request module 1810 at

a time indicated in a schedule included with the service-specific periodic sync signal

370, and may thus indicate to the base station 105-g that a corresponding service-

specific SI [i.e., SIB group] is to be transmitted to the requesting UE 115.”). A POSA

would have understood that the combination of Kubota and Agiwal teaches using a

preamble for the SIB group request by implementing Kubota’s SIB Tx request using

Agiwal’s preamble/PRACH. Ex. 1005, ¶¶162-63.

A POSA would have been motivated to combine Agiwal with Kubota’s

teaching of using transmission timing to indicate the requested SIB group. Ex. 1005,

¶164. Both Agiwal and Kubota are directed to 5G systems, and thus both target the

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same wireless systems. Ex. 1002, Abstract, Fig. 15, 25:4-8; Ex. 1004, ¶¶88, 92; Ex.

1005, ¶164. Furthermore, both Agiwal and Kubota are directed to the management

of SI within 5G systems, and thus both occupy the same narrow field of endeavor.

Ex. 1002, 5:19-22; Ex. 1004, ¶¶122-23, Fig. 3B; Ex. 1005, ¶164. Agiwal and Kubota

disclose the SI as SIBs and grouping the SIBs into groups. Ex. 1002, 9:26-32; Ex.

1004, ¶150; Ex. 1005, ¶164.

A POSA would have been motivated to use Kubota’s known technique of

indicating a requested SIB group with transmission time (Ex. 1004, ¶¶150, 260), to

improve upon Agiwal’s disclosure of a time resource specific to SI (Ex. 1002, 20:40-

47).8 Ex. 1005, ¶165. Implementing Kubota’s technique would yield a predictable

result of improved energy efficiency and reduced overhead by indicating the content

of the request with message transmission timing instead of sending additional data.

Ex. 1005, ¶165. Indeed, as described by Dr. Wells, a POSA would have had a

reasonable expectation of success combining both based on their compatibility.9 Ex.

1005, ¶165.

8
See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (application of a

known technique to a piece of prior art ready for improvement).

9
See KSR, 550 U.S. at 416 (combining familiar elements according to known

methods to yield predictable results).

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Furthermore, a POSA would have been motivated to combine both teachings

to achieve the efficiency and performance benefits to a wireless communication

system that both references disclose.10 Ex. 1005, ¶166; Ex. 1002, 4:4-7, 34-36; 5:19-

22, Ex. 1004, ¶¶18, 112, 113, 135, 228. Moreover, Agiwal cites Kubota’s issued

patent on its face, which a POSA would have understood as motivation to use the

teachings of these references together. Ex. 1002, Cover (“References Cited”); Ex.

1005, ¶167.

2. Claim 4

a) The method according to claim 3, wherein the

transmission of the request comprises transmitting the request
to the network node in accordance with a selected transmission
timing associated with the at least one system information block
group.

Agiwal in combination with Kubota renders Claim 4 obvious. Ex. 1005, ¶168.

Kubota teaches the UE transmitting a request using a preamble (SIB Tx request) to

the network node (base station). See Claim 3, supra. Kubota further discloses that

requests are made according to a transmission timing associated with a SIB group

(“at a time indicated in a schedule” for “corresponding service-specific SI”). Id.; Ex.

1005, ¶168.

10
See supra note 9 and accompanying text.

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3. Claim 11

a) An apparatus for requesting system information,

comprising:

See Ground 1, Claim 1, supra.

b) at least one processor; and

Agiwal teaches a UE that includes a processor. See Ground 1, Claim 11(b),

supra. Kubota also discloses that the UE includes a processor, and a POSA would

have been motivated to combine Kubota’s disclosure of a processor with that of

Agiwal for the reasons articulated in Ground 3, Claim 11(c), supra. Ex. 1004, ¶¶21-

22, 32-33, 151.

c) at least one memory comprising computer program code

which, when executed by the at least one processor, cause the
apparatus to:

Agiwal renders this limitation obvious. See Ground 1, Claim 11(c), supra.

Kubota also teaches a UE containing “a processor, memory in electronic

communication with the processor, and instructions [‘computer program code’]

stored in the memory.” Ex. 1004, ¶21, ¶¶22, 32-33. Further, “the instructions may

be executable by the processor” to receive and send information, including “sending

a request for system information [SIB groups].” Ex. 1004, ¶¶10-11, 21, 150; Ex.

1005, ¶173.

A POSA would have been motivated to combine Agiwal’s description of “at

least one processor” with Kubota’s disclosure of a processor, memory, and

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instruction (i.e., computer code). Ex. 1005, ¶174. Agiwal already describes how a

UE, which contains at least one processor, transmits a preamble to request and

receive SIB groups. See Ground 1, Claim 11(d)-(e). A POSA would have consulted

Kubota for additional details on how to implement the processor with memory and

computer code. Ex. 1005, ¶174. A POSA would have consulted Kubota because

Agiwal cites to Kubota. Ex. 1002, References Cited; Ex. 1005, ¶¶175-76. Further,

combining a processor with memory and computer code that operates on that

processor would simply be applying known methods to yield predictable results such

as ensuring access to software that the processor executes. Id. A POSA also would

have found it obvious to try adding Kubota’s memory and computer code to

Agiwal’s system. Id. Most (if not all) smartphones that would perform the techniques

recited by the ʼ027 patent would do so using a processor that executes program code

retrieved from on-board memory. Id. Thus Kubota’s system (including memory and

computer code) is one of a very finite number of solutions, and would have likely

been successful. Id.

d) transmit a request using a preamble for indicating at

least one system information block group, each of which
comprises one or more system information blocks, to a network
node, wherein the one or more system information blocks are
grouped according to a feature of the one or more system
information blocks; and

See Ground 1, Claim 1, supra.

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e) receive one or more system information block groups
from the network node, wherein the one or more system
information block groups comprise the at least one system
information block group.

See Ground 1, Claim 1, supra.

4. Claim 12

a) The apparatus according to claim 11, wherein the

computer program code cause the apparatus to:

See Ground 3, Claim 11, supra.

b) select, from a plurality of preambles, a preamble

associated with the at least one system information block
group; and

See Ground 1, Claim 2, supra.

c) transmit the selected preamble.

See Ground 1, Claim 2, supra.

5. Claim 13

a) The apparatus according to claim 11, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

See Ground 3, Claims 3 and 11, supra.

6. Claim 14

a) The apparatus according to claim 13, wherein the

computer program code cause the apparatus to transmit the
request to the network node in accordance with a selected
transmission timing associated with the at least one system
information block group.

See Ground 3, Claims 4, 11, 13, supra.

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7. Claim 15

a) The apparatus according to claim 11, wherein computer

program further cause the apparatus to: receive notification
information from the network node, wherein transmission of
the at least one system information block group is predefined
or derived based at least partly on the notification information.

See Ground 1, Claim 5 and Ground 3, Claim 11, supra.

8. Claim 16

a) The apparatus according to claim 15, wherein the

notification information is included in minimum system
information.

See Ground 1, Claim 6 and Ground 3, Claim 15, supra.

9. Claim 17

a) The apparatus according to claim 11, wherein the

feature of the one or more system information blocks comprises
at least one of functionality and periodicity of the one or more
system information blocks.

See Ground 1, Claim 7 and Ground 3, Claim 11, supra.

10. Claim 18

a) The apparatus according to claim 11, wherein the

computer program further cause the apparatus to: receive an
indicator from the network node, wherein the indicator
indicates at least one of: which system information block group
is being transmitted from the network node, and which system
information block group is scheduled to be transmitted from
the network node.

See Ground 1, Claim 8 and Ground 3, Claim 11, supra.

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11. Claim 20

a) The apparatus according to claim 15, wherein the

notification information indicates a correspondence between
preambles and system information block groups.

See Ground 1, Claim 10 and Ground 3, Claim 15, supra.

E. Ground IV: Claims 3, 4, 13, and 14 are Obvious in view of Deenoo

and Kubota

1. Claim 3

a) The method according to claim 1, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

Deenoo in combination with Kubota renders Claim 3 obvious for the same

reasons explained in Ground 3, Claim 3, supra. A POSA would have understood

that the combination of Kubota and Deenoo teaches using a preamble for the SIB

group request, namely by implementing Kubota’s SIB Tx request using Deenoo’s

preamble/PRACH. Ex. 1005, ¶192.

A POSA would have been motivated to combine the disclosure of Deenoo

with Kubota’s teaching of using transmission timing to indicate the requested SIB

group. Id. As an initial matter, both Deenoo and Kubota are directed to 5G systems,

and thus a POSA would have understood that both are targeted to the same wireless

systems. Ex. 1003, ¶¶2-3; Ex. 1013, ¶2; Ex. 1014, ¶2; Ex. 1015, ¶2; Ex. 1004, ¶¶88,

92; Ex. 1005, ¶193. Furthermore, both Deenoo and Kubota are directed to managing

SI within 5G systems, and thus a POSA would have understood that both occupy the

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same narrow field of endeavor. Ex. 1005, ¶193. In addition, both Deenoo and Kubota

disclose the SI as SIBs and grouping the SIBs into one or more groups or sets of

SIBs. Ex. 1003, ¶¶333-36; Ex. 1013, ¶¶233-36; Ex. 1014, ¶¶223-26; Ex. 1015,

¶¶232-35; Ex. 1004, ¶150; Ex. 1005, ¶193.

A POSA would have been motivated to use Kubota’s known technique of

indicating a requested SIB group with transmission time (Ex. 1004, ¶¶150, 260), to

improve upon Deenoo’s disclosure of a time resource specific to SI11 (Ex. 1003,

¶¶386, 401-403; Ex. 1013, ¶¶241, 248-49, 266; Ex. 1014, ¶¶231, 238-39; Ex. 1015,

¶¶240, 247-48). Ex. 1005, ¶194. Implementing Kubota’s known technique would

have improved energy efficiency and reduced overhead because the content of the

request would be indicated by transmission timing of the message instead of needing

to send additional data.12 Ex. 1005, ¶195. As described by Dr. Wells, a POSA would

have had a reasonable expectation of success in combining both references because

their closely related disclosures demonstrate compatibility.13 Ex. 1005, ¶195.

Furthermore, a POSA would have been motivated to combine both teachings

to achieve the efficiency and performance benefits to a wireless communication

system that both references disclose. Id.; Ex. 1003, ¶¶163-66, 377; Ex. 1013, ¶¶62-

11
See supra note 8 and accompanying text.
12
Id.
13
See supra note 9 and accompanying text.

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64, 270; Ex. 1014, ¶¶58-61; Ex. 1015, ¶¶61-64; Ex. 1004, ¶112. Moreover, Deenoo’s

prosecution history cites Kubota in a non-final rejection (Ex. 1016, 499), which a

POSA would have understood as motivation to use the teachings of these references

together. Ex. 1005, ¶196.

2. Claim 4

a) The method according to claim 3, wherein the

transmission of the request comprises transmitting the request
to the network node in accordance with a selected transmission
timing associated with the at least one system information block
group.

Deenoo in combination with Kubota renders Claim 4 obvious for the same

reasons explained in Ground 3, Claim 3. Ex. 1005, ¶¶197-98.

3. Claim 13

a) The apparatus according to claim 11, wherein the at least

one system information block group is indicated by
transmission timing of the preamble.

See Ground 4, Claim 3, supra.

4. Claim 14

a) The apparatus according to claim 13, wherein the

computer program code cause the apparatus to transmit the
request to the network node in accordance with a selected
transmission timing associated with the at least one system
information block group.

See Ground 4, Claims 4 and 13, supra.

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VI. DISCRETIONARY FACTORS

A. The General Plastic Factors Favor Institution

The General Plastic factors (extended in Valve) weigh against denying

institution under § 314(a). Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,

IPR2016-01357, Paper 19 at 15-19 (September 6, 2017) (precedential).

Samsung previously challenged the ’027 Patent in IPR2021-00487

(“Samsung IPR”), which terminated pursuant to settlement prior to a preliminary

response. Because Apple was not a party to Samsung IPR, this is Apple’s first

challenge to the ’027 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.

VII. CONCLUSION

For the foregoing reasons, Petitioner respectfully requests inter partes review

of the Challenged Claims.

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By: /s/ Adam P. Seitz

Adam P. Seitz, Reg. No. 52,206
Paul R. Hart, Reg. No. 59,646

COUNSEL FOR PETITIONER

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VIII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)

A. Real Party-In-Interest

Petitioner is the real party-in-interest. 37 C.F.R. § 42.8(b)(1).

B. Related Matters

Petitioner is aware of the following matter, now terminated, involving the

’027 patent:

• Samsung v. Ericsson, IPR2021-00487 (January 29, 2021)

Lead and Back-Up Counsel

Petitioner provides the following designation and service information for lead

and back-up counsel. 37 C.F.R. § 42.8(b)(3) and b(4).

Lead Counsel Back-Up Counsel

Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
[email protected] [email protected]
[email protected]
Postal and Hand-Delivery Address:
Postal and Hand-Delivery Address: Erise IP, P.A.
ERISE IP, P.A. 5299 DTC Blvd., Ste. 1340
7015 College Blvd., Ste. 700 Greenwood Village, Colorado 80111
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Telephone: (913) 777-5600
Fax: (913) 777-5601 Fax: (913) 777-5601

Jennifer C. Bailey (Reg. No. 52,583)

[email protected]

Postal and Hand-Delivery Address:

ERISE IP, P.A.
7015 College Blvd., Ste. 700
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Fax: (913) 777-5601

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CERTIFICATION OF WORD COUNT

The undersigned certifies pursuant to 37 C.F.R. § 42.24 that the foregoing

Petition for Inter Partes Review, excluding any table of contents, mandatory notices

under 37 C.F.R. § 42.8, certificates of service or word count, or appendix of exhibits,

contains 13,933 words according to the word-processing program used to prepare

this document (Microsoft Word).

Dated: January 25, 2022

BY: /s/ Adam P. Seitz

Adam P. Seitz, Reg. No. 52,206

COUNSEL FOR PETITIONER

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CERTIFICATE OF SERVICE ON PATENT OWNER

UNDER 37 C.F.R. § 42.105

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on

January 25, 2022, a completed 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 ’027 Patent as listed on PAIR:

NDWE LLP/Ericsson
99 Almaden Boulevard, Suite 575
San Jose, CA 95113

BY: /s/ Adam P. Seitz

Adam P. Seitz, Reg. No. 52,206

COUNSEL FOR PETITIONER

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APPENDIX OF EXHIBITS
Exhibit 1001 U.S. Patent No. 10,512,027
Exhibit 1002 U.S. Patent No. 10,455,621 (“Agiwal”)
Exhibit 1003 U.S. Application Publication No. 2019/0174554 (“Deenoo”)
Exhibit 1004 U.S. Application Publication No. 2016/0234736 (“Kubota”)
Exhibit 1005 Declaration of Dr. Jonathan Wells for Inter Partes Review of
U.S. Patent No. 10,512,027
Exhibit 1006 Curriculum Vitae of Dr. Jonathan Wells
Exhibit 1007 LTE for UMTS, Evolution to LTE-Advanced, Harri Holma and
Antti Toskala (2d Ed., 2011) (“Holma”)
Exhibit 1008 LTE - The UMTS Long Term Evolution: From Theory to
Practice, Stefania Sesia Baker and Issam Toufik (2nd ed., 2011)
(“Sesia”)
Exhibit 1009 R2-166120, Oct. 10-14, 2016
Exhibit 1010 File History of U.S. Patent No. 10,512,027
Exhibit 1011 U.S. Provisional Application No. 62/301,016 (“Agiwal ʼ016”)
Exhibit 1012 U.S. Provisional Application No. 62/334,706 (“Agiwal ʼ706”)
Exhibit 1013 U.S. Provisional Application No. 62/416,499 (“Deenoo ’499”)
Exhibit 1014 U.S. Provisional Application No. 62/334,704 (“Deenoo ’704”)
Exhibit 1015 U.S. Provisional Application No. 62/400,810 (“Deenoo ʼ810”)
Exhibit 1016 File History of U.S. Application Publication No. 2019/0174554
Exhibit 1017 U.S. Patent No. 10,200,920 (“Kubota ’920”)
Exhibit 1018 Declaration of James L. Mullins Ph.D. in Support of the Public
Availability of LTE for UMTS, Evolution to LTE-Advanced,
Harri Holma and Antti Toskala (2d Ed., 2011) and LTE – The
UMTS Long Term Evolution: From Theory to Practice,
Stefania Sesia Baker and Issam Toufik (2d ed., 2011).
Exhibit 1019 Intentionally Omitted
Exhibit 1020 Declaration of Friedhelm Rodermund in Support of the Public
Availability of R2-166120, Oct. 10-14, 2016
Exhibit 1021 R2-167461 “Report of 3GPP TSG RAN WG2 meeting”

75