22-01-19 Apple IPR Petition Against US10165601

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. IPR2022-00455

U.S. Patent No. 10,165,601
PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 10,165,601
TABLE OF CONTENTS
I. INTRODUCTION ........................................................................................ 1
II. OVERVIEW OF THE TECHNOLOGY .................................................... 1
A. TELECOMMUNICATIONS AND STANDARDS.................................................... 1
B. RANDOM ACCESS PROCEDURES ................................................................... 3
C. TIMING OF RANDOM ACCESS ....................................................................... 7
III. THE ’601 PATENT ...................................................................................... 9
A. SUMMARY OF THE ALLEGED INVENTION ...................................................... 9
B. SUMMARY OF THE PROSECUTION HISTORY .................................................12
C. PERSON OF ORDINARY SKILL IN THE ART ...................................................13
IV. OVERVIEW OF THE PRIOR ART .........................................................13
A. OVERVIEW OF THE NOKIA PROPOSAL ...........................................................13
B. OVERVIEW OF 36.300 .................................................................................15
C. OVERVIEW OF 36.321 .................................................................................17
D. OVERVIEW OF 36.331 .................................................................................18
V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER §42.104 .19
A. GROUNDS FOR STANDING ...........................................................................19
B. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ............................19
C. CLAIM CONSTRUCTION...............................................................................20
VI. SPECIFIC GROUNDS OF UNPATENTABILITY ..................................21
A. GROUND 1: CLAIMS 1–7, 9–15, 17–24, 26–32, AND 34 ARE RENDERED
OBVIOUS BY THE NOKIA PROPOSAL IN VIEW OF THE KNOWLEDGE OF A POSITA .22
B. GROUND 2: CLAIMS 1–7, 9–15, 17–24, 26–32 AND 34 ARE RENDERED
OBVIOUS BY THE NOKIA PROPOSAL IN VIEW OF 36.300, 36.321, AND 36.331 ......45
VII. DISCRETIONARY CONSIDERATIONS ................................................68
A. INSTITUTION SHOULD NOT BE DENIED UNDER §325(D) ..............................68
B. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION .................................70
VIII. CONCLUSION ..........................................................................................70
IX. MANDATORY NOTICES .........................................................................72
ii
I. INTRODUCTION
Petitioner Apple Inc. (“Apple” or “Petitioner”) requests inter partes review
(“IPR”) of claims 1–7, 9–15, 17–24, 26–32, and 34 (the “Challenged Claims”) of
U.S. Patent No. 10,165,601 (Ex. 1001, “the ’601 Patent”).
The ’601 Patent relates to non-contention-based random access procedures in
telecommunications systems. The ’601 Patent discloses the well-known steps of
non-contention random access procedure where a radio base station (such as those
found in cell towers) sends a message to a UE assigning a dedicated random access
preamble to the UE, which the UE may then transmit to the base station to initiate a
random access procedure. The purported novelty of the ’601 Patent is that the initial
message sent by the base station to the UE assigning the preamble further indicates
at least one “PRACH [physical random access channel] occurrence” during which
the assigned preamble is valid for the UE to use for random access. As demonstrated
below, signaling particular valid PRACH occurrences to the UE was also known in
the art at the time of the alleged invention, rendering the Challenged Claims obvious.
II. OVERVIEW OF THE TECHNOLOGY
A. Telecommunications and Standards
The ’601 Patent relates to random access procedures in telecommunications
systems. A brief overview of this technology is provided for context.
1
A telecommunication system such as a cellular telephone network consists of
two high-level components: user equipment (UE) and infrastructure equipment. A
UE is typically a mobile device not attached to the communications network by
wires. Examples of UEs include mobile phones and laptop computers. Kakaes Decl.,
¶35. Infrastructure equipment refers to equipment that cellular carriers (e.g., AT&T,
Verizon) use to provide services. See id., ¶36. Base stations are a type of
infrastructure equipment representing the “point of entry” of each UE into the
network—base stations wirelessly communicate with UEs and allow them to access
the network. Id. In LTE systems,1 base stations are called Evolved Nodes B (or
“eNBs”). Id.; ’601 Patent, 1:42–44.
Geographic areas are divided into “cells,” each including a base station that
provides communications services within the cell. Kakaes Decl., ¶37. A set of
industry standards governs the communication between UEs and base stations. Id.,
¶¶38–39. These standards include rules dictating how a base station allocates
resources to a UE and informs the UE of this information. Id.
As technology has progressed, different generations of standards have
stratified. Currently, fifth generation (5G) technology is being developed. The 3rd
Generation Partnerships Project (3GPP) is an international organization that
1
LTE stands for Long Term Evolution (also referred to as 4G).
2
develops Technical Specifications (TS’s)—technical documents describing specific
features of a standard. Rodermund Decl., ¶27. TS’s are written by Technical
Specification Groups (TSGs), comprising several Working Groups (WGs). Id., ¶29.
TS’s developed by the same TSG cover related technological aspects and are meant
to be read in conjunction with one another. Ex. 1003, ¶41. 36.211, 36.300, 36.321,
are TS’s that were all developed by Radio Access Network WG2 and relate to
aspects of E-UTRA and belong to Series 36 (LTE technology).2 These TS’s are used
below to describe random access procedures used in the 3GPP standard.
B. Random Access Procedures
A UE accesses a telecommunications network by communicating with a base
station servicing a cell. Id., ¶43. Because several UEs can be within a cell, the base
station must manage communications resources among these UEs. Id. A UE not
already accessing the network (e.g., a recently powered on cell phone) must first
request system access (and synchronize to the network) by initiating a “random
access procedure” using a physical random access channel (PRACH)—a shared
channel used by UEs to access the network. Id.
2
E-UTRA refers to Evolved Universal Terrestrial Radio Access, one aspect of the
LTE standard.
3
To perform a random access procedure in LTE, the UE sends the eNB a signal
called a “random access preamble” on the PRACH, as shown below:
36.211, FIG. 5.7.1-1. In LTE systems, “[t]here are 64 preambles available in each
cell.” 36.211, §5.7.2; 36.331, §6.3.2; Kakaes Decl., ¶46.
At the time of the ’601 patent, a person of ordinary skill in the art (“POSITA”)
would have known two types of random access procedures: contention-based and
non-contention-based. 36.321, §5.1; Kakaes Decl., ¶48. In contention-based
procedures, the base station is unaware that the UE requests access to the network.
The UE randomly selects a preamble from a pool of available random access
preambles (which the eNB makes known to the UEs) and transmits it to the eNB, as
shown below in red:
4
36.300, FIG. 10.1.5.1-1. Subsequently, the eNB sends a response (step 2)
acknowledging receipt of the preamble. The UE then sends the first scheduled
transmission on the uplink channel (step 3) to establish communication with the
network. This procedure risks collision: two or more UEs may attempt to transmit
the same preamble to the base station at the same time—necessitating step 4—
leading to access delays. Kakaes Decl., ¶¶50–51.
In a non-contention procedure, however, the eNB is aware that a particular
UE needs access to the network, and the eNB assigns the UE a specific preamble to
use. The assignment is shown below in red:
5
36.300, FIG. 10.1.5.2-1. After this assignment, the UE can transmit the preamble to
the eNB (step 1). The eNB sends a response (step 2) acknowledging receipt of the
preamble. In this procedure, there is no risk of collision—the preamble cannot be
selected by another UE. See Kakaes Decl., ¶¶52–53.
Of the 64 preambles available to an eNB in a cell, a subset called “dedicated”
preambles are reserved for non-contention random access. See 36.331, §6.3.2;
Kakaes Decl., ¶54. The remaining preambles are “non-dedicated” and do not get
assigned to UEs—these preambles are instead used for contention-based procedures.
See id.
In a non-contention-based random access procedure, the eNB assigns a
dedicated preamble to the UE by sending a message on the physical downlink control
channel (PDCCH). This message includes several Information Elements (IEs), each
6
conveying specific pieces of information. For instance, one such IE is
DedicatedRandomAccessParams:
36.331, §6.3.2. As shown above, this IE contains two pieces of information: an index
number identifying the assigned preamble, and the time of its expiration. See Kakaes
Decl., ¶56.
C. Timing of Random Access
In LTE systems, downlink (eNB to UE) and uplink (UE to eNB)
communications occur in time intervals based on “radio frames.” For instance, in
7
FDD LTE systems,3 each radio frame lasts 10 ms (or 0.01 seconds), and is divided
into 10 equal subframes as shown below:
36.300, FIG. 5.1-1. Further, each subframe “consists of two equally sized slots.” Id.,
§5. For instance, slots #0 and #1 comprise subframe #0. After subframe #9 of each
radio frame comes subframe #0 of the next radio frame. See Kakaes Decl., ¶58.
These subframes govern when a UE may transmit a random access preamble
to the eNB (to initiate random access). The UE may transmit a random access
preamble in a subframe only if the subframe includes an occurrence of a PRACH
resource. These PRACH occurrences are determined by the PRACH configuration
used by the eNB, as shown below:
3
FDD refers to Frequency Division Duplex and is one of two duplexing modes used
by LTE (along with TDD (Time Division Duplex)). Kakaes Decl., ¶58.
8
36.211, Table 5.7.1-2. For instance, in PRACH configuration 12, PRACH resources
occur in subframes #0, #2, #4, #6, and #8 of each frame—a UE may transmit a
random access preamble only during one of those subframes. The different PRACH
configurations allow the eNB to allocate more or fewer resources to the PRACH as
needed. See Kakaes Decl., ¶60.
III. THE ’601 PATENT
The ’601 Patent issued on December 25, 2018 and claims priority to a number
of earlier filings. For purposes of this proceeding, Petitioner has applied July 1,
2008—the earliest of the claimed priority filings—as the invention date.
A. Summary of the Alleged Invention
The ’601 specification discusses the same information described above in
Section II, which was known to a POSITA at the time of the alleged invention as
described in technical specifications related to LTE. See supra, §II; Kakaes Decl.,
9
¶64. For instance, the specification explains that UEs perform random access
procedures to request access to a network. ’601 Patent, 1:43–2:19. The specification
describes contention and non-contention random access procedures, and that “pools”
of random access preambles are allocated to each type. Id., 2:20–61. The
specification states that for non-contention procedures, the eNB sends a message to
the UE indicating the assigned preamble. Id., 9:5–8.
The specification further describes radio frames in an FDD system (citing to
36.211) and PRACH configurations indicating which subframes contain PRACH
resources. ’601 Patent, 8:46–9:21. For instance, Figure 3B shows PRACH
configuration 12, which includes PRACH occurrences in even-numbered subframes:
Id., FIG. 3B; see 36.211, Table 5.7.1-2.
10
Because much of the technology described in the specification was disclosed
in LTE specifications and known to a POSITA, the ’601 alleges a narrow point of
novelty—namely, that the eNB provides the UE with “information indicating in
which one or more PRACH occurrences[] the dedicated preamble is valid for the
UE.” ’601 Patent, 9:8–10. Using PRACH configuration 12 as an example, the ’601
specification describes information indicating that the dedicated preamble “is valid
only in subframe #2 in each radio frame,” as shown below:
Id., FIG. 3A, 9:22–26, 10:22–25 (explaining that other UEs may use the same
preamble, but only in in subframes #0, #4, #6, and/or #8).
As shown below, this alleged invention was already known in the prior art.
11
B. Summary of the Prosecution History
During prosecution, the Examiner rejected 10 pending claims as anticipated
under §102(e) in view of U.S. 2008/0310395 (“Kashima”). File History, 77. The 10
rejected claims later issued without revisions as Challenged Claims 1, 7, 9, 15, 17,
18, 24, 26, 32, and 34. Compare File History, 104–11, with ’601 Patent, cls. 1–34.
To obtain allowance of these claims without amendment, the Applicant
argued that Kashima did not disclose “information indicating in which one or more
PRACH occurrences, the dedicated preamble is valid for the UE.” Id., 60 (emphasis
in original). Referring to Figure 3A (below), the Applicant argued that “while
PRACH resources occur in subframes 0, 2, 4, 6, and 8 for configuration 12, only
occurrences for subframe 2 are valid for a particular UE”:
Id., 60–61.
12
The Applicant took issue only with the prior art’s teachings with respect to
limitations reciting “PRACH occurrence,” and did not challenge the Examiner’s
findings that the other limitations were taught by the prior art.4 See id., 59–62. As
discussed below, however, this element was known in the prior art.
C. Person of Ordinary Skill in the Art
A POSITA at the time of the ’601 Patent would have had a Master’s degree
in Electrical Engineering, Applied Mathematics, Computer Science, Physics, or an
equivalent field and three to five years of experience working with wireless digital
communication systems, including in physical layers of such systems with additional
education compensating for less experience, and vice-versa. Kakaes Decl., ¶76.
IV. OVERVIEW OF THE PRIOR ART
A. Overview of the Nokia Proposal
As explained by Mr. Rodermund, Nokia submitted the Nokia Proposal to
3GPP on October 30, 2007. Nokia Proposal, 1. The Nokia Proposal was presented
and “noted” on November 9, 2007, at the RAN Working Group 1 meeting. Ex. 1013,
8. This meeting was attended by 171 individuals. See id., 1; Ex. 1014. 3GPP made
4
The Applicant argued Kashima did not disclose “the transmitting comprises
transmitting said message on a physical downlink control channel (PDCCH),” but
only insofar as it required a showing of “at least one PRACH occurrence.” File
History, 61–62.
13
the Nokia Proposal publicly available no later than October 30, 2007. The Nokia
Proposal is therefore prior art to the ’601 Patent under Pre-AIA 35 U.S.C. §102(a).
Rodermund Decl., ¶42. The Nokia Proposal was not cited on the face of the ’601
Patent.
The Nokia Proposal describes telecommunications systems implementing
non-contention random access procedures using dedicated preambles. Nokia
Proposal, 1–2. Specifically, the Nokia Proposal discloses information that is
included when the “eNB needs to signal to the UE the identity of the dedicated
preamble.” The Nokia Proposal teaches inclusion of precisely the information that
the Applicant argued was missing from the prior art of record during prosecution.
Namely, the inclusion of information indicating at least one PRACH occurrence
during which the determined random access preamble is valid to be used by the UE
for random access.
In more detail, the Nokia Proposal notes that this information includes
“validity period,” and “PRACH resource.” Id. With respect to signaling the
“PRACH resource,” the Nokia Proposal teaches that “an index to a PRACH time
slot could be given” such that the “UE would be allowed to transmit the dedicated
preamble only in a certain PRACH time slot of each radio frame.” Id. The Nokia
Proposal teaches that this information is provided as a binary value of at most four
bits, and provided to the UE along with the preamble identity “in a DL grant on
14
PDCCH.” Id., 2. The Nokia Proposal explains that because the overall PRACH
resources are already known by the UE, it is enough to simply indicate on which
resource the UE is allowed to transmit the dedicated preamble. Id., 1.
The ’601 Patent relates to performing random access in telecommunications
systems. ’601 Patent, 1:24-28. Similarly, the Nokia Proposal is also related to
random access procedures in a telecommunications system. Nokia Proposal, 1-2.
The Nokia Proposal is therefore in the same field of endeavor as the ’601 Patent.
Decl., ¶79. The Nokia Proposal is also reasonably pertinent to a problem sought to
be solved by the ’601 Patent because both the Nokia Proposal and the ’601 Patent
are concerned with improving efficiency of non-contention-based random access
procedures. Compare Nokia Proposal, 2 (“This would very effectively increase the
capacity of the non-contention-based random access without causing essential delay
. . .”), with ’601 Patent, 10:22-25 (“The embodiments of the present invention thus
increase the availability of dedicated preambles . . .”); Decl., ¶79. The Nokia
Proposal is thus analogous art to the ’601 Patent. Decl., ¶79.
B. Overview of 36.300
36.300 was published in June 2007 and is therefore prior art to the ’601 Patent
under Pre-AIA 35 U.S.C. §102(a). 36.300 was cited on the face of the ’601 Patent,
but was not substantively discussed by the examiner.
15
36.300 is a TS that describes technical features related to the air interface of
LTE networks (“E-UTRA”). 36.300, Title. 36.300 teaches that radio frames, which
provides a framework for downlink and uplink transmissions, are each divided into
ten equal subframes, and each subframe is divided into two equal time slots, as
shown below:
Id., FIG. 5.1-1, §5.1. 36.300 explains the steps of non-contention-based random
access procedures, including that “eNB assigns to UE a…non-contention Random
Access Preamble” from the set of preambles other than those broadcasted on BCH,
and that “UE transmits the assigned non-contention Random Access Preamble.” Id.,
§10.1.5.2. These steps are illustrated below:
16
Id., FIG. 10.1.5.2-1.
Like the ’601 Patent, which is directed to performing random access in
telecommunications systems, 36.300 relates to performing random access in
telecommunications systems in the 3GPP standard. Compare id., §10.1.5, with ’601
Patent, 1:24-28. 36.300 is therefore in the same field of endeavor as the ’601 Patent
and is analogous art. Decl., ¶82.
C. Overview of 36.321
36.321 was published in March 2008 and is therefore prior art to the ’601
Patent under 35 U.S.C. §102(a). 36.321 was cited on the face of the ’601 Patent, but
was not substantively discussed by the examiner.
36.321 is a TS that describes technical features related to Medium Access
Control (MAC) within LTE networks, including random access procedures. 36.321,
§5. Specifically, 36.321 explains that random access may be initiated by a “PDCCH
order” specifying the assigned random access preamble and “PRACH resource.” Id.,
§5.1. Additionally, 36.321 teaches that where the UE is assigned a dedicated
preamble, the UE can transmit this preamble without initiating contention
procedures. See id., §5.1.2 (“If the Random Access Preamble and PRACH resource
are explicitly signalled…the UE can directly proceed to its transmission.”).
Like the ’601 Patent, which is directed to performing random access in
telecommunications systems, 36.321 relates to performing random access in
17
telecommunications systems in the 3GPP standard. Compare id., §5.1.2, with ’601
D. Overview of 36.331
36.331 was published in March 2008 and is therefore prior art to the ’601
Patent under 35 U.S.C. §102(a). 36.331 was cited on the face of the ’601 Patent, but
was not substantively discussed by the examiner.
36.331 is a TS that describes technical features related to Radio Resource
Control (RRC) within LTE networks, including parameters for random access
procedures. 36.331, §6.3.2 (“IE [information element]
DedicatedRandomAccessParams is used to specify the dedicated random access
parameters.”). As shown below, relevant parameters include ra-PreambleIndex,
which indicates the specific dedicated preamble to be assigned according to 36.321,
and ra-PreambleExpiration, which indicates the expiry time of that preamble:
18
Id. Because these parameters are within IE DedicatedRandomAccessParams, they
are signaled from the base station to the UE. See Kakaes Decl., ¶86.
Like the ’601 Patent, which relates to random access in telecommunications
systems, 36.331 relates to performing random access in telecommunications systems
in the 3GPP standard. Compare id., §6.3.2 (discussing
DedicatedRandomAccessParams and GenericRandomAccessParams), with ’601
V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER §42.104
A. Grounds for standing
Petitioner certifies that the ’601 Patent is available for IPR and that Petitioner
is not barred or estopped from requesting an IPR challenging the claims of the ’601
Patent. 37 C.F.R. §42.104(a).
B. Identification of challenge and relief requested
In view of the prior art and evidence presented, the Challenged Claims of the
’601 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).
Proposed Grounds of Unpatentability Exhibits

Ground 1: Claims 1-7, 9-15, 17-24, 26-32, 34 are obvious under
EX1008
§103 in view of “Proposed Response to RAN2 LS on Signaling for
19
DL Data Arrival (R2-074575),” 3GPP TSG RAN WG1 #51 Meeting
R1-074857 (the “Nokia Proposal”) and the knowledge of a POSITA
Ground 2: Claims 1-7, 9-15, 17-24, 26-32, 34 are obvious under EX1008
EX1009
§103 in view of the Nokia Proposal in combination with “Evolved
EX1010
Universal Terrestrial Radio Access (E-UTRA) and Evolved EX1011
Universal Terrestrial Radio Access Network (E-UTRAN); Overall
Description,” 3GPP TS 36.300, Version 8.1.0 (Release 8) (“36.300”),
“Evolved Universal Terrestrial Radio Access (E-UTRA) Medium
Access Control (MAC) Protocol Specification,” 3GPP TS 36.321,
Version 8.1.0 (Release 8) (“36.321”), and “Evolved Universal
Terrestrial Radio Access (E-UTRA) Radio Resource Control (RRC);
Protocol Specification,” 3GPP TS 36.331, Version 8.1.0 (Release 8)
(“36.331”).
Section VI identifies where each element of the Challenged Claims is found in the
prior art. 37 C.F.R. §42.104(b)(4). The exhibit numbers of the supporting evidence
relied upon to support the challenges are provided above and the relevance of the
evidence to the challenges raised are provided in Section VI. 37 C.F.R.
§42.104(b)(5). Exhibits EX1001–EX1015 are also attached.
C. Claim Construction
Terms in an IPR should be construed in accordance with the principles set
forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
§42.104(b)(3). “[W]ords of a claim ‘are generally given their ordinary and
customary meaning,’” which is “the meaning that the term would have to a person
20
of ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. No
terms need be construed to resolve the arguments presented herein.
VI. SPECIFIC GROUNDS OF UNPATENTABILITY
The Nokia Proposal teaches the purported point of novelty—indicating a
valid PRACH occurrence. As set forth below, the remaining limitations in the
Challenged Claims were well established in the art, and a POSITA would have
understood that the Nokia Proposal’s teachings were intended to modify the
established process for assigning a preamble to a UE. Accordingly, Ground 1
proposes that the Nokia Proposal in view of the knowledge of a POSITA renders
obvious the Challenged Claims. To the extent Patent Owner argues any of the
remaining limitations would not have been obvious in view of the Nokia Proposal
and the knowledge of a POSITA, Ground 2 combines the Nokia Proposal with three
TS documents that expressly describe these well understood features.
21
A. Ground 1: Claims 1–7, 9–15, 17–24, 26–32, and 34 Are Rendered
Obvious by the Nokia Proposal in view of the knowledge of a
POSITA
1. Claim 1
a) Preamble: “A method in a radio base station, of assigning

a preamble to a user equipment (UE), the method
comprising:”5
The Nokia Proposal teaches a method where the “eNB needs to signal to the
UE the identity of the dedicated preamble,” which is the assignment of a preamble
to the UE. Nokia Proposal, 1. An eNB is a radio base station in the 3GPP LTE
system. ’601 Patent, 1:42–44; §II.A., supra. The Nokia Proposal further teaches that
this signal is for “the assignment of the dedicated preamble” to the UE. Nokia
Proposal, 2.
b) [1.1]: “determining, from a set of dedicated random

access preambles, a random access preamble, to assign to
said UE; and”
The Nokia Proposal discloses the transmission (or assignment) of dedicated
preambles for “non-contention based random access.” Nokia Proposal, 1 (“The
signaling is needed in order to prepare UE for transmission of dedicated
preambles.”), 2 (“This [method] would very effectively increase the capacity of the
non-contention based random access[.]”); see also Claim 1 [preamble], supra (the
5
For the purposes of this proceeding, Petitioner does not concede that the
independent claims’ preambles are necessarily limiting.
22
Nokia Proposal teaches “assigning a preamble to a user equipment (UE)”).
Specifically, the eNB identifies the “preamble identity” and assigns a “dedicated
preamble” in a signal sent to the UE on a PDCCH. Id., 2 (“According to this analysis,
totally at most 16 bits would be signaled. Assuming that TFI = 0 would be used to
identify the assignment of the dedicated preamble, all this information could be
included in a DL grant on PDCCH.”);6 id. (further explaining that “6 bits” are used
to indicate the “[p]reamble identity”); Kakaes Decl., ¶89.
A POSITA would have understood that the assigned dedicated preamble is a
random access preamble. The Nokia Proposal discloses that the preambles are used
in non-contention based random access procedures. Nokia Proposal, 2 (“This
[method] would very effectively increase the capacity of the non-contention based
random access[.]”). As set forth in the technology overview, a POSITA would have
known that UEs in an LTE network request access to an eNB by transmitting a
random access preamble to the eNB, which is referred to in the art as performing a
random access procedure. See supra, §II.B. A POSITA would further have been
familiar with the two types of random access procedures: contention-based and non-
contention-based. Id. A POSITA would also have known that both types of random
access procedures utilize random access preambles and that non-contention-based
6
Unless otherwise noted, all emphasis is added.
23
random access procedures utilize dedicated (random access) preambles. Id. Based
on the known LTE random access procedures (e.g., discussed in §II), a POSITA
would have understood that the Nokia Proposal is in fact describing dedicated
“random access” preambles that are sent to a UE as part of a non-contention-based
random access procedure. Kakaes Decl., ¶90.
A POSITA would have understood that the Nokia Proposal's eNB determines
which preamble to assign to the UE. A POSITA would have understood that because
the eNB assigns a preamble, the eNB would have determined the preamble before
assigning that preamble to the UE. Kakaes Decl., ¶91 (explaining that a preamble
must be determined prior to being assigned). Further, a POSITA would have been
familiar with non-contention-based random access procedures and would have
known that non-contention-based random access procedures involve an eNB
determining which random access preamble should be assigned to a UE. Id.
A POSITA would have understood that the eNB determines the assigned
preamble from a set of dedicated random access preambles. A POSITA reading the
Nokia Proposal would have known that the preambles referred to by the Nokia
Proposal are the 64 available preambles as (specified by 3GPP Series 36 in 36.331)
that can be used for random access. See id.; Kakaes Decl., ¶92. A POSITA would
have known that a subset of these preambles are non-dedicated and are used in
“contention based” random access procedures. See supra, §II.B.; Kakaes Decl., ¶92.
24
The remainder are “dedicated” random access preambles for use in non-contention
random access procedures. Id. Accordingly, because the Nokia Proposal discloses
assigning dedicated preambles in non-contention-based random access procedures,
and because non-contention-based random access procedures utilize a set of
dedicated random access preambles, a POSITA would have understood that the
Nokia Proposal determines the random access preamble from a set of dedicated
random access preambles.
Consistent with this understanding, the Nokia Proposal refers to plural
“dedicated preambles,” indicating multiple dedicated preambles constituting a set of
dedicated preambles. Nokia Proposal, 1–2. The Nokia Proposal also teaches that the
eNB “signal[s] to the UE the identity of the dedicated preamble,” further indicating
that there are several dedicated preambles constituting a set and the eNB identifies
the specific dedicated preamble to the UE. Id., 1. Further, even a single dedicated
preamble would meet this limitation, because by definition a “set” can have one
item. Kakaes Decl., ¶92.
c) [1.2]: “transmitting a message to the UE, the message

comprising an identification number of said determined
random access preamble and”
The Nokia Proposal discloses that the eNB transmits a signal, which is a
message, to the UE identifying the determined random access preamble. Nokia
Proposal, 1 (“eNB needs to signal to the UE the identity of the dedicated
25
preamble.”). Furthermore, this message comprises an identification number of the
determined random access preamble. The Nokia Proposal explains that within the
“information fields” of the message transmitted to the UE, the “preamble identity”
is identified with “6 bits”— meaning that the determined random access preamble
is identified by a six-bit number. Id., 2. Because 26 = 64, any of the 64 preambles
may be assigned with 6 bits. Kakaes Decl., ¶95.
d) [1.3]: “[the message] further comprising information

indicating at least one physical random access channel
(PRACH) occurrence during which the determined
random access preamble is valid to be used by the UE for
random access.
A POSITA would have understood that the message transmitted from the eNB
to the UE includes information indicating at least one PRACH occurrence during
which the determined random access preamble is valid to be used by the UE for
random access. Kakaes Decl., ¶96. The message includes “an index to a PRACH
time slot,” which provides the claimed information. Nokia Proposal, 1–2 (“[The]
UE would be allowed to transmit the dedicated preamble only in a certain PRACH
time slot of each radio frame.”).
As explained above, the PRACH is the uplink channel used by the UE to
transmit the random access preamble to the eNB. §II.B., supra. A POSITA would
have known from 3GPP Series 36 that the UE may only transmit the random access
preamble during specific subframes of a radio frame (as indicated in 36.211). Kakaes
26
Decl., ¶97; see also supra, §II.C. A POSITA would have known that these subframes
are specified by the below PRACH configurations:
36.211, Table 5.7.1–2. A POSITA would have understood that the available
subframes (known as “PRACH resources”) depend on the above specific PRACH
configuration. Kakaes Decl., ¶97. For instance, a POSITA would have known that
PRACH configuration 12 indicates PRACH resources occur in subframe numbers
#0, #2, #4, #6, and #8—the only subframes during which the UE may transmit the
dedicated random access preamble. See ’601 Patent, 9:18–21 (“PRACH
configuration 12 defines that PRACH resources occur in subframe #0; subframe #2,
subframe #4, subframe #6 and subframe #8 of each radio frame.”); Kakaes Decl.,
¶97.
The Nokia Proposal teaches that the UE knows which PRACH configuration
is used, so “it is enough to indicate on which of these resources UE is allowed to
27
transmit the dedicated preamble.” Nokia Proposal, 1. Accordingly, the Nokia
Proposal teaches “time slots indexed over a radio frame” such that the “UE would
be allowed to transmit the dedicated preamble only in a certain PRACH time slot of
each radio frame.” Id., 1–2. In other words, these time slots indicate which of the
available subframes (PRACH occurrences) are valid for a UE to transmit its assigned
preamble. See Kakaes Decl., ¶¶98–99. The Nokia Proposal explains that eNB sends
these valid time slots to the UE in the same message identifying the preamble:
See Nokia Proposal, 2 (“[A]n index to a PRACH time slot could be given…0 to 4
bits would be needed for explicit signaling of the time access slot[.]”).
The Nokia Proposal explains that this method of specifying valid time slots
for a UE to transmit a dedicated preamble “would double the capacity because the
same preamble identity could be allocated for two UEs on overlapping validity
periods.” Nokia Proposal, 2. Moreover, “[t]his kind of capacity increase would be
important when dedicated preambles are allocated in case of HO [handover].” Id.;
Kakaes Decl., ¶100.
28
2. Claim 2: The method according to claim 1 wherein said
information indicating at least one PRACH occurrence
indicates at least one subframe during which the determined
random access, said at least one subframe being tied to a frame
structure
The Nokia Proposal renders the method of claim 1 obvious. See supra, Claim
1. The Nokia Proposal also renders claim 2 obvious in that it teaches that the base
station sends the UE information (i.e., time slots within a radio frame) indicating at
least one PRACH occurrence during which the determined random access preamble
is valid to be used by the UE for random access. See supra, Claim [1.3]. These time
slots indicate at least one subframe during which the determined random access
preamble is valid to be used by the UE for random access, where the subframe is
tied to a frame structure (i.e., the radio frame structure). See Kakaes Decl., ¶102.
A POSITA would have known that radio frames (each 10 ms) are subdivided
into 10 equal subframes, which are further divided into two time slots. Kakaes Decl.,
¶103. Thus, a POSITA would have understood that “time slots” within a radio frame
correspond to subframes of the radio frame. Id., ¶104. Indeed, the Nokia Proposal
explains that the message from the eNB to the UE identifies valid PRACH
occurrences by radio frame time slots. See Nokia Proposal, 1–2 (“The time slots
would be indexed over a radio frame, and UE would be allowed to transmit the
dedicated preamble only in a certain PRACH time slot of each radio frame.”); see
Kakaes Decl., ¶104. These time slots also indicate subframes where the preamble is
29
valid to be used. See Nokia Proposal, 2 (“[T]he subframe of signaling would directly
indicate the allocated time access slot.”).
A POSITA would have further known that the subframes of a radio frame are
tied to a frame structure—namely, the radio frame structure:
36.300, FIG. 5.1-1; see Kakaes Decl., ¶104.
3. Claim 3 The method according to claim 1 wherein said

indicates a periodicity for said at least once PRACH occurrence
during which the determined random access preamble is valid
to be used by the UE for random access
station sends the UE information (i.e., time slots) indicating at least one PRACH
occurrence during which the determined random access preamble is valid to be used
by the UE for random access. See supra, Claim [1.3].
The Nokia Proposal further teaches that this information (i.e., time slots)
indicates a periodicity for such valid PRACH occurrence(s)—namely, the radio
frame, which repeats in regular intervals. For instance, the Nokia Proposal teaches
that the “UE would be allowed to transmit the dedicated preamble only in a certain
30
PRACH time slot of each radio frame.” Nokia Proposal, 1–2. Moreover, the Nokia
Proposal teaches that “[i]n this scheme, preamble retransmissions would take place
with a separation of 10ms”—indicating that every radio frame repeats the same
pattern of valid time slots. Id., 2; Kakaes Decl., ¶107. A POSITA would have
therefore understood that the “period” of the PRACH occurrences valid to be used
by the UE is one radio frame (10 ms). Id.

comprises a field with a binary value indicative of said at least
one PRACH occurrence
station signals the UE with information (i.e., time slots) indicating the PRACH
occurrences valid for the UE to transmit the assigned random access preamble. See
supra, Claim [1.3]. The Nokia Proposal further teaches that “0 to 4 bits would be
needed for explicit signaling of the time access slot in case of FDD.” Nokia
Proposal, 2. Indeed, the Nokia Proposal teaches that the “width[] of the information
field[]” indicating the valid PRACH occurrences is “0–4 bits (depending on the
RACH slot configuration in FDD).” Id., 2. A POSITA would have understood that
this information field contains up to four bits—each a binary 0 or 1—which together
indicate the valid PRACH occurrences. See Kakaes Decl., ¶110.
31
5. Claim 5: The method according to claim 4 wherein said binary
value is expressed by a predefined number of bits
4. The Nokia Proposal also renders claim 5 obvious. As explained above, the “binary
value” indicating the valid PRACH occurrences is “0–4 bits (depending on the
RACH slot configuration in FDD).” See Nokia Proposal, 2 (“From 0 to 4 bits would
be needed for explicit signaling of the time access slot in case of FDD [frequency
division duplex].”). The Nokia Proposal explains the number of bits (0–4) is
“predefined” because the number “depend[s] on the RACH slot configuration in
FDD.” Nokia Proposal, 2. A POSITA would have understood that the Nokia
Proposal refers to the 16 configurations specified by 36.211:
36.211, Table 5.7.1-2. For instance, in PRACH configuration 12, five subframes
have PRACH occurrences, so three bits are needed (because 23 > 5). Thus, the
32
“binary value” is expressed by a pre-determined number of bits, depending on the
PRACH configuration. Kakaes Decl., ¶113.
6. Claim 6: The method according to claim 4 wherein said binary

value corresponds to a PRACH index, said PRACH index
being associated with a predefined configuration indicating at
least one PRACH occurrence during which the determined
random access.
4. The Nokia Proposal also renders claim 6 obvious. As explained above, the Nokia
Proposal teaches that the base station sends the UE information (i.e., time slots)
indicating at least one PRACH occurrence during which the determined random
access preamble is valid to be used by the UE for random access. See supra,
§VI.A.1.d. The Nokia Proposal also teaches that a binary value (i.e. “0 to 4
bits…needed for explicit signaling of the time access slot”) is used to indicate which
time slots are valid for the UE to use for random access. See supra, Claim 4.
The Nokia Proposal teaches that this binary value corresponds to a “PRACH
index,” which is associated with a predefined configuration indicating at least one
PRACH occurrence during which the determined random access preamble is valid
to be used by the UE for random access. For instance, in an FDD system, “an index
to a PRACH time slot” is signaled to the UE to “indicate on which of these [PRACH]
resources UE is allowed to transmit the dedicated preamble.” Nokia Proposal, 1.
“The time slots would be indexed over a radio frame, and UE would be allowed to
33
transmit the dedicated preamble only in a certain PRACH time slot of each radio
frame.” Id., 1–2. This PRACH index corresponds to the claimed binary value
because the binary value (0–4 bits) “explicit[ly] signal[s]” the valid time slots. Id.,
2; Kakaes Decl., ¶116. The PRACH index is associated with a predefined
configuration because, the binary value (indicating the PRACH index) depends on
the predefined PRACH configuration. Nokia Proposal, 2 (“[T]he widths of the
information fields would be…PRACH resource 0-4 bits (depending on the RACH
slot configuration in FDD).”); Claim 5, supra.
7. Claim 7: The method according to claim 1 wherein the

transmitting comprises transmitting said message on a physical
downlink control channel (PDCCH)
1. The Nokia Proposal also renders claim 7 obvious in that it explains the eNB
transmits its message to the UE over a PDCCH. Specifically, the Nokia Proposal
teaches that “signaling is needed in order to prepare UE for transmission of dedicated
preambles” and that the message “include[s] in a PDCCH format the information
that is necessary for signaling of DL [downlink] data arrival.” Nokia Proposal, 1.
Additionally, the Nokia Proposal teaches that “at most 16 bits would be signaled”
“in a DL [downlink] grant on PDCCH.” Id.; see also Kakaes Decl., ¶119.
34
8. Claim 9
a) Preamble: “A method of enabling a user equipment (UE)

to perform a random access in a telecommunications
system, the method comprising:”
The Nokia Proposal teaches a method where the “eNB needs to signal to the
UE the identity of the dedicated preamble.” Nokia Proposal, 1. The Nokia Proposal
further teaches that this “signaling is needed in order to prepare UE for transmission
of dedicated preambles” (id.), enabling the UE to perform a random access in a
telecommunications system by transmitting a dedicated preamble to the base station.
Kakaes Decl., ¶¶120–21.
Moreover, the Nokia Proposal describes a method in a telecommunications
system. The Nokia Proposal is a technical proposal submitted to 3GPP, an
organization that develops standards for mobile telecommunications. See supra,
§II.A.; Kakaes Decl., ¶122.
b) [9.1]: “receiving, a message from a radio base station, the

message comprising an identification number of a
dedicated random access preamble assigned to the UE;”
The Nokia Proposal teaches transmitting a message from a base station to the
UE that includes an identification number of an assigned random access preamble.
See supra, Claim [1.3], Claim [1.1] (explaining that the eNB determines a preamble
to assign the UE). It would have been obvious to a POSITA that because the base
station sends the message to the UE, the UE receives this message. Kakaes Decl.,
¶123.
35
c) [9.2]: “said message further comprising information
(PRACH) occurrence during which the assigned random
access preamble is valid to be used by the UE for random
access; and”
See supra, Claim [1.3], Claim [1.1] (explaining that the eNB determines a
preamble to assign the UE).
d) [9.3]: “performing a random access based on the received

identification number and based on the information
indicating said at least one PRACH occurrence.”
As explained above, the Nokia Proposal teaches that the eNB messages the
UE indicating the identification number of the assigned dedicated preamble and
information indicating at least one PRACH occurrence for which the assigned
dedicated preamble is valid. See supra Claim [1.2-1.3]; Kakaes Decl., ¶125.
The Nokia Proposal further teaches that the UE performs random access
based on this information: “signaling is needed in order to prepare UE for
transmission of dedicated preambles.” Nokia Proposal, 1 (“Therefore, the overall
PRACH resources need not be signaled but it is enough to indicate on which of these
resources UE is allowed to transmit the dedicated preamble.”). The purpose of the
Nokia Proposal is to enable the UE to transmit a dedicated random access preamble
based on the information signaled by the base station—by doing so, the UE performs
non-contention random access. See Kakaes Decl., ¶126.
36
indicates at least one subframe during which the assigned
structure
See supra, Claim 9, Claim 2.


12. Claim 1:3 The method according to claim 12 wherein said

binary value is expressed by a predefined number of bits

binary value corresponds to a PRACH index, said PRACH
index being associated with a predefined configuration
indicating of [sic] at least one PRACH occurrence during
which the assigned random access preamble is valid to be used
by the UE for random access
37
15. Claim 17
a) Preamble: “A method in a telecommunications system, of

assigning a preamble to a user equipment (UE) for
enabling said UE to perform a random access, said system
comprising a radio base station being allocated a set
forming a pool of dedicated random access preambles, the
method comprising:”
See supra, Claim 1[preamble], Claim [1.1], Claim 9[preamble].
b) [17.1]: “determining in the radio base station, a dedicated

random access preamble, of the set, to assign to the UE;”
See supra, Claim [1.1].
c) [17.2]: “receiving at the UE, a message from the radio

base station, the message comprising an identification
number of the assigned random access preamble and”
See supra, Claim [1.2], Claim [9.1].
d) [17.3] “[the message] further comprising information

indicating in which of at least one physical random access
channel (PRACH) occurrence, the assigned random
access; and”
38
e) [17.4]: “performing, by the UE, a random access based
on the received identification number of the available
random access preamble and based on the indicated
information concerning said at least one PRACH
occurrence.”
16. Claim 18
a) Preamble: “A radio base station to assign a preamble to

a user equipment (UE), the radio base station
comprising:”
See supra, Claim 1[preamble].
b) [18.1]: “a memory configured to store instructions; and a

processor configured to execute said instructions and
thereby cause the radio base station:”
As explained above, a base station is an apparatus that allows a UE (e.g., a
cellular phone) to communicate with a network. See supra, §II.A. A POSITA would
have understood that eNBs in LTE systems included memories and processors. For
example, U.S. Patent Application 2008/0051091 (“Phan”)—prior art under
§§102(a) and (e)—explains that eNBs in 4G systems include “a DP [data processor]”
and “a MEM [memory]…that stores a PROG [program.]”). Phan, [0039]. Therefore,
the Nokia Proposal’s eNB comprises the claimed memory and processor, which
would have been obvious to a POSITA. Kakaes Decl., ¶¶146–47. Therefore, a
POSITA would have recognized that the Nokia Proposal’s eNB comprises the
claimed memory and processor. Id., ¶¶146–47.
39
c) [18.2]: “to determine from a set of dedicated random
said UE; and”
d) [18.3]: “to transmit a message to the UE, the message

e) [18.4]: “[the message] further comprising information

random access.
17. Claim 19: The radio base station according to claim 18 wherein
said information indicating at least one PRACH occurrence
structure
40
said binary value is expressed by a predefined number of bits
said binary value corresponds to a PRACH index, the PRACH
indicating at least one PRACH occurrence during which the
determined random access preamble is valid to be used by the
UE for random access
said message is transmitted on a physical downlink control
channel (PDCCH)
23. Claim 26
a) Preamble: “A user equipment (UE) capable of performing

a random access in a telecommunications system, the UE
comprising:”
See supra, Claim 9[preamble].
b) [26.1]: “a memory configured to store instructions; and a

processor configured to execute the instructions causing
the UE:”
The Nokia Proposal renders this element obvious. As explained above, a UE
is a device such as a cellular phone or Wi-Fi enabled computer that can communicate
41
with a network. See supra, §II.A. A POSITA would have understood that UEs in
LTE systems included memories and processors. For example, Phan explains that
UEs in LTE systems include “a data processor (DP)” and a “memory (MEM)…that
stores a program (PROG)[.]” Phan, [0039]. Therefore, the Nokia Proposal’s UE
comprises the claimed memory and processor, which would have been obvious to a
POSITA. See Kakaes Decl, ¶¶166–68. Therefore, a POSITA would have recognized
that the Nokia Proposal’s UE comprises the claimed memory and processor. Id.,
¶166–68.
c) [26.2]: “to receive a message from a radio base station,

the message comprising an identification number of a
dedicated random access preamble assigned to the UE
and”

access; and”
e) [26.4]: “to perform a random access based on the

received identification number and based on the
information indicating said at least one PRACH
occurrence.”
42
24. Claim 27: The user equipment according to claim 26 wherein
indicates at least one subframe during which the assigned
structure


indicates [sic] comprises a field with a binary value indicative
of said at least one PRACH occurrence

said binary value is expressed by a predefined number of bits

said binary value corresponds to a PRACH index, the PRACH
indicating of [sic] at least one PRACH occurrence during
which the assigned random access preamble is valid to be used
by the UE for random access
43
said message is received on a physical downlink control
channel (PDCCH)
30. Claim 34
a) Preamble: “A telecommunications system to enable a

radio base station to assign a preamble to a user
equipment (UE) for enabling the UE to perform a random
access, said radio base station being allocated a set
forming a pool of dedicated random access preambles, the
telecommunications system comprising:”
See supra, Claim 1[preamble-1.1], Claim 9[preamble].
b) [34.1]: “the radio base station, configured to determine a

dedicated random access preamble, of the set, to assign to
the UE;”
c) [34.2]: “the UE, configured to receive a message from

said radio base station, the message comprising an
identification number of the assigned random access
preamble of the set and”
d) [34.3] “[the message] further comprising information

indicating in which of at least one physical random access
channel (PRACH) occurrence, the assigned random
access; and”
44
e) [34.4]: “the UE, configured to perform a random access
based on the identification number of the available
random access preamble and based on the indicated
information concerning said at least one PRACH
occurrence.”
B. Ground 2: Claims 1–7, 9–15, 17–24, 26–32 and 34 Are Rendered

Obvious by the Nokia Proposal in View of 36.300, 36.321, and
36.331
1. Motivation to Combine
A POSITA would have been motivated to combine the disclosures of the
Nokia Proposal, 36.300, 36.321, and 36.331, which would have involved routine
implementation with no technical difficulties given their complementary teachings.
Kakaes Decl., ¶¶191–202. This combination would have successfully achieved the
predictable benefits of providing more flexible support for wireless communication
systems. Id. Thus, this combination combines prior art elements according to known
methods to achieve predictable results, with a reasonable expectation of success. Id.
A POSITA would have understood for several reasons that the Nokia Proposal’s
teachings fit squarely atop those of 36.300, 36.321, and 36.331.
First, 36.300, 36.321, and 36.331 provide motivations to combine their
teachings with one another. Id., ¶¶192-94. These three documents are closely
related—they all belong to Series 36 (which standardizes LTE technology) and were
prepared by the same TSG (RAN) and working group (WG2), indicating that they
should be read in conjunction with one another. Id., ¶194; supra §§II.A. Further,
45
each document covers related aspects of the same technology—namely, non-
contention random access procedures and their specific versions are also of the same
release (Release 8), further indicating that they should be read together. Id., ¶193.
Indeed, 36.300 makes clear that 36.321 and 36.331 “contain provisions which,
through reference in this text, constitute provisions of the present document.” Id.,
¶194; 36.300, §2. Relevant provisions of 36.331 expressly refer to 36.321, as shown
below:
36.331, §6.3.2. Thus, a POSITA would have understood that 36.300, 36.321, and
36.331 are more than compatible—in light of their common origin, overlapping
subject matter, and explicit cross-references, they should be read in conjunction to
inform one another’s teachings. See Kakaes Decl., ¶192–94.
Second, a POSITA would have read the Nokia Proposal together with 36.300,
36.321, and 36.331. Id., ¶¶195-98. The Nokia Proposal was submitted to TSG RAN,
which developed 36.300, 36.321, and 36.331 (Nokia Proposal, 1), and was presented
at the November 9, 2007 TSG RAN meeting where several additional Series 36 TS’s
46
were discussed. See Ex. 1013. Moreover, the Nokia Proposal discusses specific
technical features found in 36.300, 36.321, and 36.331 including “eNB,” “UE,”
“dedicated preambles,” “PRACH resources,” “time slots,” “radio frame,” “non-
contention based random access,” “assignment of the dedicated preamble,” “DL
grant on PDCCH,” and “signaling of the dedicated preamble allocation.” Compare
Nokia Proposal, 1–2 with e.g., 36.300, §10.1.5; 36.321, §5.1; 36.331, §6.3.2,
§5.3.1.3. Accordingly, a POSITA would have understood that the Nokia Proposal
discusses the same specific technological features presented in 36.300, 36.321, and
36.331, and would have been motivated to combine their teachings. Kakaes Decl.,
¶¶195–98.
A POSITA would have had a reasonable expectation of success in combining
these references. As noted, the Nokia Proposal and 36.300, 36.321, and 36.331 each
discuss the same specific technological features relating to the same standard
(3GPP). Thus, the combination would have been straightforward and would not have
required undue experimentation. Id., ¶¶199-202. Indeed, a POSITA would have
understood that the Nokia Proposal’s teachings build on those of 36.300, 36.321,
and 36.331, further indicating that these references would work in conjunction. Id.
47
2. Claim 1
a) Preamble: “A method in a radio base station, of assigning

a preamble to a user equipment (UE), the method
comprising:”
The Nokia Proposal in view of 36.300, 36.321, and 36.331 renders the
preamble obvious.
The Nokia Proposal discusses types of information included when the “eNB
needs to signal to the UE the identity of the dedicated preamble” in order to improve
non-contention-based random access. Nokia Proposal, 1-2; see also Ground 1,
Claim 1[preamble] (discussing teachings of the Nokia Proposal). Accordingly, a
POSITA would have been motivated to look to documents describing non-
contention-based random access in the 3GPP LTE system when implementing the
teachings of the Nokia Proposal, including 36.300, 36.321. Kakaes Decl., ¶203; see
also supra §VI.B.1 (discussing motivations to combine).
36.300 discloses a base station assigning a preamble to a UE. Specifically,
36.300 describes a “non-contention based random access procedure” where “eNB
assigns to UE a … non-contention Random Access Preamble.” 36.300, §10.1.5.2.
This assignment of the determined dedicated preamble is shown below in red:
48
36.300, FIG. 10.1.5.2-1; see also 36.321, §5.1.2 (explaining that the UE can “directly
proceed to its transmission” of the preamble if the “Random Access Preamble and
PRACH resource are explicitly signalled” by the eNB); 36.331, §6.3.2 (describing
the Information Elements sent by the eNB to the UE specifying the dedicated random
access preamble); Kakaes Decl., ¶¶204–05.
Accordingly, because the Nokia Proposal relates to signaling to the UE the
identity of the dedicated preamble, a POSITA would have understood that the Nokia
Proposal relates to non-contention-based random access in the 3GPP system.
Kakaes Decl., ¶203; see also Nokia Proposal, 2 (discussing improvements to non-
contention-based random access). And because, as taught by 36.300, 36.321, and
36.331, non-contention-based random access procedures in the 3GPP system are a
method including the assignment of a preamble to a UE, the Nokia Proposal in view
of 36.300, 36.321, and 36.331 renders the preamble obvious.
49
b) [1.1]: “determining, from a set of dedicated random
said UE; and”
The Nokia Proposal in view of 36.300, 36.321, and 36.331 render this
limitation obvious.
The teachings of the Nokia Proposal are discussed in detail above. See supra,
Ground 1, Claim [1.1]. As noted, the Nokia Proposal discusses types of information
preamble” in order to improve non-contention-based random access. Nokia
Proposal, 1-2; see also Ground 1, Claim [1.1] (discussing teachings of the Nokia
Proposal). Accordingly, a POSITA would have been motivated to look to
documents describing non-contention-based random access in the 3GPP LTE system
when implementing the teachings of the Nokia Proposal, including 36.300, 36.321.
Kakaes Decl., ¶207; see also supra §VI.B.1. (discussing motivations to combine).
36.331 discloses 64 random access preambles used in both non-contention
and contention-based procedures:
50
36.331, §6.3.2 (annotated).
Id.; see also 36.211, §5.7.2 (“There are 64 preambles available in each cell.”). As
shown above, numberOfRA-Preambles—an integer between 1 and 64—indicates the
number of non-dedicated random access preambles. See id. The remainder are
dedicated random access preambles. See 36.331, §5.3.1.3 (describing “allocating
dedicated preambles for the random access in the target cell”); Kakaes Decl., ¶209.
For example, if numberOfRA-Preambles is 50, 14 preambles form the set of
dedicated random access preambles. Id. 36.331 teaches that, from this set, one
dedicated random access preamble is “explicitly signalled” as described in 36.321.
36.331, §6.3.2. ra-PreambleIndex, an integer between 1 and 64, identifies this
preamble. Id.; see Kakaes Decl., ¶210. Accordingly, a POSITA would have
understood that the 3GPP standard utilizes a dedicated set of random access
preambles.
51
36.321 teaches that the eNB selects a dedicated random access preamble from
a set of dedicated random access preambles. 36.321 explains that “the set of
available Random Access Preambles in each group” are known before a random
access procedure begins and that some of the available preambles are for explicit
signaling. 36.321, §§5.1.1, 5.1.2 (“If the Random Access Preamble and PRACH
resource are explicitly signalled…the UE can directly proceed to its transmission [of
the Random Access Preamble].”); see Kakaes Decl., ¶211. Accordingly, a POSITA
would have understood that the 3GPP standard determines a dedicated random
access preamble from a set of dedicated random access preambles.
36.300 teaches that the UE accesses a target cell by a contention-free (i.e.,
non-contention-based) procedures using dedicated resources. 36.300, §10.1.2.1. In
a non-contention-based procedure, the “eNB assigns to UE a…non-contention
Random Access Preamble (a Random Access Preamble not within the set
broadcasted on BCH [Broadcast Channel]).” 36.300, §10.1.5.2. A POSITA would
have understood that preambles not broadcasted on BCH comprise the “set of
dedicated random access preambles.” Kakaes Decl., ¶212; 36.300. Thus, 36.300
teaches that in non-contention-based random access procedures, the dedicated
preamble assigned to a UE is determined from a set of dedicated preambles.
Accordingly, because the Nokia Proposal relates to non-contention-based
random access, and because 36.300, 36.321, and 36.331 teach non-contention-based
52
random access involves determining a random access preamble to assign the UE
from a set of dedicated random access preambles, a POSITA would have understood
the Nokia Proposal in view of 36.300, 36.321, and 36.331 renders obvious this
limitation. Kakaes Decl., ¶213.
c) [1.2]: “transmitting a message to the UE, the message

The Nokia Proposal in view of 36.300, 36.321, and 36.331 render this
limitation obvious.
Ground 1, Claim [1.2]. The Nokia Proposal discusses types of information included
when the “eNB needs to signal to the UE the identity of the dedicated preamble” in
order to improve non-contention based random access. Nokia Proposal, 1-2; see also
Ground 1, Claim [1.2] (discussing teachings of the Nokia Proposal). The Nokia
Proposal discloses that the signal, which is a message, by the eNB to the UE,
includes an identification number identifying the determined random access
preamble (i.e., 6-bit number included within the information fields of the message).
Nokia Proposal, 1; see also Ground 1, Claim [1.2], supra. Accordingly, a POSITA
would have been motivated to look to documents describing non-contention-based
random access in the 3GPP LTE system when implementing the teachings of the
53
Nokia Proposal, including 36.300, 36.321. Kakaes Decl., ¶214; see also supra
§VI.B.1. (discussing motivations to combine).
36.300 teaches that during non-contention-based random access, the base
station transmits a message to the UE “via dedicated signaling in DL” that comprises
the “Random Access Preamble assignment.” 36.300, §10.1.5.2.
36.331 teaches that this message specifies the value ra-Preamble Index, which
is an identification number of the determined random access preamble assigned to
the UE. 36.331, §6.1.2. Indeed, ra-PreambleIndex is part of IE
DedicatedRandomAccessParams. Id. IEs are “information elements” included in the
message sent from the base station to the UE. See Kakaes Decl., ¶216.
random access, and 36.300 and 36.331 teach non-contention-based random access
involves transmitting a message to the UE that includes an identification number of
said determined random access preamble, a POSITA would have understood the
Nokia Proposal in view of 36.300 and 36.331 renders obvious this limitation. Id. at
¶217.
54
random access.
The Nokia Proposal renders obvious the inclusion of information indicating
at least one physical random access channel (PRACH) occurrence during which the
determined random access preamble is valid to be used by the UE for random access.
See supra, Ground 1, Claim [1.3]. The teachings of 36.321 and 36.331 further
support and are compatible with the Nokia Proposal’s teachings as described below.
36.321 describes Random Access Resource selection performed by the UE.
36.321, §5.1.2; Kakaes Decl., ¶219. Specifically, 36.321 teaches that the base station
signals to the UE at least three things: (1) the identity of the assigned dedicated
random access preamble, (2) the PRACH resource, and (3) the Random Access
Preamble expiration time. See 36.321, §5.1.2 (“If the Random Access Preamble and
PRACH resource are explicitly signalled and its expiration time was configured and
has not expired…the UE can directly proceed to its transmission.”). A POSITA
would have understood that the explicitly signalled PRACH resource discussed in
36.321 refers to the PRACH configuration, which includes the subframe number(s)
(as well as the frame number(s)) in which random access is allowed for a specific
configuration. Kakaes Decl., ¶219. In some cases, signalling a single PRACH
configuration effectively identifies a single subframe that the UE may use. For
55
example, configuration 1 indicates PRACH resources occur only in subframe
number 4. Id. (discussing 36.211, Table 5.7.1–2). But other PRACH configurations
permit PRACH resources on many different subframes. Id. (noting that
configuration 12 illustrated in 36.211, Table 5.7.1–2 permits PRACH resources on
five different subframes).
Rather than indicate an entire PRACH configuration that may cover multiple
different subframes, as in 36.321, the Nokia Proposal identifies a specific resource
the UE may use for random access. Namely, information indicating at least one
physical random access channel (PRACH) occurrence is transmitted, rather than the
overall PRACH resource. Kakaes Decl., ¶219; Nokia Proposal, 1 (“We assume that
UE knows the RACH parameters that are included in System Information.
Therefore, the overall PRACH resources need not be signaled but it is enough to
indicate on which of these resources UE is allowed to transmit the dedicated
preamble”).
A POSITA would have understood that this modification is a straightforward
supplement to the process described in 36.321. Kakaes Decl., ¶219. Indeed, some
PRACH configurations signalled in the 36.321 process indicate only a single
PRACH resource while others indicate multiple PRACH resources. Id. The Nokia
Proposal’s inclusion of the single PRACH resource, rather than the overall PRACH
configuration (which may include multiple specific PRACH resources), simplifies
56
the overall process by “telling” the UE which PRACH to use—making all PRACH
resource assignments analogous to the simpler examples supported by 36.321 and
thereby “increase[ing] the capacity of the non-contention based random access
without causing essential delay.” Id. (discussing Ex. 1008, 2).
36.331 also teaches that the dedicated preamble assigned to the UE is invalid
past the signaled expiry time. 36.331, §6.3.2 (“Expiry time of the explicitly signalled
Random Access Preamble.”); Kakaes Decl., ¶220. Thus, a POSITA would have
understood that eNB’s typically included an expiry time when signaling the
assignment of a preamble to a UE. Id.
Accordingly, in light of the teachings of 36.321 and 36.331, a POSITA would
have understood that Nokia Proposal’s eNB sends the UE the valid PRACH
occurrences and information indicating which of those PRACH occurrences are
valid for random access—namely, PRACH resources occurring before the expiry
time. Id.
A POSITA would have been motivated to combine the Nokia Proposal,
36.300 and 36.331 and would have had a reasonable expectation of success in
making the proposed combination for the reasons discussed above. §VI.B.1., supra.
Further, the Nokia Proposal provides an express reason to combine these
references. The Nokia Proposal suggests that the “UE would be allowed to transmit
the dedicated preamble only in a certain PRACH time slot of each radio frame.”
57
Nokia Proposal, 1–2. The Nokia Proposal explains that “[t]his would very
effectively increase the capacity of the non-contention based random access without
causing essential delay” and “would double the capacity because the same preamble
identity could be allocated for two UEs on overlapping validity periods.” Id., 2
(“This kind of capacity increase would be important when dedicated preambles are
allocated in case of HO [handover].” Id. Accordingly, a POSITA would have been
motivated to combine these references to double the number of UEs that can perform
non-contention random access with the same number of dedicated preambles, and
reduce access delays and collisions. See Kakaes Decl., ¶¶198–99. For the same
reasons, applying the teachings of the Nokia Proposal to 36.300, 36.321, and 36.331
represents applying a known technique and/or known prior art elements (limiting
valid time slots for a UE to transmit an assigned preamble) to a known method ready
for improvement (non-contention random access) to yield the predictable result of
doubling the capacity of non-contention random access. See id., ¶¶200–02.
A POSITA would have had a reasonable expectation of success in combining
these references. Id., ¶202. The Nokia Proposal discloses specific benefits of its
method, including doubling the capacity of non-contention random access
procedures within the cell. Id.
58
structure
The method of claim 1 is obvious in view of the Nokia Proposal, 36.300,
36.321, and 36.331. See supra, Ground 1, Claim 1, VI.B.1.
The Nokia Proposal in view of 36.300 renders the limitation obvious. As
explained above, the Nokia Proposal teaches that the eNB indicates to the UE
specific time slots within a radio frame indicating at least one PRACH occurrence
during which the dedicated preamble is valid to be used by the UE for random
access. Nokia Proposal, 1–2. As discussed above, a POSITA would have been
familiar with the division of radio frames and subframes and also known that the
subframes of a radio frame are tied to a frame structure. Ground 1, Claim 2, supra.
36.300 discusses the division of radio frames and subframes and teaches that
the subframes of a radio frame are tied to a frame structure. Specifically, 36.300
teaches that each 10 ms radio frame consists of ten 1 ms subframes, and each
subframe consists of two “equally sized slots.” 36.300, §5. This frame structure is
shown below in Figure 5-1:
59
Id., FIG. 5.1-1. Each of these time slots indicates at least one subframe. For instance,
slots #0 and #1 indicate the first subframe, slots #2 and #3 indicate the second
subframe, etc. See id.; Kakaes Decl., ¶224. As shown above, these subframes are
tied to a frame structure, namely, the 10 ms radio frame structure in an FDD system.
Id.
A POSITA would have been motivated to combine the teachings of 36.300
and the Nokia Proposal for the reasons discussed above. §§VI.B.1, Ground 2, Claim
[1.3].
4. Claim 3
See supra, Ground 1, Claim 3; Ground 2, Claim 1.
5. Claim 4
6. Claim 5
7. Claim 6

The method of claim 1 is obvious in view of the Nokia Proposal, 36.300,
36.321, and 36.331. See supra, VI.B.1; Ground 2, Claim 1.
60
This element is obvious in view of the Nokia Proposal. See supra, Ground 1,
Claim 7. Further, 36.321 teaches that random access may be “initiated” by a
“PDCCH order” which includes “[a] Random Access Preamble and PRACH
resource.” 36.321, §5.1.1. In view of this disclosure and the Nokia Proposal, a
POSITA would have understood that this “PDCCH order,” which includes the
information recited in claims 1 and 7, is a message transmitted on a PDCCH. Kakaes
Decl., ¶236. A POSITA would have been motivated to combine the teachings of
36.321 and the Nokia Proposal for the reasons discussed above. §VI.B.1, supra.
9. Claim 9
a) Preamble: “A method of enabling a user equipment (UE)

to perform a random access in a telecommunications
system, the method comprising:”
See supra, Ground 1, Claim 9[preamble]; Ground 2, Claim 1[preamble].
b) [9.1]: “receiving, a message from a radio base station, the

message comprising an identification number of a
dedicated random access preamble assigned to the UE;”
See supra, Ground 1, Claim [1.2], Claim [9.1]; Ground 2, Claim [1.2].
c) [9.2]: “said message further comprising information

access; and”
See supra, Ground 1, Claim [9.2]; Ground 2, Claim [1.3].
61
d) [9.3]: “performing a random access based on the received
identification number and based on the information
indicating said at least one PRACH occurrence.”
The teachings of the Nokia Proposal in view of 36.300 and 36.321 render this
limitation obvious.
Ground 1, Claim [1.1]. As noted, the Nokia Proposal discusses types of information
preamble” in order to improve non-contention-based random access. Nokia
Proposal, 1-2. Accordingly, a POSITA would have been motivated to look to
documents describing non-contention-based random access in the 3GPP LTE system
when implementing the teachings of the Nokia Proposal, including 36.300, 36.321.
Kakaes Decl., ¶241; see also supra §VI.B.1, VI.B.2.d (discussing motivations to
combine).
36.300 teaches that following the assignment of the random access preamble
to the UE by the eNB, the next step is the transmission of the assigned non-
contention random access preamble to the eNB by the UE. 36.300, §10.1.5.2. This
transmission is shown below in red:
62
36.300, FIG. 10.1.5.2-1. A POSITA would have understood that the transmission of
the preamble to the eNB is the performance of a non-contention-based random
access procedure. Kakaes Decl., ¶242.
36.321 teaches that “[i]f the Random Access Preamble and PRACH resource
are explicitly signaled and its expiration time was configured and has not expired,”
then “the UE can directly proceed to its transmission.” 36.321, §5.1.2. A POSITA
would have understood that this step corresponds to non-contention-based random
access. Kakaes Decl., ¶243. Accordingly, 36.321 teaches that non-contention-based
random access is performed based on the received identification number (i.e., the
identified random access preamble) and on the PRACH resource—both of which are
signaled from the eNB to the UE. Indeed, 36.321 further teaches that the selected
PRACH resource and preamble index are transmitted. §5.1.3.
A POSITA would have understood that in light of the Nokia Proposal, which
teaches transmitting information indicating at least one PRACH occurrence (See
supra, Ground 1, Claim [1.2]; Ground 2, Claim [1.2]), this step would be performed
63
based on this information rather than the overall PRACH resources. Kakaes Decl.,
¶243; Nokia Proposal, 1 (“We assume that UE knows the RACH parameters that are
included in System Information. Therefore, the overall PRACH resources need not
be signaled but it is enough to indicate on which of these resources UE is allowed to
transmit the dedicated preamble.”). A POSITA would have understood that the
explicitly signalled information taught by 36.321 refers to the PRACH
configuration, which includes the subframe numbers in which random access is
allowed for a specific configuration. Id. Thus, a POSITA would have understood
that in some instances a single PRACH resource is signalled already. Id.
Accordingly, the Nokia Proposal’s inclusion of the PRACH resource is compatible
with 36.321. Id.
random access, and because 36.300 and 36.321 teach non-contention-based random
access involves performing random access based on the received signal from the
eNB, a POSITA would have understood that the Nokia Proposal in view of 36.300
and 36.321 renders this limitation obvious.
10. Claim 10
See supra, Ground 1, Claims 9 and 2; Ground 2, Claims 9 and 2.
11. Claim 11
See supra, Ground 1, Claims 9 and 3; Ground 2, Claim 9.
64
12. Claim 12
13. Claim 13
14. Claim 14
15. Claim 15
16. Claim 17
a) Claim 17 Preamble
See supra, Ground 1, Claim 17[preamble]; Ground 2, Claims 1[preamble],
[1.1], and 9 [preamble].
b) Claim [17.1]
c) Claim [17.2]
d) Claim [17.3]
e) Claim [17.4]
65
17. Claim 18
b) Claim [18.1]
See supra, Ground 1, Claim [18.1].
c) Claim [18.2]
d) Claim [18.3]
e) Claim [18.4]
See supra, Ground 1, Claims [1.1], [1.3]; Ground 2, Claims [1.1], [1.3].
18. Claim 19
19. Claim 20
20. Claim 21
21. Claim 22
22. Claim 23
66
23. Claim 24
24. Claim 26
b) Claim [26.1]
See supra, Ground 1, Claim [23.1].
c) Claim [26.2]
d) Claim [26.3]
e) Claim [26.4]
25. Claim 27
26. Claim 28
27. Claim 29
28. Claim 30
67
29. Claim 31
30. Claim 32
31. Claim 34
b) Claim [34.1]
c) Claim [34.2]
d) Claim [34.3]
e) Claim [34.4]
VII. DISCRETIONARY CONSIDERATIONS
A. Institution Should Not Be Denied Under §325(d)
Under the Advanced Bionics framework applying the Becton-Dickinson
factors, the Board first considers whether the same or substantially the same prior
art or arguments were previously presented to the office. Advanced Bionics,
68
IPR2019-01469, Paper 6, 8. The first condition of the Advanced Bionics framework
is not satisfied and discretionary denial under §325(d) is not appropriate.
Petitioner presents two combinations of four different prior art references in
this Petition: the Nokia Proposal, 36.300, 36.321, and 36.331. The Nokia Proposal
was not cited on the face of the ’601 Patent or considered by the examiner. Thus, no
prior art in Ground 1 was cited or considered. With regard to Ground 2, although
36.300, 36.321, and 36.331 were cited on the face of the ’601 Patent, they were not
cited or substantively discussed by the examiner during prosecution. Further, these
references are not used to teach the point of novelty of the ’601 Patent.
The Board has found that where presented prior art references include
references that were not before the examiner in combination with a reference that
was not substantively considered by an examiner, such combinations are not the
same or substantially the same art or arguments previously presented to the Office.
Group III International, Inc. v. Targus Group International, Inc., IPR2021-00371,
No. 21 at 33 (P.T.A.B. Jul. 9, 2021); see also Intel Corporation v. Koninklijke Philips
N.V., IPR2021-00370, No. 10 at 9 (P.T.A.B. Jul. 6, 2021) (finding that the first
condition of Advanced Bionics was not satisfied where a single reference had been
cited on the face of the Challenged Patent while the other references were not before
the examiner and declining to consider the material error condition of Advanced
Bionics).
69
B. The General Plastic Factors Favor Institution
The General Plastic factors (extended in Valve) weigh against denying
institution under § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
IPR2016-01357, Paper 19 at 15-19 (September 6, 2017) (precedential).
Samsung previously challenged the ‘601 Patent in IPR2021-00459
(“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 ’601 Patent, and Apple has no relationship with Samsung, the first
five factors weigh against denial. Unified Patents, Inc. v. Certified Measurement,
LLC, IPR2018-00548, Paper No. 7 at 7-8 (Sep. 5, 2018); Valve Corp. v. Elec.
Scripting Prod., Inc., IPR2019-00062, Paper No. 11 at 2, 9-10, 12-13 (Apr. 2, 2019).
As to the sixth factor, the instant petition largely repurposes the Samsung IPR, which
respects the Board’s finite resources and allows it to complete any analysis it started
with the Samsung IPR. Regarding the seventh factor, there is no readily identifiable
roadblock for the Board to issue a final determination within the statutory one-year
limit.
VIII. CONCLUSION
Petitioner requests institution of an IPR and cancellation of the Challenged
Claims.
70
Respectfully submitted,
BY: /s/ Adam P. Seitz

Adam P. Seitz, Reg. No. 52,206
Paul R. Hart, Reg. No. 59,646
Jennifer C. Bailey, Reg. No. 52,583
COUNSEL FOR PETITIONER
71
IX. MANDATORY NOTICES
A. Real Party-In-Interest
Petitioner identifies the following real party-in-interest: Apple Inc.
B. Related Matters
Pursuant to 37 C.F.R. §42.8(b)(2), the ’601 Patent was challenged in the
following proceeding, now terminated:
• Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson,
IPR2021-00459 (P.T.A.B. Jan. 22, 2021)
C. Lead and Back-Up Counsel
Lead Counsel Back-Up Counsel

Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
Adam.Seitz@eriseip.com Paul.Hart@eriseip.com
PTAB@eriseip.com
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, CO 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)

Jennifer.Bailey@eriseip.com
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
72
D. 37 C.F.R. §42.8(b)(4): Service Information
Apple concurrently submits a Power of Attorney, 37 C.F.R. §42.10(b), and
consents to electronic service directed to the counsel email addresses listed above
and PTAB@eriseip.com.
73
CLAIMS LISTING APPENDIX
U.S. Patent No. 10,165,601, Claims 1–7, 9–15, 17–24, 26–32, and 34
Claim Claim Language

Designation
Claim 1 1. A method in a radio base station, of assigning a preamble to a
Preamble user equipment (UE), the method comprising:
Claim 1.1 determining, from a set of dedicated random access preambles, a
random access preamble, to assign to said UE; and
Claim 1.2 transmitting a message to the UE, the message comprising an
identification number of said determined random access preamble
and
Claim 1.3 further comprising information indicating at least one physical
random access channel (PRACH) occurrence during which the
determined random access preamble is valid to be used by the UE
for random access.
Claim 2 2. The method according to claim 1 wherein said information
indicating at least one PRACH occurrence indicates at least one
subframe during which the determined random access preamble is
valid to be used by the UE for random access, said at least one
subframe being tied to a frame structure.
indicating at least one PRACH occurrence indicates a periodicity
for said at least one PRACH occurrence during which the
for random access.
indicating at least one PRACH occurrence comprises a field with a
binary value indicative of said at least one PRACH occurrence.
Claim 5 5. The method according to claim 4 wherein said binary value is
expressed by a predefined number of bits.
Claim 6 6. The method according to claim 4 wherein said binary value
corresponds to a PRACH index, said PRACH index being
associated with a predefined configuration indicating at least one
PRACH occurrence during which the determined random access
preamble is valid to be used by the UE for random access.
1
Claim 7 7. The method according to claim 1 wherein the transmitting
comprises transmitting said message on a physical downlink control
channel (PDCCH).
Claim 9 9. A method of enabling a user equipment (UE) to perform a
Preamble random access in a telecommunications system, the method
comprising:
Claim 9.1 receiving a message from a radio base station, the message
comprising an identification number of a dedicated random access
preamble assigned to the UE;
Claim 9.2 said message further comprising information indicating at least one
physical random access channel (PRACH) occurrence during
which the assigned random access preamble is valid to be used by
the UE for random access; and
Claim 9.3 performing a random access based on the received identification
number and based on the information indicating said at least one
PRACH occurrence.
indicating at least one PRACH occurrence indicates at least one
subframe during which the assigned random access preamble is
valid to be used by the UE for random access, said at least one
subframe being tied to a frame structure.
indicating at least one PRACH occurrence indicates a periodicity
for said at least one PRACH occurrence during which the assigned
access preamble is valid to be used by the UE for random access.
indicating at least one PRACH occurrence comprises a field with a
binary value indicative of said at least one PRACH occurrence.
Claim 13 13. The method according to claim 12 wherein said binary value is
expressed by a predefined number of bits.
Claim 14 14. The method according to claim 12 wherein said binary value
corresponds to a PRACH index, said PRACH index being
associated with a predefined configuration indicating of at least one
PRACH occurrence during which the assigned random access
Claim 15 15. The method according to claim 9 wherein the receiving
comprises receiving said message on a physical downlink control
channel (PDCCH).
2
Claim 17 17. A method in a telecommunications system, of assigning a
Preamble preamble to a user equipment (UE) for enabling said UE to perform
a random access, said system comprising a radio base station being
allocated a set forming a pool of dedicated random access
preambles, the method comprising:
Claim 17.1 determining in the radio base station, a dedicated random access
preamble, of the set, to assign to the UE;
Claim 17.2 receiving at the UE, a message from the radio base station, the
message comprising an identification number of the assigned
random access preamble and
Claim 17.3 further comprising information indicating in which of at least one
physical random access channel (PRACH) occurrence, the assigned
random access preamble is valid to be used by the UE for random
access; and
Claim 17.4 performing, by the UE, a random access based on the received
identification number of the available random access preamble and
based on the indicated information concerning said at least one
PRACH occurrence.
Claim 18 18. A radio base station to assign a preamble to a user equipment
Preamble (UE), the radio base station comprising:
Claim 18.1 a memory configured to store instructions; and
Claim 18.2 a processor configured to execute said instructions and thereby
cause the radio base station:
Claim 18.3 to determine, from a set of dedicated ransom access preambles, a
random access preamble, to assign to said UE; and
Claim 18.4 to transmit a message to the UE, the message comprising an
identification number of said determined random access preamble
and
Claim 18.5 further comprising information indicating at least one physical
random access channel (PRACH) occurrence during which the
for random access.
Claim 19 19. The radio base station according to claim 18 wherein said
information indicating at least one PRACH occurrence indicates at
least one subframe during which the determined random access
preamble is valid to be used by the UE for random access, said at
least one subframe being tied to a frame structure.
information indicating at least one PRACH occurrence indicates a
3
periodicity for said at least one PRACH occurrence during which
the determined random access preamble is valid to be used by the
UE for random access.
information indicating at least one PRACH occurrence comprises a
field with a binary value indicative of said at least one PRACH
occurrence.
binary value is expressed by a predefined number of bits.
binary value corresponds to a PRACH index, the PRACH index
being associated with a predefined configuration indicating at least
one PRACH occurrence during which the determined random
access preamble is valid to be used by the UE for random access.
message is transmitted on a physical downlink control channel
(PDCCH).
Claim 26 26. A user equipment (UE) capable of performing a random access
Preamble in a telecommunications system, the UE comprising:
Claim 26.1 a memory configured to store instructions; and
Claim 26.2 a processor configured to execute the instructions causing the UE:
Claim 26.3 to receive a message from a radio base station, the message
comprising an identification number of a dedicated random access
preamble assigned to the UE and further comprising information
indicating at least one physical random access channel (PRACH)
occurrence during which the assigned random access preamble is
valid to be used by the UE for random access; and
Claim 26.4 to perform a random access based on the received identification
number and based on the information indicating said at least one
PRACH occurrence.
Claim 27 27. The user equipment according to claim 26 wherein said
information indicating at least one PRACH occurrence indicates at
least one subframe during which the assigned random access
preamble is valid to be used by the UE for random access, said at
least one subframe being tied to a frame structure.
information indicating at least one PRACH occurrence indicates a
periodicity for said at least one PRACH occurrence during which
4
the assigned access preamble is valid to be used by the UE for
random access.
information indicating at least one PRACH occurrence indicates
comprises a field with a binary value indicative of said at least one
PRACH occurrence.
Claim 30 30. The user equipment according to claim 29 wherein said binary
value is expressed by a predefined number of bits.
Claim 31 31. The user equipment according to claim 29 wherein said binary
value corresponds to a PRACH index, the PRACH index being
associated with a predefined configuration indicating of at least one
PRACH occurrence during which the assigned random access
message is received on a physical downlink control channel
(PDCCH).
Claim 34 34. A telecommunications system to enable a radio base station to
Preamble assign a preamble to a user equipment (UE) for enabling the UE to
perform a random access, said radio base station being allocated a
set forming a pool of dedicated random access preambles, the
telecommunications system comprising:
Claim 34.1 the radio base station, configured to determine a dedicated random
access preamble, of the set, to assign to the UE;
Claim 34.2 the UE, configured to receive a message from said radio base
station, the message comprising an identification number of the
assigned random access preamble of the set and
Claim 34.3 further comprising information indicating in which of at least one
physical random access channel (PRACH) occurrence, the assigned
random access preamble is valid to be used by the UE for random
access; and
Claim 34.4 the UE, configured to perform a random access based on the
identification number of the available assigned dedicated random
access preamble and based on the indicated information concerning
said at least one PRACH occurrence.
5
APPENDIX OF EXHIBITS
Exhibit Description
No.
1001 U.S. Patent No. 10,165,601
1002 File History of U.S. Patent No. 10,165,601
1003 Declaration of Dr. Apostolos (Paul) K. Kakaes in Support of Inter
Partes Review of U.S. Patent No. 10,165,601
1004 Curriculum Vitae of Dr. Apostolos (Paul) K. Kakaes
1005 Declaration of Friedhelm Rodermund in Support of Inter Partes Review
of U.S. Patent No. 10,165,601
1006 Curriculum Vitae of Friedhelm Rodermund
1007 U.S. Provisional Patent Application No. 61/077,295
1008 3GPP TSG RAN WG1 #51 Meeting R1-074857, Proposed Response to
RAN2 LS on Signaling for DL Data Arrival (R2-074575), (“Nokia
Proposal”)
1009 3GPP TS 36.300, Evolved Universal Terrestrial Radio Access
(EUTRA) and Evolved Universal Terrestrial Radio Access Network
(EUTRAN); Overall Description, Version 8.1.0 (Release 8)
(EUTRA) Medium Access Control (MAC) Protocol Specification,
Version 8.1.0 (Release 8)
(EUTRA) Radio Resource Control (RRC); Protocol Specification,
Version 8.1.0 (Release 8)
(EUTRA) Physical Channels and Modulation, Version 8.1.0 (Release
8)
1013 Draft Report of 3GPP TSG RAN WG1 #51 v1.0.0 (Jeju, South Korea,
5 – 9 November, 2007)
1014 3GPP TSG RAN WG1 #51 List of Attendees
1015 U.S. Patent Application No. 2008/0051091 (“Phan”)
6
CERTIFICATION OF COMPLIANCE
This Petition complies with the type-volume limitations as mandated in 37
C.F.R. §42.24, totaling 13,374 words. Counsel has relied upon the word count
feature provided by Microsoft Word.

7
CERTIFICATE OF SERVICE ON PATENT OWNER
UNDER 37 C.F.R. §42.105
The undersigned hereby certifies that a copy of the foregoing document with
accompanying Exhibits 1001—1015 was served on January 19, 2022, via overnight
delivery, upon agreement under 37 CFR §42.105, directed to the attorney of record
for the patent as identified on USPTO PAIR and associated with USPTO Customer
No. 113648 at the following address:
Patent Portfolio Builders, PLLC

754 Warrenton Road
Suite 113-314
Fredericksburg VA 22406


22-01-19 Apple IPR Petition Against US10165601

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Inter Partes Review Case No. IPR2022-00455

PETITION FOR INTER PARTES REVIEW

Petitioner Apple Inc. (“Apple” or “Petitioner”) requests inter partes review

U.S. Patent No. 10,165,601 (Ex. 1001, “the ’601 Patent”).

The ’601 Patent relates to non-contention-based random access procedures in

telecommunications systems. The ’601 Patent discloses the well-known steps of

found in cell towers) sends a message to a UE assigning a dedicated random access

II. OVERVIEW OF THE TECHNOLOGY

A. Telecommunications and Standards

The ’601 Patent relates to random access procedures in telecommunications

systems. A brief overview of this technology is provided for context.

two high-level components: user equipment (UE) and infrastructure equipment. A

UE is typically a mobile device not attached to the communications network by

infrastructure equipment representing the “point of entry” of each UE into the

“eNBs”). Id.; ’601 Patent, 1:42–44.

resources to a UE and informs the UE of this information. Id.

As technology has progressed, different generations of standards have

Generation Partnerships Project (3GPP) is an international organization that

features of a standard. Rodermund Decl., ¶27. TS’s are written by Technical

below to describe random access procedures used in the 3GPP standard.

B. Random Access Procedures

A UE accesses a telecommunications network by communicating with a base

request system access (and synchronize to the network) by initiating a “random

access procedure” using a physical random access channel (PRACH)—a shared

channel used by UEs to access the network. Id.

called a “random access preamble” on the PRACH, as shown below:

cell.” 36.211, §5.7.2; 36.331, §6.3.2; Kakaes Decl., ¶46.

non-contention-based. 36.321, §5.1; Kakaes Decl., ¶48. In contention-based

The UE randomly selects a preamble from a pool of available random access

shown below in red:

transmission on the uplink channel (step 3) to establish communication with the

leading to access delays. Kakaes Decl., ¶¶50–51.

In a non-contention procedure, however, the eNB is aware that a particular

use. The assignment is shown below in red:

preamble. In this procedure, there is no risk of collision—the preamble cannot be

selected by another UE. See Kakaes Decl., ¶¶52–53.

Of the 64 preambles available to an eNB in a cell, a subset called “dedicated”

assigned to UEs—these preambles are instead used for contention-based procedures.

In a non-contention-based random access procedure, the eNB assigns a

dedicated preamble to the UE by sending a message on the physical downlink control

C. Timing of Random Access

In LTE systems, downlink (eNB to UE) and uplink (UE to eNB)

communications occur in time intervals based on “radio frames.” For instance, in

into 10 equal subframes as shown below:

These subframes govern when a UE may transmit a random access preamble

preamble in a subframe only if the subframe includes an occurrence of a PRACH

resource. These PRACH occurrences are determined by the PRACH configuration

used by the eNB, as shown below:

needed. See Kakaes Decl., ¶60.

III. THE ’601 PATENT

2008—the earliest of the claimed priority filings—as the invention date.

A. Summary of the Alleged Invention

The ’601 specification discusses the same information described above in

procedures to request access to a network. ’601 Patent, 1:43–2:19. The specification

the UE indicating the assigned preamble. Id., 9:5–8.

The specification further describes radio frames in an FDD system (citing to

36.211) and PRACH configurations indicating which subframes contain PRACH

resources. ’601 Patent, 8:46–9:21. For instance, Figure 3B shows PRACH

configuration 12, which includes PRACH occurrences in even-numbered subframes:

Id., FIG. 3B; see 36.211, Table 5.7.1-2.

novelty—namely, that the eNB provides the UE with “information indicating in

only in subframe #2 in each radio frame,” as shown below: