22-01-19 Apple IPR Petition Against US8798658

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. IPR2022-00459

U.S. Patent No. 8,798,658
PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 8,798,658
IPR2022-00459
TABLE OF CONTENTS
I. INTRODUCTION ..........................................................................................1
II. SUMMARY OF THE ’658 PATENT ............................................................1
A. STATE OF THE ART AND THE ’658 PATENT’S ALLEGED INVENTION .............1
B. THE ’658 PATENT’S PROSECUTION..............................................................4
C. A PERSON OF ORDINARY SKILL IN THE ART ................................................5
III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ..........................6
A. STANDING UNDER 37 C.F.R. § 42.104(A) ...................................................6
B. CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED .........6
C. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ..........................7
IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE .........................8
A. GROUND 1: CLAIMS 1-5, 12-16, 22, 26, AND 30 WOULD HAVE BEEN
OBVIOUS UNDER PRE-AIA 35 U.S.C. § 103 OVER ZHOU IN VIEW OF THE
KNOWLEDGE OF A POSITA ........................................................................8
1. OVERVIEW OF ZHOU ..............................................................................8
B. GROUND 2: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
OBVIOUS BY ZHOU IN VIEW OF WU ...........................................................40
1. OVERVIEW OF WU ...............................................................................40
A) WU IS ENTITLED TO A PRIORITY DATE BASED ON THE WU
PROVISIONAL ..................................................................................44
B) WU HAS AT LEAST ONE CLAIM TO AN INVENTION THAT IS
SUPPORTED BY THE DISCLOSURE OF THE WU PROVISIONAL .........47
C. GROUND 3: CLAIMS 1-5, 12-16, 22-24, 26-28, AND 30 ARE RENDERED
OBVIOUS BY WU .......................................................................................62
V. DISCRETIONARY FACTORS ..................................................................75
A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION ..............................75
VI. CONCLUSION .............................................................................................76
VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................77
A. REAL PARTY-IN-INTEREST ........................................................................77
B. RELATED MATTERS...................................................................................77
C. LEAD AND BACK-UP COUNSEL .................................................................77
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I. INTRODUCTION
Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
of claims 1-5, 12-16, 22-24, 26-28, and 30 (the “Challenged Claims”) of U.S. Patent
No. 8,798,658 (“the ’658 Patent”) (Ex. 1001).
II. SUMMARY OF THE ’658 PATENT
A. State of the Art and the ’658 Patent’s Alleged Invention
The ’658 patent is directed to methods and apparatuses for network-based
control of report messages in a wireless communications network, such as a Long
Term Evolution (“LTE”) network. Ex. 1001, 1:63-65, Ex. 1003, ¶42. As
background, an LTE network generally consists of User Equipment (“UE”) and
infrastructure equipment. Ex. 1003, ¶43; Ex. 1001, 1:23-26. A UE will typically be
a wireless device such as a mobile, handset, cell phone, laptop, tablet, or the like.
Ex. 1003, ¶43; Ex. 1001, 1:26-32. Infrastructure equipment refers to equipment such
as a base station (“BS”). Ex. 1003, ¶43; Ex. 1001, 1:33-37. Depending on the
particular implementation, a BS may be referred to by different terminology,
including for example, “Base Transceiver Station (BTS),” “NodeB,” “eNodeB,” or
the like. Ex. 1003, ¶43; Ex. 1005, 1:33-37. A BS typically covers a geographical
area, called a “cell,” within a radio access network (“RAN”), and communicates
wirelessly over the air with the UEs within the cell. Ex. 1003, ¶44; Ex. 1001, 1:33-
38.
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To ensure that a wireless communications network performs optimally, the
network may collect certain information that the UE measures to assess radio
coverage. Ex. 1003, ¶45; Ex. 1008, 28. Traditionally, these measurements were
performed by network operator technicians using “drive test[ing].” Ex. 1003, ¶45;
Ex. 1008, 28; Ex. 1009 § 5.1; Ex. 1012. Drive tests, however, were costly, and could
be replaced by the measurement and reporting of this information by a UE, thereby
reducing or eliminating the need to deploy network technicians for drive tests. Ex.
1003, ¶48; see Ex. 1008, 28; Ex. 1009, § 5.1; Ex. 1012. When a UE takes
measurements, it may either be in a connected state (i.e., connected to a BS), or in
an idle state, in which it is not connected to a BS. Ex. 1003, ¶51; see Ex. 1008, 30-
33. When the UE is in an idle state, the UE logs the data for later transmission to the
BS. Ex. 1003, ¶51; Ex. 1008, 28, 30-33. When the UE subsequently connects to a
BS, it transmits a communication indicating that it has available logged
measurements for the BS. Ex. 1003, ¶51; Ex. 1008, 30-33. The BS then decides
whether to request the logged measurements from the UE. Ex. 1003, ¶51; Ex. 1008,
30-33. In response to a request from the BS, the UE may transmit a report message
comprising the logged measurements. Ex. 1003, ¶51; Ex. 1008, 30-33.
The ’658 Patent addresses a purported problem arising when the quantity of
logged data cannot fit within a single Radio Resource Control (“RRC”) message,
which is a message sent from a user equipment (“UE”) to the base station (“BS”)
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providing its measurements. Ex. 1001, 2:49-3:18. The patent proposes a purported
solution of segmenting the data when the logged measurements exceed the
maximum size of the report message and including an indication in the report
message from the UE of additional logged measurements that remain in the UE
buffer. Id., 7:10-17. The BS receives the indication of whether additional logged data
exists in the UE buffer and then decides whether and when to request the additional
logged data, depending on current conditions (e.g., interference level experienced in
a cell, radio condition measurements experienced in a cell; available radio resource
network node capacity, UE buffer state condition, etc.). Id., 7:31-42. This way, the
BS is allowed “to decide a timing of transmission of the logged measurements and
timing of when more logged measurements should be requested.” Id., 7:24-28.
Figure 3 illustrates this allegedly inventive method:
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Ex. 1001, Fig. 3.
B. The ’658 Patent’s Prosecution
The ’658 Patent was filed as Application No. 13/001,687 on October 14, 2011.
Ex. 1002, 272. The application claims priority to PCT Application No.
PCT/SE2010/051355, filed December 9, 2010, and U.S. Provisional Patent No.
61/389,581, filed on October 4, 2010. Id. For purposes of this petition and without
waiving its right to challenge priority in this or any other proceeding, Petitioner
adopts October 4, 2010, as the invention date for the Challenged Claims.
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As originally filed, the application included the same thirty (30) claims as the
issued ’658 Patent. Ex. 1002, 22-26 (listing Claims 1-30 of national phase entry),
41-48 (listing preliminary amendments to Claims 1-30); Ex. 1003, ¶58. The
Examiner did not reject any of the claims of the application and issued a Notice of
Allowance on March 24, 2014. Ex. 1002, 288. The Examiner identified the use of
an indicator of additional logged measurements not yet transmitted by the UE, and
the BS deciding whether to request the additional logged measurements, as the
purported point of novelty of each independent claim. Id., 289-90. The ’658 Patent
issued on August 5, 2014. Ex. 1001, Cover. However, as discussed in Section IV
below, its alleged point of novelty was known and obvious.
C. A Person of Ordinary Skill in the Art
As explained by Dr. Valenti, a person of ordinary skill in the art (“POSITA”)
at the time of the alleged invention would have had a Master’s degree in Electrical
Engineering, Computer Science, Physics, Applied Mathematics, or equivalent and
three to five years of experience working with wireless digital communication
systems and cellular networks, including working with LTE or its predecessor
UMTS. Ex. 1003, ¶35. That person might be working on developing a standard or
on implementing it. Id. Additional education might compensate for less experience,
and vice-versa. Id.
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III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
A. Standing Under 37 C.F.R. § 42.104(A)
Petitioner certifies that the ’658 Patent is available for IPR and that Petitioner
is not barred or estopped from requesting IPR challenging the claims of the ’658
Patent. Specifically, (1) Petitioner is not the owner of the ’658 patent; (2) Petitioner
(or any real party-in-interest) has not filed a civil action challenging the validity of
any claim of the ’658 patent; (3) Petitioner has not been served with a complaint
alleging infringement of the ’658 Patent; (4) estoppel provisions of 35 U.S.C. §
315(e)(1) do not prohibit this IPR; and (5) this Petition is filed after the ’658 Patent
was granted.
B. Challenge Under 37 C.F.R. § 42.104(B) and Relief Requested
In view of the prior art and evidence presented, claims 1-5, 12-16, 22-24, 26-
28, and 30 of the ’658 Patent are unpatentable and should be cancelled. 37 C.F.R.
§ 42.104(b)(1). Further, based on the prior art references identified below, IPR of
the Challenged Claims should be granted. 37 C.F.R. § 42.104(b)(2).
Proposed Ground of Unpatentability Exhibits

Ground 1: Claims 1-5, 12-16, 22, 26, and 30 are obvious under Ex. 1005
pre-AIA 35 U.S.C. § 103 in view of Zhou
Ground 2: Claims 1-5, 12-16, 22-24, 26-28, and 30 are obvious Ex. 1005,
under pre-AIA 35 U.S.C § 103 in view of Zhou and Wu Ex. 1006
Ground 3: Claims 1-5, 12-16, 22-24, 26-28, and 30 are obvious Ex. 1006
under pre-AIA 35 U.S.C § 103 in view of Wu
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Section IV identifies where each element of the Challenged Claims is found
in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the evidence relied
upon to support the challenges are provided above and the relevance of the evidence
to the challenges raised is provided in Section IV. 37 C.F.R. § 42.104(b)(5). Exhibits
1001-1012 are also attached.
C. Claim Construction Under 37 C.F.R. § 42.104(B)(3)
In this proceeding, claims are interpreted under the same standard applied by
Article III courts (i.e., the Phillips standard). See 37 C.F.R § 42.100(b); see also 83
Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
meaning which is the meaning understood by a person of ordinary skill in the art in
view of the patent and file history. Phillips, 415 F.3d at 1312–13. Petitioner submits
that the Board does not need to construe any terms to resolve the arguments
presented herein. Realtime Data v. Iancu, 912 F. 3d 1368, 1375 (Fed. Cir. 2019)
(“The Board is required to construe only those terms ... that are in controversy, and
only to the extent necessary to resolve the controversy.”) (internal quotes omitted).
However, Petitioner notes multiple instances of a misspelling or typographical
error in the ’658 Patent. Specifically, the claims and specification repeatedly refer to
“existents” of additional logged measurements rather than “existence.” See Ex.
1001, 4:23-24, 5:63, 6:64-65, 8:12, 12:41-42, 13:26-27, 14:48, Fig. 4. For purposes
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of this petition, Petitioner understands “existents” to mean “existence.” To the extent
Patent Owner contends that “existents” does not mean “existence,” Petitioner
respectfully requests an opportunity to address Patent Owner’s contentions to the
contrary.
Additionally, Petitioner notes several instances of corrected specification and
claim language in the ’658 Patent. Ex. 1001, 15. The following corrections were
made to the Challenged Claims, which Petitioner has applied herein:
Issued ’658 Patent Claim Corrected ’658 Patent Claim

Claim Citation
Language Language (emphasis added)
Ex. 1001,
1 “Method in a network node” “A method in a network node”
12:26
“Method in a User “A method in a User Ex. 1001,
22
Equipment” Equipment” 14:6
IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
A. Ground 1: Claims 1-5, 12-16, 22, 26, and 30 would have been
obvious under pre-AIA 35 U.S.C. § 103 over Zhou in View of the
Knowledge of a POSITA
1. Overview of Zhou
International Patent Application WO2011/160274 to Weihua Zhou, et al.
(“Zhou”) (Ex. 1005) was filed on June 21, 2010, designating the United States, and
was published under the Patent Cooperation Treaty in the English language. Ex.
1005, Cover. Zhou is prior art to the ’658 Patent under 35 U.S.C. § 102(e) (pre-AIA).
Zhou was not cited or considered during prosecution of the ’658 Patent. Ex. 1001,
Cover.
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Zhou explains that there are two approaches to MDT reporting. Id., 25. First,
immediate MDT reporting means that a UE needs to report MDT measurements
immediately to a BS after they have been taken. Id., 8:25-29. Second, in logged
MDT reporting, a UE in an idle mode will take some MDT measurements and report
them to the network when the UE reconnects, and will include an indicator in the
reporting message if additional measurements exist. Id., 8:31-34. Zhou further
elaborates in Figure 6:
Id., Fig. 6. As described in Figure 6, an idle UE makes the required MDT
measurements (steps A1 and A2). Id. Once the UE goes into active mode, e.g., it
connects back to the network (step A4), it sends a message to the BS indicating that
measurement data is available (step A4). Id. The BS then sends a request to the UE
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for the logged measurements (step A5). Id. The UE then determines if all of the
logged measurements can be transmitted to the base station in one reporting
message, or whether there will remaining measurements after the reporting message
is sent (step A6). Id. If there will be remaining measurements, the UE will send a
reporting message to the BS with less than all of the logged measurements, along
with an indication to the BS that additional measurements are available (step A8).
Id. Then the BS can decide whether to request the additional information (step A5).
See also id., 16:11-15 (“[I]f the UE determines that there are some remaining logged
MDT measurements, some of the logged measurements are sent to the base station
along with the availability indicator which will indicate that there are still logged
MDT measurements.”).
Figure 4 of Zhou depicts a similar method:
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Id., Fig. 4. As depicted in Figure 4, the BS (denoted “eNB”) sends a
UEInformationRequest message to the UE (i.e., step T2), which responds with a
UEInformationResponse message including a list of logged MDT measurements and
an availability indicator that there are further logged MDT reports which have not
yet been sent (i.e., step T3). Id., 13:28-31 (“Step T3 is the same as step S3, but this
time the availability indicator indicates that the [sic] there are further logged MDT
reports which have yet to be sent.”), Fig. 3. If the indicator is positive, the BS may
send a UEInformationRequest message requesting the further logged MDT reports
which have not yet to be sent (i.e., step T4). Id., Fig. 4. On the other hand, if the
indicator is negative (i.e., step T5), the BS does not send a UEInformationRequest
message to the UE. Id.
Because Zhou, like the ’658 Patent, discloses a method of reporting logged
MDT measurement data in a 3rd Generation Partnership Project (“3GPP”) long term
evolution (“LTE”) wireless network, Zhou is in the same field of endeavor as the
’658 Patent. Compare Zhou (Ex. 1005), 2:8-27 (describing 3GPP LTE network
standardization), 8:17-23, (describing automatic, UE collection of MDT
measurements), 11:7-35, 12:2-13:5 (describing logged MDT reporting to a network
base station shown in Fig. 3), with ’658 Patent (Ex. 1001), 1:63-2:44 (describing
3GPP LTE network operating parameters and standardization of MDT logged
measurement reporting).
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Further, since both Zhou and the ’658 Patent indicate whether additional MDT
measurement logs exist for transmission in subsequent messages, Zhou is reasonably
pertinent to the problem faced by the inventor of the ’658 Patent. Compare Zhou
(Ex. 1005), Abstract (describing a method causing a response to be sent from the
user equipment to said network with only some of said measurement information
and information indicating that further measurement information is available); 16:1-
15 (describing Fig. 6, steps A6-A8, where the UE determines whether logged MDT
measurements remain and sending an “availability indicator” to “indicate that there
are still logged MDT measurements”), with ’658 Patent (Ex. 1001), Abstract
(describing how a UE “indicates to a network node . . . that additional logged
measurements exist at the UE buffer” when a UE “sends only a portion of the logged
measurements that fit[] into a single report message.”).
Zhou is therefore analogous art to the ’658 Patent. Ex. 1003, ¶60.
i. Claim 1
1[P] A method in a network node for network based control of report messages in
a wireless communications network, the network node being configured to serve
a user equipment, UE, and to receive report messages from the UE, the method
comprising:
To the extent this preamble is limiting, Zhou teaches it to a POSITA. See Ex.
1005, 2:29-3:3; see also id., Figs. 4, 6; Ex. 1003, ¶78. As discussed above, Zhou
teaches an MDT scheme by which a BS controls UEs connected to it to provide
report messages at the request of the BS. Ex. 1003, ¶78.
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Referring to Figure 4, Zhou discloses that “[i]n step S2, the base station 12 is
arranged to send a message to the UE requesting the logged MDT measurements.”
Ex. 1005, 11:17-18; see also id., 13:27-28 (“Steps T1 and T2 are the same as steps
S1 and S2[.]”). Zhou further discloses that “the UE is arranged to provide a
response with a list of logged MDT measurements” to the network, which requires
the network to be configured to receive the report message from the UE. Id., 11:22-
23; see also id., 13:28-29 (“Step T3 is the same as step S3,” except as indicated).
A POSITA would have understood and found it obvious that the response is a report
message, which Zhou calls an RRC message because it reports information to the
network. See Ex. 1005, 11:7-8 (“The MDT measurement reporting may share the
Signaling Radio Bearers SRB2 with one or more other RRC messages.”); Ex. 1003,
¶79.
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Ex. 1005, Fig. 4.
And, referring to Figure 6, Zhou further discloses that “the base station sends
a request for [] logged measurements” to the UE. Id., 15:30-32. In response, “if the
UE determines that there are some remaining logged MDT measurements, some of
the logged MDT measurements are sent to the base station,” which requires the BS
to be configured to receive the report message from the UE. Id., 16:11-13.
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Id., Fig. 6.
1[a] sending a request to the UE to start transmitting logged measurements in a

report message;
Zhou teaches this limitation to a POSITA. See Ex. 1005, 15:30-32; see also
id., 11:17-18 (“In step S2, the base station 12 is arranged to send a message to the
UE requesting the logged MDT measurements.”), Fig. 4; Ex. 1003, ¶82. Referring
to Figure 6, Zhou teaches that after the UE sends an availability indicator to the BS
indicating that the UE has logged measurements data, “the base station sends a
request for the logged measurement data,” which the UE provides in a RRC report
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message. Ex. 1005, 15:25-32. A POSITA would have understood and found it
obvious that a RRC message is a report message because it reports the MDT data.
See id., 11:7-8 (“The MDT measurement reporting may share the Signaling Radio
Bearers SRB2 with one or more other RRC messages.”); Ex. 1003, ¶83.
Ex. 1005, Fig. 6.
Referring to Figure 4, Zhou further teaches that “[i]n step S2, the base station
12 is arranged to send a message to the UE requesting the logged MDT
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measurements.” Id., 11:17-18; see also id., 13:27-28 (“Steps Tl and T2 are the same
as steps S1 and S2[.]”).
Id., Fig. 4.
1[b] receiving the report message comprising logged measurements;
Referring to Figure 4, Zhou discloses that “the UE is arranged to provide a
response with a list of logged MDT measurements,” which is a report message. Id.,
11:22-23; see also id., 13:28-29 (“Step T3 is the same as step S3,” except as
indicated). And, as illustrated in Figure 4, the UE transmits the logged MDT
measurements to the BS. Ex. 1003, ¶86.
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Ex. 1005, Fig. 4.
Referring to Figure 6, Zhou further discloses that “if the UE determines that
there are some remaining logged MDT measurements, some of the logged MDT
measurements are sent to the base station,” which receives the measurements. Id.,
16:11-13. Zhou additionally discloses that the BS receives the logged MDT
measurements in a RRC message. See Ex. 1005, 11:7-8 (“The MDT measurement
reporting may share the Signaling Radio Bearers SRB2 with one or more other RRC
messages.”).
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Id., Fig. 6. A POSITA would have recognized the base station must receive the
logged measurements to determine whether to request additional logged MDT
measurements on the basis of the availability indicator contained within that
message. Ex. 1003, ¶87 (explaining that the base station determines whether to
request additional MDT measurements on the basis of the availability indicator
contained within the message received from the UE).
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1[c] determining if the received report message comprises an indicator of
additional logged measurements not yet transmitted; and if so,
Zhou teaches this limitation to a POSITA. See id., 13:28-31; Ex. 1003, ¶88.
Zhou teaches that “[s]tep T3 is the same as step S3, but this time the availability
indicator indicates that [] there are further logged MDT reports which have yet to be
sent.” Ex. 1005, 13:28-31; see also id., 11:22-25 (“In step S3, the UE is arranged to
provide a response with a list of logged MDT measurements, and, in one
embodiment, the availability indicator is provided with a value indicating that there
are no logged measurements still to retrieve.”). The indicator may be positive (e.g.,
“Yes”) or negative (e.g., “No”). See id., Fig. 4. As illustrated in Figure 4, after the
BS receives the indicator in step T3 that there is additional logged measurement data
to retrieve, the BS sends a request to the UE for the additional logged measurement
data.
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Id., Fig. 4.
A POSITA would have understood and found it obvious that before sending
a request to the UE for additional logged measurement data based on the presence
of the indicator, the BS first determines whether the received report messages
contains an indicator (e.g., a “Yes”) of additional logged measurements not yet
transmitted before sending a request for those additional measurements. Ex. 1003,
¶88. Thus, this limitation would have been obvious to a POSITA.
1[d] deciding if the additional logged measurements are to be requested.
A POSITA would have understood that before a BS requests additional logged
information, it must decide to do so. Ex. 1003, ¶89. Additionally, Zhou discloses
that a BS may not initiate logged MDT measurement reporting under certain
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circumstances. Ex. 1005, 12:7-16. When “the network is busy, the network may not
initiate logged MDT measurements reporting before the UE goes into the idle mode
again.” Id., 12:9-11. Zhou’s disclosure is consistent with the disclosure of the
“deciding” step in the ’658 patent, which explains that the BS “may be configured
to decide if the additional logged measurements need to be requested based on one
or more of the following: interference level experienced in a cell; radio condition
measurements experienced in a cell; available radio resource; network node
capacity; UE buffer state condition etc.” Ex. 1001, 6:21-27. That a network is busy
can be reflected in the “available radio resource” and the “network node capacity.”
Ex. 1003, ¶90. A POSITA would have understood that because the BS may not
initiate reporting of logged MDT measurements when the “network is busy” (i.e.,
the BS decides whether to request MDT reports depending on how busy the network
is), the BS must decide whether to request additional logged measurements
depending on the “available radio resource” and the “network node capacity.” Id.,
¶9l.
Additionally, referring to Figure 4, Zhou discloses that if the BS receives a
response message indicating that there are further logged MDT reports that have not
yet been sent, the BS requests those logged MDT reports from the UE. Ex. 1005,
13:28-34. On the other hand, if the BS receives a response message indicating that
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there are no such further logged MDT reports, the BS does not request them from
the UE. See id., 14:1-3, Fig. 4.
Id., Fig. 4.
A POSITA would have understood and found it obvious that the BS decides
if the additional logged measurements are to be requested based on whether the
indicator indicates that further logged MDT reports exist but have not yet been sent
(e.g., whether a “yes” indicator has been received). Ex. 1003, ¶93. In this manner,
Zhou renders obvious deciding if the additional logged measurements are to be
requested. Id.
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ii. Claim 2
The method according to claim 1, wherein the method comprises receiving, from
the UE, an indication of existents of logged measurements that are available.
Zhou teaches a method in Claim 1, supra.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 13:28-31; 16:11-15;
Ex. 1003, ¶95. Zhou discloses that “[s]tep T3 is the same as step S3, but this time
the availability indicator indicates that [] there are further logged MDT reports which
have yet to be sent.” Ex. 1005, 13:28-31; see also id., 11:22-25 (“In step S3, the UE
is arranged to provide a response with a list of logged MDT measurements, and, in
one embodiment, the availability indicator is provided with a value indicating that
there are no logged measurements still to retrieve.”). The indicator may be positive
(e.g., “Yes”), indicating that there are further logged MDT reports which have not
yet been sent, or negative (e.g., “No”) if no such additional reports exist. See id., Fig.
4. As illustrated in Figure 4, the BS receives an indicator of the existence of logged
measurements that are available. Ex. 1003, ¶96.
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Ex. 1005, Fig. 4.
measurements are sent to the base station along with the availability indicator which
will indicate that there are still logged MDT measurements,” which the base station
receives and then responds accordingly upon. Id., 16:11-15. Ex. 1003, ¶97.
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Ex. 1005, Fig. 6.
iii. Claim 3
The method according to claim 1, wherein the logged measurements comprises

one or more of the following: measurement time stamps for each performed
measurement; UE buffer state condition; positioning information of UE;
periodically measured downlink pilot signal strength; serving cell conditions;
transmit power headroom conditions; paging channel failure(s); and broadcast
channel failure(s).
Zhou teaches this limitation to a POSITA. See Ex. 1005, 9:4-8; Ex. 1003, ¶99.
Zhou discloses that the MDT measurements “may be of any suitable parameter such
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as signal strength of the respective cell as received at the UE. The signal strength
of a reference signal, for example a pilot signal, may be measured.” Id. (emphasis
added). The signal strength of the respective cells indicates an aspect of the serving
cell conditions, and the signal strength of a pilot reference signal corresponds to the
downlink pilot signal strength. Ex. 1003, ¶99. A POSITA would have understood
and found it obvious that this pilot is also a downlink pilot signal, because the UE
receives it over the downlink channel from the BS. Id. Zhou also teaches that MDT
measurements may be taken periodically. Ex. 1005, 10:4-5 (“Measurement interval
- this may be the frequency at which periodic measurement are made.”); Ex. 1003,
¶99.
iv. Claim 4
The method according to claim 1, wherein the report message is received directly
from the UE or via another network node.
Zhou teaches this limitation to a POSITA. See Ex. 1005, 13:22-25, 16:5-15;
Ex. 1003, ¶101. Referring to Figure 4, Zhou discloses that “the UE is arranged to
provide a response with a list of logged MDT measurements” as an RRC message,
which a POSITA would have understood is a report message. Ex. 1005, 11:22-23;
see also id., 13:28-29 (“Step T3 is the same as step S3,” except as indicated). And
as illustrated in Figure 4, the UE transmits the logged MDT measurements to the B5,
which receives the report message.
27
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Id., Fig. 4.
measurements are sent to the base station,” which receives those measurements. Id.,
16:11-13.
28
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Id., Fig. 6.
v. Claim 5
The method according to claim 1, wherein the deciding is based on one or more
of the following: interference level experienced in a cell; radio condition
capacity; UE buffer state condition etc.
Zhou teaches this limitation to a POSITA. Ex. 1003, ¶104. Zhou discloses that
a BS may not initiate reporting of logged MDT measurements under certain
circumstances. Ex. 1005, 7-16. When “the network is busy, the network may not
29
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initiate logged MDT measurements reporting before the UE goes into the idle mode
again.” Id., 12:9-11. That a network is busy can be reflected in the claimed “available
radio resource” and the “network node capacity.” Zhou’s teaching that the BS may
not initiate reporting of logged MDT measurements when the “network is busy” (i.e.,
the BS decides whether to request MDT reports depending on how busy the network
is) discloses the ’658 Patent’s limitation of deciding whether to request additional
logged measurements depending on the “available radio resource” and the “network
node capacity.” Ex. 1003, ¶104. Further, a POSITA would have understood and
found it obvious that when the BS decides whether to initiate reporting of logged
MDT measurements based on that the “network is busy,” the BS is deciding whether
to request additional logged measurements based on the “available radio resource”
and/or the “network node capacity.” Ex. 1003, ¶106.
vi. Claim 12
See Claim 1[P]-[d], supra.
vii. Claim 13
The network node according to claim 12, wherein the network node
communications interface is configured to receive, from the UE, an indication of
an existents of logged measurements that are available.
See Claims 1 and 2, supra.
30
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viii. Claim 14
The network node according to claim 12, wherein the logged measurements
comprises one or more of the following: measurement time stamps for each
performed measurement; UE buffer state condition; positioning information of
UE; periodically measured downlink pilot signal strength; serving cell conditions;
transmit power headroom conditions; paging channel failure(s); maximum
required memory supported by UE; and broadcast channel failure(s).
See Claims 1 and 3, supra.
ix. Claim 15
The network node according to claim 12, wherein the network node
communications interface is configured to request the report message directly
from the UE or from another network node.
See limitations 1[P], 1[a], and Claim 4, supra.
x. Claim 16
The network node according to claim 12, wherein the network node processor
circuit is configured to decide if the additional logged measurements need to be
requested based on one or more of the following: interference level experienced
in a cell; radio condition measurements experienced in a cell; available radio
resource; network node capacity; UE buffer state condition etc.
See Claims 1 and Claim 5, supra.
xi. Claim 22
22[P] A method in a User Equipment, UE, for assisting in network based control
of report messages in a wireless communications network, the UE being in
connection with a serving network node and configured to transmit report
messages to the network node upon request, and wherein the UE is configured to
periodically perform radio condition measurements and store the periodically
performed measurements in a UE buffer as logged measurements, the method
comprising:
To the extent that this preamble is limiting, Zhou teaches it in Claim 1[P],
supra. In particular, Zhou discloses two approaches to MDT reporting by a UE:
31
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immediate MDT reporting and logged MDT reporting. Ex. 1005, 8:25-31
(“Currently, in 3GPP two MDT reporting approaches have been agreed and
accepted.”). In immediate MDT reporting, the “UE needs to report MDT
measurements immediately to a base station right after MDT measurement has been
made.” Id., 8:26-29. In logged MDT reporting, on the other hand, “a UE in idle mode
will make some MDT measurement results,” store them as logged measurements in
a UE buffer, and “report these measurements to the network when the UE connects
again to the network.” Id., 8:31-34; see id., 10:15-17 (“When the UE becomes active,
after being in the idle mode, the UE indicates the availability of stored logged MDT
reports to the network.”); Ex. 1003, ¶118.
Further, Zhou teaches that MDT measurements can be taken periodically and
may comprise radio condition measurements. Ex. 1005, 9:4-8 (The measurements
“may be of any suitable parameter such as signal strength of the respective cell as
received at the UE. The signal strength of a reference signal, for example a pilot
signal, may be measured.”), 10:4-5 (“Measurement interval - this may be the
frequency at which periodic measurements are made.”).
22[a] receiving a request from the network node to start transmitting logged
measurements in a report message;
See Claim 1[a], supra. Zhou teaches this limitation to a POSITA. Ex. 1003,
¶120. Figure 4 illustrates that the UE receives the request for logged MDT data from
the base station, which is a network node.
32
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Ex. 1005, Fig. 4.
22[b] determining if the logged measurements fit in the report message; and if not,
Zhou teaches this limitation to a POSITA. See Ex. 1005, 16:1-3; Ex. 1003,
¶121. Referring to Figure 6, Zhou teaches that “[i]n the sixth step A6, the UE
determines if there will be any remaining logged MDT measurements after a
response has been sent to the request from the base station.” Id.
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Ex. 1005, Fig. 6.
Notably, Zhou discloses the “base station may[,] in its request for the logged
MDT information[,] provide an indication as to the maximum size of logged MDT
data or size of message incorporating the logged MDT data.” Ex. 1005, 14:27-29. A
POSITA would have understood and found it obvious that in order to determine if
there will be any remaining measurements after the report message has been sent,
the UE must determine if all of the logged messages fit in the report message
34
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according to total MDT log and/or MDT measurement size constraints. Ex. 1003,
¶121.
Zhou additionally states that “[s]tep T3 is the same as step S3, but this time
the availability indicator indicates that [] there are further logged MDT reports which
have yet to be sent.” Id., 13:28-31; see also id., 11:22-25 (“In step S3, the UE is
arranged to provide a response with a list of logged MDT measurements, and, in one
embodiment, the availability indicator is provided with a value indicating that there
are no logged measurements still to retrieve.”). The indicator may be positive (e.g.,
“Yes”) or negative (e.g., “No”). See id., Fig. 4. As illustrated in Figure 4, after the
BS receives the indicator that additional logged measurement data exists to retrieve
in step T3, the BS sends a request to the UE for the additional logged measurement
data in step T4. Id. On the other hand, after the BS receives the indication that no
additional logged measurement data exists to retrieve in step T5, the BS does not
send a request to the US for the additional logged measurement data. Id.
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Id., Fig. 4. Accordingly, in order to transmit the appropriate indicator along with the
logged measurement data, a POSITA would have understood that the UE determines
whether the remaining logged measurement data fits in the report message. Ex. 1003,
¶122.
22[c] including in the report message an indicator of additional logged

measurements not yet transmitted; and
Zhou teaches this limitation to a POSITA. See Ex. 1005, 16:11-15; Ex. 1003,
¶l23. Referring to Figure 6, Zhou teaches that in step A8, “if the UE determines that
measurements are sent to the base station along with the availability indicator which
will indicate that there are still logged MDT measurements.” Ex. 1005, 16:11-15.
36
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Id., Fig. 6.
Referring to Figure 4, Zhou additionally teaches that “[s]tep T3 is the same as
step S3, but this time the availability indicator indicates that [] there are further
logged MDT reports which have yet to be sent.” Id., 13:28-31; see also id., 11:22-
25 (“In step S3, the UE is arranged to provide a response with a list of logged MDT
measurements, and, in one embodiment, the availability indicator is provided with a
value indicating that there are no logged measurements still to retrieve.”).
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Id., Fig. 4.
22[d] transmitting the report message, comprising the indicator, to the network
node as a response to the request.
See Claim 1[b], supra.
xii. Claim 26
26[P] A User Equipment, UE, for assisting in network based control of report
messages in a wireless communications network, the UE being in connection with
a serving network node and configured to transmit report messages to the network
node, and wherein the UE is configured to periodically perform radio condition
measurements and store the periodically performed measurements in a buffer as
logged measurements, the UE comprises:
See Claim 22[P], supra.
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Further, Zhou discloses a UE with a communications interface and processor
circuit. Ex. 1006, 7:22-8:8 (disclosing a “mobile communication device” operating
with a “transceiver” and “appropriate circuit board and/or chipsets”).
26[a] a UE communications interface configured to receive a request from the

network node to start transmitting logged measurements in a report message, and
to transmit the report message comprising the logged measurements;
See Claims 22[a] and [d], 26[P], supra.
26[b] a UE processor circuit configured to determine if the logged measurements

fits in the report message, and if not, indicating in the report message to be
transmitted an existents of additional logged measurements not yet transmitted.
See Claims 22[b-c], 26[P], supra.
xiii. Claim 30
The User Equipment according to claim 26, wherein the logged measurements are
Minimizing Drive Tests, MDT, log data.
Zhou teaches a User Equipment in Claim 26[P], supra.
Zhou teaches this to a POSITA. See, e.g., Ex. 1005, 13:22-25, Fig. 4; Ex.
1003, ¶130. Zhou discloses that “it is proposed to use a UE information response to
carry some of the logged MDT measurements and optionally an up-to-date
availability indicator to the base station.” Ex. 1005, 13:22-25, Fig. 4. Further, Figure
4 discloses that the logged measurements comprise MDT log data:
39
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Id., Fig. 4.
B. Ground 2: Claims 1-5, 12-16, 22-24, 26-28, and 30 Are Rendered

Obvious by Zhou in view of Wu
As described and mapped in Ground 1, Zhou renders Claims 1-5, 12-16, 22,
26, and 30 obvious to a POSITA. See Section IV.A., supra. All arguments and
evidence from Ground 1 are incorporated by reference into Ground 2.
1. Overview of Wu
Wu describes a method of reporting MDT logs as illustrated in Figure 12. Ex.
1006, 9:16-37.
40
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Id., Fig. 12.
Wu explains that first, “the RAN initiates MDT log retrieval by issuing a
request message UEInformationRequest to the mobile communication device.” Id.,
5:12-15 (describing Figure 4); see also id., 8:29 (indicating that the method
illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18 (indicating that
the method illustrated in Fig. 12 is the same as Fig. 10, except as indicated). Second,
“[i]n response to the request message, the communication module 100 (or 200)
transmits the collected MDT log in a UEInformationResponse message” that “also
indicates whether the MDT log reporting is finished or whether at least one more
sub-MDT log is available.” Id., 5:15-17, 8:47-49; see also id., 8:29 (indicating that
the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
(indicating that the method illustrated in Fig. 12 is the same as Fig. 10, except as
indicated). Third, “[t]he RAN determines whether to send the next
41
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UEInformationRequest message based on the indication of the
UEInformationResponse message received from the mobile communication
device.” Id., 9:24-27. If “the received UEInformationResponse message contains an
indicator indicating that the MDT log reporting is not finished or at least one more
sub-MDT is available, the RAN sends the next UEInformationRequest message to
continue the MDT log reporting process or to request for another sub-MDT log.”
Id., 9:28-33. On the other hand, if “the received UEInformationResponse message
does not contain the above indicator, the RAN ceases to send any
UEInformationRequest message (S1312) and the MDT log reporting method is
completed.” Id., 9:33-37.
Wu further discloses that the “MDT log includes MDT measurements for the
serving cell (e.g. the measurement quantity) and available UE measurements
performed in idle for intra-frequency/inter-frequency/inter-RAT, time stamps and
location information.” Id., 4:58-62. The logged measurements that are transmitted
to the network node are further deleted from the buffer of the UE. Id., 6:42-45
(“After the MDT log is received by the RAN, the MDT log retrieval is completed,
and the control module 102 (or 202) discards, clears, deletes, removes, or invalidates
the Logged MDT log stored therein.”).
Because Wu, like the ’658 Patent, discloses a method of reporting logged
MDT measurement data in a 3rd Generation Partnership Project (“3GPP”) long term
42
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evolution (“LTE”) wireless network, Wu is in the same field of endeavor as the ’658
Patent. Compare Wu (Ex. 1006), 4:2-8 (describing UE compliance with 3GPP LTE
network standardization), 4:14-36 (describing UE collection of MDT
measurements), 3:24-32, 4:40-62 (describing UE logged MDT reporting to the radio
access network (“RAN”) node), with ’658 Patent (Ex. 1001), 1:63-2:44 (describing
3GPP LTE network operating parameters and standardization of MDT logged
measurement reporting).
Further, because both Wu and the ’658 Patent indicate whether additional
MDT measurement logs exist for transmission in subsequent messages, Wu is
reasonably pertinent to the problem faced by the inventor of the ’658 Patent.
Compare Wu (Ex. 1006), 8:27-65 (describing how each “UEInformationResponse
message may comprise an indicator for explicitly indicating whether the MDT log
reporting is finished or whether at least one more sub-MDT log is available” given
“the size of the sub-MDT log”), with ’658 Patent (Ex. 1001), Abstract (describing
how a UE “indicates to a network node . . . that additional logged measurements
exist at the UE buffer” when a UE “sends only a portion of the logged measurements
that fit[] into a single report message.”).
Wu is therefore analogous art to the ’658 Patent. Ex. 1003, ¶66.
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a) Wu Is Entitled To A Priority Date Based On The Wu
Provisional
Wu claims priority to the Wu Provisional. Ex. 1006, Cover. “[A] patent must
satisfy 35 U.S.C. §119(e)(1) to gain the benefit of a provisional application filing
date.” Amazon.com, Inc. v. Customplay, LLC, IPR2018-01496, 2020 WL 1080501,
at *20 (P.T.A.B. Mar. 4, 2020) (non-precedential) (citing Dynamic Drinkware, LLC
v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)). To claim the benefit
of this earlier filing date, the provisional application must contain sufficient written
description of the invention to enable a POSITA to practice the invention claimed in
the non-provisional application. Id. Where a prior art patent “is shown to have at
least one claim to an invention that is supported by the disclosure of a provisional
application,” that provisional necessarily discloses the same invention eventually
claimed and the prior art patent is entitled to the provisional application’s effective
filing date. Id., *21 (emphasis omitted).
Here, Wu is entitled to the effective filing date of the Wu Provisional, which
pre-dates the effective filing date of the ’658 patent.1 Ex. 1003, ¶70. Wu expressly
1
Petitioner has included citations to relevant disclosures from Wu and the Wu
Provisional throughout Grounds 2 and 3 below to demonstrate invalidity of the ’658
Patent. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (holding that a claim
44
IPR2022-00459
claims priority and incorporates by reference the disclosures in the Wu Provisional.
Ex. 1006, 1:8-12.
Like Wu, the Wu Provisional discloses Wu’s claimed method for logged
MDT reporting in a wireless communications system as illustrated in Figure 3. Ex.
1007, 12; Ex. 1006, 9:16-37; Ex. 1003, ¶71.
is unpatentable “if another’s patent discloses the same invention, which was carried
forward from an earlier U.S. provisional application or U.S. non-provisional
application”); Ex Parte Mann, Appeal No. 2015-003571, 2016 WL 7487271, at *6
(PTAB Dec. 21, 2016) (requiring a showing that the disclosure of the provisional
provides support for the subject matter relied on to show obviousness).
2
Reference to a page number of the Wu Provisional herein indicates the internal
page number as noted in the Wu Provisional specification.
45
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Ex. 1007, Fig. 3; see also Ex. 1006, Fig. 12.
The Wu Provisional explains that first, “[a] network [(i.e., a base station)]
transmits a first request message to request the UE to transmit MDT logs.” Ex. 1007,
5; Ex. 1006, 5:12-15 (describing Figure 4); see also Ex. 1006, 8:29 (indicating that
indicated). Second, in response, “[t]he UE transmits a response message containing
the MDT logs and an indicator to indicate whether the response message contains
the last part of MDT logs or indicates whether the UE has more MDT logs.” Ex.
1007, 5; Ex. 1006, 5:15-17, 8:47-49; see also Ex. 1006, 8:29 (indicating that the
method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
46
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indicated). Third, upon receiving the indicator, the network “determines whether the
UE has MDT logs which have not been transmitted to the network.” Ex. 1007, 5;
Ex. 1006, 9:24-27. If it determines that the UE has more MDT logs available, “the
network sends a second request message to request the UE to transmit MDT logs.”
Ex. 1007, 5; Ex. 1006, 9:28-33. On the other hand, if the network determines the UE
has no additional MDT logs, “the network stops sending a second request message
to request the UE to transmit MDT logs.” Ex. 1007, 5; Ex. 1006, 9:33-37.
Like Wu, the Wu Provisional discloses a reporting time stamp in the report
message. Ex. 1003, ¶73. Specifically, “[t]he logged measurement report consists of
measurement results for the serving cell (the measurement object and the
measurement quantity), time stamp and location information.” Ex. 1007, 2; Ex.
1006, 4:58-62.
The Wu Provisional also discloses that the logged measurements transmitted
to the network node are deleted from the buffer of the UE. Ex. 1003, ¶74.
Specifically, “the UE removes, deletes, clears or invalidates the first part of MDT
logs if the UE transmits the first part of the MDT logs in the response message.” Ex.
1007, 7; Ex. 1006, 6:42-45.
b) Wu Has At Least One Claim To An Invention That Is

Supported By The Disclosure Of The Wu Provisional
The table below identifies where written description support can be found in
the Wu Provisional for claim 7 of Wu. Also, as explained by Dr. Valenti, the
47
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disclosure of the Wu Provisional provides similar detail to Wu itself, and would have
enabled a POSITA to practice claim 7 of Wu. Ex. 1003, ¶75.
’657 Patent Wu Provisional

(“Wu”)
7. A method of See, e.g., Ex. 1007, 1: “The present invention relates to a method
reporting a utilized in a wireless communication and communication device
Minimization thereof, and more particularly, to a method to report MDT logs
of Drive Test in a wireless communication system and communication device
(MDT) log for thereof.”
a mobile
communication See, e.g., id., 3: “The UE continuing the MDT reporting
device in a procedure comprises . . . [a] UE [that] transmits MDT logs
service which ha[ve] not been received by a network or the UE transmits
network, [] all MDT logs.”
comprising:
See, e.g., id., Fig. 3:
receiving, by See, e.g., id., 5: “A network transmits a first request message to

the mobile request the UE to transmit MDT logs.”
communication
device, a first
48
IPR2022-00459
request See, e.g., id., Fig. 33:
message for the
MDT log from
the service
network; and
in response to See, e.g., id. at 5: “The UE transmits a response message

the first request containing the MDT logs and an indicator to indicate whether
message, the response message contains the last part of the MDT logs or
transmitting, by indicates whether the UE has more MDT logs.”
the mobile
communication See, e.g., id. at Fig. 3:
device, a first
response
message
comprising a
part of the
MDT log to the
service
3 All annotations are added unless otherwise stated.
49
IPR2022-00459
network;
wherein the
first response
message
indicates
whether the
MDT log
reporting is
finished or
whether at least
one more part
of the MDT log
is available;
and
receiving, by See, e.g., id., 5: “[T]he network receives the indicator and
the mobile determines whether the UE has MDT logs which have not been
communication transmitted to the network. . . [I]f the network determines the
device, a UE has more MDT logs acc, the network sends a second request
second request message to request the UE to transmit MDT logs.”
message for the
MDT log from See, e.g., id., Fig. 3:
the service
network when
the first
response
message
indicates that
the MDT log
reporting is not
finished or at
least one more
part of the
MDT log is
available.
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i. Claim 1
comprising:
See Ground 1, Claim 1[P], supra.

report message;
See Ground 1, Claim 1[a], supra.
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See Ground 1, Claim 1[b], supra.

See Ground 1, Claim 1[c], supra.
To the extent Patent Owner contends that Zhou does not teach a POSITA the
required “determining” step, Wu teaches it. Ex. 1003, ¶135.
Wu teaches that its BS, referred to as a “RAN,” “determines whether to send
the next UEInformationRequest message based on the indication of the
device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. Wu further discloses that its
UEInformationResponse message, which reports logged MDT data to Wu’s BS,
contains an indicator of whether there is additional logged data that has not yet been
reported: “[T]he communication module 100 (or 200) transmits the collected MDT
log in a UEInformationResponse message” that “also indicates whether the MDT
log reporting is finished or whether at least one more sub-MDT log is available.” Ex.
1006, 5:15-17, 8:47-49; see also id., 8:29 (indicating that the method illustrated in
Fig. 10 is the same as Fig. 4, except as indicated), 9:18 (indicating that the method
illustrated in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5, 7.
As Dr. Valenti explains, a POSITA would have been motivated to combine
Zhou and Wu. Ex. 1003, ¶137. Zhou and Wu are both directed to the same wireless
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communication functionality, namely MDT reporting, and the same wireless
communication standard, 3GPP TS 36.311 v.10.16.0 (2015-03). Ex. 1003, ¶137.
Zhou discloses a foundational method of MDT reporting using an indicator which
indicates whether there are logged MDT measurements remaining to be retrieved by
the BS. See, e.g., Ex. 1005, 16:11-15. Wu builds upon Zhou’s foundation and
provides additional details of MDT reporting. See, e.g., Ex. 1006, 8:27-65. Thus, as
Dr. Valenti explains, in light of their related and complementary teachings, a
POSITA would have looked to Wu to improve upon Zhou’s MDT reporting
procedure. Ex. 1003, ¶137. To the extent that Patent Owner contends that Zhou does
not teach the required “determining” step to a POSITA, a POSITA would have
turned to Wu’s determining step and the advantage that it provides. Ex. 1003, ¶138.
Wu teaches “[w]hen the received UEInformationResponse message does not contain
the [] indicator, the RAN ceases to send any UEInformationRequest messages
(S1312) and the MDT log reporting method is completed,” resulting in a complete
and more efficient MDT reporting procedure. Ex. 1006, 9:33-37; Ex. 1003, ¶138. A
POSITA would have been motivated to add such a determining step to Zhou to
provide similar efficiency and increase of available network bandwidth. Ex. 1003,
¶138. The application of Wu to Zhou would be a use of a known technique to
improve similar devices in the same way and the POSITA would have had a
reasonable expectation of success. Id.; see also KSR Int’l Co. v. Teleflex Inc., 550
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U.S. 398, 417 (2007). Further, given that the implementation would have been
handled in software, Dr. Valenti explains that the modification to Zhou would have
been simple for a POSITA, and successfully yielded predictable results. Ex. 1003,
¶138, see also KSR, 550 U.S. 398 at 417.
See Claim 1[d], supra. To the extent Patent Owner contends that Zhou does
not teach a POSITA the required “deciding” step, Wu teaches it. Ex. 1003, ¶139.
Wu discloses that “[t]he RAN determines whether to send the next
UEInformationRequest message based on the indication of the
device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. If “the received
UEInformationResponse message contains an indicator indicating that the MDT log
reporting is not finished or at least one more sub-MDT is available, the RAN sends
the next UEInformationRequest message to continue the MDT log reporting process
or to request for another sub-MDT log.” Ex. 1006, 9:28-33; see also Ex. 1007, 5. If,
on the other hand, “the received UEInformationResponse message does not contain
the above indicator, the RAN ceases to send any UEInformationRequest message
(S1312) and the MDT log reporting method is completed.” Ex. 1006, 9:33-37; see
also Ex. 1007, 5. Therefore, based on whether the indicator indicates additional
logged measurements available, the RAN decides whether to request them. Plainly,
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“[t]he RAN can decide to retrieve the MDT log based on the indication.” Ex. 1006,
4:42-43 (emphasis added).
A POSITA would have been motivated to combine Wu and Zhou for the
reasons discussed above. Ex. 1003, ¶140. In addition, as Dr. Valenti explains, adding
a deciding step to Zhou (to the extent Zhou does not already teach it) as taught by
Wu would improve Zhou’s efficiency, because the BS would not needlessly use
network resources by sending request messages when no additional data is available
from the UE. See Ex. 1006, 9:33-37; see also Ex. 1007, 5; Ex. 1003, ¶141.
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ii. Claims 2-5
Zhou teaches Claims 2-5 as incorporated from Ground 1, Claims 2-5, supra.
iii. Claim 12
12[P] A network node for network based control of report messages in a wireless
communications network, the network node being configured to serve a user
equipment, UE, and to receive report messages from the user equipment, the
network node comprises:
See Ground 1, Claim 12[P], supra.
12[a] a network node communications interface configured to send a request to

the UE to start transmitting logged measurements in a report message, and to
receive the report message comprising the logged measurements;
See Ground 1, Claim 12[a], supra.
12[b] a network node processor circuit configured to determine if the received

report message comprises an indicator of additional logged measurements not yet
transmitted, and if so, to decide if the additional logged measurements need to be
requested.
See Ground 1, Claim 12[b], supra.
To the extent Patent Owner contends that Zhou does not teach to a POSITA
Claim 12[b], Wu teaches it as presented in Claim 1[c-d], supra.
iv. Claims 13-16, 22
Zhou teaches Claims 13-16 and 22 as incorporated from Ground 1, Claims
13-16, 22, supra.
v. Claim 23
The method according to claim 22, wherein the including comprises including a
reporting time stamp in the report message.
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Zhou teaches a method, in Ground 1, Claim 22, supra.
Wu teaches to a POSITA including a reporting time stamp in the report
message. Ex. 1003, ¶167. Wu discloses that the “MDT log includes MDT
measurements for the serving cell (e.g. the measurement quantity) and available UE
measurements performed in idle for intra-frequency/interfrequency/inter-RAT, time
stamps and location information.” Ex. 1006, 4:58-62; see also Ex. 1007, 2. A
POSITA would have been motivated to combine Wu and Zhou for the reasons
discussed in Claim 1[c], supra. Additionally, as Dr. Valenti explains, a POSITA
would have been motivated to include Wu’s time stamps in Zhou’s reporting
message in order to enable the BS to properly weigh, and therefore better analyze,
the MDT data, and detect and respond to periodic behaviors (e.g., busy periods) in
the channel to minimize drive tests, as taught by Wu, and would have had a
reasonable expectation of success. Ex. 1003, ¶167; see Ex. 1006, Abstract, 9:16-18;
see also Ex. 1007, 5.
vi. Claim 24
The method according to claim 22, wherein the logged measurements that are
transmitted to the network node are further deleted from the buffer of the UE.
Zhou teaches a method, incorporated from Claim 22 in Ground 1, supra.
Wu teaches this limitation to a POSITA. Ex. 1003, ¶169. Wu discloses that
the logged measurements that are transmitted to the network node are further deleted
from the buffer of the UE. Ex. 1006, 6:42-45 (“After the MDT log is received by the
57
IPR2022-00459
RAN, the MDT log retrieval is completed, and the control module 102 (or 202)
discards, clears, deletes, removes, or invalidates the Logged MDT logs stored
therein.”); see also Ex. 1007, 7. A POSITA would have been motivated to combine
Wu and Zhou for the reasons discussed in Claim 1[c], supra. Additionally, as Dr.
Valenti explains, a POSITA would have been motivated to include Wu’s teaching
of deleting already transmitted measurements from the UE’s buffer in order to
recover buffer space and, for example, log new reports. Ex. 1003, ¶169.
vii. Claim 26
messages in a wireless communications network, the UE being in connection
with a serving network node and configured to transmit report messages to the
network node, and wherein the UE is configured to periodically perform radio
condition measurements and store the periodically performed measurements in a
buffer as logged measurements, the UE comprises:
Further, Wu teaches a UE:
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IPR2022-00459
Ex. 1006, Fig. 1, 3:39-47 (describing embodiments of a “mobile communication
device 10”), 4:2-8 (defining the mobile communication device as a “UE”).
reasons described in Claim 1[c], supra. Ex. 1003, ¶¶137-38, 141.

network node to start transmitting logged measurements in a report message,
and to transmit the report message comprising the logged measurements;
See Claims 22[a] and [d], supra.
Further, Wu teaches a UE communications interface:
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IPR2022-00459
Ex. 1006, Fig. 1, 3:43-45 (describing “communication module 100” embedded in
the mobile communication device), 3:53-64 (describing communication module
transmission functions).
reasons described in Claim 1[c], supra.

See Claims 22[b] and [c], supra.
Further, Wu teaches a UE processor circuit:
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IPR2022-00459
Ex. 1006, Fig. 1, 3:43-45 (describing a “control module 102” embedded in the
mobile communications device), 3:46-50 (describing hardware-based signal
processing).
reasons described in Claim 1[c], supra.
viii. Claim 27
The User Equipment according to claim 26, wherein the UE processor circuit is
configured to add a reporting time stamp to the reporting message.
See Claim 23, supra.
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IPR2022-00459
ix. Claim 28
The User Equipment according to Claim 26, wherein the logged measurements
that are transmitted to the network node are further deleted from the buffer of
the UE.
See Claim 24, supra.
x. Claim 30
The User equipment according to claim 26, wherein the logged measurements
are Minimizing Drive Tests, MDT, log data.
See Ground 1, Claim 23, supra.
C. Ground 3: Claims 1-5, 12-16, 22-24, 26-28, and 30 Are Rendered

Obvious by Wu
As discussed above in Ground 2, Wu is analogous to the ’658 Patent. Ex.
1003, ¶66. See Section IV.B., supra. All arguments and evidence citing to Wu
from Ground 2 are incorporated by reference into Ground 3.
i. Claim 1
comprising:
To the extent this preamble is limiting, Wu teaches it to a POSITA. Ex. 1003,
¶¶180-82. As discussed in the Overview of Wu in Ground 2, above, Wu teaches an
MDT scheme by which a BS controls UEs connected to it to provide report messages
at the request of the BS. Id., ¶180.
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IPR2022-00459
Wu discloses “[m]ethods and mobile communication devices for reporting an
MDT log.” Ex. 1006, Abstract, 9:16-18 (“Fig. 12 is a message sequence chart of
another Logged MDT reporting method”); see also Ex. 1007, 5. Wu further teaches
that “when receiving a UEInformationRequest message from the RAN, the mobile
communication device replies with a UEInformationResponse message to the
RAN,” which a POSITA would have understood is a report message because it
reports information to the RAN. Ex. 1006, 9:21-24. Wu further includes Figure 12
to illustrate that the service network (RAN) interfaces with the mobile
communication device (UE) and receives report messages from the UE. Ex. 1003,
¶181-82.
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IPR2022-00459

report message;
“the RAN initiates MDT log retrieval by issuing a request message
UEInformationRequest to the mobile communication device.” Ex. 1006, 5:12-15
(describing Figure 4); see id., 11:10-12 (The UE “receive[s] . . . a first request
message for the MDT log from the service network.”); see also id., 8:29 (indicating
that the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
indicated); Ex. 1007, 5. Wu further includes Figure 12 to illustrate that the RAN
initiates MDT log retrieval by issuing a request message to the mobile
communication device.
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IPR2022-00459
sub-MDT log is available.” Ex. 1006, 5:15-17, 8:47-49; see id., 11:13-18 (“[I]n
response to the first request message, transmitting, by the mobile communication
device, a first response message comprising a part of the MDT log to the service
network[.]”); see also id., 8:29 (indicating that the method illustrated in Fig. 10 is
the same as Fig. 4, except as indicated), 9:18 (indicating that the method illustrated
65
IPR2022-00459
in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5. Further, Wu
includes Figure 12 to illustrate that the mobile communication device transmits a
report message comprising logged measurements (i.e., “sub-MDT log”) to the RAN.

“[t]he RAN determines whether to send the next UEInformationRequest message
based on the indication of the UEInformationResponse message received from the
mobile communication device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. To analyze
whether to send the next request message based on the indicator, a POSITA would
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IPR2022-00459
have understood and found it obvious that Wu first requires the RAN to determine
whether the indicator indicates that there are additional logged measurements not
yet transmitted. Ex. 1003, ¶186.
“[t]he RAN determines whether to send the next UEInformationRequest message
based on the indication of the UEInformationResponse message received from the
mobile communication device.” Ex. 1006, 9:24-27; see also Ex. 1007, 5. If “the
received UEInformationResponse message contains an indicator indicating that the
MDT log reporting is not finished or at least one more sub-MDT is available, the
RAN sends the next UEInformationRequest message to continue the MDT log
reporting process or to request for another sub-MDT log.” Ex. 1006, 9:28-33; see
also Ex. 1007, 5. If, on the other hand, “the received UEInformationResponse
message does not contain the above indicator, the RAN ceases to send any
UEInformationRequest message (S1312) and the MDT log reporting method is
completed.” Ex. 1006, 9:33-37; see also Ex. 1007, 5. Plainly, “[t]he RAN can decide
to retrieve the MDT log based on the indication.” Ex. 1006, 4:42-43 (emphasis
added). Therefore, a POSITA would have understood and found it obvious that the
RAN decides whether to request additional measurement logs based on whether the
indicator indicates they are available. Ex. 1003, ¶186.
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IPR2022-00459
ii. Claim 2
The method according to claim 1, wherein the method comprises receiving, from
the UE, an indication of existents of logged measurements that are available.
Wu teaches a method in Claim 1, supra.
sub-MDT log is available.” Ex. 1006, 5:15-17, 8:47-49; see also id., 8:29 (indicating
that the method illustrated in Fig. 10 is the same as Fig. 4, except as indicated), 9:18
indicated); Ex. 1007, 5. Further, Wu includes Figure 12 to illustrate that the response
message from the UE contains an indication of the existence of logged
measurements that are available.
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IPR2022-00459
iii. Claim 3
The method according to claim 1, wherein the logged measurements comprises

one or more of the following: measurement time stamps for each performed
measurement; UE buffer state condition; positioning information of UE;
periodically measured downlink pilot signal strength; serving cell conditions;
transmit power headroom conditions; paging channel failure(s); and broadcast
channel failure(s).
the “MDT log includes MDT measurements for the serving cell (e.g. the
measurement quantity) and available UE measurements performed in idle for intra-
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IPR2022-00459
frequency/inter-frequency/inter-RAT, time stamps and location information.” Ex.
1006, 4:58-62; see also Ex. 1007, 2.
iv. Claim 4
The method according to claim 1, wherein the report message is received directly
from the UE or via another network node.
See Claim 1[P] and 1[b], supra.
v. Claim 5
The method according to claim 1, wherein the deciding is based on one or more
of the following: interference level experienced in a cell; radio condition
capacity; UE buffer state condition etc.
Wu further teaches this limitation to a POSITA. Ex. 1003, ¶194. Wu discloses
that first, “the RAN initiates MDT log retrieval by issuing a request message
UEInformationRequest to the mobile communication device.” Ex. 1006, 5:12-15
(describing Figure 4); see also id., 8:29 (indicating that the method illustrated in Fig.
10 is the same as Fig. 4, except as indicated), 9:18 (indicating that the method
illustrated in Fig. 12 is the same as Fig. 10, except as indicated); Ex. 1007, 5. Second,
sub-MDT log is available.” Id., 5:15-17, 8:47-49; see also id., 8:29 (indicating that
70
IPR2022-00459
indicated); Ex. 1007, 5. Wu further teaches that when the UE buffer contains MDT
data, the RAN will request data based on the buffer state condition. Ex. 1006, 9:24-
27; see also Ex. 1007, 5.
vi. Claim 12
12[P] A network node for network based control of report messages in a wireless
communications network, the network node being configured to serve a user
equipment, UE, and to receive report messages from the user equipment, the
network node comprises:
12[a] a network node communications interface configured to send a request to

the UE to start transmitting logged measurements in a report message, and to
receive the report message comprising the logged measurements;
See Claim 1[a] – [b], supra.
12[b] a network node processor circuit configured to determine if the received

report message comprises an indicator of additional logged measurements not yet
transmitted; and if so, to decide if the additional measurements need to be
requested.
See Claim 1[c] – [d], supra.
vii. Claims 13-16
Wu teaches the method of Claims 13-16 as presented in Claim 12, supra,
and the additional limitations of Claims 13-16 as presented above in Claims 2-5,
respectively.
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IPR2022-00459
viii. Claim 22
22[P] A method in a User Equipment, UE, for assisting in network based control
of report messages in a wireless communications network, the UE being in
connection with a serving network node and configured to transmit report
messages to the network node upon request, and wherein the UE is configured to
periodically perform radio condition measurements and store the periodically
performed measurements in a UE buffer as logged measurements, the method
comprising:
See Claims 1[P] and 12[P], supra.
22[a] receiving a request from the network node to start transmitting logged
measurements in a report message;
See Claim 1[a], supra.
22[b] determining if the logged measurements fit in the report message; and if not,
See Claim 1[c], supra. Wu teaches a “UEInformationResponse message may
comprise an indicator for explicitly indicating whether the MDT log reporting is
finished or whether at least one more sub-MDT log is available” given “the size of
the sub-MDT log.” Ex. 1006, 8:27-65; Ex. 1007, 7. In order for the UE to select the
appropriate indicator to include in the report message, as discussed in Claim 1[c],
supra, it must first determine if the logged measurements fit in a single report
message or plurality of report messages. Ex. 1003, ¶208.
22[c] including in the report message an indicator of additional logged

measurements not yet transmitted; and
See Claim 1[c], supra.
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IPR2022-00459
22[d] transmitting the report message, comprising the indicator, to the network
node as a response to the request.
See Claim 1[b], supra.
ix. Claim 23
The method according to claim 22, wherein the including comprises including a
reporting time stamp in the report message.
that the “MDT log includes MDT measurements for the serving cell (e.g. the
measurement quantity) and available UE measurements performed in idle for intra-
frequency/inter-frequency/inter-RAT, time stamps and location information.” Ex.
1006, 4:58-62; see also Ex. 1007, 2.
x. Claim 24
The method according to claim 22, wherein the logged measurements that are
transmitted to the network node are further deleted from the buffer of the UE.
that “[a]fter the MDT log is received by the RAN, the MDT log retrieval is
completed, and the control modules 102 (or 202) discards, clears, deletes, removes,
or invalidates the Logged MDT logs stored therein.” Ex. 1006, 6:42-45; see also Ex.
1007, 7.
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IPR2022-00459
xi. Claim 26
messages in a wireless communications network, the UE being in connection with
a serving network node and configured to transmit report messages to the network
node, and wherein the UE is configured to periodically perform radio condition
measurements and store the periodically performed measurements in a buffer as
logged measurements, the UE comprises:

network node to start transmitting logged measurements in a report message, and
to transmit the report message comprising the logged measurements;
See Claim 22[a] and [d], supra.

See Claims 1[c] and 22[b-c]. In order for the UE to select the appropriate
indicator to include in the report message, as discussed in limitation 1[a], it must
first determine if the logged measurements fit in the report message. Ex. 1003, ¶217.
xii. Claims 27, 28
Wu teaches the user equipment of Claims 27-28 in Claim 26, supra, and the
additional limitations of Claims 27-28 as presented above in Claims 23-24,
respectively, supra.
xiii. Claim 30
The User Equipment according to claim 26, wherein the logged measurements are
Minimizing Drive Tests, MDT, log data.
Wu teaches the user equipment in Claim 26, supra.
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IPR2022-00459
that “[t]he present invention relates to Minimization of Device Test (MDT), and in
particular relates to methods and mobile communication devices for reporting an
MDT log.” Ex. 1006, 1:17-19; see also Ex. 1007, 1.
V. DISCRETIONARY FACTORS
A. The General Plastic Factors Favor Institution
The General Plastic factors (extended in Valve) weigh against denying
institution under § 314(a). Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
IPR2016-01357, Paper 19 at 15-19 (September 6, 2017) (precedential).
Samsung previously challenged the ’658 Patent in IPR2021-00537
(“Samsung IPR”), which terminated pursuant to settlement prior to a preliminary
response. Because Apple was not a party to the Samsung IPR, this is Apple’s first
challenge to the ’658 Patent, and Apple has no relationship with Samsung, the first
five factors weigh against denial. Unified Patents, Inc. v. Certified Measurement,
LLC, IPR2018-00548, Paper No. 7 at 7-8 (Sep. 5, 2018); Valve Corp. v. Elec.
Scripting Prod., Inc., IPR2019-00062, Paper No. 11 at 2, 9-10, 12-13 (Apr. 2, 2019).
As to the sixth factor, the instant petition largely repurposes the Samsung IPR, which
respects the Board’s finite resources and allows it to complete any analysis it started
with the Samsung IPR. Regarding the seventh factor, there is no readily identifiable
75
IPR2022-00459
roadblock for the Board to issue a final determination within the statutory one-year
limit.
VI. CONCLUSION
For the forgoing reasons, Petitioner respectfully requests inter partes review
of claims 1-5, 12-16, 22-24, 26-28, and 30 of the ’658 Patent.
By: /s/ Adam P. Seitz

Adam P. Seitz, Reg. No. 52,206
Paul R. Hart, Reg. No. 59,646
COUNSEL FOR PETITIONER
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IPR2022-00459
VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
A. Real Party-In-Interest
Petitioner is the real party-in-interest. 37 C.F.R. § 42.8(b)(1).
B. Related Matters
The ’658 Patent was challenged in the following matter, now terminated:
• Samsung v. Ericsson, IPR2021-00537 (Feb. 12, 2021)
C. Lead and Back-Up Counsel
Petitioner provides the following designation and service information for lead
and back-up counsel. 37 C.F.R. § 42.8(b)(3) and (b)(4).
Lead Counsel Back-Up Counsel
Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
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.
7015 College Blvd., Ste. 700 5299 DTC Blvd., Ste. 1340
Overland Park, Kansas 66211 Greenwood Village, Colorado 80111
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
77
IPR2022-00459
APPENDIX OF EXHIBITS
Exhibit 1001 U.S. Patent No. 8,798,658

Exhibit 1002 File History of U.S. Patent No. 8,798,658
Exhibit 1003 Declaration of Dr. Matthew C. Valenti for Inter Partes Review of
U.S. Patent No. 8,798,658 (“Valenti Declaration”)
Exhibit 1004 Curriculum Vitae of Matthew Valenti
Exhibit 1005 PCT Application PCT/CN2010/074128 / WO 2011/160274
(“Zhou”)
Exhibit 1006 U.S. Patent No. 8,594,657 (“Wu”)
Exhibit 1007 U.S. Provision Patent Application No. 61/378,400 (“Wu
Provisional”)
Exhibit 1008 “Minimization of Drive Tests Solution in 3GPP,” Wuri A. Hapsari
et al. (June 2012) (“Hapsari”)
Exhibit 1009 “3GPP TR 36.805 v9.0.0,” 3rd Generation Partnership Project
(Dec. 2009) (“3GPP TR 36.805”)
Exhibit 1010 “3GPP TS 37.320 vl.0.0,” 3rd Generation Partnership Project
(Aug. 2010) (“3GPP TS 37.320 vl.0.0”)
Exhibit 1011 “3GPP TS 37.320 v10.0.0,” 3rd Generation Partnership Project
(Dec. 2010) (“3GPP TS 37.320 vl0.0.0”)
Exhibit 1012 Declaration of Friedhelm Rodermund in Support of Petition for
Inter Partes Review of U.S. Patent No. 8,798,658
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IPR2022-00459
CERTIFICATION OF WORD COUNT
The undersigned certifies pursuant to 37 C.F.R. § 42.24 that the foregoing
Petition for Inter Partes Review, excluding any table of contents, mandatory notices
under 37 C.F.R. § 42.8, certificates of service or word count, or appendix of exhibits,
contains 12,247 words according to the word-processing program used to prepare
this document (Microsoft Word).
Dated: January 19, 2022
BY: /s/ Adam P. Seitz

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IPR2022-00459
CERTIFICATE OF SERVICE ON PATENT OWNER
UNDER 37 C.F.R. § 42.105
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
January 19, 2022, a complete and entire copy of this Petition for Inter Partes Review
including exhibits was provided via Federal Express to the Patent Owner by serving
the correspondence address of record for the ’658 Patent as listed on PAIR:
BAKER BOTTS LLP

2001 Ross Avenue, Suite 900
Dallas, TX 75201
BY: /s/ Adam P. Seitz

80

22-01-19 Apple IPR Petition Against US8798658

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Inter Partes Review Case No. IPR2022-00459

PETITION FOR INTER PARTES REVIEW

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

No. 8,798,658 (“the ’658 Patent”) (Ex. 1001).

II. SUMMARY OF THE ’658 PATENT

A. State of the Art and the ’658 Patent’s Alleged Invention

The ’658 patent is directed to methods and apparatuses for network-based

control of report messages in a wireless communications network, such as a Long

background, an LTE network generally consists of User Equipment (“UE”) and

particular implementation, a BS may be referred to by different terminology,

including for example, “Base Transceiver Station (BTS),” “NodeB,” “eNodeB,” or

be replaced by the measurement and reporting of this information by a UE, thereby

measurements, it may either be in a connected state (i.e., connected to a BS), or in

BS, it transmits a communication indicating that it has available logged

message from the UE of additional logged measurements that remain in the UE

logged data, depending on current conditions (e.g., interference level experienced in

a cell, radio condition measurements experienced in a cell; available radio resource

BS is allowed “to decide a timing of transmission of the logged measurements and

timing of when more logged measurements should be requested.” Id., 7:24-28.

Figure 3 illustrates this allegedly inventive method:

Ex. 1001, Fig. 3.

B. The ’658 Patent’s Prosecution

PCT/SE2010/051355, filed December 9, 2010, and U.S. Provisional Patent No.

the BS deciding whether to request the additional logged measurements, as the

issued on August 5, 2014. Ex. 1001, Cover. However, as discussed in Section IV

below, its alleged point of novelty was known and obvious.

C. A Person of Ordinary Skill in the Art

As explained by Dr. Valenti, a person of ordinary skill in the art (“POSITA”)

Engineering, Computer Science, Physics, Applied Mathematics, or equivalent and

three to five years of experience working with wireless digital communication

and vice-versa. Id.

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

alleging infringement of the ’658 Patent; (4) estoppel provisions of 35 U.S.C. §

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

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

Proposed Ground of Unpatentability Exhibits

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

1001-1012 are also attached.

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

However, Petitioner notes multiple instances of a misspelling or typographical

“existents” of additional logged measurements rather than “existence.” See Ex.

respectfully requests an opportunity to address Patent Owner’s contentions to the

Additionally, Petitioner notes several instances of corrected specification and

made to the Challenged Claims, which Petitioner has applied herein:

Issued ’658 Patent Claim Corrected ’658 Patent Claim

IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE

International Patent Application WO2011/160274 to Weihua Zhou, et al.

immediate MDT reporting means that a UE needs to report MDT measurements

reporting message if additional measurements exist. Id., 8:31-34. Zhou further

Id., Fig. 6. As described in Figure 6, an idle UE makes the required MDT

logged measurements can be transmitted to the base station in one reporting

Figure 4 of Zhou depicts a similar method:

UEInformationRequest message to the UE (i.e., step T2), which responds with a

UEInformationResponse message including a list of logged MDT measurements and

send a UEInformationRequest message requesting the further logged MDT reports

message to the UE. Id.

standardization), 8:17-23, (describing automatic, UE collection of MDT

measurements), 11:7-35, 12:2-13:5 (describing logged MDT reporting to a network

3GPP LTE network operating parameters and standardization of MDT logged

measurement logs exist for transmission in subsequent messages, Zhou is reasonably

and information indicating that further measurement information is available); 16:1-

measurements remain and sending an “availability indicator” to “indicate that there