22-01-25 Apple IPR Petition Against US9888486

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. IPR2022-00458

U.S. Patent No. 9,888,486
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,888,486

TABLE OF CONTENTS
I. INTRODUCTION ........................................................................................... 1
II. CERTIFICATION OF GROUNDS FOR STANDING ................................. 1
III. OVERVIEW OF CHALLENGE .................................................................... 2
A. PRIOR ART ............................................................................................. 2
B. RELIEF REQUESTED .............................................................................. 10
IV. OVERVIEW OF THE TECHNOLOGY...................................................... 11
V. OVERVIEW OF THE ‘486 PATENT .......................................................... 17
A. CLAIMS ................................................................................................ 17
B. ALLEGED INVENTION ............................................................................ 17
C. PROSECUTION HISTORY ........................................................................ 20
D. CLAIM CONSTRUCTION ......................................................................... 20
VI. ORDINARY SKILL ...................................................................................... 20
VII. OVERVIEW OF HO ..................................................................................... 21
VIII. GROUND I ................................................................................................. 25
A. CLAIMS 1-31 ARE RENDERED OBVIOUS UNDER § 103 OVER HO
IN VIEW OF THE KNOWLEDGE OF A POSITA ......................................... 25
IX. NO BASIS EXISTS FOR DISCRETIONARY DENIAL ............................ 64

A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION ........................... 64
X. CONCLUSION .............................................................................................. 65
XI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8.................................. 68
A. REAL PARTY-IN-INTEREST .................................................................... 68
B. RELATED MATTERS .............................................................................. 68
C. 37 C.F.R. §42.8(B)(3): COUNSEL INFORMATION .................................... 68
i
D. 37 C.F.R. § 42.8(B)(4): SERVICE INFORMATION.................................... 69
E. APPENDIX A ......................................................................................... 70
ii
TABLE OF AUTHORITIES
Cases
Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerate GmbH, IPR2019-
01469, Paper 6 (PTAB Feb. 13, 2020) ............................................................... 9
Ex Parte Mann, Appeal No. 2015-003571, 2016 WL 7487271 (PTAB Dec. 21,
2016).................................................................................................................. 8
Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
(September 6, 2017) ..........................................................................................63
In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010) ................................................... 8
Intex Recr. Corp. v. Team Worldwide Corp., IPR2018-00871, Paper 14 (PTAB Sept.
14, 2018) ............................................................................................................ 9
Nintendo of Am. Inc. v. iLife Techs., Case IPR2015-00106, Paper 12 (P.T.A.B. Apr.
29, 2015) ............................................................................................................ 9
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ........................................19
Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, Paper 9 (P.T.A.B.
Nov. 15, 2013) ................................................................................................... 9
Unified Patents, Inc. v. Certified Measurement, LLC, IPR2018-00548, Paper No. 7
(Sep. 5, 2018)....................................................................................................63
Valve Corp. v. Elec. Scripting Prod., Inc., IPR2019-00062, Paper No. 11 (Apr. 2,
2019).................................................................................................................63
Statutes
35 U.S.C. § 101 ....................................................................................................19
35 U.S.C. § 103 ....................................................................................................10
35 U.S.C. § 282(b) ................................................................................................19
35 U.S.C. § 314(a) ................................................................................................63
35 U.S.C. § 325(d) ..............................................................................................8, 9
Regulations
37 C.F.R. § 42.100(b) ...........................................................................................19
37 C.F.R. § 42.24 ..................................................................................................65
37 C.F.R. § 42.8 .............................................................................................. 67, 68
37 C.F.R. §42.10(b) ..............................................................................................68
iii
LIST OF EXHIBITS
Exhibit Description
No.
1001 U.S. Patent No. 9,888,486 (“’486 Patent”)
1002 Declaration of Dr. Sundeep Rangan for Inter Partes Review of U.S.
Patent No. 9,888,486
1003 Curriculum Vitae of Dr. Sundeep Rangan
1004 Certified File History of U.S. Patent No. 9,888,486
1005 U.S. Patent Publication No. 2010/0067468 (“Ho”)
1006 Certified U.S. Provisional App. No. 61/095,676 (“Ho Provisional”)
1007 Declaration of Friedhelm Rodermund
1008 Certified Filed History of U.S. Patent No. 9,532,368
1011 U.S. Patent Pub. No. 2010/0248765 (“Chun”)
1012 U.S. Patent Pub. No. 2008/0192674 (“Wang”)
1013 U.S. Patent No. 9,979,514 (“Tseng”)
1014 E-UTRA MAC Specification 36.321 v8.2.0
1015 Oxford Dictionary of Computing (6th ed. 2008)
1016 Sesia et al., LTE - The UMTS Long Term Evolution: From Theory
To Practice (Wiley 2009)
1017 Dahlman et al., 4G – LTE / LTE-Advanced for Mobile Broadband
(Academic Press 2011)
1018 Declaration of Jacob Munford
iv
Petitioner Apple Inc. (“Apple” or “Petitioner”) requests inter partes review
(“IPR”) of claims 1-31 (the “Challenged Claims”) of U.S. Patent No. 9,888,486
(EX1001, “the ’486 Patent”).
I. INTRODUCTION
The ʼ486 Patent is directed to a method and apparatus that uses a “new data
indicator,” or NDI, flag to determine whether a transmission in a wireless network
between user equipment, such as a cell phone, and a base station (BS) is a new
transmission of data, or a retransmission of data that was previously sent but not
properly received the first time around. The alleged point of novelty of the ʼ486
Patent is deeming a transmission a new data transmission—regardless of the state of
the NDI flag—when the system switches from one mode of scheduling
transmissions to another. This Petition demonstrates, however, that this use of the
NDI flag was well-known in the art at the time of the alleged invention. The
Challenged Claims should therefore be canceled as unpatentable.
II. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to Rule 42.104(a) that the ’486 Patent is available
for IPR and that Petitioner is not barred or estopped from requesting this IPR.
Petitioner certifies: (1) Petitioner does not own the ’486 Patent; (2) Petitioner (or any
real party-in- interest) has not filed a civil action challenging the validity of any
claim of the ’486 Patent; (3) Petitioner has not been served with a complaint
1
asserting infringement of the ’486 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 ’486 Patent
was granted.
III. OVERVIEW OF CHALLENGE
A. Prior Art
• Ho (EX1005): U.S. Patent Publication No. 2010/0067468 to Ho et al., filed
September 8, 2009. Ho was published on March 18, 2010. Ho claims
priority to U.S. Provisional Application No. 61/095,676 (the “Ho
Provisional,” EX1006), which was filed on September 10, 2008. Ho is
therefore prior art under pre-AIA 35 U.S.C. § 102(e) because its priority
date is September 10, 2008.
“[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)
(nonprecedential). To claim the benefit of this earlier filing date, the provisional
application must contain sufficient written description of the invention to enable a
person of ordinary skill in the art (“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
2
claimed and the prior art patent is entitled to the provisional application’s effective
filing date. Id. at *21.
As explained in the accompanying Declaration of Dr. Rangan, the Ho
Provisional contains written description support for at least claim 1 of Ho, showing
that the inventor of the Ho Provisional was in possession of the invention claimed in
Ho. See EX1002 ¶ 74. Dr. Rangan explains that the Ho Provisional contains a similar
level of disclosure as Ho itself, and enables a POSITA to practice at least claim 1 of
Ho. For example, the Ho Provisional teaches the potential issues in interpreting the
NDI when switching from SPS mode to dynamic mode, and teaches the same
solution to that problem as presented in Ho. See EX1006, e.g., ¶¶ 40, 44-45, Appx.
A; EX1002 ¶¶ 74-75. The Ho Provisional also teaches all of the background state of
the art needed to provide written description support for a POSITA to understand
the Ho Provisional and create the invention claimed at least in claim 1 of Ho, such
as how NDIs are handled in dynamic mode and SPS mode in a HARQ process. See
EX1006, e.g., ¶¶ 36-39, Appx. A; EX1002 ¶ 76. Further, as set forth in Section X
below, the Ho Provisional contains disclosures that correspond to all of the relevant
disclosures in the Ho specification relied upon herein.
The following table from the declaration of Dr. Rangan (EX1002) maps the
disclosure from the Ho Provisional to claim 1 of Ho:
Ho (EX1005) Claim 1 Supporting Disclosure From The Ho Provisional

(EX1006)
3
1. A method, comprising: The Ho Provisional discloses a method. See EX1002
¶ 77.
See EX1006, e.g., cl. 2 (“A method used in a wireless

communication system”), ¶ 53 (“Fig. 5 illustrates a
methodology 500 for processing a transmission
associated with a shared HARQ process in accordance
with various aspects disclosed herein.”).
identifying information The Ho Provisional discloses identifying information
relating to an initial relating to an initial transmission for a Hybrid
transmission for a Hybrid Automatic Repeat Request (HARQ) process, the
Automatic Repeat information comprising scheduling information and
Request (HARQ) process, an initial new data indicator (NDI). See EX1002 ¶ 77.
the information
comprising scheduling For example, the Ho Provisional teaches: “identifying
information and an initial a first RNTI associated with a first transmission from
new data indicator (NDI); an access point.” See EX1006, cl. 2; see also id. at,
e.g., Fig. 5 (“Identify an RNTI used for a transmission
within a HARQ process.”), Appx. A. In the context of
the Ho Provisional, this initial transmission would be
for a HARQ process. See EX1006, e.g., Fig. 5, ¶ 35
(“Techniques for NDI handling with HARQ process
sharing for semi-persistent and dynamic scheduling
are described herein.”), ¶ 49 (“[A] system for sharing
a HARQ process for dynamic and semi-persistent
scheduling in accordance with various aspects
disclosed herein are illustrated.”), Appx. A.
The first RNTI identified in the initial transmission is

scheduling information because it indicates whether
the HARQ process is in SPS or dynamic mode based
on, for example, whether the RNTI is a SPS C-RNTI
(for SPS mode scheduling) or a different C-RNTI (for
dynamic mode scheduling). See EX1006, e.g., ¶ 39
(“[A] HARQ process can be configured such that SPS
(re)configuration is sent to SPS-C-RNTI….”), ¶ 45
(“a given HARQ process ID is used with a given
RNTI (e.g., SPS-C-RNTI), a subsequent transmission
performed for another RNTI (e.g., C-RNTI)”). A
POSITA would also recognize that the first
4
transmission would include additional scheduling
information such as a time allocation, otherwise the
transmission could not occur because the user
equipment would not know when to receive the
transmission. See EX1006, e.g., ¶ 40 (“[A]t time t=0,
a SPS first transmission occurs. Next, at time t1
(NDI=0), the eNB schedules a DL retransmission for
that process (SPS)….” ), Appx. A; EX1002 ¶ 77.
The first transmission would also include an initial

NDI. As the Ho Provisional teaches: “[f]or SPS,
different rules are utilized, such that a retransmission
is indicted with NDI=1 and a new transmission is
indicated with NDI=0.” See EX1006 ¶ 38, Appx. A.
When the initial transmission occurs, it therefore must
include an initial NDI of 0 to indicate that it is a new
transmission when in SPS mode (as in this example).
See EX1002 ¶ 77.
identifying information The Ho Provisional discloses identifying information
relating to a subsequent relating to a subsequent transmission for the HARQ
transmission for the process, the information comprising scheduling
HARQ process, the information and a subsequent NDI. See EX1002 ¶ 77.
information comprising
scheduling information For example, the Ho Provisional teaches: “[i]dentify
and a subsequent NDI; an RNTI used for a subsequent transmission within
and the HARQ process.” EX1006, Fig. 5; see also id. at,
e.g.,
¶ 53 (“At block 504, an RNTI used for a subsequent
transmission within the HARQ process is
identified.”), Appx. A.
As discussed above, the Ho Provisional discloses that

the RNTI used for the subsequent transmission is
scheduling information. See EX1006, e.g., ¶¶ 39, 45,
Appx. A; EX1002 ¶ 77. A POSITA would also
recognize that the subsequent transmission would
include additional scheduling information such as a
time allocation, otherwise the transmission could not
occur because the user equipment would not know
when to receive the transmission. See EX1006, e.g.,
5
40 (“At time t2, the eNB then wishes to
communicate….”), Appx. A; EX1002 ¶ 77.
The Ho Provisional discloses that the subsequent

transmission would also include a subsequent NDI.
The fact that the subsequent transmission includes a
subsequent NDI is why the subsequent transmission
may be treated as new “irrespective of the NDI”—if
there were no subsequent NDI, there would be no NDI
to disregard. See EX1006 ¶ 45, Appx. A; EX1002 ¶
77. Similarly, the Ho Provisional teaches: “for a given
HARQ process where the precedent use was with
SPS-C-RNTI, if the next use is requested for C-RNTI
and the UE determines that NDI has not been toggled,
the UE can elect not to combine/retransmit.” See
EX1006 ¶ 47, Appx. A. There must be a subsequent
NDI in order for the UE to determine that the “NDI
has not been toggled.” See EX1002 ¶ 77. The Ho
Provisional also expressly teaches the existence of
“the NDI of the subsequent transmission,” which may
be used if there has been no change in mode. See
EX1006 ¶ 53.¶
processing the subsequent The Ho Provisional discloses processing the
NDI as toggled from the subsequent NDI as toggled from the initial NDI
initial NDI irrespective of irrespective of a value of the subsequent NDI upon
a value of the subsequent determining that the scheduling information changed
NDI upon determining between the initial transmission and the subsequent
that the scheduling transmission for the HARQ process. See EX1002 ¶
information changed 77.
between the initial
transmission and the For example, the Ho Provisional discloses: “after a
subsequent transmission given HARQ process ID is used with a given RNTI
for the HARQ process. (e.g., SPS-C-RNTI), a subsequent transmission
performed for another RNTI (e.g., C-RNTI) can
always be treated as new transmission, irrespective of
the NDI.” See EX1006 ¶ 45. In other words, the Ho
Provisional teaches that there has been a change in
scheduling information between the initial
transmission and the subsequent transmission for the
HARQ process (as indicated by changing the RNTI
6
from SPS-C-RNTI used for SPS mode to C-RNTI
used for dynamic mode), and that, as a result of such
change, Ho Provisional teaches processing the
subsequent NDI as new irrespective of a value of the
subsequent NDI. See EX1002 ¶ 77. See also
EX1006, Fig. 5 (element 506 determining whether
“RNTI changed between transmissions?” and, if so,
then “Classify the subsequent transmission as new
independent of NDI” in element 508), ¶¶ 52-53,
Appx. A.
Relatedly, the Ho Provisional discloses that toggling

in dynamic mode indicates a new transmission. See
EX1006 ¶ 37 (“For dynamic scheduling, a new
transmission can be indicated when the NDI bit is
toggled compared to the last indication.”), Appx. A.
Thus, when the Ho Provisional teaches classifying the
dynamic transmission as new irrespective of a value
of the subsequent NDI, it is teaching processing the
subsequent NDI as toggled from the initial NDI
irrespective of a value of a subsequent NDI. See
EX1002 ¶ 77.
Dr. Rangan goes on to explain that the Ho Provisional is sufficiently detailed
to enable a POSITA to make and use the invention claimed in Ho claim 1. As a
preliminary matter, as Dr. Rangan notes, the teachings of the Ho Provisional and Ho
are substantially similar in all relevant respects.1 See EX1002 ¶ 78. Moreover, the
1
Petitioner has included citations to relevant disclosures from Ho and the Ho
Provisional throughout this Petition to demonstrate invalidity of the ’486 Patent. In
7
Ho Provisional provides block diagrams for the hardware that could be used to
construct the system of Ho, as well as software flow diagrams that could be
implemented with simple code (within the ordinary skill in the art) to operate the
hardware in the manner claimed in Ho claim 1. See EX1006 at Figs. 2, 5; EX1002 ¶
78.
Although Ho was listed on an IDS (by reference to its family member
WO2010/030806 A1) filed during prosecution of the ’486 Patent, it was never
substantively addressed by the Examiner. See EX1004 at 54-61, 205-11. The Board
applies a two-part framework to assess discretionary denials under 35 U.S.C. §
325(d): “(1) whether the same or substantially the same art previously was presented
to the Office or whether the same or substantially the same arguments previously
were presented to the Office; and (2) if either condition of [the] first part of the
framework is satisfied, whether the petitioner has demonstrated that the Office erred
re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (holding that a claim 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).
8
in a manner material to the patentability of challenged claims.” Advanced Bionics,
LLC v. MED-EL Elektromedizinische Gerate GmbH, IPR2019-01469, Paper 6 at 8-
9 (PTAB Feb. 13, 2020) (applying the Becton factors) (precedential). As discussed
below, Ho was neither discussed during prosecution nor cited on the face of the ‘486
Patent. For purposes of § 325(d), this is insufficient to find the art and arguments
herein are the same as, or substantially similar to, those previously presented. Intex
Recr. Corp. v. Team Worldwide Corp., IPR2018-00871, Paper 14 at 13 (PTAB Sept.
14, 2018) (declining to exercise discretion to deny under § 325(d) where references
had been initialed on an IDS, but not “substantively discussed during prosecution”).
The ’486 Patent has an earliest claimed priority date of September 19, 2008
based on the filing of a provisional application.2 See EX1001 at pp. 1-2 (Related
U.S. Application Data). Ho, which has a priority date of September 10, 2008, is
therefore prior art to the ’486 Patent.
2
To obtain the benefit of this alleged priority date, Patent Owner must come forward
with evidence demonstrating that the challenged claims are supported by the written
description of the provisional application. See Polaris Wireless, Inc. v. TruePosition,
Inc., Case IPR2013-00323, Paper 9 at 29 (P.T.A.B. Nov. 15, 2013); Nintendo of Am.
Inc. v. iLife Techs., Case IPR2015-00106, Paper 12 at 16 (P.T.A.B. Apr. 29, 2015).
9
B. Relief Requested
Petitioner requests cancellation of all claims of the ’486 Patent as invalid
under to 35 U.S.C. § 103. The specific grounds of the challenge are set forth below
and are supported by, among other things, the declaration of Dr. Rangan (EX1002).
10
Ground Claims Proposed Statutory Rejection
I 1-31 Obvious under § 103 over Ho in view of the

knowledge of a POSITA
IV. OVERVIEW OF THE TECHNOLOGY
The ’486 Patent concerns methods and apparatuses used in the context of E-
UTRA MAC Specification 36.321 v8.2.0 (see EX1001 at 10:8), which is part of the
4G LTE wireless standard that enables devices from different companies to
communicate with each other. See EX1002 ¶ 32
In a wireless communication network in accordance with the 4G LTE
standard, a BS and a mobile user device (e.g., a cell phone), also called User
Equipment (UE), communicate via signals transmitted wirelessly over the air.
Transmissions from the BS to the UE are referred to as downlink (DL) transmissions,
and transmissions from the UE to the BS are referred to as uplink (UL)
transmissions. See EX1002 ¶ 32; EX1001 at, e.g., 1:23-26.
In the 4G LTE standard, the BS schedules the times at which transmissions
with different UEs occur. See EX1002 ¶ 33. As the ’486 Patent recognizes, the 4G
LTE standard establishes two different protocols for scheduling transmissions
between the BS and UEs. See EX1001 at, e.g., 1:51-52 (“The LTE MAC
specification supports two different scheduling modes.”).
11
One such protocol is known as “semi-persistent scheduling” (SPS) mode. In
SPS mode, the BS sends a scheduling message to a UE to indicate the UE has been
allocated specific time intervals to send or receive a transmission. In the case of DL
transmission, the scheduling message is called a DL assignment, because the UE has
been assigned times to receive DL transmissions. The base then initiates new DL
transmissions to that UE only at the pre-scheduled times that were reserved for that
particular UE. See EX1001 at 1:55-58 (“Semi-persistent scheduling (SPS) is the
mode in which each initial (new) transmission is made on pre-assigned resources,
i.e. the radio resources are known in the time and frequency domain.”); EX1002 ¶
34. A substantially similar process applies to the UL case where the BS sends an
“uplink grant” scheduling message to the UE to allocate the times at which the UE
may transmit data. See EX1002 ¶ 34. This type of scheduling is referred to as semi-
persistent, because once the scheduling of transmissions is initially established, that
scheduling “persists” for a finite period of time; however, as discussed below,
retransmissions are not scheduled at the reserved, “persistent” time slots, so this
mode is only “semi” persistent. See EX1002 ¶ 35.
One benefit of this SPS mode is that bandwidth is not repeatedly used to tell
the UE when transmissions occur; this “set it and forget it” approach requires only
an initial scheduling message so the BS’s remaining bandwidth can be used for
12
transmitting actual data. See EX1001 at 1:59-62 (“The SPS technique thus makes
assignments … of data superfluous and thus saves control signaling resources.”).
The second protocol for scheduling transmissions in accordance with the 4G
LTE standard as described in the ’486 Patent is known as “dynamic scheduling.”
With dynamic scheduling, for each transmission (whether a new transmission or a
retransmission), the BS sends a scheduling message informing the phone of when a
transmission should occur, and then the transmission occurs at that time slot. See
EX1001 at 1:52-54 (“Dynamic scheduling is the mode in which each initial (new)
transmission of data is indicated via a control channel….”); EX1002 ¶ 36. This
approach helps avoid wasting resources if there is no data to transmit because
transmissions are only scheduled on as-needed basis; by contrast, because SPS mode
reserves time slots in advance, some reserved time slots might ultimately be wasted
if there is no data to transmit at the reserved time slot. See EX1002 ¶ 37. One issue
with dynamic mode, however, is repeatedly sending scheduling messages leads to
relatively higher overhead—i.e., more bandwidth used to transmit logistical
information and less bandwidth available to transmit user data. See EX1001 at 1:59-
64 (“The dynamic scheduling requires relatively much signaling overhead.”).
Because SPS mode and dynamic mode both have their respective advantages and
disadvantages, either mode may be used, and it is up to the BS to determine when it
would be most efficient to use one or the other at any given time. See EX1001 at,
13
e.g., 2:35-38 (“[A] certain HARQ process is not tied to either SPS or dynamic
scheduling.”); EX1002 ¶¶ 37-38.
In accordance with the 4G standard, scheduling messages are directed to
particular UEs by addressing the messages to a unique identifier associated with a
particular UE. See EX1002 ¶ 50. Those identifiers are known as Radio Network
Temporary Identifiers (RNTI), and a UE will have more than one RNTI. See EX1002
¶ 50. When a BS is addressing a scheduling message to a UE and the BS is in SPS
mode, the scheduling message will be addressed to the UE’s SPS C-RNTI. See
EX1001 at 2:10-1 (“For SPS a separate C-RNTI is used, the SPS C-RNTI.”). When
a BS is addressing a scheduling message to a UE and the BS is in dynamic mode,
the scheduling message addresses a UE’s normal C-RNTI, Temporary C-RNTI, or
RA-RNTI. See EX1001 at 3:64-67 (“The UE may use one of the following as an
indication that dynamically scheduled transmission will take place: the scheduling
message is addressed to the C-RNTI or to the Temporary C-RNTI, or to the RA-
RNTI….”).
Transmissions are not always received properly, however, for example
because the UE and BS do not have a good connection to one another. In accordance
with the 4G standard, a Hybrid Auto-Repeat reQuest (HARQ) process is used in
order to indicate whether a transmission was properly received or not. Specifically,
as established by the standard, in a HARQ process, after each transmission is sent
14
(regardless of whether such transmission was scheduled in SPS mode or in dynamic
mode), the receiver sends to the transmitter an acknowledgement (ACK), indicating
the transmission was properly received, or a negative acknowledgement (NACK),
indicating the transmission was not properly received. A NACK triggers a
retransmission of the previous transmission was not properly received. See EX1001
at 1:12-27 (“A HARQ transmission is characterized by transmitting a channel-
encoded (e.g., by using a Turbo Code) data unit to the receiver. The receiver replies
with a feedback signal that indicates either the successful reception (ACK) or the
unsuccessful reception (NACK)[.] In case of a received NACK, the data sender
retransmits the same or another so-called redundancy version of the same data unit”);
EX1002 ¶¶ 40-42.
Because both new transmissions and retransmissions are possible, the BS and
UEs must be able to tell whether a particular transmission is a new transmission or
a retransmission. As recognized by the ’486 Patent, the 4G standard describes a New
Data Indicator (NDI) flag to disambiguate this situation with a single bit—either 0
or 1—sent by the BS to the UE as part of the control information telling the UE when
to expect a transmission. See EX1001 at 2:47-51 (“The field size is currently 1 bit.
The NDI bit is an important indicator….”).
In dynamic mode, if the NDI flag is switched (known in the art as “toggled”)
relative to the most recent transmission—i.e., switched to 1 where it was previously
15
0, or vice versa—then the phone interprets that NDI toggling as signifying a new
transmission. If, on the other hand, the NDI is the same as the most recent
transmission, then the phone interprets that NDI as signifying a retransmission of
the previous transmission. See EX1001 at 2:53-57 (“For dynamic scheduling, … the
NDI bit is toggled with each new transmission. Thus the value can be either 0 or 1
for a new transmission and it will remain the same value for corresponding HARQ
retransmissions….”); EX1002 ¶ 43
In SPS mode, the NDI flag is handled differently. In SPS mode, the NDI is set
to 0 to begin new transmissions, and the NDI is set to 1 for any retransmission in
SPS mode. See EX1001 at 3:1-4 (“[I]t has been decided that SPS activation will use
the value NDI=0 and SPS retransmission will use the value NDI=1 in the
corresponding PDCCH signal.”); EX1002 ¶ 44. In short, therefore, as the ’486 Patent
recognized, “there exist two different interpretations of the NDI bit depending on”
whether SPS mode or dynamic mode is used. See EX1001 at 3:4-6.
In both dynamic and SPS modes, the scheduling message and NDI are
transmitted through a “physical downlink control channel” (PDCCH). The PDCCH
is simply the physical medium (electromagnetic waves) used to send the scheduling
information. See EX1001 at, e.g., 1:53-54, 2:24-26, 2:47-50; EX1002 ¶ 49.
16
V. OVERVIEW OF THE ‘486 PATENT
A. Claims
The ’486 Patent issued on February 6, 2018 from U.S. Application No.
15/386,355, filed on December 21, 2016. The ’486 Patent claims priority as a
continuation of U.S. Patent No. 9,532,368, which is a continuation of U.S. Patent
No. 8,908,630, which is a continuation of U.S. Patent No. 8,503,380, which was
filed on September 18, 2009.
B. Alleged Invention
The ’486 Patent admits the technology described in Section VI—including the
operation of dynamic and SPS modes of scheduling and how the NDI is used in each
mode—is prior art and part of the 4G standard. See EX1001 at 1:12-3:26 (referring
to what the “LTE MAC specification supports”), 10:8 (referencing a portion of the
standard, E-UTRA MAC Specification 36.321 v8.2.0); EX1002 ¶ 45.
The ’486 Patent purports to address the very narrow issue of how to handle the
NDI when transitioning from SPS mode to dynamic mode because in dynamic mode,
“the NDI has a different meaning [than for SPS mode, which] leads to problems.”
See EX1001 at 3:9-13; see also id. at 3:21-26 (“[T]he current specification would
lead to an erroneous behavior … when the first dynamically scheduled HARQ
transmission takes place in a process that has been used based on SPS resources
before.”); EX1002 ¶¶ 46-48.
17
For example, after a BS initiates SPS transmission with NDI=0, it may attempt
to send a SPS retransmission with NDI=1. However, if the UE does not receive the
retransmission, then the BS and the UE would be out of sync—the BS would believe
the most recent NDI equals 1, while the UE believes the most recent NDI equals 0.
If the BS then tries to send a new transmission in dynamic mode, the BS would send
an NDI with a value toggled relative to what the BS believes is the last NDI (i.e., 1)
and send an NDI=0. The UE, however, would perceive the NDI to be the same as
what the UE believes is the last NDI (i.e., 0), and would therefore misinterpret the
transmission as a retransmission. This potential lack of synchronization could
therefore defeat the UE’s ability to properly understand and organize the data it
receives. See EX1002 ¶ 46.
The ’486 Patent proposes a simple solution to this purported problem: when
transitioning from SPS to dynamic mode, the UE regards the NDI as toggled (i.e.,
as indicating a new transmission instead of a retransmission), regardless of the value
NDI flag. In other words, after the transition from SPS mode to dynamic mode, it
does not matter whether the NDI is 0 or 1 for the current transmission, what matters
is simply that the NDI is regarded as being switched from whatever came before it,
and therefore the transmission is presumed to be new. By adopting this approach,
the UE does not compare the NDI it received from the BS in dynamic mode (NDI=0)
to the UE’s last-known NDI from SPS mode (NDI=0 also), and therefore the UE
18
does not misinterpret the dynamic mode transmission as a retransmission; instead, it
disregards the NDI received in dynamic mode and simply interprets the transmission
as a new transmission—exactly as intended by the BS. See EX1002 ¶ 53.
The ’486 Patent considers this step to be the alleged point of novelty of its
purported invention. See EX1001 at 5:39-46 (“A solution to the problem of having
two different interpretations of the NDI bit depending on the C-RNTI value used for
addressing a User Equipment, UE, is to ignore the previous dynamically scheduled
NDI value … and to interpret it as new transmission attempt rather than a
retransmission.”). The rest of the claimed invention is simply the background setup
of prior art communications systems in accordance with the 4G standard. As
discussed below, however, the idea of ignoring the NDI value and treating it as
toggled for the first dynamic transmission (i.e., treating the first dynamic
transmission as a new data transmission) was taught by Ho; in fact, the concept was
well-known throughout the prior art. See, e.g., EX1013 at 6:15-21 (additional prior
art teaching: “[W]hen the UE sequentially receives the first NDI and the second NDI
for the same HARQ process, which are … addressed to its SPS C-RNTI and C-RNTI,
respectively, the UE … considers the transmission to be received by the HARQ
process as a first transmission of the HARQ process.”).
19
C. Prosecution History
The ’486 Patent was subject to only a single rejection, and that rejection was
for non-statutory double patenting over U.S. Patent No. 8,908,630 (one of the
claimed parents) and for failure to claim patentable subject matter under § 101. See
EX1004 at 54-61. After the applicant amended in response to these rejections (see
EX1004 at 179-89), the Office issued a Notice of Allowance. There was no
substantive examination. See EX1004 at 205-11.
D. Claim Construction
Claim terms “shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).”
37 C.F.R. § 42.100(b) (2018); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc). Petitioner submits that the Board does not need to construe any claim term
for purposes of resolving the issues presented by this Petition.
VI. ORDINARY SKILL
As explained by Dr. Rangan, a POSITA at the time of the ’486 Patent 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. Additional education might
compensate for less experience, and vice-versa. See EX1002 ¶¶ 62-68.
20
VII. OVERVIEW OF HO
Like the ’486 Patent, Ho’s teachings are in the context of wireless
transmissions between a BS and UEs operating in accordance with the 4G LTE
standard. See EX1005, e.g., ¶ 32. Also, like the ’486 Patent, Ho recognizes that in
the 4G LTE standard, dynamic and SPS scheduling can be used. See EX1005, e.g.,
¶ 38. Ho further recognizes that the 4G standard provides for the use of an NDI flag
in each of those two modes that can be used to indicate whether a transmission is a
new transmission or a retransmission of a previous transmission that was not
properly received. See EX1005, e.g., ¶ 39. Ho’s Figure 2 illustrates how the NDI is
handled according to the standard under these two modes:
21
As shown in Ho’s Figure 2, when in dynamic scheduling mode (indicated by the left
branch of Figure 2), the NDI is toggled from the previous NDI (indicated by the ~
symbol, which means the opposite of) if the transmission is new, while the NDI stays
the same as the previous NDI if the transmission is not new (i.e., a retransmission).
See EX1002 ¶ 110. On the other hand, when in SPS scheduling mode (indicated by
the right branch of Figure 2), the NDI is set to equal a value of 0 if the transmission
is new or a value of 1 if the transmission is not new. Ho also teaches, like the ’486
Patent, that these transmissions can be part of a HARQ process, as shown, for
example, by the HARQ Controller (element 124) in the UE on the right side of
Figure 1, which receives a transmission (indicated by the dashed arrow) from the BS
on the left:
22
See also EX1005, e.g., Figs. 4, 5, 7, ¶¶ 10, 42 (discussing transmissions in a HARQ
process).
Ho also recognizes that the use of the NDI differs between SPS mode and
dynamic mode, and that the transition between the two modes therefore requires
coordination to avoid synchronization issues. See EX1005, e.g., ¶ 8; EX1006 ¶¶ 37-
38, 42-43. As in the example provided above in Section VII.B, if the UE and BS are
out of sync regarding the value of the last NDI, when the system transitions to
dynamic mode, the UE will misinterpret whether a transmission is new or a
retransmission. See EX1006 ¶ 44; EX1002 ¶¶ 69-70.
Ho then proposes the exact same solution as claimed by the ’486 Patent:
NDI handler 126 can process a NDI associated with a

subsequent transmission performed for a different
scheduling scheme in a predefined manner (e.g., by
regarding an associated transmission as a new
transmission as opposed to a re-transmission)
irrespective of the value of the NDI provided with the
subsequent transmission.
See EX1005 ¶ 42. Like the ’486 Patent, Ho teaches that when transitioning from SPS
schedule mode to dynamic scheduling mode (“a subsequent transmission performed
for a different scheduling scheme”), the NDI is processed in a specific way, namely
“by regarding an associated transmission as a new transmission … irrespective of
the value of the NDI.” See id.; EX1002 ¶¶ 71-72. This is nearly verbatim identical
to the solution the ’486 Patent proposes, which it describes in Claim 1 as
23
“interpreting the scheduling message as scheduling a new data transmission
regardless of a value of a new data indicator (NDI) flag.” See EX1001 at cl. 1.
Because Ho, like the ‘486 Patent, discloses a method of dealing with the NDI
flag in a 3rd Generation Partnership Project (“3GPP”) long term evolution (“LTE”)
wireless network HARQ process, Ho is in the same field of endeavor as the ‘486
Patent. Compare EX1001, 1:51-2:2 (describing the different HARQ scheduling
modes), 2:47-3:13 (describing the NDI bit, its use in the different scheduling modes,
and the potential problems associated with the different use); with EX1005 ¶¶ 7-8
(describing that a HARQ process can be shared among dynamic and SPS scheduling
modes and can be associated with an NDI, the interpretation of which can be difficult
when switching scheduling modes). Ho is therefore analogous art to the ‘486 patent.
EX1002, ¶ 69.
24
VIII. GROUND I
A. Claims 1-31 Are Rendered Obvious Under § 103 Over Ho in View

of the Knowledge of a POSITA
1. Claim 1
a) Preamble3
Ho teaches to a POSITA a method for processing scheduling information in a
cellular communication system. For example, Ho states:
According to an aspect, a method is described herein. The

method can comprise identifying information relating to
an initial transmission for a Hybrid Automatic Repeat
Request (HARQ) process, the information comprising
scheduling information and an initial new data indicator
(NDI)….
EX1005 ¶ 10; see also EX1006, e.g., ¶ 53. Thus, Ho discloses “a method” that
includes “identifying information,” which a POSITA would recognize is a type of
processing, and the information to be processed (i.e., identified) comprises
scheduling information. See id.; EX1002 ¶ 79.
Ho also discloses this method is applied within a cellular communication
system. See EX1005, e.g., ¶ 7 (“To improve the accuracy of information transmitted
within a wireless communication system, various techniques for re-transmitting
3
The complete text of the corresponding portions of the claims is available in the
claim listing attached hereto as Appendix A.
25
information between communicating entities can be utilized in the event that an
initial transmission of the information is unsuccessful.”); see also EX1006, e.g., ¶
12; EX1002 ¶ 80.
b) Element [1.1]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 81. Figure 1 of Ho
depicts the receipt of information by a UE from a BS, as outlined in red:
See also EX1006, e.g., Fig. 4. Ho teaches this received information includes a
scheduling message. See EX1005, e.g., ¶¶ 71 (“Information … can be passed,
forwarded, or transmitted using any suitable means including [] message
passing….”), 10 (“the information comprising scheduling information”); see also
EX1006, e.g., ¶¶ 9, 25-27, 35, Appx. A; EX1002 ¶ 81.
26
Ho also teaches that a received scheduling message indicates an allocation of
transmission resources, for example a dynamic mode scheduling message specifies
transmission times: “respective transmissions between base station 110 and UE 120
can be based on various forms of resource scheduling performed by base station 110
with respect to UE 120. For example, … dynamic scheduling can be utilized,
wherein resources utilized for communication between base station 110 and UE 120
are dynamically configured on a per-transmission basis.” See EX1005 ¶ 38; see also
EX1006, e.g., ¶¶ 1, 35, 37, 39; EX1002 ¶ 82.
Ho also teaches receiving such scheduling messages for a transmission
associated with a first HARQ process of the UE. As shown in Figure 1 above, the
UE has a “HARQ Controller” (element 124) because its communications are in the
context of a HARQ process. Moreover, Ho teaches “receiving a transmission
corresponding to a HARQ process … at UE 120….” See EX1005 ¶ 37; see also
EX1006, e.g., ¶ 39; EX1002 ¶ 83. In general, Ho addresses those situations where
“a given HARQ process [is] shared among multiple types of scheduling such as, for
example, dynamic scheduling [] and semi-persistent scheduling.” See EX1005 ¶ 7;
see also EX1006, e.g., ¶ 35; EX1002 ¶ 83.
Ho also teaches scheduling messages indicating an allocation of transmission
resources for an uplink transmission, and also scheduling messages indicating an
allocation of transmission resources for a downlink transmission. See EX1005, e.g.,
27
¶ 34 (“[B]ase station 110 can engage in one or more downlink (DL, also referred to
as forward link (FL)) communications with UE 120, and UE 120 can engage in one
or more uplink (UL, also referred to as reverse link (RL)) communications with base
station 110.”), ¶ 35 (“In accordance with one aspect, respective DL transmissions
within system 100 can be conducted from base station 110 via a transmitter 116 to a
UE 120 via a receiver 122. While not illustrated in system 100, it should be
appreciated that respective UL transmissions could also occur from a transmitter at
UE 120 to a receiver at base station 110.”); see also EX1006, e.g., ¶ 36; EX1002 ¶
84. As shown, for example, in Figure 4 of Ho, the UE receives a UL grant scheduling
message indicating an allocation of transmission resources for an UL transmission:
28
As shown, for example, in Figure 5 of Ho, the UE can also receive a DL assignment
scheduling message indicating an allocation of transmission resources for a DL
transmission:
c) Element [1.2]
Ho teaches to a POSITA addressing a scheduling message to an identifier
associated with dynamic scheduling for the UE, where the most recent previous
transmission for the first HARQ process occurred on a semi-persistent scheduled
resource. See EX1002 ¶ 86. To begin, Ho teaches:
In accordance with one aspect, respective cell radio

network temporary identifiers (C-RNTIs) can be utilized
in association with a given HARQ process and can
correspond to respective scheduling schemes utilized for
respective transmissions. Thus, for example, a SPS C-
RNTI can be utilized in association with SPS
transmissions, and a distinct C-RNTI can be utilized in
association with dynamic transmissions.
29
See EX1005 ¶ 43; see also EX1006, e.g., ¶¶ 45, 52-53. In other words, Ho teaches
that a UE has two different types of identifiers: (1) a SPS C-RNTI, to be used for
SPS mode; and (2) distinct C-RNTI identifiers, to be used for dynamic mode. Thus,
Ho teaches that a dynamic scheduling message sent to the distinct C-RNTI (as
opposed to the SPS C-RNTI) is an identifier associated with dynamic scheduling for
the UE. See EX1002 ¶ 86. In Figures 4 and 5 of Ho shown above, the scheduling
messages are addressed to the C-RNTI, not the SPS C-RNTI (as illustrated in Ho’s
Figure 3, for example), where the C-RNTI is an identifier associated with dynamic
scheduling for the UE. See EX1002 ¶ 85.
Ho also teaches that a UE can transition from SPS mode to dynamic mode,
such that the most recent previous transmission for the first HARQ process (before
the dynamic mode transmission referenced in the preceding paragraph) would have
occurred on a semi-persistent scheduled (SPS) resource. See EX1005, e.g., ¶ 42
(“HARQ controller 124 and/or NDI handler 126 at UE 120 can monitor for changes
in scheduling utilized by base station 110. It can be appreciated that, upon changing
a utilized scheduling mechanism from SPS to dynamic scheduling….”); see also
EX1006, e.g., ¶ 40; EX1002 ¶ 87.
A scheduling message need not be addressed to an identifier associated with
dynamic scheduling; as discussed above, Ho teaches a scheduling message could be
addressed to a SPS C-RNTI, which is associated with SPS scheduling. See EX1005
30
¶ 43; see also EX1006, e.g., ¶¶ 39, 45, 52-53. Similarly, a UE need not transition
from SPS mode to dynamic mode; for example, Ho teaches two successive
transmissions, both in SPS mode. See EX1005 ¶ 40; see also EX1006, e.g., ¶ 37-40.
But Ho teaches that if the UE transitions from SPS mode to dynamic mode (i.e., the
most recent previous transmission for the first HARQ process before the dynamic
mode transmission occurred on a semi-persistent scheduled resource) as indicated
by the scheduling message being addressed to the distinct C-RNTI identifier
associated with dynamic scheduling, then elements 1.2 through 1.5 below will be
performed. Ho teaches that the “NDI handler 126 can process a NDI” in the specified
manner associated with that scenario, rather than “always” processes the NDI in that
manner regardless of what scheduling mode applies. See EX1005, e.g., ¶ 42; see also
EX1006, e.g., ¶¶ 44-45; EX1002 ¶ 88.
d) Element [1.3]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 89. For example,
Ho teaches:
[A]fter a given HARQ process identifier (ID) is used with

a given scheduling scheme, NDI handler 126 can process
a NDI associated with a subsequent transmission
performed for a different scheduling scheme in a
predefined manner (e.g., by regarding an associated
transmission as a new transmission as opposed to a re-
transmission) irrespective of the value of the NDI
provided with the subsequent transmission.
31
See EX1005 ¶ 42; see also id. at, e.g., ¶¶ 10-15, 40, 46 (similar teachings); see also
EX1006, e.g., ¶¶ 45, 52-53, Appx. A. Thus, Ho teaches interpreting the dynamic
mode scheduling message as scheduling a new data transmission regardless of the
value of the NDI in the dynamic mode scheduling message. See EX1002 ¶ 89. Ho
further teaches this occurs if the scheduling message is addressed to a dynamic- mode
identifier and the most recent previous transmission for the first HARQ process
occurred on a semi-persistent scheduled resource, as discussed above with regard to
element 1.2. See EX1002 ¶ 90 (stating that where these conditions are not true, other
approaches for handling the NDI flag may apply).
e) Element [1.4]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 91-92. Ho states,
for example, “[a] second aspect described herein relates to a wireless
communications apparatus, which can comprise a memory that stores data relating
to … a NDI.” See EX1005 ¶ 11; see also EX1006, e.g., ¶¶ 37, 59. A POSITA would
recognize, and find it obvious, that this memory would be used to store the value of
the NDI flag because, in dynamic mode, the NDI of the current transmission must
be compared to the NDI of the previous transmission in order to know whether the
transmission is new or a retransmission, so Ho teaches storing the NDI flag in order
to know whether the next dynamic transmission is new or a retransmission. See
EX1005 ¶ 39 (“[I]f new data is to be transmitted, an associated NDI bit can be
32
toggled at block 232 relative to the last NDI indication. Otherwise, the associated
NDI bit can remain unchanged from the previous indication as shown by block
234.”), Fig. 2; see also EX1006, e.g., ¶ 37; EX1002 ¶ 91.
As with Element 1.3, Ho further teaches this step occurs if the scheduling
message is addressed to a dynamic-mode identifier and the most recent previous
transmission for the first HARQ process occurred on a semi-persistent scheduled
resource, as discussed above with regard to element 1.2, so ongoing dynamic mode
transmissions are properly interpreted. See also EX1005 ¶ 39, Fig. 2; EX1006, e.g.,
¶ 37; EX1002 ¶ 92.
f) Element [1.5]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 93. Ho teaches
“processing the subsequent transmission as a transmission of new data,” which
would be in accordance with the scheduling message for a dynamic transmission.
See EX1005, cl. 4; see also EX1006, e.g., cl. 2; EX1002 ¶ 93. As Dr. Rangan
explains, a POSITA would understand, and find it obvious, that the purpose of
interpreting the scheduling message in accordance with element 1.3 above is to
actually receive (in the downlink case) or transmit (in the uplink case) the new
transmission for the first HARQ process in accordance with that scheduling
message. See EX1002 ¶ 93.
33
Ho further teaches this transmission would be received by the UE in
accordance with the scheduling message in the downlink case or transmitted by the
UE in accordance with the scheduling message in the uplink case. See EX1005 ¶ 51
(“FIG. 5 illustrates a system 500 for processing DL assignment or grant4 information
in accordance with various aspects.”), ¶ 48 (“UL grant information and/or other
similar information received by UE 120 can be processed by a grant processing
module 414 and/or any other suitable mechanism(s) associated with UE 120.”); see
also EX1006, e.g., cl. 2; EX1002 ¶ 94.
As with Elements 1.3 and 1.4, Ho further teaches this step occurs if the
scheduling message is addressed to a dynamic-mode identifier and the most recent
previous transmission for the first HARQ process occurred on a semi-persistent
scheduled resource, as discussed above with regard to element 1.2. See EX1005,
e.g., ¶¶ 10-15, 42, 46; see also EX1006, e.g., ¶¶ 44-45, 52-53; see EX1002 ¶ 95.
4
A POSITA would recognize that “assignment” is typically used to describe
downlink scheduling and “grant” is typically used for uplink scheduling. See, e.g.,
EX1014 §§ 5.3.1 (“DL Assignment reception”) and 5.4.1 (“UL Grant reception”).
34
2. Dependent Claim 2
a) Preamble5 and Element [2.1]
Ho teaches this claim element to a POSITA. See EX1002 ¶¶ 96-97. For
example, Ho teaches: “[i]dentify a downlink assignment for the given TTI received
on the PDCCH for the C-RNTI or Temporary C-RNTI.” See EX1005, Fig. 9
(element 904); see also EX1006, e.g., ¶ 42; EX1002 ¶ 97. This downlink assignment
received on the PDCCH is a scheduling message because it indicates an allocation
of transmission resources (e.g., times) for a downlink transmission to the UE, as this
is the purpose of a downlink assignment (i.e., to indicate to the UE that the BS is
allocating its transmission resources to transmit data to the UE at a particular time
on a particular frequency). See EX1005, e.g., ¶ 52 (“[R]espective assignments
transmitted by base station 110 on the PDCCH can be utilized to indicate if there
is a transmission on the DL shared channel (DL-SCH) … for UE 120.”), 44 (“a
transmission scheduler 112 and/or any other suitable components of base station
110 can be utilized to schedule a new SPS transmission to UE 120 at time t0”); see
also EX1006, e.g., ¶¶ 40, 42; EX1002 ¶ 97 (explaining that the Ho Provisional
teaches assigning downlink resources on the PDCCH).
5
The analysis of all dependent claims addressed herein hereby incorporates by
reference the analysis of the claims from which they depend.
35
b) Element [2.2]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 98. As a POSITA
would recognize and find obvious, in accordance with the LTE standard, a PDSCH
is simply the physical downlink channel over which data is transmitted, carrying the
information on a DL-SCH. See, e.g., EX1016 at 184; EX1017 at 1176, 123; EX1002
¶ 98. Thus, when Ho teaches at paragraph 52, “respective assignments transmitted
by base station 110 on the PDCCH can be utilized to indicate if there is a
transmission on the DL shared channel (DL-SCH) … for UE 120,” a POSITA would
recognize the PDSCH is the physical resource used to receive the new data
transmission on the DL-SCH for downlink transmission resources indicated by the
downlink assignment in the preceding step (element 2.1). See EX1016 at 1847;
EX1017 at 117, 123; EX1002 ¶¶ 98-99 (explaining that the Ho Provisional teaches
transmitting downlink data on the DL-PDSCH); see also EX1006, ¶¶ 29-30.
6
Dahlman was published and publicly available no later than Winter 2010. EX1018
¶9
7
Sesia was published and publicly available no later than Fall 2008. EX1018 ¶ 12.
36
a) Preamble and Element [3.1]
Ho teaches this claim element to a POSITA. See EX1002 ¶¶ 100-01. For
example, Ho teaches: “[i]dentify an uplink grant for the given TTI received on the
PDCCH for the C-RNTI or Temporary C-RNTI.” See EX1005, Fig. 8 (element 804);
see also EX1006, ¶ 42; EX1002 ¶ 101. This uplink grant received on the PDCCH
would indicate an allocation of transmission resources for an uplink transmission to
the UE, as this is the purpose of an uplink grant (i.e., to indicate to the UE that the
BS is allocating its transmission resources to receive data from the UE at a particular
time). See EX1005, e.g., ¶ 49 (“[I]n order for UE 120 to transmit on an UL shared
channel (UL-SCH) or the like, UE 120 can receive a corresponding UL grant,
which can be received by UE 120 dynamically on a Physical Downlink Control
Channel (PDCCH)….”); see also EX1006, e.g., ¶¶ 40, 42; EX1002 ¶ 101
(explaining the Ho Provisional indicates that the uplink grant is transmitted on the
PDCCH).
Additionally, Ho states, and a POSITA would understand and find it obvious,
that Ho’s relevant DL teachings are equally applicable to the UL transmission case.
See EX1005, e.g., ¶ 35 (“Further, while various aspects provided herein are
described with respect to a DL transmission from base station 110 to UE 120, it
should be appreciated similar techniques could be utilized for UL transmissions
37
and/or any other suitable transmissions within system 100.”); see also EX1006, e.g.,
Appx. A; EX1002 ¶ 102. Accordingly, it would be obvious to a POSITA to apply
the analysis of claim 2.1 above, which relates to the DL case, to the UL case of claim
3.1. See EX1005 Fig. 9 (element 904), ¶ 52; see also EX1006, e.g., ¶¶ 40, 42. A
POSITA would find it obvious to apply these teachings to the UL case at least
because there are no material differences between the DL case and UL case that
would prevent such application in a manner relevant to this element, and because a
POSITA would be motivated to be able to communicate in both directions in
accordance with Ho’s improved system. See EX1002 ¶ 102.
b) Element [3.2]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 103. In accordance
with the LTE standard, a POSITA would recognize and find obvious that the PUSCH
is simply the physical uplink channel over which data is transmitted, carrying the
information on a UL-SCH. See EX1016 at 378; EX1017 at 118, 123; EX1002 ¶ 103.
Thus, when Ho teaches at paragraph 49 that “in order for UE 120 to transmit on an
UL shared channel (UL-SCH) or the like, UE 120 can receive a corresponding UL
grant, which can be received by UE 120 dynamically on a Physical Downlink
Control Channel (PDCCH),” a POSITA would recognize the PUSCH is the physical
resource used to receive the new data transmission on the UL-SCH for uplink
transmission resources indicated by the uplink grant in the preceding step (element
38
3.1). See EX1016 at 378; EX1017 at 118, 123; EX1002 ¶ 103; see also EX1006,
e.g., ¶¶ 29, 42.
Likewise, as discussed above in the context of claim 3.1, Ho teaches its DL
teachings are applicable to the UL case, so a POSITA would find it obvious to apply
the DL teachings of claim 2.2 to the UL counterpart of claim 3.2. See EX1005 at ¶
52; see also EX1006, e.g., ¶¶ 29, 31; See EX1002 ¶ 104 (explaining that Ho
Provisional teaches that uplink data is transmitted on the UL-PDSCH, which a
POSITA would recognize to be synonymous with the PUSCH).
the NDI is toggled to indicate a new transmission in dynamic mode. See EX1005 ¶
39 (“[I]f new data is to be transmitted, an associated NDI bit can be toggled….”);
see also EX1006, e.g., ¶ 37; EX1002 ¶ 107. Thus, when Ho teaches interpreting the
scheduling message as scheduling a new data transmission regardless of a value of
an NDI flag in the scheduling message as described above with respect to element
1.3, it is teaching that the NDI flag is considered as being toggled regardless of the
value of the NDI flag. See EX1002 ¶ 107. Ho even expressly articulates its invention
in this manner. See EX1005, e.g., ¶ 10 (“The method can comprise identifying
information relating to an initial transmission for a Hybrid Automatic Repeat
Request (HARQ) process, the information comprising scheduling information and
39
an initial new data indicator (NDI); identifying information relating to a Subsequent
trans mission for the HARQ process, the information comprising scheduling
information and a Subsequent NDI; and processing the subsequent NDI as toggled
from the initial NDI irrespective of a value of the subsequent NDI upon
determining that the scheduling information changed between the initial
transmission and the Subsequent transmission for the HARQ process.”); see also
EX1006, e.g., cl. 5.
determining whether a subsequent dynamic mode message relates to a new
transmission or a re-transmission is based on whether a current value of the NDI flag
received in the subsequent message is toggled (for a new transmission) or not (for a
retransmission). See EX1005, e.g., ¶ 39 (“[I]f an NDI bit is initially equal to 0,
retransmissions can be indicated as long as the NDI bit remains equal to 0.
Alternatively, a new transmission can be indicated by toggling the NDI bit to
1….”); see also EX1006, e.g., ¶ 37; EX1002 ¶ 110. Ho also teaches successive
transmissions can be made in dynamic mode. See EX1005 ¶ 39 (“[A] new
transmission can be indicated by toggling the NDI bit to 1, after which
retransmissions of the new transmission can be indicated until the NDI bit is again
toggled to 0.”); see also EX1006, e.g., ¶ 37; EX1002 ¶ 110. Thus, Ho teaches a
40
second scheduling message received for the dynamically scheduled transmission for
the first HARQ process would be interpreted in this manner, after receiving or
transmitting the new data transmission for the first HARQ process on the
dynamically scheduled resource in accordance with element 1.5 above. See EX1002
¶ 110.
Ho teaches this claim element to a POSITA. See EX1002 ¶ 111. As a
POSITA would recognize, an NDI is “toggled” if it is the opposite of the NDI it is
compared to. See EX1002 ¶ 113; see also EX1005 ¶ 39 (“For example, if an NDI
bit is initially equal to 0, retransmissions can be indicated as long as the NDI bit
remains equal to 0. Alternatively, a new transmission can be indicated by toggling
the NDI bit to 1….”); see also EX1006, e.g., ¶ 37. Accordingly, in performing the
method of claim 5, Ho teaches to a POSITA comparing the stored value of the NDI
flag with the current value of the NDI flag received in the second scheduling
message for the dynamically scheduled transmission to recognize if the NDI flag is
toggled, as there would seem to be no other way to recognize if the NDI flag is
toggled and as that is the point of storing the NDI of the first dynamic transmission
(in accordance with element 1.4) in the first place. See EX1002 ¶ 113. This element
is thus obvious.
41
7. Independent Claim 7
a) Preamble
See Claim 1 Preamble. See EX1002 ¶ 114.
b) Element [7.1]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 115; see also
Claim 1.1. As discussed above, Figure 1 of Ho depicts receipt of information by the
UE from a BS, as outlined in red:
Ho teaches this received information includes a scheduling message for a
dynamically scheduled transmission. See EX1005 ¶ 38; see also EX1006, e.g., ¶¶
37, 39; EX1002 ¶ 116. Ho also teaches this scheduling message for a dynamically
scheduled transmission can be an uplink grant. See EX1005, e.g., ¶ 48 (“In one
42
example, system 400 can include a base station 110, which can transmit respective
information, such as UL grants or the like, to UE 120. In another example, UL grant
information and/or other similar information received by UE 120 can be processed
by a grant processing module 414 and/or any other suitable mechanism(s)
associated with UE 120.”); see also EX1006, e.g., ¶¶ 36-37, Appx. A; EX1002 ¶ 117.
Ho also teaches the uplink grant (in this case, the dynamic mode scheduling
message) could be for a transmission associated with a first HARQ process of the
UE. As shown in Figure 1 above, the UE has a “HARQ Controller” (element 124)
because its communications are in the context of a HARQ process. Moreover, Ho
teaches “receiving a transmission corresponding to a HARQ process… at UE
120….” See EX1005 ¶ 37; see also EX1006, e.g., ¶ 36, Appx. A; EX1002 ¶ 118.
Ho also teaches the uplink grant includes an NDI flag. See EX1005, e.g., ¶ 39
(“In one example, in order for UE 120 to determine whether a re-transmission or a
new transmission is occurring for a given HARQ process, an NDI indicative of either
new data or a retransmission can be provided to HARQ controller.”); see also
EX1006, e.g., ¶¶ 37, 39, Appx. A; EX1002 ¶ 119. As a POSITA would expect, Ho
teaches receiving an NDI flag with the uplink grant for the dynamic mode scheduling
message because the NDI is used by the UE to determine whether the transmission
is new or a retransmission. See EX1005 ¶ 37 (“[A] new data indicator (NDI) can be
utilized for respective HARQ processes in order to enable UE 120 and/or another
43
suitable receiver to distinguish original transmissions of data from re-transmissions.
For example, upon receiving a transmission corresponding to a HARQ process, a
NDI handler 126 at UE 120 can identify a NDI provided within the transmission and
determine whether the transmission corresponds to new data or re-transmitted
databased on the NDI.”); see also EX1006, e.g., ¶¶ 36-39; EX1002 ¶ 119.
c) Element [7.2]
Claim 5. This element is simply the standard operation of dynamic mode, as the ’486
Patent admits was known in the art. See EX1001 at 2:53-57. Ho teaches that, when
a dynamically scheduled transmission is followed by another dynamically scheduled
transmission for the first HARQ process, the transmission is determined to be a new
transmission or a re-transmission based on whether the NDI flag for the second
transmission is toggled relative to the first. See EX1005, e.g., ¶ 39 (“[I]f new data is
to be transmitted, an associated NDI bit can be toggled at block 232 relative to the
last NDI indication. Otherwise, the associated NDI bit can remain unchanged from
the previous indication….”), Fig. 2 (substantially similar teaching); see also
EX1006, e.g., ¶¶ 37, 39; EX1002 ¶ 120.
Ho further teaches this process of determining a new transmission or
retransmission applies in the context of uplink grants and is not limited to downlink
assignments. See EX1005, e.g., ¶ 39 (“[I]n order for UE 120 to determine whether
44
a re-transmission or a new transmission is occurring for a given HARQ process, an
NDI indicative of either new data or a retransmission can be provided to HARQ
controller 124 and/or NDI handler 126 at UE 120 for the UL and/or DL. … This is
shown in further detail by diagram 200 in FIG. 2.”); see also EX1006, e.g., ¶ 36,
Appx. A; EX1002 ¶ 121.
d) Element [7.3]
Claim 1.2-1.4. For example, Ho teaches:
[A]fter a given HARQ process ID is used with a given

RNTI (e.g., SPS C-RNTI [for SPS mode]), NDI handler
126 can utilize a new transmission handler 314 and/or any
other suitable means to regard a subsequent transmission
performed for another RNTI (e.g., C-RNTI) [which is
used for dynamically scheduled transmissions] as a new
transmission irrespective of the NDI.
EX1005 ¶ 46; see also id. at, e.g., ¶¶ 42, 10-15 (substantially similar
teachings); see also EX1006, e.g., ¶¶ 45, 52-53. Ho teaches this approach
specifically applies when the most recent previous transmission for the first HARQ
process occurred on a SPS resource and has therefore switched to the current
dynamic mode. See EX1005 ¶ 42 (“It can be appreciated that, upon changing a
utilized scheduling mechanism from SPS to dynamic scheduling or vice versa, base
station 110 will provide a new transmission as the first transmission following the
scheduling change.”); see also EX1006, e.g., ¶¶ 45, 52-53; EX1002 ¶ 122.
45
Ho further teaches that determining the dynamically scheduled transmission
for the first HARQ process relates to a new transmission regardless of the value of
the NDI flag for that NDI specifically applies to uplink grants. See EX1005, e.g.,
Fig. 8 (“Consider an NDI associated with the uplink grant to have been toggled
regardless of the value of the NDI if the uplink grant is for the C-RNTI and [] an
uplink grant has been received for the SPS C-RNTI [for SPS mode] … for a
substantially identical HARQ process.”); see also EX1006, e.g., ¶¶ 36, 45, Appx. A;
EX1002 ¶ 123.
Ho also teaches storing the value of the NDI flag. See Claim 1.4.
e) Element [7.4]
Claim 1.5. As discussed in the context of element 1.5, Ho teaches “processing the
subsequent transmission as a transmission of new data,” which would be in
accordance with the scheduling message for a dynamic transmission. See EX1005,
cl. 4; see also EX1006, e.g., cl. 2; EX1002 ¶ 125. The purpose of interpreting the
scheduling message in accordance with element 7.2 and 7.3 above is to transmit the
new transmission for the first HARQ process in accordance with that scheduling
message. See EX1002 ¶ 125.
Ho further teaches this transmission could be transmitted by the UE in
accordance with the scheduling message in the uplink case. See EX1005 ¶¶ 48 (“UL
46
grant information and/or other similar information received by UE 120 can be
processed by a grant processing module 414 and/or any other suitable mechanism(s)
associated with UE 120.”), 51; see also EX1006, e.g., cl. 2; EX1002 ¶ 125.
As with Elements 7.2 and 7.3, Ho further teaches this step can occur when there
is an uplink grant for a dynamically scheduled transmission, and the most recent
previous transmission occurred on a dynamically scheduled resource or the most
recent previous transmission occurred on a SPS resource. See EX1005, e.g., ¶¶ 10-
15, 39, 42, 46, Fig. 8; see also EX1006, e.g., ¶¶ 36-37, 39, 45, 52-53, Appx. A;
EX1002, ¶ 125.
Ho teaches this claim element to a POSITA. See EX1002 ¶ 126; See also
Claim 1.2. As discussed above, Ho teaches that a “distinct C-RNTI [i.e., identifier]
can be utilized in associated with dynamic transmissions,” as opposed to a SPS C-
RNTI which is the identifier used for SPS mode. See EX1005 ¶ 43; See also EX1006,
e.g., ¶¶ 39-40. Thus, Ho teaches that receiving uplink grants for dynamically
scheduled transmissions would be addressed to an identifier for the UE associated
with dynamically scheduled transmissions, namely a C-RNTI. See EX1002 ¶ 128.
the use of C-RNTI and temporary C-RNTI as identifiers, as well as a SPS C-RNTI
47
identifier. See EX1005 ¶ 50 (“UE 120 has been configured to utilize a C-RNTI, a
SPS C-RNTI, and/or a Temporary C-RNTI….”); see also EX1006, e.g., ¶¶ 39-40.
Ho further teaches that determining whether the uplink grant is associated
with dynamic scheduling is assessed by whether the uplink grant is addressed to a
C-RNTI or temporary C-RNTI, as opposed to being addressed to a SPS C-RNTI,
which is used for SPS mode. See EX1005 ¶ 43 (“In accordance with one aspect,
respective cell radio network temporary identifiers (C-RNTIs) can be utilized in
association with a given HARQ process and can correspond to respective scheduling
schemes utilized for respective transmissions. Thus, for example, a SPS C-RNTI can
be utilized in association with SPS transmissions, and a distinct C-RNTI can be
utilized in association with dynamic transmissions.”); see also EX1006, e.g., ¶¶ 39,
44- 46; See EX1002 ¶¶ 131-32.
Ho teaches this claim element to a POSITA. See EX1002 ¶ 134. For example,
Ho states:
[B]ase station 110 can conduct a first transmission at time

t0 using SPS with NDI=0. Next, at time t1, base station
110 can schedule a SPS retransmission of the initial
transmission and set NDI=1 to indicate the retransmission.
EX1005 ¶ 40; see also EX1006, e.g., ¶ 40, Appx. A. Thus, Ho teaches receiving
multiple SPS scheduling messages, each of which including an NDI, where the first
48
SPS message has an NDI=0 and the second message has an NDI=1. Ho further
teaches both of these SPS messages are for the first HARQ process that later receives
the dynamically scheduled message in accordance with claim 7. See EX1005 ¶ 40
(“Returning to system 100, it can be appreciated that, for a HARQ process shared
for semi-persistent and dynamic scheduling….”); see also EX1006, e.g., ¶ 40, Appx.
A; EX1002 ¶ 134.
b) Element [10.2]
that, in SPS mode, a new transmission (i.e., an activation of pre-assigned SPS
transmission resources) is indicated with a fist value of NDI=0. See EX1005 ¶ 39
(“[I]f it is determined at block 212 that SPS is utilized, an associated NDI can be set
pursuant to decision block 224 such that a retransmission is indicated with NDI-1
(e.g., as shown at block 238) and a new transmission is indicated with NDI-0 (e.g.,
as shown at block 236).”), Fig. 2; see also EX1006, e.g., ¶¶ 38-39; EX1002 ¶ 135.
c) Element [10.3]
that, in SPS mode, a retransmission of a previous SPS data transmission is indicated
with a second value of NDI=1. See EX1005 ¶ 39 (“[I]f it is determined at block 212
that SPS is utilized, an associated NDI can be set pursuant to decision block 224
such that a retransmission is indicated with NDI-1 (e.g., as shown at block 238) and
49
a new transmission is indicated with NDI-0 (e.g., as shown at block 236).”), Fig. 2;
see also EX1006, e.g., ¶ 38; EX1002 ¶ 136.
d) Element [10.4]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 137. As discussed
above in the context of, for example, element 1.5, the purpose of interpreting the
scheduling messages in accordance with elements 10.2 and 10.3 is to receive (in the
downlink case) or transmit (in the uplink case) the transmission in accordance with
that scheduling message. See EX1002 ¶ 137. Ho therefore teaches “conduct[ing] a
first transmission” in this manner. See EX1005 ¶ 40; see also EX1006, e.g., Appx.
A. Ho thus renders obvious receiving or transmitting a new transmission or
retransmission on the pre-assigned SPS transmission resources in accordance with
each SPS scheduling message because that is the purpose of going through the
process of interpreting the SPS scheduling messages in the way Ho teaches. See
EX1002 ¶ 137.
Ho also teaches the SPS transmissions (whether new or a retransmission)
could either be received (in the downlink case) or transmitted (in the uplink case).
See EX1005 ¶ 51 (“FIG. 5 illustrates a system 500 for processing DL assignment or
grant information in accordance with various aspects. System 500 can include a
base station 110, which can transmit DL assignments and/or other suitable
information to a UE 120.”), ¶ 48 (“UL grant information and/or other similar
50
information received by UE 120 can be processed by a grant processing module 414
and/or any other suitable mechanism(s) associated with UE 120.”); see also EX1006,
e.g., ¶¶ 35-36; EX1002 ¶ 138.
Claim 6. As discussed above, Ho teaches in the context of successive dynamically
scheduled messages determining whether a dynamically scheduled transmission
relates to a new transmission or a retransmission is based on whether a current value
of the NDI flag received in the subsequent message is toggled (for a new
transmission) or not (for a retransmission). See EX1005, e.g., ¶ 39 (“[I]f an NDI bit
is initially equal to 0, retransmissions can be indicated as long as the NDI bit
the NDI bit to 1….”); see also EX1006, e.g., ¶ 37; EX1002 ¶ 141. Thus, Ho teaches
determining by comparing a current value of the NDI flag for a dynamically
scheduled transmission to a stored value of the NDI flag received in a previous
dynamically scheduled transmission. See EX1002 ¶ 141.
Ho also teaches this toggling comparison applies to the uplink case (as well
as the downlink case) for dynamic transmissions. See EX1005, e.g., 39 (“[I]n order
for UE 120 to determine whether a re-transmission or a new transmission is
occurring for a given HARQ process, an NDI indicative of either new data or a
51
retransmission can be provided to HARQ controller 124 and/or NDI handler 126 at
UE 120 for the UL and/or DL.”); see also EX1006, e.g., ¶¶ 35-37; EX1002 ¶ 142.
a) Preamble
See Claim 7 preamble. See EX1002 ¶ 143.
b) Element [12.1]
Ho teaches this claim element to a POSITA. EX1002 ¶ 144; see also Claim
7.1.
As discussed above, Figure 1 of Ho depicts the transmission of information
from a BS to the UE such that the UE receives information, as outlined in red:
Ho teaches this information received by the UE includes a scheduling message
for a dynamically scheduled transmission. See EX1005 ¶ 38; see also EX1006, e.g.,
¶¶ 35-37; EX1002 ¶¶ 145-47.
52
Ho teaches this scheduling message for a dynamically scheduled
transmission can be a downlink assignment. See EX1005, e.g., ¶ 34 (“[B]ase station
110 can engage in one or more downlink (DL, also referred to as forward link (FL))
communications with UE 120….”); see also EX1006, e.g., ¶¶ 35-36; EX1002 ¶ 147.
Ho teaches the downlink assignment (in this case, the dynamic mode scheduling
message) would be for a transmission associated with a first HARQ process of
the UE. As shown in Figure 1 above, the UE has a “HARQ Controller” (element
124) because its communications are in the context of a HARQ process. Moreover,
Ho teaches “receiving a transmission corresponding to a HARQ process… at UE
120….” See EX1005 ¶ 37; see also EX1006, e.g., ¶¶ 35-36; EX1002 ¶ 148.
Ho also teaches the downlink assignment would include an NDI flag. See
EX1005, e.g., ¶ 39 (“In one example, in order for UE 120 to determine whether a re-
transmission or a new transmission is occurring for a given HARQ process, an NDI
indicative of either new data or a retransmission can be provided to HARQ
controller.”); see also EX1006, e.g., ¶¶ 36-39; EX1002 ¶ 149.
Claim 12 is also the DL counterpart to UL claim 7. Because as discussed
above Ho states its UL teachings can be applied to the DL case, a POSITA would
find it obvious to apply the teachings of Ho cited in the context of UL claim 7 to
meet this DL claim element. See EX1005 ¶¶ 37-39, 48; see also EX1006, e.g., ¶¶
36-37, 39, Appx. A; EX1002 ¶ 150.
53
c) Element [12.2]
Claim 7.2. This element is simply the standard operation of dynamic mode, as the
’486 Patent admits was known in the art. See EX1001 at 2:53-57. Ho teaches that,
when a dynamically scheduled transmission is followed by another dynamically
scheduled transmission for the first HARQ process, the transmission is determined
to be a new transmission or a re-transmission based on whether the NDI flag for the
second transmission is toggled relative to the first. See EX1005, e.g., ¶ 39 (“[I]f new
data is to be transmitted, an associated NDI bit can be toggled at block 232 relative
to the last NDI indication. Otherwise, the associated NDI bit can remain
unchanged from the previous indication….”), Fig. 2 (substantially similar
teaching); see also EX1006, e.g., ¶¶ 37-39; EX1002 ¶ 151.
Ho further teaches this process of determining a new transmission or
retransmission applies in the context of downlink assignments. See EX1005, e.g., ¶
39 (“[I]n order for UE 120 to determine whether a re-transmission or a new
transmission is occurring for a given HARQ process, an NDI indicative of either
new data or a retransmission can be provided to HARQ controller 124 and/or NDI
handler 126 at UE 120 for the UL and/or DL. … This is shown in further detail by
diagram 200 in FIG. 2.”); see also EX1006, e.g., ¶ 36; EX1002 ¶ 152.
54
Additionally, as discussed above, it would be obvious to a POSITA to apply
the teachings of Ho cited in the context of UL claim 7 to meet this DL claim element.
See EX1005 ¶ 39, Fig. 2; see also EX1006, e.g., ¶¶ 36-37, 39, Appx. A; EX1002 ¶
153.
d) Element [12.3]
Claim 7.3. For example, Ho teaches:
[A]fter a given HARQ process ID is used with a given

RNTI (e.g., SPS C-RNTI [for SPS mode]), NDI handler
126 can utilize a new transmission handler 314 and/or any
other suitable means to regard a subsequent transmission
performed for another RNTI (e.g., C-RNTI) as a new
transmission irrespective of the NDI.
EX1005 ¶ 46; see also id. at, e.g., ¶¶ 42, 10-15 (substantially similar
teachings); see also EX1006, e.g., ¶¶ 45, 52-53. Ho teaches this approach
specifically applies when the most recent previous transmission for the first HARQ
process occurred on a SPS resource and has therefore switched to the current
dynamic mode. See EX1005 ¶ 42 (“upon changing a utilized scheduling
mechanism from SPS to dynamic scheduling or vice versa, base station 110 will
provide a new transmission as the first transmission following the scheduling
change.”); see also EX1006, e.g., ¶¶ 45, 52-53; EX1002 ¶ 154.
Ho further teaches that determining the dynamically scheduled transmission
for the first HARQ process relates to a new transmission regardless of the value of
55
the NDI flag for that NDI specifically applies to downlink assignments. See EX1005,
e.g., Fig. 9 (“Consider an NDI associated with the downlink assignment to have
been toggled regardless of the value of the NDI if the downlink assignment is for
the C-RNTI [dynamic mode] and [] a downlink assignment has been received for the
SPS C-RNTI [SPS mode] … for a substantially identical HARQ process.”); see also
EX1006, e.g., ¶¶ 36, 45; EX1002 ¶ 155.
Ho teaches storing the value of the NDI flag. See Claim 1.4.
See EX1005 ¶¶ 10-15, 42, 46, Fig. 8; see also EX1006 ¶¶ 36, 45, 52-53, Appx. A;
EX1002 ¶ 157.
e) Element [12.4]
Claims 1.5, 7.4. Ho teaches “processing the subsequent transmission as a
transmission of new data” when the most recent previous transmission for the first
HARQ process occurred on a SPS resource. See EX1005, cl. 4; see also EX1006,
e.g., cl. 2; EX1002 ¶ 158. But, if the most recent previous transmission occurred on
a dynamically scheduled resource, then the transmission is processed in accordance
with the standard approach to handling NDI information in dynamic mode. See
EX1005, e.g., ¶ 39; see also EX1006, e.g., ¶¶ 37, 39; EX1002 ¶ 158. Thus, Ho
56
renders obvious transmitting the new transmission or retransmission in accordance
with each downlink assignment because that is the reason to go through the process
of interpreting the downlink assignment in the way Ho teaches. See EX1002 ¶ 158.
See EX1005, cl. 4, ¶ 48; see also EX1006, cl. 2, ¶¶ 37, 39, Appx. A; EX1002 ¶ 159.
Claim 8. As discussed above, Ho teaches a “distinct C-RNTI [i.e., identifier] can be
utilized in associated with dynamic transmissions,” as opposed to a SPS C- RNTI
which is the identifier used for SPS mode. See EX1005 ¶ 43; see also EX1006, e.g.,
¶¶ 39-40. Thus, Ho teaches that receiving downlink assignments for dynamically
scheduled transmissions would be addressed to an identifier for the UE that is
associated with dynamically scheduled transmissions, namely a C-RNTI. See
EX1002 ¶ 162.
Ho teaches this claim element to a POSITA. EX1002 ¶ 163; see also Claim 9.
As discussed above, Ho teaches the use of C-RNTI and temporary C-RNTI as
identifiers. See EX1005 ¶ 50; see also EX1006, e.g., ¶¶ 39-40.
57
Ho further teaches that determining whether the downlink assignment is
associated with dynamic scheduling is assessed by whether the downlink assignment
is addressed to a C-RNTI or temporary C-RNTI, as opposed to being addressed to a
SPS C-RNTI, which is used for SPS mode. See EX1005 ¶ 43; see also EX1006, e.g.,
¶¶ 44-46; See EX1002 ¶ 166.
Ho teaches this claim element to a POSITA. See Claim 10 (identical
dependent claim elements). See EX1002 ¶¶ 167-69.
Claim 11. As discussed above, Ho teaches in the context of successive dynamically
scheduled messages determining whether a dynamically scheduled transmission
relates to a new transmission or a retransmission based on whether a current value
of the NDI flag received in the subsequent message is toggled (for a new
transmission) or not (for a retransmission). See EX1005, e.g., ¶ 39 (“[I]f an NDI bit
is initially equal to 0, retransmissions can be indicated as long as the NDI bit
the NDI bit to 1….”); see also EX1006, e.g., ¶ 37; EX1002 ¶ 172. Thus, Ho teaches
determining new transmissions versus retransmissions by comparing a current value
of the NDI flag for a dynamically scheduled transmission to a stored value of the
58
NDI flag received in a previous dynamically scheduled transmission. See EX1002 ¶
172.
Ho teaches this toggling comparison applies to the downlink case for dynamic
transmissions. See EX1005, e.g., ¶ 39; see also EX1006, e.g., ¶¶ 35-37; EX1002 ¶
173.
a) Preamble
Ho discloses a mobile communication apparatus in the form of a UE. See
EX1005, e.g., ¶ 30 (“Furthermore, various aspects are described herein in connection
with a wireless terminal and/or a base station. … A wireless terminal can also be
called a … mobile station, mobile, … user device, or user equipment (UE).”); see
also EX1006, e.g., ¶ 34, Fig. 1; EX1002 ¶ 174.
b) Element [17.1]
Ho teaches this claim element to a POSITA. See EX1002 ¶ 175. First, Ho
teaches that a UE is a transceiver, which a POSITA would understand is a device
that can both transmit and receive information. See, e.g., EX1015 (Oxford
Dictionary Of Computing) at 524. As shown, for example, in Figure 12 as annotated
below, the mobile phones (UEs) in Ho are able to both transmit and receive
information relative to the access point, and therefore the UEs are transceivers:
59
See also EX1006, e.g., ¶¶ 14, 34, Fig. 1; EX1002 ¶ 175.
Ho teaches the transceiver would be configured to receive a scheduling
message indicating an allocation of transmission resources for an uplink or downlink
transmission associated with a first HARQ process of the mobile communication
apparatus. See Claim 1.1; EX1002 ¶ 176.
c) Element [17.2]
that the UEs have processors, as indicated, for example, at element 132 of Figure 1.
See also EX1005 ¶ 11 (“The wireless communications apparatus can further
comprise a processor configured to….”); see also EX1006, e.g., ¶ 50, cl. 5; EX1002¶
177.
d) Element [17.3]
See Claim 1.2. See EX1002 ¶ 178.
e) Element [17.4]
See Claims 1.3 and 1.4. See EX1002 ¶ 179.
60
f) Element [17.5]
See Claim 17 Preamble and Claim 2.1. See EX1002 ¶¶ 181-82.
b) Element [18.2]
See Claim 17 Preamble and Claim 3.1. See EX1002 ¶¶ 184-85.
b) Element [19.2]
See Claims 9 (UL case), 14 (DL case). See EX1002 ¶¶ 187-88.
See Claims 2 (DL case), 3 (UL case). See EX1002 ¶¶ 189-90.
a) Preamble
See Claim 17 preamble. See EX1002 ¶ 191.
b) Element [22.1]
See Claims 7.1; see also Claim 17.1 (similar teachings). See EX1002 ¶ 192.
61
c) Element [22.2]
See Claim 17.2. See EX1002 ¶ 193.
d) Element [22.3]
e) Element [22.4]
f) Element [22.5]
See Claim 8. See EX1002 ¶¶ 197-98.
See Claim 9. See EX1002 ¶¶ 199-200.
a) Element [25.1]
See Claim 17 preamble and Claim 10.1. See EX1002 ¶¶ 201-02.
b) Element [25.2]
See Claim 17.2. See EX1002 ¶¶ 203.
c) Element [25.3]
See Claim 10.2. See EX1002 ¶¶ 204.
d) Element [25.4]
See Claim 10.3. See EX1002 ¶ 205.
62
e) Element [25.5]
See Claim 10.4. See EX1002 ¶ 206.
See Claim 11. See EX1002 ¶¶ 207-08.
a) Preamble
See Claims 12 Preamble and 17 Preamble. See EX1002 ¶ 209.
b) Element [27.1]
See Claims 12.1; see also Claim 17.1 (related analysis of a transceiver
configured to receive a DL assignment scheduling message). See EX1002 ¶ 210.
c) Element [27.2]
See Claim 17.2. See EX1002 ¶ 211.
d) Element [27.3]
See Claim 12.2. See EX1002 ¶ 212.
e) Element [27.4]
See Claim 12.3. See EX1002 ¶ 213.
f) Element [27.5]
See Claim 12.4. See EX1002 ¶ 214.
See Claim 13. See EX1002 ¶¶ 215-16.
See Claim 14. See EX1002 ¶¶ 217-18.

63
See Claims 25; see also Claim 15 (method counterpart). See EX1002 ¶¶ 219-
20.
See Claim 16. See EX1002 ¶¶ 221-22.
IX. NO BASIS EXISTS FOR DISCRETIONARY DENIAL
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. v. Canon Kabushiki Kaisha,
IPR2016-01357, Paper 19 at 15-19 (September 6, 2017) (precedential).
Samsung previously challenged the ‘486 Patent in IPR2021-00536
(“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 ’486 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
64
roadblock for the Board to issue a final determination within the statutory one-year
limit.
X. CONCLUSION
Petitioner requests institution of an IPR and cancellation of the Challenged
Claims.
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
65
CERTIFICATION OF COMPLIANCE
This Petition complies with the type-volume limitations as mandated in 37
C.F.R. § 42.24, totaling 13,981 words. Counsel has relied upon the word count
feature provided by Microsoft Word.
Dated: January 25, 2022

66
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a copy of the foregoing document with
accompanying Exhibits 1001 – 1018, as listed in Petitioner’s Exhibit List on page iv
of this document, was served on January 25, 2022, via overnight delivery directed
to the attorney/agent of record for the patent as identified on USPTO PAIR and
associated with USPTO Customer No. 27045 at the following address:
ERICSSON INC.
6300 Legacy Drive
M/S EVR 1-C-11
Plano, TX 75024

67
XI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
A. Real Party-In-Interest
Apple Inc. is the real party-in-interest.
B. Related Matters
The ‘486 Patent was previously challenged in the following proceeding, now
terminated:
• Samsung v. Ericsson, IPR2021-00536
C. 37 C.F.R. §42.8(b)(3): Counsel Information
Lead Counsel Back-Up Counsel
Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
[email protected] [email protected]
[email protected]
Postal and Hand-Delivery Address:
Postal and Hand-Delivery Address: ERISE IP, P.A.
ERISE IP, P.A. 5600 Greenwood Plaza Blvd., Ste. 200
7015 College Blvd., Ste. 700 Suite 200
Overland Park, Kansas 66211 Greenwood Village, CO 80111
Telephone: (913) 777-5600 Telephone: (913) 777-5600
Fax: (913) 777-5601 Fax: (913) 777-5601
Jennifer C. Bailey (Reg. No. 52,583)

[email protected]
Postal and Hand-Delivery Address:

ERISE IP, P.A.
7015 College Blvd., Ste. 700
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Fax: (913) 777-5601
68
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.
69
E. Appendix A
No. Claim Language
1 Preamble A method for processing scheduling information in a cellular

communication system, the method comprising:
1.1 receiving, at a user equipment (UE), a scheduling message

indicating an allocation of transmission resources for an
uplink or downlink transmission resources for an uplink or
downlink transmission associated with a first Hybrid
Automatic Repeat reQuest (HARQ) process of the UE;
and
1.2 if the scheduling message is addressed to an identifier that

is associated with dynamic scheduling for the UE and a
most recent previous transmission for the first HARQ
process occurred on a semi-persistent scheduled resource:
1.3 interpreting the scheduling message as scheduling a new

data transmission regardless of a value of a new data
indicator (NDI) flag in the scheduling message;
1.4 storing the value of the NDI flag, and
1.5 receiving or transmitting the new transmission for the first

HARQ process in accordance with the scheduling
message.
2 Preamble The method of claim 1, wherein:
2.1 receiving a scheduling message comprises receiving a

downlink assignment on a Physical Downlink Control
Channel (PDCCH) indicating an allocation of transmission
resources for a downlink transmission to the UE; and
2.2 receiving or transmitting a new data transmission

comprises receiving a new data transmission over a
Physical Downlink Shared Channel (PDSCH) on
downlink transmission resources indicated by the
downlink assignment.
70
No. Claim Language
3 Preamble The method of claim 1, wherein:
3.1 receiving a scheduling message comprises receiving an

uplink grant on a Physical Downlink Control Channel
(PDCCH) indicating an allocation of transmission
resources for an uplink transmission by the UE; and
3.2 receiving or transmitting a new data transmission

comprises transmitting a new data transmission over a
Physical Uplink Shared Channel (PUSCH) on uplink
transmission resources indicating by the uplink grant
4 The method of claim 1, wherein interpreting the scheduling

message as scheduling a new data transmission comprises
considering the NDI flag as being toggled regardless of the
value of the NDI flag.
5 The method of claim 1, further comprising, after receiving or

transmitting the new data transmission for the first HARQ
process on the dynamically-scheduled resource, determining
whether a second scheduling message received for the
dynamically-scheduled transmission for the first HARQ
process relates to a new transmission for a re-transmission
based on whether a current value of the NDI flag received in
the second scheduling message is toggled.
6 The method of claim 5, further comprises comparing the stored
value of the NDI flag with the current value of the NDI flag
received in the second scheduling message for the dynamically
scheduled transmission to recognize if the NDI flag is toggled.
71
No. Claim Language

7.1 receiving, at a user equipment (UE), uplink grants for

dynamically-scheduled transmission for a first Hybrid
Automatic Repeat reQuest (HARQ) process, wherein each
of the uplink grants includes a new data indicator (NDI)
flag;
7.2 when a most recent previous transmission for the first

HARQ process occurred on a dynamically-scheduled
resource, determining whether any uplink grant received
for a dynamically-scheduled transmission for the first
HARQ process relates to a new transmission or a
retransmission based on whether a respective value of the
NDI flag for that uplink grant has been toggled;
7.3 when the most recent precious transmission for the first
HARQ process occurred on a semi-persistent scheduling
(SPS) resource, determining that any uplink grant received
HARQ process relates to a new transmission regardless of
the value of the NDI flag for that uplink grant and storing
the value of the NDI flag; and
7.4 transmitting either a new transmission or a re-transmission
in accordance with each uplink grant.
8 The method of claim 7, wherein receiving uplink grants for

dynamically-scheduled transmissions comprises receiving
uplink grants addressed to an identifier for the UE that is
associated with dynamically-scheduled transmissions.
72
No. Claim Language
9 The method of claim 8, further comprising determining whether

the uplink grant is addressed to an identifier that is associated
with dynamic scheduling by determining whether the uplink
grant is addressed to a Cell Radio Network Temporary
Identifier (C-RNTI) or a Temporary C-RNTI of the UE.
10 Preamble The method of claim 7, further comprising:
10.1 receiving, at the UE, SPS scheduling messages for the first
HARQ process, wherein each of the SPS scheduling
messages includes a new data indicator (NDI) flag;
10.2 when the NDI flag in a received SPS scheduling message

has a first value, determining that the received SPS
scheduling message relates to an activation of pre-assigned
SPS transmission resources;
10.3 when the NDI flag in the received SPS scheduling

message has a second value, determining that the received
SPS scheduling message relates to a re-transmission of a
previous SPS data transmission; and
10.4 receiving or transmitting either a new transmission or

retransmission on the pre-assigned SPS transmission
resources in accordance with each SPS scheduling
message.
73
No. Claim Language
11 The method of claim 7, wherein determining whether any

uplink grant received for a dynamically-scheduled transmission
relates to a new transmission or a retransmission comprises
comparing a current value of the NDI flag received in an uplink
grant for a dynamically scheduled transmission to a stored
value of the NDI flag received in a previous uplink grant for a
dynamically scheduled transmission.
12.1 receiving, at a user equipment (UE), downlink assignments

for dynamically-scheduled transmissions for a first Hybrid
of the downlink assignments includes a new data indicator
(NDI) flag;

HARQ process occurred on a dynamically-scheduled
resource, determining whether any downlink assignments
received for a dynamically-scheduled transmission for the
first HARQ process relates to a new transmission or a re-
transmission based on whether a respective value of the
NDI flag for that downlink assignments has been toggled;
12.3 when the most recent previous transmission for the first
(SPS) resource, determining that any downlink assignment
received for a dynamically-scheduled transmission for the
first HARQ process relates to a new transmission
regardless of the value of the NDI flag for that downlink
assignment and storing the value of the NDI flag; and
12.4 receiving either a new transmission or a re-transmission in
accordance with each downlink assignment.
74
No. Claim Language
13 The method of claim 12, wherein receiving downlink

assignments for dynamically-scheduled transmissions
comprises receiving downlink assignments addressed to an
identifier for the UE that is associated with dynamically-
scheduled transmissions.
14 The method of claim 13, further comprising determining

whether the downlink assignment is addressed to an identifier
that is associated with dynamic scheduling by determining
whether the downlink assignment is addressed to a Cell Radio
Network Temporary Identifier (C-RNTI) or a Temporary C-
RNTI of the UE.
15 Preamble The method of claim 12, further comprising:
15.1 receiving, at the UE, SPS scheduling messages for the first
HARQ process, wherein each of the SPS scheduling
messages includes a new data indicator (NDI) flag;

has a first value, determining that the received SPS

message has a second value, determining that the received
SPS scheduling message relates to a re-transmission of a
75
No. Claim Language
15.4 receiving or transmitting either a new transmission or

retransmission on the pre-assigned SPS transmission
resources in accordance with each SPS scheduling
message.
16 The method of claim 12, wherein determining whether any

downlink assignment received for a dynamically-scheduled
transmission relates to a new transmission or a re-transmission
comprises comparing a current value of the NDI flag received
in a downlink assignment for a dynamically-scheduled
transmission to a stored value of the NDI flag received in a
previous downlink assignment for a dynamically-scheduled
transmission.
17 Preamble A mobile communication apparatus, the apparatus comprising:
17.1 a transceiver configured to receive a scheduling message

indicating an allocation of transmission resources for an
uplink or downlink transmission associated with a first
Hybrid Automatic Repeat reQuest (HARQ) process of the
mobile communication apparatus; and
17.2 a processor configured to:
17.3 if the scheduling message is addressed to an identifier that

is associated with dynamic scheduling and a most recent
previous transmission for the first HARQ process occurred
on a semi-persistent scheduled resource:
76
No. Claim Language
17.4 interpret the scheduling message as scheduling a new data

transmission regardless of a value of a new data indicator
(NDI) flag in the scheduling message and storing the value
of the NDI flag, and
17.5 wherein the transceiver is further configured to receive or

transmit a new data transmission for the first HARQ
process in accordance with the scheduling message.
18 Preamble The mobile communication apparatus of claim 17, wherein:
18.1 the transceiver is configured to receive a scheduling

message by receiving a downlink assignment on a Physical
Downlink Control Channel (PDCCH) indicating an
allocation of transmission resources for a downlink
transmission; and
18.2 the transceiver is configured to receive a new data

transmission by receiving a new data transmission over a
Physical Downlink Shared Channel (PDSCH) on downlink
transmission resources indicated by the downlink
assignment.
77
No. Claim Language
19.1 the transceiver is configured to receive a scheduling

message by receiving an uplink grant on a Physical
Downlink Control Channel (PDCCH) indicating an
allocation of transmission resources for an uplink
transmission; and
19.2 the transceiver is configured to transmit a new data

transmission by transmitting a new data transmission over
a Physical Uplink Shared Channel (PUSCH) on uplink
transmission resources indicated by the uplink grant.
20 The mobile communication apparatus of claim 17, wherein the

processor is further configured to determine whether the
scheduling message is addressed to an identifier that is
associated with dynamic scheduling by determining whether
the scheduling message is addressed to a Cell Radio Network
Temporary Identifier (C-RNTI) or a Temporary C-RNTI of the
mobile communication apparatus.
21. The mobile communication apparatus of claim 17, wherein the
scheduling message is addressed to an identifier that is
the scheduling message is addressed to a Cell Radio Network
22 Preamble A mobile communication apparatus, the mobile communication
apparatus comprising:
22.1 a transceiver configured to receive uplink grants for

dynamically-scheduled transmissions for a first Hybrid
Automatic Repeat reQuest (HARQ) process, wherein
each of the uplink grants includes a new data indicator
(NDI) flag; and
78
No. Claim Language

HARQ process occurred on a dynamically scheduled
resource, determine whether any uplink grant received for
a dynamically-scheduled transmission for the first HARQ
process relates to a new transmission or a re-transmission
based on whether a respective value of the NDI flag for
that uplink grant has been toggled;
(SPS) resource, determine that any uplink grant received
HARQ process relates to a new transmission regardless of
the value of the NDI flag for that uplink grant and store
the value of the NDI flag; and
22.5 wherein the transceiver is further configured to transmit
either a new transmission or a re-transmission in
accordance with each uplink grant.

transceiver is configured to receive uplink grants for
dynamically-scheduled transmissions by receiving uplink
grants addressed to an identifier that is associated with
dynamically scheduled transmissions.

processor is further configured to determine whether the uplink
grant is addressed to an identifier that is associated with
dynamic scheduling by determining whether the uplink grant is
addressed to a Cell Radio Network Temporary Identifier (C-
RNTI) or a Temporary C-RNTI of the mobile communication
apparatus.
79
No. Claim Language
25.1 the transceiver is further configured to receive SPS

scheduling messages for the first HARQ process, wherein
each of the SPS scheduling messages includes a new data
indicator (NDI) flag; and
25.2 the processor is further configured to:

has a first value, determine that the received SPS
scheduling messages relates to an activation of pre-
assigned SPS transmission resources;

message has a second value, determine that the received
SPS scheduling message relates to a retransmission of a

transmit either a new transmission or retransmission on the
pre-assigned SPS transmission resources in accordance
with each SPS scheduling message.
80
No. Claim Language

processor is configured to determine whether any uplink grant
received for a dynamically-scheduled transmission relates to a
new transmission or re-transmission by comparing a current
value of the NDI flag received in an uplink grant for a
dynamically-scheduled transmission to a stored value of the
NDI flag received in a previous uplink grant for a dynamically
scheduled transmission.
27 Preamble A mobile communication apparatus for processing scheduling
information in a cellular communication system, the mobile
communication apparatus comprising:
27.1 a transceiver configured to receive downlink assignments

for dynamically-scheduled transmissions for a first Hybrid
of the downlink assignments includes a new data indicator
(NDI) flag; and

HARQ process occurred on a dynamically scheduled
resource, determine whether any downlink assignments
received for a dynamically scheduled transmission for the
first HARQ process relates to a new transmission or a re-
transmission based on whether a respective value of the
NDI flag for that downlink assignment has been toggled;
(SPS) resource, determine that any downlink assignment
received for a dynamically scheduled transmission for the
first HARQ process relates to a new transmission
regardless of the value of the NDI flag for that downlink
81
No. Claim Language
assignment and
store the value of the NDI flag; and
27.5 wherein the transceiver is further configured to receive

either a new transmission or a re-transmission in
accordance with each downlink assignment.

transceiver is configured to receive downlink assignments for
dynamically-scheduled transmissions by receiving downlink
assignments addressed to an identifier that is associated with
dynamically-scheduled transmissions.

downlink assignment is addressed to an identifier that is
the downlink assignment is addressed to a Cell Radio Network
30.1 the transceiver is further configured to receive SPS

scheduling messages for the first HARQ process, wherein
each of the SPS scheduling messages includes a new data
indicator (NDI) flag;
82
No. Claim Language
30.2 the processor is further configured to:

has a first value, determine that the received SPS

message has a second value, determine that the received
SPS scheduling message relates to a retransmission of a

transmit either a new transmission or re-transmission on
the pre-assigned SPS transmission resources in accordance
with each SPS scheduling message.
31 The mobile communication apparatus of claim 27, wherein

the processor is configured to determine whether any
downlink assignment received for a dynamically-
scheduled transmission relates to a new transmission or a
re-transmission by comparing a current value of the NDI
flag received in a downlink assignment for a dynamically-
scheduled transmission to a stored value of the NDI flag
received in a previous downlink assignment for a
dynamically-scheduled transmission.
83

22-01-25 Apple IPR Petition Against US9888486

Uploaded by

Copyright:

Available Formats

22-01-25 Apple IPR Petition Against US9888486

Uploaded by

Document Information

Original Description:

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

22-01-25 Apple IPR Petition Against US9888486

Uploaded by

Copyright:

Available Formats

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Inter Partes Review Case No. IPR2022-00458

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,888,486

IX. NO BASIS EXISTS FOR DISCRETIONARY DENIAL ............................ 64

1006 Certified U.S. Provisional App. No. 61/095,676 (“Ho Provisional”)

1007 Declaration of Friedhelm Rodermund

1008 Certified Filed History of U.S. Patent No. 9,532,368

1009 Certified Filed History of U.S. Patent No. 8,908,630

1010 Certified Filed History of U.S. Patent No. 8,503,380

1011 U.S. Patent Pub. No. 2010/0248765 (“Chun”)

1012 U.S. Patent Pub. No. 2008/0192674 (“Wang”)

1013 U.S. Patent No. 9,979,514 (“Tseng”)

1014 E-UTRA MAC Specification 36.321 v8.2.0

1015 Oxford Dictionary of Computing (6th ed. 2008)

(EX1001, “the ’486 Patent”).

indicator,” or NDI, flag to determine whether a transmission in a wireless network

Patent is deeming a transmission a new data transmission—regardless of the state of

Challenged Claims should therefore be canceled as unpatentable.

II. CERTIFICATION OF GROUNDS FOR STANDING

III. OVERVIEW OF CHALLENGE

• Ho (EX1005): U.S. Patent Publication No. 2010/0067468 to Ho et al., filed

September 8, 2009. Ho was published on March 18, 2010. Ho claims

priority to U.S. Provisional Application No. 61/095,676 (the “Ho

Provisional,” EX1006), which was filed on September 10, 2008. Ho is

date is September 10, 2008.

“[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)

application must contain sufficient written description of the invention to enable a

least one claim to an invention that is supported by the disclosure of a provisional

application,” that provisional necessarily discloses the same invention eventually

filing date. Id. at *21.

As explained in the accompanying Declaration of Dr. Rangan, the Ho

level of disclosure as Ho itself, and enables a POSITA to practice at least claim 1 of

disclosures in the Ho specification relied upon herein.

disclosure from the Ho Provisional to claim 1 of Ho:

Ho (EX1005) Claim 1 Supporting Disclosure From The Ho Provisional

See EX1006, e.g., cl. 2 (“A method used in a wireless

The first RNTI identified in the initial transmission is

The first transmission would also include an initial

As discussed above, the Ho Provisional discloses that

The Ho Provisional discloses that the subsequent

Relatedly, the Ho Provisional discloses that toggling

Dr. Rangan goes on to explain that the Ho Provisional is sufficiently detailed

to enable a POSITA to make and use the invention claimed in Ho claim 1. As a

Provisional throughout this Petition to demonstrate invalidity of the ’486 Patent. In

hardware in the manner claimed in Ho claim 1. See EX1006 at Figs. 2, 5; EX1002 ¶

Although Ho was listed on an IDS (by reference to its family member

applies a two-part framework to assess discretionary denials under 35 U.S.C. §

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

provides support for the subject matter relied on to show obviousness).

LLC v. MED-EL Elektromedizinische Gerate GmbH, IPR2019-01469, Paper 6 at 8-

Recr. Corp. v. Team Worldwide Corp., IPR2018-00871, Paper 14 at 13 (PTAB Sept.

therefore prior art to the ’486 Patent.

description of the provisional application. See Polaris Wireless, Inc. v. TruePosition,

Petitioner requests cancellation of all claims of the ’486 Patent as invalid

I 1-31 Obvious under § 103 over Ho in view of the