Apple Inc v. Telefonaktiebolaget LM Ericsson

1. Case Identification

• Case #: IPR2022-00607
• Patent #: 10,517,133
• Filed: February 15, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Ericsson Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: METHODS AND UE FOR RESUMING A CONNECTION WITH FULL CONFIGURATION
• Brief Description: The ’133 patent describes a method for a wireless device to resume a connection with a network. The device sends a resume request and receives a resume response message that includes an indication to perform a full configuration, which the device then applies without needing to receive a separate reconfiguration message.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Schliwa-Bertling in view of 3GPP '279

• Prior Art Relied Upon: Schliwa-Bertling (Application # 2016/0278160) and 3GPP '279 (a 3GPP technical document, Doc. No. R2-1710279).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schliwa-Bertling taught a standard Radio Resource Control (RRC) connection suspend and resume procedure where a wireless device sends an RRC Connection Resume Request and receives an RRC Connection Resume Complete message. However, Schliwa-Bertling required a separate reconfiguration message to update the device’s configuration. Petitioner asserted that 3GPP '279 remedied this by teaching that the resume message itself can optionally include a "dedicated radio resource configuration." This optional inclusion serves as the claimed "indication to perform a full configuration," allowing the device to apply the new configuration directly from the resume message, thus eliminating the need for a separate reconfiguration message, as recited in independent claims 1, 6, and 11. The dependent claims were argued to be obvious additions, such as keeping security keys (disclosed by Schliwa-Bertling) or discarding old parameters (an inherent result of applying a new configuration).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve network efficiency. Including the configuration within the resume message, as taught by 3GPP '279, eliminates an entire round of messaging (the reconfiguration request/response), thereby reducing network load, decreasing latency, and allowing connections to resume more quickly. This combination represented the use of a known technique to improve a similar system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as both references described similar wireless systems and protocols. Applying the efficiency improvement from 3GPP '279 to the suspend/resume procedure of Schliwa-Bertling was a predictable and straightforward modification.

Ground 2: Claims 1-5 are anticipated and rendered obvious by 3GPP '208

• Prior Art Relied Upon: 3GPP '208 (a 3GPP technical document, Doc. No. R2-1714208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that 3GPP '208, a 3GPP offline discussion document, disclosed every limitation of claims 1-5. The reference described an LTE connection resume procedure identical to that shown in the ’133 patent. Critically, Petitioner argued that 3GPP '208 explicitly taught the use of a "full configuration flag" within the RRCConnectionResume message to instruct the wireless device to perform a full configuration. This flag served as the claimed "indication," and the reference explained that because the configuration details are included in the resume message, a separate RRCConnectionReconfiguration message "is not needed after resume." This directly mapped to the key limitations of performing a full configuration based on an indication in a resume message without receiving a separate reconfiguration message.
  • Key Aspects: A central component of this ground was establishing 3GPP '208 as valid prior art. Petitioner argued that although the document was from a 3GPP working group chaired by Ericsson, key disclosures—specifically the "full configuration flag"—were expressly attributed to other companies, including Intel. Therefore, Petitioner asserted the disclosure was not made by the named inventors of the ’133 patent and was not subject to the inventor-disclosure exception under 35 U.S.C. §102(b)(1)(A).

Ground 3: Claims 6-20 are obvious over 3GPP '208 in view of Van Lieshout

• Prior Art Relied Upon: 3GPP '208 and Van Lieshout (Application # 2012/0202478).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the apparatus claims (6-20), which recite a wireless device and a network node with processing circuits, memory, and a communication interface for performing the patented method. Petitioner argued that 3GPP '208 taught the method steps, while Van Lieshout provided a generic disclosure of the necessary hardware components for a wireless device (e.g., a "computing system 1600" with a processor, memory, and communications interface) and network node. The combination simply implemented the method of 3GPP '208 on the conventional hardware described in Van Lieshout.
  • Motivation to Combine: A POSITA seeking to implement the wireless networking techniques described in 3GPP '208, which were non-specific as to hardware, would have naturally looked to well-known hardware configurations for wireless devices and network nodes, such as those taught by Van Lieshout. The combination amounted to implementing a known protocol on a standard, general-purpose computing architecture.
  • Expectation of Success: There was a high expectation of success in combining these references, as it involved the routine implementation of a software protocol on conventional hardware components. The result would have been a predictable and functional wireless device and network node.

4. Key Claim Construction Positions

• "reconfiguration message": Petitioner argued that, in the context of claim 1, a "reconfiguration message" must be a message separate from the "resume message." The claim recites "receiving a resume message" and, separately, "applying the full configuration, without receiving a reconfiguration message." Petitioner contended this structure required the two messages to be distinct entities. This interpretation was central to the argument that the prior art's inclusion of configuration data within a resume message met the negative limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Prior Art Status of 3GPP '208: A foundational contention for Grounds 2 and 3 was that 3GPP '208 constituted prior art not attributable to the inventors of the ’133 patent. Petitioner emphasized that the document itself credited companies other than Ericsson (e.g., Intel, LG, Nokia) with contributing key technical proposals, including the "full configuration flag." Petitioner argued that this third-party disclosure precluded the Patent Owner from disqualifying the reference under the inventor-disclosure grace period provisions.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’133 patent as unpatentable.