PTAB

IPR2023-00720

Apple Inc v. Togail Technologies Ltd

Key Events

Petition

petition Intelligence

Title: On-Demand System Information Request Procedure
Brief Description: The ’502 patent relates to on-demand system information (SI) request procedures in 5G wireless networks. The technology involves a User Equipment (UE) using a prohibit timer to prevent retransmitting an SI request too quickly after an initial request is sent.

Prior Art Relied Upon: Oppo (3GPP TSG RAN WG2 Meeting #101 R2-1801795).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Oppo, a 3GPP contribution for the 5G standard, taught all limitations of claim 1. Oppo allegedly disclosed a method for an on-demand SI request for UEs in a connected state ("RRC_Connected UEs"). Petitioner asserted Oppo explicitly taught starting an "SI prohibit timer" when an initial SI request is transmitted and triggering a second SI request only upon timer expiry if the SI is still needed and has not been received.
- Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
- Expectation of Success (for §103 grounds): Not applicable as this ground relies on a single reference.

Prior Art Relied Upon: Oppo (3GPP TSG RAN WG2 Meeting #101 R2-1801795) and Vivo (3GPP TSG RAN WG2 Meeting #101 R2-1802094).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Oppo taught the core method of claim 1, and Vivo supplied the limitations of dependent claims 5 and 6. For claim 5, Petitioner argued that while Oppo taught receiving an acknowledgment of the SI request, Vivo explicitly taught that the requested System Information Block (SIB) itself is delivered to a connected UE via dedicated signaling. For claim 6, Petitioner argued Oppo taught SI requests for UEs in an idle state ("RRC_Idle"), and Vivo taught that the minimum granularity for such requests is one SI message, which can contain multiple SIBs.
- Motivation to Combine: A POSITA would combine Vivo with Oppo to clarify implementation details for Oppo’s system. Specifically, Vivo’s teachings on request granularity (SIB vs. SI message) would provide a known and beneficial method for reducing communication overhead. Both references were submitted to the same 3GPP working group meeting for the same 5G standard, addressing the same technical problem.
- Expectation of Success: A POSITA would have an expectation of success because combining the references involved applying a known technique (specifying request granularity) to a known system (Oppo’s timer-based SI request method) to achieve a predictable result.

Prior Art Relied Upon: Deenoo (Patent 11,357,059).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Deenoo, as a standalone reference, disclosed the limitations of the independent claims and key dependent claims. Deenoo allegedly taught a UE initiating an on-demand SI request in a connected state using dedicated resources. Petitioner argued Deenoo's "timer B" functions as a prohibit timer, which starts when a first SI request is sent and allows retransmission only upon its expiry. For dependent claim 2, Petitioner asserted Deenoo taught that an SI request procedure is unsuccessful after a "predefined number of retransmissions" (a threshold is met) which results in the cell being barred. For dependent claim 5, Deenoo allegedly taught receiving requested SIBs via "dedicated transmissions."
- Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
- Expectation of Success (for §103 grounds): Not applicable as this ground relies on a single reference.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Oppo/Vivo/Deenoo for apparatus claims, Deenoo/Futaki for dual connectivity claims, Deenoo/Asustek for claims specifying signaling radio bearers, and Deenoo/Huawei for claims related to storing SI request failure information.

Petitioner argued that discretionary denial under Fintiv is inappropriate. The parallel district court case is in an early stage, with minimal investment and no claim construction hearing yet held. A pending motion to transfer the case to a California district is likely to be granted, which would vacate the current trial schedule. Petitioner also argued that its petition is distinct from a previously filed IPR by a different party (Unified Patents, LLC v. Togail Technologies Ltd., IPR2023-00338), as it challenges all 20 claims (versus a subset) and relies on different prior art grounds, particularly those based on the Deenoo reference.

Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’502 patent as unpatentable.