PTAB

IPR2024-01036

Samsung Electronics Co Ltd v. ASUS Technology Licensing Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method, User Equipment and Network Device for Performing Random Access Procedure
  • Brief Description: The ’052 patent relates to random access procedures in 3rd Generation Partnership Project (3GPP) wireless networks. The technology focuses on dynamically adjusting the Transmission Time Interval (TTI) length during the random access procedure to reduce latency, particularly for the third message (Msg3) transmission from the user equipment (UE) to the network.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 7-8, 12, and 14 are obvious over Tang alone and/or in view of Löhr.

  • Prior Art Relied Upon: Tang (Application # 2018/0343682) and Löhr (Application # 2012/0147830).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tang taught a random access procedure where a UE transmits a preamble (Msg1) and receives a random access response (RAR/Msg2) from the network. This Msg2 in Tang contained TTI information for the subsequent uplink Msg3, including both a "TTI length" (duration) and "subframe start location information" (a start timing offset). Petitioner contended that because Tang was silent on TTI bundling for Msg3 and because bundling was not conventional for random access, a POSITA would understand Tang to disclose the default method of transmitting a single transport block (TB) for Msg3.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that Löhr explicitly disclosed improving the random access procedure by adding a 1-bit "transmission mode indicator" flag to the Msg2. This flag instructs the UE whether to transmit Msg3 using TTI bundling or as a standard transmission in a "single TTI." A POSITA would combine Löhr’s teachings with Tang’s system to gain the flexibility of dynamically choosing between a single TB transmission (for low latency) and a bundled transmission (for increased reliability), depending on network conditions.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination merely involved adding a well-understood 1-bit flag to the Msg2 message, a trivial modification for which UEs and networks already had the underlying capability.

Ground 2: Claims 1, 5, 7-8, 12, and 14 are anticipated and/or rendered obvious by Tirronen.

  • Prior Art Relied Upon: Tirronen (Patent 10,743,350).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tirronen anticipated all limitations of the challenged claims. Tirronen disclosed a standard random access procedure where the Msg2/RAR includes a "time domain configuration" for the Msg3 uplink. This configuration specified a TTI duration, explicitly defined in time units (e.g., 1ms or 6ms), satisfying the "TTI duration" limitation. The configuration also included information defining a "starting subframe" for the Msg3 transmission, which Petitioner argued was the claimed "start timing offset." For the "single TB" limitation, Petitioner pointed to Tirronen's disclosure that for conventional UEs, the Msg2/RAR may omit repetition information, and a TTI can be a single subframe (i.e., no repetitions), thus teaching a single transport block transmission.

4. Key Claim Construction Positions

  • "start timing offset": Petitioner argued that, based on the patent’s specification and prosecution history, this term referred to the gap period between Msg2 reception and Msg3 transmission. It specifies the time unit (e.g., slot, symbol) at which the UE should begin transmitting Msg3. Petitioner noted that Patent Owner distinguished this term from a conventional "timing adjustment" during European prosecution.
  • "a single (TB) transport block of Msg3 transmission": Petitioner asserted this phrase was added during prosecution specifically to distinguish the claims from prior art disclosing TTI bundling, where multiple redundant versions of a transport block are sent. Petitioner contended the term means transmitting only one transport block, which reduces latency by allowing the UE to begin monitoring for the subsequent Msg4 response earlier.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was unwarranted. The primary reason cited was Petitioner's submission of a Sotera stipulation, agreeing not to pursue the same grounds in the parallel district court litigation if an inter partes review (IPR) is instituted.
  • Petitioner also argued against denial under 35 U.S.C. §325(d), asserting that the primary prior art references, Tang and Tirronen, were not before the examiner during prosecution. Petitioner claimed the examiner erred in allowing the patent based on amendments that did not substantively change the claim scope, and that the new prior art remedies this error.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1, 5, 7-8, 12, and 14 of the ’052 patent as unpatentable.