OnePlus Technology Shenzhen Co Ltd v. Pantech Corp

1. Case Identification

• Case #: IPR2025-00720
• Patent #: 9,769,776
• Filed: May 18, 2025
• Petitioner(s): OnePlus Technology (Shenzhen) Co., Ltd.
• Patent Owner(s): Pantech Corp.
• Challenged Claims: 1-8

2. Patent Overview

• Title: Apparatus and Method for Uplink Synchronizing in Mulitple Component Carrier System
• Brief Description: The ’776 patent discloses a method and apparatus for managing uplink synchronization in wireless communication systems that use multiple component carriers. The technology involves using Radio Resource Control (RRC) signaling to dynamically add or release secondary serving cells (SCells) and associate them with specific Timing Advance Groups (TAGs) using a TAG identifier.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are anticipated by or obvious over Dinan.

• Prior Art Relied Upon: Dinan (Application # 2013/0188613).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dinan, which qualifies as prior art as of its provisional filing date, disclosed every element of the challenged claims. Dinan taught a user equipment (UE) that receives RRC messages from a base station to manage SCells. Specifically, Dinan disclosed using a sCellToReleaseList field to release an SCell and a sCellToAddModList field to add an SCell, corresponding to the "first field" and "second field" of claim 1. Crucially, Dinan also disclosed that a TAG ID could be included in the sCellToAddModList to associate the newly added SCell with a specific TAG, thereby mapping to all limitations of independent claims 1 and 5. For any perceived gaps, Petitioner contended a person of ordinary skill in the art (POSITA) would have looked to the contemporaneous 3GPP TS36.331 standard, which Dinan references by terminology, to understand that fields like sCellToReleaseList inherently include an SCellIndex.
  • Motivation to Combine (for §103 grounds): To the extent any element was not explicitly disclosed, a POSITA would be motivated to consult the foundational TS36.331 standard to implement Dinan's system. Doing so would ensure interoperability and was a routine design choice, not an inventive step.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying the well-defined procedures of TS36.331 to Dinan’s framework, as Dinan already adopted the standard's nomenclature for RRC messages and fields.

Ground 2: Claims 1-8 are obvious over Dinan in view of Potevio.

• Prior Art Relied Upon: Dinan (Application # 2013/0188613) and Potevio (3GPP publication R2-115812).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Dinan provided the foundational system for adding and releasing SCells via RRC messages. Potevio, a 3GPP contribution document addressing TAG configuration, supplied the explicit teachings to render the claims obvious. Potevio identified the need for an explicit signaling method to map SCells to TAGs and proposed a "simple approach" of introducing a "TA group index" transmitted via RRC signaling, which it described as the "most reliable" and "flexible" method.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to implement a robust TAG management protocol in a system like Dinan's would combine its teachings with Potevio. Potevio directly addressed the known problem of how to signal TAG configuration—a problem the ’776 patent also purports to solve—and provided a clear, advantageous solution that would have been a logical and predictable improvement to Dinan.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because Potevio provided express guidance on how to solve the exact problem of associating SCells with TAGs using an index, a technique already familiar to a POSITA from its use in identifying SCells (SCellIndex).

Ground 3: Claims 1-8 are obvious over TS36.331 in view of Sharp.

• Prior Art Relied Upon: TS36.331 (3GPP Technical Specification 36.331 v10.4.0) and Sharp (3GPP publication R2-120218).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the TS36.331 standard itself disclosed the fundamental framework of the claims, including the UE, the RRC connection reconfiguration message, and the sCellToAddModList and sCellToReleaseList fields containing SCell indexes for adding and removing SCells. Sharp, a 3GPP contribution intended to inform the development of the TS36.331 standard, taught the missing element: the need for a "TAG-ID" to create an association between SCells and a TAG. Sharp explicitly proposed that "TAG-ID configuration should be included in the UL configuration of PhysicalConfigDedicatedSCell," an RRC message element defined within the TS36.331 framework.
  • Motivation to Combine (for §103 grounds): A POSITA would have been highly motivated to combine these references because Sharp was a technical contribution created by members of the same standards working group responsible for TS36.331. Its purpose was to provide specific instructions and proposals for updating and implementing the TS36.331 specification for multi-TA scenarios. The combination represents the natural evolution of the standard.
  • Expectation of Success (for §103 grounds): Success would be reasonably expected, as Sharp's proposals were designed to integrate seamlessly into the existing TS36.331 protocol. Modifying the RRC message as suggested by Sharp was a predictable design choice that required only routine engineering.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-8 based on the combination of Dinan and Sharp, relying on similar arguments that Sharp provided the explicit motivation and teaching to include a TAG-ID in the RRC signaling framework disclosed by Dinan.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’776 patent as unpatentable.