PTAB

IPR2025-00783

OnePlus Technology Shenzhen Co Ltd v. Pantech Corp

Key Events

Petition

petition

Title: Method and Apparatus for Performing Random Access Procedure in a Wireless Communication System
Brief Description: The ’824 patent relates to a wideband radio access system for managing random access procedures between a user equipment (UE) and a base station. The technology purports to prevent a UE from erroneously receiving a random access response intended for another UE by using a predetermined time period for receiving the response.

Prior Art Relied Upon: TS36321-V830 (a 3GPP LTE technical specification, Sep. 2008).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that TS36321-V830, a finalized LTE standard, explicitly discloses every limitation of claims 1 and 7. Specifically, it describes a UE monitoring for a Random Access Response within a TTI window (the claimed "time period") that "starts at the subframe that contains the end of the preamble transmission [] plus three subframes." Petitioner argued this directly teaches the key limitation of the time period starting at a point determined by adding an offset that "equals three" to the subframe number corresponding to the end of the preamble transmission.
- Motivation to Combine (for §103 grounds): Not applicable for anticipation; presented as an alternative obviousness argument based on the same teachings.
- Expectation of Success (for §103 grounds): A POSITA would have an absolute expectation of success in applying the explicit teachings of a technical standard like TS36321-V830.

Prior Art Relied Upon: Qualcomm (a 3GPP LTE standard proposal, Mar. 2008).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Qualcomm, a proposal for defining the random access response reception window, anticipates all claim limitations. Qualcomm’s FIG. 1 illustrates a Random Access Response window (RA_WINDOW_BEGIN) starting 3ms after the PRACH transmission ends. It explicitly proposes setting the offset between the subframe number N (end of transmission) and the subframe number N+3 (start of reception window). Petitioner argued that a POSITA would understand that a 3ms offset in an LTE system corresponds to an offset of 3 subframes, thus disclosing that the "offset equals three."
- Motivation to Combine (for §103 grounds): Not applicable for anticipation; presented as an alternative obviousness argument.
- Expectation of Success (for §103 grounds): A POSITA would expect success in implementing a specific, detailed proposal from a major industry contributor like Qualcomm for standardizing a core network function.

Prior Art Relied Upon: ZTE (a 3GPP LTE standard proposal, Sep. 2007).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that ZTE, a proposal for a coding scheme for random access responses, discloses every element of the challenged claims. ZTE’s figures illustrate a reception window for a random access response that starts at subframe 8 after a random access preamble transmission ends at subframe 5. Petitioner asserted this explicitly shows that the start time point (subframe 8) is obtained by adding an offset to the end time (subframe 5), and that this offset equals three subframes. The consistency of this 3-subframe offset across multiple examples in ZTE was emphasized.
- Motivation to Combine (for §103 grounds): Not applicable for anticipation; presented as an alternative obviousness argument.
- Expectation of Success (for §103 grounds): A POSITA would expect to successfully implement the timing relationships clearly and consistently depicted in ZTE's proposal for managing random access responses.
Additional Grounds: Petitioner asserted additional obviousness challenges, including ZTE in view of TS36321-V800 and TS36321-V800 in view of Nokia, to supplement teachings on monitoring reception windows and processing times.

"time period": Petitioner noted that in the parallel district court litigation, it proposed construing "time period" as "an amount of time," while the Patent Owner argued for its plain and ordinary meaning. Petitioner contended that the Board need not resolve this construction because the cited prior art discloses the limitation under either party's interpretation.

Lack of Priority Date Entitlement: A central argument of the petition is that the ’824 patent is not entitled to the priority dates of its provisional (’492 application) or foreign (’656 application) filings. Petitioner contended that neither priority application provides adequate written description support for the key "determining-offset limitations," specifically the requirement that "the offset equals three." The petition argued that the priority documents only vaguely mention an "offset" in the context of a different procedure (HARQ) and do not disclose or suggest a value of "three" for the random access procedure. This argument, if successful, establishes that the cited 3GPP standards and proposals (TS36321-V830, Qualcomm, ZTE, etc.), all published before the patent's effective filing date, qualify as prior art.

§325(d) (Same or Substantially Same Art): Petitioner argued against discretionary denial under §325(d), asserting that the primary references (TS36321-V830, Qualcomm, ZTE, Nokia) were never presented to or considered by the examiner during the original prosecution of the ’824 patent. Petitioner contended the examiner's allowance was based on the failure of different prior art to disclose the "offset equals three" limitation, a limitation Petitioner argues is expressly taught by the art cited in this IPR.
§314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stipulating that if the IPR is instituted, it will not pursue in the parallel EDTX case any ground that it raised or reasonably could have raised in the IPR. Petitioner also argued that the district court case has had minimal investment and progress, with no substantive orders issued and an expert discovery schedule that post-dates the institution decision, making duplicative efforts unlikely.

Petitioner requests institution of an inter partes review and cancellation of claims 1 and 7 of the ’824 patent as unpatentable.