Case 2:22-md-03034-TGB ECF No. 153-1, PageID.10750 Filed 06/16/23 Page 1 of 37
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`Trials@uspto.gov
`Paper 7
`571-272-7822
`Entered: June 16, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`NEO WIRELESS LLC,
`Patent Owner.
`
`IPR2023-00086
`Patent 10,833,908 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, MATTHEW S. MEYERS, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`
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`
`INTRODUCTION
`
`I.
`A. Background and Summary
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–30 (the “challenged claims”) of
`U.S. Patent 10,833,908 B2 (Ex. 1001, the “’908 patent”). Paper 2
`(“Petition” or “Pet.”). Neo Wireless LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Preliminary Response” or “Prelim.
`Resp.”).
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have
`authority, acting on the designation of the Director, to determine whether to
`institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a). Having considered the arguments and evidence presented by
`Petitioner and Patent Owner, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on at least one of the
`challenged claims of the ’908 patent. Accordingly, we do not institute an
`inter partes review of the challenged claims.
`
`Real Parties in Interest
`B.
`The parties identify themselves as the real parties in interest. Pet. 2;
`Paper 4, 1. Petitioner further states that Volkswagen Group of America, Inc.
`“is a subsidiary of Volkswagen AG.” Pet. 2.
`C. Related Proceedings
`The parties identify, as matters involving or related to the ’908 patent,
`In re: Neo Wireless, LLC Patent Litigation, 2-22-md-03034 (E.D. Mich.)
`
`2
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`(“the NEO Wireless litigation”) and Neo Wireless LLC v. Volkswagen Group
`of America, Inc. et al., 2-22-cv-11404 (E.D. Mich.). Pet. 3; Paper 4, 1–2.
`The parties also identify other district court proceedings involving the ’908
`patent, both current and former, including Neo Wireless, LLC v. Volkswagen
`Group of America, Inc. et al., 1-22-cv-00076 (E.D. Tenn.) (terminated June
`14, 2022). Pet. 2–3; Paper 4, 1–3.
`D. The ’908 Patent
`The ’908 patent is titled “Channel Probing Signal for a Broadband
`Communication System.” Ex. 1001, code (54). The ’908 patent explains
`that “[a] direct Sequence Spread Spectrum (DSSS) system is inherently
`capable of supporting multi-cell and multi-user access applications through
`the use of orthogonal spreading codes,” but notes that “a DSSS system using
`orthogonal spreading codes, may suffer severely from the loss of
`orthogonally in a broadband environment due to multi-path propagation
`effects, which results in low spectral efficiency.” Id. at 1:32–35, 1:38–42.
`The ’908 patent also explains that a Multi-Carrier (“MC”) “system such as
`an Orthogonal Frequency Division Multiplexing (OFDM) system is capable
`of supporting broadband applications with higher spectral efficiency” and
`“mitigates the adverse effects of multi-path propagation in wireless
`environments by using cyclic prefixes to extend the signal period as the data
`is multiplexed on orthogonal sub-carriers.” Id. at 1:45–51. The ’908 patent
`states, however, that “MC systems are vulnerable while operating in multi-
`user and multi-cell environments.” Id. at 1:56–58.
`In view of the above, the ’908 patent sets forth “[a] broadband
`wireless communication system where both the Multi-Carrier (MC) and
`direct Sequence Spread Spectrum (DSSS) signals are intentionally overlaid
`
`3
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`together in both time and frequency domains.” Ex. 1001, 2:42–45. The
`’908 patent explains that “[t]he MC signal is used to carry broadband data
`signal for its high spectral efficiency, while the DSSS signal is used for
`special purpose processing, such as initial random access, channel probing,
`and short messaging.” Id. at 2:47–51.
`The ’908 patent describes an embodiment in which “a DSSS signal
`and a MC signal [are] fully overlaid or partially overlaid with an MC symbol
`or slot boundary in the time domain.” Ex. 1001, 7:45–47. Figure 13 of the
`’908 patent is reproduced below.
`
`
`
`Figure 13 shows DSSS signal 1302 that fully overlaps with MC symbol
`1304 in the time domain and DSSS signal 1306 that overlaps with MC
`symbol 1304 only partially. Id. at 7:47–53. The ’908 patent further
`describes an embodiment in which guard periods are added to DSSS signal
`1308 to “ensure that a well-designed DSSS sequence (with low PAR in
`frequency domain) causes little interference with the MC subcarriers even
`when there is time misalignment in a DSSS signal relative to the OFDM
`symbol period.” Id. at 8:7–11.
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`4
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`The ’908 patent also describes using spectrum nulls in a DSSS signal
`to protect an MC control subchannel. Ex. 1001, 8:15–16. Figure 15 of the
`’908 patent is reproduced below.
`
`
`Figure 15 depicts an available spectrum 1506 and DSSS signal 1502 that has
`a spectrum null to avoid excess interference with uplink MC control signal
`1504. Id. at 8:16–20. The ’908 patent explains that “interference with the
`MC sub-carriers over the rest of the spectrum will be much lower where the
`MC subchannels, carrying control information or using higher modulation
`subcarriers, . . . are placed.” Id. at 8:25–29.
`The ’908 patent describes an embodiment in which a mobile station is
`transmitting an initial access DSSS signal to a base station. Ex. 1001,
`8:37–44. The ’908 patent explains that the mobile station “sends an initial
`random access signal over the DSSS channel with a certain signature code or
`sequence that is designated to the corresponding base station and is
`broadcasted to all the mobile stations by each base station.” Id. at 8:49–55.
`The ’908 patent states that “[a] sufficient guard period is reserved in the
`DSSS signal to account for initial time alignment uncertainty.” Id. at
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`5
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`8:60–62. According to the ’908 patent, “[i]f the base station successfully
`detects the DSSS signal, it sends the acknowledgement (ACK) carrying
`information such as a signature or other unique mobile station identifier and
`power and time adjustments of the mobile on the downlink control channel
`in the next available timeslot” and the mobile station then moves to a
`designated uplink MC control channel and uses assigned time and power
`values. Id. at 8:63–9:4.
`
`E. Illustrative Claim
`Petitioner challenges claims 1–30 of the ’908 patent. Pet. 1. Claims
`1, 11, and 21 are the independent challenged claims. Claim 1, reproduced
`below with Petitioner’s notations in brackets and formatting, is
`representative.
`1. [preamble] A mobile station comprising,
`[1.1] a transmitter configured to:
`[1.2] transmit, to a base station, a first uplink signal within a
`frequency band, wherein the first uplink signal is an orthogonal
`frequency division multiplexing (OFDM) signal and utilizes a
`frame format comprising a plurality of timeslots, each timeslot
`comprising a plurality of OFDM symbols;
`[1.3] transmit, to the base station, a random access signal
`followed by a guard period in only a portion of the frequency
`band, wherein the random access signal includes a sequence
`associated with the base station, wherein a time duration of a
`combination of the random access signal and the guard period is
`greater than a time duration of at least one of the plurality of
`OFDM symbols; and
`[1.4] a receiver configured to receive, from the base station,
`a response message.
`
`Ex. 1001, 11:8–25; Pet. 26–39 (showing Petitioner’s notations for claim 1’s
`limitations).
`
`6
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`
`References
`Kaiser, 2 Gibson, 3 Frank4
`
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–30 of the ’908 patent are unpatentable
`on the following grounds:
`Claims Challenged 35 U.S.C. §
`1, 4, 6–11, 14,
`103(a)1
`16–21, 24, 26–30
`2, 3, 5, 12, 13, 15,
`22, 23, 25
`Pet. 6.
`
`103(a)
`
`Kaiser, Gibson, Frank, Kanterakis5
`
`Petitioner also relies on the Declaration of Leonard J. Cimini, Jr.,
`Ph.D. (Ex. 1003) in support of its arguments. Patent Owner relies on the
`Declaration of William P. Alberth Jr. (Ex. 2001, “the Alberth Declaration”)
`in support of its arguments.
`
`II. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’908 patent is alleged to have an effective filing date before the effective
`date of the applicable AIA amendments, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`2 Stefan Kaiser & Khaled Fazel, A flexible Spread-Spectrum Multi-Carrier
`Multiple-Access System for Multi-Media Applications, Proc. of 8th Int’l
`Symp. on Personal, Indoor and Mobile Radio Comms., vol. 1, 100–104
`(1997) (Ex. 1007) (“Kaiser”).
`3 The Mobile Communications Handbook (Jerry D. Gibson) 2nd ed. (1999)
`(Ex. 1008).
`4 WO Pub. No. 99/60729, published November 25, 1999 (Ex. 1009).
`5 US Patent No. 6,574,267 B1, issued June 3, 2003 (Ex. 1010).
`
`7
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`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”6 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR, 550
`U.S. at 418. An obviousness determination requires finding “both ‘that a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`
`
`6 Additionally, objective indicia, such as “commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give light to the
`circumstances surrounding the origin of the subject matter sought to be
`patented. As indicia of obviousness or nonobviousness, these inquiries may
`have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however, has
`presented any such evidence for us to consider.
`
`8
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`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for
`an obviousness analysis, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not
`to allow hindsight reconstruction of references . . . without any explanation
`as to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376,
`1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount to an
`“insufficient articulation[] of motivation to combine”; “instead, the finding
`must be supported by a ‘reasoned explanation’” (citation omitted)); In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To
`satisfy its burden of proving obviousness, a petitioner cannot employ mere
`conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.”).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
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`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`Petitioner asserts that at the time of the invention a person of ordinary
`skill in the art (“POSITA” or “POSA”) would have had “a bachelor’s degree
`in electrical engineering, computer engineering, computer science, or an
`equivalent field, or an advanced degree in those fields, as well as at least 3–5
`years of academic or industry experience in mobile wireless
`communications, or comparable industry experience.” Pet. 11 (citing
`Ex. 1003 ¶¶ 28–31, 40–41). In addition, Dr. Cimini opines:
`In my opinion, a person of ordinary skill in the art of the
`’908 patent as of January 29, 2004, would have a B.S. degree in
`electrical engineering, computer engineering, or computer
`science, or an equivalent field, as well as at least 3–5 years of
`academic or
`industry experience
`in mobile wireless
`communications, or comparable industry experience. A greater
`amount of education, e.g., a doctorate in electrical engineering,
`computer engineering, computer science, or an equivalent field
`would also qualify as a POSA for the ’908 patent in lieu of a B.S.
`degree. Experience could take the place of some formal training,
`as domain knowledge may be learned on the job. This
`description is approximate, and a higher level of education or
`skill might make up for less experience and vice versa.
`Ex. 1003 ¶ 40.
`Patent Owner argues that Petitioner’s definition for the level of
`ordinary skill in the art is too high because “an electrical engineer with a
`
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`doctorate and five years of experience is considered of ordinary skill by the
`Petition,” which is a higher level of skill than that proposed by Dr. Cimini.
`Prelim. Resp. 34–35 (citing Ex. 1003 ¶ 40). Patent Owner contends that
`“[n]either Petitioner’s nor Dr. Cimini’s proposed level of ordinary skill can
`be reconciled with the contrasting level of ordinary skill proposed in [a]
`prior petition” challenging the ’908 patent. Id. at 36 (citing Ex. 2009 ¶ 23).
`Relying on the explanation provided by Mr. Alberth, Patent Owner argues
`that in the prior petition, “the level of skill in the art proposed . . . by
`Dr. Valenti is more valid, given the experience level of those working in the
`field at the time.” Id. at 36–37 (citing Ex. 2001 ¶ 22). According to
`Mr. Alberth, “[t]he level of skill proposed by Dr. Valenti is much closer to
`the actual level of ordinary skill in the art at the time of invention.”
`Ex. 2001 ¶ 22. 7
`With respect to the IPR2022-00277, Dr. Valenti stated:
`A person of ordinary skill in the art (POSITA) relating to, and at
`the time of, the Priority Date would have been someone with at
`least a Bachelor’s degree in an academic area emphasizing
`electrical engineering or a similar discipline, and at least two
`years of experience in the field working with, teaching, or
`researching wireless communication networks. Superior
`education could compensate for a deficiency in work experience,
`and vice-versa.
`Ex. 2009 ¶ 21.
`Petitioner’s statement that “[a] person of ordinary skill in the art
`(‘POSA’) would have a bachelor’s degree in electrical engineering,
`computer engineering, computer science, or an equivalent field, or an
`
`7 Dr. Valenti proposed that level of ordinary skill in IPR2022-00277. Patent
`Owner has filed Dr. Valenti’s declaration from that proceeding as Exhibit
`2009.
`
`11
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`advanced degree in those fields” indicates that the education for one of
`ordinary skill in the art would not merely be limited to a bachelor’s degree
`but could instead be limited to an advanced degree (e.g., a master’s degree
`or doctorate). Pet. 11 (emphasis added). Petitioner’s statement is
`inconsistent with Dr. Cimini’s testimony on the level of ordinary skill in the
`art. As noted above, Dr. Cimini opines that one of ordinary skill in the art
`would have a bachelor’s degree and 3–5 years of academic or industry
`experience, although a greater amount of education could qualify someone
`as one of ordinary skill in the art. Ex. 1003 ¶ 40. As a result, the definition
`for one of ordinary skill in the art set forth in the Petition is unsupported by
`Dr. Cimini’s testimony.
`Based on our review of the record at this stage, we find that
`Dr. Valenti’s statement on the level of ordinary skill in the art (Ex. 2009
`¶ 23) is consistent with the level of skill reflected in the prior art references
`of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256
`(Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art
`solutions to those problems, and the sophistication of the technology as
`factors that may be considered in determining the level of ordinary skill in
`the art). The prior art itself may be sufficient to demonstrate the level of
`skill in the art at the time of the invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings
`regarding ordinary skill level are not required “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
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`Accordingly, for purposes of this decision, we apply Dr. Valenti’s
`description of the person of ordinary skill in the art. See Ex. 2009 ¶ 21.
`C. Claim Construction
`We interpret claim terms
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2021).
`Petitioner submits that “[n]o terms require express construction at this
`stage but Petitioner reserves the right to respond to any construction
`proposed by Patent Owner.” Pet. 11 (citing Ex. 1003 ¶¶ 42–43).
`Patent Owner responds that, while Petitioner proposes no
`constructions in this proceeding, Petitioner is one of the defendants accused
`of infringing the ’908 patent in the NEO Wireless litigation. Prelim. Resp.
`1–2. Patent Owner asserts that the defendants and Patent Owner proposed
`claim constructions for certain terms in the NEO Wireless litigation. Id. at 2
`(citing Ex. 2003, 1, 5–6). According to Patent Owner, “Petitioner has
`distanced itself from the positions taken by its fellow Defendants in the
`[NEO Wireless litigation], but stipulated to be bound by the constructions
`adopted in the litigation, and will not challenge any such constructions,
`including if they are adopted in this IPR.” Id. (citing Ex. 2006).
`Patent Owner argues that the parties to the NEO Wireless litigation
`agreed “that the preamble of claim 1 is limiting and should be given its plain
`and ordinary meaning” and that “‘configured to’ should be construed as
`‘designed to.’” Prelim. Resp. 2 (citing Ex. 2004, 2; Ex. 2007, 4). Patent
`
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`Owner identifies that the parties also dispute the meaning of several other
`terms of the ’908 patent in the NEO Wireless litigation, but contends that no
`express claim constructions are necessary because its positions either
`“appl[y] the plain and ordinary meaning of all relevant terms” or are not
`“necessary to resolve this proceeding.” Id. at 2–3 (citing Ex. 2005, 1–3).
`Having considered the parties’ arguments, we agree that no terms or
`phrases in the claims require explicit construction to reach a decision on
`institution. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed.
`Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`D. Alleged Obviousness over Kaiser, Gibson, and Frank
`Petitioner asserts that claims 1, 4, 6–11, 14, 16–21, 24, and 26–30 are
`unpatentable as obvious over Kaiser, Gibson, and Frank. Pet. 12–64.
`Petitioner also relies on the testimony of Mr. Cimini to support its
`arguments. Id. (citing Ex. 1003). Patent Owner responds to Petitioner’s
`assertions. Prelim. Resp. 3–59. We provide a brief overview of the
`references before turning to the parties’ arguments.
`1. Overview of Kaiser (Ex. 1007)
`Kaiser is a paper that describes a “spread-spectrum multi-carrier
`multiple-access (SS-MC-MA)” scheme “for mobile multi-media
`applications.” Ex. 1007, 1. According to Kaiser, SS-MC-MA “can be a
`good candidate for the future universal mobile telecommunications systems
`(UMTS).” Id.
`Kaiser’s Figure 1 is reproduced below.
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`Figure 1 depicts a “block diagram of an SS-MC-MA transmitter (same for
`up- and down-link) for the data of user i, i = 1 . . . Nu, where Nu is the
`number of active users within a cell.” Id. at 2. Kaiser describes L data-
`symbols that are “multiplied with an orthogonal spreading code.” Id.
`According to Kaiser, the OFDM unit “performs a user-specific frequency
`mapping” and “[e]ach user of a cell transmits on a sub-set of sub-carriers,
`where the sub-sets of subcarriers of the users within a cell are disjunct.” Id.
`Kaiser further states that a base station “allocates an appropriate set of sub-
`carriers.” Id. at 3.
`Kaiser states that “data transmission can be based on OFDM-frames,
`where each frame consists of a group of several OFDM-symbols.” Ex.
`1007, 3. Kaiser describes the use of “a time division multiple access
`(TDMA) component in the OFDM-frame structure” and that “in a cycle of 4
`frames (each frame consists of 31 OFDM-symbols . . .), each frame
`transmits the data of another group of 32 users.” Id. at 3–4. Kaiser also
`states that the duration of an OFDM symbol is 128 µs. Id. at 4.
`2. Overview of Gibson (Ex. 1008)
`Gibson is a book directed to mobile communications. Ex. 1008, 1.
`Gibson describes transmitting analog signals, such as speech signals, by
`digital means. Id. at 32. Gibson states that “TDMA can be combined with
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`[time-division duplexing] TDD or frequency-division duplexing (FDD)” and
`describes the use of separate frequency bands for uplink and downlink
`communication. Id. at 318.
`Gibson states that, “[i]n both FDMA and TDMA systems, channels
`should not be assigned to a mobile on a permanent basis” and that “channels
`must be assigned on demand.” Ex. 1008, 319. According to Gibson,
`“[c]learly, this implies the existence of a separate uplink channel on which
`mobiles can notify the base station of their need for a traffic channel,” which
`Gibson refers to as a “random-access channel.” Id. (emphasis omitted).
`Gibson further describes a call procedure in which a “mobile initiates
`the procedure by transmitting a request on the random-access channel.”
`Ex. 1008, 319. Gibson depicts this procedure for establishing a call in
`Figure 17.3, which is reproduced below.
`
`
`In the procedure, the base station receives the mobile’s request and responds
`with an assignment message directing “the mobile to tune to a dedicated
`control channel for the ensuing call setup.” Id. Gibson states that, “[u]pon
`completion of the call setup negotiation, a traffic channel, i.e., a frequency in
`FDMA systems or a time slot in TDMA systems, is assigned by the base
`station and all future communication takes place on that channel.” Id.
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`3. Overview of Frank (Ex. 1009)
`Frank describes “a method and system for processing multiple random
`access calls in a Code Division Multiple Access (CDMA) or Wideband
`CDMA (WCDMA) system.” Ex. 1009, 1:7–9. Frank explains that next
`generation systems, such as the Universal Mobile Telecommunications
`System (UMTS), “will be required to provide a broad selection of
`telecommunications services.” Id. at 1:12–13, 1:18–20. According to
`Frank, “the number of calls being made is expected to increase significantly”
`and “this higher traffic density will also result in increased collisions and
`access failures.” Id. at 1:20–23.
`Frank describes “an uplink common physical channel (random access
`channel) frame structure” that has “a separate preamble and data portion.”
`Ex. 1009, 6:2–3. Frank explains that “[t]he preamble is used by the base
`station to detect that a MS is attempting the random access request” and
`“[t]he data portion of the channel includes user data, and pilot symbols that
`provide energy for channel estimation during reception of the data portion.”
`Id. at 6:3–7. In addition, “[a] guard interval is preferably inserted between
`the preamble and data portion of the frame.” Id. at 8:19–20. Frank further
`describes an example that uses a guard time interval that is 0.25 ms long for
`a preamble that is 1 ms long. Id. at 10:1–5.
`4. Analysis of Claim 1
`Petitioner asserts claim 1 would have been obvious over Kaiser,
`Gibson, and Frank. Pet. 26–41. We use Petitioner’s notations to identify the
`claim elements, and focus on the dispositive claim limitation, 1.3.
`a) [1.3] transmit, to the base station, a random access signal followed by a
`guard period in only a portion of the frequency band, wherein the
`random access signal includes a sequence associated with the base
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`station, wherein a time duration of a combination of the random access
`signal and the guard period is greater than a time duration of at least
`one of the plurality of OFDM symbols; and
`(1) Petitioner’s Contentions
`Petitioner asserts that the combination of Kaiser, Gibson, and Frank
`renders obvious the subject matter of limitation [1.3]. Pet. 33–39. More
`particularly, Petitioner asserts that “Kaiser discloses that the ‘SS-MC-MA
`[system] assigns each user exclusively its own sub-carriers according to an
`FDMA scheme,’. . . but does not describe the details of the sub-carrier (or
`sub-channel) assignment procedure.” Id. at 33–34 (citing Ex. 1007, 1;
`Ex. 1003 ¶ 104).
`Petitioner argues that Gibson teaches “transmit[ting], to [a] base
`station, a random access signal,” as limitation [1.3] recites, because Gibson
`discloses channel assignment via “a separate uplink channel on which
`mobiles can notify the base station of their need for a traffic channel.”
`Pet. 34 (citing Ex. 1008, 319; Ex. 1003 ¶ 105). Petitioner contends that
`“Gibson discloses a random access ‘procedure’ whereby ‘[t]he mobile
`initiates the procedure by transmitting a request on the random-access
`channel’ to the base station.” Id. at 34–35 (citing Ex. 1008, 319, Fig. 17.3).
`According to Petitioner:
`It would have been obvious to a POSA to combine
`Gibson’s random-access channel and procedure with Kaiser’s
`system. EX1003, ¶106. Specifically, it would have been obvious
`to include a random-access channel as a separate, shared uplink
`channel, as disclosed by Gibson, in Kaiser’s system such that the
`uplink in the combined Kaiser-Gibson system includes Kaiser’s
`dedicated sub-channels and Gibson’s separate, shared random-
`access channel. EX1003, ¶106. It would have been further
`obvious to perform the channel-assignment procedure, as
`disclosed by Gibson, in Kaiser’s system. EX1003, ¶106.
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`Id. at 35.
`Petitioner further contends that it would have been obvious for one of
`ordinary skill in the art “to combine Gibson’s teachings related to channel
`assignment with Kaiser’s system.” Pet. 19 (citing Ex. 1003 ¶ 74). More
`particularly, Petitioner argues “[f]or example, it would have been obvious to
`(i) include a ‘random-access channel’ as ‘a separate uplink channel’ and (ii)
`perform the channel-assignment ‘procedure,’ as disclosed by Gibson, in
`Kaiser’s system.” Id. (citing Ex. 1008, 319–320, Fig. 17.3; Ex. 1003 ¶ 74).
`Petitioner asserts that “[d]oing so would have predictably resulted in a
`combined Kaiser-Gibson system in which: (i) the uplink includes Kaiser’s
`dedicated sub-channels and Gibson’s separate, shared random-access
`channel, and (ii) the system uses Gibson’s procedure shown in Figure 17.3
`to assign channels (Kaiser’s sub-channels or sub-carriers).” Id. at 19–20
`(citing Ex. 1003 ¶ 74). Petitioner further argues specific rationales to
`modify Kaiser in view of Gibson. Id. at 20–21 (citing Ex. 1008, 318–320,
`Fig. 17.3; Ex. 1003 ¶¶ 75–77).
`Petitioner acknowledges that “Gibson does not describe certain details
`of the random-access procedure, such as detail
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