Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19491 Filed 06/20/24 Page 1 of 118
`
`Exhibit DD
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19492 Filed 06/20/24 Page 2 of 118
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Huizhou TCL Mobile Communication Co. Ltd., TCT Mobile (US) Inc., TCL
`Mobile Communication (HK) Co., Ltd.
`Petitioners
`
`V.
`
`WI-LAN INC.,
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,854,577 B2
`Case IPR No.: IPR2020-00304
`
`DECLARATION OF DR. TITUS LO
`EX 1003
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026550
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19493 Filed 06/20/24 Page 3 of 118
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`Tntroduction..0......ccecceeeneceeeeeeeeeceaeeeeaeeceeeeeeaaeceneeesaeeseeeeecaeeseaeeseeeeesiaeeeneeeseaeens 3
`Background and Qualifications ...........ccccssccessseeecssceeessseeessseeeesseeessseeesesneeess 4
`Priority Date and One of Ordinary Skill... eccessseeeeseeeeeseneeeesseeessseeeess 8
`Ill.
`TV. Materials Relied Uponi.........ccccccccccsssceeessseeeessneeecseeeeesssaeeeseneeesseneesessaeeseseneeess 9
`Legal Standards ...........ccccccccssscessnececseseeesseecesseeeesssneeessaaeeessaeeesseneaesssaeeessenes 10
`eeece cece
`cece eeceneeceeeeeeaee cece ceaeeeseneeseaeeseaeeseeeeeeeaeees 10
`ODVIOUSTESS.
`A.
`VI. BACKGROUND OF THE ART. .....c..ccccccsccssceceeeeseeeceeceeeceeesereeeaeeneresensenneens 15
`VII. Analysis of the
`Patennt...........cccccsceccssssecessseeecsseeesssneeessseeeesssneeesssaesessenes 17
`Overview of the °577 Patent.........ccccccececceeeceeceeeeeeeeeeeneeseeeeeeeeeeseaeenes 17
`A.
`Claim Construction of the ’577 Patent Claims .............:cceseeeeeeeeeeee 17
`1.
`“receive unit” (claims 1 and 9)
`eecceeceeeeeeceeeeeeeeeeeeteeaeeeenes 18
`2.
`“transmit unit” (Claim 4) .......cceceeeeeenceceeeeeeeeeeeeeeeseaeeeeeeeeeaeeseaes 20
`3.
`“control data via control channels” (claims
`and 12)............. 23
`VII. OVERVIEW OF THE PRIOR ART REFERENCES .........:::cccceseeeseeesteees 24
`
`I.
`II.
`
`IX.
`
`X.
`
`B.
`
`PRIORITY OF GOROKHOV ...........ccccccesccssceceeeceeeeeeeeeeeeceeeseneeeeeeeereseneenneess 24
`
`A.
`
`B.
`
`C.
`
`SPECIFIC GROUNDS OF CHALLENGE. .........ccccecccecsceeeeeeeeeeeeeeeeeeeeeaees 27
`Gound 1A: Claims 1, 3-6, 8-12, 14-17, and 19-22 are rendered
`ObVIOUS by Gorokhov ..........ccccccsessecessneeeceseeeecsseeeesseeeesseneeessneeeessaeeess 27
`Gound 1B: Claims 2 and 13 are rendered obvious by Gorokhov
`ANG JUNG... cccecccccsssseeesssaeeesseeeeesenaeesseueeesseeeecsseneeesseueeesseeeesssnaeeesseeess 55
`Gound 1C: Claims 7 and 18 are rendered obvious by Gorokhov
`ANG ZIAO
`eeeeecececeeeeeceeeecaceceeeeeseaeceeeeeceaeeseaeeseeeeeseaeeseeeessaeeeeneessarenenes 58
`—Gound 1D: Claims 10 and 21 are rendered obvious by
`Gorokhov and Walton ..........ccccccsceeseceeceeeeeeeeeeeeeesaeeeeeeeseeeeeeneeseeesenes 63
`Gound 2A: Claims 1, 3-5, 11-12, 14-16, and 22 are rendered
`obvious by Ryu and Yamaula ........cccccsscceesscceessseeessseeesssneeesssneeeeseaees 66
`Claim 1 is rendered obvious by Ryu and Yamaura................. 68
`(a)
`Claim 3 is rendered obvious by Ryu and Yamaura................ 83
`(b)
`Claim 4 is rendered obvious by Ryu and Yamaura................ 85
`(c)
`l
`
`D.
`
`E.
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026551
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19494 Filed 06/20/24 Page 4 of 118
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`F,
`
`G.
`
`Claim 5 is rendered obvious by Ryu and Yamaura................. 85
`(d)
`Claim 11 is rendered obvious by Ryu and Yamaura............... 86
`(e)
`Claim 12 is rendered obvious by Ryu and Yamaura............... 87
`(f)
`(g)
`Claim 14 is rendered obvious by Ryu and Yamaura............... 88
`Claim 15 is rendered obvious by Ryu and Yamaura............... 89
`(h)
`Claim 16 is rendered obvious by Ryu and Yamaura............... 89
`(i)
`Claim 22 is rendered obvious by Ryu and Yamaura............... 89
`(j)
`Gound 2B: Claims 2 and 13 are rendered obvious by Ryu,
`Yamnura, and Jung... cccccccccsssecesssseeecsseeeessneeeesseeeeessseeesssseeessseneessseees 89
`Gound 2C: Claims 7 and 18 are rendered obvious by Ryu,
`Yamura, and Za oo...ecccccccccccccccccccccscecscueuceeseeeeesueeeeeueuseeseeeueseueeueeeesens 92
`Claim 7 is rendered obvious by Ryu, Yamaura, and Zhao......95
`(a)
`Claim 18 is rendered obvious by Ryu, Yamaura, and
`(b)
`ZYAO...
`cee ceccceceneeeceeeceeeeceaeeecaeeeeaceceeeeeeaaeeeneeeseaeeeeaeeseaeeseaeesseneesaes 96
`Gound 2D: Claims 10 and 21 are rendered obvious by Ryu,
`Yamura, and Walltn.......ccccccccccccccccecceseeeseeseeseeeeeseeueeseeeeseeeeeseeegs 97
`Claim 10 is rendered obvious by Ryu, Yamaura, and
`(a)
`WAltON occ cecceccnee cence ececeeeeeeeceaeceeeeeseaaeeceeesaeeneaeeseaeeseeesseneesaes 98
`Claim 21 is rendered obvious by Ryu, Yamaura, and
`WaAltON
`cec cece cece eeceeeeeeeeeeeaeeeeeeeceaaeeeeneesaeeseneeseaeeseaeeeneneesaaes 99
`Secondary Considerations ............cccccccsscccsssseceesseceeessececsseecseseeeeceseeeesesaeeeeses 99
`XI.
`AIL. Conclusion
`..eccccceececeeceeeeeeeeeeeeeeseaeeeeeeeeeeeeeseeeeseaeeeeaeeeeeeeesnaeegeeeeseareeeeees 100
`
`H.
`
`(b)
`
`2
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026552
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19495 Filed 06/20/24 Page 5 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`I.
`
`l.
`
`INTRODUCTION
`My name is Titus Lo, and I have been retained by counsel for
`Petitioner TCT Mobile, Inc., TCT Mobile US Holdings Inc., TCL Communication
`Inc. (“TCL” or “Petitioner” or “Petitioners”) as an expert witness to provide my
`opinion regarding certain prior art references and U.S. Patent No. 9,854,577 (the
`patent’).
`I have been asked to consider the validity of claims 1-22 of the
`2.
`patent in view of the understanding of a person of ordinary skill in the art
`I have personal knowledge of the facts
`patent.
`(“POSITA”) as it relates to the
`and opinions set forth in this declaration, and believe them to be true. If called
`upon to do so, I would testify competently thereto.
`I am being compensated for my time at my standard consulting rate. I
`3.
`am also being reimbursed for expenses that I incur during the course of this work.
`My compensation is not contingent upon the results of my study, the substance of
`my opinions, or the outcome of any proceeding involving the challenged claims. I
`have no financial interest in the outcome of this matter or on the pending litigation
`
`10
`
`15
`
`between Petitioner and Patent Owner.
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026553
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19496 Filed 06/20/24 Page 6 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`My opinions are based on my years of education, research and
`4.
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
`
`I may rely upon these materials, my knowledge and experience,
`5.
`and/or additional materials to rebut arguments raised by the Patent Owner. Further,
`I may also consider additional documents and information in forming any
`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`My analysis of the materials produced in this proceeding is ongoing
`6.
`and I will continue to review any new material as it is provided. This declaration
`represents only those opinions I have formed to date. I reserve the right to revise,
`supplement, and/or amend my opinions stated herein based on new information
`and on my continuing analysis of the materials already provided.
`
`Il.
`
`BACKGROUND AND QUALIFICATIONS
`7,
`I am an expert in the field of telecommunication systems. I have
`studied, researched, and practiced in this field for over thirty years.
`summarized in this section my educational background, work experience, and
`other relevant qualifications. A true and accurate copy of my curriculum vitae can
`be found in Appendix A.
`
`I have
`
`10
`
`15
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026554
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19497 Filed 06/20/24 Page 7 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`From 1989 to 1997,
`
`I had worked full
`
`first as a research
`
`and
`
`then
`
`as
`
`a
`
`senior
`
`research
`
`at
`
`I earned my Bachelor of Applied Science degree in Electrical
`8.
`Engineering from the University of British Columbia in Vancouver, British
`Columbia, Canada in 1986. I earned my Master of Engineering degree in 1989 and
`Doctor of Philosophy (Ph.D.) degree in 1995, both in Electrical Engineering from
`McMaster University in Hamilton, Ontario, Canada. My Ph.D. dissertation,
`entitled “MLE and RBF for AOA estimation in a Multipath Environment”, is about
`the concept and principle for application of artificial intelligence to antenna signal
`processing.
`9.
`time,
`engineer/project manager,
`engineer
`Communications Research Laboratory, McMaster University, where I had been
`involved in numerous research and development projects related to antenna
`beamforming
`technology
`applied
`communications,
`communications, and spaceborne radar systems.
`It was during this period that,
`foreseeing the important role of beamforming technology in future wireless
`communications, I was able to establish my international leading position in this
`field. I had co-authored technical reference book, entitled Digital Beamforming in
`Wireless Communications, the first of its kind in the field, published in 1996 by
`Artech House. After more than twenty years later, it is now a well-known fact that
`
`to mobile
`
`satellite
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026555
`
`10
`
`15
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19498 Filed 06/20/24 Page 8 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`10.
`
`antenna beamforming is one of the cornerstone technologies employed in the 5"
`generation (SG) wireless communications networks.
`It was because of both of the importance of antenna beamforming
`technology to its wireless business and my exceptional expertise in the field that
`AT&T Wireless Services had persuaded me to join its Strategic Technology Group
`(STG) in 1997. At AT&T, as part of system design and engineering, I led the
`research and development of advanced radio technologies in an orthogonal
`frequency division multiplexing (OFDM)
`including antenna array
`system,
`processing, signal acquisition, synchronization, channel estimation, space-time
`coding, and transmission diversity, all of which were the critical elements to
`AT&T’s fixed wireless network — the world’s first carrier-grade and commercially
`deployed orthogonal frequency division multiple access (OFDMA) system.
`From 2001, I had embarked on my startup endeavor in pursuing the
`development of advanced technologies to telecommunications. I had worked in a
`number of startups subsequently. In 2001, I joined NextComm, Inc., a Kirkland,
`WA based startup that designed and developed application-specific integrated
`
`11.
`
`10
`
`15
`
`circuits (ASICs) for wireless local area network (WLAN) devices, where I was
`responsible for system engineering, including the design, implementation, and test,
`of IEEE 802.11la (OFDM-based) and 802.11b (spread spectrum-based) standard
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026556
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19499 Filed 06/20/24 Page 9 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`(a.k.a. Wi-Fi) compliant chipsets. During the tenue in NextComm, I participated in
`and contributed to the IEEE 802.11 Standard Working Group in the development
`of 802.11g amendment. In 2003, I served as the vice president of engineering and
`operations at Waltical Solutions,
`Inc., Bellevue, WA, where I directed a
`engineering team in the design and development of broadband wireless
`communications technologies (including 801.11e/WiMax) and systems. In 2006, I
`served as the vice president, Neocific, Inc., a 4G pioneer based at Bellevue, WA,
`where I managed and mentored a team of researchers and engineers in the research
`and development of 4" generation (4G) wireless technologies, including key radio
`functionalities such as synchronization, random access,
`mitigation, power control, and control signaling. In 2011, I engaged in consulting
`services to my clients by providing (1) the analysis, evaluation, and due diligence
`investigation of wireless-technology intellectual property portfolios and (ii) the
`analysis and evaluation of technology markets and industry ecosystems.
`Throughout my professional career, I have been granted more than
`120 US and foreign patents in the area of wireless communications.
`published more than 80 technical papers in peer-reviewed international journals
`(e.g., IEEE Transactions and IEE Proceedings) and conference proceedings (e.g.,
`IEEE International Conferences and Spie's International Symposiums). I have been
`
`10
`
`15
`
`12.
`
`inter-cell
`
`interference
`
`I have
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026557
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19500 Filed 06/20/24 Page 10 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`invited to present and lecture many times at a broad array of industry and
`professional venues and to various technical and industrial communities in the
`
`13.
`
`fields of antennas, RF, and wireless communications.
`I was appointed as an affiliated professor in the Department of
`Electrical & Computer Engineering at the University of Washington, Seattle, WA
`from 2008 to 2012. I have also served or been serving various leadership positions
`in the Institute of Electrical and Electronics Engineers (IEEE). For example, I have
`been serving as an organization committee member for IEEE 5G World Forum
`since its inception in 2018. I have been a senior IEEE member since 1998 and have
`been inducted in to the IEEE Eta Kappa Nu Honor Society in 2019.
`
`14.
`
`HiIl. PRIORITY DATE AND ONE OF ORDINARY SKILL
`In rendering the opinions set forth in this declaration, I was asked to
`consider the patent claims and the prior art through the eyes of a POSITA at the
`time of the alleged invention, which I understand is March 7, 2007.
`that the factors considered in determining the ordinary level of skill in a field of art
`include the level of education and experience of persons working in the field; the
`types of problems encountered in the field; the teachings of the prior art, and the
`sophistication of the technology at the time of the alleged invention.
`that a POSITA is not a specific real individual, but rather is a hypothetical
`
`I understand
`
`I understand
`
`10
`
`15
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026558
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19501 Filed 06/20/24 Page 11 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`individual having the qualities reflected by the factors above.
`POSITA would also have knowledge from the teachings of the prior art, including
`
`I understand that a
`
`the art cited below.
`
`15.
`
`Taking these factors into consideration, in my opinion, on or before
`March 7, 2007 a POSITA relating to the technology of the
`patent would have
`had a Bachelor’s degree in electrical engineering, computer engineering, computer
`science, or a related field, and around two years of experience in the design or
`development of telecommunication systems, or the equivalent.
`additional education or additional industrial experience could still be of ordinary
`skill in the art if that additional aspect compensates for a deficit in one of the other
`aspects of the requirements stated above.
`
`Individuals with
`
`that of a POSITA.
`
`16. Well before March 7, 2007, my level of skill in the art was at least
`I am qualified to provide opinions concerning what a POSITA
`would have known and understood at that time, and my analysis and conclusions
`herein are from the perspective of a POSITA as of March 7, 2007.
`
`IV. MATERIALS RELIED UPON
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in the
`
`exhibit list submitted with the petition. Each of these materials is a type of
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026559
`
`10
`
`15
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19502 Filed 06/20/24 Page 12 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`document that experts in my field would have reasonably relied upon when
`forming their opinions.
`18. My opinions are also based upon my education, training, research,
`knowledge, and personal and professional experience.
`
`V.
`
`19.
`
`LEGAL STANDARDS
`J have been informed that there are two ways in which prior art may
`render a patent claim unpatentable. First, the prior art can be shown to “anticipate”
`the claim. Second, the prior art can be shown to have made the claim “obvious” to
`
`a POSITA.
`
`I have been asked to evaluate whether claims 1-22 of the
`
`Patent
`
`10
`
`are obvious.
`
`A,
`
`Obviousness
`
`20.
`
`Ihave been informed that a claim may be invalid under 35 U.S.C.
`§ 103(a) if the subject matter described by the claim as a whole would have been
`obvious to a hypothetical person of ordinary skill in the art in view of a prior art
`
`15
`
`reference or in view of a combination of references at the time the claimed
`
`invention was made.
`
`| have been informed that obviousness is determined from
`
`the perspective of a hypothetical POSITA and that the asserted claims of the patent
`should be read from the point of view of such a person at the time the claimed
`I have been informed that a hypothetical POSITA is assumed
`
`invention was made.
`
`10
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026560
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19503 Filed 06/20/24 Page 13 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`to know and to have all relevant prior art in the field of endeavor covered by the
`patent in suit.
`
`21.
`
`have been informed that there are two criteria for determining
`whether prior art is analogous and thus can be considered prior art: (1) whether the
`art is from the same field of endeavor, regardless of the problem addressed, and (2)
`if the reference is not within the field of the patentee’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which the
`patentee is involved. I have also been informed that the field of endeavor of a
`patent is not limited to the specific point of novelty, the narrowest possible
`conception of the field, or the particular focus within a given field. I have also been
`informed that a reference is reasonably pertinent if, even though it may be in a
`different field from that of the patentee’s endeavor, it is one which, because of the
`matter with which it deals, logically would have commended itself to a patentee’s
`attention in considering his problem.
`Ihave also been informed that an analysis of whether a claimed
`invention would have been obvious should be considered in light of the scope and
`content of the prior art, the differences (if any) between the prior art and the
`claimed invention, and the level of ordinary skill in the pertinent art involved. I
`have been informed as well that a prior art reference should be viewed as a whole.
`
`22.
`
`10
`
`15
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026561
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19504 Filed 06/20/24 Page 14 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`23.
`
`have also been informed that in considering whether an invention for
`
`a claimed combination would have been obvious, I may assess whether there are
`apparent reasons to combine known elements in the prior art in the manner claimed
`in view of interrelated teachings of multiple prior art references, the effects of
`demands known to the design community or present in the market place, and/or the
`background knowledge possessed by a person having ordinary skill in the art.
`have been informed that other principles may be relied on in evaluating whether a
`claimed invention would have been obvious, and that these principles include the
`following:
`
`I
`
`10
`
`15
`
`e
`
`e
`
`e
`
`A combination of familiar elements according to known methods is
`likely to be obvious when it does no more than yield predictable
`
`results;
`
`When a device or technology is available in one field of endeavor,
`design incentives and other market forces can prompt variations of it,
`
`either in the same field or in a different one, so that if a person of
`ordinary skill can implement a predictable variation, the variation is
`likely obvious;
`If a technique has been used to improve one device, and a person of
`ordinary skill in the art would recognize that it would improve similar
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026562
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19505 Filed 06/20/24 Page 15 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`devices in the same way, using the technique is obvious unless its
`actual application is beyond his or her skill;
`An explicit or implicit teaching, suggestion, or motivation to combine
`two prior art references to form the claimed combination may
`demonstrate obviousness, but proof of obviousness does not depend
`on or require showing a teaching, suggestion, or motivation to
`
`combine;
`
`Market demand, rather than scientific literature, can drive design
`
`trends and may show obviousness;
`
`In determining whether the subject matter of a patent claim would
`have been obvious, neither the particular motivation nor the avowed
`
`purpose of the named inventor controls;
`
`One of the ways in which a patent’s subject can be proved obvious is
`by noting that there existed at the time of invention a known problem
`for which there was an obvious solution encompassed by the patent’s
`
`claims;
`
`Any need or problem known in the field of endeavor at the time of
`invention and addressed by the patent can provide a reason for
`combining the elements in the manner claimed;
`
`10
`
`15
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026563
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19506 Filed 06/20/24 Page 16 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`“Common sense” teaches that familiar items may have obvious uses
`beyond their primary purposes, and in many cases a person of
`ordinary skill will be able to fit the teachings of multiple patents
`together like pieces of a puzzle;
`A person of ordinary skill in the art is also a person of ordinary
`creativity, and is not an automaton;
`A patent claim can be proved obvious by showing that the claimed
`combination of elements was “obvious to try,” particularly when there
`is a design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions such that a person of
`ordinary skill in the art would have had good reason to pursue the
`known options within his or her technical grasp; and
`One should be cautious of using hindsight in evaluating whether a
`
`claimed invention would have been obvious.
`
`10
`
`15
`
`24.
`
`I have further been informed that, in making a determination as to
`
`whether or not the claimed invention would have been obvious to a person of
`ordinary skill, the Board may consider certain objective factors if they are present,
`such as: commercial success of products practicing the claimed invention; long-felt
`but unsolved need; teaching away; unexpected results; copying; and praise by
`
`M4
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026564
`
`

`

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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`others in the field. These factors are generally referred to as “secondary
`
`considerations” or “objective indicia” of nonobviousness.
`
`I have been informed,
`
`however, that for such objective evidence to be relevant to the obviousness of a
`claim, there must be a causal relationship (called a “nexus”) between the claim and
`
`the evidence and that this nexus must be based on what is claimed and novel in the
`
`I have also been informed that even
`
`25.
`
`I
`
`I have been informed that to establish
`
`claim rather than something in the prior art.
`when they are present, secondary considerations may be unable to overcome
`primary evidence of obviousness (e.g., motivation to combine with predictable
`results) that is sufficiently strong.
`J have been asked to consider the validity of the challenged claims.
`have been informed that for inter partes reviews, invalidity must be shown under a
`preponderance of the evidence standard.
`something by a preponderance of the evidence one needs to prove it is more likely
`I have concluded that each of claims 1-22 are invalid, according
`to the grounds described herein, under both the preponderance of the evidence
`standard as well as the higher standard of clear and convincing evidence.
`
`true than not true.
`
`VI. BACKGROUND OF THE ART
`
`IS
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026565
`
`10
`
`15
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19508 Filed 06/20/24 Page 18 of 118
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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`27.
`
`26.
`
`Orthogonal frequency division multiplexing (OFDM) is a type of
`transmission technique that partitions the overall channel bandwidth into multiple
`overlapping orthogonal subcarriers, each of which are transmitted simultaneously.
`Individual channels in OFDM systems take up a specific bandwidth of
`frequency. They are separated by guard bands, which are simply portions of the
`frequency spectrum where no signal is transmitted. This is demonstrated in Fig. 29
`of Yamaura, below, where each channel’s carrier frequency is annotated in red. As
`can be seen from the below, each channel is spaced 20 MHz apart, and is separated
`by a guard band.
`
`20MHz
`
`10
`
`15
`
`|
`
`28.
`
`FREQUENCY
`Each OFDM channel comprises a set of OFDM subcarriers. See
`Yamaura at [0006] and [0141]. For example, each 20 MHz band illustrated above
`in Fig. 29 is centered around a center carrier frequency and has a plurality of
`
`OFDM subcarriers. Yamaura at [0006] and [0004] (“one transmission channel ...
`is divided into a plurality of subcarriers”). This is demonstrated in annotated Fig.
`30, below, where a series of subcarriers are centered around a “central frequency f0
`
`16
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026566
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19509 Filed 06/20/24 Page 19 of 118
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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`[(annotated red)] in the carrier frequency band.” Yamaura at [0006]; see also id. at
`[0141] and Figs. 16, 20, 22, 24. Each terminal in an OFDM system may be
`assigned one or more time slots and subcarrier combinations to transmit and
`
`receive data.
`
`20 . COOOMHz
`
`16.5625MHz
`
`FREQUENCY
`(DC_IN EQUIVALENT
`BASE BAND SYSTEM)
`
`VII. ANALYSIS OF THE ’577 PATENT
`
`A.
`
`29.
`
`Overview of the ’577 Patent
`The ’577 Patent is directed to aggregating multiple channels.
`Patent at Abstract. Data for transmission is divided, and then transmitted onafirst
`and second channel simultaneously.
`which are to be aggregated is transmitted to the terminal device via control
`
`10
`
`/d. at 5:55-61.
`
`Identification of the channels
`
`channels.
`
`/d. at 23:39-49.
`
`B.
`30.
`
`Claim Construction of the ’577 Patent Claims
`
`Ihave been informed that for purposes of this /nter Partes Review,
`
`15
`
`the standard for claim construction is the same as the standard used in federal
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026567
`
`

`

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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`district court litigation: claim terms should generally be given their ordinary and
`customary meaning as understood by one of ordinary skill in the art at the time of
`the invention and after reading the patent and its prosecution history.
`J have been informed that the following terms may be construed by
`
`31.
`
`the Board:
`
`e
`
`e
`
`e
`
`e
`
`“receive unit” (claims | and 9)
`
`“transmit unit” (claim 4)
`
`“control data via control channels” (claims 1 and 12)
`“medium access control (MAC) layer” (claims 5 and 16)
`
`10
`
`“receive unit” (claims 1 and 9)
`1.
`Inmy opinion, a “receive unit,” in the context of wireless
`
`32.
`
`communications described in the °577 Patent, would have been well-known to a
`POSITA to be circuitry that receives and processes wireless signals.
`
`I do not
`
`believe that construction is necessary because it is well understood to a POSITA.
`J understand that claim terms can be construed as a means plus
`
`33.
`
`15
`
`function term.
`
`I understand that, if the Board construes “receive unit” as a means
`plus function term, that they will look at the particular structure disclosed in the
`specification, that the recited function that the structure performs.
`
`I8
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026568
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19511 Filed 06/20/24 Page 21 of 118
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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`34.
`
`Ifthe Board construes “receive unit” as a means plus function term,
`the structure is “circuitry that receives and processes wireless signals in
`conjunction with the processor” and the function that it performs is: (a) “receive
`
`control data via control channels over at least a first communication channel or a
`
`second communication channel”
`
`Patent at 24:25—31) and (b) “receive
`downlink data on the assigned OFDM subcarriers of the first communication
`channel and the assigned OFDM subcarriers of the second communication channel.”
`
`35.
`
`(id. at 24:40-44).
`The above-described structure is described in the specification, which
`discloses a “receiving unit” that ““may include one or more ... receivers ... or
`receiving chains.”
`Patent at 9:1-4, Figs. 3A-3B, Element 304(R); see also id.
`
`at 9:58-60. The receiver can have “one or more radios.” /d. at 9:4-6, 9:63-65,
`3:54-63. A radio is circuitry that receives and processes wireless signals. The
`receiving unit 304(R) (annotated yellow, below) receives wireless signals from the
`wireless communication link 106 (aqua).
`/d. at Fig. 3B, 4:32-35.
`
`10
`
`15
`
`19
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026569
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19512 Filed 06/20/24 Page 22 of 118
`
`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`Data
`Source(s) & Sink(s)
`352
`
`Subscriber Station (SS)
`
`4104
`
`Processor-Accessible Media
`
`308
`
`Processor-Executable Instrs.
`
`310
`
`Operating
`System
`312
`
`Application
`Program(s)
`
`SS Channel
`Aggregation
`Module
`3o4
`
`FIG. 3B
`
`Input / Output
`Interface(s)
`302
`
`Transmitting
`
`Unit
`
`Processor(s)
`306
`
`Example
`Subscriber
`
`36.
`
`The above-described structure performs the function. The
`embodiments of Fig. 3B, which illustrate the receivers, are “utilized to implement
`embodiments of channel aggregation.”
`
`Patent at 2:56-59. The receivers
`
`receive control data via control channels over at least a first or second
`
`communication channel.
`
`/d. at 23:40-42, Figs. 5-6, 24:25-31. The data is received
`by the receiver on the assigned OFDM subcarriers.
`
`/d. at 15:42-49, 6:65-7:3,
`
`24:40-44.
`
`die
`
`“transmit unit” (claim 4)
`
`20
`
`TCL Exhibit 1003
`
`NEO-MDL_PA026570
`
`

`

`Case 2:22-md-03034-TGB ECF No. 255-17, PageID.19513 Filed 06/20/24 Page 23 of 118
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`Petition for Inter Partes Review of U.S. Patent 9,854,577 B2
`PTAB Case No. IPR2020-00304
`EX1003: Declaration of Dr. Titus Lo
`
`37.
`
`Claim 4 recites a “transmit unit” that is configured to transmit “to a
`the wireless device is capable of channel
`
`base station, an indication that
`aggregation.”
`In my opinion, a “transmit unit,” in the context of wireless
`
`38.
`
`communications described in the
`
`Patent, would have been well-known to a
`POSITA to be circuitry that transmits and processes wireless signals. I do not
`
`believe that construction is necessary.
`understand that claim terms can be construed as a means plus
`
`39.
`
`function term.
`
`I understand that, if the Board construes “transmit unit” as a means
`plus function term, that they will look at the particu