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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 37
`Entered: Jan. 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Cases IPR2014-01195
`Patent 7,787,431 B2
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`J. JOHN LEE, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`filed a Petition requesting an inter partes review (Paper 2, “Pet.”) of claims
`1, 2, 8–12, and 18–22 of U.S. Patent No. 7,787,431 B2 (Ex. 1001, “the ’431
`patent”). On February 4, 2015, we instituted an inter partes review of
`claims 1 and 2 (the “challenged claims”), but did not institute a review of
`
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`IPR2014-01195
`Patent 7,787,431 B2
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`claims 8–12 and 18–22. Paper 11 (“Decision”). Intellectual Ventures II
`LLC (“Patent Owner”) filed a Patent Owner Response (“PO Resp.”) on
`April 23, 2015. Paper 22. Petitioner filed a Reply. Paper 25 (“Reply”). An
`oral hearing was held on September 10, 2015.1
`We have jurisdiction under 35 U.S.C. § 6(c), and this Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine Petitioner has shown by a
`preponderance of the evidence that claims 1 and 2 are unpatentable.
`
`B. Related Proceedings
`The parties indicate the ’431 patent is at issue in five district court
`proceedings involving numerous parties, none of which name Petitioner as a
`defendant. Pet. 1; Paper 5, 1.
`
`C. The ’431 Patent
`The ’431 patent relates to multi-carrier communication systems and
`methods with variable channel bandwidth. Ex. 1001, Abstract.
`The challenged claims recite methods performed by base stations for
`generating information bearing signals, wherein the information bearing
`signals include a primary preamble having certain properties. Id. at 9:33–
`10:9, 11:54–12:27, 13:4–47.
`
`D. Illustrative Claims
`Of the challenged claims in the ’431 patent, claim 1 is independent,
`illustrative, and reproduced below:
`1.
`In a variable bandwidth wireless communication system
`communicating under multiple different communication schemes that
`each have a different bandwidth, a process performed by a base
`
`
`1 The record includes a transcript of the oral hearing. Paper 36 (“Tr.”).
`
`2
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`Patent 7,787,431 B2
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`station of generating an information bearing signal for wireless
`transmission, the process comprising:
`utilizing by the base station a number of subcarriers to construct a
`variable bandwidth wireless channel;
`utilizing by the base station groups of subcarriers, wherein each
`group includes a plurality of subcarriers;
`maintaining a fixed spacing between adjacent subcarriers;
`adding or subtracting, by the base station, groups of subcarriers to
`scale the variable bandwidth wireless channel and achieve an
`operating channel bandwidth; and
`wherein a core-band including a plurality of subcarrier groups,
`substantially centered at an operating center frequency of the
`different communication schemes, is utilized by the base station
`as a broadcast cannel carrying radio control and operation
`signalling, where the core-band is substantially not wider than a
`smallest possible operating channel bandwidth of the system;
`and
`wherein the information bearing signal has a primary preamble
`sufficient for basic radio operation and wherein:
`the primary preamble is a direct sequence in the time domain
`with a frequency content confined within the core-band, or
`is an orthogonal frequency-divisional multiplexing (OFDM)
`symbol corresponding to a particular frequency pattern
`within the core-band; and
`wherein properties of the primary preamble comprise:
`an autocorrelation having a large correlation peak with respect
`to sidelobes;
`a cross-correlation with other primary preambles having a small
`cross-correlation coefficient with respect to power of other
`primary preambles; and
`a small peak-to-average ratio; and
`wherein a large number of primary preamble sequences exhibit
`the properties.
`
`3
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`IPR2014-01195
`Patent 7,787,431 B2
`E. The Evidence Relied Upon By Petitioner
`Petitioner relies upon the following prior art references as its basis for
`challenging claims 1 and 2 of the ’431 patent.2
`Reference
`Patents/Printed Publications
`Li
`U.S. Patent No. 6,904,283 B2
`(June 7, 2005)
`U.S. Patent No. 7,782,750 B2
`(August 24, 2010)
`U.S. Patent No. 7,426,175 B2
`(September 16, 2008)
`Universal Mobile
`Telecommunications System
`(UMTS); UMTS Terrestrial
`Radio Access (UTRA); Concept
`evaluation (UMTS 30.06 version
`3.0.0), European
`Telecommunications Standards
`Institute (1997)
`U.S. Patent Pub. 2002/0181509
`A1 (December 5, 2002)
`Stéphane Nobilet et al.,
`Spreading Sequences for Uplink
`and Downlink MC-CDMA
`Systems: PAPR and MAI
`Minimization, European
`Transactions on
`Communications, Vol. 13, No. 5,
`pp. 465–474 (2002)
`Branislav M. Popović, Spreading
`Sequences for Multicarrier
`CDMA Systems, IEEE Trans.
`Comm., Vol. 47, No. 6, pp. 918–
`926 (1999)
`
`Yamaura
`
`Zhuang
`
`UTRA
`(Referred to
`in some
`filings as
`Beta)
`
`Mody
`
`Nobilet
`
`Popovic
`
`Exhibit
`1002
`
`1003
`
`1004
`
`1007 (multiple parts)
`
`1005
`
`1006
`
`1008
`
`
`2 Petitioner also proffers the Declarations of Zygmunt J. Haas, Ph.D. See
`Exs. 1012, 1034.
`
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`Patent 7,787,431 B2
`1. Li (Ex. 1002)
`Li “relates to the field of wireless communications; more particularly,
`the invention relates to multi-cell, multi-subscriber wireless systems using
`orthogonal frequency division multiplexing (OFDM).” Ex. 1002, 1:11–14.
`Li describes separating a wide OFDM bandwidth into multiple narrow-band
`subcarriers and grouping one or more of the subcarriers into clusters. Id. at
`1:19–21, 5:18–27. One of Li’s base stations may assign a subscriber (e.g., a
`mobile unit) a variable number of clusters of subcarriers, increasing or
`decreasing the communication bandwidth as necessary. Id. at 6:43–48.
`
`2. Yamaura (Ex. 1003)
`Yamaura describes a method, and apparatuses for implementing the
`method, of radio communication “for exchanging information between a
`base station and a terminal station.” The described method communicates
`multi-carrier signals using OFDM modulation “including plural subcarriers
`within a bandwidth, communicating control signals in addition to the
`information between the base station and the terminal station, and wherein
`part of the control signals . . . is transmitted by one or more specific
`subcarriers in the bandwidth for the multi-carrier signals.” Ex. 1003,
`Abstract.
`
`3. Zhuang (Ex. 1004)
`Zhuang describes optimizing the auto correlation properties of each
`pilot signal and the cross correlation properties between pilot signals through
`the use of certain chirp sequences. Ex. 1004, 2:7–29.
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`4. UTRA (Ex. 10073)
`UTRA “describes the detailed evaluation work towards the definition
`of the Universal Mobile Telecommunications System UMTS Terrestrial
`Radio Access (UTRA) within SMG2.” Ex. 1007, 5. The Beta Concept
`Group portion of UTRA “outlines the basic system characteristic of
`OFDMA which is proposed for UTRA selection” and “describes the basic
`concept behind the OFDMA proposal and its advantages and [features].” Id.
`at 175.
`
`5. Mody (Ex. 1005)
`Mody describes using chirp-like sequences as training symbols. Ex.
`1005 ¶¶ 41–42. Mody’s training sequences may be either OFDM signals or
`“directly modulatable” signals. Id.
`
`6. Nobilet (Ex. 1006)
`Nobilet describes properties of specific chirp-like sequences known as
`Zadoff-Chu codes, which have “optimum correlation properties.” Ex. 1006
`§ 3.1.2. Nobilet teaches that certain Zadoff-Chu sequences (the set of L – 1
`sequences, if L is the sequence length and a prime number) have “an ideal
`
`periodic autocorrelation, and on the other hand a constant magnitude (√𝐿𝐿)
`
`periodic cross-correlation.” Id.
`
`7. Popovic (Ex. 1008)
`Popovic teaches that certain Zadoff-Chu sequences (the set of N – 1
`sequences, if N is the sequence length and a prime number) “have the best
`possible periodic crosscorrelation function.” Ex. 1008, 922.
`
`
`3 We cite to the exhibit page numbers of UTRA, rather than UTRA’s
`original pagination.
`
`6
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`Patent 7,787,431 B2
`F. The Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 19–20):
`Statutory Ground
`References
`Challenged Claims
`§ 103
`Li, Yamaura, Zhuang, and
`1 and 2
`UTRA
`Li, Yamaura, Mody, Nobilet,
`Popovic, and UTRA
`
`1 and 2
`
`§ 103
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms are given their broadest
`reasonable interpretation in light of the specification in which they appear
`and the understanding of others skilled in the relevant art. See 37 C.F.R.
`§ 42.300(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed.
`Cir. 2015). Applying that standard, we interpret the claim terms of the ’431
`patent according to their ordinary and customary meaning in the context of
`the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007) (quoting Philllips v. AWH Corp., 415 F.3d
`1303, 1312 (Fed. Cir. 2005) (en banc)). The parties propose the same
`construction for “peak-to-average ratio” and, although the parties propose
`different definitions for “bandwidth,” “core-band,” and “primary preamble,”
`the differences do not materially affect the outcome of the analysis. See Pet.
`16–18; see also PO Resp. 11–14. We construe only those claim terms in
`controversy, and we do so only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Accordingly, we do not construe explicitly “peak-to-average ratio,”
`“bandwidth,” “core-band,” or “primary preamble.” The parties also dispute
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`the proper construction of “radio control and operation signalling,”
`“substantially not wider,” and “sufficient for basic radio operation,” each of
`which we address below.
`
`1. “radio control and operation signalling”
`Patent Owner argues “radio control and operation signalling” should
`be construed as “radio control signals and radio operation signals.” PO
`Resp. 15–16. Specifically, Patent Owner asserts that “radio control
`signaling is separate from radio operation signaling.” Id. at 15. Patent
`Owner contends radio control signals are necessary to set up radio
`operations, whereas radio operation signals are sent only after a
`communication link is established. Id. at 15–16.
`Petitioner asserts that “radio control and operation signalling” refers
`to a single concept. Reply 5–6. Specifically, Petitioner argues that the
`phrase is used only one time in the detailed description of the ’431 patent,
`which recites that “[r]adio control and operation signaling is realized
`through the use of a core-band (CB),” indicating that the drafter of the ’431
`patent regarded the phrase as a single concept. Id. at 6 (quoting Ex. 1001,
`4:66–67) (internal quotations omitted). Petitioner contends the ’431 patent
`provides examples of control signals but does not provide clarity regarding
`the meaning of the recited “radio control and operation signalling.” Id.
`(citing Ex. 1001, 5:8–18; Ex. 1034 ¶ 9). Petitioner further contends that
`claim 1 recites the core-band is used as a broadcast channel, and that a
`broadcast channel would not carry dedicated channels, which would be
`required by Patent Owner’s proposed construction.
`In the context of the ’431 patent, we agree with Petitioner that the
`phrase “radio control and operation signalling” refers to a single concept. In
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`addition to the portion of the ’431 patent referred to by the parties, we find
`informative the entirety of the section, including the heading – “Radio
`Operation Via Core-Band,” in which the cited disclosures are included. Ex.
`1001, 4:63–5:62. The section starts by stating that “specific signaling and
`control methods are required” in order for “user terminals to operate in a
`variable bandwidth (VB) environment.” Id. at 4:64–66 (emphasis added).
`Although this description mentions both “signaling” and “control methods,”
`it does not distinguish between control signals and operations signals. As
`Patent Owner points to one embodiment disclosing that the core-band
`includes various channels (i.e., “essential control channels, a set of data
`channels and their related dedicated control channels”) “to maintain basic
`radio operation.” Id. at 5:8–13. That embodiment further describes basic
`radio operation as a state that a mobile station may be in when entering a
`network before transitioning to normal operation, which uses the full
`bandwidth including “sidebands for additional data and radio control
`channels.” Id. at 5:13–17, Abs. (stating also that mobile stations use the
`“core-band to initiate communication and obtain essential information”
`before switching to full bandwidth “for the remainder of the
`communication”).
`The remainder of the section describes embodiments using primary
`preambles, which occupy only the core-band; auxiliary preambles, which
`occupy only the sideband (the portion of the bandwidth other than the core-
`band); and full-bandwidth preambles, which occupy the entire bandwidth
`and are a combination of the primary preamble and the auxiliary preamble.
`Id. at 5:19–62. Although those paragraphs provide information regarding
`the properties of the preambles (one property being that the primary
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`Patent 7,787,431 B2
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`preamble resides in the core-band) and explain that the primary preamble
`“alone is sufficient for basic radio operation,” they do not provide clarity
`regarding the content, if any, of the core-band.
`Based on the disclosures cited and the context of the patent, we agree
`with Petitioner that the ’431 patent treats “radio control and operation
`signalling” as a single concept. The only relevant discussion in the
`’431 patent indicates that the “radio control and operation signalling” is the
`signaling required for a mobile station “to initiate communication and obtain
`essential information,” so that a mobile station may transition from a
`primary state to a full-bandwidth operation mode. See Ex. 1001, Abs., 4:63–
`5:18. We also agree with Petitioner that the recitation of the use of the core-
`band as a broadcast channel to carry the radio control and operation
`signaling precludes such signaling from including dedicated channels.
`Accordingly, we construe “radio control and operation signalling” to be
`signaling sufficient for a mobile station to initiate communication with, and
`obtain essential information from, a base station.
`
`2. “substantially not wider”
`Patent Owner argues that “substantially” is used as a term of
`magnitude rather than a term of approximation and that the proper
`construction of “substantially not wider,” therefore, is “significantly
`narrower than.” PO Resp. 16–18. Patent Owner acknowledges that the use
`of “substantially” in the phrase “substantially centered” (elsewhere in claim
`1) is used as a term of approximation. Tr. 57:7–20; see PO Resp. 17.
`Nevertheless, Patent Owner argues the ’431 patent supports its proposed
`construction because the example provided in Figure 6 of the ’431 patent
`depicts a core-band that is 4 MHz and a smallest operating channel
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`Patent 7,787,431 B2
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`bandwidth of 5 MHz. PO Resp. 17. Patent Owner points to a reference in
`the ’431 patent stating that the width of the core-band “is less than the
`smallest channel bandwidth” to support its assertion that “substantially not
`wider” should not include a core-band that is equal to or greater than the
`smallest channel bandwidth in which the system operates. Id.
`Petitioner argues “substantially” is used as a term of approximation
`and that no construction of “substantially not wider” is necessary. Reply 2–
`5. Alternatively, to the extent an explicit construction is necessary,
`Petitioner proposes that “substantially not wider” be construed as “narrower
`than or equal to in width within a degree of accuracy that accounts for
`process and operational tolerances.” Id. at 5.
`We have reviewed the parties’ arguments and the various references
`in the ’431 patent to the width of the core band. We do not agree with
`Patent Owner’s assertion that the use of the term substantially when
`modifying “not wider” should be construed as a term of magnitude rather
`than a term of approximation.
`An important factor that we considered is that the plain language of
`“substantially not wider” does not seem to support an application of
`“substantially” as a term of magnitude because such a construction would
`essentially read out a portion of “not wider.” Reading “substantially” as a
`term of magnitude would essentially require substituting “significantly” for
`“substantially.” Patent Owner’s proposed construction, however, not only
`substitutes significantly for substantially, but changes “not wider” to
`“narrower than.” The plain and ordinary meaning of “not wider” is less than
`or equal to. Thus, simply treating “substantially” as a term of magnitude
`would result in a construction of “significantly less than or equal to.” As a
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`result, Patent Owner’s proposed construction is not a reasonable
`interpretation in that it makes little sense to recite being “significantly” equal
`to. Patent Owner agrees that “[n]ot wider does mean less than or equal to,”
`but argues that the recitation of “substantially not wider” “tak[es] out equal
`to.” Tr. 57:23–58:10. Thus, Patent Owner’s proposed construction reads
`out the “equal to” portion of “not wider,” which is inconsistent with the
`ordinary meaning of “not wider.” Patent Owner does not provide a
`persuasive rationale for disregarding the term’s ordinary meaning.
`If we apply substantially to the phrase “not wider” as a term of
`approximation, however, we are led to a construction that one item (the
`core-band) is not wider, within some range of tolerance, than another item
`(the smallest operating channel bandwidth). Such an interpretation is
`consistent with the term’s ordinary meaning and the context of the
`specification. Finally, the drafter of the ’431 patent chose to use the phrase
`“not wider” in claim 1 rather than “narrower” or “less than,” which was used
`on at least one occasion on the specification. Accordingly, on balance, we
`find no explicit construction is necessary but determine that “substantially”
`modifies “not wider” as a term of approximation rather than a term of
`magnitude.
`
`3. “primary preamble sufficient for basic radio operation”
`Patent Owner argues a primary preamble “sufficient for basic radio
`operation” should be construed as “a primary preamble ‘including radio
`control channels and data channels sufficient for the mobile station to
`operate at a primary state.’” PO Resp. 18–20. Patent Owner points to
`disclosures in the ’431 patent describing that various channels, including
`essential control channels as well as data channels and their related
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`dedicated control channels, are placed in the core-band in order to maintain
`basic radio operation. Id. at 19. Patent Owner concludes that “sufficient for
`basic radio operation” must include data channels. Id.
`Petitioner asserts the proper construction is “a primary preamble
`containing information to establish radio operation.” Reply 11. Petitioner
`argues Patent Owner confuses descriptions in the ’431 patent of the core-
`band with descriptions of the primary preamble. Id. at 8–11. Petitioner also
`argues that Patent Owner’s proposed construction is inconsistent with the
`term “preamble” because “[t]here is no reason why data channels would be
`near the beginning of a frame.” Id. at 10 (citing Ex. 1034 ¶ 20).
`As discussed above with respect to the construction of “radio control
`and operation signalling,” “basic radio operation” is described as being a
`primary state of a mobile station. Ex. 1001, 5:13–16. From the primary
`state, the mobile station then transitions to a full-bandwidth state to
`participate in a communication session with the base station. Id. at Abs.,
`5:15–18. Petitioner also correctly points out that the disputed claim term
`relates to the primary preamble rather than the core-band. We determine
`that, in the context of the ’431 patent, “a primary preamble sufficient for
`basic radio operation” means a primary preamble sufficient for a mobile
`station to operate in its primary state.
`
`B. The Asserted Grounds
`Petitioner challenges claims 1 and 2 as obvious over Li, Yamaura,
`Zhuang, and UTRA and, alternatively, as obvious over Li, Yamaura, Mody,
`Nobilet, Popovic, and UTRA. Pet. 39–46, 56–59; Reply 12–23.
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`1. Claims 1 and 2: Obvious in View of Li, Yamaura, Zhuang, and
`UTRA
`Petitioner argues Li teaches a base station, in a variable bandwidth
`wireless communication system, generating an information bearing signal
`using clusters of subcarriers to construct a variable bandwidth channel, and
`adding clusters when necessary to increase the bandwidth of the channel.
`Pet. 39–42. Petitioner further argues Yamaura teaches a method of
`communicating, in a preamble, OFDM control signals sufficient for basic
`radio operation (i.e., call signaling and synchronization) transmitted in any
`number of subcarriers centered at an operating center frequency, wherein the
`subcarriers are spaced at certain frequency intervals. Id. at 42–44.
`Petitioner asserts UTRA teaches a variable bandwidth system because it uses
`a variable number of bandslots to create operating channels in increments of
`100 kHz. Id. at 43–44. Petitioner further asserts that Yamaura could use 24
`subcarriers, which is the number of subcarriers used by UTRA for its
`smallest operating channel bandwidth of 100 kHz. Id. Petitioner contends
`Zhuang teaches preambles having the properties recited in claim 1. Id. at 45,
`58–59. With respect to claim 2, Petitioner argues both Li and UTRA teach
`an OFDMA signal and that UTRA teaches using FDD and TDD in duplex
`mode. Id. at 45–46. Petitioner provides a rationale for combination of the
`references, arguing that incorporation of various aspects into the proposed
`combination merely involves applying a known technique to a piece of prior
`art ready for improvement, and yields known and predictable results. See
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We have reviewed
`the submitted briefs and supporting documents, and we are persuaded by
`Petitioner’s arguments with respect to the teachings of the references and the
`rationale for combining the references, notwithstanding Patent Owner’s
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`arguments to the contrary. Accordingly, we determine claims 1 and 2 would
`have been obvious in view of Li, Yamaura, Zhuang, and UTRA.
`Patent Owner argues Petitioner has not met its burden in establishing
`that the combination of Li, Yamaura, Zhuang, and UTRA teaches the recited
`core-band, radio control and operation signalling, or primary preamble
`sufficient for basic radio operation. PO Resp. 24–35, 53–54. Patent Owner
`further argues Petitioner has not provided sufficient reason to combine Li,
`Yamaura, Zhuang, and UTRA. Id. at 36–51, 54–60. Patent Owner only
`contests Petitioner’s challenge to claim 2 for the same reasons asserted with
`respect to claim 1. Accordingly, we focus our analysis on the parties’
`arguments with respect to the contested issues. First, we discuss the
`combination of the relevant aspects of the asserted references, then we
`address the individual elements Patent Owner contends are not present in
`Petitioner’s proposed combination.
`Combination of References
`Patent Owner argues Petitioner has not established that a person
`having ordinary skill in the art would have combined the teachings of the
`asserted references. Specifically, Patent Owner argues Petitioner has
`provided no reason, motivation, or suggestion to combine Yamaura with any
`of Li, UTRA, or Zhuang and that Petitioner’s challenges merely “cobble
`together numerous and disparate prior art references.” PO Resp. 36–58.
`However, as discussed below and notwithstanding Patent Owner’s argument
`to the contrary, we find Petitioner’s reasoning for combining the various
`teachings of the references to have sufficient rational underpinnings.
`Patent Owner’s first challenge is that Petitioner has not alleged
`reasons that an ordinarily skilled artisan would have combined Li and
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`Yamaura. PO Resp. 37–38. Patent Owner notes that Petitioner’s assertions
`regarding the obviousness of combining Li and Yamaura were not asserted
`with respect to claim 1 and were asserted only with respect to claim 8, for
`which review was not instituted. Id. at 38.
`As Patent Owner points out (PO Resp. 38), we instituted review of
`claims 1 and 2 in view of the asserted combinations based on the arguments
`made with respect to claim 8. Dec. 12–14. Patent Owner is also correct that
`the language recited in claim 8 is different from the language recited in
`claim 1. The teachings from Li and Yamaura that Petitioner proposes an
`ordinarily skilled artisan would have combined, however, are the same and
`the references are being relied on to teach features in claim 1 similar to the
`features Petitioner argued with respect to claim 8; we address Petitioner’s
`mapping of the combined teachings to the recited limitations of claim 1
`below. We conclude Patent Owner had sufficient notice and a full and fair
`opportunity to respond to the combination of references as applied in our
`Decision. Id. Accordingly, we find no prejudice to Patent Owner and
`analyze the substantive arguments presented by the parties.
`Petitioner asserts that incorporating Yamaura’s control signals into
`Li’s OFDMA system simply requires applying the known control signaling
`technique of Yamaura to Li’s OFDMA system, which is ready for
`improvement, yielding the predictable result of leveraging the benefits of
`Yamaura’s signaling. Pet. 22–23 (citing Ex. 1012 ¶ 51); Reply 18.
`Petitioner argues Li’s explicit statement that OFDM-based systems typically
`include other channels used for control and synchronization would have led
`a person having ordinary skill to implement known control and
`synchronization signaling, such as those taught by Yamaura, with Li’s
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`system. Pet. 22–23. Petitioner explains that the disclosure in Li provides a
`reason to search for known implementations of such channels for control and
`synchronization signals. Reply 19.
`Patent Owner contends that Li and Yamaura are directed at different
`aspects of wireless communications and, thus, one of ordinary skill would
`not have combined Li and Yamaura. PO Resp. 39–43. Patent Owner further
`contends that a rationale based on Yamaura filling an alleged gap in Li with
`respect to control and synchronization signaling relies on an incorrect
`assumption that Li does not disclose exchanging control information
`between the base station and subscriber. Id. at 43–44. At oral argument,
`Patent Owner explained further, stating that “Li already teaches a
`mechanism to exchange control information” and “Li absolutely and
`unequivocally provides downlink control information to mobile terminals.”
`Tr. 32:13–14, 19–20.
`We have reviewed the parties’ arguments as well as the testimony of
`Dr. Haas (Ex. 1012 ¶¶ 34–51) and Dr. Zeger (Declaration of Kenneth Zeger,
`Ph.D., Ex. 2001 ¶¶ 67–85, 132–142), and we find that Petitioner has
`demonstrated that a person having ordinary skill in the art would have
`combined the teachings of Li and Yamaura in the manner proposed by
`Petitioner. We agree with Petitioner that Li and Yamaura focus on
`complementary aspects of wireless communication systems. Yamaura
`teaches one way to provide control and synchronization signaling using
`OFDM. Li teaches that “there are typically other channels [not described in
`detail in Li], pre-allocated for the exchange of control information and other
`purposes,” which would have led an ordinarily skilled artisan to look to
`specific implementations of control and synchronization signaling, including
`
`17
`
`
`
`IPR2014-01195
`Patent 7,787,431 B2
`
`the implementation taught by Yamaura. See Ex. 1002, 5:1–17. We
`acknowledge that Li does teach certain control signaling on both uplink and
`downlink channels. Nevertheless, we find Petitioner’s assertion, supported
`by Dr. Haas’s testimony, that an ordinarily skilled artisan would have looked
`elsewhere for control and synchronization channels prior to establishing
`communication with a mobile station, is supported by Li’s explicit statement
`that there are typically other channels pre-allocated for that purpose.
`With respect to combining the teachings of UTRA and Li, Petitioner
`asserts “[i]t would have been obvious to one of ordinary skill in the art to
`apply the known technique of scaling OFDM bandwidth within an available
`channel bandwidth, as disclosed by [UTRA], to the known OFDM system
`with scalable bandwidth of Li to yield known and predictable results.” Id. at
`43 (citation omitted). Patent Owner does not contest this combination, and
`we find Petitioner’s arguments persuasive.
`Petitioner makes no specific argument regarding the combination of
`UTRA and Yamaura, but asserts that each of UTRA and Yamaura would
`have been combined with Li and, therefore, the relevant teachings from each
`of UTRA and Yamaura would be combined through the relevant teachings
`of Li. Reply 21. We have discussed above Petitioner’s bases for combining
`the teachings of Li with each of Yamaura and UTRA, and we find
`Petitioner’s arguments persuasive.
`Patent Owner merely attacks the combination because Petitioner does
`not combine every reference with each other reference, and instead relies on
`combining UTRA and Yamaura through Li. PO Resp. 44–45, 48–51. There
`is no per se rule that requires each subset of prior art references to be
`independently combined, and Patent Owner does not point us to any
`
`18
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`
`
`IPR2014-01195
`Patent 7,787,431 B2
`
`authority that Petitioner’s “pair-wise” combination is improper. Absent a
`teaching away from the asserted combination or failure of the asserted
`combination to result in the claimed features, we find no flaw in Petitioner’s
`manner of combining prior art teachings. So long as the Petitioner’s
`rationale for combining teachings account for all the teachings relied on for
`rendering the claimed invention unpatentable, that is sufficient.
`Petitioner further asserts a skilled artisan would have combined
`Zhuang’s chirp sequences with Yamaura’s preambles, which “use of cross
`correlation . . . for detecting the narrowband control signals,” because
`“Zhuang’s preambles offer improvements in crosscorrelation, while at the
`same time providing benefits of good autocorrelation and low PAPR [peak
`to average power ratio].” Pet. 27, 29. Petitioner alleges the combination
`would have been obvious to an ordinarily skilled artisan because it merely
`requires applying the known technique of Zhuang’s generalized chirp-like
`OFDM sequences to Yamaura’s OFDM preambles to yield a known and
`predictable result of providing good correlation properties and low PAPR.
`Id. at 29–30. Patent Owner argues that a person having ordinary skill would
`not have combined Zhuang’s chirp-sequences with Yamaura’s preamble
`because such a combination would render Li’s pilot symbols inoperable for
`their intended purpose of allocating clusters. PO Resp. 45–48.
`Yamaura uses crosscorrelation values of its preambles to identify
`stations being called. See Pet. 27 (citing Ex. 1003, 19:64–67, 20:14–19).
`Zhuang teaches using chirp sequences in preambles to improve
`crosscorrelation properties. Accordingly, we find an ordinarily skill
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