`Tel: 571-272-7822
`
`Paper 11
`Entered: Feb. 4, 2015
`
`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
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`J. JOHN LEE, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`INTRODUCTION
`
`A. Background
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`
`filed a Petition to institute an inter partes review (Paper 2, “Pet.”) of claims
`
`1, 2, 8–12, and 18–22 (the “challenged claims”) of U.S. Patent No.
`
`7,787,431 (Ex. 1001, “the ’431 patent”). Intellectual Ventures II LLC
`
`
`
`IPR2014-01195
`Patent 7,787,431
`
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”) on
`
`November 5, 2014. Paper 10.
`
`We have jurisdiction under 35 U.S.C. § 314. The standard for
`
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted unless “there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” After considering the Petition
`
`and Preliminary Response, we determine that Petitioner has established a
`
`reasonable likelihood of prevailing on at least one ground on claims 1 and 2,
`
`but not claims 8–12 and 18–22. Accordingly, we institute an inter partes
`
`review of claims 1 and 2.
`
`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 and base stations for generating
`
`and/or transmitting 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, claims 1, 8 and 18 are
`
`independent. Claims 1 and 18 are directed to methods, and claim 8 is
`
`2
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`IPR2014-01195
`Patent 7,787,431
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`directed to a base station having circuitry configured to execute the method
`
`steps of claim 18. Therefore, claims 1 and 18 are illustrative and recite:
`
`In a variable bandwidth wireless communication system
`1.
`communicating under multiple different communication schemes that
`each have a different bandwidth, a process performed by a base
`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
`signaling, 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
`
`3
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`IPR2014-01195
`Patent 7,787,431
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`a small peak-to-average ratio; and
`
`wherein a large number of primary preamble sequences exhibit
`the properties.
`
`18. A variable bandwidth communication method
`comprising:
`
`transmitting a broadcast channel by a cellular base station in an
`orthogonal frequency division multiple access (OFDMA) core-
`band, wherein the core-band is substantially centered at an
`operating center frequency and the core-band includes a first
`plurality of sub carrier groups, wherein each subcarrier group
`includes a plurality of subcarriers, wherein the core-band is
`utilized to communicate a primary preamble sufficient to enable
`radio operations, the primary preamble being a direct sequence
`in the time domain with a frequency content confined within
`the core-band or being an OFDM symbol corresponding to a
`particular frequency pattern within the core-band
`
`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; and
`
`transmitting control and data channels by the cellular base station
`using a variable band including a second plurality of subcarrier
`groups, wherein the variable band includes at least the core-
`band.
`
`Ex. 1001, 9:33–10:2, 13:4–36.
`
`E. The Evidence of Record
`
`Petitioner relies upon the following prior art references as its basis for
`
`4
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`Patent 7,787,431
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`challenging claims 1, 2, 8–12, and 18–22 of the ’431 patent.1
`
`Patents/Printed Publications
`U.S. Pat. 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 (Dec. 5, 2002)
`Nobilet et al., Spreading
`Sequences for Uplink and
`Downlink MC-CDMA Systems:
`PAPR and MAI Minimzation,
`European Transactions on
`Communications, vol. 13, no. 5,
`pp. 465–473 (2002)
`Popović, Spreading Sequences
`for Multicarrier CDMA Systems,
`IEEE Trans. Comm., vol. 47, no.
`6, pp. 918–926 (1999)
`
`Exhibit
`1002 (“Li”)
`
`1003 (“Yamaura)
`
`1004 (“Zhuang”)
`
`1007 (multiple parts)
`(“UTRA”)
`
`1005 (“Mody”)
`
`1006 (“Nobilet”)
`
`1008 (“Popovic”)
`
`
`
`Reference
`Li
`
`Yamaura
`
`Zhuang
`
`UTRA
`
`Mody
`
`Nobilet
`
`Popovic
`
`
`1 Petitioner also proffers the Declaration of Dr. Zygmunt Haas. See Ex.
`1012 (“Haas Dec.”).
`
`5
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`
`
`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.
`
`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 [using] multi-carrier signals by OFDM
`
`modulation scheme 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. UTRA (Ex. 10072)
`
`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.
`
`
`2 We cite to the exhibit page numbers of Ex. 1007, rather than its original
`pagination.
`
`6
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`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. 3–5):
`
`Statutory Ground
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`Reference
`Li, Yamaura, and Zhuang
`Li, Yamaura, Zhuang, and
`Beta
`Li, Yamaura, Mody, Nobilet,
`and Popovic
`Li, Yamaura, Mody, Nobilet,
`Popovic, and Beta
`
`Challenged Claims
`8–11 and 18–21
`1, 2, 12, and 22
`
`8–11 and 18–21
`
`1, 2, 12, and 22
`
`A. Claim Construction
`
`ANALYSIS
`
`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). 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
`
`different constructions for the terms “bandwidth,” “core-band,” and
`
`“primary preamble.” Pet. 16–18; Prelim. Resp. 11–16. Based on a review
`
`of the ’431 patent, we agree with, and Patent Owner does not dispute,
`
`Petitioner’s proposed construction of “peak-to-average ratio” as “peak-to-
`
`average power ratio.” Pet. 18–19, Prelim. Resp. 16. We do not find it
`
`necessary, for purposes of this decision, to construe explicitly “bandwidth”
`
`at this time.
`
`7
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`1. Core-band
`
`The parties agree that the ’431 patent defines explicitly a core-band
`
`but dispute whether the definition includes the phrase “substantially centered
`
`at the operating center frequency.” Pet. 17; Prelim. Resp. 13. We note,
`
`however, that the claims all recite the phrase “substantially centered at the
`
`operating center frequency.” For example, independent claim 1 recites a
`
`“core-band, including a plurality of sub carrier groups, substantially centered
`
`at an operating center frequency of the different communication schemes.”
`
`Ex. 1001, 9:46–48. Independent claims 8 and 18 recite a “core-band,
`
`wherein the core-band is substantially centered at an operating center
`
`frequency.” Id. at 11:57–58, 13:9–10. Therefore, including “wherein the
`
`core-band is substantially centered at an operating center frequency” in the
`
`construction of core-band would render the language recited in claims 1, 8,
`
`and 18 superfluous. Moreover, the specification includes the disputed
`
`language before the phrase “is defined as,” implying a presumption that the
`
`disputed language is not part of the patentee’s definition. Id. at 4:67–5:4.
`
`Thus, for purposes of this decision, we determine that a core-band is defined
`
`as “a frequency segment that is not greater than the smallest operating
`
`channel bandwidth among all the possible spectral bands with which the
`
`receiver is designed to operate.”
`
`2. Primary Preamble
`
`The parties agree that a preamble is a transmission at or near the
`
`beginning of a transmission and that “primary preamble” is not a term of art.
`
`Pet. 17; Prelim. Resp.14. Additionally, the parties agree that a primary
`
`preamble occupies only the core band. Pet. 18; Prelim. Resp. 14. Patent
`
`Owner, however, argues that the primary preamble should be further limited
`
`8
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`to include bandwidth information. Prelim. Resp. 14–16. Although we agree
`
`with Patent Owner that the ’541 patent describes the primary preamble alone
`
`as being sufficient for basic radio operation, we do not agree with Patent
`
`Owner that the primary preamble, therefore, must include bandwidth
`
`information. In fact, the portion of the ’431 patent that Patent Owner quotes
`
`states that the bandwidth information is provided “using a broadcast channel
`
`or a preamble.” Ex. 1001, 6:26–32 (emphasis added). Moreover, the 431
`
`patent explains that “[i]n one embodiment, relevant or essential radio control
`
`signals such as preambles, . . . bandwidth request, and/or bandwidth
`
`allocation are transmitted within the CB.” Id. at 5:8–10. Thus, although the
`
`’431 patent describes both the preambles and bandwidth information being
`
`transmitted in the core-band, it implies that the bandwidth could be separate
`
`from the primary preamble.
`
`The ’431 patent explains:
`
`primary preamble (EP), is designed to only occupy the CB[
`core-band], as depicted in FIG. 8. The EP alone is sufficient for
`the basic radio operation. The EP can be either a direct
`sequence in the time domain with its frequency response
`confined within the CB, or an OFDM symbol corresponding to
`a particular pattern in the frequency domain within the CB.
`
`Ex. 1001, 5:20–25. Therefore, for purposes of this decision, we construe a
`
`primary preamble as “a direct sequence in the time domain with its
`
`frequency response confined within the CB or an OFDM symbol
`
`corresponding to a particular pattern in the frequency domain within the CB,
`
`at or near the beginning of the transmission, which alone is sufficient for
`
`basic radio operation.”
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`B. The Asserted Grounds
`
`Petitioner challenges claims 8–11 and 18–21 as obvious over Li,
`
`Yamaura, and Zhuang or, alternatively, as obvious over Li, Yamaura, Mody,
`
`Nobilet, and Popovic. Pet. 20–39, 47–56. Petitioner challenges claims 1, 2,
`
`12, and 22 as obvious over Li, Yamaura, Zhuang, and UTRA or,
`
`alternatively, as obvious over Li, Yamaura, Mody, Nobilet, Popovic, and
`
`UTRA. Pet. 39–47, 56–60. Patent Owner argues Petitioner has not
`
`provided sufficient reason to combine Li, Yamaura, Zhuang, and Beta, and
`
`also argues that the combined references do not teach the recited core-band,
`
`primary preamble, or the properties of the primary preamble. Prelim. Resp.
`
`20–38.
`
`1. Claims 8–11 and 18–21: Obvious in View of Li, Yamaura, and
`Zhuang or Obvious in View of Li, Yamaura, Mody, Nobilet, and
`Popovic
`
`As discussed above, we construe a core-band to be “a frequency
`
`segment that is not greater than the smallest operating channel bandwidth
`
`among all the possible spectral bands with which the receiver is designed to
`
`operate.” Although Patent Owner asserts our construction, which is the
`
`same construction used in a prior proceeding, is incomplete, the parties agree
`
`that a core-band is not greater than the smallest operating channel bandwidth
`
`among all the possible spectral bands with which the receiver is designed to
`
`operate. Pet. 17; Prelim. Resp. 13.
`
`Patent Owner argues Petitioner has not shown that the asserted prior
`
`art teaches a core-band that is not greater than the smallest operating channel
`
`bandwidth among all the possible spectral bands with which the receiver is
`
`designed to operate. Prelim. Resp. 23–24. We have reviewed the arguments
`
`in the Petition regarding claims 8–11 and 18–21 and agree with Patent
`
`10
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`Owner. Petitioner has not shown where any reference teaches a core-band
`
`that is not greater than the smallest operating channel bandwidth among all
`
`the possible spectral bands with which the receiver is designed to operate.
`
`Petitioner has neither alleged that such a teaching was inherent to one of the
`
`references nor demonstrated why such a teaching would have been obvious
`
`to an ordinarily skilled artisan at the time of invention of the ’431 patent.
`
`Therefore, the Petition fails to demonstrate a reasonable likelihood that
`
`Petitioner would prevail with respect to its challenges to claims 8–11 or
`
`18–21.
`
`2. Claims 12 and 22: Obvious in View of Li, Yamaura, Zhuang,
`and UTRA or Obvious in View of Li, Yamaura, Mody, Nobilet,
`Popovic, and UTRA
`
`Claims 12 and 22 depend directly from claims 8 and 18, respectively.
`
`Ex. 1001, 12:25–27, 13:45–47. Petitioner introduces UTRA to its
`
`challenges of claims 12 and 22 to teach frequency division duplex (FDD)
`
`and time division duplex (TDD) modes. Pet. 45–47. Petitioner does not
`
`allege, with respect to claims 12 and 22, that UTRA teaches a core-band that
`
`is not greater than the smallest operating channel bandwidth among all the
`
`possible spectral bands with which the receiver is designed to operate.
`
`Therefore, because UTRA does not cure the deficiency identified with
`
`respect to claims 8 and 18, the Petition fails to demonstrate a reasonable
`
`likelihood that Petitioner would prevail with respect to its challenges to
`
`claims 12 or 22 for the same reasons as discussed with respect to claims 8–
`
`11 and 18–21.
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`3. Claims 1 and 2: Obvious in View of Li, Yamaura, Zhuang, and
`UTRA
`
`Petitioner asserts Li discloses the various aspects of 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 discloses 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, 43, 44. Petitioner asserts UTRA discloses 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 argues 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 asserts Zhuang teaches preambles having the recited
`
`properties. Id. at 45, 58–59. With respect to claim 2, Petitioner argues both
`
`Li and UTRA disclose an OFDMA signal and that UTRA teaches using
`
`FDD and TDD in duplex mode. Id. at 45–46.
`
`Petitioner argues that incorporating Yamaura’s control signals into
`
`Li’s OFDMA system simply is applying the known control signaling
`
`technique of Yamaura to Li’s OFDMA system that is ready for
`
`improvement, yielding a predictable result of leveraging the benefits of
`
`Yamaura’s signaling. Id. at 22–23. Petitioner points out that Yamaura
`
`mentions explicitly that other channels may be used for control and
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`synchronization, such that an ordinarily skilled artisan would look to
`
`implement known control and synchronization signaling with Li’s system.
`
`With respect to combining UTRA with 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 Beta, to the known OFDM system with scalable
`
`bandwidth of Li to yield known and predictable results.” Id. at 43 (citation
`
`omitted).
`
`Petitioner further argues a skilled artisan would have combined
`
`Zhuang’s chirp sequences with Yamaura, which “recognizes that
`
`crosscorrelation is a useful feature of a preamble,” 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].” Id. at 29. Petitioner alleges the combination would have been
`
`obvious to a skilled artisan because it is merely 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.
`
`Petitioner’s rationale for combination of each reference is that it is
`
`“the mere application of a known technique to a piece of prior art ready for
`
`the improvement,” which yields known and predictable results. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). On this record, we are
`
`persuaded by Petitoner’s mappings of the prior art to claims 1 and 2 and
`
`determine Petitioner has presented sufficient rationale for combining the
`
`references. In particular, we agree with Petitioner that it would have been
`
`obvious to an ordinarily skilled artisan to incorporate Yamaura’s OFDM
`
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`signaling with Li’s OFDMA variable bandwidth system because Yamaura
`
`teaches one way to provide control and synchronization signaling using
`
`OFDM and, as pointed out by Petitioner, Li recognizes that other channels
`
`may be used for control signals. Moreover, on this record, we agree with
`
`Petitioner that it would have been obvious to an ordinarily skilled artisan to
`
`combine the bandwidth-scaling technique in UTRA with Li’s general
`
`disclosure of increasing bandwidth by adding clusters. Finally, we agree
`
`that an ordinarily skilled artisan would have combined Zhuang’s chirp-like
`
`sequences to improve crosscorrelation properties of Yamaura’s preambles in
`
`light of the fact that Yamaura recognized that crosscorrelation was a useful
`
`feature of preambles.
`
`Patent Owner argues the combination of Yamaura and Li does not
`
`teach a core-band that is not wider than a smallest operating bandwidth of
`
`the system because Petitioner does not explain how or why one would
`
`combine Yamaura and UTRA and because Petitioner’s analysis is disjointed
`
`Prelim. Resp. 36. However, Petitioner asserts that the core-band is taught by
`
`Yamaura and that both Yamaura and UTRA would be combined with Li.
`
`Moreover, Petitioner explains that Yamaura discloses using any number of
`
`subcarriers and that selecting 24 subcarriers would result in a core-band not
`
`wider than the smallest operating channel bandwidth of the combined Li-
`
`Yamaura-UTRA system, where the smallest operating channel bandwidth
`
`would be 100 kHz.
`
`Patent Owner also argues Yamaura doesn’t teach the recited primary
`
`preamble because Yamaura’s preamble does not include bandwidth
`
`information. However, our preliminary construction of “primary preamble”
`
`does not require bandwidth information. Patent Owner also argues the
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`combination of Yamaura and Zhuang does not teach the properties of the
`
`preamble because Petitioner relies, “with no sufficient explanation or
`
`rationale, on the combination of Yamaura and Zhuang.” Prelim. Resp. 37.
`
`Patent Owner also argues Petitioner has provided no reason, motivation, or
`
`suggestion to combine Li, Yamaura, Zhuang, and UTRA, and Petitioner’s
`
`challenges amount to picking and choosing disclosures without explaining
`
`how or why one would have combined the art. Prelim. Resp. 38. However,
`
`as discussed above and notwithstanding Patent Owner’s argument to the
`
`contrary, we find Petitioner’s rationale sufficient.
`
`4. Claims 1 and 2: Obvious in View of Li, Yamaura, Mody,
`Nobilet, Popovic, and UTRA
`
`In the challenge of claims 1 and 2 as obvious in view of Li, Yamaura,
`
`Mody, Nobilet, Popovic, and UTRA, Petitioner merely replaces Zhuang with
`
`the combination of Mody, Nobilet, and Popovic to teach preambles having
`
`the recited properties. Pet. 58–59. With respect to all other limitations of
`
`claims 1 and 2 and rationale for combining the other references, Petitioners
`
`arguments are the same as discussed in the section above. Therefore, in this
`
`section, we focus our discussion on the teachings of Mody, Nobilet, and
`
`Popovic, and whether Petitioner has provided sufficient rationale for
`
`combining those references with Li, Yamaura, and UTRA.
`
`Petitioner argues “[i]t would have been obvious to one of ordinary
`
`skill in the art to apply the known technique of using chirp-like sequences in
`
`a preamble, as disclosed by Mody, in the known OFDM system of Yamaura,
`
`which uses preamble sequences, to yield known and predictable results.”
`
`Pet. 49 (citing Haas Dec. ¶ 63). Petitioner asserts Mody’s preambles “can be
`
`used in Yamaura’s system to provide both synchronization and channel
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`estimation in both single-input, single[-]output (SISO) and multi-input,
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`multi-output (MIMO) systems, using any number of transmitting and
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`receiving antennas, which is particularly useful given the benefits of MIMO
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`systems described in Mody.” Id. (citing Ex. 1005 ¶ 5, Haas Dec. ¶¶ 60, 63).
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`Thus, Petitioner concludes “Mody’s preambles allow Yamaura to be
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`extended to utilize MIMO technology.” Id. (citing Haas Dec. ¶ 63).
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`Nobilet and Popovic disclose chirp-like sequences and discuss the
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`various properties of those sequences. Id. at 49–52. Petitioner argues an
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`ordinarily skilled artisan would have combined Nobilet and Popovic with
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`Mody because Nobilet and Popovic disclose using chirp-like sequences, as
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`described by Mody. Id. Nobilet and Popovic disclose Zadoff-Chu
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`sequences, which are a type of chirp-like sequence that exhibit strong
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`correlation properties. Id. Therefore, Petitioner asserts it would have been
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`obvious to combine the teachings of Nobilet and Popovic with the Li-
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`Yamaura-Mody system to take advantage of the particular sequences
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`disclosed in Nobilet and Popovic. Id.
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`Patent Owner asserts Petitioner’s proposed combination of Yamaura,
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`Mody, Nobilet, and Popovic relies solely on hindsight and that Petitioner
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`identified Mody by using the claims of the ’431 patent as a template. POPR
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`40, 45–46. Patent Owner points out that Petitioner argues Yamaura and
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`Mody could be combined to allow Yamaura to be extended to utilize MIMO
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`technology, but Yamaura never mentions MIMO. Id. Patent Owner argues
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`“Petitioner’s entire rationale is based on a premise that is completely
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`irrelevant to either a variable bandwidth system or to Yamaura’s
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`application.” Id.
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`We agree with Patent Owner that Petitioner’s proposed rationale for
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`combining Mody and Yamaura to extend Yamaura to utilize MIMO
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`technology does not provide a sufficient basis for combining Yamaura and
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`Mody. Petitioner, however, alternately argues that the incorporation of
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`Mody’s chirp-like preamble sequences with the preamble of Yamaura’s
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`system would yield known and predictable results. Mody discloses that its
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`preambles and training sequences may be used in either SISO or MIMO
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`systems. Ex. 1005 ¶ 9. Therefore, we find, on this record, Petitioner has
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`presented sufficient rationale for the combination of Mody and Yamaura.
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`See KSR, 550 U.S. at 417. Similarly, we agree with Petitioner’s position that
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`the combination of the specific chirp-like sequences, disclosed by Nobilet
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`and Popovic, with Mody would involve the use of known improvements to a
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`known technique, yielding known and predictable results.
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`In sum, based on the present record, we are persuaded Petitioner has
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`demonstrated a reasonable likelihood of establishing that claims 1 and 2
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`would have been obvious in view of Li, Yamaura, Mody, Nobilet, Popovic,
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`and UTRA.
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`CONCLUSION
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`For the foregoing reasons, we determine that Petitioner has shown a
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`reasonable likelihood that it would prevail in demonstrating that claims 1
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`and 2 of the ’431 patent are unpatentable on at least one challenged ground,
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`but Petitioner has not shown a reasonable likelihood that it would prevail in
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`demonstrating that claims 8–12 and 18–22 are unpatentable on at least one
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`challenged ground.
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`For the reasons given, it is:
`
`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted for the following alleged grounds of
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`unpatentability:
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`(a) claims 1 and 2 of the ’431 patent are unpatentable, under
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`35 U.S.C. §103(a), as obvious over the combination of Li, Yamaura,
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`Zhuang, and UTRA;
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`(b) claims 1 and 2 of the ’431 patent are unpatentable, under
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`35 U.S.C. § 103(a), as obvious over the combination of Li, Yamaura, Mody,
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`Nobilet, Popovic, and UTRA;
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`FURTHER ORDERED that no other grounds of unpatentability
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`alleged in the Petition for any claim is authorized; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, the trial commences on the entry date of this decision, and
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`notice is hereby given of the institution of a trial.
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`PETITIONER:
`
`J. Andrew Lowes
`Andrew.lowes.ipr@haynesboone.com
`David M. O’Dell
`David.odell.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Hebert Hart
`hhart@mcandrews-ip.com
`
`Sharon Hwang
`shwang@mcandrews-ip.com
`
`Donald Coulman
`dcoulman@intven.com
`
`
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