UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner
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`_____________________
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`Case IPR2014-01195
`Patent 7,787,431
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`_____________________
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §§ 42.71(c) AND (d)
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner
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`_____________________
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`Case IPR2014-01195
`Patent 7,787,431
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`_____________________
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §§ 42.71(c) AND (d)
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`Case IPR2014-01195
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`Pursuant to 37 C.F.R. §§ 42.71(c) and (d), and in response to the Decision,
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`Institution of Inter Partes Review (“the Decision”) dated February 4, 2015,
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`Petitioner Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”) hereby
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`submits the following Request for Rehearing.
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`According to the Decision, an inter partes review was not instituted for claims
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`8 and 18 because “Petitioner has not shown where any reference teaches a core-band
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`that is not greater than the smallest operating channel bandwidth among all the
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`possible spectral bands with which the receiver is designed to operate. Petitioner has
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`neither alleged [] nor demonstrated why such a teaching would have been obvious to
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`an ordinary skilled artisan at the time of the invention of the ‘431 patent.”
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`(Decision, p. 11). The Decision also declined to institute an inter partes review of
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`claims 9-12 and 19-22 because these claims depend from claims 8 and 18,
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`respectively. (Decision, pp. 10-11).
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`It is respectfully submitted that the Decision overlooks pages 9-12 of the
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`Petition that describes the general operation of the Yamaura reference at a 20 MHz
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`transmission band (the only operating channel disclosed), with subcarriers within the
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`same 20 MHz transmission band forming the narrowband control signals (the core-
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`band). That general discussion of Yamaura in the Petition is referenced in the
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`subsequent analysis of claim 8 (see Petition, p. 21), and by extension, claim 18 (see
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`Case IPR2014-01195
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`Petition, p. 36, which incorporates the analysis of claim 8 by reference). Petitioner
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`requests that the Board reconsider its determination that the Petition failed to show
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`where any reference teaches a core-band that is not greater than the smallest
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`operating channel bandwidth among all the possible spectral bands with which the
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`receiver is designed to operate, and thus reconsider whether an inter partes review
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`should be instituted for claims 8-12 and 18-22.
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`II. LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. § 42.71(d).
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`“When rehearing a decision on petition, the panel will review the decision for an
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`abuse of discretion.” 37 C.F.R. § 42.71(c).
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`III.
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` ANALYSIS
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`In the Decision, the Board agreed with Petitioner that “core-band” is defined
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`as “a frequency segment that is not greater than the smallest operating channel
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`bandwidth among all the possible spectral bands with which the receiver is designed
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`to operate.” (Decision, p. 8). However, the Decision states that the Petitioner has
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`not shown where any reference in these particular challenges teaches a core-band
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`defined as such. (See Decision, p. 11).
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`The Patent Owner Preliminary Response suggests that “Petitioner’s argument
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`focuses solely on the recitation ‘substantially centered at the operating center
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`frequency’ portion of the claimed ‘primary preamble,’ while disregarding the
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`additional limitation that the frequency segment ‘is not greater than the smallest
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`operating channel bandwidth among all the possible spectral bands that the receiver
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`is designed to operate with,” citing Petition at pages 23-24 and the Expert
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`Declaration at ¶¶ 40-41. (Preliminary Response, p. 23. (emphasis added)). The
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`Patent Owner states:
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` FIG. 6 of the ’431 patent (reproduced below) illustrates an
`exemplary system intended to work at 5, 6, 8, and 10 MHz.
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`In this exemplary system, the core-band has a width of 4 MHz, which is
`smaller than the widths of the possible operating channel bandwidths (5, 6,
`8, and 10 MHz). Additionally, the core-band is substantially centered in
`one of the possible operating channel bandwidths. Id., 5:1-4.
`(Preliminary Response, p. 7).
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`The Decision agreed with the Preliminary Response: “We have reviewed the
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`arguments regarding claims 8-11 and 18-12 and agree with Patent Owner.”
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`(Decision, pp. 10-11).
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`It appears that the Patent Owner chose to overlook, and thus the Board may
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`have also overlooked, additional reasons provided by Petitioner – both in the
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`Petition and in the Expert Declaration – describing and illustrating that Yamaura
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`discloses the claimed “core-band” limitation in a manner similar to Fig. 6 of the
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`‘431 Patent. For example, in the Petition where Yamaura is addressed for the first
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`time with regard to claim 8, it is stated: “As discussed above, Yamaura describes
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`use of narrowband signals in an OFDM system for control and synchronization.
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`Yamaura discloses a broadcast channel in an OFDM ‘core-band’ transmitted from a
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`base station.” (Petition, p. 21 (emphasis added)).
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`The reference “as discussed above” refers to the discussion of Yamaura found
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`on pages 9-12 of the Petition, a discussion the Patent Owner chose not to address in
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`the Preliminary Response. This initial discussion of Yamaura is clearly intended to
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`cover points in Yamaura common to all the claims, including the “core-band”
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`limitation. Specifically, as discussed on pages 9-12 of the Petition, Yamaura
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`discloses the use of a 20 MHz transmission band that is either processed in full by
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`the terminal station receivers or a narrow band within the same 20 MHz
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`transmission band that is processed for control signals by the terminal station
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`receivers.
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`In the initial discussion of Yamaura, the Petition points out that a main
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`objective of Yamaura was “to reduce loads in a base station or a terminal station
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`when control signals are transmitted from a base station to a terminal station in the
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`radio communication system of the type mentioned above.” (Petition, pp. 9-10,
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`citing ERIC-1003, 5:64-67). The Petition further explains that control signals
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`transmitted in a band narrower than that for the 20 MHz transmission band data
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`signals was a way to “reduce loads in a base station or a terminal station.” Below is
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`a quote from the Petition:
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`Yamaura points out that in conventional OFDM systems “the
`signal to call a terminal station from a base station is transmitted,
`with all information placed on subcarriers in the transmission band,
`and the called terminal station receives all the subcarriers to receive
`the calling signal. This means that the terminal station has to receive
`and decode the band signal (corresponding to 20 MHz) every 2 ms
`regardless of presence or absence of data being transmitted and
`received. It follows, therefore, that large quantities of signals have to
`be processed even when no information data is transmitted and
`received.” Id. [ERIC-1003], 5:39-46. In order to address this issue,
`Yamaura discloses a system in which “part of control signals addressed to
`a terminal station from a base station is transmitted by means of a
`carrier whose band is narrower than that for said multi-carrier signals
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`[…]” Id., 6:5-8. An example of control signals narrower than that for a
`multi-carrier signal is presented in Fig. 16, reproduced below. In the
`figure, subcarriers SC1 and SC2 carry control signals. See, e.g., id., 21:11-
`15.
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`The control signals in Yamaura are transmitted in a broadcast
`preamble using the subcarriers centered at an operating frequency.
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`Petition, p. 10 (bold in Petition, underlining added). Thus, the Petition explains that
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`the system of Yamaura (1) operates with receivers designed to receive a 20 MHz
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`operating bandwidth, and (2) transmits control signals “by means of a carrier whose
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`band is narrower than that for said multi-carrier signals” and “using the subcarriers
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`centered at an operating frequency” (i.e., on a frequency narrower than the 20 MHz
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`operating bandwidth but centered at that operating bandwidth). Petition, p. 10
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`(emphasis added). Accordingly, the Petition demonstrates that the control signals in
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`Yamaura are transmitted on a frequency segment that is less than the 20 MHz
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`operating channel bandwidth (the only operating channel bandwidth disclosed in the
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`relevant embodiments of Yamaura), which satisfies the Board’s construction of
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`“core-band.”
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`Yamaura’s Figs. 16 and 17 (which are discussed on pages 10 and 11 of the
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`Petition) further illustrate control signal bandwidth relative to the available 20 MHz
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`operating bandwidth as follows (with Fig. 17 annotated in red as it appears in the
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`Petition to illustrate what would have been understood by a person of ordinary skill
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`in the art).
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`Petition, p. 11 (see also Petition, p. 25, which shows annotated Fig. 17; see also
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`ERIC-1012, ¶¶ 41 and 43, which shows Figs. 16 and 17). With reference to Fig. 17,
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`the narrowband control signals are highlighted in order to draw a contrast with the
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`full operating bandwidth (frequency is along left axis), which is indicated by vertical
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`bars and within which the control signals reside.
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`Thus, the Petition demonstrates in the initial description of the reference that
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`Yamaura discloses receivers designed to receive an operating channel bandwidth of
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`20 MHz for data transmission, and a narrowband control signal having a bandwidth
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`less than the operating channel bandwidth of 20 MHz.
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`With the general understanding of Yamaura set forth in the Petition on pages
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`9-12, a specific embodiment is compared to claim element 8.1 in the Petition, as
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`follows:
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`As discussed above, Yamaura describes use of narrowband signals in
`an OFDM system for control and synchronization. Yamaura discloses a
`broadcast channel in an OFDM “core-band” transmitted from a base
`station. See ERIC-1012, p. 49. For example, Yamaura discloses that
`“FIG. 16 shows the arrangement of subcarriers for one transmission
`channel in this embodiment. A plurality of subcarriers are arranged at
`certain frequency intervals so that the OFDM-modulated signal is
`constituted. For example, a group of subcarriers are arranged at intervals
`of 312.5 kHz, with the total number of subcarriers being 53. In this
`embodiment, the 53 subcarriers are arranged as follows. At their center is
`the subcarrier SC1 centered at DC in the equivalent base band system.
`(It corresponds to the subcarrier having the central frequency f0 in the
`carrier frequency band.) Adjacent (upward) to the subcarrier SC1 at the
`center is the subcarrier SC2. These two subcarriers are used to transmit
`specific signals (such as calling signals) in the specific section in each
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`Case IPR2014-01195
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`MAC frame.” ERIC-1003, 20:54-67 (emphasis added). Yamaura
`discloses the use of one, two, or three subcarriers substantially centered at
`an operating frequency for use as a broadcast channel carrying control
`signaling in Figs. 22, 16, and 20, respectively. See, e.g., ERIC-1012, p.
`52. Annotated Fig. 22 is presented below.
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`Yamaura discloses base station circuitry for accomplishing the
`transmission of control signals in a “core-band” using a small number of
`subcarriers. See ERIC-1012, p. 55.
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`Petition, pp. 21-22 (bold in Petition, underlining added). In contrast to Fig. 6 of the
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`‘431 patent illustrating “an exemplary system intended to work at 5, 6, 8 and 10
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`MHz,” as set forth above, Yamaura discloses an exemplary system intended to work
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`at only a single operating channel bandwidth of 20 MHz (as identified on page 10 of
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`the Petition).
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`Thus, the Petition demonstrates that a person of ordinary skill in the art would
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`have understood that the control signal subcarrier in Fig. 22 of Yamaura (as
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`annotated on page 22 of the Petition and in the Expert Declaration, see ERIC-1012,
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`Case IPR2014-01195
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`¶ 41) is an example “core-band,” because the bandwidth or frequency segment
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`containing the control signals is within, and not greater than, the 20 MHz bandwidth
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`used to transmit and receive data.
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`Similarly, the Petition also demonstrates that a person of ordinary skill in the
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`art would have understood that the control signal subcarriers in annotated Fig. 17
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`(reproduced below) of the Expert Declaration (and the similar annotation on page 11
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`of the Petition) is another example of a core-band. (See ERIC-1012, p. 59).
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`Thus, in this additional context presented in the Petition, a terminal station is
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`designed to receive data signals over the 20 MHz transmission bandwidth disclosed
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`in Yamaura (the only possible bandwidth disclosed in the relevant embodiments),
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`and control signals are transmitted using a small number of the available subcarriers
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`(as few as one in theory, see Petition, p. 24) within the available 20 MHz bandwidth,
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`meaning the subcarriers used to transmit control signals occupy a bandwidth or
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`Case IPR2014-01195
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`frequency segment that is “not greater than the smallest operating channel
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`bandwidth among all the possible spectral bands with which the receiver is designed
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`to operate.” Accordingly, Yamaura discloses that the subcarriers used to carry
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`control signals occupy an example core-band, or “a frequency segment that is not
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`greater than the smallest operating channel bandwidth among all the possible
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`spectral bands with which the receiver is designed to operate.”
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests rehearing on
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`whether the Petition demonstrates that Yamaura discloses a “core-band,” and thus
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`requests that a trial be instituted for claims 8-12 and 18-22 of U.S. Patent No.
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`7,787,431.
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`Respectfully submitted,
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`/J. Andrew Lowes/
`J. Andrew Lowes
`Counsel for Petitioner
`Registration No. 40,706
`HAYNES AND BOONE, LLP
`Telephone: 972/680-7557
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`Dated: February 18, 2015
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`Case IPR2014-01195
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this Request for Rehearing and this
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`Certificate of Service have been served by delivering a copy by electronic mail to
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`counsel for the Patent Owner on February 18, 2015 at the following bolded email
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`addresses:
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`Herbert D. Hart III
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Email: hhart@mcandrews-ip.com
`and
`IV-IP14-01195@mcandrews-ip.com
`
`
`Sharon A. Hwang
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Email: shwang@mcandrews-ip.com
`and
`IV-IP14-01195@mcandrews-ip.com
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`
`Donald J. Coulman
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`Email: dcoulman@intven.com
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`
`/J. Andrew Lowes/
`J. Andrew Lowes
`Counsel for Petitioner
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`12
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