`
`
`
`
`Filed on behalf of Intellectual Ventures II LLC
`By: Herbert D. Hart III
`Sharon A. Hwang
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`Fax: (312) 775-8100
`Email: hhart@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`______________
`
`Case IPR2014-01195
`Patent No. 7,787,431
`______________
`
`PATENT OWNER RESPONSE
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`

`

`Patent Owner Response
`IPR2014-01195
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`TABLE OF CONTENTS
`
`
`I. 
`
`II. 
`
`SUMMARY OF ARGUMENT ....................................................................... 1 
`
`PETITIONER IMPROPERLY CIRCUMVENTS THE 60-PAGE
`LIMIT .............................................................................................................. 3 
`
`III.  OVERVIEW OF THE ’431 PATENT ............................................................ 7 
`
`IV.  CLAIM CONSTRUCTION ISSUES ............................................................ 10 
`
`A.  Petitioner’s Disputed Claim Terms ...................................................... 10 
`
`1. 
`
`2. 
`
`3. 
`
`“Bandwidth” .............................................................................. 11 
`
`“Core-Band” .............................................................................. 12 
`
`“Primary Preamble” .................................................................. 12 
`
`B. 
`
`Patent Owner’s Disputed Claim Terms ................................................ 14 
`
`1. 
`
`2. 
`
`3. 
`
`“Radio Control and Operation Signaling” ................................ 15 
`
`“Substantially Not Wider” ........................................................ 16 
`
`“Sufficient for Basic Radio Operation” .................................... 18 
`
`V. 
`
`THE PETITION DOES NOT SHOW BY A PREPONDERANCE OF
`THE EVIDENCE THAT CLAIM 1 OR 2 IS OBVIOUS ............................. 20 
`
`A.  Challenge #2: Petitioner Has Not Shown That Either Claim 1 or
`2 Is Unpatentable Over Li, Yamaura, Zhuang, and Beta ..................... 21 
`
`1. 
`
`Petitioner’s Combination Of Prior Art Still Lacks Several
`Claim Elements ......................................................................... 24 
`
`a. 
`
`The Prior Art Does Not Disclose The Claimed
`“Core-Band, Including A Plurality Of Subcarrier
`Groups, Substantially Centered At An Operating
`Center Frequency Of The Different
`Communication Schemes” ............................................. 25 
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`Patent Owner Response
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`b. 
`
`c. 
`
`d. 
`
`The Prior Art Does Not Disclose the Claimed
`“Radio Control and Operation Signaling” ...................... 27 
`
`The Prior Art Does Not Disclose A Core-Band
`That Is “Substantially Not Wider Than A Smallest
`Possible Operating Channel Bandwidth” ....................... 30 
`
`The Prior Art Does Not Disclose a “Primary
`Preamble Sufficient for Basic Radio Operation” ........... 33 
`
`2. 
`
`There Is No Evidence That One of Ordinary Skill Would
`Have Combined The Cited Art To Arrive At The
`Claimed Invention ..................................................................... 36 
`
`a. 
`
`b. 
`
`c. 
`
`d. 
`
`There Is No Reason To Combine Li With Yamaura ...... 37 
`
`There Is No Reason To Combine Yamaura And
`Beta ................................................................................. 44 
`
`There is No Reason To Combine Yamaura and
`Zhuang ............................................................................ 45 
`
`Those Of Ordinary Skill Would Not Have
`Combined Li, Yamaura, Beta, and Zhuang .................... 48 
`
`B.  Challenge #4: Petitioner Has Not Shown That Any Of Claims 1,
`2, 12, Or 22 Is Unpatentable Over Li, Yamaura, Mody, Nobilet,
`Popovic, And Beta ................................................................................ 51 
`
`1. 
`
`2. 
`
`Petitioner’s Prior Art Combination Is Missing Several
`Claim Elements ......................................................................... 53 
`
`Petitioner Fails to Demonstrate that the Prior Art Would
`or Could Be Combined to Achieve the Claimed Invention ...... 54 
`
`a. 
`
`b. 
`
`No Reason to Combine Yamaura, Mody, Nobilet,
`and Popovic .................................................................... 55 
`
`One of Ordinary Skill Would Not Have Combined
`Li, Yamaura, Beta, Mody, Nobilet, and Popovic ........... 58 
`
`VI.  CONCLUSION .............................................................................................. 60
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`Patent Owner Response
`IPR2014-01195
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`Cases 
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`IPR2014-00511, Paper No. 16 (P.T.A.B. Sept. 10, 2014) ..................................... 3
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 43
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper No. 12 (P.T.A.B. Aug. 29, 2014) ..................................... 4
`
`Conopco, Inc. v. The Procter & Gamble Co.,
`IPR2013-00510, Paper No. 9 (P.T.A.B. February 12, 2014) ................................. 7
`
`Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc.,
`347 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 17
`
`Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc.,
`672 F.3d 1270 (Fed. Cir. 2012) ............................................................................ 13
`
`Epcon Gas Systems, Inc. v. Bauer Compressors, Inc.,
`279 F.3d 1022 (Fed. Cir. 2002) ............................................................................ 17
`
`Google v. EveryMD,
`IPR2014-000347, Paper No. 9 (P.T.A.B. May 22, 2014) ...................................... 7
`
`InTouch Technologies, Inc. v. VGO Communications,
`751 F.3d 1327 (Fed. Cir. 2014) ..................................................................... 42, 59
`
`Kaspersky Lab, Inc. v. Uniloc USA, Inc.,
`IPR2015-00178, Paper No. 10 (P.T.A.B. April 21, 2015) ................................... 46
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................ 43
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................. 37
`
`KSR Intern. Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) ................................................................................... 45, 49
`
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`Pacing Technologies, LLC v. Garmin International, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) ............................................................................ 26
`
`
`
`
`
`Power-One, Inc. v. Artesyn Technologies, Inc.,
`599 F.3d 1343 (Fed. Cir. 2010) ..................................................................... 36, 55
`
`Pozen Inc. v. Par Pharm., Inc.,
`696 F.3d 1151 (Fed. Cir. 2012) ............................................................................ 47
`
`Princeton Biochems., Inc. v. Beckman Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ............................................................................ 49
`
`St. Jude Med., Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) ............................................................................ 30
`
`Symantec Corp. v. RPost Communications Ltd.,
`IPR2014-00353, Paper No. 15 (P.T.A.B. July 15, 2014) ....................................... 7
`
`Synqor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ............................................................................ 25
`
`Unigene Labs., Inc. v. Apotex Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 37
`
`Wowza Media Systems, LLC v. Adobe Systems, Inc.,
`IPR2013-00054, Paper No. 12 (P.T.A.B. April 8, 2013) ..................................... 46
`
`Statutes 
`
`35 U.S.C. § 103 ........................................................................................................ 20
`
`35 U.S.C. § 316 .......................................................................................................... 7
`
`Rules 
`
`37 C.F.R. § 42.24 ....................................................................................................... 3
`
`Rules for Practice for Trials,
`77 Fed. Reg. 48,612 (Aug. 14, 2012) ..................................................................... 3
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`Patent Owner Response
`IPR2014-01195
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`I.
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`SUMMARY OF ARGUMENT
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`The Petition fails to establish by a preponderance of the evidence that either
`
`claim 1 or 2 is unpatentable.
`
`Petitioner alleges that all of claims 1–2, 8–12, and 18–22 are unpatentable
`
`for similar reasons. Petitioner attempted to prove obviousness by demonstrating
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`that each limitation of the challenged claims was independently disclosed in the
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`prior art by either a single reference or by a combination of references. But claims
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`1 and 2 include additional limitations not present in the other claims on which the
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`Board declined to institute trial. Petitioner nonetheless chose not to address these
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`additional limitations in the Petition.
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`These terms, missing from the Petition, recite that the claimed core-band is:
`
`(1)
`
`“substantially centered at an operating center frequency of the differ-
`
`ent communications schemes”;
`
`(2)
`
`“utilized by the base station as a broadcast channel carrying radio con-
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`trol and operation signaling”; and
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`(3)
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`“substantially not wider than a smallest possible operating channel
`
`bandwidth of the system.”
`
`The Petition also disregards a claim limitation reciting “a primary preamble suffi-
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`Patent Owner Response
`IPR2014-01195
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`cient for basic radio operation.”1 These omitted claim elements are not found in
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`
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`challenged claims 8–12 or 18–22. Yet Petitioner disregarded them when analyzing
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`claims 1 and 2. For this reason alone, the Petition fails to establish that claims 1
`
`and 2 are obvious in view of Li, Yamaura, Zhuang, and Beta (Challenge #2) or Li,
`
`Yamaura, Mody, Nobilet, Popovic, and Beta (Challenge #4).
`
`Nor does Petitioner identify any reason or motivation why one of ordinary
`
`skill in the art would want or need to combine the prior art in a manner that would
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`lead to the specific combination of elements recited in challenged claims 1 and 2.
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`Instead, contrary to well-established Federal Circuit law, Petitioner has simply
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`cobbled together references that allegedly teach a limitation, or worse, just one
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`part of a limitation of the asserted claims, without explaining why a person of skill
`
`in the art would have combined such references to achieve the combination recited
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`in the challenged claims. Indeed, by failing to consider the claimed invention as a
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`whole, Petitioner has relied on disparate groupings of references that cannot rea-
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`sonably be combined. Petitioner’s arguments are therefore insufficient as a matter
`
`of law.
`
`
`1 To be clear, the “primary preamble” discussed throughout refers to this claim el-
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`ement rather than to the word “preamble” used as a term of art in patent law.
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`Patent Owner Response
`IPR2014-01195
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`II.
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`PETITIONER IMPROPERLY CIRCUMVENTS THE 60-PAGE LIM-
`IT
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`
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`As an initial matter, the 60-page Petition attempts to incorporate by refer-
`
`ence large sections of the 126-page Haas Declaration. The Board should refuse to
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`consider all argument made in the Petition that relies on testimony improperly in-
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`corporated by reference from the Haas Declaration.
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`The Board’s practice is to ignore conclusory arguments made in the Petition
`
`but only supported in the accompanying declaration. Under Rule 42.24, the Peti-
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`tion is limited to 60 pages. 37 C.F.R. § 42.24; accord Rules for Practice for Trials,
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`77 Fed. Reg. 48,612 at 48,620 (Aug. 14, 2012). In A.C. Dispensing Equipment Inc.
`
`v. Prince Castle LLC, IPR2014-00511, Paper No. 16 at 6-7 (P.T.A.B. Sept. 10,
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`2014), the Board found that conclusory arguments, supported only by reference to
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`an attached declaration, improperly circumvent Rule 42.24. The Board has refused
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`to consider conclusory arguments supported by a voluminous declaration, stating
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`[I]ncorporation by reference of numerous arguments
`from Dr. Roy’s 250-page Declaration into the Petition
`serves to circumvent the page limits imposed on a peti-
`tion for inter partes review, while imposing on our time
`by asking us to sift through over 250 pages of Dr. Roy’s
`Declaration (including numerous pages of claim charts)
`to locate the specific arguments corresponding to the
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`Patent Owner Response
`IPR2014-01195
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`numerous paragraphs cited to support the Petitioner’s as-
`sertions.
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`
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`
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`Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454, Paper No. 12
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`at 10 (P.T.A.B. Aug. 29, 2014). Petitioner used the same tactic here to circumvent
`
`the page limit.
`
`The body of the Petition purports to explain how different combinations of
`
`references teach each claim limitation. See Petition at 20 (“The following analysis
`
`explains how each claim limitation is met by the combined references.”) However,
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`the Petition also generically refers to the “[d]etailed factual support [] provided in
`
`the included Expert Declaration… beginning at page 50.” Id. The Haas Declaration
`
`is 126 pages. The Board should reject Petitioner’s attempt to supplement its argu-
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`ment with 76 pages of claim charts from the Haas Declaration.
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`In addition to citing generically to 76 pages of claim charts as “detailed fac-
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`tual support” for its argument, Petitioner’s analysis of several claim elements is de-
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`ficient in that it includes only a conclusory statement followed by citations to large
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`sections of the Haas Declaration. This is improper.
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`For example, with respect to claim element 1.6, which introduces the con-
`
`cept of a “core-band,” Petitioner’s entire analysis is this conclusory statement:
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`“Yamaura discloses all the features recited in claim element 1.6.” Petition at 43.
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`Petitioner cites to four pages of the Haas Declaration (“ERIC-1012, ¶¶40-42”) and
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`indirectly cites to at least eight more pages of the Haas Declaration by pointing the
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`
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`reader to a separate analysis of claim elements 8.2 and 8.3, which relate to a differ-
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`ent challenge. Id. The Board should reject Petitioner’s blatant attempt to incorpo-
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`rate by reference twelve additional pages of argument.
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`Petitioner uses a similar tactic in its analysis of claim element 1.9. See Peti-
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`tion at 44. Petitioner conclusorily states that “Yamaura discloses all the features of
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`claim element 1.9.” Id. Petitioner then cites to four pages of the Haas Declaration
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`and indirectly cites to additional pages of the Haas Declaration by pointing the
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`reader to a separate analysis of claim element 8.4 in a different challenge. Id.
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`Again, the Board should reject Petitioner’s tactic of circumventing the page limit
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`by simply stating a conclusion in its Petition while citing to multiple pages of the
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`Haas Declaration to explain its conclusion.
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`Compounding that fault, the Petition and the Haas Declaration are confus-
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`ingly inconsistent. First, the Haas Declaration and the Petition use different “ele-
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`ment numbers” to refer to the same elements. Compare Haas Decl. at 81–97, 119–
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`124 with Petition at 39–45, 57–59. For example, in the Haas Declaration, the first
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`element number for claim 1 is “1.1,” while that same first element number in the
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`Petition is “1.0.” Compare Haas Decl. at 81 with Petition at 39.
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`Second, in several instances, Petitioner argues that a single prior art refer-
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`ence allegedly discloses a particular claim element while the Haas Declaration (Pe-
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`titioner’s “detailed factual support”) relies on a combination of references for the
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`
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`same purpose. E.g., compare Petition at 42 (arguing obviousness of claim element
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`1.4 over Yamaura) with Haas Declaration at 84–85 (arguing obviousness of claim
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`element 1.5 over Yamaura and Beta); compare Petition at 44 (arguing obviousness
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`of claim element 1.8 over Yamaura) with Haas Declaration at 93–96 (arguing ob-
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`viousness of claim element 1.9 over Yamaura and Zhuang); compare Petition at 44
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`(arguing obviousness of claim element 1.9 over Yamaura) with Haas Declaration at
`
`96, 60–67 (arguing obviousness of claim element 1.10 over Yamaura and Zhuang);
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`compare Petition at 45 (arguing obviousness of claim element 1.11 over Zhuang)
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`with Haas Declaration at 96, 68–70 (arguing obviousness of claim element 1.12
`
`over Yamaura and Zhuang); compare Petition at 58 (arguing obviousness of ele-
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`ment 1.8 over Yamaura) with Haas Declaration at 121–123 (arguing obviousness
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`element 1.9 over Yamaura and Mody); compare Petition at 58–59 (arguing obvi-
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`ousness of element 1.11 over Nobilet and Popovic) with Haas Declaration at 124
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`and 111–112 (arguing obviousness of element 1.12 over Nobilet, Popovic, and
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`Yamaura). In the instances in which the Petition diverges from the Haas Declara-
`
`tion, the Petition should control and the Board should note that Petitioner’s own
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`expert Declaration does not support its attorney argument.
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`Neither the Board nor Patent Owner should have to piece together Petition-
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`er’s case by deciphering misaligned arguments, disjointed quotes, and scattered ar-
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`Patent Owner Response
`IPR2014-01195
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`guments in excess of the page limit. See Google v. EveryMD, IPR2014-000347,
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`
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`Paper No. 9 at 19 (P.T.A.B. May 22, 2014) (stating that a petitioner should not
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`“submit[] a repository of all the information that a judge could possibly consider,
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`and [should] instead focus on concise, well organized, easy-to-follow arguments
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`supported by readily identifiable evidence of record.” (quoting Patent Office Trial
`
`Guide, 77 Fed. Reg. at 48,763 (Aug. 14, 2012)). The Board should refuse to con-
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`sider the arguments and analysis that are either unsupported in the petition itself or
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`inconsistent among Petitioner’s various submissions. Symantec Corp. v. RPost
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`Communications Ltd., IPR2014-00353, Paper No. 15 at 20-21 (P.T.A.B. July 15,
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`2014); Conopco, Inc. v. The Procter & Gamble Co., IPR2013-00510, Paper No. 9
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`at 8 (P.T.A.B. February 12, 2014).
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`For this reason alone, Petitioner has not met its burden of proof under 35
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`U.S.C. § 316(e).
`
`III. OVERVIEW OF THE ’431 PATENT
`The ’431 patent, entitled “Methods and Apparatus for Multi-Carrier Com-
`
`munications with Variable Channel Bandwidth,” addresses the significant chal-
`
`lenges associated with the nomadic nature of wireless communications. Exhibit
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`1001. The claimed inventions allow a broadband wireless communication device
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`(like a smartphone) to effectively roam from one variable bandwidth system to an-
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`Patent Owner Response
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`other through the transmission of a “primary preamble” within a “core-band” that
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`reliably identifies the bandwidth available for use.
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`The specific radio control and operation signaling needed to operate in a var-
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`iable bandwidth environment are realized using the core-band. Id. at 4:64–67. The
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`“core-band, substantially centered at the operating center frequency, is defined as a
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`frequency segment that is not greater than the smallest operating channel band-
`
`width among all the possible spectral bands that the receiver is designed to operate
`
`with.” Id. at 4:67 to 5:4. Upon entering a geographic area serviced by the base sta-
`
`tion, a mobile station uses a core-band “to initiate communication and obtain es-
`
`sential information and subsequently switch” its operating bandwidth to the “full
`
`operating bandwidth of the area for the remainder of the communication.” Id. at
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`Abstract. This allows “a broadband wireless communication device to be able to
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`roam from one part of the world to another.” Id. at 1:30–32.
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`Figure 6 of the ’431 patent (reproduced below) illustrates an exemplary sys-
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`tem intended to work at 5, 6, 8, and 10 MHz.
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`Patent Owner Response
`IPR2014-01195
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`In this exemplary system, the core-band has a 4 MHz width, which is smaller than
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`the widths of the possible operating channel bandwidths (5, 6, 8, and 10 MHz).
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`Additionally, the core-band is substantially centered in one of the possible operat-
`
`ing channel bandwidths. Id. at 5:1–4.
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`To maintain basic radio operation, radio control signals—such as preambles,
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`ranging signals, bandwidth request or bandwidth allocation, and data channels and
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`their related dedicated control channels—are transmitted within the core-band. Id.
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`at 5:8–13. The specification explains that “[s]uch a basic radio operation, for ex-
`
`ample, constitutes the primary state of operation.” Id. at 5:13–15. A mobile station
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`entering into a specific network begins operating with the primary state and then
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`transitions to a normal full-bandwidth operation to include sidebands for additional
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`data and radio control channels. Id. at 5:15–18.
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`Patent Owner Response
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`The “primary preamble (EP), is designed to only occupy the [core-band], as
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`
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`depicted in FIG. 8,” and is alone “sufficient for the basic radio operation.” Id. at
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`5:19–22. The ’431 patent provides that the primary preamble is readily and reliably
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`identified when it possesses specific properties such as:
`
`1. Having an autocorrelation that exhibits a large correlation peak with
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`respect to sidelobes. Id. at 5:28–29.
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`2. Having a cross-correlation with other primary preambles with a small
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`cross-correlation coefficient with respect to the power of the other
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`primary preambles. Id. at 5:30–32.
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`3. Having a peak-to-average ratio that is relatively small. Id. at 5:33.
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`4. Having a large number of primary preambles that exhibit the above
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`three properties. Id., 5:34–35.
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`When the primary preamble possesses these properties, good quality multi-carrier
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`communications using a variable channel bandwidth is achieved.
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`IV. CLAIM CONSTRUCTION ISSUES
`A.
`Petitioner’s Disputed Claim Terms
`Petitioner identified four claim terms for construction: “bandwidth,” “core-
`
`band,” “primary preamble,” and “peak-to-average ratio.” A table showing the con-
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`structions proffered by the parties and the Board’s preliminary constructions is
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`shown below:
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`Patent Owner Response
`IPR2014-01195
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`Claim
`Term
`
`Patent Owner’s
`Construction
`
`Petitioner’s Con-
`struction
`
`bandwidth a width of a frequen-
`cy band
`
`
`core-band
`
`primary
`preamble
`
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands with which the
`receiver is designed
`to operate
`a signal transmitted
`by the base station
`near the beginning of
`each frame and occu-
`pying only the core-
`band
`
`a frequency range
`that a component, cir-
`cuit, or system passes
`or uses
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands that a receiver
`is designed to operate
`with
`a signal transmitted
`near the beginning of
`a transmission, such
`as a frame of time
`slot, and occupying
`only the core-band
`
`“peak-to-average
`power ratio”
`
`“peak-to-average
`power ratio”
`
`peak-to-
`average
`ratio
`
`
`
`
`
`
`Board’s Preliminary
`Construction
`
`No construction
`
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands with which the
`receiver is designed
`to operate
`a direct sequence in
`the time domain with
`its frequency re-
`sponse confined with-
`in the CB or an
`OFDM symbol corre-
`sponding to a particu-
`lar pattern in the fre-
`quency domain with-
`in the CB, at or near
`the beginning of the
`transmission, which
`alone is sufficient for
`basic radio operation
`“peak-to-average
`power ratio”
`
`“Bandwidth”
`
`1.
`The Board declined to construe “bandwidth” and adopted the parties’ agreed
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`Patent Owner Response
`IPR2014-01195
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`construction of “peak-to-average ratio.” Patent Owner maintains that a person of
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`ordinary skill in the art at the relevant time would understand the claim term
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`“bandwidth” to mean “a width of a frequency band.” Exhibit 2001 at ¶40. This
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`construction is consistent with the plain and ordinary meaning of “bandwidth” and
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`the usage of the term “bandwidth” throughout the ‘431 patent. Id. at ¶¶41–42.
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`“Core-Band”
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`2.
`The Board essentially agreed with Petitioner’s proposed construction of
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`“core-band,” noting that the phrase “substantially centered at the operating center
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`frequency” (which Patent Owner originally proposed including in the claim con-
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`struction) is already separately recited in the claims. According to the Board, Pa-
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`tent Owner’s proposed construction rendered the language recited in the chal-
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`lenged claims superfluous. Institution Decision at 8. Because “substantially cen-
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`tered at the operating center frequency” is already recited in claim 1, Patent Owner
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`does not dispute the Board’s construction of “core-band.” Exhibit 2001 at ¶¶44–47.
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`“Primary Preamble”
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`3.
`The Board rejected both parties’ constructions of “primary preamble,” in-
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`stead adopting its own construction. The Board’s preliminary construction of “pri-
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`mary preamble” is erroneous for the same reason that the Board found that Patent
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`Owner’s proposed construction of “core-band” was erroneous: the preliminary
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`construction renders superfluous certain language that is separately recited in claim
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`Patent Owner Response
`IPR2014-01195
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`1 (as well as in independent claims 8 and 18, which are no longer the subject of
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`this trial).
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`For example, claim 1 separately recites that the primary preamble is “suffi-
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`cient for basic radio operation” and that “the primary preamble is a direct sequence
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`in the time domain with a frequency content confined within the core-band, or is an
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`orthogonal frequency-divisional multiplexing (OFDM) symbol corresponding to a
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`particular frequency pattern within the core-band.” Id. at 9:54–60. The Board’s
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`preliminary construction of “primary preamble” includes both those clauses, thus
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`rendering the recited language superfluous. See Digital-Vending Servs. Int’l, LLC
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`v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012).
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`Moreover, adopting the Board’s preliminary construction of “primary pre-
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`amble” would violate the doctrine of claim differentiation because it does not dis-
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`tinguish between different words used in different claims. For example, the Board
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`preliminarily construed “primary preamble” to mean “sufficient for basic radio op-
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`eration.” As discussed above, claim 1 already expressly recites “a primary pream-
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`ble sufficient for basic radio operation.”
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`In contrast, independent claims 8 and 18 (not part of this trial) expressly re-
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`cite that the primary preamble be “sufficient to enable radio operations.” Indeed,
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`claims 8 and 18 are also missing the claim element expressly reciting the presence
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`of both radio control signals and operating signals, both of which are necessary for
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`Patent Owner Response
`IPR2014-01195
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`basic radio operation. Of course, radio operation can be “enabled”—once the es-
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`sential control channels are transmitted—without allowing full basic radio opera-
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`tion. Exhibit 2001 at ¶128. If the phrase “sufficient for basic radio operation” were
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`included in the definition of “primary preamble,” the same language in claim 1
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`would be superfluous and the phrase “sufficient to enable radio operations” recited
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`in claims 8–12 and 18–22 would be meaningless.
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`In its Institution Decision, the Board disagreed with Patent Owner’s pro-
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`posed construction of “primary preamble,” finding that “bandwidth information”
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`need not be included in the definition of “primary preamble.” In view of that find-
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`ing, Patent Owner submits that the broadest reasonable construction of “primary
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`preamble” is “a signal transmitted by the base station near the beginning of each
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`frame and occupying only the core-band.” Id. at ¶¶48–50.
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`Patent Owner’s Disputed Claim Terms
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`B.
`There are three additional claim terms that were not expressly construed by
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`Petitioner, but that were accorded no meaning at all in Petitioner’s analysis. Patent
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`Owner respectfully submits that the Board should construe following claim terms:
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`Claim Term
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`Proposed Construction
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`radio control and
`operation signaling
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`substantially not
`wider
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`radio control signals and radio operation signals
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`significantly narrower
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`Patent Owner Response
`IPR2014-01195
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`Claim Term
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`Proposed Construction
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`sufficient for basic
`radio operation
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`including radio control channels and data channels sufficient
`for the mobile station to operate at a primary state
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`“Radio Control and Operation Signaling”
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`1.
`Claim 1 recites a core-band “utilized by the base station as a broadcast chan-
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`nel carrying radio control and operation signaling.” The term “radio control and
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`operation signaling” should be construed according to its plain meaning in light of
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`the ’431 patent.
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`In describing radio operation via the core-band, the ’431 patent notes that
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`“specific signaling and control methods are required” to facilitate the user termi-
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`nals to operate in a variable bandwidth (VB) environment. Exhibit 1001 at 4:64–
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`66. “Radio control and operation signaling is realized through the use of a core-
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`band.” Id. 4:66–67. At a minimum, it is clear that radio control signaling is sepa-
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`rate from radio operation signaling.
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`In the context of the ’431 patent, a person of ordinary skill in the art
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`would—as explained by Dr. Zeger—understand that radio control signals include
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`signals used to set up radio operations, such as preambles with address infor-
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`mation, synchronization information, ranging signals, bandwidth request infor-
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`mation, and bandwidth allocation information. Exhibit 2001 at ¶54. For example,
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`the ’431 patent describes an embodiment in which “relevant or essential radio con-
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`Patent Owner Response
`IPR2014-01195
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`trol signals such as preambles, ranging signals, bandwidth request, and/or band-
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`width allocation are transmitted within the CB.” Exhibit 1001 at 5:8–10.
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`Once radio operations are set up and a communication link is established,
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`data may be communicated between the base station and the mobile station
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`through data channels that are part of the core-band. Exhibit 2001 at ¶55. In addi-
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`tion, dedicated control channels for data channels are used to monitor and maintain
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`radio communications already in process as the user moves around. Id. For exam-
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`ple, the ’431 patent explains that, “[i]n addition to the essential control channels, a
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`set of data channels and their related dedicated control channels are placed within
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`the CB to maintain basic radio operations.” Exhibit 1001 at 5:10–13 (emphasis
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`added). Thus, a set of data channels and their related dedicated control channels are
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`examples of operation signaling. Exhibit 2001 at ¶56.
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`Under the broadest reasonable interpretation, one of ordinary skill in the art
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`would understand “radio control and operation signalling” to mean “radio control
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`signals and radio operation signals.” See id. at ¶52.
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`“Substantially Not Wider”
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`2.
`Claim 1 further recites that “the core-band is substantially not wider than a
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`smallest possible operating channel bandwidth of the system.” As described above,
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`the term “core-band” in the specification means “a frequency segment that is not
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`greater than the smallest operating channel bandwidth among all the possible spec-
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`Patent Owner Response
`IPR2014-01195
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`tral bands with which the receiver is designed to operate.” Exhibit 1001 at 4:67 to
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`5:4; Institution Decision at 8 (emphasis added). “Substantially not wider” further
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`modifies the term “core-band.”
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`Those of skill in the art at the time of the invention generally understood
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`“substantially” as either a term of approximation or a term of magnitude. See Deer-
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`ing Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d
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`1314, 1322–23 (Fed. Cir. 2003); see also Epcon Gas Systems, Inc