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
`
`
`———————
`
`Patent 7,787,431
`
`Inter Partes Review No. IPR2014-01195
`
`
`
`PETITIONER ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
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`

`
`Petitioner Reply IPR2014-001195
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. Disputed Claim Terms ....................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`“Substantially not wider” ................................................................................ 2
`
`“Radio control and operation signaling” ......................................................... 5
`
`“Sufficient for basic radio operation” ............................................................. 8
`
`III. Challenge #2: References Disclose Disputed Claim Elements ........................12
`
`“Core-band, including a plurality of subcarrier groups, substantially centered
`A.
`at an operating center frequency of the different communication schemes” ...........12
`
`B.
`
`“Radio control and operation signaling” .......................................................14
`
`“Substantially not wider than a smallest possible operating channel
`C.
`bandwidth” ............................................................................................................15
`
`D.
`
`“Primary preamble sufficient for basic radio operation” ...............................16
`
`IV. Reasons to Combine Various Combinations of References ..............................18
`
`A. Li and Yamaura Combination.......................................................................18
`
`B. Beta and Yamaura Combination ...................................................................21
`
`C. Yamaura and Zhuang Combination ..............................................................21
`
`D. Combination of Li, Yamaura, Beta and Zhuang ...........................................22
`
`V. Challenge #4: Replacing Zhuang with Mody, Nobilet and Popovic ................23
`
`VI. The Petition is Within the 60-Page Limit .........................................................24
`
`VII. Conclusion .......................................................................................................25
`
`
`
`
`
`ii
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`Petitioner Reply IPR2014-001195
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`
`Description
`
`ERIC-1001
`
`U.S. Patent No. 7,787,431 (the ’431 patent)
`
`ERIC-1002
`
`U.S. Patent No. 6,904,283 (“Li”)
`
`ERIC-1003
`
`U.S. Patent No. 7,782,750 (“Yamaura”)
`
`ERIC-1004
`
`U.S. Patent No. 7,426,175 (“Zhuang”)
`
`
`
`ERIC-1005
`
`U.S. Publication No. 2002/0181509 (“Mody”)
`
`ERIC-1006
`
`ERIC-1007
`
`S. Nobilet, et al., “Spreading Sequences for Uplink and Downlink
`MC-CDMA Systems: PAPR and MAI Minimization”, European
`Transactions on Communications, pp. 465-473, vol. 13, no. 5,
`September-October 2002 (“Nobilet”)
`
`TR101146v3.0.0, “Universal Mobile Telecommunications
`System (UMTS); UMTS Terrestrial Radio Access (UTRA);
`Concept evaluation (UMTS 30.06 version 3.0.0)”, December
`1997 (“Beta”)
`
`ERIC-1008
`
`B. Popovic, “Spreading Sequences for Multicarrier CDMA
`Systems”, IEEE Trans. Comm., pp. 918-926, vol. 47, no. 6, June
`1999 (“Popovic”)
`
`ERIC-1009
`
`R. van Nee and R. Prasad, OFDM for Wireless Multimedia
`Communications, Artech House, pp. 119-154, 2000
`
`ERIC-1010
`
`Prosecution History of the ’431 Patent (“File History”)
`
`ERIC-1011
`
`Curriculum Vitae of Expert
`
`ERIC-1012
`
`Declaration of Dr. Zygmunt Haas (“Haas Decl.”)
`
`ERIC-1013
`
`IEEE 100, The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition, pp. 84 (2000)
`
`iii
`
`

`
`ERIC-1014
`through ERIC-
`1029
`
`ERIC-1030
`
`ERIC-1031
`
`ERIC-1032
`
`Petitioner Reply IPR2014-001195
`
`Reserved
`
`H. Newton, Newton’s Telecom Dictionary, 16th Edition, CMP
`Books (2000)
`
`Dr. Kenneth Zeger Deposition Transcript for U.S. 7,787,431
`(“Zeger Depo”)
`
`H. Holma and A. Toskala, WCDMA for UMTS, Radio Access for
`Third Generation Mobile Communications, John Wiley and Sons,
`Ltd. (2001)
`
`ERIC-1033
`
`U.S. Publication No. 2004/0141522 (“Texerman”)
`
`ERIC-1034
`
`ERIC-1035
`
`Supplemental Declaration of Dr. Zygmunt Haas (“Supp. Haas
`Decl.”)
`
`Provisional Application 60/567,233 (priority document for ’431
`patent)
`
`
`
`
`
`iv
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`Petitioner Reply IPR2014-001195
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`TABLE OF AUTHORITIES
`
`Cases
`
`Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d
`1314……………………………………………………………………………….2
`
`Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022……………..3
`
`Valeo North America, Inc., et al. v. Magna Electronics, Inc., IPR2014-0022, Paper #
`55………………………………………………………………………………….21
`
`A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511,
`Paper #16......................................................................................................................25
`
`
`v
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`Petitioner Reply IPR2014-001195
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`I.
`
`Introduction
`
`In its Decision on Institution, the Board recognized that there is a reasonable
`
`likelihood that claims 1 and 2 are unpatentable. None of the new arguments raised by
`
`the Patent Owner (“PO”) is sufficient to alter the prior decision of the Board.
`
`The PO is attempting to import limitations from the specification into the
`
`claims while disregarding the prosecution history and the way basic claim terms are
`
`commonly used in the field of telecommunications.
`
`As a first example, the PO repeatedly alleges that claim 1 solves a problem
`
`related to “roaming” and “transitioning to full bandwidth operation,” even though
`
`claim 1 requires neither of these things, as admitted during cross-examination of PO’s
`
`expert. As a second example, the PO disregards, and fails to even mention, that the
`
`claim term “substantially” was explained in the prosecution history. As a third
`
`example, the PO repeatedly conflates the terms “primary preamble” and “core-band,”
`
`leading to an attempted importation of limitations related to core-band into the term
`
`“primary preamble” to salvage validity of the claims. As a fourth example, the PO
`
`reads the term “radio control and operation signaling” out of context in the claim,
`
`ignoring that it is a “broadcast channel” that carries the signaling and conflating
`
`“signaling” with “signals.”
`
`The PO cannot be permitted to disregard the prosecution history and basic
`
`claim terminology while importing limitations from the specification into the claims.
`
`
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`1
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`Petitioner Reply IPR2014-001195
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`II.
`
`Disputed Claim Terms
`
`A. “Substantially not wider”
`
`The PO did not propose a construction of this term in the PO Preliminary
`
`Response, but the PO proposes to construe the term now as “significantly not wider.”
`
`Despite recognizing that “[t]he Board should consult the intrinsic evidence to
`
`determine the meaning of ‘substantially’ […] Deering Precision Instruments, 347
`
`F.3d at 1323” (PO Response (“Response”), p. 17), the Response does not mention that
`
`the term “substantially” was specifically addressed during prosecution. As discussed
`
`below, the PO’s construction contradicts the file history.
`
`The claims as originally filed included numerous instances of the term
`
`“substantially,” including the phrase “substantially not wider than a smallest possible
`
`operating channel bandwidth of the system.” File History, p. 276, original claim 1
`
`(ERIC-1010). In response to an indefiniteness rejection, the Applicant addressed the
`
`use of the term “substantially” as follows:
`
`Applicants also submit that applicants’ use of “substantially” is
`definite under § 112, second paragraph due at least to limitations of the
`English language as well as real-world technological limitations. For
`instance, applicants’ phrase “a core band ... substantially centered at an
`operating center frequency[,]” and similar, balance clarity with the fact
`that real-world systems have process and operational tolerances whereby
`a core-band may not be exactly centered at an operating center
`frequency despite efforts to center the core band at the operating center
`
`
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`2
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`Petitioner Reply IPR2014-001195
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`frequency. Accordingly, one of ordinary skill in the relevant art would
`understand applicants’ use of “substantially” in the above claims.
`Id., p. 160 (emphasis added). The term “substantially” is thus used in the claims as a
`
`term of approximation in order to “balance clarity with the fact that real-world
`
`systems have process and operational tolerances,” id., which contradicts the PO’s
`
`position that the term “substantially” denotes a term of magnitude.
`
`
`
`Furthermore, there is nothing in the language of the specification or supporting
`
`provisional that suggests that the inventors meant to exclude embodiments that satisfy
`
`“less than or equal to” but do not satisfy the PO’s construction “significantly not
`
`wider”. For example, the specification states that the “core band […] is defined as a
`
`frequency segment that is not greater than the smallest operating channel bandwidth
`
`[…]” ERIC-1001, 4:67-5:4 (emphasis added). Also, the provisional application
`
`incorporated into the ’431 patent (see ERIC-1001, 1:12 and 24-25) describes the core
`
`band as “less than or equal to” (see ERIC-1035, p. 7).
`
`
`
`The PO alleges that “[t]hose of skill in the art at the time of the invention
`
`generally understood ‘substantially’ as either a term of approximation or a term of
`
`magnitude.” Response, p. 17. Blatantly disregarding the remarks in the prosecution
`
`history, the PO cites to Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d
`
`1022. See Response, p. 17. However, Epcon is not applicable because the phrase at
`
`issue in that case, “substantially below,” “was added to the claims during prosecution
`
`to distinguish the claimed invention over the prior art Baxi reference,” and any
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`Petitioner Reply IPR2014-001195
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`interpretation of “substantially below” that allowed any manner of “above” was
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`disallowed by the prior art. Epcon, p. 1031. In the case at hand, the term
`
`“substantially not wider” was not added to distinguish over a prior art magnitude, but
`
`rather, as described in the file history, the term “substantially” was used to “balance
`
`clarity with the fact that real-world systems have process and operational tolerances.”
`
`File History, p. 160 (ERIC-1010).
`
`
`
`The PO refers to the only numeric example given in the specification,
`
`comparing 4 MHz to 5 MHz, to say that 4 MHz is “significantly not wider,” for
`
`example, “significantly narrower than,” 5 MHz. See Response, pp. 17-18. However,
`
`the detailed description gives no indication of how to determine when one bandwidth
`
`is “significantly narrower than,” as opposed to simply “narrower than,” another
`
`bandwidth. As a result, the PO’s Expert could not give any explanation based on the
`
`’431 patent about where to draw the line1.
`
`Even PO recognizes that just as argued during prosecution, “substantially” can
`
`be a term of approximation. Response, p. 17 (“‘substantially’ [is] either a term of
`
`approximation or a term of magnitude.”). This is consistent with the specification in
`
`1 The PO’s expert, Dr. Zeger, said he would have to research whether other values,
`
`such as 4.1 MHz, satisfy “substantially not wider” than 5 MHz. See Zeger Depo,
`
`p. 100 (ERIC-1031). Dr. Zeger also said he would have to research whether the
`
`term implies a percentage difference or an absolute difference. See id., p. 104.
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`4
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`Petitioner Reply IPR2014-001195
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`light of the prosecution history which suggests that “substantially not wider” means
`
`“not wider” (i.e., not greater than or narrower than or equal to) within a tolerance that
`
`accounts for implementation. Thus, the term “not wider than” means “narrower than
`
`or equal to” with the term “substantially” being a term of approximation to account
`
`for “process and operational tolerances” (File History, p. 160) such that in some
`
`instances the “core band” may be slightly larger than the operating channel bandwidth
`
`due to implementation tolerances, while still satisfying the claim.
`
`In summary, the proposed constructions for “substantially not wider” are:
`
`Petitioner’s Construction
`
`Patent Owner’s Construction
`
`No construction necessary. Alternatively,
`narrower than or equal to in width within a
`degree of accuracy that accounts for process
`and operational tolerances
`
`B. “Radio control and operation signaling”
`
`
`
`significantly not wider
`
`It was not necessary to construe this claim language previously because
`
`whether “radio control and operation signaling” refers to one concept or two separate
`
`concepts, Yamaura clearly discloses such signaling.
`
`Implicit in Petitioner’s application of “radio control and operation signaling” is
`
`that “control and operation” would have been understood by a person of ordinary skill
`
`in the art (POSA) as referring to a single concept. See Supp. Haas Decl., ¶ 7 (ERIC-
`
`1034). This is consistent with the ’431 patent. See id.
`
`The term “radio control and operation signaling” is used only once in the
`
`
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`5
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`Petitioner Reply IPR2014-001195
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`detailed description, which recites: “Radio control and operation signaling is realized
`
`through the use of a core-band (CB).” ERIC-1001, 4:66-67. The word “is” is
`
`highlighted to show that the signaling is a single concept, not two distinct concepts.
`
`See Supp. Haas Decl., ¶ 8.
`
`The claim language “radio control and operation signaling” should be viewed
`
`in its larger context within claim 1, which recites “wherein a core-band, […], is
`
`utilized […] as a broadcast channel carrying radio control and operation signaling.”
`
`The only disclosure in the ’431 patent related to control signals in the context of an
`
`example core-band is in the ’431 patent, col. 5, lines 8-18. This passage provides
`
`examples of “control signals” but otherwise does not clarify what is meant by “radio
`
`control and operation signaling.” See Supp. Haas Decl., ¶ 9 (ERIC-1034).
`
`Regarding control signals, the PO explains “that radio control signals include
`
`signals used to set up radio operations, such as preambles with address information,
`
`synchronization information, ranging signals, bandwidth request information, and
`
`bandwidth allocation information.” Response, p. 15. Regarding operation signals,
`
`PO explains that “the ’431 patent explains that, ‘[i]n addition to the essential control
`
`channels, a set of data channels and their related dedicated control channels are placed
`
`within the CB to maintain basic radio operations.’ Thus, a set of data channels and
`
`their related dedicated control channels are examples of operation signaling.” Id., p.
`
`16 (internal citations removed, emphasis in original).
`
`
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`6
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`Petitioner Reply IPR2014-001195
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`There are two problems with the examples given by the PO. First, the
`
`examples given by the PO contradict the fact that in claim 1 a “broadcast channel,”
`
`not a “dedicated channel,” carries the signaling. See Supp. Haas Decl., ¶11 (ERIC-
`
`1034). Second, the examples contradict the ordinary and customary meaning of
`
`“signaling.” See id.
`
`As a first contradiction, a “broadcast channel” cannot carry dedicated channels.
`
`See id., ¶12. A technical dictionary defines “broadcast channel” as “a wireless term
`
`for the logical channel used in certain cellular networks to broadcast signaling and
`
`control information to all cellular phones.” ERIC-1030, p. 128. Thus, a broadcast
`
`channel is a channel for all users. See Supp. Haas Decl., ¶ 12. On the other hand, a
`
`dedicated channel is a channel dedicated to a specific user. See id. Using a well-
`
`known third generation cellular system as an example: “a common channel [akin to a
`
`“broadcast channel”] is a resource divided between all or a group of users in a cell,
`
`whereas a dedicated channel resource […] is reserved for a single user only.” ERIC-
`
`1032, p. 71 (emphasis added). Thus, dedicated control channels are not an example of
`
`operation signaling because the claim requires a broadcast channel to carry operation
`
`signaling. See Supp. Haas Decl., ¶ 12.
`
`As a second contradiction, the term “signaling” has an ordinary and customary
`
`meaning in the field and is not merely the same as “signals.” Thus, the PO
`
`improperly conflates “signals” and “signaling.” For example, a technical dictionary
`
`
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`7
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`Petitioner Reply IPR2014-001195
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`describes “signaling” as follows: “in any telephone system – inside an office or
`
`across the country – some form of signaling mechanism is required to set up and tear
`
`down the calls.” ERIC-1030, p. 800. Thus, “signaling” refers to information used to
`
`set up or tear down calls. See Supp. Haas Decl., ¶ 13 (ERIC-1034). In contrast, data
`
`channels refer to channels that carries information intended for a user. For example,
`
`Dr. Zeger was asked what he meant by “data channels” and “data.” See Zeger Depo,
`
`pp. 66-67 (ERIC-1031). Dr. Zeger distinguished “data channels” from information
`
`used to set up a call. See id. Accordingly, a data channel is not an example of
`
`“signaling” because the data channel carries information intended for a user, whereas
`
`“signaling” means call control information. See Supp. Haas Decl., ¶ 13.
`
`
`
`Thus, the examples the PO provides of “operation signals” – a set of data
`
`channels and their related dedicated control channels – are not valid examples of
`
`“operation signaling” in a “broadcast channel.” Accordingly, the most reasonable
`
`construction of “radio control and operation signaling” is that it refers to a single
`
`concept – control signaling that affects the operation of a receiver.
`
`C. “Sufficient for basic radio operation”
`
`The PO did not propose a construction of this term in the PO Preliminary
`
`Response, but the PO proposes to construe the term now as “including radio control
`
`channels and data channels sufficient for the mobile station to operate at a primary
`
`state.” The Petitioner did not previously offer a proposed construction for the term.
`
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`8
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`Petitioner Reply IPR2014-001195
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`When construing the term “sufficient for basic radio operation,” it is necessary
`
`to bear in mind that the more complete claim language is “a primary preamble
`
`sufficient for basic radio operation.” That is, it is a “primary preamble” that is
`
`“sufficient for basic radio operation.”
`
`When construing “sufficient for basic radio operation” it is important to
`
`distinguish between what information may be in the core-band versus what
`
`information is required in the “primary preamble” for basic radio operation. The only
`
`definitive statement in the ’431 patent about what information may be contained in a
`
`preamble is that “[t]he DL preamble is used at a base station to broadcast radio
`
`network information such as synchronization and cell identification.” ERIC-1001,
`
`3:54-56. This description is consistent with basic radio operation because
`
`synchronization and cell identification are needed for basic radio operation. See Supp.
`
`Haas Decl., ¶ 17.
`
`Beyond this, all that is explained by the ’431 patent is that “[t]he EP [primary
`
`preamble] alone is sufficient for basic radio operation.” ERIC-1001, 5:21-22. It is
`
`also known that the primary preamble has a series of properties related to
`
`autocorrelation, cross-correlation, etc. listed in the specification and claim 1. As
`
`argued by the PO, the “primary preamble is readily and reliably identified” when it
`
`possesses these properties. See Response, p. 10. Thus, the primary preamble has
`
`properties that allow it to be identified to, for example, provide an effective
`
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`Petitioner Reply IPR2014-001195
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`mechanism for synchronization purposes. See Supp. Haas Decl., ¶ 21 (ERIC-1034).
`
`These properties are listed separately in claim 1.
`
`There are numerous problems with the PO’s construction. First, the PO
`
`conflates core-band with primary preamble when formulating its construction. Id., ¶
`
`19. For example, the PO states that “to maintain basic radio operation, the core-band
`
`must include both relevant or essential radio control signals and a set of data channels
`
`and their dedicated control channels.” Response, p. 19 (emphasis added).
`
`Second, and closely related to the first issue, the temporal location of a primary
`
`preamble – both sides agree that it is near the beginning of a frame – does not comport
`
`with the PO’s definition of “sufficient for basic radio operation.” See Supp. Haas
`
`Decl., ¶ 20 (ERIC-1034). There is no reason why data channels would be near the
`
`beginning of a frame. See id. It would make sense that the beginning of a frame
`
`would allow a mobile station to synchronize and provide base station information.
`
`See id. The understanding of a POSA, in view of the specification, does not support
`
`having a plurality of control channels and a plurality of data channels at the
`
`beginning of a frame. See id.
`
`Third, the PO’s proposed construction does not add clarity but rather adds
`
`ambiguity and confusion. For example, the PO’s construction begs the question of
`
`what is a primary state. The ’431 specification does not provide any explanation.
`
`Also, PO’s construction still uses “sufficient for” and does not clarify what this
`
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`10
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`Petitioner Reply IPR2014-001195
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`means. The PO’s construction also does not indicate how many control channels and
`
`data channels are needed. The PO’s expert gave a confusing answer that “channels”
`
`plural means “one or more.” See Zeger Depo, pp. 119-120 (ERIC-1031). The PO’s
`
`expert also could not give examples of the control channels and could not recall if the
`
`’431 patent stated that the control channels referred to in the PO’s construction are in
`
`the primary preamble. See id., p. 119.
`
`
`
`In summary, the primary preamble satisfies the properties listed in claim 1
`
`(e.g., auto-correlation, cross-correlation, etc.). The primary preamble has information
`
`sufficient to satisfy these properties to be “readily and reliably identified,” according
`
`to the PO. See PO Response, p. 10. The primary preamble thus contains information
`
`for synchronization purposes. See ERIC-1001, 3:51-56. The primary preamble can
`
`also be used to convey base station cell identification. See id. These are examples of
`
`information to establish radio operation. See Supp. Haas Decl., ¶ 21 (ERIC-1034).
`
`Beyond these aspects, the ’431 patent does not provide specifics on other types of
`
`information that could be contained in a preamble. See id.
`
`
`
`In summary, the proposed constructions for “a primary preamble sufficient for
`
`basic radio operation” are as follows.
`
`Petitioner’s Construction
`
`Patent Owner’s Construction
`
`a primary preamble containing
`information to establish radio
`operation
`
`a primary preamble including radio
`control channels and data channels
`sufficient for the mobile station to
`operate at a primary state
`
`
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`11
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`Petitioner Reply IPR2014-001195
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`The Petitioner and PO’s constructions of “primary preamble” are effectively
`
`
`
`identical, see, e.g., Response, p. 11 (comparing constructions), and are part of the
`
`construction of “a primary preamble sufficient for basic radio operation.”
`
`
`
`As pointed out in the Response, the Board’s construction of “primary
`
`preamble” renders other language of claim 1 superfluous. If the Board’s construction
`
`is adopted, claim 1 is still rendered obvious by the Petitioner’s references, because the
`
`elements of the Board’s construction of “primary preamble” are found in other parts
`
`of claim 1 and addressed in the Petition and/or this Reply. For example, claim 1
`
`separately recites that the “primary preamble is a direct sequence in the time domain
`
`… or is an orthogonal frequency-division multiplexing (OFDM) symbol …” This
`
`element is found in another part of claim 1 and is addressed separately in the Petition.
`
`III.
`
`Challenge #2: References Disclose Disputed Claim Elements
`
`A. “Core-band, including a plurality of subcarrier groups, substantially
`centered at an operating center
`frequency of
`the different
`communication schemes”
`
`PO correctly points out that Li is used as disclosing multiple communication
`
`
`
`schemes (multiple bandwidths). See Response, p. 39. As explained in the analysis of
`
`claim element 1.0 in the Petition, Li’s base station first allocates basic clusters in a
`
`first scheme, and Li’s base station next allocates more clusters in a different scheme,
`
`referred to as auxiliary clusters, to increase the bandwidth. See Petition, p. 33 (citing
`
`ERIC-1002, 6:43-48).
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`12
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`Petitioner Reply IPR2014-001195
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`Yamaura discloses a narrowband control channel centered within a single
`
`operating channel bandwidth. For example, Yamaura discloses that in conventional
`
`OFDM systems a “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.” ERIC-1003, 5:44-47. In order to address this issue,
`
`Yamaura discloses a system in which “part of control signals addressed to a terminal
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`station from a base station is transmitted by means of a carrier whose band is
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`narrower than that for said multi-carrier signals […]” Id., 6:5-8. The narrowband
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`control channel resides within a “core band” (different operating channel bandwidths
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`are discussed in claim element 1.7 of the Petition with respect to Beta). Petition, pp.
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`43-44. The combination of Li and Yamaura, as would have been understood by a
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`POSA, is illustrated in annotated Fig. 17 of Yamaura below. See Supp. Haas Decl., ¶
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`24 (ERIC-1034).
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`Yamaura, Fig. 17 (annotated)
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`In view of the teaching of Yamaura that control information is transmitted by a
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`central frequency band, a POSA would have centered Yamaura’s control signals
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`within Li’s initially allocated basic clusters. See id., ¶ 25. In order to maintain the
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`benefits of Yamaura’s narrowband control signals, Li’s auxiliary clusters would have
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`been placed so that the narrowband control signals remain at the center. See id.
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`B. “Radio control and operation signaling”
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`For the sake of argument, suppose that “radio control and operation signaling”
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`is construed according to the PO’s proposed construction – “radio control signals and
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`radio operation signals,” with “control signals” mainly referring to setting up radio
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`operation and “operation signals” mainly referring to maintaining radio operation,
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`according to the PO. Even assuming PO’s proposed construction, Yamaura discloses
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`the claimed “radio control and operation signaling.”
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`Yamaura discloses control signaling – e.g., signals in the BCH (broadcast
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`channel). See Supp. Haas Decl., ¶ 27 (ERIC-1034). Yamaura also discloses
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`operation signaling – e.g., signals in the FCH (frame channel). See id. The terms
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`BCH and FCH are used here as synonymous with “signals” in the context of Yamaura
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`because Yamaura’s channels carry signals. See id.
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`The BCH and FCH are within a “broadcast channel” as required by claim 1, as
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`both are within Yamaura’s broadcast burst. See id. ¶ 28. For example, referring to
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`Fig. 17, Yamaura recites:
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`[t]he broadcast burst consists of BCH for the multiple addressing of
`broadcast preamble and base station information, FCH to inform each
`terminal station of the traffic channel allocation in the same frame,
`and ACH for reply to RCH used for calling from the terminal station. In
`the case of this embodiment, the two subcarriers SC1 and SC2 shown in
`FIG. 16 are used for transmission of specific control signals in the
`sections of broadcast preamble, BCH, and FCH in the broadcast burst.
`ERIC-1003, 21:7-15 (emphasis added). The BCH and FCH are communicated in a
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`“broadcast channel” because the BCH and FCH are intended for all terminals. See
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`Supp. Haas Decl., ¶ 28 (ERIC-1034). Yamaura’s BCH is a control signal because it
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`provides base station information, and Yamaura’s FCH is an operation signal because
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`it contains information to establish and maintain a traffic channel. See id.
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`Additionally, the control and operation signals in Yamaura’s narrow band (e.g.,
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`including only two subcarriers SC1 and SC2 in one embodiment) are used for
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`synchronization (see Haas Decl., ¶ 50), which is needed both to set up
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`communications and to maintain communications (see Supp. Haas Decl., ¶ 29).
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`Therefore, Yamaura’s synchronization is both a “control signal” and an “operation
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`signal” in the sense used by the PO. See id.
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`C. “Substantially not wider than a smallest possible operating channel
`bandwidth”
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`If a construction is even needed, the proper construction of “substantially not
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`wider” is “narrower than or equal to in width within a degree of accuracy that
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`accounts for process and operational tolerances.” In the Petition, an example core-
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`band is presented that is equal to the smallest possible operating channel bandwidth.
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`See Petition, pp. 43-44. This example core-band satisfies the claim element under the
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`proper claim construction.
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`D. “Primary preamble sufficient for basic radio operation”
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`Claim 1 recites “a primary preamble sufficient for basic radio operation.” The
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`proper construction of “sufficient for basic radio operation” is “containing information
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`to establish radio operation.” As illustrated in Yamaura’s Fig. 17, reproduced supra,
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`p. 13, “the two subcarriers SC1 and SC2 shown in FIG. 16 are used for transmission
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`of specific control signals in the sections of broadcast preamble, BCH, and FCH in the
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`broadcast burst.” Yamaura, 21:12-15. Within these two subcarriers, “the signal
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`having the pilot symbol added by the pilot adding means 136 is multiplied by means
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`of the multiplier 134 by the pseudo random series generated by the PN series
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`generating means 135. The spread output is transmitted by means of the narrow-band
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`carrier or specific subcarrier as in the case shown in FIG. 9.” Yamaura, 18:66-19:4.
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`Dr. Haas explained in his deposition that the aforementioned pilot symbol would be
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`transmitted in the broadcast preamble (illustrated in Fig. 17 above, for example). See
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`Deposition of Zygmunt Haas, p. 127 (Ex. 2004).
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`As explained in the Petition, an advantage is that Yamaura’s narrowband
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`control signals indicate a frame boundary. See Petition, p. 26; see also ERIC-1012, ¶
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`50. “The advantage of transmitting narrow-band signals from the base station is that
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`the terminal station can recognize the break of MAC frame of the carrier for
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`information communication in the base station even though it receives only the
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`narrow-band signals. As the result, it can recognize the break of MAC frame
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`immediately and perform necessary processing when it starts reception in the carrier
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`for information communication in response to information obtained by receiving the
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`narrow-band signals or when it becomes apparent that transmission should be started
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`in the carrier for information communication.” ERIC-1003, 10:47-57. Furthermore,
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`“[t]he fact that the base station transmits, in synchronism with the frame position for
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`information transmission, part of the control signals addressed to the terminal station
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`which is transmitted by means of the specific carrier permits the terminal station to
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`capture the framing timing simply by receiving the specific subcarrier.” Id., 30:5-10.
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`Thus, Yamaura’s control signals are also used for frame timing (which is a form of
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`synchronization). See Petition, p. 26.
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`Yamaura’s control signals include a PN series which provides structure
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`sufficient to establish basic radio operation. The structure is such that the cross-
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`correlation is small, as illustrated in Yamaura Figs. 13C and 14C.
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`Thus, Yamaura’s broadcast preamble is a “primary preamble sufficient for
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`basic radio operation.” The concatenation of Yamaura’s broadcast preamble, BCH,
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`and FCH is also a preamble because these three entities are transmitted one after
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