UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`
`
`HUAWEI DEVICE USA, INC. and
`ZTE (USA), INC.
`Petitioner
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTE
`Patent Owner
`
`_______________
`
`Case IPR2015-00203
`Patent 8,532,231
`
`_______________
`
`
`
`EXCLUSIVE LICENSEE SPH AMERICA, LLC’S
`PRELIMINARY RESPONSE
` 
`
` 
`
`

`

`TABLE OF CONTENTS
`
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 3
`a. About U.S. Patent No. 8,532,231 (the “‘231 patent” or “Yu”) ........................ 3
`b. Claim Construction ........................................................................................... 9
`c. Petitioners’ Grounds of Challenge Rely On Art Already Considered by the
`USPTO Examiner ................................................................................................. 20
`III. Response to Statement of Material Facts ....................................................... 24
`IV. Argument ........................................................................................................ 29
`a. The Petition Fails to Name All Real Parties in Interest ................................. 29
`b. Ground 1’s Challenge Fails to Disclose all Features of Claims 16 and 47, and
`Lacks Any Basis to Combine the Reference Teachings ....................................... 34
`i. There is Inadequate Basis to Combine N’085 and Alamouti ...................... 34
`ii. Any Combination Still Fails to Disclose All Features of the Challenged
`Claims ................................................................................................................ 40
`c. Ground 5’s Challenge Also Lacks a Basis to Combine the Reference
`Teachings and Lacks All Features ........................................................................ 45
`d. Grounds 2 and 6 Do Not Establish Obviousness of Independent Claims 35
`and 54 .................................................................................................................... 50
`e. The Grounds Directed to the ‘231 Patent’s Dependent Claims Fail to
`Remedy the Petition’s Underlying Deficiencies .................................................. 51
`f. The Board Should Exercise Its Discretion to Dismiss All Challenges Based
`on Previously-Considered Art .............................................................................. 56
`V. Conclusion ......................................................................................................... 57
`
`ii 
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.,
` 212 F.3d 1272 (Fed. Cir. 2000) ............................................................................ 37
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
` IPR2013-00453 (PTAB 1/6/2015) ........................................................................ 30
`Callcopy, Inc. v. Verint Americas, Inc., IPR2013-00486 (PTAB 2/5/2014) ........... 12
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
` IPR2014-00454 (PTAB 8/29/2014) ............................................................... 10, 11
`Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir. 2006) ........................... 37
`Gonzalez v. Banco Cent. Corp., 27 F.3d 751 (1st Cir. 1994) .................................. 30
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
` IPR2013-00183 (PTAB 7/31/2013) ...................................................................... 35
`In re Bigio, 381 F.3d 1320 (Fed Cir. 2004) ............................................................... 9
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ....................................................... 37, 46
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ............................................................ 9
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 9
`In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) ..................................................... 9
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ....................................... passim
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
` IPR2014-01092 (PTAB 01/13/2015) ................................................. 36, 37, 45, 46
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
` 506 F.3d 1370 (Fed. Cir. 2007) ..................................................................... 37, 38
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 25
`35 U.S.C. § 112 ........................................................................................................ 15
`35 U.S.C. § 119 .......................................................................................................... 2
`35 U.S.C. § 120 .......................................................................................................... 2
`35 U.S.C. § 312(a)(3) ............................................................................................... 12
`35 U.S.C. § 314(a) ........................................................................................... passim
`35 U.S.C. § 325(d) ...................................................................................... 21, 45, 57
`
`iii 
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`Other Authorities
`
`MPEP 2163.02 ......................................................................................................... 16
`Office Patent Trial Practice Guide,
` 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) ............................................. 9, 29, 30
`Rules
`
`37 C.F.R. § 42.6(a)(3) ...................................................................................... passim
`37 C.F.R. § 42.8(b)(1) ................................................................................... 1, 29, 33
`37 C.F.R. § 42.62(a) ................................................................................................. 42
`37 C.F.R. § 42.65(a) ......................................................................................... passim
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 12
`
`
`
`
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`iv 
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`LIST OF EXHIBITS
`
`
`
`Description
`
`U.S. Patent Application Publication No. 2005/0163081 filed by
`Aoki et al. (“Aoki ‘081”)
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454
`paper 12 (PTAB 8/29/2014)
`
`U.S. Patent No. 7,408,976, issued to Narasimhan et al.
`
`U.S. Patent No. 7,796,681 issued to Narasimhan et al.
`
`Joint Motion for Dismissal Without Prejudice of ZTE
`Corporation in SPH America, LLC v. ZTE (USA), Inc., Case
`No. 3:13-cv-02326-CAB (Dkt. 15)
`
`HUAWEI DEFENDANTS’ ANSWER, AFFIRMATIVE
`DEFENSES, AND COUNTERCLAIMS TO PLAINTIFF SPH
`AMERICA’S SUPPLEMENTAL FIRST AMENDED
`COMPLAINT FOR PATENT INFRINGEMENT in SPH
`America, LLC v. Huawei Technologies, Co., Ltd., Case No.
`3:13-cv-02323-CAB (Dkt. 43, pp. 1-2)
`
`File History of U.S. Patent No. 7,577,085 issued to Narasimhan
`(pp. 302-347)
`
`
`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`2004
`
`2005
`
`
`2006
`
`
`2007
`
`
`
`v 
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` 
`
`I.
`
`Introduction
`
`The Petition for inter partes review of U.S. Patent No. 8,532,231 (“the 231
`
`patent”) should be denied and no trial instituted because there is no “reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a).1
`
`As an initial jurisdictional matter, Petitioners fail to properly name all the
`
`real parties in interest, as required by 37 C.F.R. § 42.8(b)(1). As explained in more
`
`detail below, the Petition should be dismissed at the outset on this basis. To the
`
`extent necessary to establish this violation of the Board’s regulations, Patent
`
`Owner and Exclusive Licensee SPH America, LLC (“SPH America”) reserve the
`
`right to seek additional discovery on this subject.
`
`The Petition fails in substance as well. The Petition presents grounds for
`
`challenge against claims 16, 20, 35, 40, 47-51, and 54-57 of the ‘231 patent based
`
`on obviousness alone. But Petitioners fail to provide sufficient rationale for why a
`
`person of ordinary skill in the art would have modified the prior art to reach the
`
`                                                            
`1 This Preliminary Response is being filed by Exclusive Licensee SPH America,
`
`LLC, having exclusive rights to enforce the ‘231 patent, and also exclusive rights
`
`to defend the ‘231 patent’s validity. 
`
` 
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`1 
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`claimed invention, as required by law, and do not show all claimed elements in the
`
`cited references. Petitioners also base six of seven Grounds of Challenge on
`
`references that have already been considered by the USPTO examiner, Dr. Torres,
`
`during original examination. The claims have already been properly allowed over
`
`these cited references, and the Board should not disturb Examiner Torres’s correct
`
`conclusion.
`
`The Petition also includes numerous instances where attorney argument or
`
`statements in the supporting Williams Declaration are presented without any
`
`“underlying facts or data” on which they are based, in violation of 37 C.F.R. §
`
`42.65(a).
`
`For these reasons and more, the Petition fails to meet its burden in
`
`establishing a reasonable likelihood of success on any challenged claim. Since the
`
`Petition fails to show a “reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims,” and since Petitioner has failed to comply
`
`with the Board’s requirements in making the requisite showing, the Petition should
`
`be denied. 35 U.S.C. § 314(a).2
`                                                            
`2 Petitioner concurrently filed two Petitions for IPR, this case No. IPR2015-00203
`
`and IPR2015-00221 against U.S. Patent No. 8,565,346. The ‘231 patent and the
`
`‘346 patent claim common priority under 35 U.S.C. §§ 119-20 and are therefore
`
`related. These two Petitions share common defects, and though separate
`
`2 
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`

`

`
`
`II.
`
`Background
`
` 
`
`a. About U.S. Patent No. 8,532,231 (the “‘231 patent” or “Yu”)
`The ‘231 patent was filed as U.S. Patent Application No. 13/292,715 on
`
`November 9, 2011 and claims foreign priority to and the benefit of Korean patent
`
`application no. 10-2004-0111065, filed on December 23, 2004. The ‘231 patent
`
`also claims priority back to International Application No. PCT/KR2005/000393,
`
`filed on February 11, 2005, and claims domestic priority to a chain of U.S. patent
`
`applications, including U.S. Patent Application Nos. 12/805,117; 12/401,293; and
`
`11/767,797. The title of the ‘231 patent is “APPARATUS FOR TRANSMITTING
`
`AND RECEIVING DATA TO PROVIDE HIGH-SEED DATA
`
`COMMUNICATION AND METHOD THEREOF,” and the ‘231 patent discloses
`
`a frame structure for transmitting data, a transmitter, a receiver for use in Multiple-
`
`Input/Multiple-Output (MIMO) radio data communications, and related methods.
`
`See, e.g., ‘231 patent at Figs. 2, 3, 6-9. As explained in the Background of the
`
`Invention, such an apparatus “uses multiple antennas” to achieve a higher data rate,
`                                                                                                                                                                                                
`preliminary responses will be submitted in each case, many of the arguments
`
`contained herein will also be respectfully presented to the Board in IPR2015-
`
`00221. 
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`3 
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`but is also “compatible with the conventional IEEE 802.11a orthogonal frequency
`
`division multiplexing (OFDM) method.” Id. at 1:42-47.
`
`In the IEEE 802.11a “frame configuration” per Fig. 5 of the ‘231 patent, the
`
`“signal symbol includes information on data rate, length, and parity.” Id. at 7:59-
`
`65. In more detail, the “signal symbol includes information on length of data
`
`sections (0 to 4,095 bytes), code rates (1/2, 2/3, and ¾), and mapping methods
`
`(BPSK, QPSK, 16-QAM, and 64-QAM).” Id. at 8:12-14. Further, long preambles
`
`T1 and T2 are arranged consecutively in the frame structure, and the frame
`
`structure also includes short preambles t1 to t10. Id. at Fig. 5. The short preamble
`
`and long preamble “are symbols for synchronization and channel estimation.” Id.
`
`at 7:62-63. The frame configuration of Fig. 5 is shown below, with (in order) short
`
`preamble, long preamble, signal symbol, and data symbol:
`
`In contrast, the frame configuration of Fig. 6’s exemplary embodiment is
`
`shown below, for use in an MIMO system:
`
`
`
`4 
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`

`
`
`The frame configuration of Fig. 6’s exemplary embodiment is further
`
`described as follows. As shown above, a second long preamble, including two long
`
`preambles T1, T2 each having guard intervals arranged therebetween (the second
`
`long preamble collectively labeled as GI/T1/GI/T2), is positioned after the Signal
`
`symbol. Data field is also preceded by a guard interval GI. A “frame generator
`
`modifies the signal symbol in order to provide compatibility with the conventional
`
`system.” Id. at 9:60-61. Specifically, in this exemplary embodiment, an R4 bit in
`
`the signal symbol is used to distinguish between “the conventional IEEE 802.11a
`
`mode and the multiple antenna OFDM mode.” Id. at 9:66-10:1. And a reserved bit
`
`in the signal symbol, following the R4 bit, is redefined as antenna bit A, and is
`
`used to distinguish between “STBC mode” and another MIMO mode, spatial
`
`division multiplexing (SDM) mode. Id. at 9:62-65; 10:31-40. Thus, according to
`
`this exemplary frame structure, the signal symbol includes “information in the
`
`5 
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`signal symbol” by which a determination unit may determine “whether the frame is
`
`transmitted using space time block coding.” Id. at 16:1-3; 18:13-16.
`
`
`
`Petitioner challenges the validity of claims 16, 20, 35, 40, 47-51, and 54-57
`
`of the ‘231 patent. Of these challenged claims, claims 16, 35, 47, and 54 are
`
`independent.
`
`These independent claims are presented below, with features relevant to
`
`claim construction in bold for the Board’s reference:
`
`16. A receiving apparatus in a wireless communication system,
`the apparatus comprising:
`a receiving unit configured to receive a frame comprising
`sequentially a short preamble, a first long preamble, a signal
`symbol, a second long preamble, and a data symbol, wherein
`the short preamble comprises a symbol for synchronization; and
`a determination unit configured to determine, based on
`information in the signal symbol, whether the frame is
`transmitted using space time block coding.
`
`
`
`35. An apparatus for receiving and decoding a frame from a
`transmitter in a wireless communication system, the apparatus
`comprising:
`
`a receiving unit configured to receive a frame, the frame
`comprising:
`
`6 
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`

`a short preamble comprising a symbol for timing
`synchronization,
`first and second long preambles subsequent to the
`short preamble, wherein the first and second long
`preamble provide references for channel estimation,
`a data field subsequent to the first and second long
`preambles, and
`a signal symbol between the first long preamble
`and the second long preamble, wherein the signal
`symbol comprises information about coding rate,
`modulation, and space time block coding;
`a determination unit configured to determine, based on
`the information in the signal symbol,
`whether the received frame is transmitted using space
`time block coding; and
`a demodulator configured to perform demodulation of the
`data field.
`
`47. A wireless communication method, comprising:
`receiving a frame comprising:
`a short preamble comprising synchronization
`information,
`a first and a second long preambles positioned
`subsequent to the short preamble,
`a signal symbol positioned between the first long
`preamble and the second long preamble, wherein the
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`7 
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`

`signal symbol comprises information about space time
`block coding, and
`a data field positioned subsequent to the second
`long preamble; and
`estimating a channel between a transmitter and a receiver
`using the second long preamble to demodulate the data field.
`
`54. A wireless communication method, comprising:
`receiving a frame comprising:
`a short preamble comprising information about
`timing synchronization,
`a first and a second long preambles positioned
`subsequent to the short preamble, wherein the first and
`second long preambles are generated using a basic long
`sequence, and the basic long sequence comprises, as its
`elements, A×{0, 0, 1, 1, −1, −1, 1, 1, −1, 1, −1, 1, 1, 1, 1,
`1, 1, −1, −1, 1, 1, −1, 1, −1, 1, 1, 1, 1, 0, 1, −1, −1, 1, 1,
`−1, 1, −1, 1, −1, -1, −1, −1, −1, 1, 1, −1, −1, 1, −1, 1, −1,
`1, 1, 1, 1, 0, 0}, where A is a non-zero real-valued
`coefficient,
`a signal symbol positioned between the first long
`preamble and the second long preamble, wherein the
`signal symbol comprises information about space time
`block coding, and
`a data field positioned subsequent to the second
`long preamble; and
`
`8 
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`

`estimating a channel between a transmitter and a receiver
`using the second long preamble to demodulate the data field.
`
`b. Claim Construction
`The standard for construing claim terms in this proceeding is not in dispute.
`
`Since the ‘231 patent is not expired, the Board will interpret claims using the
`
`broadest reasonable interpretation as understood by one of ordinary skill in the art
`
`and consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should
`
`only limit the claim based on the specification . . . when [it] expressly disclaim[s]
`
`the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). Further,
`
`“[a]lthough an inventor is indeed free to define the specific terms used to describe
`
`his or her invention, this must be done with reasonable clarity, deliberateness, and
`
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The Board will not
`
`read a particular embodiment appearing in the written description into the claim, if
`
`the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d
`
`1181, 1184 (Fed. Cir. 1993).
`
`9 
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`Signal Symbol: In violation of the governing law, Petitioners seek to limit
`
`the scope of the proposed constructions to a particular embodiment. For example,
`
`in presenting a proposed construction for “signal symbol,” Petitioners quote to
`
`column 3, lines 54-63 of the ‘231 patent, wherein the contents of a signal symbol
`
`are described in context of a disclosed embodiment. Petition (hereinafter “Pet.”) at
`
`10. But nowhere in the quoted text does the ‘231 patent expressly define the
`
`“signal symbol” or otherwise disclaim a broader claim scope. Moreover,
`
`Petitioners provide no supporting explanation for this proposed construction that
`
`would allegedly “be understood by a person of skill in the art.” Rather, Petitioners
`
`cite to nine paragraphs of Ex. 1002, the Williams Declaration, in violation of 37
`
`C.F.R. § 42.6(a)(3). Pet. at 10. Specifically, Petitioners cite to ¶¶76-84 of the
`
`Williams Declaration, without explanation. Id. The Board has recently addressed
`
`such techniques in its decision denying institution in Cisco Systems, Inc. v. C-
`
`Cation Techs., LLC, IPR2014-00454 paper 12 (PTAB 8/29/2014) (Decision
`
`Denying Institution of Inter Partes Review by APJ Droesch for a panel consisting
`
`of APJs Droesch, Deshpande, Benoit, Pettigrew, and Quinn) (Ex. 2002, hereinafter
`
`the “Cisco Decision”).
`
`As explained in the Cisco Decision, citations to “large portions of another
`
`document, without sufficient explanation of those portions, amounts to
`
`incorporation by reference.” Cisco Decision at 8. Further, the Board notes that “the
`
`10 
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`Petition includes citations to the Declaration to support conclusory statements for
`
`which the Petition does not otherwise provide an argument or explanation.” Id. at
`
`9. This too is deemed “incorporation by reference.” Id. The trouble, explains the
`
`Board, is that it is “improper to incorporate by reference arguments from one
`
`document into another document.” Id. at 10 (citing this practice as a violation of 37
`
`C.F.R. § 42.6(a)(3)). As a result, the Board refuses to consider any arguments not
`
`made in the petition itself. Cisco Decision at 10.
`
`Similarly, here, the Board should conclude that Petitioners’ citation to large
`
`portions of the Williams Declaration, without sufficient explanation of those
`
`portions, amounts to incorporation by reference, and the Board should refuse to
`
`consider any support provided in the Williams Declaration.
`
`Further, even if the Board looks to the Williams Declaration, both Williams
`
`and Petitioners propose a circular definition of the “signal symbol” as “the
`
`SIGNAL [symbol] of the 802.11a standard with the reserved bit R redefined as an
`
`antenna bit A and encoded to indicate whether space time block coding or space
`
`division multiplexing is used.” Pet. at 10; Ex. 1002 at ¶84. As is evident, the
`
`proposed construction includes the very “signal symbol” term being construed.
`
`Petitioners do not acknowledge that even Ex. 1010, IEEE Std. 802.11a-1999, does
`
`not provide an express definition of the “SIGNAL” but rather explains the concept
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`11 
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`based on what is contained therein. The SIGNAL field “contains the RATE and the
`
`LENGTH fields of the TXVECTOR.” Ex. 1010 at 13.
`
`Additionally, not only does Petitioners’ proposed construction lack support,
`
`but as will be explained in more detail below, the Petitioners also fail to show that
`
`the “signal symbol” according to this proposed construction is disclosed or
`
`suggested in each ground of challenge. This is fatal to each ground of challenge
`
`since the burden of establishing the “reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the petition” is
`
`Petitioner’s burden alone to carry. See Callcopy, Inc. v. Verint Americas, Inc.,
`
`IPR2013-00486, paper 11 at 10 (PTAB 2/5/2014) (Decision Denying Institution of
`
`Inter Partes Review by APJ Weatherly, for a panel consisting of APJs Bisk,
`
`Weatherly, and Bouche) (citing to 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4)
`
`and refusing to substitute the Board’s analysis for Petitioner’s analysis in deciding
`
`whether to institute the inter partes review); 35 U.S.C. § 314(a).
`
`To the extent a construction is deemed necessary by the Board, the BRI of
`
`this term should be consistent with the claim scope, and not limited to a disclosed
`
`embodiment, as Petitioners contend. Within the context of the claims, the “signal
`
`symbol” can be understood as a symbol containing information about space time
`
`block coding.
`
`12 
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`Long Preamble: Petitioners also deviate from the standards of proper claim
`
`construction for this term, and propose different constructions for “first long
`
`preamble” and “second long preamble” that each incorporate limitations according
`
`to exemplary embodiments. For example, Petitioners propose that the “first long
`
`preamble” is an “802.11a frame structure used for channel estimation of signals
`
`from an antenna.” Pet. at 11; Ex. 1002 at ¶88. Petitioners offer no explanation why
`
`the frame structure should be limited to an “802.11a” frame structure. Petitioners
`
`then propose that the “second long preamble” is a “frame structure used for
`
`multiple-input/multiple-output (MIMO) channel estimation on subcarriers of
`
`signals from a second antenna.” Pet. at 11; Ex. 1002 at ¶89. But like the “802.11a”
`
`limitation that is improperly incorporated into “first long preamble,” Petitioners
`
`offer no explanation why the “second long preamble” is limited to subcarriers of
`
`signals “from a second antenna.” These improper limitations should not be adopted
`
`by the Board as the BRIs of the “long preamble” terms.
`
`To the extent a construction is deemed necessary by the Board, the BRI of
`
`this “long preamble” term should be consistent with the claim scope, and not
`
`limited as Petitioners contend. Within the context of the claims, the “long
`
`preamble” can be understood as a portion of a frame used for channel estimation.
`
`The distinction between the “first” and “second” long preambles should simply be
`
`interpreted as different portions of the frame.
`
`13 
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`

`

`Additionally, as with “signal symbol,” the Petitioners fail to show that the
`
`first and second long preambles according to their constructions are disclosed or
`
`suggested by each ground of challenge. Again, this is fatal to each ground of
`
`challenge since Petitioners have not satisfied their burden of establishing the
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Determination Unit: Petitioners begin their argument on the proper
`
`construction for this term by raising a written description challenge. Pet. at 11. But
`
`SPH America disagrees with Petitioners’ argument that there “is no written
`
`description for the term ‘determination unit’ in the specification of the ‘231
`
`patent.” Id. To the contrary, the specification of the ‘231 patent discloses the
`
`following, which is relevant to the written description of the “determination unit”
`
`recited in the claims at issue:
`
`The present invention discloses a data receiving device including an
`RF receiving unit, a channel mixer, an initial synchronizer, a Fourier
`transforming unit, a signal symbol demodulator, a channel estimator,
`and a detector.
`
`… The signal symbol demodulator demodulates a signal symbol and
`demodulates information on a transmit mode. … The detector detects
`a complex number symbol corresponding to the data with reference to
`the estimated channel and demodulated signal symbol. We detect a
`
`14 
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`

`

`transmit mode identifier established in the signal symbol, and
`determine whether the transmit mode is a single antenna transmit
`mode or a MIMO-OFDM transmit mode.
`
`… The detector is a SDM detector or a STBC decoder.
`
`See ‘231 patent at 4:10-50. In the exemplary embodiments, the receiver of
`
`Fig. 3 includes “MIMO detector 218” (Id. at 6:46-47), which may be substituted
`
`out “for an STBC decoder” when STBC is applied. Id. at 7:15-18. Further, in Fig.
`
`7, showing “a configuration for an initial synchronization of the receiver”
`
`according to another exemplary embodiment, the “signal is detected according to
`
`the transmit mode by the detector 300.” Id. at 11:19-21; 12:7-9. Even in the
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`discussion of the “method for receiving the data according to an exemplary
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`embodiment” shown in Fig. 9, the ‘231 patent discloses that the “receiver
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`determines whether the demodulated signal symbol is transmitted from the MIMO
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`system with reference to the transmit mode information in step S260.” Id. at 13:24-
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`25; 13:54-56. Thus, Petitioners are incorrect in claiming that there is no written
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`description support for a “determination unit” as claimed. While the
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`“determination unit” term only appears in the claims, there is no requirement for a
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`patentee to use the identical terms in both the specification and the claims “in order
`
`for the disclosure to satisfy the description requirement” of 35 U.S.C. § 112. See
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`15 
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`MPEP 2163.02 (describing the standard for determining compliance with the
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`written description requirement).
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`As for the proper interpretation of “determination unit,” Petitioners propose
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`that the claimed “determination unit” can be understood, under the BRI, as “a
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`device that determines if the frame is transmitted using STBC [space time block
`
`coding] based on information in the signal symbol.” Pet. at 11. However, this
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`construction is unnecessary. For example, claim 16, which recites a “determination
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`unit,” already includes features in the express language of the claim: “a
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`determination unit configured to determine, based on information in the signal
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`symbol, whether the frame is transmitted using space time block coding.” ‘231
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`patent at 16:1-3. Construing this term as proposed by Petitioners would simply
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`mimic the express claim language.
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`Space Time Block Coding: The next term proposed for construction by
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`Petitioners is “space time block coding.” Pet. at 12. Once again, Petitioners
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`contend facts without support and incorporate portions of the Williams Declaration
`
`by reference. Both actions violate Board rule 37 C.F.R. § 42.6(a)(3). For example,
`
`Petitioners contend that “space time block coding” is a “term of art in
`
`telecommunications,” but cite to no evidence in support of this contention. Pet. at
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`12. Further, Petitioners actually propose no construction for the term, and instead
`
`argue that an “STBC system transmits multiple copies of the same stream over
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`16 
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`multiple antennas. The copies are received by one or more antennas and combined
`
`to generate an optimal signal.” Pet. at 12. The citation for this final sentence is the
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`Williams Declaration at ¶91, without further explanation in violation of 37 C.F.R.
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`§ 42.6(a)(3). But even if Williams’ basis could be incorporated by reference, the
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`Williams Declaration also fails to explain the basis of its conclusions in violation
`
`of 37 C.F.R. § 42.65(a), and is entitled to little or no weight. The entirety of
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`Williams’ ¶91 is shown below:
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`91. All of the subject claims use the term “space-time block coding”
`(STBC). STBC is a term of art in telecommunications. A STBC
`system transmits multiple copies of the same data stream over
`multiple antennas. The copies are received by one or more antennas
`and combined to generate an optimal signal. In addition, data is
`encoded using block coding. Accordingly, one of skill in the art would
`understand the term “space-time block coding” to mean, in the context
`of the ’231 and ’346 patents, using block codes to encode a data
`stream, copies of which are transmitted over multiple antennas.
`Williams Declaration at ¶91. As is clear from this paragraph, Williams fails to
`
`provide any basis for the alleged facts asserted. No basis is provided for his
`
`assertion that STBC is a “term of art in telecommunications,” that “multiple copies
`
`of the same data stream [are transmitted] over multiple antennas,” or that the
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`“copies are received by one or more antennas and combined to generate an optimal
`
`signal.” Williams does not explain if the source of these statements is his own
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`17 
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`personal opinion, or otherwise based on some verifiable evidence. In absence of
`
`this requisite detail, his statements are no different than the unsupported attorney
`
`argument contained in the Petition. Thus, the Williams Declaration violates 37
`
`C.F.R. § 42.65(a) and is entitled to little or no weight. Further, Williams’ proposed
`
`construction is not even presented in the Petition and therefore is at best
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`incorporated by reference in violation of the Board’s regulations and should be
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`disregarded. 37 C.F.R. § 42.6(a)(3).
`
`Indeed, the Petition’s failure to provide the Board with the proper
`
`construction of “space time block coding” is fatal to the Petition’s success in at
`
`least Grounds 1-4. As Petitioners note at p. 12 of the Petition, “[a]ll of the subject
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`claims use the term ‘space time block coding’ (STBC).” And yet, the Petition
`
`offers the Board no basis for evaluating whether STBC is disclosed in the cited
`
`references. For example, as discussed further in Section IV.b below, the Alamouti
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`reference (Ex. 1003) is relied upon to disclose the STBC features of the challenged
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`claims. See Pet. at 13. Alamouti discloses “encoding is done in space and time”
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`(see Ex. 1003 at 3), but as Williams correctly notes, “the phrase ‘space-time block
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`coding’ was not used in Alamouti’s October 1998 paper.” Ex. 1002 at ¶109.
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`Williams contends that “Alamouti’s October 1998 paper is considered the first
`
`description of space-time block coding (STBC), Alamouti’s technique was later
`
`coined ‘space-time bloc