Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: May 28, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE USA, INC. and ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`SPH AMERICA, LLC and ELECTRONICS AND
`TELECOMMUNICATIONS
`RESEARCH INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2015-00203
`Patent 8,532,231 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
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`
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` Paper 13
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`
`
` Entered: May 28, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE USA, INC. and ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`SPH AMERICA, LLC and ELECTRONICS AND
`TELECOMMUNICATIONS
`RESEARCH INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2015-00203
`Patent 8,532,231 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00203
`Patent 8,532,231 B2
`
`
`
`I.
`
`INTRODUCTION
`
`Huawei Device USA, Inc. and ZTE (USA), Inc. (collectively,
`
`“Petitioner”), filed a Petition requesting an inter partes review of claims 16,
`
`20, 35, 40, 47–51, and 54–57 of U.S. Patent No. 8,532,231 B2 (Ex. 1001,
`
`“the ’231 patent”). Paper 4 (“Pet.”). In response, Electronics and
`
`Telecommunications Research Institute and SPH America, LLC
`
`(collectively, “Patent Owner”), filed a Preliminary Response. Paper 10
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`
`provides that an inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`For the reasons set forth below, we deny institution of an inter partes
`
`review of the ’231 patent.
`
`A. Related Matter
`
`The ’231 patent is involved in at least the following lawsuits: SPH v.
`
`Huawei Technologies, Co., LTD et al., No. 3:13-cv-02323-CAB (S.D. Cal.);
`
`and SPH v. ZTE (USA), Inc., No. 3:13-cv-02326-CAB (S.D. Cal.). Pet. 1–2.
`
`B. The ’231 Patent
`
`The ’231 patent relates generally to an apparatus compatible with a
`
`conventional wireless local area network communication system, for
`
`transmitting and receiving data in high-speed. Ex. 1001, 1:24–29.
`
`Specifically, the described apparatus is used for transmitting and receiving
`
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`IPR2015-00203
`Patent 8,532,231 B2
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`data using multiple antennas while being compatible with conventional
`
`IEEE 802.11a orthogonal frequency division multiplexing (OFDM). Id. at
`
`1:35–47.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 16, 35, 47, and 54 are the only
`
`independent claims. Claim 20 depends directly from claim 16; claim 40
`
`depends directly from claim 35; claims 48–51 depend either directly or
`
`indirectly from claim 47; and claims 55–57 depend either directly or
`
`indirectly from claim 54.
`
`Claim 16, reproduced below, is illustrative.
`
`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.
`
`Ex. 1001, 15:61–16:3.
`
`
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`3
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`IPR2015-00203
`Patent 8,532,231 B2
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`References
`
`16 and 47
`
`§ 103(a) Narasimhan1 and Alamouti2
`
`35, 48–50, 54, 55, and
`56
`
`§ 103(a)
`
`Narasimhan, Alamouti, and IEEE
`802.11a Standard3
`
`20, 40, 51, and 57
`
`§ 103(a)
`
`20, 40, 51, and 57
`
`§ 103(a)
`
`Narasimhan, Alamouti, IEEE
`802.11a Standard, and Aoki4
`
`Narasimhan, Alamouti, IEEE
`802.11a Standard, and Gummadi5
`
`
`
`1 U.S. Patent No. 7,577,085 B1, issued Aug. 18, 2009, filed July 5, 2002
`(Ex. 1009) (“Narasimhan”). The parties refer to this reference as “N’085.”
`2 S. M. ALAMOUTI, “A Simple Transmit Diversity Technique for Wireless
`Communications,” IEEE J. ON SELECT AREAS IN COMMUNICATIONS, Vol. 16,
`No. 8, October 1998 (Ex. 1003) (“Alamouti”).
`3 IEEE Standard 802.11a (1999) (Ex. 1010).
`4 Aoki, et al., “New preamble structure for AGC in a MIMO-OFDM-
`system,” IEEE 802.11-04/046r1, Jan. 2004 (Ex. 1008) (“Aoki”). Petitioner
`asserts this reference is “a presentation given by employees of [a particular
`corporation] . . . to the IEEE in January 2004.” Pet. 8.
`5 U.S. Patent Application Publication No. 2005/0054313 A1,
`published Mar. 10, 2005, filed Mar. 29, 2004 (Ex. 1011) (“Gummadi”).
`4
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`Patent 8,532,231 B2
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`Challenged Claims
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`Basis
`
`References
`
`16 and 47
`
`§ 103(a) Liu6 and Jeon7
`
`35, 48–50, 54, 55, and
`56
`
`§ 103(a)
`
`Liu, Jeon, and IEEE 802.11a
`Standard
`
`20, 40, 51, and 57
`
`§ 103(a)
`
`Liu, Jeon, IEEE 802.11a Standard,
`and Aoki
`
`
`
`II. ANALYSIS
`
`A. Real Party-In-Interest
`
`Section 312(a) of Title 35 of the United States Code provides that a
`
`petition for inter partes review under 35 U.S.C. § 311 may be considered
`
`only if, among other things, the petition identifies all real parties-in-interest.
`
`35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
`
`interest to a proceeding is a highly fact-dependent question. Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
`
`Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “Courts
`
`invoke the terms ‘real party-in-interest’ and ‘privy’ to describe relationships
`
`and considerations sufficient to justify applying conventional principles of
`
`
`
`6 Liu & Li, “A MIMO System with Backwards Compatibility for OFDM
`based WLANs,” 4th IEEE Workshop on Signal Processing Advances in
`Wireless Communications, 2003 (Ex. 1012) (“Liu”).
`7 Jeon, et al., “Optimal Combining of STBC and Spatial Multiplexing for
`MIMO-OFDM,” IEEE 802.11-03/0513r0, July 2003 (Ex. 1006) (“Jeon”).
`Petitioner asserts these slides were “submitted to IEEE on July 2003.”
`Pet. 7.
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`estoppel and preclusion.” Id. Taylor lists six categories that create an
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`exception to the common law rule that normally forbids non-party
`
`preclusion in litigation. Taylor, 553 U.S. at 893–95. “A common
`
`consideration is whether the non-party exercised or could have exercised
`
`control over a party’s participation in a proceeding.” Trial Practice Guide,
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`77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895).
`
`Factors for determining actual control or the opportunity to control
`
`include existence of a financially controlling interest in the petitioner. Rules
`
`of Practice for Trials Before the Patent Trial and Appeal Board and Judicial
`
`Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`
`Reg. 48,612, 48,617 (Aug. 14, 2012). Additional relevant factors include:
`
`the non-party’s relationship with the petitioner; the non-party’s relationship
`
`to the petition itself, including the nature and/or degree of involvement in the
`
`filing; and the nature of the entity filing the petition. Trial Practice Guide,
`
`77 Fed. Reg. at 48,760.
`
`
`
`The Petition names ZTE (USA), Inc. (“ZTE (USA)”) as a real party-
`
`in-interest. Pet. 1. Patent Owner argues that ZTE (USA)’s parent company,
`
`ZTE Corporation, also is a real party-in-interest. Prelim. Resp. 30–32. In
`
`particular, Patent Owner argues that assertions made jointly by ZTE
`
`Corporation and ZTE (USA) during a related district court case are sufficient
`
`to show that ZTE Corporation is a real party-in-interest for purposes of this
`
`proceeding. Id.
`
`We have considered the reasoning and evidence to which we are
`
`directed in support of Patent Owner’s arguments—a joint motion for
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`dismissal of ZTE Corporation from the related case. Ex. 2005 (“joint
`
`motion” or “evidence”). We disagree with Patent Owner that the joint
`
`motion tends to show that ZTE Corporation has an interest in this
`
`proceeding. We find the joint motion to be ambiguous. Patent Owner relies
`
`on the joint motion to show that ZTE Corporation and ZTE (USA) made
`
`mutual representations regarding party responsibility for infringement, and
`
`that ZTE Corporation and ZTE (USA) shared information and documents
`
`during the related case. Prelim. Resp. 31–32. The joint motion, however,
`
`also represents ZTE Corporation’s dismissal from the case, seemingly
`
`representing that ZTE Corporation and ZTE (USA) have nonaligned
`
`interests with respect to the related case. The joint motion is not persuasive
`
`evidence to show that ZTE Corporation exercised or could have exercised
`
`control over the IPR petition drafting and filing as Patent Owner asserts.
`
`The Petition also names Huawei Device USA, Inc. (“Huawei USA”)
`
`as a Petitioner real party-in-interest. Pet. 1. Patent Owner argues that
`
`Huawei Technologies Co., Ltd. (“Huawei Tech.”), Futurewei Technologies,
`
`Inc. (“Futurewei Tech.”), and Shenzhen Huawei Investment and Holding
`
`Co., Ltd. (“Shenzhen”) also are real parties-in-interest. Prelim. Resp. 33. In
`
`particular, Patent Owner argues that because Huawei Tech. and Futurewei
`
`Tech. are co-defendants with Huawei USA in a related district court case,
`
`they all have a common interest in the instant challenges brought by
`
`Petitioner. Id. at 32. Patent Owner additionally argues that because Huawei
`
`USA, Huawei Tech., and Futurewei Tech. are each subsidiaries of Shenzhen,
`
`Shenzhen also should be included as a real party-in-interest. Id. at 33.
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`7
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`There is little to no reasoning or evidence of record to suggest that
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`Shenzhen should be named a real party-in-interest. We have considered
`
`Exhibit 2006, which is the defendants’ answer to the complaint filed in the
`
`related case. Ex. 2006. Patent Owner relies on Exhibit 2006 to show that
`
`Shenzhen, who is not involved in the related case, is the parent company to
`
`all of the other companies mentioned therein. But Exhibit 2006 describes
`
`Huawei USA, Huawei Tech., and Futurewei Tech. as “indirect” subsidiaries.
`
`We do not know, based on the record before us, what relationship constitutes
`
`an “indirect” one, and Patent Owner does not explain the relationship status
`
`in that regard. In any event, even if Huawei USA, Huawei Tech., and
`
`Futurewei Tech. are “direct” subsidiaries of Shenzhen, that alone does not
`
`make Shenzhen a real party-in-interest of this proceeding. Patent Owner has
`
`not shown that Shenzhen controlled, or could have controlled, the
`
`proceeding. Patent Owner’s arguments with respect to Shenzhen being a
`
`real party-in-interest are tenuous.
`
`The same Exhibit 2006 also is relied on by Patent Owner to show that
`
`Huawei Tech. and Futurewei Tech., by status of being co-defendants with
`
`Huawei USA, should be named as real parties-in-interest in this proceeding.
`
`Being a co-defendant in a related case does not, without more, establish
`
`control or the ability to control a proceeding. For all of these reasons, we
`
`determine that Patent Owner has not shown that Petitioner has failed to
`
`name all real parties-in-interest.
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`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress
`
`implicitly adopted the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO
`
`regulation.”). Under the broadest reasonable interpretation standard, claim
`
`terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`For purposes of this Decision, we only need to construe the term
`
`“space time block coding.”
`
`Independent claims 16, 35, 47, and 54 recite “space-time block
`
`coding.” Petitioner contends, relying on the Declaration of Tim A.
`
`Williams, Ph.D. (Ex. 1002) for support, that space-time block coding (i.e.,
`
`STBC) is a term of art in telecommunications, and then describes a space-
`
`time block coding system. Pet. 12 (citing Ex. 1002 ¶ 91). As Patent Owner
`
`observes, Petitioner does not propose a construction for the term space-time
`
`block coding. Prelim. Resp. 16. Nor does Patent Owner propose a
`
`construction. See id. at 16–19 (rebutting Petitioner’s proposed construction
`
`of space-time block coding). Although not presented in the Petition,
`
`Petitioner’s declarant asserts that “one of skill in the art would understand
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`9
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`the term ‘space-time block coding’ to mean, in the context of the . . . ’231
`
`patent[], using block codes to encode a data stream, copies of which are
`
`transmitted over multiple antennas.” Ex. 1002 ¶ 91.
`
`The ’231 patent does not set forth a special definition for “space-time
`
`block coding.” The ’231 patent describes “space-time block coding” or
`
`STBC in the context of how it is used, which is consistent with
`
`Dr. Williams’s conclusory testimony. For example, concerning the
`
`transmission over multiple antennas, the ’231 patent is directed to using
`
`multiple antennas for transmission to achieve a higher data rate, rather than
`
`using a single antenna for wirelessly transmitting data as used in the
`
`conventional IEEE 802.11a protocol. Ex. 1001, 1:35–41, 45–47.
`
`The ’231 patent also describes space-time block coding as a way to
`
`encode data for transmission. For example, the ’231 patent describes
`
`“encod[ing] STBC, an STBC encoder, and an STBC decoder.” Id. at 4:9,
`
`7:15–18; see also id. at 11:12–15 (determining “whether the transit mode is
`
`the SDM-OFDM or the STBC-OFDM, and restores the transmit data after a
`
`proper demodulation process according to the determined mode”). The ’231
`
`patent contrasts space-time block coding with another method that can be
`
`used in MIMO systems—spatial division multiplexing (“SDM”). Id. at
`
`3:60–63, 10:37–40 (determining whether the transmit mode in a multiple
`
`antenna transmit system (i.e., MIMO) is the SDM mode or the STBC mode);
`
`see id. at 7:4 (defining SDM as an acronym for spatial division
`
`multiplexing). Thus, space-time block coding, in the context of the ’231
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`10
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`patent, is a method that uses block codes to encode a data stream for
`
`transmission over multiple antennas in a MIMO system.
`
` C. Asserted Grounds of Obviousness Relying on Narasimhan and
`Alamouti
`
`Petitioner contends the challenged claims all would have been
`
`obvious under § 103 over the combination of Narasimhan and Alamouti,
`
`either over the combination alone, or over the combination and various other
`
`references. Pet. 12–43. To support these contentions, Petitioner provides
`
`explanations and claim charts specifying where claim limitations
`
`purportedly are disclosed or suggested in the references and why one skilled
`
`in the art would have combined the references. Id. Petitioner also cites the
`
`Declaration of Dr. Williams for support. Id. Patent Owner challenges
`
`Petitioner’s contentions regarding Narasimhan and Alamouti. Prelim. Resp.
`
`34–45, 50–56.
`
`We determine that the information presented by Petitioner fails to
`
`establish a reasonable likelihood that any of the challenged claims are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Narasimhan and
`
`Alamouti for the reasons that follow.
`
`1. Narasimhan
`
`Narasimhan describes techniques for addressing the problem that the
`
`IEEE 802.11a standard “do[es] not account for transmit diversity,” and
`
`Narasimhan recognized that “it would be advantageous to incorporate
`
`transmit diversity in a wireless transmission system that is backwards
`
`11
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`compatible with the IEEE 802.11a . . . standards.” Ex. 1009, 2:6–12. To do
`
`so, Narasimhan describes a novel frame format that is compliant with the
`
`preamble of the IEEE 802.11a standard.8 Id. at 4:58–64.
`
`Narasimhan’s frame format includes a signal field which immediately
`
`follows the standards-compliant preamble, and generally is similar to the
`
`signal field of the IEEE 802.11a standard. Id. at 4:66–5:2. In contrast to the
`
`IEEE 802.11a standard, Narasimhan’s signal field, however, also uses the
`
`reserved bit of the IEEE 802.11a standard signal field to indicate whether the
`
`data packet follows the diversity data packet format used when two antennas
`
`are used to transmit. Id. at 5:2–18, 9:27–32; see id. at Fig. 2 (showing
`
`Narasimhan’s data packet format). The reserved bit is referred to as a
`
`“transmission diversity” flag (or semaphore) or as “TXDIV flag.” Id. at
`
`4:5–13, 5:2–6, 9:27–32. Using the reserved bit of the signal field, according
`
`to Narasimhan, allows IEEE 802.11a standard-compliant transceivers to be
`
`used. Id. at 5:6–15; see also id. at 9:4–34 (describing a receiver processing
`
`the received signal in accordance with the IEEE 802.11a standard unless the
`
`transmit diversity flag has been set).
`
`2. Alamouti
`
`Alamouti describes a transmit diversity technique using two transmit
`
`antennas and one receive antenna for wireless communications. Ex. 1003,
`
`Abstract. Two signals are transmitted simultaneously from two antennas
`
`
`
`8 To be more precise, the novel packet format is compliant with the Physical
`Layer Control Protocol (“PLCP”) preamble of the IEEE 802.11a standard.
`Ex. 1009, 3:42–48, 4:62–64.
`
`12
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`and “encoding is done in space and time.” Id. at 3. Alamouti also indicates
`
`that “[t]he encoding, however, may also be done in space and frequency.”
`
`Id.
`
`3. The Challenged Claims
`
`Petitioner, relying on testimony from its declarant, contends that
`
`Narasimhan teaches or suggests all of the features recited by independent
`
`claim 16, except for space-time block coding, which is taught by Alamouti.
`
`Pet. 12–16. Petitioner also contends that one of ordinary skill in the art
`
`would have had reason to combine Narasimhan’s techniques for
`
`transmission diversity with the space-time block coding of Alamouti.
`
`Pet. 13–14 (citing Ex. 1002 ¶¶ 139–43). Patent Owner challenges
`
`Petitioner’s contentions. Prelim. Resp. 34–45.
`
`A dispositive issue concerns “determin[ing], based on information in
`
`the signal symbol, whether the frame is transmitted using space time block
`
`coding,” recited in independent claim 16. For this feature, Petitioner relies
`
`on the combination of Narasimhan’s disclosure of a signal field that
`
`indicates “the data packet follows a ‘diversity data packet format’” and
`
`Alamouti’s express disclosure of space-time coding. Pet. 14–16.
`
`First, Petitioner concludes, from Alamouti’s express disclosure of
`
`space-time coding, that “Alamouti . . . describes space-time block coding.”
`
`Pet. 13 (emphasis added), 16. Petitioner cites to the Declaration of
`
`Dr. Williams for this proposition. Pet. 14 (citing Ex. 1002 ¶¶ 139–43).
`
`Dr. Williams asserts, without providing further explanation or support, that
`
`Alamouti “is considered the first description of space-time block coding
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`(STBC), Alamouti’s technique was later coined ‘space-time block coding’
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`and Alamouti is considered the ‘father’ of STBC.” Ex. 1002 ¶ 140. “Expert
`
`testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65. We
`
`weigh Dr. Williams’s testimony accordingly. In re Am. Acad. of Sci. Tech
`
`Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
`
`weigh the declarations and conclude that the lack of factual corroboration
`
`warrants discounting the opinions expressed in the declarations.”).
`
`Petitioner’s distinction between space-time coding and space-time block
`
`coding in an asserted ground further undermines Petitioner’s position
`
`regarding Alamouti’s express disclosure of space-time coding. See Pet. 43
`
`(combining Jeon’s disclosure of “using block coding with space-time
`
`coding” with Liu’s express disclosure of “space-time coding,” in asserting
`
`claim 16 would have been obvious over Liu and Jeon, because Liu does not
`
`disclose expressly “using block coding.”).
`
`Second, even if one ordinarily skilled in the art at the time of the
`
`invention would have understood Alamouti to have conveyed space-time
`
`block coding, we are not persuaded that Petitioner’s proposed combination
`
`of the general notion of space-time block coding with Narasimhan’s signal
`
`field that indicates a particular format of a data packet would have conveyed
`
`to a person of ordinary skill in the art “determin[ing], based on information
`
`in the signal symbol, whether the frame is transmitted using space time
`
`block coding,” as recited in claim 16.
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`Petitioner has not identified in either Narasimhan or Alamouti a signal
`
`symbol that includes information about whether the frame is transmitted
`
`using space-time block coding. Rather, Petitioner relies on Narasimhan’s
`
`disclosure and Alamouti’s general disclosure of space-time block coding.
`
`More specifically, Petitioner relies on Dr. Williams’s testimony to conclude:
`
`[Narasimhan] determines
`Hence, exactly as Claim 16,
`transmission diversity, e.g., use of MIMO transmitters, based
`on information in the “signal symbol.”
`
`Pet. 16 (citing Ex. 1002 ¶ 132). Claim 16, however, does not require that
`
`transmission diversity be determined. Rather, claim 16 requires a
`
`determination unit configured to determine, “based on information in the
`
`signal symbol, whether the frame is transmitted using space time block
`
`coding.” For the reasons previously discussed in Section II.B, space-time
`
`block coding, in the context of the ’231 patent, is a block encoding method
`
`that can be used in a MIMO system. The ’231 patent itself indicates,
`
`however, that STBC is not used necessarily by all MIMO systems. See
`
`Ex. 1001, 3:60–63, 10:37–40 (determining whether SDM or STBC is used in
`
`a MIMO transmission). Thus, determining transmission diversity, or use of
`
`MIMO transmitters, based on information in a signal symbol, is insufficient
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`to disclose “based on information in the signal symbol, whether the frame is
`
`transmitted using space time block coding,” as recited in claim 16. Nor does
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`Petitioner provide sufficient explanation or evidence that Narasimhan’s
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`disclosure would have suggested a signal symbol containing information
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`about whether the frame is transmitted using space time block coding.
`
`15
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`IPR2015-00203
`Patent 8,532,231 B2
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`Even if a person of ordinary skill in the art would have recognized
`
`that the combination of Narasimhan and Alamouti would have conveyed the
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`concept of a signal symbol containing information about whether the frame
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`is transmitted using space time block coding, Petitioner does not provide
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`sufficient explanation or evidence why one ordinarily skilled in the art
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`would have substituted an indicator of an encoding method (i.e., space-time
`
`block coding) for Narasimhan’s indicator of a data packet format. KSR v.
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (“[I]t can be important to
`
`identify a reason that would have prompted a person of ordinary skill in the
`
`relevant field to combine the elements in the way the claimed new invention
`
`does. This is so because inventions in most, if not all, instances rely upon
`
`building blocks long since uncovered, and claimed discoveries almost of
`
`necessity will be combinations of what, in some sense, is already known.”).
`
`Thus, Petitioner has not shown that one of ordinary skill would have
`
`combined Alamouti’s alleged general notion of space-time block coding
`
`with Narasimhan’s signal field that indicates a particular format of a data
`
`packet, to arrive at the claimed invention that includes determining “based
`
`on information in the signal symbol, whether the frame is transmitted using
`
`space time block coding” as recited in claim 16.
`
`Third, the Petition falls short of providing articulated reasoning with
`
`rational underpinning to support a legal conclusion that the subject matter of
`
`claim 16 would have been obvious to one of ordinary skill in the art in view
`
`of what Narasimhan and Alamouti would have conveyed about space-time
`
`block coding to a person of ordinary skill in the art. KSR, 550 U.S. at 418
`
`16
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`
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`IPR2015-00203
`Patent 8,532,231 B2
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`(“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of
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`obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`Petitioner contends that both space frequency encoding and space-time block
`
`coding were known in the art and that one skilled in the art “would
`
`appreciate the ability to select either space frequency encoding or space-time
`
`block coding.” Pet. 13. Based on this reason and citing Dr. Williams’s
`
`testimony, Petitioner concludes “[a]ccordingly, one of skill in the art would
`
`have been motivated to combine the [Narasimhan] reference with the space-
`
`time block coding of Alamouti.” Id. at 13–14 (citing Ex. 1002 ¶¶ 139–43).
`
`Dr. Williams’s testimony cited by Petitioner, however, does not
`
`support Petitioner’s contention that one ordinarily skilled in the art “would
`
`have been motivated to combine” the references. See generally Ex. 1002
`
`¶¶ 139–43. Rather, Dr. Williams testifies that one skilled in the art “would
`
`appreciate the ability to select either space frequency encoding or space-time
`
`block coding” (id. at ¶ 142); “would have recognized that the space-
`
`frequency encoding in [Narasimhan] could be replaced with the space-time
`
`block coding described in Alamouti” (id.); and “would have recognized the
`
`benefit of using space-time block coding in Alamouti with the system
`
`described in the [Narasimhan] reference,” without sufficiently articulating
`
`what the benefit of using space-time block coding would have been (id. at
`
`¶ 143). None of that testimony indicates sufficiently why one ordinarily
`
`skilled in the art would have had reason to combine the references in the
`
`17
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`IPR2015-00203
`Patent 8,532,231 B2
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`manner claimed. Accordingly, Dr. Williams’s testimony does not provide
`
`support for a sufficient reason why one skilled in the art would have
`
`combined the references in the manner claimed, including a signal symbol
`
`including information about whether a frame is transmitted using space-time
`
`block coding, as required by claim 16. KSR, 550 U.S. at 418 (“a patent
`
`composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the
`
`prior art”).
`
`Thus, without sufficient support from Dr. Williams, Petitioner’s
`
`rationale for modifying Narasimhan’s system with Alamouti’s alleged
`
`space-time block coding, essentially, is that space-time block coding was
`
`known in the art. Pet. 13. Implementing known elements to yield
`
`predictable results and improve similar devices in the same way generally is
`
`obvious unless the actual application is beyond the level of ordinary skill in
`
`the art. See KSR, 550 U.S. at 416–17. Petitioner, however, does not allege,
`
`much less support sufficiently, that Petitioner’s proposed combination would
`
`have yielded predictable results or how Alamouti’s alleged space-time block
`
`coding would have improved Narasimhan’s system.
`
`For these reasons, we determine that the information presented by
`
`Petitioner fails to establish a reasonable likelihood that it would prevail in
`
`showing independent claim 23 or its dependent claim 20 are unpatentable
`
`over Narasimhan and Alamouti.
`
`Similarly, independent claim 35 also includes determining based on
`
`information in the signal symbol, whether a frame is transmitted using space
`
`18
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`
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`IPR2015-00203
`Patent 8,532,231 B2
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`time block coding. And each of independent claims 35, 47, and 54 recite a
`
`signal symbol including information about space time block coding.
`
`Ex. 1001, 18:9–16 (claim 35), 19:18–21 (claim 47), 20:18–21 (claim 54).
`
`Petitioner relies on Narasimhan and Alamouti and makes arguments for the
`
`information about space-time block coding in claims 35, 47, and 54 similar
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`to those it advanced with regard to claim 16. Pet. 18 (claim 47), 22–23
`
`(claim 35), 30 (claim 54).
`
`For the reasons articulated with regard to claim 16, we determine that
`
`the information presented by Petitioner fails to establish a reasonable
`
`likelihood that it would prevail in showing independent claims 35, 47, and
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`54, or dependent claims 40, 48–51, and 55–57, are unpatentable over
`
`Narasimhan, Alamouti, and in combination with other references.
`
`D. Asserted Grounds of Obviousness Relying on Liu and Jeon
`
`Petitioner contends the challenged claims all would have been
`
`obvious under § 103 over the combination of Liu and Jeon, either over the
`
`combination alone or over the combination and various other references.
`
`Pet. 43–59. To support these contentions, Petitioner provides explanations
`
`and claim charts specifying where claim limitations purportedly are
`
`disclosed or suggested in the references, and why one skilled in the art
`
`would have combined the references. Id. Petitioner also cites the
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`Declaration of Dr. Williams (Ex. 1002) for support. Id. Patent Owner
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`challenges Petitioner’s contentions regarding Liu and Jeon. Prelim. Resp.
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`45–56.
`
`19
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`IPR2015-00203
`Patent 8,532,231 B2
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`We determine that the information presented by Petitioner fails to
`
`establish a reasonable likelihood that any of the challenged claims are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Liu and Jeon for the
`
`reasons that follow.
`
`1. Liu
`
`Liu describes techniques for improving the data rate of a conventional
`
`wireless communication system based on the IEEE 802.11a standard.
`
`Ex. 1012, 1309 (Abstract). To accomplish that goal, Liu describes
`
`modifying the preamble of the IEEE 802.11a packet structure to support
`
`MIMO transmitters and receivers, while maintaining backward compatibility
`
`with the unmodified IEEE 802.11a packet structure. Id. Among other
`
`techniques, Liu describes using the reserved bit of the signal field in a
`
`conventional IEEE 802.11a frame “to distinguish the MIMO from SISO
`
`transmissions.” Id. at 131 (§ 2.1). Liu also describes using a particular
`
`MIMO wireless communication scheme that uses the IEEE 802.11a standard
`
`and a space-time coding scheme. Id. at 130 (§§ 1, 2.1) (describing Bell-labs’
`
`LAyered Space-Time (i.e., “BLAST”) system).
`
`2. Jeon
`
`Jeon is titled “Optimal Combining of [Space-Time Block Coding] and
`
`Spatial Multiplexing for [Multiple Antenna Systems using Orthogonal
`
`
`
`9 In citing to Liu, we use the original page numbering of the article.
`
`20
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`
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`IPR2015-00203
`Patent 8,532,231 B2
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`Frequency-Division Multiplexing10].” Ex. 1006, 1. Jeon indicates space-
`
`time block coding involves a “[s]impler implementation than” another type
`
`of coding—trellis coding. Id. at 6.
`
`3. Whether Jeon is Prior Art
`
`As an initial matter, an inter partes review may only include “a
`
`ground that could be raised under section 102 or 103 and only on the basis of
`
`prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
`
`On its face, Jeon does not appear to be a patent or a printed publication.
`
`Jeon is a collection of fourteen pages that appear to be formatted as a slide
`
`presentation and do not appear to be pages of a patent or printed publication.
`
`See Ex. 1006. The pages of Jeon each include a header that presumably
`
`identifies it as a document related to the IEEE 802.11 standard and a date
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`“July 2003.” See, e.g., Ex. 1006, 1 (indicating “doc.: IEEE 802.11-
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`03/0513r0”). The pages of Jeon also include a footer identifying the
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`document as a submission. See, e.g., id. (stat
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