`IPR2015-00203
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`HUAWEI DEVICE USA, INC.
`Petitioner
`v.
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`SPH AMERICA, LLC
`Patent Owner
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`Patent No. 8,532,231
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`Inter Partes Review No. IPR2015-00203
`____________________________________________________________
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`PETITIONERS’ REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
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`4844-5819-1397.1
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction ....................................................................................................................... 4
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`APPLICABLE LEGAL STANDARDS .......................................................................... 5
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`A.
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`B.
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`Standards Applicable to a Request for Rehearing............................................. 5
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`Standards Applicable to Instituting an Inter Pares Review .............................. 6
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`III.
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`BASIS FOR RELIEF REQUESTED .............................................................................. 6
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`A.
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`The Decision Misapprehended or Overlooked Part of the Disclosure
`of Alamouti ............................................................................................................ 6
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`IV. CONCLUSION ............................................................................................................... 15
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`CERTIFICATE OF SERVICE ......................................................................................... 16
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`4844-5819-1397.1
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`TABLE OF AUTHORITIES
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`Case IPR2015-00203
`U.S. Patent No. 8,532,231
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`Cases
`Arnold P’ship v. Dudas, 262 F.3d 1138, 1340 (Fed. Cir. 2005) ............................... 5
`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005) .............. 5
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`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 6
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`Regulations
`37 C.F.R. § 42.108 .................................................................................................4, 6
`37 C.F.R. § 42.71(c) ...............................................................................................4, 5
`37 C.F.R. § 42.71(d) .................................................................................................. 5
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`4844-5819-1397.1
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`3
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`I.
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`Introduction
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`Case IPR2015-00203
`U.S. Patent No. 8,532,231
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`On May 28, 2015, the Board issued a Decision under 37 C.F.R. § 42.108
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`(Decision) denying institution of Inter Partes Review of U.S. Patent 8,532,231 (the
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`‘231 patent) on the seven grounds of invalidity raised by the Petitioner. This
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`Request for Reconsideration seeks reconsideration of Grounds 1-4 which all rely
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`on a combination of U.S. Patent No. 7,577,085 to Narasimhan (N’085 and Ex.
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`1009) with the paper S. M. Alamouti, “A Simple Transmit Diversity Technique For
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`Wireless Communications.” (Alamouti and Ex. 1003). Grounds 1-4 as stated on
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`page 4 of the Decision are (footnotes omitted):
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`Challenged Claims
`16 and 47
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`35, 48-50, 54, 55, and
`56
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`Basis
`§ 103(a)
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`§ 103(a)
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`20, 40-, 51, and 57
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`§ 103(a)
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`20, 40, 51, and 57
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`§ 103(a)
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`References
`Narasimhan and
`Alamouti
`Narasimhan, Alamouti,
`and IEEE 802.11a
`Standard
`Narasimhan, Alamouti,
`IEEE 802.11a Standard
`and Aoki
`Narasimhan, Alamouti,
`IEEE 802.11a Standard
`and Gummadi
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`The Petitioner urges that the Decision misapprehended or overlooked parts
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`of the disclosure in Alamouti that describe a space-time block coding and where
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`4844-5819-1397.1
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`4
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`Alamouti provides an express teaching that space-time block coding can be used in
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`Case IPR2015-00203
`U.S. Patent No. 8,532,231
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`lieu of space-frequency coding. This Request is authorized under 37 C.F.R. §
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`42.71(c). This Request is being timely filed within 30 days of the entry of the
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`Decision.
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`II.
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`APPLICABLE LEGAL STANDARDS
`A. Standards Applicable to a Request for Rehearing
`37 C.F.R. § 42.71(d) provides in part with emphasis added:
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` A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board. The burden of showing a
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`decision should be modified lies with the party challenging the
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`decision. The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an
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`opposition, or a reply.
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`37 C.F.R. § 42.71(c) provides in part, “When rehearing a decision on
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`petition, a panel will review the decision for an abuse of discretion.” In cases
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`involving the United States Patent and Trademark Office, the Federal Circuit has
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`stated “[a]n abuse of discretion occurs where the decision is based on an erroneous
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`interpretation of the law, on factual findings that are not supported by the
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`substantial evidence, or represents an unreasonable judgment in weighing relevant
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`4844-5819-1397.1
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`5
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`factors.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
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`Case IPR2015-00203
`U.S. Patent No. 8,532,231
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`2005); Arnold P’ship v. Dudas, 262 F.3d 1138, 1340 (Fed. Cir. 2005).
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`B. Standards Applicable to Instituting an Inter Pares Review
`Under 35 U.S.C. § 314(a), as implemented by 37 C.F.R. § 42.108, an inter
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`partes review will only be instituted for a ground of unpatentability where the
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`Board decides that the evidence put forward in the petition “shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” In deciding whether or not to institute an
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`inter partes review:
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`the Board will narrow the issues for final decision by authorizing the
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`trial to proceed only on the challenged claims for which the threshold
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`requirements for the proceeding have been met. Further, the Board
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`will identify which of the grounds the trial will proceed upon on a
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`claim-by-claim basis. Any claim or issue not included in the
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`authorization for review is not part of the trial.
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48757 (August 14, 2012).
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`III. BASIS FOR RELIEF REQUESTED
`A. The Decision Misapprehended or Overlooked Part of the Disclosure
`of Alamouti
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`Petitioner requests reconsideration of the Decision on Grounds 1-4 because
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`the Decision misapprehends or overlooks: (i) Alamouti’s teachings of space-time
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`block coding, as presented in the Petition (see, e.g., Pet. at 7 and 13); and (ii)
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`Alamouti’s express teaching that space-time block coding can be used in place of
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`frequency-space coding, as presented in the Petition (see, e.g., Pet. at 13-14 and
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`16). The Decision indicates that a “dispositive issue concerns ‘determin[ing],
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`based on information in the signal symbol, whether the frame is transmitted using
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`space time block coding….’” (Dec. at 13) Accordingly, the teachings of Alamouti
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`regarding space-time block coding are relevant to the determination of whether
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`there is a reasonable likelihood that Petitioner would prevail. Thus, by the
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`Decision misapprehending or overlooking the pertinent portions of Alamouti, the
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`Decision was based upon a misapprehension of facts, and therefore, the Decision
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`represents an abuse of discretion.
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`Grounds 1-4 are based upon Narasimhan describing all the features of the
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`independent claims with the exception of space-time block coding. (Pet. at 12-
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`17). Specifically, Narasimhan teaches redefining the reserved bit in the 802.11a
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`signal symbol as a semaphore or flag to indicate that space-frequency block coding
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`is being used to transmit data. (Pet. at 15-16). Alamouti teaches that space-time
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`block coding and space-frequency block coding could have been used
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`interchangeably to transmit data. (Pet. at 13 and 16). As pointed out in the
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`Petition and supported by Dr. Williams’ testimony, one of skill in the art would
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`understand from Alamouti that transmitting data could have been done using either
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`space-frequency or space-time block coding. (Pet. at 13-14; Ex. 1002, ¶¶108-110).
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`Thus, Alamouti provides the express basis for combining the Alamouti space-time
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`block coding with the relied upon features from Narasimhan. (Pet. at 13-14 and
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`16).
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`In denying institution of the trial, the Board found that Alamouti taught
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`space-time coding, but not space-time block coding. (Dec. at 13-14). The
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`Decision notes the Petitioner in later grounds made a distinction between space-
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`time coding and space-time block coding when combining Jeon’s disclosure of
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`“using block coding with space-time coding” with Liu’s express disclosure of
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`“space-time coding.” (See, Dec. at 14). The Decision appears to have improperly
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`given no weight to (i) admissions by the inventors of the ‘231 patent that space-
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`time block code is known as an “Alamouti code” or a “well-known Alamouti”
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`code or (ii) Dr. Williams’ testimony that Alamouti teaches space-time block
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`coding. (See, Pet. at 13-14).
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`The Decision references Petitioner’s cite to Jeon in deciding that Alamouti
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`did not teach space-time block coding. This cite, however, expressly shows that
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`Alamouti teaches space-time block coding. Thus, the Board pointed to the exact
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`statements made by the inventors of the ‘231 patent that show that Alamouti
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`teaches space-time block coding. Specifically, the Decision cites to page 43 of the
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`4844-5819-1397.1
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`8
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`Petition. The relevant portion of page 43 of the Petition cites to Jeon, a
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`presentation by inventors of the ‘231 patent, pages 4 and 6 as showing that
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`Alamouti teaches space-time block coding. (Ex. 1006). Page 6 of Jeon, in
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`reference to space-time block coding, refers to the code as an “Alamouti code,”
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`showing that Alamouti discloses space-time block coding.
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`Further, Patent Owner is careful not to refute or counter Dr. Williams’
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`testimony regarding Alamouti teaching space-time block coding directly. Indeed,
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`the Patent Owner cannot refute this testimony as the inventors of the ‘231 patent
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`refer to Alamouti as teaching space-time block coding. Five of the named
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`inventors co-authored the ETRI proposal specification for IEEE 802.11 TGn,
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`which is Exhibit 1023. This proposal is directly related to the ‘231 patent as
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`admitted by the inventors in a declaration in the grandparent application, where the
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`inventors stated that the ETRI proposal specification includes “technical content …
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`that forms the basis for the speciation, drawings and claims in the [grandparent]
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`application.” (E. 1002 at ¶81 and Pet. at 9-10). The ETRI proposal specification
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`makes clear that the invention uses the “well-known Alamouti space-time block
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`code.” (Ex. 1023 at 4). As such, the Patent Owner’s arguments that Alamouti
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`does not show space-time block coding are troubling.
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`Thus, the Decision misapprehended or overlooked the relevant portions of the
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`Petition (including admissions by the inventors) and Dr. Williams’ Declaration
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`showing that Alamouti teaches space-time block coding.
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`The Decision also found that Narasimhan’s semaphore or TX flag is an
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`“indicator of a data packet format” rather than an “indicator of an encoding method
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`(i.e., space-time block coding).” (Dec. at 16). This finding is factually incorrect.
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`In Narasimhan, the semaphore or TX flag is set to 1 or 0 to indicate an encoding
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`method (i.e., space-frequency block coding). As explained in the claim chart
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`regarding the claimed “signal symbol,”: “If, however, the TXDIV flag 705 is
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`perceived as set by the receiver logic unit 422 … begins second transmission unit
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`retraining (steps 710-728 of FIG. 7) and recovery of the Service field 120 using
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`space-frequency encoding.” (Pet. at 15-16). Thus, the semaphore or TXDIV flag
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`in Narasimhan indicates a type of encoding, space-frequency block encoding, as
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`originally asserted in the Petition. (See Pet. at 15-16). In Narasimhan, the
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`semaphore or TXDIV flag is encoded in the redefined reserved bit of the 802.11a
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`signal symbol. The reserved bit has two potential settings: 1 or 0. Accordingly, a
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`receiver can demodulate a data packet based on whether the reserved bit is set to 1
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`to indicate that the incoming data packet is not encoded with space-frequency
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`block coding or 0 to indicate that the incoming data packet is encoded with space-
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`frequency block coding, or vice versa. In a strikingly similar manner, the ‘231
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`patent teaches that the reserved bit in the 802.11a signal symbol is redefined as the
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`antenna bit and set to 1 to indicate that the incoming data packet is not encoded
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`with space-time block coding or 0 to indicate that the incoming data packet is
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`12
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`encoded with space-time block coding. (Pet. at 5) Both “indicators” in
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`Narasimhan and the ‘231 patent are merely the redefined reserve bit set to 1 or 0 to
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`indicate an encoding method such that the receiver can properly demodulate the
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`incoming data packet. (See Pet. at 5 and 15-16). Thus, the proposed combination
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`of Narasimhan and Alamouti provides an indicator of space-time block encoding,
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`rather than just an indication of a “data packet format.” (Pet at 13 and 15-16).
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`The Decision also found that the Petition’s support for modifying
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`Narasimhan’s system with Alamouti’s space-time block coding was essentially
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`“that space-time block coding was known in the art.” (Dec. at 18). In addition, the
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`Decision stated that Dr. Williams did “not provide support for a sufficient reason
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`why one skilled in the art would have combined [Narasimhan and Alamouti]….”
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`(Dec. at 18). The Decision, however, ignored the fact that Alamouti is
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`incorporated by reference into the disclosure of Narasimhan as explained in the
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`Petition and ignored Dr. Williams’ testimony regarding Alamouti’s own statement
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`that data can be transmitted with either space-frequency or space-time block
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`coding. (Pet. at 13-15 and Ex. 1002, ¶¶ 139-143). Specifically, Alamouti teaches
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`that data encoding can be “done in space and time (space-time coding)” and “may
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`also be done in space and frequency.” (Ex. 1003, p. 1453; See Pet. at 12 and 14;
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`Ex. 1002, ¶142). Relying on this statement from Alamouti, Dr. Williams found
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`that space frequency encoding is interchangeable with space-time block coding.
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`(See Pet. at 13-15; Ex. 1002, ¶142). Thus, the Petition and Dr. Williams’
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`testimony not only pointed out that space-time block coding was known, but that
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`based upon Alamouti’s express teachings, one of skill in the art would have found
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`using space-time block encoding in lieu of space-frequency coding obvious. The
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`Petitioner respectfully submits that, as explained in the petition, Narasimhan’s
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`incorporation by reference of Alamouti and Alamouti’s express teaching that
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`space-frequency block coding and space-time block coding were interchangeable is
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`ideal support for a sufficient reason why one skilled in the art would have
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`combined Narasimhan and Alamouti. (Pet. at 13-16 and Ex. 1002, ¶¶ 139-143).
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`The Decision misapprehended or overlooked this evidence.
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`Thus, in view of the foregoing, Petitioners urge that the Decision
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`misapprehended or overlooked the fact that Alamouti teaches space-time block
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`coding and that one of skill in the art would have found replacing Narasimhan’s
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`encoding with the space-time block coding, as explained in Alamouti, to be
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`obvious; and that the Petition and Dr. Williams’ declaration both adequately
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`addressed these two issues. In view of the statement on page 13 of the Decision
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`that a dispositive issue concerns the claimed “based on information in the signal
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`symbol, whether the frame is transmitted using space-time block coding,” the
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`Decision represents an abuse of discretion.
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`IV. CONCLUSION
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`Case IPR2015-00203
`U.S. Patent No. 8,532,231
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`In view of the foregoing, Petitioners respectfully request that the Board
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`authorize Inter Partes Review on Grounds 1 – 4.
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`Dated: _June 24, 2015__
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`Respectfully submitted,
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`By: _/Paul S. Hunter/_____
`Paul S. Hunter
`Registration No. 44,787
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the PETITIONER’S
`REQUEST FOR RECONSIDERATION was served on June 24, 2015, by serving
`the correspondence email address of record at whelge@dbjg.com,
`djackson@dbjg.com, and mcase@dbjg.com.
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`By: _/Paul S. Hunter/_____
`Paul S. Hunter
`Counsel for Petitioner
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`4844-5819-1397.1