UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`HUAWEI DEVICE USA, INC. and
`ZTE (USA), INC.
`Petitioners
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTE
`Patent Owner
`
`_______________
`
`Case IPR2015-00221
`Patent 8,565,346
`
`_______________
`
`
`EXCLUSIVE LICENSEE SPH AMERICA, LLC’S
`PRELIMINARY RESPONSE
` 
`
` 
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 3
`a. About U.S. Patent No. 8,565,346 (the “‘346 patent” or “Yu”) ........................ 3
`b. Claim Construction ........................................................................................... 9
`c. Petitioners’ Grounds of Challenge Rely On Art Already Considered by the
`USPTO Examiner ................................................................................................. 18
`III. Response to Statement of Material Facts ....................................................... 21
`IV. Argument ........................................................................................................ 26
`a. The Petition Fails to Name All Real Parties in Interest ................................. 27
`b. Ground 1’s Challenge Fails to Disclose all Features of Claims 23 and 30, and
`Lacks Any Basis to Combine the Reference Teachings ....................................... 31
`i. There is Inadequate Basis to Combine N’085 and Alamouti ...................... 31
`ii. Any Combination Still Fails to Disclose All Features of the Challenged
`Claims ................................................................................................................ 38
`c. Ground 5’s Challenge Also Lacks a Basis to Combine the Reference
`Teachings and Lacks All Features ........................................................................ 42
`d. Grounds 2-4 and 6-7 Do Not Establish Obviousness of the Challenged
`Claims ................................................................................................................... 47
`e. The Grounds Directed to the ‘346 Patent’s Dependent Claims Fail to
`Remedy the Petition’s Underlying Deficiencies .................................................. 53
`f. The Board Should Exercise Its Discretion to Dismiss All Challenges Based
`on Previously-Considered Art .............................................................................. 54
`V. Conclusion ......................................................................................................... 54
`
`
`
`
`
`
`ii 
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`

`

`Cases
`
`TABLE OF AUTHORITIES
`
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000) . 35
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453 (PTAB
`1/6/2015) ............................................................................................................... 27
`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) ........................... 35
`Gonzalez v. Banco Cent. Corp., 27 F.3d 751 (1st Cir. 1994) .................................. 27
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc., IPR2013-00183 (PTAB
`7/31/2013) ............................................................................................................. 33
`In re Bigio, 381 F.3d 1320 (Fed Cir. 2004) ............................................................... 9
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ....................................................... 34, 43
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) .......................................................... 10
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 9
`In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) ................................................... 10
`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) ............................................................. 34, 43
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 27
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
` 506 F.3d 1370 (Fed. Cir. 2007) ............................................................................ 35
`
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 22
`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) ...................................................................................... 18, 42, 54
`
`
`iii 
` 
`
`

`

`Rules
`
`
`37 C.F.R. § 42.6(a)(3) ...................................................................................... passim
`37 C.F.R. § 42.8(b)(1) ............................................................................. 1, 26, 27, 31
`37 C.F.R. § 42.62(a) ................................................................................................. 39
`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
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
` 77 Fed. Reg. 48756 (Aug. 14, 2012) ......................................................... 9, 26, 27
`
`
`
`iv 
` 
`
`

`

`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`2004
`
`2005
`
`
`2006
`
`
`2007
`
`
`
`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)
`
`
`v 
` 
`
`

`

`
`
` 
`
`I.
`
`Introduction
`
`The Petition for inter partes review of U.S. Patent No. 8,565,346 (“the ‘346
`
`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 1, 23-25, 27-32, 34, 37-38, and 40-42 of the ‘346 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
`
`                                                            
`1 This Preliminary Response is being filed by Exclusive Licensee SPH America,
`
`LLC, having exclusive rights to enforce the ‘346 patent, and also exclusive rights
`
`to defend the ‘346 patent’s validity. 
`
` 
`
`1 
`
`

`

`the 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 Petitioners concurrently filed two Petitions for IPR, this case No. IPR2015-00221
`
`and IPR2015-00203 against U.S. Patent No. 8,532,231. 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 
` 
`
`

`

`
`
`II.
`
`Background
`
` 
`
`a. About U.S. Patent No. 8,565,346 (the “‘346 patent” or “Yu”)
`The ‘346 patent was filed as U.S. Patent Application No. 13/355,230 on
`
`January 20, 2012 and claims foreign priority to and the benefit of Korean patent
`
`application no. 10-2004-0111065, filed on December 23, 2004. The ‘346 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 ‘346 patent is “APPARATUS FOR TRANSMITTING
`
`AND RECEIVING DATA TO PROVIDE HIGH-SEED DATA
`
`COMMUNICATION AND METHOD THEREOF,” and the ‘346 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., ‘346 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-
`
`00203. 
`
`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 ‘346 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 data1 symbol:
`
`In contrast, the frame configuration of Fig. 6’s exemplary embodiment is
`
`shown below, for use in an MIMO system:
`
`
`
`4 
` 
`
`

`

`
`
`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. Data1 field also is preceded by a guard interval GI. A “frame generator
`
`modifies the signal symbol in order to provide compatibility with the conventional
`
`system.” Id. at 9:66-67. 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 10:5-9. 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 10:1-4; 10:43-46. Thus, according to this frame
`
`structure, “the signal symbol comprises information about … space time block
`
`5 
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`

`

`coding.” Id. at 14:39-42; see also id. at 17:3-4; 17:44-45. From this information, a
`
`receiving unit may determine the encoding used with a transmit mode of the frame,
`
`i.e. whether the frame is transmitted using space time block coding. Id. at 10:43-
`
`46.
`
`
`
`Petitioner challenges the validity of claims 1, 23-25, 27-32, 34, 37-38, and
`
`40-42 of the ‘346 patent. Of these challenged claims, claims 1, 23, 30, and 37 are
`
`independent.
`
`These independent claims are presented below, with features relevant to
`
`claim construction in bold for the Board’s reference:
`
`An apparatus for generating and transmitting a frame in a
`1.
`wireless communication system, the apparatus comprising:
`a frame generator configured to generate a frame comprising:
`a short preamble comprising a symbol for timing
`synchronization,
`first and second long preambles subsequent to the short
`preamble,
`a data field subsequent to the first and second long
`preambles, wherein the second long preamble provides
`reference for a receiving apparatus to form a channel estimate
`that allows the receiving apparatus to demodulate the data field,
`and
`
`6 
` 
`
`

`

`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; and
`a transmitter configured to transmit the frame to the receiving
`apparatus,
`wherein the first long preamble is preceded by a guard
`interval having a length of 1.6 μsec, the second long preamble
`includes two long preambles T1, T2 wherein each of the two long
`preambles T1, T2 is respectively preceded by a guard interval
`having a length of 0.8 μsec, and the data field is preceded by a guard
`interval having a length of 0.8 μsec.
`
`23. A transmitting apparatus in a wireless communication
`system, the apparatus comprising:
`a frame generator configured to generate a frame comprising:
`a short preamble comprising synchronization
`information,
`a first and a second long preambles subsequent to the
`short preamble,
`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
`a transmitter configured to transmit the frame to a receiver.
`
`7 
` 
`
`

`

`30. A wireless communication method, comprising:
`generating a frame comprising:
`a short preamble comprising synchronization
`information,
`a first and a second long preambles subsequent to the
`short preamble,
`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
`transmitting the frame to a receiver.
`
`37. A transmitting apparatus in a wireless communication
`system, the apparatus comprising:
`a frame generator configured to generate 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,
`
`8 
` 
`
`

`

`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
`a transmitter configured to transmit the frame to a receiver.
`
`
`
`b. Claim Construction
`The standard for construing claim terms in this proceeding is not in dispute.
`
`Since the ‘346 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
`
`9 
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`

`

`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).
`
`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 ‘346 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 ‘346 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
`
`10 
` 
`
`

`

`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
`
`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
`
`11 
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`

`

`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
`
`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 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
`
`12 
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`

`

`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.
`
`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 10; 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 10; 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
`
`13 
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`

`

`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.
`
`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).
`
`Space Time Block Coding: The next term proposed for construction by
`
`Petitioners is “space time block coding.” Pet. at 10. Once again, Petitioners
`
`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
`
`10. Further, Petitioners actually propose no construction for the term, and instead
`
`argue that an “STBC system transmits multiple copies of the same stream over
`
`multiple antennas. The copies are received by one or more antennas and combined
`
`to generate an optimal signal.” Id. The citation for this final sentence is the
`
`Williams Declaration at ¶91, without further explanation in violation of 37 C.F.R.
`
`14 
` 
`
`

`

`§ 42.6(a)(3). But even if Williams’ basis could be incorporated by reference, the
`
`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:
`
`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
`
`“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
`
`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
`
`15 
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`

`

`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
`
`incorporated by reference in violation of the Board’s regulations and should be
`
`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. 10 of the Petition, “[a]ll of the subject
`
`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 III.b below, the Alamouti
`
`reference (Ex. 1003) is relied upon to disclose the STBC features of the challenged
`
`claims. See Pet. at 11-12; 14. Alamouti discloses “encoding is done in space and
`
`time” (see Ex. 1003 at 3), but as Williams correctly notes, “the phrase ‘space-time
`
`block coding’ was not used in Alamouti’s October 1998 paper.” Ex. 1002 at ¶109.
`
`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 block coding’ and Alamouti is considered the ‘father’ of
`
`STBC.” Id. But Williams again offers no underlying evidentiary support for these
`
`allegations, in violation of 37 C.F.R. § 42.65(a). Thus, there are no supported facts
`
`in the Declaration, and therefore no basis for Williams’ own view of Alamouti and
`
`16 
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`

`

`no basis for Williams to conjecture on the view of others about Alamouti’s paper.
`
`As a result, the Petition presents the Board with no evidence or basis by which it
`
`may determine whether Alamouti discloses space time block coding (STBC) as
`
`recited in the claims. Since Petitioners’ Grounds 1-4 all depend upon Alamouti to
`
`disclose STBC, which Petitioners have neither construed nor shown to be disclosed
`
`in Alamouti, these Grounds 1-4 necessarily fail.
`
`Guard Interval: As a final term, Petitioners propose that “guard interval” is
`
`also a “term of art in telecommunications” but again offer no basis to support this
`
`characterization other than a citation to ¶¶93-96 of the Williams Declaration. Pet.
`
`at 11. This citation includes no explanation of these cited paragraphs, and therefore
`
`also constitutes incorporation by reference in violation of the Board’s regulations.
`
`37 C.F.R. § 42.6(a)(3). Moreover, Williams’ proposed construction appears to
`
`come from ¶95, which states (in entirety): “The 802.11a standard uses guard
`
`intervals between data transmissions to ensure that these distinct transmissions do
`
`not interfere with one another.” This statement fails to point to any portion of the
`
`802.11a standard disclosing the guard interval, and fails to explain his basis for
`
`opining on how and why the 802.11a standard uses guard intervals. Williams’ ¶95
`
`is conclusory and should not be considered by the Board. For the purpose of this
`
`proceeding only, the term “guard interval” does not require construction beyond its
`
`ordinary and customary meaning in the context of the claims at issue.
`
`17 
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`

`

`c. Petitioners’ Grounds of Challenge Rely On Art Already
`Considered by the USPTO Examiner
`
`The seven asserted grounds identified in the Petition rely upon seven prior
`
`art references, but the subject matter of four of these references was already
`
`considered by the examiner during prosecution, and the claims of the ‘346 patent
`
`issued over this subject matter. Notably, the Petition fails to inform the Board that
`
`the IEEE802.11a, Liu, and Gummadi references (defined below) were actually
`
`considered by the examiner, and that claims were properly allowed over these
`
`references. See Ex. 1016 at 1-2 (References Cited). Additionally, while the cited
`
`Aoki reference was not before the examiner, the examiner did consider U.S. Patent
`
`Application Publication No. 2005/0163081 filed by Aoki et al. (“Aoki ‘081”). Id.
`
`Aoki ‘081 is the patent application associated with Petitioners’ Aoki reference Ex.
`
`1008 (compare Ex. 2001 at Fig. 1 with Ex. 1008 at 4), and Aoki ‘081 provides
`
`more thorough disclosure than Ex. 1008 for the examiner’s consideration dur