Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Filed: 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 IPR2015-00221
`Patent 8,565,346 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Filed: 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 IPR2015-00221
`Patent 8,565,346 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2015-00221
`Patent 8,565,346 B2
`
`
`I. INTRODUCTION
`
`Huawei Device USA, Inc. and ZTE (USA), Inc. (collectively,
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 1, 23–25, 27–32, 34, 37, 38, and 40–42 (the “challenged
`
`claims”) of U.S. Patent No. 8,565,346 B2 (Ex. 1016, “the ’346 patent”).
`
`SPH America, LLC and Electronics and Telecommunications Research
`
`Institute (collectively, “Patent Owner”) filed a Preliminary Response.
`
`Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`
`which provides that an inter partes review may not be instituted “unless . . .
`
`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 that follow, we deny institution of an inter partes
`
`review.
`
`A. Related Matters
`
`Petitioner represents that the ’346 patent was asserted in various
`
`proceedings in the United States District Court for the Southern District of
`
`California. Pet. 1; see Paper 7, 2 (Patent Owner’s Notice of Related
`
`Matters). Petitioner has requested inter partes review of related patent1
`
`U.S. Patent No. 8,532,231 B2 (IPR2015-00203).
`
`B. The ’346 Patent
`
`The ’346 patent relates to techniques for increasing the rate of
`
`transmitting data in a wireless network, while maintaining compatibility
`
`
`1 U.S. Patent No. 8,532,231 B2 and the challenged patent both claim priority
`to the same family of patent applications, including Application
`No. 12/805,117, which issued as U.S. Patent No. 8,130,869.
`
`2
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`
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`IPR2015-00221
`Patent 8,565,346 B2
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`with conventional wireless transmission protocols—specifically, while
`
`maintaining compatibility with the conventional IEEE 802.11a standard.
`
`Ex. 1016, 1:24–29, 42–45, 3:19–22. Rather than using a single antenna for
`
`wirelessly transmitting data as used in the conventional IEEE 802.11a
`
`standard, the ’346 patent describes using multiple antennas for transmission
`
`to achieve a higher data rate. Id. at 1:35–41, 45–47. As the ’346 patent
`
`indicates, previous systems using multiple antennas to provide a high speed
`
`data rate had not been compatible with conventional transmitting and
`
`receiving systems using the IEEE 802.11a standard. Id. at 3:8–10.
`
`To maintain compatibility with the IEEE 802.11a standard in a
`
`multiple antenna system, the ’346 patent describes using the signal symbol
`
`portion of a conventional IEEE 802.11a frame in two particular ways. Id. at
`
`3:54–63 (“Technical Solution” in the “Summary of the Invention” section).
`
`First, the signal symbol portion includes a “transmit mode identifier” that
`
`indicates whether the transmit mode of the frame is a conventional “single
`
`antenna transmit mode” or a multiple antenna mode—more specifically, “a
`
`multiple-input/multiple-output (MIMO) mode.” Id. at 3:54–57. Second, the
`
`reserved bit of the signal symbol portion of a conventional IEEE 802.11a
`
`frame is used to indicate which of two MIMO methods—a spatial division
`
`multiplexing (SDM) method or a space-time block code (STBC) encoding
`
`method—is used for the transmission of the frame. Id. at 3:58–63; see id. at
`
`10:43–46 (describing SDM and STBC as methods in a MIMO system).
`
`C. Challenged Claims
`
`Of the challenged claims, claims 1, 23, 30, and 37 are independent.
`
`Claim 23, reproduced below, is illustrative of the claimed subject matter:
`
`3
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
`
`
`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.
`
`Ex. 1016, 16:60–17:7.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over the following references (Pet. 3–4):
`
`References
`Narasimhan2 and Alamouti3
`
`Claims Challenged
`
`23 and 30
`
`Narasimhan, Alamouti, and IEEE
`802.11a Standard4
`
`24, 25, 31,32, 37, and
`38
`
`Narasimhan, Alamouti, IEEE 802.11a
`Standard, and Aoki5
`
`27–29, 34, and 40–42
`
`
`2 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.”
`3 S. M. Alamouti, “A Simple Transmit Diversity Technique for Wireless
`Communications,” 16 IEEE J. ON SELECT AREAS IN COMMUNICATIONS 1451
`(1998) (Ex. 1003) (“Alamouti”).
`4 IEEE Standard 802.11a (1999) (Ex. 1010).
`
`4
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
`
`
`References
`
`Narasimhan, Alamouti, IEEE 802.11a
`Standard, and Gummadi 6
`Liu7 and Jeon8
`
`Liu, Jeon, and IEEE 802.11a Standard
`
`Liu, Jeon, IEEE 802.11a Standard, and
`Aoki
`
`Claims Challenged
`1, 27, 34, and 40
`
`23 and 30
`
`24, 25, 31,32, 37, and
`38
`
`27–29, 34, and 40–42
`
`II. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a). A
`
`ground of unpatentability can be instituted only if the petition supporting the
`
`ground demonstrates there is a reasonable likelihood that at least one
`
`challenged claim is unpatentable. 37 C.F.R. § 42.108(c).
`
`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
`
`5 Aoki, et al., “New preamble structure for AGC in a MIMO-OFDMsystem,”
`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.
`6 U.S. Patent Application Publication No. 2005/0054313 A1,
`published Mar. 10, 2005, filed Mar. 29, 2004 (Ex. 1011) (“Gummadi”).
`7 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”).
`8 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.
`
`5
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
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`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
`
`estoppel and preclusion.” Id. Taylor lists six categories that create an
`
`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,
`
`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. 28–30. In
`
`particular, Patent Owner argues that assertions made jointly by ZTE
`
`6
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`IPR2015-00221
`Patent 8,565,346 B2
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`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
`
`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. 28–29. 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. 30–31.
`
`In particular, Patent Owner argues that because Huawei Tech. and Futurewei
`
`Tech. are co-defendants with Huawei USA in a related district court case
`
`(“the related case”), they all have a common interest in the instant challenges
`
`7
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`IPR2015-00221
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`brought by Petitioner. Id. at 30. 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 30–31.
`
`There is little to no reasoning or evidence of record to suggest that
`
`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 in the related case, 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.
`
`8
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`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable constructions in light of
`
`the specification of the patent in which they appear. See 37 C.F.R.
`
`§ 42.100(b); see Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the
`
`broadest reasonable construction standard, claim terms are presumed to be
`
`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). An inventor
`
`may provide a meaning for a term that is different from its ordinary meaning
`
`by defining the term in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`We construe space-time block coding in view of these principles. We
`
`have considered the other claim terms that Petitioner identified for
`
`construction, and the Patent Owner’s response to Petitioner’s proposed
`
`constructions. See Pet. 9–11; Prelim. Resp. 10–17. We have determined
`
`that no other terms in the challenged claims require express construction for
`
`this decision.
`
`space-time block coding
`
`Independent claims 1, 23, 30, and 37 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. 10 (citing Ex. 1002 ¶ 91). As Patent
`
`Owner observes, Petitioner does not propose a construction for the term
`
`9
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
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`space-time block coding. Prelim. Resp. 14. Nor does Patent Owner propose
`
`a construction. See id. at 14–17 (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 the term ‘space-time block coding’ to mean, in the context of the
`
`. . . ’346 patent[], using block codes to encode a data stream, copies of which
`
`are transmitted over multiple antennas.” Ex. 1002 ¶ 91.
`
`The ’346 patent does not set forth a special definition for “space-time
`
`block coding.” The ’346 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 ’346 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. 1016, 1:35–41, 45–47.
`
`The ’346 patent also describes space-time block coding as a way to
`
`encode data for transmission. For example, the ’346 patent describes
`
`“encod[ing] STBC, an STBC encoder, and an STBC decoder.” Id. at 4:9,
`
`7:15–18; see also id. at 11:18–21 (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 ’346
`
`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, 10:43–46 (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
`
`10
`
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`IPR2015-00221
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`multiplexing). Thus, space-time block coding, in the context of the ’346
`
`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. 11–42. 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 combine 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.
`
`31–42, 47–54.
`
`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
`
`compatible with the IEEE 802.11a . . . standards.” Ex. 1009, 2:6–12. To do
`
`11
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`so, Narasimhan describes a novel frame format that is compliant with the
`
`preamble of the IEEE 802.11a standard.9 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,
`
`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.
`
`
`9 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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`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 23, except for space-time block coding, which is taught by Alamouti.
`
`Pet. 11–14. 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. 12 (citing Ex. 1002 ¶¶ 139–43). Patent Owner challenges Petitioner’s
`
`contentions. Prelim. Resp. 31–41.
`
`A dispositive issue concerns “the signal symbol comprises
`
`information about space time block coding,” recited in independent
`
`claim 23. 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. 13–14.
`
`First, Petitioner concludes, from Alamouti’s express disclosure of
`
`space-time coding, that “Alamouti . . . describes space-time block coding.”
`
`Pet. 12 (emphasis added), 14. Petitioner cites to the Declaration of
`
`Dr. Williams for this proposition. Pet. 12 (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
`
`(STBC), Alamouti’s technique was later coined ‘space-time block coding’
`
`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
`
`13
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`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 23 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 “a signal symbol . . . compris[ing]
`
`information about space time block coding,” as recited in claim 23.
`
`Petitioner has not identified in either Narasimhan or Alamouti a frame
`
`that includes information about 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 23,
`transmission diversity, e.g., use of MIMO transmitters, based
`on information in the “signal symbol.”
`
`Pet. 14 (citing Ex. 1002 ¶ 132). Claim 23, however, does not require that
`
`transmission diversity be determined. Rather, claim 23 requires a frame
`
`14
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`generator configured to generate a frame comprising “a signal symbol . . .
`
`compris[ing] information about space time block coding.” For the reasons
`
`previously discussed in Section II.B, space-time block coding, in the context
`
`of the ’346 patent, is a block encoding method that can be used in a MIMO
`
`system. The ’346 patent itself indicates, however, that STBC is not used
`
`necessarily by all MIMO systems. See Ex. 1016, 3:60–63, 10:43–46
`
`(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 to disclose “a signal
`
`symbol . . . compris[ing] information about space time block coding,” as
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`recited in claim 23. Nor does Petitioner provide sufficient explanation or
`
`evidence that Narasimhan’s disclosure would have suggested a signal
`
`symbol comprising information about space time block coding.
`
`Even if a person of ordinary skill in the art would have recognized
`
`that the combination of Narasimhan and Alamouti would have conveyed the
`
`concept of a signal symbol comprising information about space time block
`
`coding, Petitioner does not provide sufficient explanation or evidence why
`
`one ordinarily skilled in the art 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. 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
`
`15
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`IPR2015-00221
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`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 “a signal symbol [including] information about space time block
`
`coding,” as recited in claim 23.
`
`Third, the Petition falls short of providing articulated reasoning with
`
`rational underpinning to support a legal conclusion that the subject matter of
`
`claim 23 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
`
`(“[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
`
`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. 12. 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. (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
`
`16
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`IPR2015-00221
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`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
`
`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 space-time block coding, as required by claim
`
`23. 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. 12. 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.
`
`17
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`
`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 claims 24, 25, 27, 28, and 29
`
`are unpatentable over Narasimhan and Alamouti.
`
`Similarly, each of the other independent claims—claims 1, 30, and
`
`37—require a signal symbol including information about space time block
`
`coding. Ex. 1016, 14:39–42 (claim 1), 17:42–45 (claim 30), 18:24–27
`
`(claim 37). Petitioner relies on Narasimhan and Alamouti and makes
`
`arguments for the information about space-time block coding in claims 1,
`
`30, and 37 similar to those it advanced with regard to claim 23. Pet. 16
`
`(claim 30), 24 (claim 37), 28–29 (claim 1).
`
`For the reasons articulated with regard to claim 23, we determine that
`
`the information presented by Petitioner fails to establish a reasonable
`
`likelihood that it would prevail in showing independent claims 1, 30, and 37,
`
`or dependent claims 31, 32, 34, 38, and 40–42, 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. 42–59. 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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`18
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`challenges Petitioner’s contentions regarding Liu and Jeon. Prelim. Resp.
`
`42–54.
`
`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, 13010 (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 i
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