Patent No. 8,565,346 – Request for Reconsideration
`IPR2015-00221
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`HUAWEI DEVICE USA, INC.
`Petitioner
`v.
`
`SPH AMERICA, LLC
`Patent Owner
`
`
`
`Patent No. 8,565,346
`
`
`
`Inter Partes Review No. IPR2015-00221
`____________________________________________________________
`
`PETITIONERS’ REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4827-9668-7908.1
`
`
`IPR2015-00221
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`HUAWEI DEVICE USA, INC.
`Petitioner
`v.
`
`SPH AMERICA, LLC
`Patent Owner
`
`
`
`Patent No. 8,565,346
`
`
`
`Inter Partes Review No. IPR2015-00221
`____________________________________________________________
`
`PETITIONERS’ REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4827-9668-7908.1
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction ....................................................................................................................... 4
`
`APPLICABLE LEGAL STANDARDS .......................................................................... 5
`
`A.
`
`B.
`
`Standards Applicable to a Request for Rehearing............................................. 5
`
`Standards Applicable to Instituting an Inter Pares Review .............................. 6
`
`III.
`
`BASIS FOR RELIEF REQUESTED .............................................................................. 6
`
`A.
`
`The Decision Misapprehended or Overlooked Part of the Disclosure
`of Alamouti ............................................................................................................ 6
`
`IV. CONCLUSION ............................................................................................................... 15
`
`CERTIFICATE OF SERVICE ......................................................................................... 16
`
`
`
`4827-9668-7908.1
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`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
`
`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 6
`
`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
`
`4827-9668-7908.1
`
`3
`
`
`
`
`
`I.
`
`Introduction
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`On May 28, 2015, the Board issued a Decision under 37 C.F.R. § 42.108
`
`(Decision) denying institution of Inter Partes Review of U.S. Patent 8,565,346 (the
`
`‘346 patent) on the seven grounds of invalidity raised by the Petitioner. This
`
`Request for Reconsideration seeks reconsideration of Grounds 1-4 which all rely
`
`on a combination of U.S. Patent No. 7,577,085 to Narasimhan (N’085 and Ex.
`
`1009) with the paper S. M. Alamouti, “A Simple Transmit Diversity Technique For
`
`Wireless Communications.” (Alamouti and Ex. 1003). Grounds 1-4 as stated on
`
`pages 4 and 5 of the Decision are (footnotes omitted):
`
`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
`
`
`Claims Challenged
`23 and 30
`24, 25, 31, 32, 37, and 38
`
`27–29, 34, and 40–42
`
`1, 27, 34, and 40
`
`The Petitioner urges that the Decision misapprehended or overlooked parts
`
`of the disclosure in Alamouti that describe a space-time block coding and where
`
`Alamouti provides an express teaching that space-time block coding can be used in
`
`lieu of space-frequency coding. This Request is authorized under 37 C.F.R. §
`
`4827-9668-7908.1
`
`4
`
`
`
`
`42.71(c). This Request is being timely filed within 30 days of the entry of the
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`Decision.
`
`II.
`
`APPLICABLE LEGAL STANDARDS
`A. Standards Applicable to a Request for Rehearing
`37 C.F.R. § 42.71(d) provides in part with emphasis added:
`
` A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board. The burden of showing a
`
`decision should be modified lies with the party challenging the
`
`decision. The request must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place
`
`where each matter was previously addressed in a motion, an
`
`opposition, or a reply.
`
`37 C.F.R. § 42.71(c) provides in part, “When rehearing a decision on
`
`petition, a panel will review the decision for an abuse of discretion.” In cases
`
`involving the United States Patent and Trademark Office, the Federal Circuit has
`
`stated “[a]n abuse of discretion occurs where the decision is based on an erroneous
`
`interpretation of the law, on factual findings that are not supported by the
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`factors.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`
`2005); Arnold P’ship v. Dudas, 262 F.3d 1138, 1340 (Fed. Cir. 2005).
`
`4827-9668-7908.1
`
`5
`
`
`
`
`
`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
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`partes review will only be instituted for a ground of unpatentability where the
`
`Board decides that the evidence put forward in the petition “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” In deciding whether or not to institute an
`
`inter partes review:
`
`the Board will narrow the issues for final decision by authorizing the
`
`trial to proceed only on the challenged claims for which the threshold
`
`requirements for the proceeding have been met. Further, the Board
`
`will identify which of the grounds the trial will proceed upon on a
`
`claim-by-claim basis. Any claim or issue not included in the
`
`authorization for review is not part of the trial.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48757 (August 14, 2012).
`
`III. BASIS FOR RELIEF REQUESTED
`A. The Decision Misapprehended or Overlooked Part of the Disclosure
`of Alamouti
`
`Petitioner requests reconsideration of the Decision on Grounds 1-4 because
`
`the Decision misapprehends or overlooks: (i) Alamouti’s teachings of space-time
`
`block coding, as presented in the Petition (see, e.g., Pet. at 12); and (ii) Alamouti’s
`
`express teaching that space-time block coding can be used in place of frequency-
`6
`
`4827-9668-7908.1
`
`
`
`
`space coding, as presented in the Petition (see, e.g., Pet. at 12). The Decision
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`indicates that a “dispositive issue concerns ‘the signal symbol comprises
`
`information about space-time block coding….’” (Dec. at 13). Accordingly, the
`
`teachings of Alamouti regarding space-time block coding are relevant to the
`
`determination of whether there is a reasonable likelihood that Petitioner would
`
`prevail. Thus, by the Decision misapprehending or overlooking the pertinent
`
`portions of Alamouti, the Decision was based upon a misapprehension of facts, and
`
`therefore, the Decision represents an abuse of discretion.
`
`Grounds 1-4 are based upon Narasimhan describing all the features of the
`
`independent claims with the exception of space-time block coding. (Pet. at 11-
`
`17). Specifically, Narasimhan teaches redefining the reserved bit in the 802.11a
`
`signal symbol as a semaphore or flag to indicate that space-frequency block coding
`
`is being used to transmit data. (Pet. at 13-14). Alamouti teaches that space-time
`
`block coding and space-frequency block coding could have been used
`
`interchangeably to transmit data. (Pet. at 12 and 14). As pointed out in the
`
`Petition and supported by Dr. Williams’ testimony, one of skill in the art would
`
`understand from Alamouti that transmitting data could have been done using either
`
`space-frequency or space-time block coding. (Pet. at 11-12; Ex. 1002, ¶¶108-110).
`
`Thus, Alamouti provides the express basis for combining the Alamouti space-time
`
`block coding with the relied upon features from Narasimhan. (Pet. at 11-12).
`7
`
`4827-9668-7908.1
`
`
`
`
`
`In denying institution of the trial, the Board found that Alamouti taught
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`space-time coding, but not space-time block coding. (Dec. at 13-14). The
`
`Decision notes the Petitioner in later grounds made a distinction between space-
`
`time coding and space-time block coding when combining Jeon’s disclosure of
`
`“using block coding with space-time coding” with Liu’s express disclosure of
`
`“space-time coding.” (See, Dec. at 14). The Decision appears to have improperly
`
`given no weight to (i) admissions by the inventors of the ‘346 patent that space-
`
`time block code is known as an “Alamouti code” or a “well-known Alamouti”
`
`code or (ii) Dr. Williams’ testimony that Alamouti teaches space-time block
`
`coding. (See, Dec. at. 13-14).
`
`The Decision references Petitioner’s cite to Jeon in deciding that Alamouti
`
`did not teach space-time block coding. This cite, however, expressly shows that
`
`Alamouti teaches space-time block coding. Thus, the Board pointed to the exact
`
`statements made by the inventors of the ‘346 patent that show that Alamouti
`
`teaches space-time block coding. Specifically, the Decision cites to page 43 of the
`
`Petition. The relevant portion of page 43 of the Petition cites to Jeon, a
`
`presentation by inventors of the ‘346 patent, pages 4 and 6 as showing that
`
`Alamouti teaches space-time block coding. (Ex. 1006). Page 6 of Jeon, in
`
`reference to space-time block coding, refers to the code as an “Alamouti code,”
`
`showing that Alamouti discloses space-time block coding.
`8
`
`4827-9668-7908.1
`
`
`
`
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`
`
`Further, Patent Owner is careful not to refute or counter Dr. Williams’ testimony
`
`regarding Alamouti teaching space-time block coding directly. Indeed, the Patent
`
`Owner cannot refute this testimony as the inventors of the ‘346 patent refer to
`
`Alamouti as teaching space-time block coding. Five of the named inventors co-
`
`authored the ETRI proposal specification for IEEE 802.11 TGn, which is Exhibit
`
`1023. This proposal is directly related to the ‘346 patent as admitted by the
`
`inventors in a declaration in the grandparent application, where the inventors stated
`
`that the ETRI proposal specification includes “technical content … that forms the
`
`4827-9668-7908.1
`
`9
`
`
`
`
`basis for the speciation, drawings and claims in the [grandparent] application.”
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`(Ex. 1002 at ¶81 and Pet. at 9-10). The ETRI proposal specification makes clear
`
`that the invention uses the “well-known Alamouti space-time block code.” (Ex.
`
`1023 at 4). As such, the Patent Owner’s arguments that Alamouti does not show
`
`space-time block coding are troubling.
`
`4827-9668-7908.1
`
`10
`
`
`
`
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`
`
`Thus, the Decision misapprehended or overlooked the relevant portions of the
`
`Petition (including admissions by the inventors) and Dr. Williams’ Declaration
`
`showing that Alamouti teaches space-time block coding.
`
`4827-9668-7908.1
`
`11
`
`
`
`
`
`The Decision also found that Narasimhan’s semaphore or TX flag is an
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`“indicator of a data packet format” rather than an “indicator of an encoding method
`
`(i.e., space-time block coding).” (Dec. at 15). This finding is factually incorrect.
`
`In Narasimhan, the semaphore or TX flag is set to 1 or 0 to indicate an encoding
`
`method (i.e., space-frequency block coding). As explained in the claim chart
`
`regarding the claimed “signal symbol,”: “If, however, the TXDIV flag 705 is
`
`perceived as set by the receiver logic unit 422 … begins second transmission unit
`
`retraining (steps 710-728 of FIG. 7) and recovery of the Service field 120 using
`
`space-frequency encoding.” (Pet. at 14). Thus, the semaphore or TXDIV flag in
`
`Narasimhan indicates a type of encoding, space-frequency block encoding, as
`
`originally asserted in the Petition. (see Pet. at 14 and 16). In Narasimhan, the
`
`semaphore or TXDIV flag is encoded in the redefined reserved bit of the 802.11a
`
`signal symbol. The reserved bit has two potential settings: 1 or 0. Accordingly, a
`
`receiver can demodulate a data packet based on whether the reserved bit is set to 1
`
`to indicate that the incoming data packet is not encoded with space-frequency
`
`block coding or 0 to indicate that the incoming data packet is encoded with space-
`
`frequency block coding, or vice versa. In a strikingly similar manner, the ‘346
`
`patent teaches that the reserved bit in the 802.11a signal symbol is redefined as the
`
`antenna bit and set to 1 to indicate that the incoming data packet is not encoded
`
`with space-time block coding or 0 to indicate that the incoming data packet is
`
`4827-9668-7908.1
`
`12
`
`
`
`
`encoded with space-time block coding. (Pet. at 5). Both “indicators” in
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`Narasimhan and the ‘346 patent are merely the redefined reserve bit set to 1 or 0 to
`
`indicate an encoding method such that the receiver can properly demodulate the
`
`incoming data packet. (Pet. at 5 and 13-14). Thus, the proposed combination of
`
`Narasimhan and Alamouti provides an indicator of space-time block encoding,
`
`rather than just an indication of a “data packet format.” (Pet. at 11-14).
`
`The Decision also found that the Petition’s support for modifying
`
`Narasimhan’s system with Alamouti’s space-time block coding was essentially
`
`“that space-time block coding was known in the art.” (Dec. at 17). In addition, the
`
`Decision stated that Dr. Williams did “not provide support for a sufficient reason
`
`why one skilled in the art would have combined [Narasimhan and Alamouti]….”
`
`(Dec. at 17). The Decision, however, ignored the fact that Alamouti is
`
`incorporated by reference into the disclosure of Narasimhan as explained in the
`
`Petition and ignored Dr. Williams’ testimony regarding Alamouti’s own statement
`
`that data can be transmitted with either space-frequency or space-time block
`
`coding. (Pet. at 12 and Ex. 1002, ¶¶139-143.) Specifically, Alamouti teaches that
`
`data encoding can be “done in space and time (space-time coding)” and “may also
`
`be done in space and frequency.” (Ex. 1003, p. 1453; See Pet. at 12 and 14; Ex.
`
`1002, ¶142). Relying on this statement from Alamouti, Dr. Williams found that
`
`space frequency encoding is interchangeable with space-time block coding. (See
`13
`
`4827-9668-7908.1
`
`
`
`
`Pet. at 12 and 14; Ex. 1002, ¶142). Thus, the Petition and Dr. Williams’ testimony
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`not only pointed out that space-time block coding was known, but that based upon
`
`Alamouti’s express teachings, one of skill in the art would have found using space-
`
`time block encoding in lieu of space-frequency coding obvious. The Petitioner
`
`respectfully submits that, as explained in the Petition, Narasimhan’s incorporation
`
`by reference of Alamouti and Alamouti’s express teaching that space-frequency
`
`block coding and space-time block coding were interchangeable ideal support for a
`
`sufficient reason why one skilled in the art would have combined Narasimhan and
`
`Alamouti. (Pet 11-14, ex. 1002, ¶¶139-143.) The Decision misapprehended or
`
`overlooked this evidence.
`
`Thus, in view of the foregoing, Petitioners urge that the Decision
`
`misapprehended or overlooked the fact that Alamouti teaches space-time block
`
`coding and that one of skill in the art would have found replacing Narasimhan’s
`
`encoding with the space-time block coding as explained in Alamouti to be obvious;
`
`and that the Petition and Dr. Williams’ declaration both adequately addressed these
`
`two issues. In view of the statement on page 13 of the Decision that a dispositive
`
`issue concerns the claimed “the signal symbol comprises information about space-
`
`time block coding,” the Decision represents an abuse of discretion.
`
`4827-9668-7908.1
`
`14
`
`
`
`
`IV. CONCLUSION
`
`Case IPR2015-00221
`U.S. Patent No. 8,565,346
`
`In view of the foregoing, Petitioners respectfully request that the Board
`
`authorize Inter Partes Review on Grounds 1 – 4.
`
`
`
`
`
`
`
`
`
`Dated: _June 24, 2015__
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: _/Paul S. Hunter/_____
`Paul S. Hunter
`Registration No. 44,787
`Counsel for Petitioner
`
`
`
`4827-9668-7908.1
`
`15
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`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.
`
`
`
`By: _/Paul S. Hunter/_____
`Paul S. Hunter
`Counsel for Petitioner
`
`
`
`
`
`4827-9668-7908.1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
