`
`Filed on behalf of Intellectual Ventures II LLC
`By: Sharon A. Hwang
`Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`Fax: (312) 775-8100
`Email: shwang@mcandrews-ip.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`______________
`
`Case IPR2015-01664
`Patent No. 7,787,431
`______________
`
`PATENT OWNER RESPONSE
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`SUMMARY OF ARGUMENT ....................................................................... 1 
`
`SUMMARY OF PRIOR PROCEEDINGS ..................................................... 2 
`
`III.  OVERVIEW OF THE ’431 PATENT ............................................................ 4 
`
`IV.  CONSTRUCTION OF DISPUTED CLAIM TERMS ................................... 8 
`
`A.
`
` 
`
`Claim Terms Identified By Petitioner ................................................... 8 
`
`“Core-Band” .............................................................................. 10 
`1. 
`“Primary Preamble” .................................................................. 10 
`2. 
`“Peak-To-Average Ratio” ......................................................... 12 
`3. 
`Claim Terms Identified By Patent Owner ........................................... 13 
`
`B.
`
` 
`
`1. 
`
`“Transmit[ting] a Broadcast Channel In An OFDMA
`Core-Band” ............................................................................... 14 
`“First Plurality of Subcarrier Groups” ...................................... 16 
`2. 
`“Second Plurality of Subcarrier Groups” .................................. 17 
`3. 
`“Control and Data Channels” .................................................... 20 
`4. 
`“Variable Band” ........................................................................ 21 
`5. 
`THE PETITION DOES NOT SHOW BY A PREPONDERANCE OF
`THE EVIDENCE THAT CLAIM 1 OR 2 IS OBVIOUS ............................. 22 
`
`A.
`
` 
`
`Petitioner’s Prior Art Combination Fails To Disclose
`“Transmit[ting] A Broadcast Channel In An Orthogonal
`Frequency Division Multiple Access (OFDMA) Core-Band” As
`Claimed ............................................................................................... 27 
`
`1. 
`
`2. 
`
`Petitioner’s Analysis Of Claim Elements 8.1 And 18.1 Is
`Deficient .................................................................................... 27 
`The Board’s Institution Decision Incorrectly Assumes
`That Yamaura’s Broadcast Burst Occupies Only A
`Narrow-band ............................................................................. 32 
`
`i
`
`V. 
`
` 
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`Petitioner Fails to Demonstrate That Its Prior Art Combination
`Teaches The Claim Element “Transmitting Control and Data
`Channels Using A Variable Band Including A Second Plurality
`Of Subcarrier Groups”......................................................................... 37 
`
`B.
`
` 
`
`1. 
`2. 
`
`Dulin Does Not Teach The Claimed “Variable Band” ............. 38 
`Petitioner’s Proposed Prior Art Combination Fails To
`Disclose A Second Plurality Of Subcarrier Groups
`Distinct From The First Plurality Of Subcarrier Groups .......... 40 
`The Board’s Analysis Mistakenly Ignores The Claim
`Element “Control and Data Channels” ..................................... 45 
`VI.  A PERSON OF ORDINARY SKILL IN THE ART WOULD NOT
`BE MOTIVATED TO COMBINE DULIN, YAMAURA, HWANG,
`AND ZHUANG TO ACHIEVE THE INVENTIONS SET FORTH IN
`CHALLENGED CLAIMS 8-12 AND 18-22. ............................................... 47 
`
`3. 
`
`A.
`
` 
`
`B.
`
` 
`
`C.
`
` 
`
`Petitioner’s Hindsight Analysis Should Be Rejected .......................... 47 
`
`A Person of Ordinary Skill In the Art Would Not Have
`Combined Dulin With Yamaura, Hwang and Zhuang ........................ 50 
`
`1. 
`2. 
`
`Dulin Teaches Away From Yamaura ....................................... 51 
`A Person of Ordinary Skill In The Art Would Have Not
`Have A Reasonable Expectation of Success In
`Combining Dulin and Yamaura ................................................ 55 
`Petitioner’s Expert Improperly Assumes An Extraordinary
`Level Of Skill In The Art .................................................................... 61 
`
`VII.  CONCLUSION .............................................................................................. 63 
`
`
`
`ii
`
`
`
` 
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Belden, Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 55
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ..................................................................... 51, 53
`Cuozzo Speed Technologies, LLC v. Lee,
`Docket No. 15-446 (argued April 25, 2016) ........................................................... 8
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,
`807 F.2d 955 (Fed. Cir. 1986) .............................................................................. 63
`Cutsforth, Inc. v. Motivepower, Inc.,
`-- F.3d --, No. 2015-1314, 2016 WL 1358628 (Fed. Cir. Apr. 6, 2016) .............. 35
`Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc.,
`672 F.3d 1270 (Fed. Cir. 2012) ............................................................................ 11
`DirecTV, LLC v. Qurio Holdings, Inc.,
`IPR2015-02006, Paper 6 (P.T.A.B. April 4, 2016) .............................................. 49
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
`IPR2014-01195 (P.T.A.B. Feb. 4, 2015) ...................................................... passim
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
`IPR2015-01664, (P.T.A.B. Feb. 11, 2016) ................................................... passim
`Graham v. John Deere Co
`383 U.S. 1 (1966) ........................................................................................... 47, 48
`Grain Processing Corp. v. Am. Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 47, 54
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .............................................................................. 53
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ................................................................................ 53
`
` 
`
`iii
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`

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`Patent Owner Response
`IPR2015-01664
` 
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 54
`In re Wesslau,
`353 F.2d 238, 241 (CCPA 1965) .......................................................................... 49
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................. 48, 49, 53
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ............................................................................ 53
`Oracle Corp. v. Crossroads Systems, Inc.,
`IPR2014-01207, Paper 78 (P.T.A.B. Jan. 29, 2016) ............................................ 54
`Orthopedic Equip. Co. v. United States,
`702 F.2d 1005 (Fed. Cir. 1983) ............................................................................ 54
`PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC,
` -- F.3d --, No. 2015-1364, 2016 WL692369 (Fed. Cir. Feb. 22, 2016) .............. 35
`Pride Mobility Products Corp. v. Permobil, Inc.,
`-- F.3d __, No. 2015-1585, -1586, 2016 WL 1321145 (Fed. Cir. Apr. 5, 2016) . 35
`ProBatter Sports, LLC v. Sports Tutor, Inc.,
`No. 3:05-CV-01975-VLB, 2016 WL 1178050 (D. Conn. Mar. 23, 2016) .......... 63
`Redline Detection, LLC v. Star Envirotech,
`811 F.3d 435 (Fed. Cir. 2015) .............................................................................. 56
`St. Jude Med., Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) .............................................................................. 1
`Standard Oil Co. v. American Cyanamid Co.,
`774 F.2d 448 (Fed. Cir. 1985) .............................................................................. 63
`Suprema, Inc. v. Int’l Trade Comm’n,
`742 F.3d 1350 (Fed. Cir. 2013), reh’g en banc granted, opinion vacated, 36
`ITRD 392 (Fed. Cir. 2014), and on reh’g en banc, 796 F.3d 1338 (Fed. Cir.
`2015), and opinion reinstated in part, 626 F.App’x 273 (Fed. Cir. 2015) ... 49, 56
`Unigene Labs., Inc. v. Apotex Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 55
`
` 
`
`iv
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`

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`Patent Owner Response
`IPR2015-01664
` 
`Wowza Media Systems, LLC v. Adobe Systems Inc.
`IPR2013-00054, Paper 12 (P.T.A.B. April 8, 2013) ............................................ 50
`
`
`Statutes
`35 U.S.C. § 103 ......................................................................................................2, 3
`
`
`
`
`
` 
`
`v
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`Exhibit No.
`
`
`
`
`
` 
`
`EXHIBIT LIST
`
`
`Title
`
`2001
`
`Declaration of Kenneth Zeger, Ph.D.
`
`2002
`
`Curriculum Vitae of Kenneth Zeger, Ph.D.
`
`2003
`
`2004
`
`2005
`
`Transcript of Oral Deposition of Zygmunt Haas, Ph.D., taken April
`19, 2016
`
`Excerpts from Merriam-Webster’s Collegiate Dictionary, 11th ed.
`(2003)
`
`Excerpts from The American Heritage Desk Dictionary, 4th ed. at
`(2003)
`
`vi
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`I.
`
`SUMMARY OF ARGUMENT
`
`In its Second Petition for Inter Partes Review of U.S. Patent No. 7,787,431
`
`(“the ’431 patent,” attached to Petition as Exhibit 1001), Petitioner alleges that
`
`claims 8-12 and 18-22 are obvious in view of U.S. Application Publication No.
`
`2002/0055356 (“Dulin,” attached to Petition as Exhibit 1002), U.S. Patent No.
`
`7,782,750 (“Yamaura,” attached to Petition as Exhibit 1003), U.S. Patent No.
`
`7,426,175 (“Zhuang,” attached to Petition as Exhibit 1004), and I. Hwang et al.,
`
`IEEE C802.16d-04/19, “A New Frame Structure for Scalable OFDMA Systems,”
`
`pp. 0-12, March 11, 2004 (“Hwang,” attached to Petition as Exhibit 1005). Peti-
`
`tioner fails to establish, by a preponderance of the evidence, unpatentability of any
`
`of claims 8–12 or 18–22 of the ’431 patent.
`
`As an initial matter, Petitioner fails to demonstrate that the cited prior art
`
`discloses “transmit[ting] a broadcast channel in an orthogonal frequency division
`
`multiple access (OFDMA) core-band” or “transmit[ting] control and data channels
`
`using a variable band including a second plurality of subcarrier groups,” claim el-
`
`ements required in all of the challenged claims. The absence of these claim ele-
`
`ments from the prior art precludes a finding that claims 8-12 and 18-22 are un-
`
`patentable. See, e.g., St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369,
`
`1380-81 (Fed. Cir. 2013) (rejecting obviousness argument where prior art failed to
`
`disclose claimed feature).
`
` 
`
`1
`
`

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`Patent Owner Response
`IPR2015-01664
` 
`
`Moreover, Petitioner’s obviousness analysis is legally deficient and must
`
`fail. First, Petitioner improperly argues that each separate claim element of the
`
`disputed claims is obvious, summarily concluding that the disputed claims are
`
`therefore obvious. In this manner, Petitioner uses hindsight to selectively mix and
`
`match individual features from four separate prior art references to fit the parame-
`
`ters of the patented combination. Second, a person of ordinary skill in the art
`
`would not have combined Dulin and Yamaura because Dulin expressly teaches
`
`away from Petitioner’s proposed combination. Third, Dulin and Yamaura disclose
`
`such fundamentally different communication systems that a person of ordinary
`
`skill in the art would have no reason to combine them or any reasonable expecta-
`
`tion of success in doing so. Finally, Petitioner’s obviousness analysis was improp-
`
`erly conducted from the viewpoint of a person with an extraordinarily high level of
`
`skill in the art who, by definition, would find any wireless communication system
`
`obvious. The Board should uphold the validity of each and every one of the chal-
`
`lenged claims.
`
`II.
`
` SUMMARY OF PRIOR PROCEEDINGS
`Petitioner first sought inter partes review of the ’431 patent on July 22, 2014
`
`(“the First ‘431 Patent IPR”). In the Original Petition, Petitioner alleged that
`
`claims 8–11 and 18–21 were unpatentable under 35 U.S.C. § 103(a) over Li,
`
`Yamaura, and Zhuang (“Challenge 1”). Petitioner also alleged that claims 1, 2, 12,
`
` 
`
`2
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`and 22 were unpatentable under 35 U.S.C. § 103(a) over Li, Yamaura, Zhuang, and
`
`Beta (“UTRA”)1 (“Challenge 2”). Petitioner further alleged that claims 8–11 and
`
`18–21 were unpatentable under 35 U.S.C. § 103(a) over Li, Yamaura, Mody, No-
`
`bilet, and Popovic (“Challenge 3”). Finally, Petitioner alleged that claims 1, 2, 12,
`
`and 22 were unpatentable under 35 U.S.C. § 103(a) over Li, Yamaura, Mody, No-
`
`bilet, Popovic, and Beta (“Challenge 4”).
`
`In an Institution Decision dated February 4, 2015, the Board declined to in-
`
`stitute trial on claims 8–12 and 18–22, finding that Petitioner “has not shown a rea-
`
`sonable likelihood that it would prevail in demonstrating that claims 8–12 and 18–
`
`22 are unpatentable on at least one challenged ground.” Ericsson Inc. et al. v. Intel-
`
`lectual Ventures II LLC, IPR2014-01195, Paper 11 at 17 (P.T.A.B. Feb. 4, 2015).
`
`The Board, however, instituted inter partes review of claims 1 and 2 of the ’431
`
`patent under Challenge 2 and Challenge 4.
`
`                                                            
`1 In its Original Petition, Petitioner refers to reference TR101146v3.0.0, “Universal
`
`Mobile Telecommunications System (UMTS); UMTS Terrestrial Radio Access
`
`(UTRA); Concept evaluation (UMTS 30.06 version 3.0.0)”, December 1997 as
`
`“Beta.” See Ericsson Inc. et al. v. Intellectual Ventures II LLC, IPR2014-01195,
`
`Paper 2 at 13 (P.T.A.B. July 22, 2014).
`
` 
`
`3
`
`

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`Patent Owner Response
`IPR2015-01664
` 
`
`In a Final Decision dated January 29, 2016, the Board found that “Petitioner
`
`has demonstrated, by a preponderance of the evidence, that claims 1 and 2 of the
`
`’431 patent are unpatentable as obvious over Li, Yamaura, Zhuang, and UTRA,
`
`and obvious over Li, Yamaura, Mody, Nobilet, Popovic, and UTRA.” Ericsson
`
`Inc. et al. v. Intellectual Ventures II LLC, IPR2014-01195, Paper 37 at 27
`
`(P.T.A.B. Jan. 29, 2016). That Decision is currently on appeal in the United States
`
`Court of Appeals for the Federal Circuit, Appeal No. 16-1803.
`
`III. OVERVIEW OF THE ’431 PATENT
`The ’431 patent, entitled “Methods and Apparatus for Multi-Carrier Com-
`
`munications with Variable Channel Bandwidth,” addresses the significant chal-
`
`lenges associated with the nomadic nature of wireless communications. Exhibit
`
`1001. The claimed inventions allow a broadband wireless communication device
`
`(like a smartphone) to effectively roam from one variable bandwidth system to an-
`
`other through the transmission of a “primary preamble” within a “core-band” that
`
`reliably identifies the bandwidth available for use.
`
`The specific radio control and operation signaling needed to operate in a var-
`
`iable bandwidth environment are realized using the core-band. Id. at 4:64–67. The
`
`“core-band, substantially centered at the operating center frequency, is defined as a
`
`frequency segment that is not greater than the smallest operating channel band-
`
`width among all the possible spectral bands that the receiver is designed to operate
`
` 
`
`4
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`

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`Patent Owner Response
`IPR2015-01664
` 
`with.” Id. at 4:67 to 5:4. Upon entering a geographic area serviced by the base sta-
`
`tion, a mobile station uses the core-band “to initiate communication and obtain es-
`
`sential information and subsequently switch” its operating bandwidth to the “full
`
`operating bandwidth of the area for the remainder of the communication.” Id., Ab-
`
`stract. This allows “a broadband wireless communication device to be able to roam
`
`from one part of the world to another.” Id. at 1:30–32.
`
`Figure 6 of the ’431 patent (reproduced below) illustrates an exemplary sys-
`
`tem intended to work at 5, 6, 8, and 10 MHz.
`
`
`In this exemplary system, the variable channel bandwidth is realized by adjusting
`
`the number of usable subcarriers. Id. at 4:41-42. The core-band has a 4 MHz
`
`width, which is smaller than the widths of the possible operating channel band-
`
` 
`
`5
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`

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`Patent Owner Response
`IPR2015-01664
` 
`widths (5, 6, 8, and 10 MHz). The core-band is substantially centered at the operat-
`
`ing center frequency of the operating channels. Id. at 5:1–4.
`
`To maintain basic radio operation, radio control signals—such as preambles,
`
`ranging signals, bandwidth request or bandwidth allocation, and data channels and
`
`their related dedicated control channels—are transmitted within the core-band. Id.
`
`at 5:8–13. The specification explains that “[s]uch a basic radio operation, for ex-
`
`ample, constitutes the primary state of operation.” Id. at 5:13–15. A mobile station
`
`entering into a specific network begins operating with the primary state and then
`
`transitions to a normal full-bandwidth operation to include sidebands for additional
`
`data and radio control channels. Id. at 5:15–18.
`
`The core-band is used to communicate a “primary preamble” sufficient to
`
`enable radio operations. Id. at 5:19-22. An “auxiliary preamble” occupying the
`
`side-band may be combined with the “primary preamble” to form a full-bandwidth
`
`preamble. Id. at 5:37-40. The formation of a full-bandwidth preamble allows a
`
`base station to broadcast the full-bandwidth preamble and a mobile station to use
`
`its corresponding primary preamble to access this base station. Id. at 5:51-54.
`
`FIG. 8 (reproduced below) illustrates the primary preamble, auxiliary preamble,
`
`and full-bandwidth preamble.
`
` 
`
`6
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`
` 
`
`The “primary preamble (EP), is designed to only occupy the [core-band], as
`
`depicted in FIG. 8,” and is alone “sufficient for the basic radio operation.” Id. at
`
`5:19–22. The ’431 patent provides that the primary preamble is readily and reliably
`
`identified when it possesses specific properties such as:
`
`1. Having an autocorrelation that exhibits a large correlation peak with
`
`respect to sidelobes. Id. at 5:28–29.
`
` 
`
`7
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`

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`Patent Owner Response
`IPR2015-01664
` 
`
`2. Having a cross-correlation with other primary preambles with a small
`
`cross-correlation coefficient with respect to the power of the other
`
`primary preambles. Id. at 5:30–32.
`
`3. Having a peak-to-average ratio that is relatively small. Id. at 5:33.
`
`4. Having a large number of primary preambles that exhibit the above
`
`three properties. Id. at 5:34–35.
`
`When the primary preamble possesses these properties, good quality multi-carrier
`
`communications using a variable channel bandwidth is achieved.
`
`IV. CONSTRUCTION OF DISPUTED CLAIM TERMS
` Claim Terms Identified By Petitioner
`A.
`
`Petitioner identified three claim terms for construction: “core-band,” “prima-
`
`ry preamble,” and “peak-to-average ratio,” indicating that its Petition presents
`
`claim analysis “in a manner that is consistent with the broadest reasonable interpre-
`
`tation in light of the specification.”2 Each of these claim terms was at issue in the
`
`First ’431 Patent IPR and the Board provided preliminary constructions for “core-
`                                                            
`2 Patent Owner notes that the “broadest reasonable interpretation” standard is cur-
`
`rently on review by the United States Supreme Court in Cuozzo Speed Technolo-
`
`gies, LLC v. Lee, Docket No. 15-446 (argued April 25, 2016). Patent Owner re-
`
`serves the right to supplement its Response if the Supreme Court rejects the
`
`“broadest reasonable interpretation” standard.
`
` 
`
`8
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`

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`Patent Owner Response
`IPR2015-01664
` 
`band” and “primary preamble” in its Original Institution Decision. Ericsson,
`
`IPR2014-01195, Paper 11 at 8-9. A table showing the constructions proffered by
`
`the parties and the Board’s preliminary constructions is shown below:
`
`Claim
`Term
`core-band
`
`primary
`preamble
`
`Patent Owner’s
`Construction
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands with which the
`receiver is designed
`to operate
`a signal transmitted
`by the base station
`near the beginning of
`each frame and occu-
`pying only the core-
`band
`
`Petitioner’s Con-
`struction
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands that a receiver
`is designed to operate
`with
`a signal transmitted
`near the beginning of
`a transmission, such
`as a frame or time
`slot, and occupying
`only the core-band
`
`peak-to-
`average
`ratio
`
`
`
` 
`
`peak-to-average pow-
`er ratio
`
`peak-to-average pow-
`er ratio
`
`9
`
`Board’s Preliminary
`Construction
`a frequency segment
`that is not greater
`than the smallest op-
`erating channel
`bandwidth among all
`the possible spectral
`bands with which the
`receiver is designed
`to operate
`a direct sequence in
`the time domain with
`its frequency re-
`sponse confined with-
`in the CB or an
`OFDM symbol corre-
`sponding to a particu-
`lar pattern in the fre-
`quency domain with-
`in the CB, at or near
`the beginning of the
`transmission, which
`alone is sufficient for
`basic radio operation
`peak-to-average pow-
`er ratio
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`In its Final Written Decision for IPR2014-01195, the Board found that the differ-
`
`ences in the parties’ constructions “do not materially affect the outcome of the
`
`analysis” and therefore declined to construe explicitly these claim terms. Ericsson,
`
`IPR2014-01195, Paper 37 at 7.
`
`
`
`Similarly, in its Institution Decision for the present IPR2015-01664, the
`
`Board indicated that “[w]e construe only those claim terms in controversy, and we
`
`do so only to the extent necessary to resolve the controversy. For purposes of this
`
`decision, no explicit construction is necessary.” Ericsson Inc. et al. v. Intellectual
`
`Ventures II LLC, IPR2015-01664, Paper 7 at 7 (P.T.A.B. Feb. 11, 2016).
`
`
`
`Patent Owner addresses the claim terms identified by Petitioner as follows:
`
`“Core-Band”
`
`1.
`In the First ’431 Patent IPR, the Board preliminarily construed “core-band”
`
`to mean “a frequency segment that is not greater than the smallest operating chan-
`
`nel bandwidth among all the possible spectral bands with which the receiver is de-
`
`signed to operate.” Ericsson, IPR2014-01195, Paper 11 at 10. Neither party dis-
`
`putes this construction, and Petitioner relies on this construction in its Petition. Pe-
`
`tition at 22-23, 27; see also Exhibit 2001 (Declaration of Kenneth Zeger, Ph.D.) at
`
`¶¶43, 45.
`
`2.
`
`“Primary Preamble”
`
` 
`
`10
`
`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`The parties offer similar constructions of “primary preamble.” In the First
`
`’431 Patent IPR, the Board rejected both parties’ constructions of “primary pream-
`
`ble, instead adopting its own construction in its Institution Decision. Ericsson,
`
`IPR2014-01195, Paper 11 at 8-9. The Board’s preliminary construction of “prima-
`
`ry preamble” is erroneous because it renders superfluous certain language that is
`
`separately recited in claim 1, claim 8, and claim 18.
`
`For example, claim 1 separately recites that the primary preamble is “suffi-
`
`cient for basic radio operation” and that “the primary preamble is a direct sequence
`
`in the time domain with a frequency content confined within the core-band, or is an
`
`orthogonal frequency-divisional multiplexing (OFDM) symbol corresponding to a
`
`particular frequency pattern within the core-band.” Exhibit 1001 at 9:54–60. The
`
`Board’s preliminary construction of “primary preamble” includes both those claus-
`
`es, thus rendering the recited language superfluous. See Digital-Vending Servs.
`
`Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012).
`
`Moreover, adopting the Board’s preliminary construction of “primary pre-
`
`amble” would violate the doctrine of claim differentiation because it does not dis-
`
`tinguish between different words used in different claims. For example, the Board
`
`preliminarily construed “primary preamble” to mean “a direct sequence in the time
`
`domain… which alone is sufficient for basic radio operation.” Ericsson, IPR2014-
`
` 
`
`11
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`

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`Patent Owner Response
`IPR2015-01664
` 
`01195, Paper 11 at 9. As discussed above, claim 1 already expressly recites “a
`
`primary preamble sufficient for basic radio operation.”
`
`In contrast, independent claims 8 and 18 expressly recite that the primary
`
`preamble be “sufficient to enable radio operations.” Indeed, claims 8 and 18 are
`
`also missing the claim element expressly reciting the presence of both radio con-
`
`trol signals and operating signals, both of which are necessary for basic radio op-
`
`eration. If the phrase “sufficient for basic radio operation” was included in the def-
`
`inition of “primary preamble,” the same language in claim 1 would be superfluous
`
`and the phrase “sufficient to enable radio operations” recited in claims 8–12 and
`
`18–22 would be meaningless. This cannot be correct.
`
`The construction of “primary preamble” urged by the parties is consistent
`
`with the express claim language, the ’431 patent specification, and the understand-
`
`ing of a person of ordinary skill in the art in the context of the ’431 patent. Exhibit
`
`2001 at ¶¶46-48; Exhibit 1012 at ¶¶31-32.
`
`“Peak-To-Average Ratio”
`
`3.
`The parties do not dispute, and the Board agrees, that “peak-to-average ra-
`
`tio” refers to “peak-to-average power ratio.” Exhibit 2001 at ¶49; Petition at 24;
`
`Ericsson, IPR2014-01195, Paper 11 at 7.
`
` 
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`12
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`B.
`
` Claim Terms Identified By Patent Owner
`
`Patent Owner respectfully requests that the Board construe the terms
`
`“transmit[ting] a broadcast channel in a core-band,” “first plurality of subcarrier
`
`groups,” “second plurality of subcarrier groups,” “control and data channels,” and
`
`“variable band.” Petitioner did not expressly construe any of these additional
`
`claim terms, nor did its expert, Dr. Haas, expressly provide any proposed construc-
`
`tion of such claim terms in his Declaration.
`
` ’431 Patent
`Claim Term
`“transmitting a broadcast
`channel in an OFDMA
`core-band”
`
`Patent Owner’s Proposed Construction
`
`Transmitting a broadcast channel by multiplexing the
`broadcast channel information using OFDMA on to
`subcarriers within the limits of a frequency segment
`that is not greater than the smallest operating channel
`bandwidth among all the possible spectral bands
`with which the receiver is designed to operate.
`
`“first plurality of subcar-
`rier groups”
`
`A first collection of two or more subcarrier groups,
`each of which includes at least two subcarriers.
`
`“second plurality of sub-
`carrier groups”
`
`“control and data chan-
`nels”
`
`“variable band”
`
`A second collection of two or more subcarrier
`groups, distinct from the first plurality of subcarrier
`groups, each of which includes at least two subcarri-
`ers.
`
`Control channels and data channels.
`
`A frequency band having variable operating channel
`bandwidth.
`
` 
`
` 
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`13
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`
`1.
`
`“Transmit[ting] a Broadcast Channel In An OFDMA Core-
`Band”
`
`Claim 8 recites “circuitry configured to transmit a broadcast channel in an
`
`orthogonal frequency division multiple access (OFDMA) core-band” and claim 18
`
`recites “transmitting a broadcast channel by a cellular base station in an orthogonal
`
`frequency division multiple access (OFDMA) core-band.” While the parties agree
`
`on the definition of “core-band,” the full claim term “transmit[ting] a broadcast
`
`channel in an orthogonal frequency division multiple access (OFDMA) core-
`
`band,” should be properly construed.
`
`As discussed above, the claim term “core-band” is defined in the specifica-
`
`tion as “a frequency segment that is not greater than the smallest operating channel
`
`bandwidth among all the possible spectral bands with which the receiver is de-
`
`signed to operate.” Exhibit 1001 at 4:67 to 5:4; Ericsson, IPR2014-01195, Paper
`
`11 at 8. The ’431 patent explains that “for a system that is intended to work at 5-,
`
`6-, 8-, and 10- MHz, the width of the CB (core-band) can be 4 MHz, as shown in
`
`FIG. 6. The rest of the bandwidth is called sideband (SB).” Exhibit 1001 at 5:5-7.
`
`The term “OFDMA” is known in the art as a method of transmitting infor-
`
`mation by multiplexing or modulating the information on subcarriers that are mu-
`
`tually orthogonal in the frequency domain thereby allowing multiple users to mul-
`
`tiplex their information. Exhibit 2001 at ¶51. Petitioner’s expert, Dr. Haas, agrees.
`
` 
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`14
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`Exhibit 2003 (Oral Deposition of Zygmunt Haas, Ph.D.) at 62:1-63:2. The ’431
`
`patent explains that “in a multi-carrier communication system such as… orthogo-
`
`nal frequency division multiple access (OFDMA), information is multiplexed on
`
`subcarriers that are mutually orthogonal in the frequency domain.” Exhibit 1001 at
`
`1:44-48. A person of ordinary skill in the art would understand that an “OFDMA
`
`core-band” refers to a core-band wherein information is multiplexed on its subcar-
`
`riers using OFDMA. See Exhibit 2001 at ¶53.
`
`The claim term “in” is a preposition used to indicate “inclusion, location, or
`
`position within limits,” or “within the limits, bounds, or area of.” Exhibit 2004
`
`(Merriam-Webster’s Collegiate Dictionary, 11th ed. at p. 627 (2003)); Exhibit 2005
`
`(The American Heritage Desk Dictionary, 4th ed. at 429 (2003)). As such, a person
`
`of ordinary skill in the art would understand the claim phrase “transmitting a
`
`broadcast channel in an OFDMA core-band” to mean “transmitting a broadcast
`
`channel within the limits of an OFDMA core-band, i.e., within the limits of a ‘fre-
`
`quency segment that is not greater than the smallest operating channel bandwidth
`
`among all the possible spectral bands with which the receiver is designed to oper-
`
`ate.’” Exhibit 2001 at ¶53.
`
`For these reasons, and viewed in the context of the ’431 patent, a person of
`
`ordinary skill in the art would understand the claim term “transmit[ting] a broad-
`
`cast channel in an OFDMA core-band” to mean “transmitting a broadcast channel
`
` 
`
`15
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`by multiplexing the broadcast channel information using OFDMA on to subcarri-
`
`ers within the limits of a frequency segment that is not greater than the smallest
`
`operating channel bandwidth among all the possible spectral bands with which the
`
`receiver is designed to operate.”
`
`2.
`“First Plurality of Subcarrier Groups”
`Claims 8 and 18 recite a core-band that “includes a first plurality of sub-
`
`carrier groups, wherein each subcarrier group includes a plurality of subcarriers.”
`
`The claim term “first plurality of subcarrier groups” should be construed in ac-
`
`cordance with its plain meaning in the context of the ’431 patent.
`
`The ’431 patent explains that “[a] basic structure of a multi-carrier signal in
`
`the frequency domain is made up of subcarriers and, illustrated in FIG. 3, which
`
`shows three types of subcarriers as follow[s] [sic]:
`
`1.
`
`2.
`
`Data subcarriers, which carry information data;
`
`Pilot subcarriers, whose phases and amplitudes are predetermined and
`
`made known to all receivers, and which are used for assisting system
`
`functions such as estimation of system parameters; and
`
`3.
`
`Silent subcarriers, which have no energy and are used as guard bands
`
`and DC carriers.
`
`The data subcarriers can be arranged into groups called subchannels to support
`
`scalability and multiple access. Each subchannel may be set at a different power
`
` 
`
`16
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`

`
`Patent Owner Response
`IPR2015-01664
` 
`level. The subcarriers forming one subchannel may or may not be adjacent to each
`
`other.” Exhibit 1001 at 3:23-37. The ’431 patent further explains that “the varia-
`
`ble channel bandwidth is realized by adjusting the number of usable subcarriers.
`
`In the frequency domain, the entire channel is aggregated by subchannels.” Id. at
`
`4:25-28. But “the number of subchannels can be adjusted to scale the channel in
`
`accordance with the given bandwidth. In such realization, a specific number of
`
`subchannels, and hence the number of usable subcarriers, constitute a channel