`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`
`
`———————
`
`Patent 7,787,431
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`Inter Partes Review No. IPR2015-01664
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`
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`
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`PETITIONER ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`Petitioner Reply IPR2015-001664
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`TABLE OF CONTENTS
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`Introduction .......................................................................................................... 1 
`I. 
`II.  Petitioner’s Previously Construed Claim Terms are Undisputed ................. 2 
`III.  Patent Owner’s Newly Proposed Claim Terms ............................................... 2 
`A.  Undisputed Claim Terms ............................................................................. 3 
`B.  Disputed Claim Terms ................................................................................. 3 
`1. 
`“transmit[ting] a broadcast channel in an orthogonal frequency
`division multiple access (OFDMA) core-band” ................................................ 3 
`2. 
`“variable band” ......................................................................................... 5 
`IV.  The Prior Art References Disclose the Disputed Claim Elements ................. 9 
`A. 
`“Transmit[ting] a broadcast channel in an orthogonal frequency division
`multiple access (OFDMA) core-band” ................................................................. 9 
`B. 
`“Transmitting control and data channels using a variable band including
`a second plurality of subcarrier groups” ............................................................ 15 
`1.  Under the correct claim construction of “variable band,” Dulin
`discloses a “variable band” .............................................................................. 15 
`2. 
`Petitioner’s prior art shows a “variable band,” even under Patent
`Owner’s construction ....................................................................................... 16 
`3. 
`Petitioner’s prior art discloses both a “first plurality of subcarrier
`groups” and a “second plurality of subcarrier groups” .............................. 18 
`4.  The Board’s analysis of the “control and data channels” was correct
`in the Institution Decision ............................................................................... 20 
`V.  Reasons to Combine Prior Art References ..................................................... 21 
`A.  Petitioner Properly Considered the Teachings of the References ............ 21 
`B.  Dulin and Yamaura Combination ............................................................. 22 
`1.  Dulin and Yamaura are Compatible ..................................................... 22
`2. Background Knowledge of a POSITA Suggests Combining Dulin and
`Yamaura ........................................................................................................... 27
`C.  Petitioner’s Expert Assumes a Proper Level of Skill of a POSITA ......... 28 
`VII.  Conclusion ........................................................................................................... 29 
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`ii
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`Petitioner Reply IPR2015-001664
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`TABLE OF AUTHORITIES
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`CASES 
`In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) ................................................. 24
`KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007) ....................................................... 21
`
`
`
`REGULATIONS 
`37 CFR 42.23(b) ...................................................................................................... 16
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`
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`
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`iii
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`Petitioner Reply IPR2015-001664
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`I.
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`Introduction
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`The Patent Owner Response narrows the issues in dispute to two specific claim
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`features found in both independent claims 8 and 18:
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`[8.1] “transmit[ting] a broadcast channel in an orthogonal frequency division
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`multiple access (OFDMA) core-band”; and
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`[8.9] “transmit[ting] control and data channels using a variable band including
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`a second plurality of subcarrier groups, wherein the variable band includes at least the
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`core-band.”
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`In the Response, the Patent Owner (PO) attempts to read additional limitations
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`into these claim elements by proposing narrow claim constructions. However, the
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`narrowing claim constructions urged by the PO are not supported by the claims. In
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`addition, even under the PO’s new constructions, the prior art still discloses the
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`purportedly claimed features.
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`In a further attempt to save the claims, the PO mischaracterizes the disclosure
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`of the Yamaura reference. To support its position, the PO initially relies upon a
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`quotation from Dr. Haas’ deposition selectively edited to mislead the reader.
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`Moreover, the PO’s own expert, Dr. Zeger, admitted during deposition that the
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`Yamaura reference does not explicitly support the PO’s theory. His implicit
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`interpretation was later discredited during the deposition.
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`As a final argument to save the claims, the PO asserts that the Petition failed to
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`1
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`Petitioner Reply IPR2015-001664
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`provide reasons to combine the Dulin and Yamaura references. However, the PO
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`ignores significant portions of the Petition directed specifically to the reasons to
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`combine, as well as the supporting expert declaration of Dr. Haas.
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`As explained below, the Board should reject the new limitations proposed by
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`the PO and maintain the initial determination of unpatentability of claims 8-12 and
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`18-22.
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`II. Petitioner’s Previously Construed Claim Terms are Undisputed
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`The Petitioner offered constructions of the following terms: “core-band,”
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`“primary preamble,” and “peak-to-average ratio.” Petition, pp. 22-24. In the
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`Response, the PO did not dispute the constructions offered by the Petitioner.
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`Response, pp. 10-12. Thus, the terms construed by the Petitioner in the Petition
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`are not in controversy.
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`III. Patent Owner’s Newly Proposed Claim Terms
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`In response to the Institution Decision, the PO has now construed five
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`additional claim terms. Consistent with the Institution Decision, Petitioner does not
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`believe any explicit claim construction is necessary for these terms as the plain and
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`ordinary meaning of the terms is sufficient to reach a decision in the present
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`proceeding and the PO’s proposed constructions do not add further clarity to the claim
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`terms.
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`In order to narrow the issues for determination by the Board, while maintaining
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`
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`2
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`Petitioner Reply IPR2015-001664
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`the position that specific constructions are unnecessary for all five claim terms, the
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`Petitioner only expressly disputes two of the five newly construed claim terms.
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`A. Undisputed Claim Terms
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`While maintaining no construction is necessary, Petitioner does not dispute
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`PO’s proposed constructions for the three claim terms in the table below. See
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`Response, pp. 16-21.
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`Claim Term
`“first plurality of subcarrier groups”
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`“second plurality of subcarrier groups”
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`“control and data channels”
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`B. Disputed Claim Terms
`
`PO Proposed Construction
`first collection of
`two or more
`a
`subcarrier groups, each of which includes
`at least two subcarriers
`a second collection of two or more
`subcarrier groups, distinct from the first
`plurality of subcarrier groups, each of
`which includes at least two subcarriers
`control channels and data channels
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`The PO first proposed constructions of the following two terms in its Response:
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`(1) “transmit[ting] a broadcast channel in an OFDM core-band;” and (2) “variable
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`band.”
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`1. “transmit[ting] a broadcast channel in an orthogonal frequency
`division multiple access (OFDMA) core-band”
`
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`In its Response, PO proposes to construe the term as:
`
`“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
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`3
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`Petitioner Reply IPR2015-001664
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`channel bandwidth among all the possible spectral bands with which
`the receiver is designed to operate.”
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`Response, p. 13. In construing the term, the PO substitutes the parties’ agreed
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`construction for core-band into the construction, which is “a frequency segment that is
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`not greater than the smallest operating channel bandwidth among all the possible
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`spectral bands with which the receiver is designed to operate.”1 If the construction for
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`“core-band” is removed from the PO’s proposed construction, the construction
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`simplifies to:
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`“transmitting a broadcast channel by multiplexing the broadcast channel
`information using OFDMA on to subcarriers within the limits of a core-
`band”
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`
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`The added limitations simply add confusion without further clarifying the
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`claim terms. Moreover, the PO does not even suggest that the cited prior art does
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`not satisfy the newly inserted claim term “by multiplexing the broadcast channel
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`information using OFDMA on to subcarriers” at any point in the Response. Thus,
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`these proposed limitations are irrelevant to a determination in these proceedings. It
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`appears from later arguments in the PO Response that the main point the PO is
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`trying to make with its construction is that “transmitting a broadcast channel in an
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`1 Petitioner proposed slightly different wording for “core-band.” See Response, p.
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`9. For the purposes of this IPR, the differences are not material.
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`4
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`Petitioner Reply IPR2015-001664
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`OFDMA core-band” would be understood by a POSITA to mean “transmitting a
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`broadcast channel within the limits of an OFDMA core-band.” See Response,
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`p. 15. However, the PO’s attempt to define the term through the proposed
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`construction only adds additional confusion. The Board should reject the proposed
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`construction as adding undue limitations and generating more confusion than
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`clarity. The claim term simply requires transmitting a broadcast channel in an
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`OFDMA core-band. This has a plain and ordinary meaning that does not require
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`any construction.
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` Petitioner submits
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`that no construction of
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`the
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`term
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`“transmit[ting] a broadcast channel in an OFDMA core-band” is necessary.
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`
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`Later in this Reply, Petitioner addresses the PO’s mischaracterization of
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`what the prior art discloses, and shows that as set forth in the Petition the prior art
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`demonstrates a broadcast channel contained within the limits of an OFDMA core-
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`band.
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`2. “variable band”
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`The PO proposed to construe the term “variable band” as “a frequency band
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`having variable operating channel bandwidth.” Response, p.13. Petitioner disagrees
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`with this construction because the PO adds the terms “operating channel” to “variable
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`band,” thereby unduly limiting the term “variable band.” Petitioner asserts that the
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`term does not need construction as the plain and ordinary meaning is sufficient. To
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`5
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`Petitioner Reply IPR2015-001664
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`the extent the Board adopts a claim construction, Petitioner asserts that “variable
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`band” should be interpreted to mean “variable bandwidth.” See ERIC-1020, ¶¶ 5-10.
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`The term “variable band” is not used in the specification. However, the terms
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`“variable bandwidth” and “variable channel bandwidth” are used in the specification,
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`particularly in the section entitled “Variable Bandwidth OFDMA.” See ERIC-1001,
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`4:16-62. Moreover, the terms “variable bandwidth” and “variable channel
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`bandwidth” are used in the specification in a very general context to refer to the
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`flexibility of an OFDMA system to vary signal bandwidth by simply varying the
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`number of subchannels. See ERIC-1020, ¶ 6.
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`This understanding is consistent with other parts of the ’431 patent. In one
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`example, a mobile station is described as sending a “bandwidth request” to a base
`
`station, which is consistent with a mobile station requesting and thereafter receiving a
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`varying signal bandwidth. See id., ¶ 9. As another example, the ’431 patent states:
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`“In some embodiments, the variable channel bandwidth is realized by adjusting the
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`number of usable subcarriers.” ERIC-1001, 4:25-26 (emphasis added). As yet
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`another example, referring to Fig. 3, the ’431 patent states: “Each user may use some
`
`or all of the subchannels.” ERIC-1001, 3:37.
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`A particular scenario of a user occupying subchannel 2 at time t1, and all the
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`subchannels at a later time t2 is illustrated in annotated Fig. 3 of the ’431 patent below,
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`which illustrates varying the signal bandwidth. See ERIC-1020, ¶¶ 7-8.
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`6
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`Petitioner Reply IPR2015-001664
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`’431 patent, Figure 3 (annotated, user 1, time t1), see ERIC-1020, ¶ 8.
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`7
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`Petitioner Reply IPR2015-001664
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`
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`’431 patent, Figure 3 (annotated, user 1, time t2), see ERIC-1020, ¶ 8.
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`Accordingly, based on the ’431 patent specification, the term “variable band”
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`refers to “variable bandwidth,” as opposed to the PO’s proposed construction which
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`refers to a “variable operating channel bandwidth.” Petitioner asserts that the term
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`does not need construction as the plain and ordinary meaning is sufficient. To the
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`extent the Board adopts a claim construction, Petitioner asserts that “variable band”
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`should be interpreted to mean “variable bandwidth.” See ERIC-1020, ¶ 10.
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`8
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`Petitioner Reply IPR2015-001664
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`IV.
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`The Prior Art References Disclose the Disputed Claim Elements
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`A. “Transmit[ting] a broadcast channel in an orthogonal frequency
`division multiple access (OFDMA) core-band”
`
`According to the PO, “[a]t most, Petitioner’s prior art combination discloses
`
`
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`transmitting a core-band within a broadcast channel, not the claimed ‘transmitting a
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`broadcast channel in an OFDMA core-band.’” Response, p. 28. As explained below,
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`the PO is mistaken and has relied upon flawed technical reasoning to reach its
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`conclusion. The Yamaura reference discloses that during the broadcast burst only a
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`small group of subcarriers (SC1 and SC2) are used during the time slots of the
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`broadcast preamble, BCH and FCH to transmit specific control signals, while other
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`control signals are transmitted later using during the ACH time slot using all of the
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`subcarriers. See ERIC-1020, ¶ 11-13 and ERIC-1012, pp.63-80.
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`As an initial matter, the PO attempts to generate support for its flawed position
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`by improperly citing to Dr. Haas’ deposition testimony. The PO argues as follows:
`
`As can be seen in FIG. 17, BCH and FCH span the entire width of
`Yamaura’s 20 MHz transmission channel, as does ACH, which is not
`even shown to include a narrow-band. See Exhibit 2003 at 65:3-4
`(“BCH …is a bandwidth of the channel”).
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`Response, p. 30.
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`Dr. Haas’ testimony (Exhibit 2003) is improperly edited and does not in any
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`way support the PO’s assertion. The complete testimony of Dr. Haas set forth below
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`9
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`Petitioner Reply IPR2015-001664
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`refers to Fig. 2 of the ‘431 patent (not Yamaura):
`
`So maybe if we look -- just to make it more -- there's not a good picture
`here. But if we look, for example, on Figure 2, you have the BCH,
`which is a bandwidth of the channel.
`
`Ex.2003, 65:1-4. As shown in Figure 2 of the ‘431 patent reproduced below, Bch
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`refers to the “given bandwidth of a spectral band or channel.”
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`
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`ERIC-1001, 3:15-16 and Fig. 2. The PO’s reliance on the Haas testimony concerning
`
`the ‘431 patent’s description of Bch (bandwidth of a channel) is disingenous and
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`attempts to create confusion concerning a different feature in Yamaura labelled BCH
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`(Broadcast Channel). Dr. Haas’ testimony does not even refer to the BCH of
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`Yamaura, much less support the PO’s mischaracterization of the Yamaura reference.
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`The PO follows this mischaracterization with a further, ultimately discredited,
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`misunderstanding of Yamaura. The PO states that “[a] person of ordinary skill in the
`
`art would understand that the Yamaura base station transmits the remaining control
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`10
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`Petitioner Reply IPR2015-001664
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`signals in the broadcast burst outside the narrow-band. Exhibit 2001 at ¶¶107-116.”
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`Response, p. 30. PO’s expert, Dr. Zeger, incorrectly illustrates Yamaura’s control
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`signals as follows:
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`
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`Ex.2001, ¶115.
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`
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`During deposition, Dr. Zeger admitted that Yamaura does not explicitly
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`disclose transmitting any signals outside subcarriers SC1 and SC2 during the broadcast
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`preamble, BCH and FCH time periods of the broadcast burst. See ERIC-1018,
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`103:23-104:18. Moreover, Dr. Zeger admitted during deposition that control signals
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`are sent during the ACH time period.
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`Q In Yamaura, does the ACH carry control signals?
`…
`A Yeah. I think it -- I think that's what it does. … ACH is used to reply
`to RCH for calling from terminal stations, so I think the answer’s yes.
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`11
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`Petitioner Reply IPR2015-001664
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`ERIC-1018, 96:15-21. Thus, there is no explicit disclosure supporting the PO’s
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`alleged understanding of Yamaura and Dr. Zeger is incorrect in inferring that a
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`transmitter sends “part” of control signals in subcarriers SC1 and SC2 at the same time
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`as another “part” of control signals outside subcarrier SC1 and SC2 during the
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`broadcast preamble, BCH, and FCH time slots. Instead, as explained by Dr. Haas,
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`Yamaura discloses that a transmitter sends control signals as shown below:
`
`
`
`Yamaura, Figure 17 (annotated); see ERIC-1020, ¶ 12.
`
`
`
`Specific control signals are broadcast on subcarriers SC1 and SC2 during time
`
`periods of the broadcast preamble, BCH and FCH, while other control signals are
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`broadcast on additional subcarriers during at least the ACH time period. See ERIC-
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`
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`12
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`Petitioner Reply IPR2015-001664
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`1020, ¶ 12; see also ERIC-1012, pp. 68-76. The PO’s interpretation is contradicted
`
`by Yamaura. As recognized by the PO, “Yamaura teaches that a particular mobile
`
`station need only to receive the narrow-band subcarriers SC1 and SC2 instead of the
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`full 20 MHz band while the terminal station is in the stand-by state, which contributes
`
`to saving power.” Response, p. 31.
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`
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`The subcarriers SC1 and SC2 in Fig. 17, during the initial time period of a frame
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`(i.e., the broadcast preamble, BCH, and FCH time slots), carry a “broadcast channel.”
`
`See ERIC-1020, ¶ 13; see also ERIC-1012, pp. 68-70. Yamaura describes the use of
`
`those subcarriers during a specific time to carry control signals. For example,
`
`Yamaura states:
`
` “In the case of this embodiment, the two subcarriers SC1 and SC2 shown in FIG.
`
`16 are used for transmission of specific control signals in the sections of broadcast
`
`preamble, BCH, and FCH in the broadcast burst.” ERIC-1003, 21:11-15.
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` “All that is necessary is to place specific control signals (such as calling signals for
`
`the terminal station) in the data in the two subcarriers SC1 and SC2.” Id., 21:30-32.
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`Thus, during the broadcast preamble, BCH, and FCH time slots, the subcarriers SC1
`
`and SC2 include the claimed “broadcast channel.”
`
`
`
`We return now to the PO’s inference that since Yamaura discloses that “part
`
`of” control signals are transmitted in a narrower band, then the other “part of” control
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`signals must be transmitted outside the narrower band at the same time. See
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`13
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`Petitioner Reply IPR2015-001664
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`Response, p. 30. Contrary to Dr. Zeger’s inference, the other “part” of control signals
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`not in SC1 and SC2 refers to control signals not transmitted at the same time as the
`
`broadcast preamble, BCH, and FCH time slots, but to other control signals broadcast
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`later during at least the ACH time slot. See ERIC-1020, ¶ 12 (citing ERIC-1003,
`
`21:7-11 and ERIC-1018, 96:15-21). In contrast to the flawed implications asserted by
`
`the PO, Yamaura discloses that a transmitter broadcasts control signals as shown
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`below:
`
`Yamaura, Figure 17 (annotated); see ERIC-1020, ¶ 12.
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`14
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`Petitioner Reply IPR2015-001664
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`The PO does not contest that Dulin discloses OFDMA and Hwang discloses
`
`multiple operating channel bandwidths. Thus, the reasoning in the Petition remains
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`correct that the combination of Yamaura, Dulin, and Hwang discloses “transmitting a
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`broadcast channel in an orthogonal frequency division multiple access (OFDMA)
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`core-band.” Petition, pp. 32-36.
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`B. “Transmitting control and data channels using a variable band
`including a second plurality of subcarrier groups”
`
`1. Under the correct claim construction of “variable band,” Dulin
`discloses a “variable band”
`
`The PO does not contest that Dulin discloses a variable signal bandwidth
`
`
`
`
`
`within an operating channel bandwidth as set forth in the Petition. For example, the
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`Response states: “While Dulin discloses varying the frequency blocks with the fixed
`
`bandwidth system…” Response, p. 38. Dr. Zeger confirms that Dulin discloses a
`
`variable signal bandwidth. Referring to Dulin, Figure 13A:
`
`A: Okay. So there's B1, B2, and B3 stacked vertically. Those are three
`blocks in the same time slots at different frequencies. And what I'm
`saying is Dulin allows the possibility of using all three, two, one, or
`even none of those at any particular time.
`
`ERIC-1018, 89:15-19 (emphasis added). The blocks B1, B2, and B3 refer to
`
`frequency blocks, so Dr. Zeger is agreeing that Dulin shows that zero, one, two, or
`
`three frequency blocks can be used at any given time, meaning the signal bandwidth
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`can vary at any given time.
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`15
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`Petitioner Reply IPR2015-001664
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`2. Petitioner’s prior art shows a “variable band,” even under
`Patent Owner’s construction
`
`As discussed earlier, the PO incorrectly alleges that “variable band” means a
`
`
`
`
`
`“frequency band having a variable operating channel bandwidth.” As discussed
`
`earlier, the term “core-band” implies that there is a variable operating channel
`
`bandwidth, as the parties agree that the term “core-band” means “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.”
`
`The PO implicitly concedes that Hwang discloses a variable operating channel
`
`bandwidth by focusing on a technicality that, under the PO’s new construction for
`
`“variable band,” Petitioner did not rely on Hwang for the new limitation of a “variable
`
`operating channel bandwidth”:
`
`“While Petitioner relies on Hwang as disclosing a scalable bandwidth in
`connection with its analysis of claim element 8.1, Petitioner’s analysis of
`claim element 8.9 is devoid of any discussion of Hwang.”
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`Response, p. 39. Here, the PO refers to the use of Hwang (in combination with
`
`Yamaura) to disclose a “core-band” in the Petition for claim element 8.1, wherein
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`“core-band” is “a frequency segment that is not greater than the smallest operating
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`channel bandwidth among all the possible spectral bands with which the receiver is
`
`designed to operate.” Under 37 CFR 42.23(b), Petitioner is permitted to respond to
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`allegations raised by the PO’s newly proposed claim construction, and does so by
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`16
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`Petitioner Reply IPR2015-001664
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`pointing out that Hwang discloses a variable operating channel bandwidth. As
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`discussed in the Petition:
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`
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`
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`Petition, pp. 29-30. See ERIC-1020, ¶¶ 15-16. The Petition also stated that “[t]he
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`claim construction of core-band is thus demonstrated as being disclosed by the
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`combination of Yamaura and Hwang and applies hereafter for the remaining claim
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`elements.” Petition, p. 30. Claim element 8.9 also contains the language “wherein the
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`variable band includes at least the core-band.” As explained in the Petition, the
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`Yamaura and Hwang combination discussed for the “core-band” of claim element 8.1
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`applies equally to the reference to “core-band” in element 8.9. Thus, the Petition
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`demonstrated the PO’s proposed claim construction by reference to the variable
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`17
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`Petitioner Reply IPR2015-001664
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`operation channel bandwidth of Hwang in combination with Yamaura to satisfy the
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`“core-band” element of claim elements 8.1 and 8.9, even under the PO’s newly
`
`proposed construction.
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`3. Petitioner’s prior art discloses both a “first plurality of subcarrier
`groups” and a “second plurality of subcarrier groups”
`
`
`The language of claim 18 is as follows (claim 8 is substantively similar):
`
`transmitting control and data channels by the cellular base station using a
`variable band including a second plurality of subcarrier groups, wherein
`the variable band includes at least the core-band.
`
`The PO argues that in order to satisfy this claim element, the control channels
`
`must use the second plurality of subcarrier groups, and the data channels must also
`
`use the second plurality of subcarrier groups:
`
`“At most, Dulin discloses transmitting data channels. As stated above,
`however, the identified calling signals do not include a ‘second plurality
`of subcarrier groups,’ even if Petitioner relies on Yamaura’s “control
`channels.’ Rather, Yamaura simply includes the original ‘first plurality
`of subcarrier groups’ making up the narrow-band.”
`
`Response, pp. 44-45 (emphasis added). Thus, according to the PO, Petitioner’s
`
`showing of control channels in the core-band (which includes a first plurality of
`
`subcarrier groups) and data channels in the second plurality of subcarrier groups does
`
`not satisfy the claim because there must also be a control channel in the second
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`plurality of subcarrier groups.
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`18
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`Petitioner Reply IPR2015-001664
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`
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`Petitioner disagrees with the PO based on the plain language of claims 8 and
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`18. The “control and data channels,” or, as construed, “control channels and data
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`channels,” use a variable band, wherein the variable band includes the core-band and
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`a second plurality of subcarrier groups. This claim element does not specify which of
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`the control channels or data channels is in which part of the variable band. The prior
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`art combination shown by Petitioner shows data channels using a second plurality of
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`subcarrier groups and control channels using the core-band (which includes a first
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`plurality of subcarrier groups and is part of the variable band). Thus, the control
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`channels and data channels together use the variable band, which is all that is required
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`by the claim. See ERIC-1020, ¶¶ 18-19 and ERIC-1012 pp. 100-110.
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`Furthermore, even assuming the PO’s incorrect interpretation of this claim
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`element, Yamaura illustrates a control channel, namely the ACH, using the entire
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`operating channel bandwidth, which includes a second plurality of subcarrier groups,
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`which are also used as data channels in a later portion of the frame. See ERIC-1020,
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`¶ 20. Yamaura Fig. 17 (annotated below).
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`Petitioner Reply IPR2015-001664
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`Thus, Petitioner has shown that both control channels and data channels utilize a
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`second plurality of subcarriers.
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`4. The Board’s analysis of the “control and data channels” was correct
`in the Institution Decision
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`According to PO, the Board mistakenly ignored the claim element “control and
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`data channels” in its analysis. See Response, p. 46 (referring to a “flaw in the Board’s
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`preliminary analysis”). However, the PO is incorrect. As discussed above, it is PO
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`that relies on a mistaken interpretation of the plain language of the claim. Instead, the
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`Board’s analysis is consistent with the correct understanding of the claim element that
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`includes “control and data channels,” an understanding that is discussed above.
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`Petitioner Reply IPR2015-001664
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`V.
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`Reasons to Combine Prior Art References
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`A. Petitioner Properly Considered the Teachings of the References
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`The PO both misinterprets the law on obviousness, and fails to appreciate the
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`detailed reasons to combine the references provided in the Petition. According to the
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`PO:
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`“Of course, a showing of obviousness requires a teaching, suggestion
`or motivation to combine the elements in the way the claimed
`combination does, a showing that Petitioner utterly failed to make.”
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`Response, p. 48 (citing KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007)) (emphasis
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`added). KSR rejected the TSM (teaching, suggestion, motivation) test, noting that
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`“[t]he obviousness analysis cannot be confined by a formalistic conception of the
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`words teaching, suggestion, and motivation.…” Id. at 419. Rather, according to
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`KSR, what is required is that the analysis on reasons to combine “should be made
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`explicit.” Id. at 418. Further, to protect against hindsight bias, “there must be
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`some articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed Cir.
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`2006)).
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`With this legal background, the Petition provides explicit and extensive
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`“articulated reasoning with some rational underpinning” for reasons that aspects of
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`the various prior art references are combined. See Petition pp. 32-36 (reasons to
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`combine aspects of Dulin, Yamaura, and Hwang), p. 39 (reasons to combine
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`Petitioner Reply IPR2015-001664
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`aspects of Yamaura and Hwang), pp. 45-47 (reasons to combine aspects of
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`Yamaura and Zhuang), and pp. 52-53 (reasons to combine aspects of Dulin and
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`Yamaura). The PO presents specific allegations only with respect to the Dulin and
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`Yamaura combination, and those allegations are addressed below.
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`B. Dulin and Yamaura Combination
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`1. Dulin and Yamaura are Compatible
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` Location of Frame Map
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`The PO makes a number of allegations about the combination of Dulin and
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`Yamaura. First, the PO alleges that Dulin teaches away from Yamaura because Dulin
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`requires frame map information “at the very beginning of the frame,” whereas
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`Yamaura conveys frame map information in the FCH time slot, which is after the
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`broadcast preamble and BCH time slots, i.e., not “at the very beginning of the frame.
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`See Response, pp. 51-52. The PO uses flawed technical reasoning in making this
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`allegation.
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`The PO’s expert recognizes that synchronization is essential for radio
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`operation, yet Dulin does not describe how it will accomplish the synchronization.
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`ERIC-1018, 61:20-62:3. Dr. Zeger also recognized that early on in the
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`communication between a base station and a receiver, one needs to accomplish
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`synchronization and cell identification to establish communication. ERIC-1018,
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`45:16-46:11. Thus, once Dulin is placed in the context of a complete system, even
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`Petitioner Reply IPR2015-001664
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`Dulin would need to send synchronization (broadcast preamble) and cell identification
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`(BCH) before sending a frame map. See ERIC-1020, ¶ 22.
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`Petitioner’s position is clear that a frame map must necessarily come before the
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`related data transmission. For systems, such as the combined Yamaura and Dulin
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`system, that have preamble information and other control information at the beginning
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`of a frame followed by data transmission, the frame map must come near the
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`beginning of the frame before the data transmission. It was never Petitioner’s position
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`that a frame map must be the very first thing transmitted in a frame, as the PO seems
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`to imply. See Petition, pp. 51-53 and ERIC-1012, ¶¶45-55. Again, given the fact that
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`some operations (such as synchronization) are required before data reception
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`commences, placing the frame map as the very first thing in a frame would be
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`unreasonable. See ERIC-1020, ¶ 23.
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`The PO does not stop there: “Because Dulin mandates that the map
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`information be transmitted at the beginning of the frame, a person of ordinary skill in
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`the art would not have been motivated to transmit the map information three symbol
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`periods after the start of the frame because such an arrangement would not work.”
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`Response, pp. 52-53 (emphasis added). The PO’s allegation is incorrect. All that is
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`required for the combined Dulin and Yamaura system to work is that a frame map be
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`transmitted before Dulin’s data blocks. When Dulin is combined with Yamaura, data
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`is not transmitted until after the initial control information. Dulin does not teach away
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`Petitioner Reply IPR2015-001664
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`from this combination. See ERIC-1020, ¶ 24.
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` Dulin teaches the use of one base station
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`According to PO, Dulin and Yamaura would not be combined because they are
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`“materially different,” as Dulin allegedly “teaches a system and method for
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`synchronizing data transmission from multiple wireless base stati