IPR 2016-00758
`U.S. Patent No. 8,218,481
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APLE, INC., HTC CORPORATION, HTC AMERICA, INC., MICROSOFT
`CORPORATION, MICROSOFT MOBILE OY, MICROSOFT MOBILE INC.,
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., AND ZTE (USA) INC.,
`
`Petitioner,
`
`V.
`
`EVOLVED WIRELESS, LLC,
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`Patent Owner
`
`_____________________
`
`Case IPR2016-007581
`Patent 8,218,481
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`_____________________
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`
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`PATENT OWNER’S RESPONSE
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`
`
`
`1 IPR2016-01342 and IPR2016-01349 have been consolidated with this
`proceeding. IPR2017-00068 and IPR2017-00106 have been joined with IPR2016-
`00758. IPR2016-00981 has been joined with IPR2016-01349.
`
`
`
`U.S. Patent No. 8,218,481
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APLE, INC., HTC CORPORATION, HTC AMERICA, INC., MICROSOFT
`CORPORATION, MICROSOFT MOBILE OY, MICROSOFT MOBILE INC.,
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., AND ZTE (USA) INC.,
`
`Petitioner,
`
`V.
`
`EVOLVED WIRELESS, LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-007581
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`1 IPR2016-01342 and IPR2016-01349 have been consolidated with this
`proceeding. IPR2017-00068 and IPR2017-00106 have been joined with IPR2016-
`00758. IPR2016-00981 has been joined with IPR2016-01349.
`
`
`
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`I.
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`PATENT OWNER’S OPPOSITION TO INSTITUTED GROUNDS
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`Patent Owner, Evolved Wireless, LLC (“Evolved Wireless”), submits this
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`Patent Owner’s Response to the instituted grounds in the above-captioned
`
`consolidated case.
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`The ’481 Patent, based on an international application filed June 8, 2007 and
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`claiming priority to a Korean application filed June 9, 2006, relates to cellular
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`phone technology that is part of the Long Term Evolution (“LTE”) standard,
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`sometimes referred to as 4G. The specific contribution of the ’481 patent is
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`improved methods and structures for generating a preamble sequence for
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`transmission on the random access channel (“RACH”). The RACH is the channel
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`that all cellular phones must use to synchronize with a base station, or cell tower,
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`to obtain initial network access when, for example, the phone is first powered on or
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`is coming out of an idle state. The performance of the RACH is therefore a critical
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`element of the LTE network, and the improved preamble sequences of the ’481
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`patent are a key driver of that RACH performance.
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`The instituted grounds fall into two categories, those for which the primary
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`art consists of earlier proposals submitted to the Third Generation Partnership
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`Project (“3GPP”) during the process leading up to adoption of the LTE standard
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`(Panasonic 792, Panasonic 114, and Panasonic 700) and those for which the
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`primary reference is an earlier versions of an alternative standard (IEEE802.16-
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`2004). The earlier 3GPP proposals disclose preamble structures that are inferior to
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`the preamble sequence disclosed and claimed in the ’481 patent. Accordingly, the
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`earlier proposals were not adopted as part of the LTE standard. The alternative
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`standard, IEEE 802.16, also known as WiMAX, and its preamble structure lost out
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`in marketplace competition with LTE, which uses the preamble structure of the
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`’481 patent, as LTE has become the United States’ 4G mobile communications
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`network of choice.
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`The Patent Trial and Appeal Board (the “Board”) nevertheless instituted
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`inter partes review, and consolidated these proceedings for trial on the following
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`grounds:
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`1. Claims 1, 2, 8, and 9 as anticipated by Panasonic 792;
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`2. Claims 3 and 10 as obvious over Panasonic 792 and Panasonic 114;
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`3. Claims 6 and 13 as obvious over Panasonic 792, Panasonic 114, and
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`Chu;
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`4. Claims 1 and 2 as anticipated by Panasonic 700;
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`5. Claim 3 as obvious over Panasonic 700 and Panasonic 114;
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`6. Claims 4 and 6 as obvious over Panasonic 700, Panasonic 114, and
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`Chu;
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`7. Claims 8 and 9 as obvious over Panasonic 700 and Motorola 595;
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`U.S. Patent No. 8,218,481
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`8. Claim 10 as obvious over Panasonic 700, Panasonic 114, and
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`Motorola 595;
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`9. Claims 11 and 13 as obvious over Panasonic 700, Panasonic 114,
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`and Motorola 595;
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`10. Claims 1 and 15 as anticipated by IEEE802.16-2004;
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`11. Claims 1 and 15 as obvious over IEEE802.16-2004 and
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`IEEE802.16-2005;
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`12. Claims 2-4 and 6 as obvious over IEEE802.16-2004 and Tan;
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`13. Claims 2-4 and 6 as obvious over IEEE802.16-2004, IEEE802.16-
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`2005, and Tan;
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`14. Claims 8 and 16 as obvious over IEEE802.16-2004 and Chou;
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`15. Claims 8 and 16 as obvious over IEEE802.16-2004, IEEE802.16-
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`2005, and Chou;
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`16. Claims 9-11 and 13 as obvious over IEEE802.16-2004, Chou and
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`Tan; and
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`17. Claims 9-11 and 13 as obvious over IEEE802.16-2004,
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`IEEE802.16-2005, Chou, and Tan.
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`The above grounds were originally presented in three different petitions,
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`which have been consolidated. Grounds 1-3 were presented in the Petition in
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`IPR2016-00758 (“the 758 Petition” or “758 Pet.”), grounds 4-9 were presented in
`3
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`U.S. Patent No. 8,218,481
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`the Petition in IPR2016-01342 (“the 1342 Petition” or “1342 Pet.”), and grounds
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`10-17 were presented in IPR2016-01349 (“the 1349 Petition” or “1349 Pet.”).
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`Patent Owner is no longer contesting the validity of claims 1-2, 8-9, and 15-16 and
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`therefore addresses only grounds 2-3, 5-6, 8-9, 12-13, and 16-17 and only with
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`respect to claims 3-4, 6, 10-11, and 13 in this Patent Owner Response.
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`Petitioners bear “the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.” 35 U.S.C. § 316(e). For the reasons set forth
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`herein, Petitioners have failed to meet their burden on the instituted grounds which
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`rely upon a combination of either Panasonic 792 or Panasonic 700 and Panasonic
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`114 (specifically, grounds 2-3, 5-6, and 8-9). The ’481 patent claims methods and
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`apparatuses that use and generate novel preamble structures for transmission on a
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`random access channel. Panasonic 792 and Panasonic 114 disclose two distinct
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`structures, but Petitioners and their expert fail to explain how a person of ordinary
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`skill in the art would modify Panasonic 792 in light of Panasonic 114. Moreover,
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`Panasonic 114 specifically rejects the structure disclosed by Panasonic 792, and
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`Petitioners and their expert fail to even acknowledge Panasonic 114’s teaching that
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`its proposed structure will not work with that of Panasonic 792. Petitioners
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`therefore necessarily fail to establish that a person of ordinary skill in the art would
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`have combined those two references to derive the structure claimed by the ’481
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`patent. Panasonic 700 discloses a preamble structure that is identical to that of
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`U.S. Patent No. 8,218,481
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`Panasonic 792 and Petitioners’ proposed combination of that reference with
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`Panasonic 114 therefore fails for the same reason.
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`Each of claims 3-4, 6, 10-11, and 13 therefore must be upheld over the
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`combinations of Panasonic 792 or Panasonic 700 with Panasonic 114.
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`Petitioners have also failed to meet their burden on the instituted grounds
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`addressed in this Patent Owner Response that rely upon IEEE802.16-2004
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`(specifically, grounds 12-13 and 16-17). As it relates to the validity of the ’481
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`patent claims, the preamble structure disclosed in IEEE802.16-2004 is identical to
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`the structure of the Jung reference, which was the subject of an Examiner’s
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`rejection during prosecution. The patent applicant then amended the claims to add
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`the limitation “concatenating a single cyclic prefix (CP) to a front end of said
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`consecutive sequence” and explained that Jung does not teach this limitation. (Ex.
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`1005 at 541-42, 545.) The Examiner then allowed the claims. (Id. at 692-96.) This
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`same limitation, when properly construed, is also missing from the materially
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`identical preamble structure disclosed in IEEE802.16-2004 for the same reason it
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`is missing from Jung. In addition, for each of the challenged claims addressed in
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`this Patent Owner Response, the instituted grounds based upon IEEE802.16-2004
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`involve a combination of that reference with Tan. As discussed below, however,
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`that combination as proposed by Petitioners and their expert eliminates the very
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`reason for making the combination advanced by Petitioners and their expert,
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`demonstrating that a person of ordinary skill in the art would not make the
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`combination proposed by Petitioners.
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`Each of claims 3-4, 6, 10-11, and 13 therefore must be upheld over the
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`instituted grounds that rely upon IEEE801.16-2004.
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`II. OVERVIEW OF THE ’481 PATENT AND THE PRIOR ART
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`A. The 8,218,481 Patent
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`The ’481 patent issued from application no. 12/303,947, the National Stage
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`filing under 35 U.S.C. § 371 of International Application No. PCT/KR07/02784,
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`which was filed by LG Electronics Inc. (“LG Electronics”) on June 8, 2007 and
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`claims priority to two Korean Applications, No. 10-2006-0052617, filed on June 9,
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`2006, and No. 10-2006-0057488, filed on June 26, 2006. Following issuance of the
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`’481 patent on July 10, 2012, three additional patents have also issued from the
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`same specification.
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`
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`1.
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`Background of the Technology
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`The ’481 patent relates to the fourth generation cellular phone technology
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`known as the Third Generation Partnership Project (“3GPP”) Long Term
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`Evolution (“LTE”) system. When a cellular phone, or user equipment (“UE”), is
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`first activated and seeks to connect to the LTE network, it lacks the information
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`necessary to synchronize with a cellular tower, or base station. To solve this
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`problem, LTE uses a random access channel (“RACH”). (Ex. 1001 at 4:55-57.)
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`U.S. Patent No. 8,218,481
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`A UE that needs to connect to the network sends a signal, known as a
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`preamble sequence, over the RACH to the base station. If the base station
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`accurately identifies a received signal as a preamble sequence of a UE, the base
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`station is then able to send the necessary information to the UE that is requesting
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`network access. (See Ex. 1001 at 4:60-67.) Because multiple UEs may be
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`simultaneously attempting to access the network, the preamble sequences must
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`satisfy two requirements: the sequences must be chosen such that a base station is
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`able to accurately identify that it has received a preamble sequence, and the
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`sequences must be chosen such that a base station is able to accurately distinguish
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`between multiple preamble sequences received simultaneously from multiple UEs
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`seeking access.
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`LG Electronics, the original assignee of the ’481 patent, is a global leader
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`and technology innovator in consumer electronics and mobile communications. LG
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`Electronics is an active participant in the 3rd Generation Partnership Project
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`(“3GPP”), the standards-setting organization that developed the Long-Term
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`Evolution, or LTE, standard. The inventions disclosed in the ’481 patent
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`specification relate to LG Electronics’ contributions to the development of that
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`standard, and the specific inventions claimed by the ’481 patent have been adopted
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`as part of the 3GPP LTE standard. By being adopted into the 3GPP LTE standard,
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`members of 3GPP recognized and agreed that the claimed inventions in the ’481
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`patent were innovative solutions to the problems faced during the development of
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`the standard.
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`The ’481 patent specification discloses data transmission methods for mobile
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`communication systems that improve over prior art systems in three ways:
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`improved code sequences for use in such transmissions, improved structures for
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`the random access channels that enable user equipment such as cell phones to
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`access mobile communication networks, and improved transmission methods that
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`employ such sequences and random access channels. (See, e.g., Ex. 1001 at 2:37-
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`3:45.)
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`
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`2. Challenged Claims
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`The ’481 patent claims are directed toward methods and apparatuses for
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`accessing a random access channel using a particular structure of a code sequence.
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`The claimed structure comprises a preamble sequence constructed from
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`consecutive sequences to which a single cyclic prefix is concatenated, as shown in
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`Figure 11:
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`U.S. Patent No. 8,218,481
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`Claim 1 recites a method for transmitting preamble sequences using this
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`
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`structure:
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`A method of transmitting a preamble sequence in a mobile
`communication system, the method comprising:
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`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
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`generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
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`and transmitting, on a random access channel, said preamble
`sequence to a receiving side.
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`(Ex. 1001 at 18:32-42.)
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`The dependent claims add additional steps to the method that provide further
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`improvements. Claim 2 adds that the specific sequence of claim 1 is “a Constant
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`Amplitude Zero Auto Correlation (CAZAC) sequence.” (Ex. 1001 at 18:43-45.)
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`CAZAC sequences exhibit “excellent transmission characteristics” that provide
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`additional benefits to LTE systems. (Ex. 1001 at 9:12-15.) Claim 3 adds the
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`additional step of applying a cyclic shift to the CAZAC sequence. (Ex. 1001 at
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`18:46-48.) Cyclically shifted CAZAC sequences maintain the excellent
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`transmission characteristics of the underlying CAZAC sequence and allow for
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`multiple preamble sequences to be generated from a single root sequence. (Ex.
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`1001 at 11:14-21.) Claims 4 and 6 recite particular methods of applying the cyclic
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`shift of claim 3, using an integer multiple of a predetermined circular shift unit and
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`multiplication by an exponential sequence, respectively. (Ex. 1001 at 18:49-51, 54-
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`56.) The remaining instituted claims 8-11 and 13 are directed toward apparatuses
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`configured to use the inventive methods of claims 1-4 and 6.
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`The claims of the ’481 patent contribute to at least three important benefits
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`of current cellular technology, known as 4G or LTE. First, using a cyclic prefix
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`followed by repetitive sequences enables a receiver (a base station or cell tower) to
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`more easily identify preamble sequences transmitted on the random access
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`channel. This provides an efficient method that enables cell phones to more
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`quickly obtain synchronization with cell towers, thus decreasing the latency
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`experienced by users. (See, e.g., Ex. 1001 at 11:50-54 (“Accordingly, since the
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`receiver only needs to detect repetitive patterns regardless of the type of the
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`U.S. Patent No. 8,218,481
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`received sequence, it can simply identify time position of a user equipment which
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`accesses the RACH and improve detection performance.”).)
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`Second, repeating sequences enables flexibility in cell sizes in a deployed
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`cellular system. Generally, urban areas with higher density populations and
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`obstacles such as large buildings require numerous small cells, whereas rural areas
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`with lower density populations can be serviced by a smaller number of large cells.
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`Large cells, however, cause longer delay time for signal transmission, which
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`necessitates the use of longer preamble sequences. (See Ex. 1001 at 2:37-44.) The
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`claimed inventions of the ’481 patent therefore enable adjusting the length of a
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`preamble sequence through repetition of a specific sequence, thus providing a
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`cellular system which deploys smaller cells in more densely populated areas and
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`larger cells in rural areas. (See Ex. 1001 at 11:46-12:17.)
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`
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`Third, using cyclic-shifted CAZAC sequences increases the number of
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`available sequences for use as preambles because a single root CAZAC sequence
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`can be shifted multiple times to generate additional sequences. (See Ex. 1001 at
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`9:33-11:32.) This both increases the number of users who can simultaneously
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`access the RACH, thus expanding network capacity and decreasing user latency in
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`gaining access to the network, and also facilitates implied message passing based
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`on the sequence ID. (Ex. 1001 at 1:48-51, 9:33-37.) The claims of the ’481 patent
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`therefore increase the overall efficiency of the network and decrease the latency
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`experienced by individual users during initial network access.
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`Prosecution History
`3.
`The ’481 patent was subject to one rejection during prosecution, which was
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`based on United States Patent Publication No. 2006/0153282 to Jung et al.
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`(“Jung”). (See Ex. 1005 at 376-79.) Jung, titled “Method for Transmitting and
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`Receiving Preamble Sequences in an Orthogonal Frequency Division Multiplexing
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`Communication System Using a Multiple Input Multiple Output Scheme,”
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`discloses a preamble sequence structure which involves the transmission of
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`subsequences and multiple cyclic prefixes. (Ex. 2001 at ¶¶ [0064], [0068].) Jung’s
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`preamble structure is depicted in Figure 2 from that publication, set forth below:
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`U.S. Patent No. 8,218,481
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`As Jung explains, the “Preamble Sequence #1” and “Preamble Sequence #2”
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`depicted in Figure 2 above are subsequences generated from a first base sequence
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`and a second base sequence. (Ex. 2001 at ¶¶ [0025], [0041], [0048], [0054].)
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`In response to this rejection, the applicant, LG Electronics, amended the
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`then-pending claims to add two limitations not disclosed by Jung, “repeating a
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`specific sequence, having a length (L), N times to generate a consecutive sequence
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`having a length (N*L)” and “generating said preamble sequence by concatenating
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`a single cyclic prefix to a front end of said consecutive sequence.” (Ex. 1005 at
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`541-42.) The applicant provided the below annotated Figure 2 from Jung to explain
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`these differences to the Examiner:
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`(Ex. 1005 at 546.)
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`The applicant explained that “a review of FIG. 2 of Jung reveals that a
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`preamble sequence of Jung may include more than one cyclic prefix,” and
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`therefore “Jung cannot teach or suggest generating said preamble sequence by
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`concatenating a single cyclic prefix (CP) to a front end of said consecutive
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`sequence, as recited in” the amended claims. (Ex. 1005 at 545-46.) In response to
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`the applicant’s amendment and argument, the rejection based on Jung was
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`withdrawn, and independent claim 31 issued as claim 1 of the ’481 patent. (Ex.
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`1005 at 696.)
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`B. References from 758 Petition and 1342 Petition
`1.
`Panasonic 792
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`Panasonic 792 is a submission from Panasonic as part of the process that led
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`to the LTE standard titled “Random access burst evaluation in E-UTRA uplink.”
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`(Ex. 1002.) It was submitted for discussion at a meeting on March 27-31, 2006. At
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`that time during the development of the LTE standard, the possibility of using the
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`random access channel to transmit a signal that included both a preamble part and
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`a message part was still under consideration. Panasonic 792 discussed an
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`evaluation of the performance of the preamble part and included a discussion,
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`based on that evaluation, of whether or not the message part should be included in
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`the random access burst. (Ex. 1002 at 1.)
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`The preamble structure disclosed by Panasonic 792 “consists of M-times
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`repetition of N=73 (1.25MHz) or N=293 (5MHz) CAZAC sequence.” (Id. at 2.)
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`The Panasonic 792 preamble structure also includes a cyclic prefix, or CP. (Id.)
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`Panasonic 792’s structure does not, however, disclose the use of cyclically shifted
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`CAZAC sequences. In addition, the repeated sequences in Panasonic 792 are only
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`66.67 µs in length and are therefore relatively short, such that 7 repetitions are
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`disclosed, for example, for the random access burst if the transmission time
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`interval is 0.5 ms. (Id. at 2.)
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`2.
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`Panasonic 700
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`Panasonic 700 is another submission by Panasonic to the 3GPP meetings.
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`(Ex. 1035.) The two references disclose the same preamble structure; Panasonic
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`700 is simply an earlier Panasonic submission, for a February 2006 meeting, the
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`substance of which was resubmitted as Panasonic 792 for the March 2006 meeting.
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`Figure 1 of each reference, on which Petitioners and their expert, Dr. Min, rely,
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`disclose identical preamble structures:
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`(Ex. 1014 at ¶ 47 (citing Panasonic 792 at 2).)
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`(Ex. 1036 at ¶ 51 (citing Panasonic 700 at 2).)
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`Panasonic 700 and Panasonic 792 are therefore materially identical as it
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`
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`relates to the patentability of the ’481 patent claims.
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`3.
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`Panasonic 114
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`Panasonic 114 is another submission from Panasonic during development of
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`the LTE standard, titled “Random access design for E-UTRA uplink.” (Ex. 1003.)
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`It was submitted for discussion at a May 8-12, 2006 meeting. Panasonic 114 is thus
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`later in time, and includes a reference to, Panasonic 792. (Ex. 1003 at 5.) That
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`reference is limited, however, to Panasonic 792’s conclusions as to the
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`approximate preamble length required for cells of different sizes. (Id. at 2.)
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`Notably, while the authors of Panasonic 114 were aware of the disclosures of
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`Panasonic 792 and Panasonic 700, Panasonic 114 does not adopt the preamble
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`structure disclosed in those references.
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`Panasonic 114 is specifically concerned with preamble structure. It discusses
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`testing preformed to evaluate a number of potential structures. (Id. at 1-2.) The
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`structures under consideration include CAZAC sequences and cyclically shifted
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`CAZAC sequences. The structures under consideration do not include cyclic
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`prefixes. Panasonic 114 states, based on the tests discussed therein, that “we
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`propose to choose cyclic-shifted Zadoff-Chu CAZAC sequence mainly.” (Id. at 2.)
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`Panasonic 114 then goes on to discuss additional aspects of the preamble
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`structure, including a section on “how to fulfill the possible preamble field using
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`preamble sequence.” (Id. at 2.) Panasonic 114 notes that two approaches have been
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`proposed, either “multiple short CAZAC sequences” or “one long CAZAC
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`sequence.” (Id.) Panasonic 114 then explains that its recommendation to use
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`cyclic-shifted sequences bears on this issue: “cyclic-shifted CAZAC sequence
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`requires relatively long sequence.” (Id. at 3 (emphasis added).) Panasonic 114
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`therefore recommends a long sequence:
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`We propose the N=449 (prime number) cyclic-shifted CAZAC
`sequences with also use different CAZAC sequences for the
`preambles. For supporting larger cell size, repeating this
`sequence twice (i.e. 800 µsec) can be used.
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`(Id.)
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`Panasonic 114’s proposed structure does not include a cyclic prefix. In
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`addition, because Panasonic 114’s proposal “requires relatively long sequence,”
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`whereas Panasonic 792 and Panasonic 700 disclosed multiple short sequences,
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`Panasonic 114 on its face rejects, and cannot be combined with, the structure
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`disclosed in Panasonic 792 and Panasonic 700.
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`4.
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`Other cyclic shift references
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`Petitioners and their expert Dr. Min therefore rely upon a proposed
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`combination of two distinct preamble structures which, based on the evidence put
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`forth by Petitioners, are incompatible. Neither Petitioners nor Dr. Min address this
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`glaring discrepancy between the conclusory assertion that “the skilled artisan
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`would have found it obvious to try Panasonic 114’s approach of using cyclic-
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`shifted Zadoff-Chu sequences with the preamble structure of Panasonic 792,” (758
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`Pet. at 38; Ex. 1014 at ¶ 101; see also Ex. 1036 at ¶ 92), and the actual disclosure
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`of Panasonic 114 that “cyclic-shifted CAZAC sequence requires relatively long
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`sequence,” which forecloses combining that reference with the multiple short
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`sequences taught by Panasonic 792 and Panasonic 700.
`
`Petitioners and their expert Dr. Min apparently recognize that Panasonic 114
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`teaches away from its combination with the earlier Panasonic references, as they
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`go on to assert—without explanation—that, “[e]ven without Panasonic 114’s
`
`teachings, the skilled artisan would have known about the benefits of cyclically
`
`shifting the Zadoff-Chu sequence based on the state of the art at the relevant time.”
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`(758 Pet. at 38; Ex. 1014 at ¶ 102; Ex. 1036 at ¶ 93.) Petitioners and their expert
`
`fail to provide any analysis to support this statement, other than two additional
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`sentences similarly asserting the benefits were known followed by citations,
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`without explanation, to various references. (758 Pet. at 38; Ex. 1014 at ¶ 102; Ex.
`
`1036 at ¶ 93.) No analysis whatsoever is provided as to how any of these additional
`
`references would suggest to a person of ordinary skill in the art that the structure
`
`disclosed in Panasonic 792 and Panasonic 700 should be modified to include
`
`cyclically shifted CAZAC sequences.
`
`5.
`
`Chu
`
`Chu refers to the publication “Polyphase Codes With Good Periodic
`
`Correlation Properties,” from the July 1972 IEEE Transactions on Information
`
`Theory. (Ex. 1004.) Chu describes the sequences known as Zadoff-Chu sequences.
`
`Chu also describes certain mathematical properties of such sequences. Chu does
`
`not, however, discuss any of the potential applications of such sequences and in
`
`particular, Chu does not discuss the use of such sequences to generate a preamble
`
`sequence for use in a mobile communication system, as claimed by the ’481 patent.
`
`Chu therefore adds nothing to the disclosures of Panasonic 792, Panasonic 700, or
`
`Panasonic 114 as it relates to the challenged claims.
`
`
`
`6. Motorola 595
`
`Motorola 595 refers to United States Patent Application Publication No. US
`
`2007/0058595, titled “Method and Apparatus for Reducing Round Trip Latency
`
`and Overhead Within a Communication System.” Motorola 595 generally relates
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`U.S. Patent No. 8,218,481
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`to the radio frame structure, rather than the structure of a preamble sequence for
`
`use in the random access channel. (See, e.g., Ex. 1040 at ¶ 4.) Motorola 595
`
`therefore also adds nothing to the disclosures of Panasonic 792, Panasonic 700, or
`
`Panasonic 114 as it relates to the claimed preamble sequences of the ’481 patent.
`
`C. References from 1349 Petition
`1.
`IEEE802.16-2004
`IEEE802.16-2004 is a standard published in 2004 by IEEE that “specifies
`
`the air interface of fixed broadband wireless (BWA) systems supporting
`
`multimedia services.” (Ex. 1054 at 6.) The 802.16 standard, also known as
`
`WiMAX, is a 4G technology developed by the IEEE, and therefore represented an
`
`alternative to the LTE technology of which the ’481 patent is a part.
`
`The Petition relies on what IEEE802.16-2004 defines as “the long preamble”
`
`as allegedly disclosing the claimed preamble structure of the ’481 patent.
`
`IEEE802.16-2004 describes this preamble as follows:
`
`[The long preamble] consists of two consecutive OFDM
`symbols. The first OFDM symbol uses only subcarriers the
`indices of which are a multiple of 4. As a result, the time
`domain waveform of the first symbol consists of four
`repetitions of 64-sample fragment, preceded by a CP. The
`second OFDM symbol utilizes only even subcarriers, resulting
`in time domain structure composed of two repetitions of a 128-
`sample fragment, preceded by a CP.
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`U.S. Patent No. 8,218,481
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`
`(Ex. 1054 at 483.)
`
`Figure 205 of IEEE802.16-2004 depicts the time domain structure of the
`
`long preamble:
`
`
`
`The preamble structure suggested in IEE802.16-2004 is therefore for all
`
`material purposes the same as that proposed in Jung: both involve transmission of
`
`subsequences and multiple cyclic prefixes. Just as in Jung, IEEE802.16-2004
`
`discloses dividing a first sequence into subsequences which are then transmitted.
`
`IEEE802.16-2004 also discloses that each preamble sequence has its own CP in the
`
`same manner as Jung. IEEE802.16-2004 therefore does not disclose “generating
`
`said preamble sequence by concatenating a single cyclic prefix (CP) to a front end
`
`of said consecutive sequence,” the limitation added to the ’481 patent claims
`
`during prosecution by LG Electronics after the rejection based on Jung.
`
`IEEE802.16-2005
`2.
`IEEE802.16-2005 is an amendment to the IEEE 802.16 standard published
`
`in 2005, which “updates and expands IEEE Std 802.16-2004 to allow for mobile
`
`subscriber stations.” (Ex. 1057 at 4.) While IEEE802.16-2005 “provides
`
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`IPR 2016-00758
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`enhancements” to support mobile subscriber stations, the amendment also states
`
`that “[f]ixed IEEE 802.16 subscriber capabilities are not compromised.” (Ex. 1057
`
`at 43.) In particular, the preamble structure disclosed in IEEE802.16-2004 was
`
`unchanged by the 2005 amendment. (See Ex. 1057 at 365 (indicating no
`
`amendment to preamble structure of § 8.3.3.6).) IEEE802.16-2005 therefore fails
`
`to remedy the missing disclosures of IEEE802.16-2004 with respect to the claim
`
`limitations added to the ’481 patent during prosecution.
`
`Chou
`3.
`Chou is United States Patent No. 8,977,258, titled “System and Method for
`
`Communicating with Fixed and Mobile Subscriber Stations in Broadband Wireless
`
`Access Networks.” Chou generally relates to wireless communications using an
`
`IEEE 802.16 network. Chou references the use of preambles to establish
`
`synchronization between a base station and a subscriber station, but does not
`
`include any description or disclosure regarding the structure of the preamble. (See,
`
`e.g., Ex. 1059 at 6:29-31.) Chou therefore also fails to provide any disclosure
`
`relating to the ’481 patent’s claim limitations that are missing from IEEE802.16-
`
`2004.
`
`Tan
`4.
`Tan is United States Patent No. 8,000,305, titled “Preamble Sequencing for
`
`Random Access Channel in a Communication System.” Tan generally relates to
`
`22
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`initializing a communications system using spread sequences. (Ex. 1074, Abstract.)
`
`Tan describes a RACH preamble structure that includes both frequency spreading
`
`with a Chu-sequence and time spreading with another type of sequence, a Walsh
`
`sequence. (Id. at 4:32-43.) The 1349 Petition relies upon Tan only for dependent
`
`claims and does not rely upon Tan with respect to the preamble structure described
`
`in the independent claims of the ’481 patent. Tan therefore also fails to provide any
`
`disclosure relating to the independent claim limitations that are missing from
`
`IEEE802.16-2004.
`
`III. CLAIM CONSTRUCTION
`In this proceeding, the claims must be given their broadest reasonable
`
`construction in light of the specification. See 37 C.F.R. 42.100(b). The proper
`
`construction should consider the patent’s prosecution history. Microsoft Corp. v.
`
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Even under the broadest
`
`reasonable interpretation, the Board’s construction ‘cannot be divorced from the
`
`specification and the record evidence.’” Id. (quoting In re NTP, Inc., 654 F.3d
`
`1279, 1288 (Fed. Cir. 2011). “A construction that is ‘unreasonably broad’ and
`
`which does not ‘reasonably reflect the plain language and disclosure’ will not pass
`
`muster.” Microsoft, 789 F.3d at 1298 (quoting In re Suitco Surface, Inc., 603 F.3d
`
`1255, 1260 (Fed. Cir. 2010)).
`
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`Petitioners address claim construction with respect to the preambles of
`
`claims 1 and 8, the term “repeating a specific sequence having a length (L), N
`
`times to generate a consecutive sequence having a length (N*L)” in claims 1 and 8,
`
`and the terms “a preamble generation unit” and “a transmission unit” in claim 8
`
`(758 Pet. at 21-23; 1342 Pet. at 24-26; 1349 Pet. at 6-13.) Patent Owner takes no
`
`position on Petitioners’ proposed constructions. Under any construction of the
`
`terms addressed by Petitioners, the Petition fails to establish by a preponderance of
`
`the evidence that claims 3-4, 6, 10-11, or 13 are invalid. The claim construction
`
`discussions in the petitions are therefore not relevant.
`
`The arguments advanced in the 1349 Petition, however, require that a claim
`
`phrase for which Petitioners did not offer a construction be addressed in this Patent
`
`Owner Response. Specifically, the phrase “generating said preamble sequence by
`
`concatenating a single cyclic prefix to a front end of said consecutive sequence”
`
`places two limitations on the claimed structure which the Board should apply in
`
`evaluating the instituted grounds that rely upon IEEE802.16-2004 as a reference.
`
`First, the claimed preamble sequence can only include one cyclic prefix.
`
`This follows from the plain language, which requires “concatenating a single
`
`cyclic prefix.” If more than one cyclic prefix is concatenated to the consecutive
`
`sequence, this limitation is not met. The req
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