IPR 2016-00758
`U.S. Patent No. 8,218,481
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`ZTE (USA) Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner,
`
`V.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-00758
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 8,218,481
`
`
`
`
`
`U.S. Patent No. 8,218,481
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`ZTE (USA) Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner,
`
`V.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-00758
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 8,218,481
`
`
`
`
`
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`TABLE OF CONTENTS
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`FACTUAL BACKGROUND .......................................................................... 3
`
`A.
`
`B.
`
`The 8,218,481 Patent ............................................................................. 3
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`Overview of Petition for Inter Partes Review ...................................... 7
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`III. CLAIM CONSTRUCTION ............................................................................ 8
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`IV. Petitioners fail to establish a reasonable likelihood of success as to
`any challenged claim ....................................................................................... 9
`
`A.
`
`B.
`
`Legal Standard ....................................................................................... 9
`
`The Petition Fails on Its Face to Establish a Prima Facie Case
`of Anticipation or Obviousness ........................................................... 11
`
`1.
`
`The Petition fails to identify any disclosure in the Prior
`Art References for a required element present in every
`challenged claim ....................................................................... 11
`
`a.
`
`b.
`
`The Petition fails to identify a consecutive
`sequence within one frame ............................................. 12
`
`Petitioners’ expert fails to identify a consecutive
`sequence within one frame ............................................. 13
`
`2.
`
`3.
`
`The Petition fails to identify any disclosure in the Prior
`Art References for an element required by dependent
`claims 4 and 11 ......................................................................... 14
`
`The Petition fails to establish a motivation to combine or
`a reasonable expectation of success .......................................... 16
`
`V.
`
`CONCLUSION .............................................................................................. 18
`
`i
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`TABLE OF AUTHORITIES
`
`Cases
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 10
`
` Page(s)
`
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 10
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 10, 16
`
`KSR International Co. v. Teleflex Inc. et al,
`550 U.S. 398 (2007) ...................................................................................... 17, 18
`
`Mitsubishi Plastics, Inc. v. Celgard, LLC,
`Case No. IPR2014-00524, Paper 27 (Nov. 21, 2014) .......................................... 9
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 10
`
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 Fed. 1075 (Fed. Cir. 2008) ........................................................................... 10
`
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`Case IPR2013-00054, Paper 16 (July 13, 2013) ................................................ 17
`
`Statutes
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`35 U.S.C. § 314(a) ................................................................................................... 10
`
`35 U.S.C. § 371 .......................................................................................................... 3
`
`Other Authorities
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`37 C.F.R. § 42.20(c) ................................................................................................... 9
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.108(c) ................................................................................................. 9
`
`ii
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
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`submits this Preliminary Response to the above-captioned Petition for Inter Partes
`
`Review of U.S. Patent No. 8,218,481 (“Pet.,” Paper 1).
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`I.
`
`INTRODUCTION
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`The Petition should be denied because it fails to establish a reasonable
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`likelihood that Petitioners would prevail with respect to any claim challenged in
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`the Petition. Specifically, the Petition fails to show a reasonable likelihood that
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`each element of the asserted claims is present in the prior art and, for those
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`Grounds which rely on alleged obviousness, the Petition fails to establish either a
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`motivation to combine or a reasonable expectation of success.1
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`The Petition fails on its face to set forth a prima facie invalidity case with
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`respect to each and every challenged claim. In particular, the Petition asserts that
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`the Broadest Reasonable Interpretation of the term “a consecutive sequence,”
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`which appears in both independent claims and therefore must be met to set forth a
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`prima facie case of anticipation or obviousness with respect to every challenged
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`claim, is “limited to a consecutive sequence within one frame.” (Pet. at 22
`
`
`1 Patent Owner’s argument in this Preliminary Patent Owner Response is that
`Petitioners have failed to show that each and every element of the challenged
`claims is present or suggested in the Prior Art References and have failed to show a
`motivation to combine or reasonable expectation of success required for
`obviousness. Should the Board institute inter partes review, Patent Owner reserves
`the right to raise additional arguments in its formal response.
`1
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`(emphasis in original).) Petitioners affirmatively took upon themselves the burden
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`of establishing that this limitation, as construed, is present in the Prior Art
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`References.
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`After setting forth this construction on pages 21-23, however, the word
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`“frame” never again appears in the Petition. Indeed, Petitioners never applied their
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`construction to the Prior Art References and therefore did not establish that the
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`Prior Art References disclose a “consecutive sequence within one frame.”
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`Petitioners failed to meet their burden by failing to demonstrate that the claim
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`element “consecutive sequence” is disclosed in the references. Thus, a trial should
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`not be instituted.
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`The Petition similarly fails to set forth a prima facie invalidity case for
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`dependent claims 4 and 11. Those claims include the limitation “wherein a value of
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`said applied cyclic shift is determined as an integer multiple of a predetermined
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`shift unit.” (Ex. 1001 at 18:49-51, 19:13-15.) The Petition alleges that the Prior Art
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`References disclose “a predetermined shift unit.” (Pet. at 33-34.) The Petition fails,
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`however, to identify any alleged “integer multiple.” (See id. at 33-34, 35-36.)
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`Having once again failed to identify any disclosure in the Prior Art References for
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`a required claim element, the Petition fails on its face to demonstrate a reasonable
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`likelihood that Petitioners will prevail on dependent claims 4 and 11.
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`2
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`The Petition also fails, with respect to those Grounds that rely on alleged
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`obviousness, to establish a motivation to combine and a reasonable expectation of
`
`success. Petitioner bears the burden as to each of these issues. With respect to the
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`alleged motivation to combine, the Petition advances conclusory assertions that are
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`insufficient to meet that burden. The Petition’s treatment of the reasonable
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`expectation of success prong is even worse, neglecting entirely to address this
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`required element of a prima facie obviousness case. By failing to address these
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`necessary components for obviousness, the Petition must be denied.
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`Simply put, the Petition repeatedly fails to allege required elements of
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`Petitioners’ asserted invalidity Grounds and therefore necessarily fails to set forth a
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`prima facie case of invalidity with respect to any challenged claim. Because the
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`Petition fails to demonstrate a reasonable likelihood that Petitioners will prevail on
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`at least one challenged claim, the Petition should be denied.
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`II.
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`FACTUAL BACKGROUND
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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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`3
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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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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`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
`
`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, such as Petitioner ZTE, recognized and agreed that the claimed
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`inventions in the ’481 patent were innovative solutions to the problems faced
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`during the development of the standard.
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`The specification of the patent family that includes the ’481 patent discloses
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`data transmission methods for mobile communication systems that improve over
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`prior art systems in three ways: improved code sequences for use in such
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`transmissions, improved structures for the random access channels that enable user
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`equipment such as cell phones to access mobile communication networks, and
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`4
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`U.S. Patent No. 8,218,481
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`improved transmission methods that employ such sequences and random access
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`channels. (See, e.g., Ex. 1001 at 2:37-3:45.) The random access channel is used by
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`a user equipment to access a network when the user equipment is not yet
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`synchronized with the network, such as when the user equipment is first turned on
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`or after coming out of a prolonged idle state. (Ex. 1001 at 1:24-26.)
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`The claims of the ’481 patent itself are directed toward methods and
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`apparatuses for accessing a random access channel using a particular structure of a
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`code sequence. The claimed structure comprises a preamble sequence constructed
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`from consecutive sequences to which a single cyclic prefix is concatenated, as
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`shown in Figure 11:
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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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`5
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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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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`The claims of the ’481 patent contribute to at least two important benefits of
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`the 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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`easily identify preamble sequences transmitted on the random access channel. This
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`provides an efficient method that enables cell phones to quickly obtain
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`synchronization with cell towers, thus decreasing the latency experienced by users.
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`Second, repeating sequences provides an elegant means of enabling
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`flexibility in cell sizes in a deployed cellular system. Generally, urban areas with
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`higher density populations and obstacles such as large buildings require numerous
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`small cells, whereas rural areas with lower density populations can be serviced by
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`a smaller number of large cells. Large cells, however, cause longer delay time for
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`signal transmission, which necessitates the use of longer preamble sequences. (See
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`Ex. 1001 at 2:37-44.) The claims of the ’481 patent therefore provide an elegant,
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`6
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`novel mechanism to alter the length of a preamble sequence through repetition of a
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`specific sequence, thus enabling a cellular system which deploys smaller cells in
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`more densely populated areas and larger cells in rural areas. (See Ex. 1001 at
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`11:46-12:17.)
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`The dependent claims add additional steps to the method that provide further
`
`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 are orthogonal to each other,
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`enabling a cell tower to differentiate between preamble sequences transmitted by
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`different cell phones. Claims 4 and 6 recite methods of applying the cyclic shift of
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`claim 3. The remaining challenged claims, 8-11 and 13, are directed toward
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`apparatuses configured to use the inventive methods of claims 1-4 and 6.
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`B. Overview of Petition for Inter Partes Review
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`Petitioners base their Petition for IPR on three Grounds. Ground 1 asserts
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`that claims 1-2 and 8-9 are anticipated by Panasonic 792, a submission from
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`Panasonic for a meeting occurring on March 27-31, 2006 as part of the process of
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`7
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`developing the Long Term Evolution (“LTE”) mobile communications standard.
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`Ground 2 asserts that claims 3-4 and 10-11 are obvious over Panasonic 792 and
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`Panasonic 114, another submission from Panasonic for a subsequent meeting,
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`which proposes a different structure for a preamble sequence from that proposed in
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`Panasonic 792. Ground 3 asserts that claims 6 and 13 are obvious over Panasonic
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`792, Panasonic 114, and Chu, a paper published in 1972.
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`III.
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`CLAIM CONSTRUCTION
`
`Petitioner asserts that the Broadest Reasonable Interpretation of “a
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`consecutive sequence having a length (N*L)” is “a consecutive sequence, having a
`
`length (N*L), that is entirely within one frame.” (Pet. at 23.) This limitation is
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`present in the two challenged independent claims, Nos. 1 and 8. No dependent
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`claim further narrows or modifies this claim term. Therefore, this limitation, as
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`construed by Petitioners, is required for every challenged claim
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`For only purposes of this Preliminary Patent Owner Response, Patent Owner
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`does not dispute Petitioners’ construction.2 Petitioners’ proposed claim
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`construction should therefore control the institution decision, which must be made
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`based on the arguments presented by the parties, as the Board has made clear:
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`2 Should the Board institute inter partes review, Patent Owner reserves the right to
`challenge Petitioners’ proposed construction. Patent Owner also reserves the right
`to assert its own claim constructions in the district court litigation.
`8
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`The question before the Board is whether Petitioner has shown
`that the record in this proceeding establishes a reasonable
`likelihood that claims are unpatentable. Inter partes reviews are
`adversarial, adjudicative proceedings; as such, the Board’s
`findings in inter partes reviews rely on the arguments provided
`by the parties in their papers . . . . Petitioners have the
`responsibility to present, through argument and evidence, a
`reasonable likelihood of unpatentability of the challenged
`claims.
`
`Mitsubishi Plastics, Inc. v. Celgard, LLC, Case No. IPR2014-00524, Paper 27, at 8
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`(Nov. 21, 2014).
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`By its own terms, the Petition here cannot meet the statutorily required
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`burden statutorily required for institution absent evidence that the limitation “a
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`consecutive sequence, having a length (N*L), that is entirely within one frame” is
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`disclosed in the Prior Art References. No other argument in support of institution
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`has been presented by Petitioners, and no argument is presented at this stage by
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`Patent Owner that a different claim construction should apply.
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`IV.
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`PETITIONERS FAIL TO ESTABLISH A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED CLAIM
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`A. Legal Standard
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`As the moving party, a petitioner “has the burden of proof to establish that it
`
`is entitled to the requested relief.” 37 C.F.R. § 42.20(c). “Inter partes review shall
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`not be instituted for a ground of unpatentability unless the Board decides that the
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`9
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`petition supporting the ground would demonstrate a reasonable likelihood that at
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`least one of the claims challenged in the petition is unpatentable.” § 42.108(c).
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`A claim is anticipated only when “every element and limitation of the claim
`
`was previously described in a single prior art reference, either expressly or
`
`inherently.” Sanofi-Synthelabo, Inc. v. Apotex, Inc., 550 Fed. 1075, 1082 (Fed. Cir.
`
`2008) (emphasis added). Similarly, “obviousness requires a suggestion of all
`
`limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (emphasis added). In addition, a party asserting obviousness bears
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`the burden to demonstrate both “that a skilled artisan would have been motivated
`
`to combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
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`success in doing so.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
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`1342, 1360 (Fed. Cir. 2012) (quoting Procter & Gamble Co. v. Teva Pharm. USA,
`
`Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (internal quotation marks omitted)); In re
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`Cyclobenzaprine Hydrochloride Extended—Release Capsule Patent Litig., 676
`
`F.3d 1063, 1068-69 (Fed. Cir. 2012).
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`Inter partes review may not be authorized unless “the information presented
`
`in the petition . . . and any response . . . shows that there is a reasonable likelihood
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`10
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a).
`
`B.
`
`The Petition Fails on Its Face to Establish a Prima Facie Case of
`Anticipation or Obviousness
`
`1.
`
`The Petition fails to identify any disclosure in the Prior Art
`References for a required element present in every
`challenged claim
`
`The statutory framework requires that the Petition establish a reasonable
`
`likelihood that every limitation of at least one claim is described or suggested in
`
`the Prior Art References in order for an inter partes review to be instituted. This
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`includes the limitation “a consecutive sequence having a length (N*L).” This
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`limitation is present in both independent claim 1 and independent claim 8 and is
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`therefore a required element of each and every challenged claim.
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`Petitioners must establish a reasonable likelihood that the Prior Art
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`References describe a consecutive sequence entirely within one frame. Petitioners
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`fail, however, to address this limitation—after asserting that this construction is
`
`required, the word “frame” never again appears in the Petition. The Petition never
`
`discusses or references the existence or size of a frame in any of the Prior Art
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`References, much less that the alleged consecutive sequence disclosed in the Prior
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`Art References is entirely within one frame. The Petition simply fails to address
`
`whether or not the consecutive sequence allegedly disclosed in the Prior Art
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`11
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`References is entirely within one frame. Having failed to address this element of
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`the limitation as construed, Petitioners cannot meet their burden to establish a
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`reasonable likelihood that the limitation is met or suggested by the Prior Art
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`References.
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`a.
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`The Petition fails to identify a consecutive sequence
`within one frame
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`The Petition relies upon Panasonic 792 for the alleged disclosure of the
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`“consecutive sequence.” (Pet. at 24-25.) The Petition asserts that Panasonic 792’s
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`preamble structure “consists of M repetitions of a CAZAC sequence having a
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`length of N=73 (1.25 MHz) or N=293 (5MHz).” (Pet. at 25.) The Petition also
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`states that “[e]ach of the M repetitions has a length of 512 samples, which
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`corresponds to 66.67us.” (Id.)
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`But the Petition fails to assert that the M repetitions occur entirely within
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`one frame or otherwise address or discuss the frame size relative to the alleged
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`consecutive sequence disclosed in Panasonic 792. Indeed, Panasonic 792 does not
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`include any discussion as to the existence of a frame, the size of the frame, or that
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`the alleged consecutive sequence is entirely within such alleged frame.3 As such,
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`3 To be clear, Petitioners do not rely on any other reference for allegedly disclosing
`the “consecutive sequence” limitation outside of Panasonic 792.
`12
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`the Petition fails as Panasonic 792 does not disclose “consecutive sequence” as
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`construed by Petitioners. Thus, the Petition should be denied.
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`b.
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`Petitioners’ expert fails to identify a consecutive
`sequence within one frame
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`Petitioners’ expert also fails to address whether or not the Prior Art
`
`References disclose a consecutive sequence within one frame. Petitioners’ expert
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`acknowledges Petitioners’ assertion that “a consecutive sequence having a length
`
`(N*L)” is to be construed as “a consecutive sequence, having a length (N*L), that
`
`is entirely within one frame.” (Ex. 1014 at ¶ 53.) Petitioners’ expert also declares
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`that, “I have used this proposed construction for this term.” (Ex. 1014 at ¶ 54.)
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`Petitioners’ expert fails, however, to actually apply the construction.
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`Instead, just as in the Petition, the expert declaration merely alleges that
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`Panasonic 792 discloses a consecutive sequence and never addresses whether or
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`not there is an alleged frame disclosed and whether the alleged consecutive
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`sequence occurs entirely within one frame:
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`60. The preamble structure consists of M repetitions of a CAZAC
`sequence having a length of N=73 (1.25 MHz) or N=293 (5MHz).
`(Ex. 1002, Panasonic 792, at § 2.2.) Each CAZAC sequence is a
`Zadoff-Chu sequence. (Ex. 1002, Panasonic 792, at § 2.2.) Each of
`the M repetitions has a length of 512 samples, which corresponds to
`66.67us. (Ex. 1002, Panasonic 792, at § 2.2, Fig. 1.)
`
`61. Based on Figure 1 of Panasonic 792, a person of ordinary skill in
`the art would have understood that the part of the preamble structure
`emphasized above (e.g., “the consecutive sequence”) may be
`13
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`generated by repeating the CAZAC sequence (e.g., “a specific
`sequence”) M times.
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`(Ex. 1014 at ¶¶ 60-61.) Like Petitioners, Petitioners’ expert fails to identify
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`anywhere in Panasonic 792 the existence of a frame, the size of any alleged frame,
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`and whether the consecutive sequence is entirely within such alleged frame. As
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`such, Petitioners’ expert fails to overcome the deficiencies in the Petition.
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`Simply put, Petitioners and their expert have failed to apply the construction
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`“a consecutive sequence, having a length (N*L), that is entirely within one frame.”
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`Having failed to allege, much less demonstrate, that Panasonic 792 (or any other
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`Prior Art Reference) discloses or suggests a consecutive sequence entirely within
`
`one frame, the Petition fails to set forth a prima facie case of unpatentability with
`
`respect to any challenged claim.
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`2.
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`The Petition fails to identify any disclosure in the Prior Art
`References for an element required by dependent claims 4
`and 11
`
`The Petition fails to establish a reasonable likelihood that challenged claims
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`4 and 11 are unpatentable for the reasons set forth above because those claims
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`depend from, and include the limitations of, independent claims 1 and 8. Beyond
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`this failure, however, the Petition also fails to establish a reasonable likelihood that
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`claims 4 and 11 are unpatentable due to an additional failure to identify any
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`disclosure in the Prior Art References for a required element of those dependent
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`14
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`claims themselves. Specifically, claims 4 and 11 both include the limitation
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`“wherein a value of said applied cyclic shift is determined as an integer multiple of
`
`a predetermined circular shit unit.” (Ex. 1001 at 18:49-51, 19:13-15.) This
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`limitation therefore requires “an integer multiple,” and, separately, “a
`
`predetermined shift unit.”
`
`The Petition relies upon Panasonic 114 for allegedly disclosing this
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`limitation. (Pet. 33.) The Petition alleges that Panasonic 114 discloses multiple
`
`“examples of predetermined circular shift units.” (Pet. at 34.) The Petition first
`
`notes that “Panasonic 114 discloses cyclic-shifted CAZAC sequences with indices
`
`of cyclic shift (m) ranging from 1 to 8,” and asserts that these “indices of cyclic
`
`shift (m) serve as examples of predetermined circular shift units.” (Pet. at 33-34.)
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`(emphasis added) The Petition goes on to state that “Panasonic 114 also discloses
`
`that the cyclic-shifted CAZAC has a ‘shift duration’ of ‘50usec,’” and alleges that
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`this “shift duration also serves as an example of a predetermined circular shift
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`unit.” (Pet. 34.) (emphasis added).
`
`The Petition is silent, however, on the required “integer multiple.” Even the
`
`concluding sentence in this subsection of the Petition alleges only that “Panasonic
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`114 discloses applying a cyclic shift based on a predetermined circular shift unit.”
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`(Pet. 34.) But challenged claims 4 and 9 require more: “said applied cyclic shift is
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`15
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`determined as an integer multiple of a predetermined circular shift unit.” (Ex.
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`1001 at 18:49-51, 19:13-15 (emphasis added).) At no point does the Petition
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`identify any disclosure in Panasonic 114 (or any other Prior Art Reference) for this
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`required element of claims 4 and 11. As such, the Petition fails on its face to set
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`forth a basis for obviousness and therefore cannot establish a reasonable likelihood
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`that claims 4 and 11 are unpatentable.
`
`Likewise, Petitioners’ expert fails to identify any disclosure in Panasonic
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`114 for limitation “integer multiple.” Just like the Petition, Petitioners’ expert
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`merely recites verbatim the two examples of “predetermined circular shift units”
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`that were identified in the Petition. Ex. 1014 at ¶¶89-90, 96. Thus, Petitioners’
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`expert has not cited any disclosure in Panasonic 114 that allegedly discloses the
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`limitation “integer multiple” in challenged claims 4 and 11. As such, the Petition
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`should be denied as to these claims for this independent reason.
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`3.
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`The Petition fails to establish a motivation to combine or a
`reasonable expectation of success
`
`Grounds 2 and 3 of the Petition, which challenge claims 3-4, 6, 10-11, and
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`13, rely upon combining at least Panasonic 114 and Panasonic 792. In order to
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`establish a prima facie case of invalidity with respect to Grounds 2 and 3,
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`Petitioners are therefore required not only to establish that the prior art discloses
`
`each element and limitation of the claims—which they have not—but also to
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`16
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`establish both a motivation to combine and a reasonable expectation of success.
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`Kinetic Concepts, 688 F.3d at 1360. Petitioners here have failed to meet their
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`burden again.
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`First, as to motivation to combine, the Petition’s allegations are conclusory
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`and unsupported by evidence. The Petition simply asserts that combining the
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`references would be “a matter of common sense,” “a routine design choice,” and
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`“obvious to try” and cites to a single paragraph in Petitioners’ expert declaration
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`for alleged support. (Pet. at 38.) These conclusory assertions are not sufficient to
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`establish a motivation to combine. See KSR International Co. v. Teleflex Inc. et al,
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`550 U.S. 398, 418 (2007) (“To facilitate review [of whether there was a
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`motivation to combine], this analysis must be explicit.”); Wowza Media Sys., LLC
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`v. Adobe Sys., Inc., Case IPR2013-00054, Paper 16 at pp. 5-6 (July 13, 2013)
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`(noting that “conclusory statements [do not] provide any convincing rationale as to
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`why one of ordinary skill in the art would have chosen to [combine references]”).
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`The paragraph of Petitioners’ expert declaration to which the Petition relied
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`on fares no better. Indeed, that paragraph is identical to the conclusory allegations
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`of the Petition itself, except for the citations within the Petition to the declaration.
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`(Compare Pet. at 38 with Ex. 1014, ¶ 101.) The declaration therefore “simply
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`track[s] and repeat[s] the arguments for unpatentability presented in the Petition”
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`17
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`and is “not . . . helpful as support for Petitioner’s assertions.” Wowza Media Sys.,
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`Case IPR2013-00054, Paper 16 at 4. The Petition therefore fails to establish a
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`motivation to combine.
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`Second, as to demonstrating a reasonable expectation of success, the
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`Petitioners fare even worse. The Petition fails entirely to address this required
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`element of a prima facie case of obviousness. KSR, 550 U.S. at 416. At no point
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`does the Petition assert that a person of ordinary skill in the art would have had a
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`reasonable expectation of success in combining Panasonic 792 and Panasonic 114
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`and/or Chu. Likewise, Petitioners’ expert does not offer any testimony or evidence
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`regarding any alleged reasonable expectation of success that the proposed
`
`combination would work. By failing, again, to even include allegations regarding
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`a required element of Petitioners’ invalidity theory, the Petition fails on its face to
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`meet the statutorily required burden for institution of inter partes review.
`
`V.
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`CONCLUSION
`
`Petitioners have not established a reasonable likelihood that any challenged
`
`claim is unpatentable. Petitioners’ burden for institution is to demonstrate that the
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`prior art shows “a consecutive sequence, having a length (N*L), that is entirely
`
`within one frame.” The Petition fails on its face to even attempt to establish that
`
`the Prior Art References disclose a consecutive sequence entirely within one
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`18
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`IPR 2016-00758
`U.S. Patent No. 8,218,481
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`frame, and the Petitioners therefore necessarily failed to meet the statutorily
`
`required burden for institution.
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`In addition, with respect to dependent claims 4 and 11, the Petition fails to
`
`address the required element of “an integer multiple.” The Petition therefore again
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`fails on its face to set for a prima facie case of obviousness with respect to those
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`dependent claims and therefore cannot meet the statutorily required burden for
`
`institution as to dependent claims 4 and 11.
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`Finally, even if the Petition had addressed every element and limitation of
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`any claim, it fails to establish a motivation to combine or a reasonable expectation
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`of success in support of the asserted obviousness of the challenged claims.
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`Grounds 2 and 3 of the Petition therefore fail.
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`Because Petitioners have not established a reasonable likelihood that any
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`challenged cla
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