Paper No. 38
`Filed August 9, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, 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.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`
`Case IPR2016-007581
`Patent 8,218,481 B2
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`1 IPR2016-001342 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.
`
`
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`
`I. 
`
`II. 
`
`Table of Contents
`Introduction ...................................................................................................... 1 
`
`Claim Construction .......................................................................................... 3 
`
`A. 
`
`B. 
`
`EW misinterprets the claim phrase by impermissibly
`substituting “said consecutive sequence” with “said
`preamble sequence,” upsetting the plain claim language ..................... 4 
`
`The prosecution history is not sufficiently clear to
`constitute a waiver of claim scope ........................................................ 7 
`
`III.  Arguments for Panasonic Grounds ................................................................ 14 
`
`A. 
`
`B. 
`
`Panasonic 114 does not teach away. ................................................... 15 
`
`Petitioner explained how skilled artisans would have
`combined the Panasonic references..................................................... 16 
`
`IV.  Arguments for IEEE802.16-2004 Grounds ................................................... 19 
`
`A. 
`
`IEEE802.16-2004 satisfies the “generating said preamble
`sequence” claim feature ...................................................................... 19 
`
`1. 
`
`2. 
`
`IEEE802.16-2004 clearly satisfies the “generating
`said preamble sequence” feature under the correct
`claim construction ..................................................................... 19 
`
`IEEE802.16-2004 satisfies the “generating said
`preamble sequence” feature because IEEE802.16-
`2004 discloses a preamble structure distinct from
`Jung’s preamble structure ......................................................... 20 
`
`B. 
`
`Petitioner has articulated sufficient reasons to support the
`combination of IEEE802.16-2004 and Tan ........................................ 22 
`
`1. 
`
`Even assuming EW’s conclusory technical
`contention were true, the 1349-Petition has
`demonstrated sufficient reasons for the proposed
`combination ............................................................................... 24 
`
`
`
`i
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`
`2. 
`
`EW’s attack on the only contested implementation
`example of the combination is not credible and
`fails to be supported by the evidence of record ........................ 28 
`
`3. 
`
`EW’s technical contentions underlying its attack
`on the IEEE802.16-2004/Tan combination are
`unsupported and wrong ............................................................. 30 
`
`V. 
`
`Conclusion ..................................................................................................... 35 
`
`
`
`
`
`
`ii
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`
`Exhibit List
`
`Short Name
`
`Exhibit No.2
`2016-
`2016-
`2016-
`01349
`00758
`01342
`1001 1001 1001 481 Patent
`1002
`
`
`Panasonic 792
`
`Description
`
`1003 1003
`
`
`
`Panasonic 114
`
`1004 1004 1020 Chu
`
`U.S. Patent No. 8,218,481
`“Random access burst evaluation in E-
`UTRA uplink,” 3GPP Tdoc R1-060792,
`Panasonic, TSG-RAN WG1 Meeting
`#44bis, Athens, Greece, March 27-31,
`2006
`“Random access design for E-UTRA
`uplink,” 3GPP Tdoc R1-061114,
`Panasonic, TSG-RAN WG1 Meeting #45,
`Shanghai, China, May 8-12, 2006
`“Polyphase Codes With Good Periodic
`Correlation Properties,” D.C. Chu, IEEE
`Transactions on Information Theory, pp.
`531-32, July 1972
`481 File History File History of U.S. Patent Application
`No. 12/303,947, which issued as the 481
`Patent
`“RACH design for E-UTRA,” 3GPP Tdoc
`R1-060797, Huawei, TSG-RAN WG1
`Meeting #44bis, Athens, Greece, March
`27-31, 2006
`U.S. Patent No. US 7,702,028
`Samsung 028
`Motorola/TI 893 “Proposal for RACH Preambles,” 3GPP
`Tdoc TSGR1#6(99)893, Motorola and
`Texas Instruments, TSG-RAN WG1
`Meeting #6, Espoo, Finland, July 13-16,
`1999
`
`1005 1005
`
`1006 1006
`
`1007 1007
`1008 1008
`
`
`
`
`
`
`
`
`Huawei 797
`
`
`2 Pursuant to Paper 24 in IPR2016-00758, Petitioners refiled in the consolidated
`IPR2016-00758 proceeding the exhibits filed in IPR2016-01342 and IPR2016-
`01349 but not filed in IPR2016-00758. This exhibit list identifies corresponding
`exhibit numbers from the -1342 and -1349 proceedings where applicable.
`
`iii
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`Exhibit No.2
`2016-
`2016-
`00758
`01342
`1009 1009
`
`Short Name
`
`Description
`
`TI 058
`
`2016-
`01349
`
`
`1010 1010
`
`
`
`1011 1011
`
`
`
`1012 1012
`
`
`
`1013 1013
`
`
`
`
`1014
`
`1015
`
`1016
`1017 1017
`1018 1018
`1019
`
`1020
`
`
`1021
`
`
`
`1022 1022
`
`
`
`
`
`
`
`
`
`
`
`
`
`“RACH Preamble Design,” 3GPP Tdoc
`R1-051058, Texas Instruments, TSG-RAN
`WG1 Meeting #42bis, San Diego, USA,
`October 10-14, 2005
`“Random Access Sequence Design,”
`3GPP Tdoc R1-060884, Motorola, TSG-
`RAN WG1 Meeting #44-bis, Athens,
`Greece, March 24-26, 2006
`“On the performances of LTE RACH,”
`3GPP Tdoc R1-060908, Nortel Networks,
`TSG-RAN WG1 Meeting #44-bis, Athens,
`Greece, March 27-31, 2006
`“A new preamble shape for the Random
`Access preamble in E-UTRA,” 3GPP Tdoc
`R1-060867, Texas Instruments, TSG-RAN
`WG1 Meeting #44-bis, Athens, Greece,
`March 27-31, 2006
`“Investigations on Random Access
`Channel Structure for E-UTRA Uplink,”
`3GPP Tdoc R1-060992, NTT DoCoMo
`and NEC, TSG-RAN WG1 Meeting
`#44bis, Athens, Greece, March 27-31,
`2006
`Declaration of Paul S. Min, Ph.D
`Min -758
`Declaration of Zuo Zhisong
`Zhisong -758
`Affidavit of Christopher Butler
`Butler -758
`Printout of 3GPP FAQs
`3GPP FAQs
`Delegates Corner Printout of Delegates Corner
`44bis Docs
`Printout of 44bis Docs FTP
`
`3/21/06 Hiramatsu Printout of archived version of e-mail from
`E-Mail
`Katsuhiko Hiramatsu to RAN1’s e-mail
`exploder list on March 21, 2006
`Printout of list of Tdocs submitted at
`RAN1 Meeting 44bis
`Printout of 45 Docs FTP
`
`Motorola 884
`
`Nortel 908
`
`TI 867
`
`NTT/NEC 992
`
`Tdoclist 44bis
`
`45 Docs
`
`iv
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`Exhibit No.2
`2016-
`2016-
`00758
`01342
`1023 1023
`
`Short Name
`
`Description
`
`5/2/06 Hiramatsu
`E-Mail
`
`2016-
`01349
`
`
`1024 1024
`
`1025 1025
`
`1026 1026
`1027 1027
`1028 1028
`1029 1029
`
`1030 1030
`
`1031
`
`
`
`1032 1032
`1033 1033
`
`1034 1034
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1035 1002
`
`
`
`1036 1014
`1037 1015
`1038 1016
`1039 1019
`
`
`
`
`
`
`Printout of archived version of e-mail from
`Katsuhiko Hiramatsu to RAN1’s e-mail
`exploder list on May 2, 2006
`Printout of list of Tdocs submitted at
`RAN1 Meeting 45
`Printout of IEEE Xplore Abstract
`(Citations) - Polyphase codes with good
`periodic correlation properties (Corresp.)
`U.S. Patent No. 7,746,916
`LG 916
`U.S. Patent No. 5,553,153
`153 Patent
`284 Publication U.S. Patent App. Pub. 2004/0047284
`3GPP FAQs
`Printout of archived version of 3GPP
`Archive
`Frequency Asked Questions
`4/30/06 List
`Printout of archived version of LISTSERV
`Archives
`Archives at LIST.ETSI.ORG
`44bis Participant
`Printout of 3GPP Meeting Registration
`List
`45 Participant List Printout of 3GPP Meeting Registration
`Excerpts from Dahlman, Erik. 3G
`Dahlman
`Evolution: HSPA and LTE for Mobile
`Broadband. Amsterdam: Academic, 2008
`“On Uplink Pilot in EUTRA SC-FDMA,”
`3GPP Tdoc R1-051062, Texas
`Instruments, TSG-RAN WG1 Ad Hoc on
`LTE, San Diego, USA, October 10-14,
`2005
`“RACH preamble evaluation in E-UTRA
`uplink,” 3GPP Tdoc R1-060700,
`Panasonic, TSG-RAN WG1 Meeting #44,
`Denver, USA, February 13-17, 2006
`Declaration of Paul S. Min, Ph.D
`Declaration of Zuo Zhisong
`Affidavit of Christopher Butler
`Printout of 44 Docs FTP
`
`Tdoclist 45
`
`Chu Citations
`
`TI 062
`
`Panasonic 700
`
`Min -1342
`Zhisong -1342
`Butler -1342
`44 Docs
`
`v
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`Exhibit No.2
`2016-
`2016-
`00758
`01342
`1040 1020
`
`2016-
`01349
`
`
`1041 1021
`
`1042 1031
`1043 1035
`1044 1036
`1045 1037
`
`1046 1038
`
`
`
`
`
`
`
`
`
`
`Short Name
`
`Description
`
`Motorola 595
`
`Tdoclist 44
`
`Motorola 025
`
`U.S. Patent App. Pub. US 2007/0058595
`A1
`Printout of list of Tdocs submitted at
`RAN1 Meeting 44
`44 Participant List Printout of 3GPP Meeting Registration
`21.905
`3GPP TR 21.905 v7.0.0
`25.814
`3GPP TR 25.814 v1.0.2
`Ericsson 445
`“E-UTRA Random Access,” 3GPP Tdoc
`R1-051445, Ericsson, TSG-RAN WG1
`#43, Seoul, Korea, November 7-11, 2005
`“RACH Design for EUTRA,” 3GPP Tdoc
`R1-060025, Motorola, TSG-RAN WG1
`#43, Helsinki, Finland, January 23-25,
`2006
`3GPP TS 25.211 v6.7.0
`Joint Claim Construction Chart, filed as
`Document 57-1 in Case 1:15-cv-00546-
`SLR-SRF (D. Del.)
`U.S. Provisional App. 60/666,494
`
`25.211 v6.7.0
`
`1047 1039
`1048 1040 1028 Joint Claim
`Construction Chart
`
`1049 1041
`
`1050 1042
`1051
`
`
`1052
`1053
`1054
`
`1055
`
`1056
`
`
`
`
`
`
`
`
`
`
`
`Motorola 595
`Provisional
`Declaration of Youngbum Kim
`Kim -1342
`
`Excerpts from the Prosecution History of
`1002 481 File History
`the 481 Patent
`Excerpts
`Declaration of Jonathan Wells
`1003 Wells -1349
`Curriculum Vitae of Jonathan Wells
`1004 Wells CV
`1005 IEEE 802.16-2004 “IEEE Standard for Local and
`Metropolitan Area Networks Part 16: Air
`Interface for Fixed Broadband Wireless
`Access Systems”
`Declaration of Mr. David Ringle for
`IEEE802.16-2004
`Provisional Application No. 60/759,697 of
`U.S. Patent No. 8,000,305 to Tan et al.
`
`1006 Ringle -1349
`(2004)
`1007 Tan Prov.
`
`vi
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`Exhibit No.2
`2016-
`2016-
`00758
`01342
`1057
`
`
`Short Name
`
`2016-
`01349
`1008 IEEE 802.16e-
`2005
`
`1058
`
`1059
`1060
`1061
`1062
`1063
`1064
`1065
`1066
`
`1067
`1068
`1069
`
`1070
`1071
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1009 Ringle -1349
`(2005)
`1010 Chou
`1011 Shaheen
`1012 Faerber
`1013 Zhuang
`1014 Koo
`1015 Uchida
`1016 Bailey
`1017 Abramson
`
`1018 25.213
`1019 25.211 v6.6.0
`1021 Popovic
`
`1022 25.201
`1023 36.211
`
`Description
`
`IEEE 802.16e-2005 Standard, entitled
`“802.16e-2005 and IEEE Std 802.16-
`2004/Cor1-2005 - IEEE Standard for
`Local and Metropolitan Area Networks
`Part 16: Air Interface for Fixed and
`Mobile Broadband Wireless Access
`Systems Amendment 2: Physical and
`Medium Access Control Layers for
`Combined Fixed and Mobile Operation in
`Licensed Bands and Corrigendum 1”
`Declaration of Mr. David Ringle for
`IEEE802.16e-2005
`U.S. Patent No. 8,977,258
`U.S. Patent No. 7,417,970
`U.S. Patent No. 6,944,453
`U.S. Patent No. 7,599,327
`U.S. Patent App. Pub. 2006/0274843
`U.S. Patent No. 6,374,080
`PCT Pub. WO2001041471
`N. Abramson, "THE ALOHA SYSTEM—
`Another alternative for computer
`communications," Proceedings of the Fall
`Joint Computer Conference, pp. 281-5,
`Nov. 1970
`3GPP TS 25.213 v6.4.0
`3GPP TS 25.211 v6.6.0
`B.M. Popovic, “Generalized chirp-like
`polyphase sequences with optimum
`correlation properties,” IEEE Trans.
`Information Theory, vol. 38, pp. 1406–
`1409, Jul. 1992
`3GPP TS 25.201 v3.0.0
`3GPP TS 36.211 V8.0.0
`
`vii
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`Exhibit No.2
`2016-
`2016-
`00758
`01342
`1072
`
`
`Short Name
`
`Description
`
`2016-
`01349
`1024 Defendants’ Claim “Defendants’ Preliminary Identification of
`
`Constructions
`Terms Needing Construction and Proposed
`Constructions,” from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-
`SLR-SRF, 15-545-SLR-SRF, 15-546-
`SLR-SRF , 15-547-SLR-SRF filed in N.D.
`Del.
`“Evolved Wireless’s Identification of
`Claim Terms and Proposed Constructions”
`from Case Nos. 15-542-SLR-SRF, 15-543-
`SLR-SRF, 15-544-SLR-SRF, 15-545-
`SLR-SRF, 15-546-SLR-SRF , 15-547-
`SLR-SRF filed in N.D. Del.
`U.S. Patent No. 8,000,305
`Declaration of Dr. Paul S. Min
`Declaration of Charles M. Stiernberg in
`Support of Expedited Motion for Pro Hac
`Vice Admission
`The ’916 Patent U.S. Patent No. 7,74,6916 to Han et al.
`Min
`Deposition of Paul S. Min, Ph.D.
`
`
`
`viii
`
`1025 Plaintiff’s Claim
`Constructions
`
`1026 Tan
`1027 Min -1349
`
`Stiernberg
`
`
`
`
`1073
`
`
`
`
`1074
`
`1075
`1076 1043
`
`
`
`
`1077
`1078
`
`
`
`
`
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`I.
`
`Introduction
`
`Petitioners submit this Reply to Evolved Wireless’s (“EW’s”) Response
`
`(Paper 34) (“POR”). EW no longer contests the validity of claims 1, 2, 8, 9, 15 and
`
`16, and, therefore, these claims should be canceled. POR, 4. EW only addresses the
`
`validity of dependent claims 3-4, 6, 10-11, and 13. Id. The Board should also
`
`cancel claims 3-4, 6, 10-11, and 13.
`
`In its attempt to undermine the grounds presented in the IPR2016-00758
`
`Petition and IPR2016-01342 Petition (based on the Panasonic references), EW
`
`renews its rejected pre-institution argument against the combinability of the
`
`Panasonic references with nothing more than attorney argument. The Board should
`
`again reject this argument. As the Board already found, Petitioner made a “detailed
`
`and supported showing of reasons to combine the cited Panasonic references.”
`
`IPR2016-00758, Paper 12 (“758 ID”), 18.
`
`Further support for combining the Panasonic references comes from the
`
`deposition testimony of Petitioner’s expert, Dr. Paul Min. EW fails even to
`
`acknowledge Dr. Min’s deposition, leaving his testimony uncontroverted.
`
`In its attempt to undermine the grounds presented in the IPR2016-1349-
`
`Petition (based on the IEEE802.16-2004 reference, hereinafter “the 1349-Petition”
`
`or “1349-Pet.”), EW advances two arguments. First, EW asserts that IEEE802.16-
`
`2004 fails to satisfy the “generating said preamble sequence” feature recited in
`
`1
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`claims 1 and 8 when narrowly interpreting that feature as excluding preamble
`
`sequences that include more than one cyclic prefix; and second, EW asserts that
`
`the 1349-Petition fails to provide sufficient reasons to combine IEEE802.16-2004
`
`with Tan to satisfy the “generating said specific sequence” feature recited in
`
`dependent claims 3-4, 6, 10-11, and 13. POR, 5. Notably, EW provides no expert
`
`testimony to support its arguments, relying solely on conclusory attorney argument
`
`that reflects a flawed understanding of both the technology of the ’481 Patent and
`
`the arguments advanced in the Petition. POR, 44-51.
`
`In particular, EW’s first argument attempts to rewrite the mathematical
`
`“generating said preamble sequence” feature to be: “generating said preamble
`
`sequence by concatenating a single cyclic prefix to a front end of said consecutive
`
`preamble sequence.” Such a rewrite not only violates the plain claim language, but
`
`also finds no support in the intrinsic evidence. Put simply, EW’s construction
`
`changes the plain meaning of the claim phrase by limiting the “preamble
`
`sequence,” as opposed to the claimed “consecutive sequence,” to having only a
`
`single cyclic prefix (CP). This change is not supported by the intrinsic evidence,
`
`which fails to include an express disclaimer or clear disavowal of claim scope that
`
`would justify such a departure from plain meaning.
`
`In an attempt to justify its unreasonably narrow construction, EW analogizes
`
`IEEE802.16-2004 with Jung, a reference used by the Examiner as a basis of
`
`2
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`rejection during original prosecution. POR, 44-47. As discussed in more detail
`
`below, however, the statements advanced by the Applicant and the Examiner in
`
`connection with Jung do not amount to a clear disavowal of claim scope. On the
`
`contrary, the statements in the prosecution history reveal material differences
`
`between Jung’s preamble structure and that of IEEE802.16-2004.
`
`EW’s second argument that the 1349-Petition fails to provide sufficient
`
`reasons to combine IEEE802.14 with Tan is based on an erroneous technical
`
`contention, unsupported by any expert testimony. Moreover, even assuming that
`
`EW’s conclusory technical contention were true (which it is not), the combination
`
`advanced in the 1349-Petition still shows the claims to be obvious because EW
`
`failed to appreciate the broader combination advanced in the 1349-Petition, instead
`
`focusing its response exclusively on one implementation example of that broader
`
`combination. In doing so, EW failed to address, much less rebut, another, more
`
`straightforward example of the combination expressly advanced in the 1349-
`
`Petition, which satisfies the claims even if EW were correct in its technical
`
`contention. As explained in detail herein, EW’s arguments should be dismissed.
`
`The Board should reject EW’s arguments and cancel claims 1-4, 6, 8-11, 13,
`
`and 15-16.
`
`II. Claim Construction
`
`To manufacture patentability, EW attempts to make issues of claim
`
`3
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`construction where there are none. EW asserts that the claim phrase “generating
`
`said preamble sequence by concatenating a single cyclic prefix to a front end of
`
`said consecutive sequence” “must be construed as limiting the claims to preamble
`
`sequences which include only one cyclic prefix located at the beginning of the
`
`preamble sequence.” POR, 27 (emphasis added). A literal comparison between the
`
`plain claim language and EW’s proposed construction exposes EW’s
`
`impermissible substitution of the claimed term “consecutive sequence” with
`
`“preamble sequence,” a distinct term also recited in other parts of the claim. EW’s
`
`construction, therefore, requires a departure from plain meaning that, as explained
`
`in more detail below, is not supported by the intrinsic evidence.
`
`A. EW misinterprets the claim phrase by impermissibly substituting
`“said consecutive sequence” with “said preamble sequence,”
`upsetting the plain claim language
`
`Alleging that it “follows from the plain language,” EW argues that “the
`
`
`
`claimed preamble sequence can only include one cyclic prefix” and “must only
`
`have a cyclic prefix at the beginning of the preamble sequence.” POR, 24, 26
`
`(emphasis added). Such an assertion is not credible as even a cursory review of the
`
`claim language reveals that it is the claimed “consecutive sequence,” rather than
`
`the “preamble sequence” as asserted by EW, that includes only one CP at its
`
`beginning.
`
`4
`
`

`

`Case IPR2016-00758
`Patent 8,218,481 B2
`
`
`To be sure, claim 1 recites “generating said preamble sequence by
`
`concatenating a single cyclic prefix to a front end of said consecutive sequence”
`
`(emphasis added). The terms “single” and “a front end” both modify “said
`
`consecutive sequence,” NOT “said preamble sequence.” EW conflates the two
`
`terms despite the Applicant of the ’481 Patent having intentionally drafted the
`
`claims using the two terms distinctly. Indeed, the Applicant chose to use broad
`
`claim language “generating said preamble sequence by [manipulating] said
`
`consecutive sequence.” The Applicant did not define or otherwise limit the
`
`“consecutive sequence” to be the same as the “preamble sequence.” See
`
`generally, Ex. 1005.
`
`Moreover, in correctly rejecting EW’s misinterpretation in the Institution
`
`Decision of IPR2016-1349, the Board pointed out that the broad language of claim
`
`1 “does not preclude additional steps such as repeating this [concatenating] step
`
`and concatenating another cyclic prefix to the front end of another consecutive
`
`sequence,” 1349-Dec., 12. EW attempts to dispute the Board’s assertion by relying
`
`on In re Suitco Surface for the notion that “The broadest-construction rubric
`
`coupled with the term ‘comprising’ does not give the PTO an unfettered license to
`
`interpret claims to embrace anything remotely related to the claimed invention.”
`
`Suitco Surface, 603 F.3d at 1260. POR, 27-28. EW is mistaken. In Suitco Surface,
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`in concluding that the PTO’s construction is unreasonably broad with respect to the
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`“material for finishing the top surface of the floor” limitation, the Court relies on
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`the express claim language that requires a “material for finishing the top surface of
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`the floor” and noted that “[a] material cannot be finishing any surface unless it is
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`the final layer on that surface. Otherwise, the material would not be ‘finishing’ the
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`surface in any meaningful sense of the word.” 603 F.3d at 1261 (emphasis added).
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`Here, there is no similar recitation to Suitco Surface’s “finishing” language
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`in the claims or the Specification that would amount to precluding additional steps
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`such as “repeating this [concatenating] step and concatenating another cyclic prefix
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`to the front end of another consecutive sequence” as the Board correctly
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`concluded. 1349-Dec., 12. Claim 1 simply recites “generating said preamble
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`sequence by concatenating a single cyclic prefix to a front end of said consecutive
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`sequence.” It contains no additional limitation to the effect of “wherein said
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`preamble sequence includes only one consecutive sequence.” Indeed, the claims
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`themselves embrace additional steps. See, for example, claim 2, which recites “The
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`method of claim 1, further comprising generating said specific sequence …,” and
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`claim 3, which recites “The method of claim 2, further comprising applying a
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`cyclic shift….” Ex. 1001, claims 2&3 (emphasis added).
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`EW’s allegation that “the Board’s construction reads the word ‘single’ out of
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`the claim” is fallacious because EW fails to appreciate that the real term at issue is
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`the “consecutive sequence,” rather than the term “single.” POR, 29. Indeed, the
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`term “single” is given its full weight with respect to the “consecutive sequence” by
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`limiting the number of CPs concatenated to the front end of the “consecutive
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`sequence” to one.
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`In sum, since the Applicant chose to use broad claim language, they should
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`be held to it. EW now wants to undo this earlier decision to pursue broad coverage
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`in an attempt to evade prior art. But the proper avenue for this is a claim
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`amendment, and EW chose not to pursue a claim amendment.
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`B.
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`The prosecution history is not sufficiently clear to constitute a
`waiver of claim scope
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`As correctly concluded by the Board in the Institution Decision, the
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`prosecution history does not constitute a clear and unmistakable disavowal of
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`claim scope, and thus fails to support EW’s erroneous claim construction. 1349-
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`Dec., 13.
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`EW complains that the Board disregards the Applicant’s amendment and
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`argument during prosecution. POR, 29-30. With respect to the Applicant’s
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`amendment, EW focuses on the term “single,” while obscuring the real term at
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`issue, “consecutive sequence.” In doing so, EW characterizes the term “single” as
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`“[t]he only difference between these two phrases [before and after amendment],”
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`POR, 30, disregarding the fact that the actual amendment advanced by Applicant
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`was far more substantial, as can be seen from the excerpt of the file history
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`reproduced below:
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`
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`Ex. 1005, 541.
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` In fact, this amendment introduces and defines the term “consecutive
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`sequence,” which corresponds to a narrower version of the previously recited
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`“repeated sequence” by requiring the repetition to be consecutive and the length of
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`the sequence to be N*L. Importantly, both terms are distinct from the originally
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`recited “preamble sequence.” Id. Applicant’s original word choice and later
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`amendment, therefore, reinforce that the Applicant did not intend “consecutive
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`sequence” to be the same as “said preamble sequence,” further refuting EW’s
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`position taken in its construction. POR, 27.
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`EW argues that the “amendment and argument, coupled the Examiner’s
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`allowance of the claims over the Jung reference reinforce the plain meaning of the
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`claim language at issue here and demonstrate that the limitation ‘concatenating a
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`single cyclic prefix (CP) to a front end of said consecutive sequence’ limits the
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`claims to preamble sequences with only a single cyclic prefix.” POR, 30-31. EW is
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`correct that “the plain meaning of the claim language at issue here” should prevail.
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`Plainly read the “generating said preamble sequence” feature merely requires a
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`consecutive sequence to have only a single cyclic prefix in front of the
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`consecutive sequence. And the prosecution history, contrary to what EW argues,
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`does not mandate departure from this plain meaning, as evidenced by the following
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`observations.
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`First, the Examiner did not identify EW’s alleged “preamble sequences with
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`only a single cyclic prefix” feature as being the reason the ’481 Patent claims were
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`allowed over Jung. POR, 31. Notably, the Examiner provided no reasons for
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`allowance in the issued Notice of Allowability. Ex. 1005, 696.
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`Second, the Applicant did not advance patentability based on EW’s alleged
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`feature either. Instead, Applicant repeatedly relied on the “consecutive sequence”
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`feature as supporting patentability over Jung. See underline added by the Applicant
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`and below highlighted portions of the prosecution history:
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`…
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`Ex. 1005, 544-545 (highlight added by Petitioner).
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`
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`Therefore, under D’Agostino v. Mastercard Int’l, even when the Applicant’s
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`amendment and argument do not meet the standards for disclaimer or disavowal,
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`this material is relevant as reinforcing “the evident meaning of the claim language
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`at issue,” 844 F.3d 945, 949 (Fed. Cir. 2016) (emphasis added). Here, “the claim
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`language at issue” is the “consecutive sequence” feature that was avidly argued by
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`the Applicant during prosecution, rather than the “preamble sequences with only a
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`single cyclic prefix” feature manufactured by EW in the present IPR proceeding.
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`To be clear, as evident from the Applicant’s words and annotation to FIG. 2,
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`of Jung advanced during prosecution, the Applicant did not deem any of the
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`multiple sequences in Jung as corresponding to the recited “specific sequence” that
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`is repeated to generate the recited “consecutive sequence.” Ex. 1005, 544-47.
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`
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`Ex. 1005, 546.
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`First, the preamble sequence #2 (hereinafter “PS2 sequence”) of Jung is not
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`the recited “specific sequence.” As shown in the marked up version of FIG. 2
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`advanced by the Applicant during prosecution (reproduced above), while the PS2
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`sequence, which is represented in FIG. 2 of Jung by a single “Preamble Sequence
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`#2” (PS2) block, may be repeated from frame to frame, the repetition is “not
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`consecutive.” Ex. 1005, 546 (“The preamble sequence is repeated between frames
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`and is not consecutive” (emphasis added)). As such, the Applicant correctly argued
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`that the repetition of the PS2 sequence from frame to frame does not “generate a
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`consecutive sequence” as required by the newly amended claims. Id.
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`Second, the preamble sequence #1 (hereinafter “PS1 sequence”) of Jung is
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`not the recited “specific sequence.” While FIG. 2 of Jung is a bit deceptive in
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`illustrating two “Preamble Sequence #1” (PS1) blocks, the Applicant was correct
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`in recognizing during prosecution that these two PS1 blocks correspond to different
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`subsequences that collectively make up a single PS1 sequence, as evidenced by the
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`Applicant’s annotation of FIG. 2 indicating that “each preamble sequence has its
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`own CP for each frame.” Ex. 1005, 546. See also Ex. 2001, ¶0049. In other words,
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`because there is no additional CP in front of each of the PS1 blocks of FIG. 2, it is
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`clear that the Applicant was correctly representing that the two PS1 blocks together
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`make up a single preamble sequence #1. Id. And FIG. 3 of Jung shows that the PS1
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`subsequences, while consecutive, are not copies of each other due to different time
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`offsets, thereby failing to correspond to the recited “specific sequence” that is
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`“repeat[ed] … to generate a consecutive sequence” as required by the newly
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`amended claims. Ex. 2001, FIG.3. The actual PS1 sequence, which is represented
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`collectively by the two PS1 blocks in FIG. 2 of Jung, also cannot be the recited
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`“specific sequence” for the same reasons noted above with respect to the PS2
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`sequence (i.e., it is not repeated so as to generate a consecutive sequence).
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`
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`Third, the full frame sequence (represented by the CP-PS1-PS1-CP-PS2
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`blocks of FIG. 2) of Jung, which is repeated from frame to frame in Jung, is also
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`not the recited “specific sequence.” Because each of these frame sequences already
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`includes at least one CP, the Applicant correctly noted to the Examiner that Jung
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`has no reason to concatenate an additional CP in front of the “consecutive
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`sequence” formed by the repeated frame sequences of Jung. Ex. 1005, 546 (“since
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`each frame has its own CP, the preamble sequences of Jung are not concatenated
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`with a single CP to a front end of the consecutive sequence.”) Thus, when mapping
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`the full frame sequence to the recited “specific sequence,” Jung’s disclosure fails to
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`satisfy the recited feature of “concatenating a single cyclic prefix at a front end of
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`said consecutive sequence.”
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`Consequently, the Applicant’s assertions during prosecution to distinguish
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`Jung did not rely on interpreting the recited “preamble sequence” as including
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`“only one cyclic prefix” as contended by EW, and, therefore, does not constitute
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`the type of clear disavowal of claim scope that would mandate departure from
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`plain meaning.
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`III. Arguments for Panasonic Grounds
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`EW does not dispute most of Petitioner’s “detailed and supported showing
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`of reasons to combine the cited Panasonic references,” including the following
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`reasons:
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`(i) All three Panasonic references are in the same narrow field of
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`endeavor: RACH preamble sequence design in 3GPP TSG RAN
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`WG1. IPR2016-00758, Paper 2 (“758 Petition”) at 36; IPR2016-
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`01342 (“1342 Petition”) at 37.
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`(ii) The same company, Panasonic, submitted all three Panasonic
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`references to the same 3GPP working group. 758 Petition at 36; 1342
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`Petition at 37.
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`(iii) All three Panasonic references are directed to the same problem of
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`optimizing the RACH preamble correlation properties. 758 Petition at
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`36; 1342 Petition at 37.
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`(iv) All three Panasonic references propose using repeated preamble
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`sequences. 758 Petition at 37; 1342 Petition at 38.
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`(v)
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`Panasonic 114 compared certain sequences with cyclic-shifted
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`sequences and concluded that the cyclic-shifted sequences perform
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`even better. 758 Petition at 37; 1342 Petition at 38.
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`
`Rather than dispute these points, EW argues that: (i) Panasonic 114 teaches
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`away from the other Panasonic references, and (ii) Petitioner did not explain how
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`skilled artisans would have combined the Panasonic references. Both arguments
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`lack merit.
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`A.
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`Panasonic 114 does not teach away.
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`EW identifies a single statement in Panasonic 114, that “cyclic-shifted
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`CAZAC sequence requires relatively long sequence,” and asserts this is “an
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`unequivocal statement” that “teaches away from combining that reference with
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`Panasonic 792 or Panasonic 700.” POR at 39. This argument fails. At most,
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`Panasonic 114 expresses a preference for a long CAZAC sequence, stating “long
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`CAZAC sequence is preferred option.” Ex. 1003 (“Panasonic 114”) at 3. “A
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`reference that ‘merely expresses a general preference for an alternative invention
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`but does not criticize, discredit, or otherwise discourage investigation into’ the
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`claimed invention does not teach away.” Meiresonne v. Google, Inc., 849 F.3d
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`1379, 1382 (Fed. Cir. 2017). Nothing in Panasonic 114 criticizes, discredits, or
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`discourages investigation into the repeated, cyclic-shifted preamble sequence as
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`recited in claims 3-4, 6, 10-11, and 13.
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`In fact, Panasonic 114 would have encouraged skilled artisans to use a
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`repeated, cyclic-shifted preamble sequence. Af