`Entered: September 16, 2016
`
`Trials@uspto.gov
`571-272-7822
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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 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
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`IPR2016-00758
`Patent 8,218,481 B2
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`INTRODUCTION
`I.
`ZTE (USA) Inc., HTC Corporation, and HTC America, Inc.,
`(collectively, “ZTE”) filed a Petition requesting an inter partes review of
`claims 1–4, 6, 8–11, and 13 of U.S. Patent No. 8,218,481 B2 (Ex. 1001, “the
`‘481 patent”). Paper 2 (“Pet.”). Evolved Wireless, LLC, the assignee of the
`‘481 patent, filed a Preliminary Response to the Petition. Paper 9 (“Prelim.
`Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless the information presented in the Petition and any
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Taking into account the information presented, we conclude
`the record establishes there is a reasonable likelihood that ZTE will prevail
`with respect to at least one of the challenged claims of the ‘481 patent.
`Accordingly, we institute trial as set forth below.
`A. Related Matters
`We are informed that the ‘481 patent has been asserted in several
`actions, captioned Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542 (D.
`Del.); Evolved Wireless, LLC v. HTC Corp., C.A. 15-cv-543 (D. Del.);
`Evolved Wireless, LLC v. Lenovo Group Ltd., C.A. 15-cv-544 (D. Del.);
`Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-545 (D.
`Del.); Evolved Wireless, LLC v. ZTE Corp., C.A. 15-cv-546 (D. Del.); and
`Evolved Wireless, LLC v. Microsoft Corp., C.A. 15-cv-547 (D. Del.). Pet. 1.
`The ‘481 patent is also the subject of IPR2016–00981, filed May 2, 2016, in
`which a decision regarding institution of trial has not yet been rendered.
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`B. The ‘481 Patent
`The ‘481 patent is titled, “Method of Transmitting Data in a Mobile
`Communication System.” Ex. 1001 (54). It issued on July 10, 2012, from
`U.S. Patent Application No. 12/303,947, filed on June 8, 2007, which claims
`priority from KR 10-2006-0052167, filed June 9, 2006, and KR 10-2006-
`0057488, filed June 26, 2006. Id. at (21), (22), (30), (45). According to the
`Specification, “[t]he present invention relates to a mobile communication
`system, and more particularly, to a method of expanding a code sequence, a
`structure of a random access channel and method of transmitting data in a
`mobile communication system.” Id. at 1:16–20. The disclosed methods and
`systems are alleged to increase the amount of data which can be transmitted
`to make the data transmission more robust and less susceptible to noise or
`channel change. Id. at 2:45–49. And, the invention is alleged to be
`applicable to wireless Internet systems. Id. at 18:28–30.
`The ‘481 patent contains 16 claims which are directed to the structure
`of a preamble sequence of a data transmission. Id. at 18:33–20:16.
`Independent claim 1 is directed to “[a] method of transmitting a preamble
`sequence” and independent claim 8 is directed to “[a] transmitter for
`transmitting a preamble sequence.” Id. at 18:33–42, 18:60–19:3. The
`independent claims require “repeating a specific sequence, having a length
`(L), N times to generate a consecutive sequence having a length (N*L)” and
`“concatenating a single cyclic prefix (CP) to a front end of said consecutive
`sequence.” Id. Figure 11, which illustrates the claimed preamble structure
`with a single prefix and a repeated sequence, is reproduced below.
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`Figure 11 depicts a single prefix at the front end of consecutive, repeated
`sequences. Id. at 18:46–60.
`C. The ’481 Patent Claims
`Of the challenged claims, claims 1 and 8 are independent. Claim 1
`recites:
`A method of transmitting a preamble sequence in a
`1.
`mobile communication system, the method comprising:
`
`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
`
`generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
`and
`
`transmitting, on a random access channel, said preamble
`sequence to a receiving side.
`
`
`Ex. 1001, 18:33–42. Claim 8 recites:
`
`8. A transmitter for transmitting a preamble sequence in a
`mobile communication system, the transmitter comprising:
`
` a
`
` preamble generation unit configured to generate said
`preamble sequence by repeating a specific sequence, having a
`length (L), N times to generate a consecutive sequence having a
`length (N*L) and concatenating a single cyclic prefix (CP) to a
`front end of said consecutive sequence;
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` a
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` transmission unit configured to transmit, on a random access
`channel, said preamble sequence to a receiving side.
`
`
`Ex. 1001, 18:60–19:3.
`
`
`
`Dependent claims 2 and 9 recite generating “said specific sequence
`from a Constant Amplitude Zero Auto Correlation (CAZAC) sequence.” Id.
`at 18:43–45, 19:4–7. Dependent claims 3 and 10 recite applying “a cyclic
`shift sequence to said specific sequence generated from said CAZAC
`sequence.” Id. at 18:46–48, 19:8–11. Dependent claims 4 and 11 recite “a
`value of said applied cyclic shift is determined as an integer multiple of a
`predetermined circular shift unit.” Id. at 18:49–51, 19:13–15. Dependent
`claims 6 and 13 recite “multiplying said specific sequence by an exponential
`sequence.” Id. at 18:54–56, 20:1–4.
`D. Asserted Grounds of Unpatentability
`ZTE challenges claims of the ‘481 patent on the following grounds of
`unpatentability:
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`Reference(s)
`
`Panasonic 7922
`
`Panasonic 792 and Panasonic 1143
`
`Basis1
`
`§ 102(a), § 102(b),
`or § 103(a)
`§ 103(a)
`
`Challenged
`Claims
`1, 2, 8, and 9
`
`3, 4, 10, and
`11
`6 and 13
`
`§ 103(a)
`
`Panasonic 792, Panasonic 114, and
`Chu4
`
`ZTE asserts that Panasonic 792, Panasonic 114, and Chu are prior art under
`35 U.S.C. §§ 102 (a) and (b). Pet. 11, 13, 14. Evolved Wireless does not, at
`this stage of the proceeding, challenge the prior art status of any of the cited
`references.
`
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ‘481 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 Panasonic, Random Access Burst Evaluation In E-UTRA Uplink, 3 GPP
`Tdoc R1-060792, TSG-RAN WG1 Meeting #44bis, Athens, Greece (March
`27–31, 2006) (Ex. 1002) (“Panasonic 792”).
`
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`
` Panasonic, Random Access Design For E-UTRA Uplink, 3GPP Tdoc R1-
`061114, TSG-RAN WG1 Meeting #45, Shanghai, China (May 8–12, 2006)
`(Ex. 1003) (“Panasonic 114”).
`
` 4
`
` David C. Chu, Polyphase Codes With Good Periodic Correlation
`Properties, IEEE Transactions on Information Theory 531–32 (July 1972)
`(Ex. 1004) (“Chu”).
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`II. ANALYSIS
`
`A. Claim Construction
`The claims of an unexpired patent subject to inter partes review
`receive the “broadest reasonable construction in light of the specification of
`the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). ZTE argues the
`phrase “a consecutive sequence having a length (N*L)” as recited in
`independent claims 1 and 8 should be construed as “a consecutive sequence
`having a length (N*L), that is entirely within one frame.” Pet. 21–22
`(emphasis added). ZTE’s basis for adding the limitation “that is entirely
`within one frame” is an argument submitted during prosecution of the ‘481
`patent. Pet. 22–23. Evolved Wireless does not dispute this construction.
`Prelim. Resp. 8–9. Neither party supports this construction with any
`language in the claims or the Specification.
`The argument ZTE quotes from the prosecution history to support
`adding the limitation “that is entirely within one frame” to the claims relates
`to a reference known as Jung:
`As illustrated in annotated FIG. 2 of Jung, the preamble
`sequences do not form a consecutive sequence, rather, the
`preamble sequences are repeated in different frames. For
`example, the preamble sequence #2 is split between two frames,
`and therefore, since the preamble sequence #2 is split between
`two frames, the preamble sequence #2 is not a consecutive
`sequence.
`
`
`Pet. 22–23 (quoting ‘481 patent file history at 546 (Ex. 1005)). ZTE also
`refers to Figure 2 of Jung as annotated by applicants, which is reproduced
`below.
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`Pet. 22. Figure 2 of Jung depicts the preamble sequence structure in a
`mobile communication system. ZTE argues, “the applicant made it clear
`that the claimed ‘consecutive sequence’ does not span multiple frames.” Id.
`at 23. We disagree that the applicant’s argument was as clear as ZTE
`suggests, and are not persuaded to import a “does not span multiple frames”
`limitation into the construction. For example, we note that the applicant
`distinguished the prior art because “[t]he preamble sequence is repeated
`between frames and is not consecutive,” implying that a sequence spanning
`a frame is different from whether it is consecutive. See Ex. 1005, 541–547
`(emphasis added). We consider applicant’s argument, based on the term
`“consecutive sequence” which already appears in the claims, as consistent
`with the language of the claims without the proposed added limitation.
`Aside from this prosecution history argument, neither ZTE nor Evolved
`Wireless points to any language in the claims or Specification of the ‘481
`patent that supports construing “a consecutive sequence, having a length
`(N*L)” as “a consecutive sequence, having a length (N*L), that is entirely
`within one frame.”
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`We do not adopt the construction of “a consecutive sequence having a
`length (N*L)” with the added limitation, “that is entirely within one frame.”
`Based on the information in the Petition, ZTE has not persuaded us that the
`broadest reasonable construction includes this added limitation.
`At this stage in these proceedings, therefore, we do not agree the
`phrase “a consecutive sequence having a length (N*L),” or any other term or
`phrase in the challenged claims, requires an express construction.
`B. Asserted Anticipation of Claims 1, 2, 8, and 9 by Panasonic 792
`ZTE challenges independent claims 1 and 8 and dependent claims 2
`and 9 as anticipated by Panasonic 792. Pet. 23–32. ZTE relies on
`paragraphs 55–82 of the Declaration of Paul S. Min, Ph.D. (Ex. 1014) in
`support of this challenge. Id. Evolved Wireless argues the Petition and the
`Min declaration fail to establish Panasonic 792 discloses a consecutive
`sequence within one frame. Prelim. Resp. 12–14. We are persuaded, based
`on the information before us, there is a reasonable likelihood ZTE will
`prevail in showing anticipation of claims 1, 2, 8, and 9 by Panasonic 792.
`1. Panasonic 792 (Ex. 1002)
`Panasonic 792 is a paper titled, “Random Access Burst Evaluation In
`E-UTRA Uplink.” Ex. 1002, 1. ZTE asserts Panasonic 792 is prior art
`under 35 U.S.C. §§ 102(a) and (b). Pet. 11. Evolved Wireless
`acknowledges Panasonic 792 is “a submission from Panasonic for a meeting
`occurring on March 27-31, 2006 as part of the process of developing the
`Long Term Evolution (‘LTE’) mobile communications standard.” Prelim.
`Resp. 7–8. Panasonic 792 was not cited during prosecution of the patent
`application from which the ‘481 patent issued. Ex. 1001 (56).
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`Panasonic 792 discloses a random access channel (RACH) preamble
`structure. Ex. 1002 at 2. Paragraph 2.2 of Panasonic 792 discloses a
`preamble structure which consists of a cyclic prefix (CP) and a repeated
`CAZAC sequence. Id. Figure 1 of Panasonic 792 is reproduced below.
`
`
`Figure 1 of Panasonic 792 depicts a “preamble structure” with a cyclic
`prefix (CP) and “M-times repetition of N=73 (1.25 MHz) or N=293 (5 MHz)
`CAZAC sequence.” Id. Panasonic 792 discloses the preamble as
`constituting, or as part of, a “random access burst,” and further discloses
`transmitting the preamble. Id. at 5. Figure 6 of Panasonic 792 is reproduced
`below.
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`Figure 6 of Panasonic 792 depicts transmission of a “random access burst”
`comprising the preamble from UE (user equipment) to Node B as part of
`five transmission methods. Id. at 5. Each of these five transmission
`methods is described in paragraph 2.3 of Panasonic 792. Id. at 5–6.
`2. Claims 1, 2, 8, and 9
`ZTE’s showing that Panasonic 792 discloses all elements of claims 1,
`2, 8, and 9 is detailed and supported by citations to the record. Id. With
`regard to claim 1, ZTE asserts that paragraph 2.3 of Panasonic 792 discloses,
`“[a] method of transmitting a preamble sequence in a mobile communication
`system,” as recited in the preamble of claim 1. Pet. 24. The cited passage in
`Panasonic 792 describes five methods of transmitting a preamble sequence
`in a mobile communication system, as illustrated in Figure 6. Ex. 1002, 6–7.
`ZTE asserts Figure 1 and paragraph 2.2 of Panasonic 792 disclose,
`“repeating a specific sequence, having a length (L), N times to generate a
`consecutive sequence having a length (N*L),” as recited in claim 1. Pet. 24;
`Ex. 1014 ¶ 60. ZTE asserts Figure 1 of Panasonic 792 also discloses,
`“generating said preamble sequence by concatenating a single cyclic prefix
`(CP) to a front end of said consecutive sequence,” as recited in claim 1. Pet.
`25 (“For example, in Figure 1 of Panasonic 792, a single prefix (labeled
`‘CP’) is concatenated to the front end of the consecutive sequence that
`consists of repeated Zadoff-Chu sequences, each of which is labelled
`‘CAZAC sequence’ in FIG. 1. (Ex. 1014, Min Decl., at ¶ 63.)”). ZTE
`asserts that Figure 6 of Panasonic 792 discloses, “transmitting, on a random
`access channel, said preamble sequence to a receiving side,” as recited in
`claim 1. Pet. 26 (“For example, Figure 6 of Panasonic 792 provides five
`methods by which a preamble is transmitted from a UE to a Node B. (Ex.
`
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`1014, Min Decl., at ¶ 65.)”). ZTE asserts Figure 1 of Panasonic 792 also
`discloses, “generating said specific sequence from a Constant Amplitude
`Zero Auto Correlation (CAZAC) sequence,” as recited in dependent claim 2.
`Pet. 28.
`Independent claim 8 is an apparatus claim reciting limitations
`analogous to independent method claim 1, and ZTE relies on similar
`arguments and the same passages in Panasonic 792 in support of its
`contention that claim 8 is anticipated. Pet. 28–31. Dependent claim 9
`contains language analogous to that of claim 2 and ZTE relies on the same
`argument and passages in Panasonic 792 provided for claim 2 to show that
`claim 9 is anticipated.
`Evolved Wireless does not, at this time, challenge most of ZTE’s
`contentions regarding the anticipation of claims 1, 2, 8, and 9. Evolved
`Wireless argues Panasonic 792 does not disclose “a consecutive sequence
`entirely within one frame.” Prelim. Resp. 11–14. This argument is based on
`a construction of claims 1 and 8 with the added limitation, “entirely within
`one frame,” which as discussed above, is not presently being adopted. At
`this stage of the proceedings, we find ZTE’s contention that Panasonic 792
`discloses every element of claim 1 is sufficiently supported by the cited
`portions of Panasonic 792. Based on this record, there is a reasonable
`likelihood that ZTE will prevail as to its challenge to claims 1, 2, 8, and 9 as
`anticipated by Panasonic 792.
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`C. Asserted Obviousness of Claims 1, 2, 8, and 9 Over Panasonic 792
`ZTE also challenges claims 1, 2, 8, and 9 as obvious over Panasonic
`792. Pet. 23. An obviousness conclusion is based on factual inquiries
`including the differences between the claimed invention and the prior art.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). ZTE’s contention
`that claims 1, 2, 8, and 9 are obvious under 35 U.S.C. § 103(a) is conclusory
`and not supported by detailed argument or analysis. Pet. 23. In keeping
`with its contention that Panasonic 792 anticipates claims 1, 2, 8, and 9, ZTE
`has not articulated any difference between the claimed invention and
`Panasonic 792. Pet. 24–31. To the contrary, ZTE asserts that Panasonic 792
`discloses every feature of claims 1, 2, 8, and 9. Pet. 24 (“Panasonic 792
`discloses every feature of claim 1 for the following reasons.”), 28
`(“Panasonic 792 discloses every feature of claim 2 for the following
`reasons.” and “Panasonic 792 discloses every feature of claim 8 for the
`following reasons.”), 31 (“Panasonic 792 discloses every feature of claim 9
`for the following reasons.”). ZTE’s contention with regard to obviousness
`of claims 1, 2, 8, and 9 appears to be limited to the terse phrase, “or § 103
`(a)” on page 23 of its Petition, and is not supported by any additional
`analysis or reasoning. ZTE has failed to show a reasonable likelihood of
`establishing that claims 1, 2, 8, or 9 would have been obvious over
`Panasonic 792.
`D. Asserted Obviousness of Claims 3, 4, 10, and 11 Over Panasonic 792
`and Panasonic 114
`ZTE contends claims 3, 4, 10, and 11 are unpatentable under
`35 U.S.C. § 103(a) over Panasonic 792 and Panasonic 114. Pet. 32–39.
`Evolved Wireless argues ZTE has failed to show the subject matter of claims
`3, 4, 10, and 11 would have been obvious based on a combination of the
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`teachings of these references. Prelim. Resp. 14–18. We discussed
`Panasonic 792 above.
`1. Panasonic 114 (Ex. 1003)
`Panasonic 114 is a paper titled, “Random Access Design For E-UTRA
`Uplink.” Ex. 1003, 1. ZTE asserts Panasonic 114 is prior art under 35
`U.S.C. §§ 102(a) and (b). Pet. 13. Panasonic 114 is dated May 8–12, 2006.
`Ex. 1003, 1. Evolved Wireless describes Panasonic 114 as “another
`submission from Panasonic for a subsequent meeting.” Prelim. Resp. 8.
`Panasonic 114 was not cited during prosecution of the ’481 patent. Ex. 1001
`(56).
`Panasonic 114 is directed to comparing performance of different types
`
`of preamble sequences including cyclic-shifted CAZAC sequences. Ex.
`1003, 1. Panasonic 114 discloses, “cyclic-shifted CAZAC sequence has
`superior performance” and “[a]s the results [sic], we propose to choose
`cyclic-shifted Zadoff-Chu CAZAC as preamble sequence mainly.” Id. at 2.
`2. Claims 4 and 11
`Dependent claims 4 and 11 recite, “a value of said applied cyclic shift
`is determined as an integer multiple of a predetermined circular shift unit.”
`(emphasis added.) ZTE asserts the disclosure of a range from 1 to 8 in
`Figure 1 of Panasonic 114 teaches this limitation. Pet. 33–34, 36. Figure 1
`of Panasonic 114 is reproduced below.
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`Figure 1 of Panasonic 114 depicts detection performance for ten preamble
`sequences including three cyclic-shifted CAZAC sequences. Ex. 1003, 2.
`Evolved Wireless argues ZTE fails to show “a value of applied cyclic
`shift is determined as an integer multiple of a predetermined circular shift
`unit,” as recited in claims 4 and 11 (emphasis added), is taught or suggested
`by the cited prior art. Prelim. Resp. 15–16. ZTE’s presentation with regard
`to this limitation is conclusory. See Pet. 33–34. Indeed, ZTE’s argument
`with regard to this limitation consists of a single sentence, which states: “For
`example, Panasonic 114 discloses cyclic-shifted CAZAC sequences with
`indices of cyclic shift (m) ranging from 1 to 8, as shown in Panasonic 114’s
`Figure 1.” Id. at 33. The Min declaration includes the same conclusory
`presentation and sentence verbatim. Ex. 1014 ¶¶ 89–90. We give such
`conclusory, unsupported assertions by ZTE’s declarant little weight. See In
`re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
`Board is entitled to weigh the declarations and conclude that the lack of
`factual corroboration warrants discounting the opinions expressed in the
`declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does
`not disclose the underlying facts or data on which the opinion is based is
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`entitled to little or no weight.”). The entirety of the relevant disclosure in
`Figure 1 of Panasonic 114 is “m=1to8,” “m=1to 4,” and “m is the index of
`cyclic shift.” Ex. 1003, 2.
`ZTE does not refer to any teaching or suggestion of using the integer
`multiples in the disclosed range, or provide any explanation as how or why a
`person of ordinary skill in the art would have determined to use the integer
`multiples in this range, as opposed to any non-integer multiple in the range.
`Without any further evidence in this regard, the disclosure of a range from 1
`to 8 does not teach or suggest the use of an integer multiple. ZTE has failed
`to show the cited combination of references teaches or suggests all the
`elements of claims 4 and 11. Based on the information in the Petition, ZTE
`has not demonstrated a reasonable likelihood of establishing that claims 4
`and 11 would have been obvious over the combination of Panasonic 792 and
`Panasonic 114.
`3. Claims 3 and 10
`Dependent claims 3 and 10 recite applying, “a cyclic shift to said
`specific sequence generated from said CAZAC sequence.” ZTE contends a
`combination of the teachings of Panasonic 792 and Panasonic 114 disclose
`every feature of claims 3 and 10. Pet. 32–35. In particular, ZTE relies on
`the following statement in Panasonic 114: “we propose to choose cyclic-
`shifted Zadoff-Chu CAZAC as preamble sequence mainly.” Pet. 32
`(quoting Ex. 1003, 2). Among the reasons to combine the teachings of the
`Panasonic references provided in the Petition are: (i) “Both references arose
`in the same narrow field of endeavor: RACH preamble sequence design in
`3GPP TSG RAN WG1”; (ii) “Panasonic 114 expressly cited Panasonic
`792”; and (iii) “both references are directed to solving the same problem of
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`optimizing the RACH preamble sequence’s auto-correlation and cross-
`correlation properties.” Pet. 36 (citations omitted). In addition, the Petition
`states the following with regard to motivation to combine the Panasonic
`references:
`
`With this problem in mind, a skilled artisan reviewing
`Panasonic 114 would have been motivated to combine its
`teachings with the subject matter disclosed in Panasonic 792.
`([Ex. 1014] at ¶ 100.) Panasonic 792 teaches a preamble
`including repeated Zadoff-Chu sequences. (Id. (citing Ex.
`1002, Panasonic 792, at 2).) Panasonic 114 compares the
`performances of Zadoff-Chu sequences and concludes that
`cyclic-shifted Zadoff-Chu sequences perform even better. (Id.
`(citing Ex. 1003, Panasonic 114, at 2 (“Therefore, cyclic-shifted
`CAZAC sequence has superior performance among compared
`sequences.”)).) Panasonic 114 also proposes repeating those
`sequences in the RACH preamble, just as Panasonic 792
`proposes repeating Zadoff-Chu sequences
`in
`the RACH
`preamble. (Id. (citing Ex. 1003, Panasonic 114, at 3 (“For
`supporting larger cell size, repeating this sequence twice (i.e.
`800 usec) can be used.”); Ex. 1002, Panasonic 792, at 2 (“The
`preamble structure consists of M-times repetition of N=73 (1.25
`MHz) or N=293 (5 MHZ) CAZAC sequence.”)).) Therefore,
`the skilled artisan would have been motivated to incorporate
`Panasonic 114’s cyclic-shifted Zadoff-Chu sequences into
`Panasonic 792’s preamble structure. (Id.)
`
`
`Pet. 37. Further, ZTE argues it would have been “a matter of common
`sense,” “a routine design choice well within the skilled artisan’s knowledge
`and capabilities,” and “[a]t a minimum, the skilled artisan would have found
`it obvious to try Panasonic 114’s approach of using cyclic-shifted Zadoff-
`Chu sequences with the preamble structure of Panasonic 792, particularly
`because Panasonic 114 touts the benefits of those sequences and cites to
`Panasonic 792.” Pet. 38. At this stage of the proceedings, ZTE provides an
`
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`articulated basis with rational underpinnings for combining the references.
`See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). ZTE’s
`contentions as to motivation to combine the Panasonic references are
`supported by evidence and are reasonable in view of the teachings and
`suggestions of the cited art.
`With regard to claims 3 and 10, Evolved Wireless argues ZTE fails to
`show a reason to combine Panasonic 792 and Panasonic 114 in the Petition.
`Prelim. Resp. 16–18. Evolved Wireless argues “as to motivation to
`combine, the Petition’s allegations are conclusory and unsupported by
`evidence.” Id. at 17. This argument is not persuasive. As shown above, the
`Petition includes a detailed and supported showing of reasons to combine the
`cited Panasonic references. Pet. 36–39. ZTE provides a sufficient showing
`that each of the elements of claims 3 and 10 is taught or suggested in the
`cited combination of references (id. at 32–34) and an articulated basis with
`rational underpinnings for combining the teachings of the prior art. See
`KSR, 550 U.S. at 418. ZTE has met its burden of showing a reasonable
`likelihood that it will prevail in showing that claims 3 and 10 would have
`been obvious over Panasonic 792 and Panasonic 114.
`E. Asserted Obviousness of Claims 6 and 13 Over Panasonic 792,
`Panasonic 114, and Chu
`ZTE contends claims 6 and 13 are unpatentable under 35 U.S.C.
`§103(a) over Panasonic 792, Panasonic 114, and Chu. Pet. 39–41. Evolved
`Wireless does separately address the patentability of claims 6 and 13. See
`generally Prelim. Resp. 1–19.
`1. Chu (Ex. 1004)
`Chu is a paper titled, “Polyphase Codes With Good Correlation
`Properties.” Ex. 1004, 1. ZTE asserts Chu is prior art under 35 U.S.C.
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`§§ 102 (a) and (b). Pet. 14. Evolved Wireless acknowledges Chu is “a
`paper published in 1972.” Prelim. Resp. 8. Chu was not cited during
`prosecution of the ‘481 patent. Ex. 1001 (56).
`According to ZTE and its declarant, “Chu discloses and introduces the
`sequence that is now known as the Zadoff-Chu sequence.” Pet. 14; Ex. 1014
`¶ 52. Chu describes the construction of complex codes and discloses a
`number of mathematical equations. Ex. 1004, 1–2. The purpose is to
`construct codes with good autocorrelation properties. Id. at 1. Evolved
`Wireless does not discuss Chu. See generally Prelim. Resp. 1–19.
`2. Claims 6 and 13
`Dependent claims 6 and 13 recite applying, “said cyclic shift
`comprises multiplying said specific sequence by an exponential sequence.”
`Ex. 1001, 18:54–56, 20:1–3. ZTE asserts page 2 of Chu “teaches that a
`cyclic shift of such sequence may be applied by ‘multiplying said specific
`sequence by an exponential sequence.’” Pet. 39. On page 2, Chu states
`“[t]rivial variations such as cyclic shifts . . . will not affect the
`autocorrelation function” and “certain linear phase shifts of the form exp
`i(2πqk/N), where q is any integer, when introduced into the code also will
`not affect the correlation.” Ex. 1004, 2. The cited portion of Chu provides
`support for ZTE’s assertion, and further explanation is provided in the Min
`declaration. Id. (citing Ex. 1004, 2; Ex. 1014 ¶¶ 105–106). In the Petition,
`ZTE provides a sufficient showing that each of the elements of claims 6 and
`13 is taught or suggested in the cited combination of references. Pet. 39–41.
`In response, Evolved Wireless argues that the Petition fails to show a
`reason to combine the cited references. Prelim. Resp. 16–18. ZTE’s
`contentions regarding combining Panasonic 792 and Panasonic 114 were
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`discussed above. For the combination of the Panasonic references and Chu,
`the Petition states:
`The skilled artisan also would have combined the collective
`Panasonic teachings with Chu’s teachings because both
`Panasonic references expressly cite to the Chu reference. In
`addition, both Panasonic references expressly disclose using the
`Zadoff-Chu sequence, first documented and described in the
`Chu reference more than 30 years earlier. The skilled artisan
`would have logically and predictably consulted the Chu
`reference to better understand the Zadoff-Chu sequence and its
`mathematical properties in order to incorporate that sequence
`into the sequence designs of the Panasonic references.
`
`
`Pet. 41 (citations omitted). Evolved Wireless argues that ZTE’s allegations
`supporting its reason to combine the teachings of the references are
`conclusory and unsupported. Prelim. Resp. 17. At this stage of the
`proceedings, we disagree, as the passage quoted above provides an
`articulated basis with rational underpinnings for combining the references.
`See KSR, 550 U.S. at 418. At this point in these proceedings, the reasons to
`combine provided in the Petition are sufficient to establish there is a
`reasonable likelihood that ZTE will prevail in showing claims 6 and 13 are
`unpatentable as obvious over the cited combination of references.
`
`
` CONCLUSION
`III.
`For the foregoing reasons, we conclude the information presented in
`the Petition and Preliminary Response establishes that there is a reasonable
`likelihood that ZTE will prevail in challenging at least one claim of the ‘481
`patent.
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`Our discussion of facts in this Decision is only for the purpose of
`determining whether or not inter partes review should be initiated and is not
`dispositive of any issue. At this preliminary stage, the Board has not made a
`final determination with respect to the patentability of the challenged claims
`or any underlying factual and legal issues. The Board’s final determination
`will be based on the record as developed during the trial.
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 1–3, 6, 8–10, and 13 of U.S. Patent No.
`8,218,481 B2 on the following grounds of unpatentability:
`1. Whether claims 1, 2, 8, and 9 are unpatentable under 35 U.S.C.
`§§ 102(a) or (b) as having been anticipated by Panasonic 792;
`2. Whether claims 3 and 10 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Panasonic 792 and
`Panasonic 114; and
`3. Whether claims 6 and 13 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Panasonic 792, Panasonic
`114, and Chu;
`FURTHER ORDERED that no other ground of unpatentability, with
`
`respect to any claim, is instituted for trial; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this Decision.
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`PETITIONER:
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`PATENT OWNER:
`Cyrus A. Morton
`Ryan M. Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
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