UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SPRINT SPECTRUM L.P., CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`AND AT&T MOBILITY LLC
`
`Petitioners
`
`V.
`
`ADAPTIX, INC.
`Patent Owner
`
`Case No. TBD
`
`Patent 8,934,375
`
`DECLARATION OF RICHARD D. GITLIN, Sc.D.
`
`1
`
`SPRINT 1002
`
`SPRINT 1002
`
`

`
`Table of Contents
`
`I. INTRODUCTION ................................................................................................ ..5
`
`A.
`
`Background and Qualifications ................................................................... ..5
`
`II. SCOPE OF WORK ........................................................................................... ..11
`
`A.
`
`Topics of Opinions .................................................................................... .. 12
`
`III. LEVEL OF ORDINARY SKILL AND RELEVANT TIME ......................... .. 13
`
`IV. LEGAL STANDARDS ................................................................................... ..l4
`
`A.
`
`Claim Construction .................................................................................... ..14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`“pilot symbols” ....................................................................................... ..l5
`
`“cluster” .................................................................................................. .. 1 6
`
`“diversity cluster” ................................................................................... .. 16
`
`“coherence cluster” ................................................................................ ..l7
`
`“coherence bandwidth” .......................................................................... ..17
`
`B.
`
`Obviousness ............................................................................................... ..18
`
`V. FACTUAL BACKGROUND AND RELEVANT CONTEXT ....................... ..20
`
`A.
`
`B.
`
`The ‘375 Patent ......................................................................................... ..20
`
`The Prosecution History of the ‘375 Patent .............................................. ..2l
`
`VI. INVALIDITY ANALYSIS ............................................................................. ..22
`
`A.
`
`B.
`
`C.
`
`Summary of Invalidity Analysis .................
`
`........................................... ..22
`
`Overview of German Patent No. DE 198009531 C1 to Ritter (“Ritter”) ...23
`
`Overview of U.S. Patent No. 6,760,882 (“Gesbert”) ................................ ..24
`
`D. Overview of U.S. Patent No. 7,039,120 to Thoumy et al. (“Thoumy”) .....25
`
`E.
`
`Overview of U.S. Patent No. 6,018,528 to Gitlin et al. (“Gitlin”) ............ ..26
`
`F. Ritter In View Of Gesbert and Thoumy Renders Claims 1, 2, 8, 9, 12, 14-18,
`24, 25, 28, and 30-32 Obvious Under 35 U.S.C. § 103(a) ................................. ..27
`
`1.
`
`Claims 1 and 17 ...................................................................................... ..27
`
`Claims 2 and 18: “wherein the plurality of feedback clusters at the
`2.
`second time is different than the plurality of feedback clusters at the first time”
`53
`
`Claims 9 and 25: “wherein the receiving/receipt of the first allocation of
`3.
`OFDMA subcarriers includes receiving/receipt a first allocation of at least one
`group of clusters selected by the base station for use by the subscriber unit” .54
`2
`
`

`
`Claims 8 and 24: “wherein the receiving/receipt of the first allocation of
`4.
`OFDMA subcarriers is receiving/receipt a first allocation of at least one
`coherence cluster” ........................................................................................... ..55
`
`Claims 12 and 28: “wherein the receiving/receipt of the first allocation of
`OFDMA subcarriers includes consecutive clusters.” ..................................... ..55
`
`Claims 14 and 30: “wherein the receiving/receipt of the first allocation of
`5.
`the at least one group of clusters includes receiving/receive a group identifier
`that identifies one group of the first allocation of the at least one group of
`clusters.” .......................................................................................................... ..57
`6.
`Claims 15 and 31: “wherein the measuring/measurement of the first
`channel information for the plurality of subcarriers based on the first plurality
`of pilot symbols includes measuring channel information for all available
`clusters allocable by the base station.” ........................................................... ..58
`
`Claims 16 and 32: “providing/provide the first feedback information
`7.
`relating to all of the plurality of feedback clusters.” ....................................... ..60
`
`Ritter in View of Gesbert, Thoumy, and Gitlin Renders Claims 3-7, 10-11,
`G.
`13, 19-23, 26-27, and 29 Obvious Under 35 U.S.C. § 103(a) ............................ ..6l
`
`1.
`Claims 3 and 19: “wherein at least one subcarrier of the first allocation
`of OFDMA subcarriers is non—contiguous with the other subcarriers of the first
`allocation of OFDMA subcarriers” ................................................................. ..65
`
`Claims 4 and 20: “wherein the first allocation of OFDMA subcarriers includes
`a cluster identifier that identifies a first plurality of subcarriers in a first time
`slot and a second plurality of subcarriers in a second time slot, at least two
`subcarriers of the first plurality of subcarriers and of the second plurality of
`subcarriers being disjoint” .............................................................................. ..65
`
`Claims 6 and 22: “wherein the receiving/receipt of the first allocation of
`OFDMA subcarriers is receiving/receipt a first allocation of at least one
`diversity cluster” ............................................................................................. ..65
`
`Claims 10 and 26: “wherein at least one cluster of the first allocation of the at
`
`least one group of clusters is disjoint from at least one other cluster of the first
`allocation of the at least one group of clusters to obtain frequency diversity.”65
`
`Claims 13 and 29: “wherein the receiving of the first allocation of the at
`2.
`least one group of clusters includes an indication of space between each cluster
`of the first allocation of the at least one group of clusters” ............................ ..70
`
`

`
`Claims 7 and 23: “wherein the at least one diversity cluster includes two
`3.
`or more subcarriers spread farther apart than a coherence bandwidth of a
`respective channel” ......................................................................................... ..71
`
`Claims 11 and 27: “wherein disjoint clusters of the first allocation of the at
`least one group of clusters are spread farther apart than a coherence bandwidth
`of a respective channel” .................................................................................. ..71
`
`Claims 5 and 21: “wherein at least one subcarrier of the first plurality of
`4.
`subcarriers in the first time slot is different than all of the subcarriers of the
`
`second plurality of subcarriers in the second time slot” ................................. ..72
`
`Thoumy in View of Gesbert Renders Claims 1, 9, 15-17, 25, 31, and 32
`H.
`Obvious Under 35 U.S.C. § lO3(a) .................................................................... ..74
`
`1. Thoumy in View of Gesbert and Gitlin Renders Claims 3, 6-8, 10-13, 19, 22-
`23, and 26-29 Obvious Under 35 U.S.C. § 103(a) ............................................. ..89
`
`J. Thoumy in View of Gesbert and Ritter Renders Claims 2, 14, 18, and 30
`Obvious Under 35 U.S.C. § 103(a) .................................................................... ..94
`
`1.
`
`2.
`
`Claims 2 and 18 ...................................................................................... ..95
`
`Claims 14 and 30 .................................................................................... ..95
`
`Thoumy in View of Gesbert, Ritter, and Gitlin Renders Claims 4, 5, 20,
`K.
`and 21 Obvious Under 35 U.S.C. § 103(a) ........................................................ ..95
`
`1.
`
`2.
`
`Claims 4 and 20 ...................................................................................... ..96
`
`Claims 5 and 21 ...................................................................................... ..97
`
`VII. CONCLUDING STATEMENTS .................................................................. ..97
`
`

`
`A.
`
`Background and Qualifications
`
`I. INTRODUCTION
`
`1.
`
`My name is Richard D. Gitlin. I am currently a State of Florida 21st
`
`Century Scholar, Distinguished University Professor, and the Agere Systems
`
`Chaired Professor of Electrical Engineering at the University of South Florida
`
`(“USF”). I have more than 45 years of experience in the field of communications
`
`and wireless communications in particular. Throughout my career, I have managed
`
`and led research in wireline and wireless systems, broadband and optical
`
`networking, multimedia communications, and access technologies. My curriculum
`
`vitae is attached as Appendix B.
`
`2.
`
`I have a Bachelor’s Degree (with honors) in electrical engineering
`
`from the City College of New York and a Master of Science in electrical
`
`engineering and a Doctorate in engineering science from Columbia University.
`
`3.
`
`After receiving my Doctorate from Columbia University in 1969, I
`
`joined Bell Laboratories (“Bell Labs”), which at the time was part of the Bell
`
`System,
`
`and successively became AT&T Bell Labs,
`
`and then Lucent
`
`Technologies—Bell Labs (which is now Nokia Bell Labs). I was with Bell Labs in
`
`its Various instantiations for 32 years. My first assignment was in the data
`
`communications (“modem”) area and, during this time,
`
`I contributed to the
`
`invention of many key modem technologies. I was also involved in the product
`
`5
`
`

`
`realization,
`
`standardization, and introduction of several pioneering modem
`
`products.
`
`I was the leader of the \/.32 modem development team in the early
`
`1980s, assembled the team that developed the V.34 modem, and I was a co-
`
`inventor of Digital Subscriber Line (“DSL”) technology in 1985-1986.
`
`4.
`
`In 1987, I moved to Bell Labs research to lead research on wireless
`
`systems, high—speed packet switching, optical networking, and related areas. I held
`
`several senior executive positions in'Bell Labs, and one of these positions was
`
`Senior Vice President for Communication Sciences Research. In this position,
`
`included in my responsibilities were all of Bell Labs wireless communications
`
`research projects,
`
`including time division multiple access (“TDMA”), code
`
`division multiple
`
`access
`
`(“CDMA”),
`
`and
`
`orthogonal
`
`frequency division
`
`multiplexing (“OFDM”) research for both cellular and wireless local area network
`
`(“WLAN” or WiFi) systems. In this position, I oversaw over 500 professionals,
`
`many of whom were involved in wireless communications and network research.
`
`In particular, I established and oversaw the Bell Labs research group located in
`
`Utrecht, The Netherlands that was focused on creating WLAN technology. This
`
`group was involved in the research and exploratory development of CDMA and
`
`OFDM WLAN systems. In addition, I oversaw cellular wireless research groups
`
`located in Swindon, UK. The Bell Labs research groups working on wireless
`
`research in the United States also reported to me and included several researchers
`
`6
`
`

`
`working on OFDM and multiple—in, multiple—out (“MIMO”). At Bell Labs, 1 was
`
`personally involved in MIMO technology working with and extending the Work of
`
`some the original inventors.
`
`5.
`
`1 have had a long association and involvement with OFDM
`
`technology beginning when I joined Bell Labs in 1969. R.W. Chang and B.
`
`Saltzberg invented OFDM in the 1960s at Bell Labs]. Interest in OFDM was
`
`significantly increased by the pioneering work of Ebert and Weinstein (of Bell
`
`Labs) in 1971 that demonstrated that the Fast Fourier Transform (“FFT”) could be
`
`used to efficiently generate and receive an OFDM signal. See S.B. Weinstein and
`
`Paul Ebert, “Data Transmission by Frequenc)/—Division Multiplexing Using the
`
`Discrete Fourier Transform,” IEEE Transactions on Communications Technology,
`
`October 1971. At various times in my career, I worked with Chang, Saltzberg,
`
`Ebert, and Weinstein, and I was keenly aware of OFDM shortly after I joined Bell
`
`Labs in 1969 and my interest and involvement with OFDM has continued.
`
`6.
`
`In the mid-late 1980’s I led the research at Bell Labs on the suitability
`
`of OFDM (referred to at that time as multi—tone) and other technologies as a
`
`modulation choice for a Wireline data system, DSL. Around this time, it was clear
`
`See Chang, R.W. Synthesis of Band—Limz'ted Orthogonal Signals for
`‘
`Multichannel Data Transmission. Bell Sys. Tech. J.; Dec 1966; 45: 1775-1796;
`Saltzberg, B.R. Performance of an Efficient Parallel Data Transmission System.
`IEEE Trans. Commun.; Dec” 1967; COM—15; 805-81.
`
`7
`
`

`
`to many at Bell Labs that OFDM was also a natural candidate for cellular and WiFi
`
`wireless systems.
`
`7.
`
`Throughout my career, I have conducted and led pioneering research
`
`and development
`
`in digital communications, wireless systems, and broadband
`
`networking that has resulted in many innovative products. I am the named inventor
`
`on more than 55 issued United States patents, the author, or co—author, of over 100
`
`journal and conference articles and a graduate level data communications textbook,
`
`and I have given numerous keynote presentations,
`
`including premier wireless
`
`conferences, such as Wireless Communications and Networking Conference 2015
`
`(“WCNC 2015”), Wireless Telecommunications Symposium 2015 (“WTS 2015”),
`
`Mobicom 2004, Wireless Communications and Networking Conference 2003
`
`(“WCNC 2003”), Wireless Telecommunications Symposium 2010 (“WTS 2010”)
`
`and am scheduled to give the keynote presentation at the IEEE Wireless and
`
`Microwave Technology Conference 2016 (“WAMICON 2016”).
`
`I am the co-
`
`recipient of three prize paper awards including the 1995 IEEE Communications
`
`Society’s Steven O. Rice Award,
`
`the 1994 IEEE Communications Society’s
`
`Frederick Ellersick Award, and the 1982 Bell System Technical Journal Award.
`
`8.
`
`In addition to my responsibilities at Bell Laboratories and Lucent
`
`Technologies,
`
`from 1999 to 2001,
`
`I was a Visiting Professor of Electrical
`
`Engineering at Columbia University, where I taught courses, conducted research,
`
`8
`
`

`
`and supervised doctoral students in the area of communications and wireless
`
`networking. From 2001 to 2003,
`
`I was an Adjunct Professor of Electrical
`
`Engineering at Columbia University.
`
`9.
`
`From 2001 to 2004, I was Vice President, Technology and Chief
`
`Technical Officer of NEC Laboratories America,
`
`Inc., where I had specific
`
`responsibility for wireless networking, broadband and IP systems, system LSI,
`
`quantum communications, and bio—inforrnatics.
`
`10.
`
`From 2002 to 2005, I served on the Board of Directors of PCTEL, a
`
`NASDAQ company (PCTI) focused on wireless technologies.
`
`11.
`
`From 2005 to 2008, I was Chief Technical Officer of Hammerhead
`
`Systems, a Silicon Valley venture—funded start-up and market leader in providing
`
`innovative data networking solutions for wireline, wireless, and cable service
`
`providers. At Hammerhead Systems, I was responsible for product line vision and
`
`system architecture, developing core technologies, representing product technology
`
`and directions with customers, partners, and standards bodies.
`
`12.
`
`In 2008, I assumed my current position at USF and, in March 2010, I
`
`co—founded a medical device company to design and market
`
`in viva wireless
`
`devices, based on OFDM, to facilitate minimally invasive surgery.
`
`13.
`
`In 1986-1987, I was named a Fellow of the IEEE and an AT&T Bell
`
`Laboratories Fellow. In 2005, I was elected to the U.S. National Academy of
`
`9
`
`

`
`Engineering (“NAE”), and I was also a co—recipient of the Thomas Alva Edison
`
`patent award.
`
`I am also a Charter Fellow (2012) of the National Academy of
`
`Inventors (“NAI”).
`
`14.
`
`I served as the Chair of the Communication Theory Committee of the
`
`IEEE Communications Society (COMSOC), as a member of the COMSOC
`
`Awards Board, the Editor for Communications Theory of the IEEE Transactions
`
`on Communications, as a member of the Board of Governors of the IEEE
`
`Communications Society, and as a member of the Nominations and Elections
`
`Board.
`
`15.
`
`I also served on the Advisory Committee for Computer Science and
`
`Engineering (“CISE”) of the National Science Foundation.
`
`16.
`
`I was a founding Editorial Board member of the Bell Labs Technical
`
`Journal, and have served on the Editorial Boards of Mobile Networks and
`
`Applications and the Journal of Communications Networks.
`
`17.
`
`For more than 15 years, I presented an intensive five—day short course
`
`on wireless
`
`systems——including OFDMA~to industrial, government,
`
`and
`
`academic participants, from wireless organizations throughout the world.
`
`18.
`
`Since joining USF in 2008,
`
`I have focused my research on the
`
`intersection of wireless communications and networking with medicine and created
`
`an interdisciplinary team that
`
`is focused on wireless networking of in vivo
`
`10
`
`

`
`miniature wirelessly controlled devices to advance minimally invasive surgery and
`
`other cyber—physical health care systems. I have also done research on 4G/5G
`
`wireless systems, with an emphasis on enhancing capacity by managing the
`
`Quality of Service (QoS). I teach graduate courses in Random Processes, Digital
`
`Communications, and Wireless Networking, and these courses cover aspects of
`
`OFDM.
`
`19.
`
`A detailed record of my professional qualifications is set forth in the
`
`attached Appendix B, which is my curriculum vitae,
`
`including a list of
`
`publications, awards, research grants, and professional activities.
`
`20.
`
`I have been asked to render opinions in this declaration as a technical
`
`expert. I have not been asked to offer any opinions of law in this IPR.
`
`II. SCOPE OF WORK
`
`21.
`
`I have been retained by McGuireWoods LLP, counsel for Sprint
`
`Spectrum L.P. (“Sprint”), WilmerHale LLP, counsel for Cellco Partnership d/b/a
`
`Verizon Wireless (“Verizon”), and Baker Botts L.L.P., counsel for AT&T Mobility
`
`LLC (“AT&T”) (collectively, “Petitioners”) as a technical expert in this matter. I
`
`bill $675 per hour for my services. No part of my compensation is dependent on
`
`my opinions or on the outcome of this proceeding. I have no financial interest,
`
`direct, indirect, beneficial or otherwise, in any of the parties.
`
`11
`
`

`
`22.
`
`I have been asked by counsel for Petitioners to offer an expert opinion
`
`on the validity of claims 1-32 (the “Challenged Claims”) of U.S. Patent 8,934,375
`
`(the “‘375 Patent” or the “Patent,” attached as Exhibit 1001). In connection with
`
`my analysis, I have reviewed the ‘375 Patent and its prosecution history. I have
`
`also reviewed and considered various other documents in arriving at my opinions,
`
`some of which are cited in this declaration. For convenience, the information I
`
`considered in arriving at my opinions is listed in Appendix A. In forming my
`
`opinions, I have also relied upon my education, training, knowledge of pertinent
`
`literature, and my years of experience in the field of the ‘375 Patent.
`
`23.
`
`The individuals involved in the prosecution of the ‘375 Patent and the
`
`inventors are referred to respectively as the “Applicants” or “Patentee.”
`
`A.
`
`Topics of Opinions
`
`24.
`
`In this declaration I offer opinions on the following general topics:
`
`0
`
`0
`
`the subject matter described and claimed in the ‘375 Patent;
`
`the level of ordinary skill
`
`in the art pertaining to the ‘375
`
`Patent;
`
`0
`
`the knowledge of one of ordinary skill in the art as of the time
`
`of the invention;
`
`0
`
`the Challenged Claims of the Patent, including the meaning of
`
`certain claim terms as they would have been understood by a
`
`12
`
`

`
`person of ordinary skill in the art as of the time of the invention;
`
`0
`
`0
`
`the teachings of the prior art; and
`
`the invalidity of the Challenged Claims in view of the prior art,
`
`and the bases and reasons therefore.
`
`III. LEVEL OF ORDINARY SKILL AND RELEVANT TIME
`
`25.
`
`I have been advised that the relevant time frame for assessing validity
`
`of the ’375 Patent is prior to its priority date of December 15, 2000. When I refer
`
`to “2000” in this Declaration,
`
`I mean specifically December 15, 2000, unless
`
`another specific date is referenced.
`
`26.
`
`The “Field of the Invention” section of the ’375 Patent specification
`
`states:
`
`The invention relates to the field of wireless communications; more
`particularly, the invention relates to multi-cell, multi-subscriber wireless
`systems
`using
`orthogonal
`firequency
`division
`multiplexing
`(OFDA/.0.
`’375 Patent, l:24—27.
`
`27.
`
`The specification discusses
`
`systems and methods for allocating
`
`subcarriers to subscriber units in an orthogonal frequency division multiple access
`
`(OFDMA) system. This allocation is based on feedback received from the
`
`subscriber units. As demonstrated below, channel allocation based on feedback
`
`from subscriber units predates the ’375 Patent (supra Section VI), and it is my
`
`13
`
`

`
`opinion that the ’375 Patent does not disclose or claim any new and non-obvious
`
`method of actually allocating subcarriers.
`
`28.
`
`I have considered the level of skill that would be needed to understand
`
`the specification and claims and to make and use the inventions claimed in the
`
`‘375 Patent without undue experimentation.
`
`29.
`
`In my opinion, a person of ordinary skill in the art relevant to the ’375
`
`Patent in 2000 would have had an in—depth knowledge of wireless communications
`
`as would be attained through a Bachelor’s degree in electrical engineering or a
`
`similar degree, with at
`
`least
`
`three to four years of experience in wireless
`
`communication technology or other communication—related technology, or a
`
`Master’s degree in electrical engineering or a similar degree, with at least two
`
`years
`
`of
`
`experience
`
`in wireless
`
`communication
`
`technology
`
`or
`
`other
`
`communication—related technology.
`
`IV. LEGAL STANDARDS
`
`30. As a technical expert, I will not offer opinions of law. Rather, I have
`
`been advised of several legal principles concerning claim construction and patent
`
`invalidity, which I applied in arriving at my conclusions.
`
`A.
`
`Claim Construction
`
`31.
`
`I have been advised that in determining whether a patent claim is
`
`anticipated or rendered obvious in view of the prior art, the Patent Office must
`
`I4
`
`

`
`construe the claim by giving it the broadest reasonable interpretation consistent
`
`with the specification. The terms of the claim also are given their ordinary and
`
`customary meaning, as would beunderstood by one of ordinary skill in the art in
`
`the context of the disclosure and the prosecution history. For the purposes of this
`
`review,
`
`I have analyzed each claim term in accordance with its ordinary and
`
`customary meaning under the required broadest reasonable interpretation. Further,
`
`construing the terms based on “the meaning that a term would have to a person of
`
`ordinary skill in the art in question at the time of the invention” as articulated by the
`
`Federal Circuit in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) would not
`
`change the analysis or conclusions covered in this declaration. The prior art teaches each
`
`claim limitation under any reasonable interpretation ofthe claim terms, and the analysis is
`
`not dependent on application ofthe "broadest reasonable interpretation" standard.
`
`1.
`
`“pilot symbols”
`
`32.
`
`I have been advised that in other litigations and a PTAB proceeding
`
`involving United States Patent No. 6,947,748 (the “‘748 Patent”), a patent from the
`
`same family as the ’375 Patent, the term “pilot symbols.” was construed to mean
`
`“symbols, sequences, or signals known to both the base station and subscriber.”
`
`Ex. 1012, Claim Construction Order, 6:13-cv—438, Dkt. 90 (ED. Tex., Sept. 19, 2-14) at
`
`17; Ex. 1011, IPR2015—00319 Institution Decision, Paper 10. This is consistent
`
`with how the term is described in the ’375 Patent. See, e. g., Ex. 1001, ’375 Patent
`
`15
`
`

`
`at 5:38-40 (“The pilot symbols, often referred to as a sounding sequence or signal,
`
`are known to both the base station and the subscribers”). Accordingly,
`
`in my
`
`opinion,
`
`the broadest reasonable interpretation of “pilot symbol” is “symbols,
`
`sequences, or signals known to both the base station and subscriber.”
`
`2.
`
`“cluster”
`
`33.
`
`The specification of the ’375 Patent defines a “cluster” as “a logical
`
`unit that contains at least one physical subcarrier.” Id. at 5:20-21. Accordingly, I
`
`believe that one of skill in the art would understand, from the specification of
`
`the ’375 Patent, that the broadest reasonable construction of “cluster” is “a logical
`
`unit that contains at least one physical subcarrier.”
`
`3.
`
`“diversity cluster”
`
`34.
`
`The specification of the ’375 Patent describes a “diversity cluster” as
`
`a cluster “containing multiple subcarriers with at least some of the subcarriers
`
`spread far apart over the spectrum.” Id. at 14:28-30. As an example, the ’375
`
`Patent states that “the spread of subcarriers in diversity clusters is preferably larger
`
`than the channel coherence bandwidth, typically within 100 kHz for many cellular
`
`systems.” Id. at 14:34-37. According to the ’375 Patent, “the larger the spread, the
`
`better the diversity.” Id. at 14:3 7—38. Accordingly, I believe that one of skill in the
`
`art would understand, from the specification of the ’375 Patent, that the broadest
`
`reasonable construction of “diversity cluster” is “a cluster containing multiple
`
`l6
`
`

`
`subcarriers with at
`
`least some of the subcarriers spread far apart over the
`
`spectrum.”
`
`4.
`
`“coherence cluster”
`
`35.
`
`The specification of the ’375 Patent describes a “coherence cluster” as
`
`a cluster “containing multiple subcarriers close to each other.” Id. at 14:27-28. As
`
`shown above, the ’375 Patent contrasts a coherence cluster with a diversity cluster.
`
`According to the ’375 Patent, “[t]he closeness of the multiple subcarriers in
`
`coherence clusters is preferably within the channel coherence bandwidth, ie, the
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`bandwidth within which the channel response remains roughly the same, which is
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`typically within 100 kHz for many cellular systems.” Id. at l4:30—34. Accordingly,
`
`I believe that one of skill in the art would understand, from the specification of
`
`the ’375 Patent, that the broadest reasonable construction of “coherencecluster” is
`
`“a cluster containing multiple subcarriers close to each other.”
`
`5.
`
`“coherence bandwidth”
`
`36.
`
`The
`
`specification of the
`
`’375 Patent describes
`
`a “coherence
`
`bandwidth” as “the bandwidth within which the channel response remains roughly
`
`the same. A typical Value of coherence bandwidth is 100 kHz for many cellular
`
`systems.” Id. at 11:55-60. See also id. at l4:30~33 (“[t]he closeness of the multiple
`
`subcarriers in coherence clusters is preferably within the channel coherence
`
`bandwidth,
`
`i.e.
`
`the bandwidth within which the channel response remains
`
`l7
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`

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`roughly the same, which is typically within 100 kHz for many cellular systems”).2
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`Accordingly,
`
`I believe that one of skill
`
`in the art would understand, from the
`
`specification of the ’375 Patent,
`
`that
`
`the broadest reasonable construction of
`
`“coherence bandwidth” is “the bandwidth within which the channel response
`
`remains roughly the same.”
`
`B.
`
`Obviousness
`
`37.
`
`I am advised that a claim is unpatentable under 35 U.S.C. § 103 if the
`
`claimed subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the art at the time of the invention. 1 am also advised that an obviousness
`
`analysis takes into account the scope and content of the prior art, the differences
`
`between the claimed subject matter and the prior art, and the level of ordinary skill
`
`in the art at the time of the invention.
`
`38.
`
`In determining the scope and content of the prior art, I am advised that
`
`a reference is considered appropriate prior art if it falls within the field of the
`
`inventor’s endeavor. In addition, a reference is prior art if it is reasonably pertinent
`
`to the particular problem with which the inventor was involved. A reference is
`
`reasonably pertinent if it logically would have commended itself to an inventor’s
`
`attention in considering his problem. If a reference relates to the same problem as
`
`2 Unless otherwise indicated, all emphasis is added.
`
`18
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`

`
`the claimed invention,
`
`that supports use of the reference as prior art
`
`in an
`
`obviousness analysis.
`
`39.
`
`To assess the differences between prior art and the claimed subject
`
`matter, I am advised that 35 U.S.C. § 103 requires the claimedinvention to be
`
`considered as a whole. This “as a whole” assessment requires showing that one of
`
`ordinary skill in the art at the time of invention, confronted by the same problems
`
`as the inventor and with no knowledge of the claimed invention, would have
`
`selected the elements from the prior art and combined them in the claimed manner.
`
`40.
`
`I am also advised that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of claimed subject matter. Some of these rationales include: combining prior art
`
`elements according to known methods to yield predictable results;
`
`simple
`
`substitution of one known element for another to obtain predictable results; a
`
`predictable use of prior art elements according to their established functions;
`
`applying a known technique to a known device (method or product) ready for
`
`improvement
`
`to yield predictable results; choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success; and
`
`some teaching, suggestion, or motivation in the prior art that would have led one of
`
`ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`19
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`

`
`41.
`
`Lastly,
`
`I am advised that an obviousness analysis must consider
`
`whether there are additional factors that would indicate that the invention was non-
`
`obvious. Such factors include whether the invention was commercially successful,
`
`Whether there was a long—felt need for the invention, whether others tried and
`
`failed to make the invention, and any other facts that would suggest that someone
`
`with ordinary skill in the art would not have found the invention obvious. In the
`
`present case, I am unaware of any evidence that would suggest that the claims of
`
`the ‘375 Patent would have been novel or non—obvious.
`
`V. FACTUAL BACKGROUND AND RELEVANT CONTEXT
`
`A.
`
`The ‘375 Patent
`
`42.
`
`The following is a summary of the claimed invention of the ’375
`
`Patent, not from today’s perspective, but rather from the perspective of what one of
`
`ordinary skill in the art would have understood at the time of the alleged invention
`
`in 2000.
`
`43.
`
`The claims of the ’375 Patent recite a method and apparatus for adaptively
`
`allocating subcarriers in an orthogonal frequency division multiple access (“OFDMA”)
`
`system. Generally speaking, the claimed invention requires a subscriber unit to (1)
`
`measure channel information for subcarriers based on pilot symbols received from a base
`
`station; (2) provide feedback information to the base station, including a modulation and
`
`coding rate, for clusters of subcarriers based on the measurements; (3) receive an
`
`20
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`

`
`allocation of OFDMA subcarriers from the base station, including a modulation and
`
`coding rate, selected by the base station for use by the subscriber unit; and (4) repeat
`
`these steps at a second time to receive a second allocation of OFDMA subcarriers that is
`
`different from the first allocation. See, e.g., Claim 1.
`
`44.
`
`Claims 1-16 of the ’375 Patent are method claims, while claims 17-32
`
`are corresponding apparatus claims. In other Words, claim 1 of the ’375 Patent is
`
`directed to a method for a wireless system employing OFDMA, while claims 17 is
`
`directed to a subscriber unit in a wireless system employing OFDMA, the wireless
`
`unit comprising a processor configured to perform the same exact steps as the
`
`method in claim 1. The Challenged Claims recite merely conventional steps for
`
`allocating subcarriers to a subscriber unit
`
`in an OFDMA system. A detailed
`
`analysis of why the steps were conventional
`
`is given below in the “Invalidity
`
`Analysis” section.
`
`B,
`
`The Prosecution History of the ‘375 Patent
`
`45.
`
`During prosecution,
`
`the Patent Owner
`
`submitted five Information
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`Disclosure Statements (including a 48 page Form PTO—l449 upon initial filing), citing
`
`over 1,400 references,
`
`including hundreds of documents from pending litigation
`
`involving the ’748 Patent (Ex. 1017) and U.S. Patent No. 7,454,212 (“the ’212 Patent”)
`
`(Ex. 1018). The Examiner noted, “the number of references submitted is unreasonably
`
`large in quantity and Without any indication of relevancy. Examiner made only a be