Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`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
`
`U.S. Patent No.: 8,934,375
`
`Issue Date: January 13, 2015
`
`OFDMA WITH ADAPTIVE SUBCARRIER-CLUSTER
`
`CONFIGURATION AND SELECTIVE LOADING
`
`______________________
`
`Case IPR2016-00824
`
`____________________________________________________________
`
`ADAPTIX, INC.
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`i
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iv
`LIST OF EXHIBITS .................................................................................................. v
`STATEMENT OF MATERIAL FACTS IN DISPUTE ............................................ i
`I.
`INTRODUCTION. ............................................................................................. 1
`A. Grounds of the Petitioners’ proposed rejections. ....................................... 2
`II. BACKGROUND. ............................................................................................... 3
`A. Summary of the prosecution of the ‘375 patent. ........................................ 3
`B. Summary of the claimed subject matter of the ‘375 patent ....................... 5
`III. STANDARD FOR GRANTING INTER PARTES REVIEW ........................... 8
`IV. CLAIM CONSTRUCTION OF THE CHALLENGED CLAIMS .................... 9
`A. Claim construction. ...................................................................................... 9
`V. THE CLAIMS OF THE ‘375 PATENT ARE PATENTABLE OVER THE
`PETITIONERS’ PROPOSED REJECTIONS BASED ON OBVIOUSNESS.
` .......................................................................................................................... 10
`A. Claims 2, 8, 14, 18, 24, and 30 are patentable over the proposed
`obviousness rejection under 35 U.S.C. § 103(a) based on Ritter in view
`of Gesbert and Thoumy. ........................................................................... 10
`B. Claims 2 and 18 are patentable over the proposed obviousness rejection
`under 35 U.S.C. § 103(a) based on Ritter in view of Gesbert and
`Thoumy. .................................................................................................... 24
`C. Claims 14 and 30 are patentable over the proposed obviousness rejection
`under 35 U.S.C. § 103(a) based on Ritter in view of Gesbert and
`Thoumy. .................................................................................................... 25
`
`ii
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`D. Claims 4-7, 11, 13, 20-23, 27, and 29 are patentable over the proposed
`obviousness rejection under 35 U.S.C. § 103(a) based on Ritter in view
`of Gesbert, Thoumy, and Gitlin. ............................................................... 29
`E. Claims 5 and 21 are patentable over the proposed obviousness rejection
`under 35 U.S.C. § 103(a) based on Ritter in view of Gesbert, Thoumy,
`and Gitlin. ................................................................................................. 30
`F. Claims 6-8, 11, 13, 22-24, 27, and 29 are patentable over the proposed
`rejection under 35 U.S.C. § 103(a) based on Thoumy in view of Gesbert
`and Gitlin .................................................................................................. 34
`G. Claims 2, 14, 18, and 30 are patentable over the proposed obviousness
`rejection under 35 U.S.C. § 103(a) based on Thoumy in view of Gesbert
`and Ritter. ................................................................................................. 47
`H. Claims 2 and 18 are patentable over the proposed obviousness rejection
`under 35 U.S.C. § 103(a) based on Thoumy in view of Gesbert and
`Ritter. ........................................................................................................ 48
`I. Claims 14 and 30 are also patentable over the proposed rejection under
`35 U.S.C. § 103(a) based on Thoumy in view of Gesbert and Ritter ...... 49
`J. Claims 4, 5, 20, and 21 are patentable over the proposed obviousness
`rejection under 35 U.S.C. § 103(a) based on Thoumy in view of Gesbert,
`Gitlin, and Ritter. ...................................................................................... 50
`K. Claims 5 and 21 are patentable over the proposed obviousness rejection
`under 35 U.S.C. § 103(a) based on Thoumy in view of Gesbert, Gitlin,
`and Ritter. ................................................................................................. 51
`VI. CONCLUSION. ............................................................................................... 53
`
`
`
`
`
`iii
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`TABLE OF AUTHORITIES
`
`Cases 
`Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 709 F.3d 1348 (Fed. Cir.
`2013) ..................................................................................................................... 27
`Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016) ................................ 9
`In re Kahn, 441 F. 3d 977 (Fed. Cir 2006) .............................................................. 33
`In re Ratti, 270 F.2d 810 (CCPA 1959) ............................................................ 12, 13
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 9
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ........................................ passim
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) ............. 27
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 27
`Statutes 
`35 U.S.C. § 103(a) ........................................................................................... passim
`35 U.S.C. § 314(a) .............................................................................................. 8, 53
`35 U.S.C. § 325(d) ..................................................................................................... 1
`Other Authorities 
`MPEP § 2143.01(VI) ........................................................................................ 12, 13
`Regulations 
`37 C.F.R. § 1.75(c) ............................................................................................ 10, 34
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`37 C.F.R. § 42.23(a) ................................................................................................... i
`37 C.F.R. § 42.24(d) ................................................................................................ 54
`
`
`
`
`
`iv
`
`

`
`
`
`Exhibit No.
`2101
`
`2102
`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`LIST OF EXHIBITS
`
`Exhibit
`Expert report of Thomas Fuja, Ph.D. regarding
`invalidity of U.S. Patent Nos. 6,947,748 and 7,454,212,
`July 7, 2014.
`Patent Trial and Appeal Board Decision Denying
`Institution of Inter Partes Review of U.S. Patent No.
`7,454,212, June 10, 2015.
`
`v
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`
`
`Petitioners, Sprint Spectrum L.P., Cellco Partnership D/B/A Verizon
`
`Wireless, and AT&T Mobility LLC (“Petitioners”), did not submit a specific
`
`articulated statement of material facts in the Petition. Accordingly, no response is
`
`due pursuant to 37 C.F.R. § 42.23(a), and no facts are admitted.
`
`
`
`i
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`I.
`
`INTRODUCTION.
`
`The Office has already considered and rejected three of the four references
`
`relied upon by the Petitioners in their proposed rejection. Unsatisfied with the
`
`Office’s review, the Petitioners filed the present petition for inter partes review
`
`(“Petition”) of Patent Owner’s U.S. Patent No. 8,934,375 (“‘375 patent”).
`
`The Board should deny the Petition in its entirety based on procedural and
`
`substantive defects. Under 35 U.S.C. § 325(d), the Board has broad discretion to
`
`deny a petition that raises substantially the same prior art or arguments previously
`
`presented to the Office. Furthermore, the Petitioners argue multiple alternate
`
`grounds for each of the challenged claims and provide no meaningful distinction
`
`between them. This runs counter to a petitioner’s obligation to present only its best
`
`case in a petition for inter partes review.
`
`In order for the Board to grant review of the Petition, the Petitioners must
`
`prove that there is a reasonable likelihood that at least one of the challenged claims
`
`is unpatentable. (See 37 C.F.R. § 42.108(c).) The Petition fails to meet this
`
`requirement. Even if the Board identifies any grounds in the Petition that are not
`
`redundant or cumulative, it should deny the Petition because the Petitioners have
`
`failed to meet their threshold burden to prove that there is a reasonable likelihood
`
`that at least one of the claims challenged in the Petition is unpatentable.
`
`
`
`1
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`A. Grounds of the Petitioners’ proposed rejections.
`
`The Petition is directed to claims 2, 4-8, 11, 13, 14, 18, 20-24, 27, 29, and
`
`30, and proposes various grounds of rejection under 35 U.S.C. § 103(a) against the
`
`subject claims including the following:
`
`1. Claims 2, 8, 14, 18, 24, and 30 are allegedly invalid under 35
`
`U.S.C. § 103(a) as being obvious over German Patent No. DE19800953 to
`
`Ritter (Exhibit 1103) (hereinafter “Ritter”) in view of U.S. Patent No.
`
`6,760,882 to Gesbert et al. (Exhibit 1105) (hereinafter “Gesbert”) and U.S.
`
`Patent No. 7,039,120 to Thoumy et al. (Exhibit 1107) (hereinafter
`
`“Thoumy”);
`
`2. Claims 4-7, 11, 13, 20-23, 27, and 29 are allegedly invalid under
`
`35 U.S.C. § 103(a) as being obvious over Ritter in view of Gesbert,
`
`Thoumy, and U.S. Patent No. 6,018,528 to Gitlin et al. (Exhibit 1106)
`
`(hereinafter “Gitlin”);
`
`3. Claims 6-8, 11, 13, 22-24, 27, and 29 are allegedly invalid under
`
`35 U.S.C. § 103(a) as being obvious over Thoumy in view of Gesbert and
`
`Gitlin;
`
`4. Claims 2, 14, 18, and 30 are allegedly invalid under 35 U.S.C. §
`
`103(a) as being obvious over Thoumy in view of Gesbert and Ritter; and
`
`2
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`5. Claims 4, 5, 20, and 21 are allegedly invalid under 35 U.S.C. §
`
`103(a) as being obvious over Thoumy in view of Gesbert, Gitlin, and Ritter.
`
`As explained below, Patent Owner submits that claims 2, 4-8, 11, 13, 14, 18,
`
`20-24, 27, 29, and 30 are patentable over the respective five (5) grounds of
`
`rejection proposed in the Petition.
`
`II. BACKGROUND.
`
`A.
`
`Summary of the prosecution of the ‘375 patent.
`
`
`
`The application for the ‘375 patent was filed on June 2, 2014 and published
`
`as U.S. Patent Publication No. 2014/0269396 on September 18, 2014. The ‘375
`
`patent is a continuation of Application No. 13/230,625, filed September 12, 2011,
`
`now U.S. Patent No. 8,964,719; which is a continuation of Application No.
`
`12/748,781, filed March 29, 2010, now U.S. Patent No. 8,036,199; which is a
`
`continuation of Application No. 11/931,926, filed October 31, 2007, now U.S.
`
`Patent No. 7,715,358; which is a continuation of Application No. 11/199,586, filed
`
`August 8, 2005, now U.S. Patent No. 7,454,212 (“’212 patent”); which is a
`
`continuation of Application No. 09/738,086, filed December 15, 2000, now U.S.
`
`Patent No. 6,947,748 (“’748 patent”).
`
`Three of the four references relied on by the Petitioners were considered by
`
`the Examiner during the prosecution of the ‘375 patent. (Exhibit 1013 at 118, 122,
`
`and 127.) The Petitioners acknowledge that these references were considered but
`
`3
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`insist that they were “not substantively discussed during prosecution.” (Petition at
`
`7, 9, and 10.) However, the examiner during the prosecution of the ‘375 patent,
`
`Examiner Zewdu, was also the examiner in all five (5) of the applications to which
`
`the ‘375 patent claims priority. Examiner Zewdu did substantively discuss Ritter
`
`in at least two of the prior applications. In addition, Examiner Zewdu considered
`
`Gesbert in three of the prior applications and considered Gitlin in one of the prior
`
`applications. Moreover, Patent Owner notified Examiner Zewdu that the ‘212 and
`
`‘748 patents (both of which were examined by Examiner Zewdu) were the subject
`
`of 50 litigations and that each of the ‘212 and ‘748 patents were the subject of two
`
`inter partes reviews. (Exhibit 1113 at 107-112.) Furthermore, Patent Owner
`
`explained that Ritter, Gesbert, and Gitlin were identified by defendants in the
`
`various litigations that asserted those references were pertinent to the issue of
`
`validity of the ‘212 and ‘748 patents. (Exhibit 1113 at 111, 118, 122, and 127.)
`
`Given that Examiner Zewdu examined all five (5) prior applications, relied
`
`upon Ritter to support rejections in two (2) prior applications, and was informed
`
`that two (2) applications he examined were involved in numerous litigations and
`
`inter partes reviews, Patent Owner submits that Examiner Zewdu was acutely
`
`aware of Ritter, Gesbert, and Gitlin, and determined that the claims of the ‘375
`
`patent are patentable over them.
`
`
`
`4
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`B.
`
`Summary of the claimed subject matter of the ‘375 patent.
`
`
`
`The ‘375 patent is related to a method and apparatus for adaptive subcarrier
`
`allocation for systems employing orthogonal frequency-division multiple access
`
`(“OFDMA”). The first half of independent claim 1 recites “measuring, at a first
`
`time by a subscriber unit, a first channel information for a plurality of subcarriers
`
`based on a first plurality of pilot symbols,” then “providing, by the subscriber unit,
`
`a first feedback information relating to a plurality of feedback clusters based on at
`
`least the measuring of the first channel information…each feedback cluster of the
`
`plurality of feedback clusters being at least two subcarriers, the first feedback
`
`information…includes an index corresponding to a first modulation and coding
`
`rate associated with each feedback cluster of the plurality of feedback clusters,”
`
`next “receiving, by the subscriber unit, a first allocation of OFDMA subcarriers
`
`based on at least the providing of the first feedback information selected by the
`
`base station for use by the subscriber unit…including an indication of a modulation
`
`and coding rate.” As explained by the specification, each subscriber unit is
`
`measuring channel information across a plurality of subcarriers, and from the
`
`plurality of subcarriers, each subscriber unit selects a subset of preferred clusters
`
`and informs the base station of the subscriber unit’s preferred clusters, the quality
`
`of each of the preferred clusters, and each cluster’s corresponding preferred
`
`modulation and coding rates. From the preferred clusters, the base station selects a
`
`5
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`subset of clusters for use by each subscriber unit, and sends an allocation of
`
`subcarriers to each subscriber unit, including an indication of modulation and
`
`coding rates for use with the allocated subcarriers. (‘375 patent at 3:24-57.)
`
`The second half of independent claim 1 recites the subscriber unit repeating
`
`the entire process, starting over with measuring the channel information for “the
`
`plurality of subcarriers,” i.e., all the same subcarriers initially measured, not just
`
`the subcarriers already allocated to the subscriber unit. That is, the subscriber unit
`
`is repeatedly monitoring the quality of other subcarriers, even those allocated to
`
`other users, and constantly feeding back updated information in search of better
`
`subcarriers. (‘375 patent at 6:63-7:8.) Independent claim 17 recites an apparatus
`
`configured to perform the same process.
`
`This process is shown at least in Fig. 1B (reproduced below), and the
`
`process is described at least at column 5, line 29 to column 7, line 35 of the ‘375
`
`patent.
`
`6
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`This “retraining” process is described in the ‘375 specification:
`
`
`
`From time to time, processing logic performs retraining by repeating
`
`the process described above (processing block 106). The retraining
`
`may be performed periodically. This retraining compensates for
`
`subscriber movement and any changes in interference. In one
`
`embodiment, each subscriber reports to the base station its updated
`
`selection of clusters and their associated SINRs. Then the base station
`
`7
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`further performs the reselection and informs the subscriber about the
`
`new cluster allocation.
`
`(‘375 patent at 6:63-7:4, emphasis added.) This process was very counterintuitive
`
`at the time because it would consume a large amount of bandwidth and would be
`
`very computationally intensive.
`
`III. STANDARD FOR GRANTING INTER PARTES REVIEW.
`
`
`
`The standard for granting/denying inter partes review is controlled by 35
`
`U.S.C. § 314(a), which indicates the following:
`
`The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the
`
`petition filed under section 311 and any response filed under section
`
`313 shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.
`
`(35 U.S.C. § 314(a).) As discussed below, claims 2, 4-8, 11, 13, 14, 18, 20-24, 27,
`
`29, and 30 are patentable over the respective five (5) proposed grounds of
`
`rejection. As such, the Petitioners have failed to meet their burden under 35 U.S.C.
`
`§ 314(a), and thus, Patent Owner respectfully requests that the Board deny
`
`institution of an inter partes review based on the Petition.
`
`
`
`8
`
`

`
`IV. CLAIM CONSTRUCTION OF THE CHALLENGED CLAIMS.
`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`A. Claim construction.
`In an inter partes review, claim terms of an unexpired patent are given their
`
`broadest reasonable construction in light of the specification of the patent in which
`
`they appear. (37 C.F.R. § 42.100(b), see also, Cuozzo Speed Technologies, LLC v.
`
`Lee, 579 U.S. ___, ___ (2016) (slip op., at 13).) Furthermore, under the broadest
`
`reasonable interpretation standard, claims are given their ordinary and customary
`
`meaning in view of the specification as would be understood by one of ordinary
`
`skill in the art at the time of the invention. (In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007).)
`
`1. Meaning of the claim recitation of “cluster.”
`The Petitioners argue that “the broadest reasonable construction of ‘cluster’
`
`is ‘a logical unit that contains at least one physical subcarrier.’” (Petition at 6.)
`
`Patent Owner notes that both independent claims 1 and 17 recite that “each
`
`feedback cluster of the plurality of feedback clusters being at least two
`
`subcarriers.” Accordingly, Patent Owner submits that “cluster” as recited in the
`
`claims should be properly construed as “being at least two subcarriers.”
`
`In the event that the Board preliminarily adopts any claim term definitions
`
`not consistent with the Patent Owner’s position, Patent Owner reserves the right to
`
`further argue its positions in a Response if an inter partes review is instituted.
`
`9
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`V.
`
`THE CLAIMS OF THE ‘375 PATENT ARE PATENTABLE OVER
`THE PETITIONERS’ PROPOSED REJECTIONS BASED ON
`OBVIOUSNESS.
`
`A. Claims 2, 8, 14, 18, 24, and 30 are patentable over the proposed
`obviousness rejection under 35 U.S.C. § 103(a) based on Ritter in view
`of Gesbert and Thoumy.
`
`The Petitioners allege that claims 2, 8, 14, 18, 24, and 30 (all of which
`
`depend from independent claims 1 or 17, or claims dependent therefrom) are
`
`unpatentable under 35 U.S.C. § 103(a) as being obvious over Ritter in view of
`
`Gesbert and Thoumy. Dependent claims incorporate all the recitations of the
`
`claims from which they depend. (37 C.F.R. § 1.75(c).) Accordingly, in order for
`
`the Petitioners’ proposed combination to render the dependent claims obvious, the
`
`proposed combination must also render the independent claims obvious. However,
`
`as explained below, the Petitioners’ proposed combination of Ritter in view of
`
`Gesbert and Thoumy does not result in every aspect of the claimed invention of
`
`independent claims 1 and 17. Moreover, one of ordinary skill would not combine
`
`the references in the manner proposed by the Petitioners. Therefore, claims 2, 8,
`
`14, 18, 24, and 30 are patentable at least due to their dependency from a patentable
`
`10
`
`independent claim.
`
`
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`The Petitioners’ proposed combination of Ritter and
`1.
`Gesbert is impermissible and therefore cannot be relied upon to
`disclose “measuring, at a first time by a subscriber unit, a first
`channel information for a plurality of subcarriers based on a first
`plurality of pilot symbols received from a base station,” as recited
`in independent claim 1, or “a processor configured to: measure, at
`a first time, a first channel information for a plurality of
`subcarriers based on a first plurality of pilot symbols received
`from a base station,” as recited in independent claim 17.
`
`The Petitioners assert that “Ritter teaches that each subscriber unit measures
`
`channel quality information for subcarriers between it and a base station.” (Petition
`
`at 11.) While Ritter does disclose a mobile station measuring the quality of various
`
`segments of the frequency spectrum, Ritter does not utilize pilot symbols received
`
`from the base station to do so, as required by the claims of the ‘375 patent.
`
`Instead, the Petitioners argue that “[t]o the extent the Patent Owner argues that
`
`Ritter does not explicitly disclose ‘measuring … based on a first plurality of pilot
`
`symbols,’ it would have nevertheless been obvious to measure channel quality
`
`using pilot symbols in view of Gesbert.”1 (Petition at 12.) Ritter does not disclose
`
`the above-quoted recitation, and as discussed below, the Petitioners’ proposed
`
`                                                            
`1 This statement implies that Petitioners believe Ritter may disclose measuring
`
`based on pilot symbols. This position directly contradicts Petitioners’ own expert,
`
`who definitively stated that Ritter does not. (Fuja Report, Exhibit 2101 at para.
`
`261.)
`
`11
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`combination of Ritter in view of Gesbert is improper under the law. (Fuja Report,
`
`Exhibit 2101 at para. 261 and see In re Ratti, 270 F.2d 810, 813 (CCPA 1959).)
`
`“If the proposed modification or combination of the prior art would change
`
`the principle of operation of the prior art invention being modified, then the
`
`teachings of the references are not sufficient to render the claims prima facie
`
`obvious.” (MPEP § 2143.01(VI) citing In re Ratti, 270 F.2d 810, 813 (CCPA
`
`1959), emphasis added.) According to the Petitioners’ expert, Dr. Fuja, from a
`
`related litigation, “Ritter did not disclose the use of pilot symbols to make those
`
`measurements – proposing a more sophisticated ‘blind’ approach based on
`
`amplitude variations.” (Fuja Report, Exhibit 2101 at para. 245.) Rather than using
`
`pilot symbols, Dr. Fuja explains:
`
`Part of Ritter’s novelty is that it proposes to derive the channel and
`
`interference measurements from data symbols (which are typically
`
`unknown to the receiver in advance) rather than pilot symbols (which
`
`are typically known to the receiver in advance). Making such
`
`measurements from data is a much more challenging problem than
`
`making them from pilots; estimating channel quality without the
`
`benefit of a known transmitted signal is an example of blind
`
`processing, and it is valuable because it does not require the
`
`12
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`“overhead” implied by estimating the channel quality from known
`
`(non-data-bearing) pilot symbols.
`
`(Fuja Report, Exhibit 2101 at paras. 245, 263, and 261, emphasis in original.)
`
`Indeed, Ritter explains that the first step of the disclosed method is to “[m]easure
`
`the quality of various segments of the frequency spectrum” and how it is done:
`
`An especially simple method to measure quality consists of so
`
`determining the relative deviations of the amplitudes of the data
`
`symbols, that the absolute amplitude difference from data symbol to
`
`data symbol is added up and the addition result is normalized with the
`
`average amplitude of all data symbols transmitted on a given
`
`subcarrier.
`
`(Ritter at 4 and 9.) Given that Ritter departed from the use of pilot symbols, and
`
`instead invented a novel method of measurement to save valuable “overhead,”
`
`Patent Owner submits that the novel method of measurement is a basic principle
`
`under which Ritter was designed to operate. Thus, replacing the novel approach
`
`invented by Ritter with the teachings of Gesbert would change the basic principles
`
`under which Ritter was designed to operate. Accordingly, under Ratti, such a
`
`combination of Ritter in view of Gesbert is “not sufficient to render the claims
`
`prima facie obvious.” (MPEP § 2143.01(VI) citing In re Ratti at 813.)
`
`
`
`13
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`The Petitioners’ proposed combination of Ritter, Gesbert,
`2.
`and Thoumy does not disclose “measuring, at a second time by the
`subscriber unit, a second channel information for the plurality of
`subcarriers based on a second plurality of pilot symbols,” as
`recited in independent claim 1, or “measure, at a second time, a
`second channel information for the plurality of subcarriers based
`on a second plurality of pilot symbols received from the base
`station,” as recited in independent claim 17.
`
`In an attempt to show that Ritter discloses the above-quoted recitations, the
`
`Petitioners falsely assert that “both Ritter and Gesbert describe performing
`
`repeated channel quality measurements for the plurality of subcarriers to obtain
`
`current and reliable channel quality measurements.” (Petition at 24.) However,
`
`one of ordinary skill would recognize that Ritter has no need to take additional
`
`measurements after the initial priority list is sent by each user because Ritter
`
`explicitly states that the method is “especially advantageous” for “applications
`
`with low movement speeds.” (Ritter at 7.) In other words, Ritter’s procedure is
`
`most useful where bandwidth demands might change, but the channel conditions
`
`are not likely to change dramatically, and therefore, there is no need to waste
`
`valuable overhead continually measuring and reporting the channel conditions,
`
`when the bandwidth can be modified based on the initial priority list. Regardless,
`
`the Petitioners aim to support their false assertion by pointing to various sections of
`
`Ritter, none of which disclose performing a second measurement.
`
`First, the Petitioners point to the following statement in Ritter:
`
`14
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`In the process, the quality of the actual communication link plays a
`
`decisive role with respect to the frequency situation which according
`
`to the procedure of the invention can be individually changed after the
`
`determination of the best suitable segments in each mobile station
`
`overseen by a base station and can thereby be improved.
`
`(Petition at 24, quoting Ritter at 6.) Note that this passage does not mention
`
`performing a second measurement by a mobile station. This passage states that the
`
`allocations can be changed “after the determination of the best suitable segments in
`
`each mobile station overseen by a base station.” (Ritter at 6.) Ritter discloses that
`
`the determination of the best suitable segments in each mobile station is performed
`
`after each mobile station transmits its own list of preferred segments. (Ritter at 8
`
`and 12-14.) Ritter does not disclose this process repeating.
`
`Second, the Petitioners point to the statement that “the best suited segments
`
`for communication can be determined at any time for individual communications
`
`links which differ from each other and they can be changed as needed.” (Petition
`
`at 24, quoting Ritter at 7-8.) Again, Ritter does not mention performing a second
`
`measurement. Instead, the sentence preceding the section quoted by the Petitioners
`
`explains that “[t]he flexibility of the procedure of the invention can be especially
`
`used in an advantageous manner, if segments of the frequency spectrum are
`
`allocated to the mobile stations by the base station whose bandwidths vary or a
`
`15
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`different number of time slots for the transmission of data symbols are assigned to
`
`the allocated segments.” (Ritter at 7.) In other words, Ritter touts the procedure’s
`
`ability to modify a user’s bandwidth; a modification that can be accomplished
`
`based on the initial priority lists.
`
`Third, the Petitioners point to the statement that “[i]n addition, for each
`
`mobile station the number of assigned subcarriers in a time slot can be variably
`
`adjusted by the base station.” (Petition at 24-25, quoting Ritter at 16.) Again,
`
`there is no mention of performing a second measurement. This is just another
`
`example of Ritter’s disclosed ability to modify each user’s bandwidth based on the
`
`initial priority list.
`
`Patent Owner notes that the ‘375 patent discloses a similar method of
`
`allocating additional subcarriers to a subscriber unit to increase bandwidth without
`
`taking another measurement:
`
`In an alternative embodiment, the base station first allocates multiple
`
`clusters, referred to herein as the basic clusters, to establish a data link
`
`between the base station and the subscriber. The base station then
`
`subsequently allocates more clusters, referred to herein as the
`
`auxiliary clusters, to the subscriber to increase the communication
`
`bandwidth.
`
`16
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`(‘375 patent at 6:42-48.) However, this embodiment is NOT what is claimed in the
`
`‘375 patent. What the ‘375 patent claims is the retraining process, wherein the
`
`subscriber unit is repeatedly monitoring the quality of other subcarriers, even those
`
`allocated to other users, and constantly feeding back updated information in search
`
`of better subcarriers. (‘375 patent at 6:63-7:8.) “Retraining” is not disclosed by
`
`Ritter, whether alone or in any proper combination with Gesbert and Thoumy.
`
`Gesbert never discloses how the carriers discussed therein are allocated.
`
`Furthermore, Gesbert has nothing to do with subcarrier reallocation. In fact,
`
`Gesbert discloses a method of dealing with channel degradation without the need
`
`to allocate different subcarriers. In the background section, Gesbert explains:
`
`Wireless communications channels between transmit and receive
`
`devices are inherently variable and their quality fluctuates.
`
`Specifically, the quality parameters of such communications channels
`
`vary in time. Under good conditions wireless channels exhibit good
`
`communication parameters, e.g., large data capacity, high signal
`
`quality, high spectral efficiency and throughput. At these times
`
`significant amounts of data can be transmitted via the channel
`
`reliably. However, as the channel changes in time, the
`
`communication parameters also change. Under altered conditions
`
`former data rates, coding techniques and data formats may no longer
`
`17
`
`

`
`Case IPR2016-00824; U.S. Patent No. 8,934,375
` 
`
`be feasible. For example, when channel performance is degraded the
`
`transmitted data may experience excessive corruption yielding
`
`unacceptable communication parameters.
`
`(Gesbert at 1:21-35, emphasis added.) Gesbert acknowledged that channels may
`
`become unacceptable with the initially prescribed modulation and coding rates
`
`over time, but rather than switching channels, Gesbert proposed to solve the
`
`problem by “provid[ing] a mode selection technique which allows the system