IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Yeong Hyeon Kwon, et al.
`In re Patent of:
`8,218,481 Attorney Docket No.: 00035-0010IP1
`U.S. Patent No.:
`July 10, 2012
`Control No.: IPR2016-00981
`Issue Date:
`Appl. Serial No.: 12/303,947
`
`Filing Date:
`July 7, 2010
`
`Title:
`Method of Transmitting Data in a Mobile Communication
`System
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 8,218,481 PURSUANT TO 35 U.S.C. §§ 311–319, 37
`C.F.R. § 42
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Lead And Back-Up Counsel And Service Information ............................ 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 5
`1.
`Preambles (claims 1 and 8) ............................................................. 6
`2.
`“a preamble generation unit” (claim 8) ......................................... 10
`3.
`“a transmission unit” (claim 8) ...................................................... 12
`IV. SUMMARY OF THE ‘481 PATENT ........................................................... 13
`A. Brief Description ..................................................................................... 13
`B. Summary of the Prosecution History of the ‘481 Patent ........................ 15
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`‘481 PATENT IS UNPATENTABLE .......................................................... 16
`A. Ground 1A: IEEE802.16-2004 anticipates claims 1 and 15 ................... 19
`1.
`IEEE802.16-2004 anticipates claim 1 ........................................... 22
`2.
`IEEE802.16-2004 anticipates claim 15 ......................................... 25
`B. Ground 1B: IEEE802.16-2004 in view of Chou renders obvious claims
`8 and 16 ................................................................................................... 29
`1.
`IEEE802.16-2004 in view of Chou renders obvious claim 8 ....... 29
`2.
`IEEE802.16-2004 in view of Chou renders obvious claim 16 ..... 35
`C. Ground 1C: IEEE802.16-2004 in view of Tan renders obvious claims 2-
`4 and 6 ..................................................................................................... 36
`1.
`IEEE802.16-2004 in view of Tan renders obvious claim 2 .......... 36
`2.
`IEEE802.16-2004 in view of Tan renders obvious claim 3 .......... 40
`3.
`IEEE802.16-2004 in view of Tan renders obvious claim 4 .......... 44
`4.
`IEEE802.16-2004 in view of Tan renders obvious claim 6 .......... 46
`D. Ground 1D: IEEE802.16-2004 in view of Chou and Tan renders obvious
`claims 9-11 and 13 .................................................................................. 48
`1.
`IEEE802.16-2004 in view of Chou and Tan renders obvious claim
`9 ..................................................................................................... 49
`
`i
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`

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`2.
`
`3.
`
`4.
`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`IEEE802.16-2004 in view of Chou and Tan renders obvious claim
`10 ................................................................................................... 50
`IEEE802.16-2004 in view of Chou and Tan renders obvious claim
`11 ................................................................................................... 50
`IEEE802.16-2004 in view of Chou and Tan renders obvious claim
`13 ................................................................................................... 51
`E. Ground 2A: IEEE802.16e-2005 in view of IEEE802.16-2004 renders
`obvious claims 1 and 15 .......................................................................... 52
`1.
`IEEE802.16e-2005 in view of IEEE802.16-2004 renders obvious
`claim 1 ........................................................................................... 53
`IEEE802.16e-2005 in view of IEEE802.16-2004 renders obvious
`claim 15 ......................................................................................... 55
`F. Ground 2B: IEEE802.16e-2005 in view of IEEE802.16-2004 and Chou
`renders obvious claims 8 and 16 ............................................................. 55
`1.
`IEEE802.16e-2005 in view of IEEE802.16-2004 and Chou
`renders obvious claim 8 ................................................................. 55
`IEEE802.16e-2005 in view of IEEE802.16-2004 and Chou
`renders obvious claim 16 ............................................................... 57
`G. Ground 2C: IEEE802.16e-2005 in view of IEEE802.16-2004 and Tan
`renders obvious claims 2-4 and 6 ........................................................... 58
`H. Ground 2D: IEEE802.16e-2005 in view of IEEE802.16-2004, Chou and
`Tan renders obvious claims 9-11 and 13 ................................................ 58
`VI. REDUNDANCY ........................................................................................... 59
`VII. CONCLUSION .............................................................................................. 60
`
`2.
`
`2.
`
`ii
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`
`
`
`EXHIBITS
`
`APPL-1001
`
`U.S. Patent No. 8,218,481 to Kwon, et al. (“the ‘481 patent”)
`
`APPL-1002
`
`APPL-1003
`APPL-1004
`APPL-1005
`
`APPL-1006
`APPL-1007
`
`APPL-1008
`
`APPL-1009
`APPL-1010
`APPL-1011
`
`APPL-1012
`
`APPL-1013
`
`APPL-1014
`
`
`APPL-1015
`
`Excerpts from the Prosecution History of the ‘481 Patent (“the
`Prosecution History”)
`
`Declaration of Jonathan Wells
`Curriculum Vitae of Jonathan Wells
`IEEE 802.16-2004 Standard, entitled “IEEE Standard for Local
`and Metropolitan Area Networks Part 16: Air Interface for
`Fixed Broadband Wireless Access Systems” (“IEEE802.16-
`2004”)
`Declaration of Mr. David Ringle for IEEE802.16-2004
`Provisional Application No. 60/759,697 of U.S. Patent No.
`8,000,305 to Tan et al. (“Tan”)
`IEEE 802.16e-2005 Standard, entitled “802.16e-2005 and IEEE
`Std 802.16-2004/Cor1-2005 - IEEE Standard for Local and
`Metropolitan Area Networks Part 16: Air Interface for Fixed
`and Mobile Broadband Wireless Access Systems Amendment 2:
`Physical and Medium Access Control Layers for Combined
`Fixed and Mobile Operation in Licensed Bands and Corrigen-
`dum 1” (“IEEE802.16e-2005”)
`Declaration of Mr. David Ringle for IEEE802.16e-2005
`U.S. Patent No. 8,977,258 to Chou (“Chou”)
` U.S. Patent No. US 7,417,970 to Shaheen (“Shaheen”)
`
` U.S. Patent No. US 6,944,453 to Faerber et al. (“Faerber”)
`
` U.S. Patent No. US 7,599,327 to Zhuang et al. (“Zhuang”)
`
` U.S. Patent Application Publication Number 2006/0274843 to
`Koo et al. (“Koo”)
`
` U.S. Patent No. US 6,374,080 to Uchida (“Uchida”)
`
`iii
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`
`PCT Application Publication Number WO2001041471 A1 to
`Bailey (“Bailey”)
`
`N. Abramson, "THE ALOHA SYSTEM—Another alternative for
`computer communications," Proceedings of the Fall Joint Com-
`puter Conference, pp. 281-5, Nov. 1970
`
`3GPP TS 25.213 V6.4.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Spreading and modulation (FDD) (Release 6)”
`
`3GPP TS 25.211 V6.6.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical channels and mapping of transport channels onto phys-
`ical channels (FDD) (Release 6)”
`
`D.C. Chu, “Polyphase codes with good periodic correlation
`properties,” IEEE Trans. Information Theory, vol. 18, pp. 531–
`532, July 1972
`B.M. Popovic, “Generalized chirp-like polyphase sequences with
`optimum correlation properties,” IEEE Trans. Information The-
`ory, vol. 38, pp. 1406–1409, Jul. 1992
`
`3GPP TS 25.201 V3.0.0 (1999-10), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical layer - General description (3G TS 25.201 version
`3.0.0)”
`
`3GPP TS 36.211 V8.0.0 (2007-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-UTRA); Physi-
`cal channels and modulation (Release 8)”
`
`“Defendants’ Preliminary Identification of Terms Needing Con-
`struction and Proposed Constructions,” from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-
`SRF, 15-546-SLR-SRF , 15-547-SLR-SRF filed in N.D. Del.
`
`
`APPL-1016
`
`
`APPL-1017
`
`
`APPL-1018
`
`
`APPL-1019
`
`
`APPL-1020
`
`APPL-1021
`
`
`APPL-1022
`
`
`APPL-1023
`
`
`APPL-1024
`
`
`
`iv
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`“Evolved Wireless’s Identification of Claim Terms and Proposed
`Constructions” from Case Nos. 15-542-SLR-SRF, 15-543-SLR-
`SRF, 15-544-SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF ,
`15-547-SLR-SRF filed in N.D. Del.
`
`APPL-1025
`
`
`
`v
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, and Microsoft
`
`Mobile Inc. (f/k/a Nokia Inc.) (collectively “Petitioner”) petition for Inter Partes
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-4, 6,
`
`8-11, 13, 15 and 16 (“the Challenged Claims”) of U.S. Patent No. 8,218,481 (“the
`
`‘481 patent”). As explained in this petition, there exists a reasonable likelihood
`
`that Petitioner will prevail with respect to at least one of the Challenged Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this petition. Petitioner respectfully submits that
`
`an IPR should be instituted, and that the Challenged Claims should be canceled as
`
`unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, Microsoft Mobile
`
`
`
`Inc. (f/k/a Nokia Inc.), Microsoft Luxembourg International Mobile SARL and Mi-
`
`crosoft Luxembourg USA Mobile SARL are the real parties-in-interest. The Mi-
`
`crosoft entities have numerous affiliated and/or related entities. However, no un-
`
`named Microsoft entity is funding or controlling this Petition or any resulting IPR.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ‘481 patent is the subject of a pending petition for inter partes review
`
`filed by ZTE (USA) Inc., HTC Corporation, and HTC America, Inc., on March 23,
`
`
`
`1
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`2016 (Case No. IPR2016-00758, hereinafter “ZTE petition”). The grounds pre-
`
`sented in this Petition are substantially different from the grounds in the ZTE peti-
`
`tion in that they involve different claim constructions and distinctive prior art refer-
`
`ences, and address the non-patentability of the Challenged Claims of the ‘481 pa-
`
`tent from different perspectives.
`
`The ‘481 patent is the subject of Civil Action Numbers 1:15-cv-00542
`
`(Del.), 1:15-cv-00543 (Del.), 1:15-cv-00544 (Del.), 1:15-cv-00545-SLR (Del.),
`
`1:15-cv-00546 (Del.), and 1:15-cv-00547- (Del.).
`
`C.
`
` Lead And Back-Up Counsel And Service Information
`Petitioner designates W. Karl Renner, Reg. No. 41, 265, as Lead Counsel
`
`and Roberto J. Devoto, Reg. No. 55,108, as Backup Counsel, both available at
`
`3200 RBC Plaza, 60 South Sixth Street, Mineapolis, MN 55402 (T: 202-783-5070;
`
`F: 877- 769-7945), or electronically by e-mail at IPR00035-0010IP1@fr.com (ref-
`
`erencing No. 00035-0010IP1 and cc’ing PTABInbound@fr.com, renner@fr.com
`
`and devoto@fr.com.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`Petitioner authorizes the Patent and Trademark Office to charge Deposit Ac-
`
`count No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and fur-
`
`
`
`2
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`ther authorizes payment for any additional fees to be charged to this Deposit Ac-
`
`count.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘481 Patent is available for IPR. The present pe-
`
`tition is being filed within one year of service of each of the complaints against Pe-
`
`titioner. Petitioner is not barred or estopped from requesting this review on the be-
`
`low-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Re-
`quested
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed descrip-
`
`tion and claim charts that follow, indicating where each element can be found in
`
`the cited prior art, and the relevance of that prior art. Additional explanation and
`
`support for each ground of rejection is set forth in Ex.1003, Declaration of Dr. Jon-
`
`athan Wells (“Wells Declaration”).
`
`Ground
`Ground 1A
`Ground 1B
`
`‘481 Patent Claims
`1 and 15
`8 and 16
`
`Basis for Rejection
`§102: IEEE802.16-2004
`§103: IEEE802.16-2004 and Chou
`
`
`
`3
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`

`
`Ground
`Ground 1C
`Ground 1D
`Ground 2A
`
`‘481 Patent Claims
`2-4 and 6
`9-11 and 13
`1 and 15
`
`Ground 2B
`
`8 and 16
`
`Ground 2C
`
`2-4 and 6
`
`Ground 2D
`
`9-11 and 13
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`
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`
`Basis for Rejection
`§103: IEEE802.16-2004 and Tan
`§103: IEEE802.16-2004, Chou and Tan
`§103: IEEE802.16e-2005 and
`IEEE802.16-2004
`§103: IEEE802.16e-2005, IEEE802.16-
`2004 and Chou
`§103: IEEE802.16e-2005, IEEE802.16-
`2004 and Tan
`§103: IEEE802.16e-2005, IEEE802.16-
`2004, Chou and Tan
`
`IEEE802.16-2004, entitled “IEEE Standard for Local and Metropolitan
`
`Area Networks Part 16: Air Interface for Fixed Broadband Wireless Access Sys-
`
`tems” qualifies as prior art under 35 U.S.C §§ 102(a) and (b). Specifically,
`
`IEEE802.16-2004 (Ex. 1005) is an IEEE Standard that was published on October
`
`1st, 2004, more than a year before the PCT filing date of June 8, 2007 and any of
`
`the proclaimed priority dates of June 9, 2006 and June 26, 2006 of the ‘481 Patent.
`
`See Ex. 1005 and Ex. 1006.
`
`Tan qualifies as prior art under 35 U.S.C § 102(e). Specifically, Tan (Ex.
`
`1007) is a provisional patent application that was filed on January 17, 2006, before
`
`the PCT filing date of June 8, 2007 and any of the proclaimed priority dates of
`
`June 9, 2006 and June 26, 2006 of the ‘481 Patent.
`
`
`
`4
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`IEEE802.16e-2005, entitled “802.16e-2005 and IEEE Std 802.16-
`
`2004/Cor1-2005 - IEEE Standard for Local and Metropolitan Area Networks
`
`Part 16: Air Interface for Fixed and Mobile Broadband Wireless Access Systems
`
`Amendment 2: Physical and Medium Access Control Layers for Combined Fixed
`
`and Mobile Operation in Licensed Bands and Corrigendum 1” qualifies as prior art
`
`under 35 U.S.C §§ 102(a) and (b). Specifically, IEEE802.16e-2005 (Ex. 1008), an
`
`update to IEEE802.16-2004 (see e.g., References, Ex. 1008 at 5), was published on
`
`February 28th 2006, more than a year before the PCT filing date of June 8, 2007
`
`and before any of the proclaimed priority dates of June 9, 2006 and June 26, 2006
`
`of the ‘481 Patent. See Ex. 1008 and Ex. 1009.
`
`Chou qualifies as prior art under 35 U.S.C §§ 102(a) and (e). Specifically,
`
`Chou (Ex. 1010) is a U.S. patent that issued on an application that was filed on
`
`September 9, 2005, before the PCT filing date of June 8, 2007 and any of the pro-
`
`claimed priority dates of June 9, 2006 and June 26, 2006 of the ‘481 Patent
`
` Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`C.
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
`
`purposes of this proceeding only, Petitioner submits constructions for the pream-
`
`bles of claims 1 and 8, as follows.
`
`
`
`
`
`5
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`
`1. Preambles (claims 1 and 8)
`For purposes of this proceeding, aspects of the preambles of claims 1 and 8
`
`should not be limiting. The preamble of claim 1 recites: “[a] method of transmit-
`
`ting a preamble sequence in a mobile communication system,” and the preamble
`
`of claim 8 recites “[a] transmitter for transmitting a preamble sequence in a mo-
`
`bile communication system.” Ex. 1001, claims 1 and 8. “In general, a preamble
`
`limits the invention if it recites essential structure or steps, or if it is ‘necessary to
`
`give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsav-
`
`ings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). As such, a
`
`preamble is regarded as limiting only if it recites essential structure that is im-
`
`portant to the invention or necessary to give meaning to the claim. NTP, Inc. v. Re-
`
`search In Motion, Ltd., 418 F.3d 1282, 1305–06 (Fed Cir. 2005). Moreover, when
`
`the limitations in the body of the claim “rely upon and derive antecedent basis
`
`from the preamble, then the preamble may act as a necessary component of the
`
`claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339
`
`(Fed. Cir. 2003).
`
`None of these situations are present here. In particular, the term “mobile” is
`
`not recited in the body of claims 1 and 8, nor in the body of any of the dependent
`
`claims 2-7 and 9-16. Simply put, “mobile” fails to provide antecedent basis sup-
`
`port for any elements of the Challenged Claims. See Google, Inc. v. Visual Real
`
`
`
`6
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`Estate, Inc., Case IPR 2014-01339. Final Decision at 9-10 (PTAB, January 25,
`
`2016) (Paper 39) (The term “server farm” recited in preamble is not limiting be-
`
`cause it is not recited in the body of the claims and “does not appear to provide any
`
`antecedent basis support for any elements of the claims” and “all the term ‘server
`
`farm’ appears to do is to give a descriptive name to the set of limitations that com-
`
`pletely set forth the invention.”). Likewise, while the term “preamble sequence”
`
`appears in the body of “generating” and “transmitting” steps, this term is otherwise
`
`not regarded by the body of the claims nor does this term make the preambles of
`
`the Challenged Claims limiting . Rather, “preamble sequence” merely sets forth a
`
`descriptive name for the set of limitations found in the bodies of the Challenged
`
`Claims, leaving those claim bodies to completely set forth the purported invention.
`
`See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir.
`
`2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive
`
`name to the set of limitations in the body of the claim that completely set forth the
`
`invention. Its use does not limit the claims.”). Here, the entire preamble phrase
`
`“transmitting a preamble sequence in a mobile communication system,” fails to
`
`even define the term “preamble sequence.” Rather, the meaning of “preamble se-
`
`quence” is left to the claim body, which explains how the sequence is generated -
`
`“generating said preamble sequence by concatenating a single cyclic prefix (CP) to
`
`
`
`7
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`a front end of said consecutive sequence.” As apparent, in the absence of any limit-
`
`ing preamble detail, the claim body self-sufficiently and completely sets forth and
`
`gives meaning to the term “preamble sequence.” As such, the preamble terms do
`
`not limit the Challenged Claims. See Wells Declaration at ¶¶ 85-86.
`
`Furthermore, a person having ordinary skill in the art at the time of the in-
`
`vention (PHOSITA) would have understood that the set of limitations in the body
`
`of the Challenged Claims completely define the purported invention. Indeed, a
`
`PHOSITA would have perfectly understood the purported invention without refer-
`
`ence to the preamble, by reading only the body of the claims; as such, the preamble
`
`does not limit nor is it needed for essential structures or to give meaning to the
`
`claims. See Wells Declaration at ¶¶ 80-90. Additionally, the preamble is not a nec-
`
`essary component of the purported invention because the body of claim 1 already
`
`recites “transmitting, said preamble sequence to a receiving side,” again rendering
`
`the preamble phrase “transmitting a preamble sequence in a mobile communica-
`
`tion system” a redundant, non-essential step. See Dr. Wells Dec. at ¶¶ 81 and 83.
`
`Moreover, the preamble merely relates to a purpose or intended use for the
`
`invention, i.e., for transmitting a preamble sequence “in a mobile communication
`
`system.” None of the limitations in the claim body compels or otherwise necessi-
`
`tates a “mobile” communication system. See Wells Declaration at ¶ 88. To the
`
`contrary, the body of claim 1 only requires “transmitting, said preamble sequence
`
`
`
`8
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`

`
`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`to a receiving side.” If the Applicant of the ‘481 patent wished the phrase “mobile
`
`communication system” to be limiting, the Applicant could have conveniently in-
`
`cluded, in the last claim element, recitation of “transmitting, on a random access
`
`channel, said preamble sequence to a receiving side in the mobile communication
`
`system.” Instead, the Applicant chose to use broader language, “a receiving side”,
`
`in contradiction to the preamble language that it clearly had contemplated. Appli-
`
`cant should not now be accorded an amendment by first undoing its earlier deci-
`
`sion to leave the receiving side unqualified by “mobile” which remains the best ev-
`
`idence of Applicant’s intention to avail itself of a broader claim scope not limited
`
`by the claim preamble. Indeed, the Federal Circuit addressed precisely this situa-
`
`tion and found a preamble non-limiting. See Wells Declaration at ¶¶ 89-90. See
`
`Catalina Mktg. Int’l, Inc. at 808 (“[A] preamble is not limiting ‘where a patentee
`
`defines a structurally complete invention in the claim body and uses the preamble
`
`only to state a purpose or intended use for the invention.”). For at least the above
`
`reasons, the preambles of claims 1 and 8 should not be read as limiting the scope of
`
`the claims.
`
`Furthermore, even if the Board were to deem the preambles of the Chal-
`
`lenged Claims to be limiting, it is submitted that the broadest reasonable construc-
`
`tion of the phrase “transmitting a preamble sequence in a mobile communication
`
`system” is broad enough to encompass “transmitting a preamble sequence by a
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`9
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`fixed device or a mobile device in a mobile communication system.” See Dr. Wells
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`Dec. at ¶¶ 91-99. Such a construction is consistent with the ‘481 Patent specifica-
`
`tion because, throughout the ‘481 Patent specification, the term “mobile” is used
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`consistently and only in the phrase “in a mobile communication system.” The ‘481
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`Patent specification fails to define “a mobile communication system,” and fails to
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`recite “mobile device” or “mobile station,” let alone restrict the operations of
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`“transmitting a preamble sequence” to be performed exclusively by a mobile de-
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`vice. Similarly, the claim language fails to limit the phrase “transmitting a pream-
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`ble sequence in a mobile communication system” to “transmitting, by a mobile de-
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`vice, a preamble sequence in a mobile communication system.” This is consistent
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`with the understanding of PHOSITAs, since “a mobile communication system”
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`typically includes fixed devices (e.g., base stations, remote stations, or fixed sub-
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`scriber stations), and a fixed device in a mobile communication system transmits
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`preamble sequences as well. See Dr. Wells Dec. at ¶96. Indeed, such preamble se-
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`quences may be transmitted by the fixed device, for example, to enable communi-
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`cations between the fixed device and one of the mobile devices. See Dr. Wells
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`Dec. at ¶¶ 96-99. As such, the broadest reasonable construction of the phrase
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`should encompass “transmitting a preamble sequence by a fixed device or a mobile
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`device in a mobile communication system.”
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`2. “a preamble generation unit” (claim 8)
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`10
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`Claim 8 recites “a preamble generation unit configured to generate said pre-
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`amble sequence by repeating a specific sequence, having a length (L), N times to
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`generate a consecutive sequence having a length (N*L) and concatenating a single
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`cyclic prefix (CP) to a front end of said consecutive sequence.” This term does not
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`include the words “means.” Thus, the term “presumptively is not a means-plus-
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`function limitation under 35 U.S.C. § 112, paragraph 6.” See Facebook v. TLI
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`Comm., Case IPR2015-00778, Paper No. 17, pp. 13-14 (P.T.A.B. August 28, 2015)
`
`(citing Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en
`
`banc)). Petitioner has challenged this presumption in District Court (see Ex. 1024,
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`p. 10), but is not challenging it in this proceeding, as PTO proceedings have a
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`broader standard of interpretation than in litigation. See In re Zletz, 13 USPQ2d
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`1320, 1322 (Fed. Cir. 1989) (explaining that for PTO proceedings, the Broadest
`
`Reasonable Interpretation (BRI) standard should be used, in part due to the ability
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`of the Patent Owner to amend claims to further clarify their scope). Accordingly,
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`for purposes of this proceeding only, the term should be given its plain meaning as
`
`understood under the BRI standard.
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`The Patent Owner has not asserted in the District Court that this term is gov-
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`erned by 35 U.S.C. § 112(6). See Ex. 1025, p. 2. However, to the extent that the
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`Patent Owner alleges the term is a means-plus-function limitation, the Patent
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`Owner may identify the following specific portions of the specification as relating
`
`
`
`11
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`to structure for performing “generat[ing] said preamble sequence by repeating a
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`specific sequence, having a length (L), N times to generate a consecutive sequence
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`having a length (N*L) and concatenating a single cyclic prefix (CP) to a front end
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`of said consecutive sequence”: the transmitter shown as a functional block in FIG.
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`22 and its corresponding “CAZAC sequence” block, “Signature mapping” block,
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`and mixer symbol. See, e.g., Ex. 1001, FIG. 22, 17:41 to 18:3.
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`3. “a transmission unit” (claim 8)
`Claim 8 recites “a transmission unit configured to transmit, on a random ac-
`
`cess channel, said preamble sequence to a receiving side.” This term does not in-
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`clude the words “means.” Thus, the term “presumptively is not a means-plus-func-
`
`tion limitation under 35 U.S.C. § 112, paragraph 6.” See Facebook v. TLI Comm.,
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`Case IPR2015-00778, Paper No. 17, pp. 13-14 (P.T.A.B. August 28, 2015) (citing
`
`Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc)). Peti-
`
`tioner has challenged this presumption in District Court (see Ex. 1024, p. 10), but
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`recognizes the broader claim construction standard applicable to this proceeding
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`and, therefore, is not challenging the presumption in this proceeding. Accordingly,
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`for purposes of this proceeding only, the term should be given its plain meaning as
`
`understood under the BRI standard.
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`
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`12
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`

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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`The Patent Owner has not asserted in the District Court that this term is gov-
`
`erned by 35 U.S.C. § 112(6). Ex. 1025, p. 2. However, to the extent that the Pa-
`
`tent Owner alleges the term is a means-plus-function limitation, the Patent Owner
`
`may identify the following specific portions of the specification as relating to
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`structure for performing “transmit[ting], on a random access channel, said pream-
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`ble sequence to a receiving side”: the transmitter or any subcomponent of the trans-
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`mitter shown in FIG. 22 of the ’481 Patent. See, e.g., Ex. 1001, FIG. 22, 17:41 to
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`18:3.
`
`IV. SUMMARY OF THE ‘481 PATENT
`A. Brief Description
`The ‘481 patent relates to a data transmission method. Ex. 1001, Abstract.
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`In particular, the ‘481 patent generally describes a method of expanding a code se-
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`quence and a preamble structure of a random access channel (RACH). Ex. 1001 at
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`1:17-18.
`
`In the Background Section, the ‘481 Patent acknowledges extensive and re-
`
`lated teachings in the prior art; for instance it acknowledges prior art teaching that
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`“[a] signal having repetitive characteristic in a time domain is used in the random
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`access channel, so that a receiver easily searches a start position of a transmission
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`signal. In general, the repetitive characteristic is realized by repetitive transmission
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`of a preamble.” Ex. 1001 at 1: 26-31.
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`13
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`The ‘481 patent shows a repetitive preamble structure in FIG. 11 (repro-
`
`duced below). Ex. 1001 at 4: 8-9. Specifically, the preamble structure “consists of
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`two repetitive preambles, a part of the preamble of the later order is copied in the
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`first part by [cyclic prefix, CP],” which is a standard practice “[i]n an orthogonal
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`frequency divisional transmission system,” “in which the last part of [Orthogonal
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`Frequency Division Multiplexing, OFDM] symbol is copied and then prefixed to
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`the OFDM symbol to compensate a multi-path loss in signal transmission.” See Ex.
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`1001 at 11: 55-67.
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`Cyclic Prefix (CP)
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`
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`FIG. 11 of the ‘481 Patent
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`
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`The ‘481 Patent further acknowledges, in its Background Section, that using
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`CAZAC sequence for the preamble had been known in the art as well because of a
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`CAZAC sequence’s ideal auto-correlation and cross-correlation properties: “A
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`14
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`representative example of a sequence for realizing the preamble includes a CA-
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`ZAC (Constant Amplitude Zero Auto Correlation) sequence. The CAZAC se-
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`quence is expressed by a Dirac-Delta function in case of auto-correlation and has a
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`constant value in case of cross-correlation. In this respect, it has been estimated
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`that the CAZAC sequence has excellent transmission characteristics.” Ex. 1001 at
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`1: 32-38.
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`As such, the ‘481 Patent acknowledges that several of its claimed features
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`(e.g., the repetitive preamble pattern, the addition of CP, and the use of CAZAC
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`sequence) had been known in the art by the time of invention of the ‘481 Patent.
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`This acknowledgement eviscerates, if not directly refutes, the patentability of the
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`claims of the ‘481 patent. The non-patentability of the Challenged Claims will be
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`discussed in greater detail below. See Wells Declaration at ¶¶ 68-75.
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`The ‘481 patent includes 16 claims, of which claims 1 and 8 are independ-
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`ent.
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`Summary of the Prosecution History of the ‘481 Patent
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`B.
`U.S. 8,218,481 issued on July 10, 2012 from U.S. Patent Application No.
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`12/303,947 (“the ‘947 application”), which was filed on July 7, 2010 with 30
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`claims. See Ex. 1002. Applicant filed a preliminary amendment on January 21,
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`2009 cancelling original claims 1-30 and adding claims 31-44.
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`In the first office action dated September 16, 2011, the Examiner rejected
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`
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`15
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`Attorney Docket No. 00035-0010IP1
`IPR of U.S. Patent No. 8,218,481
`claims 31-44 under 102(b) as being anticipated by Jung et al. (US2006/0153282).
`
`Applicant thereafter amended claims 31-34 and 37-44, and added claims 45-46.
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`A Notice of Allowance followed, allowing claims 31-46 (renumbered claims
`
`1-16),without identifying any specific reasons for their allowability. Ex. 1002 at
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`44.
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`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ESTAB-
`LISHING