UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE, INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, AND MICROSOFT
`MOBILE INC. (f/k/a NOKIA INC.),
`Petitioner,
`
`V.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-00981
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 8,218,481
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`FACTUAL BACKGROUND .......................................................................... 3 
`
`A.  United States Patent No. 8,218,481 ...................................................... 3 
`
`B. 
`
`C. 
`
`Challenged Claims ................................................................................ 5 
`
`Prosecution History ............................................................................... 7 
`
`D.  Overview of Petition for Inter Partes Review .................................... 10 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`IEEE802.16-2004 ...................................................................... 10 
`
`IEEE802.16-2005 ...................................................................... 11 
`
`Chou .......................................................................................... 12 
`
`Tan ............................................................................................. 12 
`
`III.  CLAIM CONSTRUCTION .......................................................................... 13 
`
`IV.  PETITIONER fails to establish a reasonable likelihood of success as
`to any challenged claim ................................................................................. 15 
`
`A. 
`
`B. 
`
`Legal Standard ..................................................................................... 15 
`
`The Prior Art Structure Relied Upon by Petitioner Is Materially
`Identical to the Structure Before the Examiner During
`Prosecution .......................................................................................... 16 
`
`1. 
`
`2. 
`
`IEEE802.16-2004 Fails to Disclose “generating said
`preamble sequence by concatenating a single cyclic
`prefix (CP) to a front end of said consecutive sequence” ......... 19 
`
`IEEE802.16-2004 Fails to Disclose “repeating a specific
`sequence, having a length (L), N times to generate a
`consecutive sequence having a length (N*L)” ......................... 22 
`
`C. 
`
`The Same Argument Previously Was Presented to the Office ........... 26 
`i
`
`

`
`
`
`D. 
`
`D.
`
`Tan Is Not Prior Art............................................................................. 27 
`
`Tan Is Not Prior Art ........................................................................... ..27
`
`V. 
`
`V.
`
`CONCLUSION .............................................................................................. 29 
`
`CONCLUSION ............................................................................................ ..29
`
`
`
`ii
`
`

`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 15
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 28
`
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 16
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 15
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper 14 (May 20, 2014) ......................................................... 27
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 15
`
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 F 3d 1075 (Fed. Cir. 2008) .......................................................................... 15
`
`Statutes
`
`35 U.S.C. § 102(e) ............................................................................................. 27, 28
`
`35 U.S.C. § 314(a) ................................................................................................... 16
`
`35 U.S.C. § 325(d) ......................................................................................... 2, 16, 27
`
`35 U.S.C. § 371 .......................................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. 42.100(b) ................................................................................................. 13
`
`37 C.F.R. § 42.20(c) ................................................................................................. 15
`
`iii
`
`

`
`
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107 ................................................................................................... ..1
`
`37 C.F.R. § 42.108(c) ............................................................................................... 15
`37 C.F.R. § 42.108(c) ............................................................................................. ..15
`
`
`
`iv
`
`iv
`
`

`
`
`
`EXHIBIT
`NO.
`2001
`
`
`
`
`LIST OF EXHIBITS
`
`
`
`REFERENCE
`
`United States Patent Publication No. 2006/0153282 to Jung et al.
`
`v
`
`

`
`
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
`
`submits this Preliminary Response to the above-captioned Petition for Inter Partes
`
`Review of U.S. Patent No. 8,218,481 (“Pet.,” Paper 1).
`
`I.
`
`INTRODUCTION
`
`The present Petition should be denied because it fails to establish a
`
`reasonable likelihood that Petitioners would prevail with respect to any claim
`
`challenged in the Petition. While the Petition asserts eight grounds of alleged
`
`invalidity, every asserted ground relies on just one prior art reference as allegedly
`
`disclosing the limitations of independent claims 1 and 8—limitations present in
`
`every challenged claim. But the structure disclosed in that reference, IEEE802.16-
`
`2004, is identical in all material aspects to the structure disclosed in a prior art
`
`reference, Jung, that was directly before the Examiner during the prosecution that
`
`led to the ’481 patent. Moreover, the claims that issued as independent claims 1
`
`and 8 were specifically amended after a rejection based on Jung to include
`
`limitations not disclosed by that reference. The Examiner then withdrew the
`
`rejection based on Jung and acknowledged the patentability of the claims, thus
`
`confirming that those limitations are not disclosed by Jung.
`
`Petitioners present nothing more than this same structure. While the specific
`
`reference is not the same, as it relates to the challenged ’481 patent claims the
`
`structure disclosed is materially identical. Because it remains the case that the
`
`1
`
`

`
`
`
`structure disclosed by Jung and IEEE802.16-2004 fails to disclose at least the
`
`limitations added by amendment during prosecution and those limitations are
`
`required for every challenged claim, the Petition fails to establish a reasonable
`
`likelihood of success with respect to any challenged claim. The Petition should be
`
`denied in its entirety, either on the merits or through an exercise of the Board’s
`
`discretion under 35 U.S.C. § 325(d) to reject a petition where the same or
`
`substantially the same arguments previously were presented during prosecution.
`
`In addition, except for the challenges to claims 1, 8, 15, and 16, the
`
`remaining Grounds all rely on an alleged prior art reference that the Petition fails
`
`to establish is in fact prior art. Specifically, Grounds 1C, 1D, 2C, and 2D all rely
`
`on a combination with Tan. Tan, however, is a provisional patent application.
`
`Provisional patent applications are not prior art. At most, a provisional application
`
`can be used as evidence of an earlier priority date for a later-filed patent or patent
`
`publication, but to do so it must be first established that a claim in that patent or
`
`publication is properly disclosed in the provisional. Petitioners here failed to
`
`undertake this step and therefore necessarily failed to establish a reasonable
`
`likelihood that Tan is prior art. Every ground that relies on Tan therefore fails.
`
`In short, every asserted ground fails. The Petition fails to establish a
`
`reasonable likelihood of success with respect to any challenged claim, and trial
`
`therefore should not be instituted.
`
`2
`
`

`
`
`
`II.
`
`FACTUAL BACKGROUND
`A. United States Patent No. 8,218,481
`The ’481 patent issued from Application No. 12/303,947, the National Stage
`
`filing under 35 U.S.C. § 371 of International Application No. PCT/KR07/02784,
`
`which was filed by LG Electronics Inc. (“LG Electronics”) on June 8, 2007 and
`
`claims priority to two Korean Applications, No. 10-2006-0052617, filed on June 9,
`
`2006, and No. 10-2006-0057488, filed on June 26, 2006. Following issuance of the
`
`’481 patent on July 10, 2012, three additional patents have also issued from the
`
`same specification.
`
`LG Electronics, the original assignee of the ’481 patent, is a global leader
`
`and technology innovator in consumer electronics and mobile communications. LG
`
`Electronics is an active participant in the 3rd Generation Partnership Project
`
`(“3GPP”), the standards-setting organization that developed the Long-Term
`
`Evolution, or LTE, standard. The inventions disclosed in the ’481 patent
`
`specification relate to LG Electronics’ contributions to the development of that
`
`standard, and the specific inventions claimed by the ’481 patent have been adopted
`
`as part of the 3GPP LTE standard. By being adopted into the 3GPP LTE standard,
`
`members of 3GPP recognized and agreed that the claimed inventions in the ’481
`
`patent were innovative solutions to the problems faced during the development of
`
`the standard.
`
`3
`
`

`
`
`
`The ’481 specification broadly discloses data transmission systems and
`
`methods that improve over prior art mobile communication systems in at least
`
`three ways. First, the specification discloses improved code sequences for use in
`
`data transmissions in the mobile communication system. Second, the specification
`
`discloses improved structures for certain channels (known as random access
`
`channels) that enable user equipment, such as a cell phone, to access the mobile
`
`communication networks. And finally, the specification discloses improved
`
`transmission systems and methods that employ the improved code sequences and
`
`random access channels. (See, e.g., Ex. 1001 at 2:37-3:45.) The random access
`
`channel is used by a user equipment to access a network when the user equipment
`
`is not yet synchronized with the network, such as when the user equipment is first
`
`turned on or after coming out of a prolonged idle state. (Ex. 1001 at 1:24-26.)
`
`The ’481 patent claims are directed toward systems and methods for
`
`accessing a random access channel using a particular structure for a code sequence.
`
`The claimed structure comprises a preamble sequence constructed from
`
`consecutive sequences to which a single cyclic prefix is concatenated, as shown in
`
`’481 patent Figure 11:
`
`4
`
`

`
`
`
`B. Challenged Claims
`Claim 1 recites a method for transmitting preamble sequences using this
`
`
`
`structure:
`
`A method of transmitting a preamble sequence in a mobile
`communication system, the method comprising:
`
`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
`
`generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
`
`and transmitting, on a random access channel, said preamble
`sequence to a receiving side.
`
`
`The ’481 patent claims contribute to at least two important benefits of the
`
`current cellular technology, known as 4G or LTE. First, using a cyclic prefix
`
`followed by repetitive sequences enables a receiver (a base station or cell tower) to
`
`easily identify preamble sequences transmitted on the random access channel. This
`
`5
`
`

`
`
`
`provides an efficient method that enables cell phones to quickly obtain
`
`synchronization with cell towers, thus decreasing the latency experienced by users.
`
`Second, repeating sequences provides an elegant means of enabling
`
`flexibility in cell sizes in a deployed cellular system. Generally, urban areas with
`
`higher density populations and obstacles such as large buildings require numerous
`
`small cells, whereas rural areas with lower density populations can be serviced by
`
`a smaller number of large cells. Large cells, however, cause longer delay time for
`
`signal transmission, which necessitates the use of longer preamble sequences. (See
`
`Ex. 1001 at 2:37-44.) The ’481 patent claims therefore provide an elegant, novel
`
`mechanism to alter the length of a preamble sequence through repetition of a
`
`specific sequence, thus enabling a cellular system which deploys smaller cells in
`
`more densely populated areas and larger cells in rural areas. (See Ex. 1001 at
`
`11:46-12:17.)
`
`The dependent claims add additional steps to the method that provide further
`
`improvements. Claim 2 adds that the specific sequence of claim 1 is “a Constant
`
`Amplitude Zero Auto Correlation (CAZAC) sequence.” (Ex. 1001 at 18:43-45.)
`
`CAZAC sequences exhibit “excellent transmission characteristics” that provide
`
`additional benefits to LTE systems. (Ex. 1001 at 9:12-15.) Claim 3 adds the
`
`additional step of applying a cyclic shift to the CAZAC sequence. (Ex. 1001 at
`
`18:46-48.) Cyclically shifted CAZAC sequences are orthogonal to each other,
`
`6
`
`

`
`
`
`enabling a cell tower to differentiate between preamble sequences transmitted by
`
`different cell phones. Claims 4 and 6 recite methods of applying the cyclic shift of
`
`claim 3. Claim 15 recites a first, second, and N-th sequence. The remaining
`
`challenged claims, 8-11, 13, and 16, are directed toward apparatuses configured to
`
`use the inventive methods of claims 1-4, 6, and 15.
`
`Prosecution History
`
`C.
`The ’481 patent was subject to one rejection during prosecution, which was
`
`based on United States Patent Publication No. 2006/0153282 to Jung et al.
`
`(“Jung”). (See Ex. 1002 at 92-95.) Jung, titled “Method for Transmitting and
`
`Receiving Preamble Sequences in an Orthogonal Frequency Division Multiplexing
`
`Communication System Using a Multiple Input Multiple Output Scheme,”
`
`discloses a preamble sequence structure which involves the transmission of
`
`subsequences and multiple cyclic prefixes. (Ex. 2001 at ¶¶ [0064], [0068].) Jung’s
`
`preamble structure is depicted in Figure 2 from that publication, set forth below:
`
`7
`
`
`
`

`
`
`
`As Jung explains, the “Preamble Sequence #1” and “Preamble Sequence #2”
`
`depicted in Figure 2 above are subsequences generated from a first base sequence
`
`and a second base sequence. (Ex. 2001 at ¶¶ [0025], [0041], [0048], [0054].)
`
`In response to this rejection, the applicant, LG Electronics, amended the
`
`then-pending claims to add two limitations not disclosed by Jung, “repeating a
`
`specific sequence, having a length (L), N times to generate a consecutive sequence
`
`having a length (N*L)” and “generating said preamble sequence by concatenating
`
`a single cyclic prefix to a front end of said consecutive sequence.” (Ex. 1002 at
`
`72.) The applicant provided the below annotated Figure 2 from Jung to explain
`
`these differences to the Examiner:
`
`(Ex. 1002 at 77.)
`
`The applicant explained that “a review of FIG. 2 of Jung reveals that a
`
`preamble sequence of Jung may include more than one cyclic prefix,” and
`
`
`
`8
`
`

`
`
`
`therefore “Jung cannot teach or suggest generating said preamble sequence by
`
`concatenating a single cyclic prefix (CP) to a front end of said consecutive
`
`sequence, as recited in” the amended claims. (Ex. 1002 at 76.)
`
`The applicant further explained that “Preamble Sequence #1” depicted in
`
`Jung Figure 2 is patentably distinct from the claimed “consecutive sequence” of
`
`the ’481 patent:
`
`Applicant submits that the consecutive “preamble sequence
`#1,” as illustrated in FIG. 2 of Jung is entirely different from
`the “consecutive sequence” required in independent claim 31.
`Specifically, paragraph 0041 of Jung discloses that “the
`preamble sequence transmitted through the first transmit
`antenna is referred to as the first preamble sequence (Preamble
`Sequence #1).” Additionally, paragraphs 0046-0051 of Jung
`disclose that the first preamble sequence is divided into
`subsequences and the generated subsequences are transmitted
`through the first antenna. Accordingly, Applicant submits that
`in view of paragraphs 0041 and 0046-0051 of Jung, the
`“preamble sequence #1” of FIG. 2 of Jung is a consecutive
`sequence of subsequences of the first preamble sequence. In
`other words, Jung does not repeat the first preamble sequence in
`order to create a consecutive sequence, and therefore, the
`consecutive “preamble sequence #1” illustrated in FIG. 2 of
`Jung is patentably distinguishable from the “consecutive
`sequence” of independent claim 31.
`
`(Ex. 1002 at 77-78.)
`
`In response to the applicant’s amendment and argument, the rejection based
`
`on Jung was withdrawn, and independent claim 31 issued as claim 1 of the ’481
`
`patent. (Ex. 1002 at 44.)
`
`9
`
`

`
`
`
`D. Overview of Petition for Inter Partes Review
`Petitioner bases the Petition for IPR on four references: IEEE802.16-2004,
`
`IEEE802.16-2005, Chou, and Tan.
`
`IEEE802.16-2004
`
`1.
`IEEE802.16-2004 is a standard published in 2004 by IEEE that “specifies
`
`the air interface of fixed broadband wireless (BWA) systems supporting
`
`multimedia services.” (Ex. 1005 at 6.) The 802.16 standard, also known as
`
`WiMAX, is a 4G technology developed by the IEEE, and therefore represented an
`
`alternative to the LTE technology of which the ’481 patent is a part.
`
`The Petition relies on what IEEE802.16-2004 defines as “the long preamble”
`
`as allegedly disclosing the claimed preamble structure of the ’481 patent.
`
`IEEE802.16-2004 describes this preamble as follows:
`
`[The long preamble] consists of two consecutive OFDM
`symbols. The first OFDM symbol uses only subcarriers the
`indices of which are a multiple of 4. As a result, the time
`domain waveform of the first symbol consists of four
`repetitions of 64-sample fragment, preceded by a CP. The
`second OFDM symbol utilizes only even subcarriers, resulting
`in time domain structure composed of two repetitions of a 128-
`sample fragment, preceded by a CP.
`
`(Ex. 1005 at 483.)
`
`10
`
`

`
`
`
`Figure 205 of IEEE802.16-2004 depicts the time domain structure of the
`
`long preamble:
`
`
`
`The preamble structure suggested in IEE802.16-2004 is therefore for all
`
`material purposes the same as that proposed in Jung: both involve transmission of
`
`subsequences and multiple cyclic prefixes. Just as in Jung, IEEE802.16-2004
`
`discloses dividing a first sequence into subsequences which are then transmitted.
`
`IEEE802.16-2004 also discloses that each preamble sequence has its own CP in the
`
`same manner as Jung. IEEE802.16-2004 therefore does not disclose “repeating a
`
`specific sequence, having a length (L), N times to generate a consecutive sequence
`
`having a length (N*L)” or “generating said preamble sequence by concatenating a
`
`single cyclic prefix (CP) to a front end of said consecutive sequence,” the two
`
`limitations added to the ’481 patent claims during prosecution by LG Electronics
`
`after the rejection based on Jung.
`
`IEEE802.16-2005
`
`2.
`IEEE802.16-2005 is an amendment to the IEEE 802.16 standard published
`
`in 2005, which “updates and expands IEEE Std 802.16-2004 to allow for mobile
`
`subscriber stations.” (Ex. 1008 at 4.) While IEEE802.16-2005 “provides
`
`11
`
`

`
`
`
`enhancements” to support mobile subscriber stations, the amendment also states
`
`that “[f]ixed IEEE 802.16 subscriber capabilities are not compromised.” (Ex. 1008
`
`at 43.) In particular, the preamble structure disclosed in IEEE802.16-2004 was
`
`unchanged by the 2005 amendment. (See Ex. 1008 at 365 (indicating no
`
`amendment to preamble structure of § 8.3.3.6).) IEEE802.16-2005 therefore fails
`
`to remedy the missing disclosures of IEEE802.16-2004 with respect to the claim
`
`limitations added to the ’481 patent during prosecution.
`
`Chou
`
`3.
`Chou is United States Patent No. 8,977,258, titled “System and Method for
`
`Communicating with Fixed and Mobile Subscriber Stations in Broadband Wireless
`
`Access Networks.” Chou generally relates to wireless communications using an
`
`IEEE 802.16 network. Chou references the use of preambles to establish
`
`synchronization between a base station and a subscriber station, but does not
`
`include any description or disclosure regarding the structure of the preamble. (See,
`
`e.g., Ex. 1010 at 6:29-31.) Chou therefore also fails to provide any disclosure
`
`relating to the ’481 patent’s claim limitations that are missing from IEEE802.16-
`
`2004.
`
`Tan
`
`4.
`Tan is provisional patent application no. 60/759697. As a provisional
`
`application, Tan is not prior art.
`
`12
`
`

`
`
`
`III. CLAIM CONSTRUCTION
`In this proceeding, the claims must be given their broadest reasonable
`
`construction in light of the specification. See 37 C.F.R. 42.100(b).
`
`Petitioners address claim construction with respect to the preambles of
`
`claims 1 and 8 and the terms “a preamble generation unit” and “a transmission
`
`unit” in claim 8 (Pet. at 6-13.) For purposes of this Preliminary Patent Owner
`
`Response, Patent Owner takes no position on Petitioners’ proposed constructions.1
`
`Under any construction of the terms addressed by Petitioners, the Petition fails to
`
`set forth a reasonable likelihood that any challenged claim is invalid. The claim
`
`construction discussion in the Petition is therefore not relevant to the institution
`
`decision, and Patent Owner does not address it at this time.
`
`The arguments advanced in the Petition, however, require that a claim
`
`phrase for which Petitioners did not offer a construction be addressed in this Patent
`
`Owner Preliminary Response. Specifically, the phrase “generating said preamble
`
`sequence by concatenating a single cyclic prefix to a front end of said consecutive
`
`sequence” places two limitations on the claimed structure which the Board should
`
`apply in evaluating the Grounds advanced in the Petition.
`
`
`1 Should the Board institute inter partes review, Patent Owner reserves the
`right to challenge Petitioner’s proposed constructions. Patent Owner also reserves
`the right to assert its own claim constructions in the district court litigation.
`13
`
`

`
`
`
`First, the claimed preamble sequence can only include one cyclic prefix.
`
`This follows from the plain language, which requires “concatenating a single
`
`cyclic prefix.” If more than one cyclic prefix is concatenated to the consecutive
`
`sequence, this limitation is not met. Second, the claimed preamble sequence must
`
`only have a cyclic prefix at the beginning of the preamble sequence. This too,
`
`follows from the plain language which states that the single cycle prefix is
`
`concatenated “to a front end of said consecutive sequence.”
`
`Not only does the plain language of the term establish that the claimed
`
`preamble sequence can contain only one cyclic prefix which must appear at the
`
`beginning of the preamble sequence, the file history also establishes that structures
`
`that include more than one cyclic prefix in multiple positions are outside of the
`
`scope of the claims. As discussed above, the applicant explained during
`
`prosecution that “a review of FIG. 2 of Jung reveals that a preamble sequence of
`
`Jung may include more than one cyclic prefix,” and therefore “Jung cannot teach
`
`or suggest generating said preamble sequence by concatenating a single cyclic
`
`prefix (CP) to a front end of said consecutive sequence, as recited in” the amended
`
`claims. (Ex. 1002 at 76.)
`
`Accordingly, both the claim language and the file history establish that
`
`under the broadest reasonable interpretation, “generating said preamble sequence
`
`by concatenating a single cyclic prefix to a front end of said consecutive sequence”
`
`14
`
`

`
`
`
`must be construed as limiting the claims to preamble sequences which include only
`
`one cyclic prefix located at the beginning of the preamble sequence.
`
`IV. PETITIONER FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED CLAIM
`A. Legal Standard
`As the moving party, a petitioner “has the burden of proof to establish that it
`
`is entitled to the requested relief.” 37 C.F.R. § 42.20(c). “Inter partes review shall
`
`not be instituted for a ground of unpatentability unless the Board decides that the
`
`petition supporting the ground would demonstrate a reasonable likelihood that at
`
`least one of the claims challenged in the petition is unpatentable.” § 42.108(c).
`
`A claim is anticipated only when “every element and limitation of the claim
`
`was previously described in a single prior art reference, either expressly or
`
`inherently.” Sanofi-Synthelabo, Inc. v. Apotex, Inc., 550 F 3d 1075, 1082 (Fed. Cir.
`
`2008). Similarly, “obviousness requires a suggestion of all limitations in a claim.”
`
`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). In
`
`addition, a party asserting obviousness bears the burden to demonstrate both “that a
`
`skilled artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success in doing so.” Kinetic Concepts, Inc. v.
`
`Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (quoting Procter &
`
`Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)
`
`15
`
`

`
`
`
`(internal quotation marks omitted)); In re Cyclobenzaprine Hydrochloride
`
`Extended—Release Capsule Patent Litig., 676 F.3d 1063, 1068-69 (Fed. Cir.
`
`2012).
`
`Inter partes review may not be authorized unless “the information presented
`
`in the petition . . . and any response . . . 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). In addition, the institution decision “may take
`
`into account whether, and reject the petition or request because, the same or
`
`substantially the same prior art or arguments were presented to the Office.” 335
`
`U.S.C. § 325(d).
`
`B.
`
`The Prior Art Structure Relied Upon by Petitioner Is Materially
`Identical to the Structure Before the Examiner During
`Prosecution
`
`The statutory framework requires that the Petition establish a reasonable
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`likelihood that every limitation of at least one claim is described or suggested in
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`the Prior Art References in order for an inter partes review to be instituted. The
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`Petition here fails to meet this burden because the Prior Art References fail to
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`disclose at least two limitations present in every challenged claim. In particular, the
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`Petition fails to establish a reasonable likelihood that the limitations
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`“concatenating a single cyclic prefix (CP) to a front end of said consecutive
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`sequence” and “repeating a specific sequence, having a length (L), N times to
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`generate a consecutive sequence having a length (N*L)” are disclosed. These two
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`limitations both appear in the independent claims, claim 1 and claim 8, and are
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`therefore required for every challenged claim.
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`These limitations were added during prosecution after a rejection based on
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`Jung. Following that amendment, the Examiner withdrew the rejection and the
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`’481 patent issued, demonstrating that Jung does not disclose the amended
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`limitations. Petitioners here now seek to rely on a structure that has no material
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`distinction from that disclosed in Jung. Indeed, Petitioners failed to distinguish
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`Jung from the Prior Art Reference relied upon in the Petition. While the Petition
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`sets forth 8 grounds for alleged invalidity, each of those 8 grounds relies upon the
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`same prior art document, IEEE802.16-2004, as allegedly disclosing the two
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`missing limitations, as set forth in the table below.
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`Ground Claims
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`Reliance on IEEE802.16-2004 in Petition
`
`1A
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`1B
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`1, 15
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`8, 16
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`1C
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`2-4, 6
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`Petition section V.A.1 at pages 22-24.
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`“As set forth above in Section V-A-1, and described with
`respect to the claim 1 using annotated Figure 205,
`incorporated herein, IEEE802.16-2004 discloses generating
`said preamble by repeating a specific sequence, having a
`length (L), N times to generate a consecutive sequence
`having a length (N*L), as recited in claim 1.” (Pet. at 30.)
`
`“As such, a PHOSITA with access to Tan would have
`nevertheless been led to generate the specific sequence (i.e.,
`the 64-sample sequence 110 or the 128-sample sequence
`210) in the long preamble (as defined in § 8.3.3.6 of the
`IEEE 802.16 for Initial Ranging) from a Constant
`17
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`
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`Ground Claims
`
`Reliance on IEEE802.16-2004 in Petition
`
`1D
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`9-11, 13
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`2A
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`1, 15
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`2B
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`8, 16
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`2C
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`2-4, 6
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`2D
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`9-11, 13
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`Amplitude Zero Auto Correlation (CAZAC) sequence of the
`type described by Tan[.]” (Pet. at 39 (emphasis in
`original).)
`
`“As described with regard to claim 8 in Section V-B-1,
`IEEE802.16-2004 in view of Chou render independent
`claim 8 obvious. . . . Accordingly, IEEE802.16-2004 in
`view of Chou and Tan renders dependent claim 9 obvious.”
`(Pet. at 49-50.)
`
`“As described with regard to claim 1 in Section V-A-1,
`IEEE802.16-2004 discloses the entire claim body of claim
`1.” (Pet. at 55.)
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`“Accordingly, a PHOSITA would have readily realized that
`the fixed subscriber station in a mobile communication
`system as disclosed in IEEE802.16-2005 is a transmitter for
`transmitting a preamble sequence as disclosed by
`IEEE802.16-2004.” (Pet. at 56.)
`
`“As described with regard to dependent claim 2-4 and 6 in
`Section V-C, IEEE802.16-2004 and Tan disclose each and
`every feature of these dependent claims.” (Pet. at 58.)
`
`“As described with regard to dependent claims 9-11 and 13
`in Section V-D, IEEE802.16-2004, Chou, and Tan disclose
`each and every feature of these dependent claims.” (Pet. at
`59.)
`
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`Every Ground advanced in the Petition therefore relies on IEEE802.16-2004
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`as allegedly disclosing the preamble structure of every challenged claim. Because
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`it remains the case that the structure of Jung and IEEE802.16-2004 fails to disclose
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`these novel limitations present in every challenged claim, however, the Petition
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`fails to set forth a reasonable likelihood of success as to any claim and should be
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`denied in its entirety.
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`1.
`
`IEEE802.16-2004 Fails to Disclose “generating said
`preamble sequence by concatenating a single cyclic prefix
`(CP) to a front end of said consecutive sequence”
`Every claim of the ’481 patent requires “concatenating a single cyclic prefix
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`(CP) to a front end” of the consecutive sequence. This limitation was amended
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`following the Examiner’s rejection based on Jung. Before the amendment, the
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`claims required “concatenating a cyclic prefix (CP) to a front end of” a repeated
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`sequence. (Ex. 1002 at 72.) The requirement that only a single cyclic prefix be
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`contained in the claimed preamble sequence was specifically added during
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`prosecution to distinguish preamble sequences that include multiple cyclic
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`prefixes, as the file history makes plain:
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`Applicant has reviewed Jung and has found no discussion with
`regard to “generating said preamble sequence by concatenating
`a single cyclic prefix to a front end of said consecutive
`sequence,” as recited in independent claim 31. Rather, a review
`of FIG. 2 of Jung reveals that a preamble sequence of Jung
`may include more than one cyclic prefix. Therefore, Applicant
`submits that Jung cannot teach or suggest generating said
`preamble sequence by concatenating a single cyclic prefix
`(CP) to a front end of said consecutive sequence, as recited in
`independent claim 31.
`
` . .
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`[A]s illustrated in annotated FIG. 2, each of the frames, even
`and odd, has its own CP. Therefore, since each frame has its
`own CP, the preamble sequences of Jung are not concatenated
`
` .
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`with a single CP to a