throbber
Paper No. 10
` Entered: November 3, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and MICROSOFT
`MOBILE INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00981
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`I. INTRODUCTION
`Apple, Inc., Microsoft Corporation, Microsoft Mobile OY, and
`Microsoft Mobile Inc. (f/k/a Nokia, Inc.) (collectively, “Petitioner”) filed a
`Petition requesting an inter partes review of claims 1–4, 6, 8–11, 15, and 16
`of U.S. Patent No. 8,218,481 B2 (Ex. 1001, “the ’481 patent”). Paper 4
`(“Pet.”). Evolved Wireless, LLC, the assignee of the ’481 patent, filed a
`Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless the information presented in the Petition and any
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Taking into account the information presented, we conclude
`the record establishes there is a reasonable likelihood that Petitioner will
`prevail with respect to at least one of the challenged claims of the ’481
`patent. Accordingly, we institute trial as set forth below.
`A. Related Matters
`The ’481 patent has been asserted in several actions, captioned
`Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542 (D. Del.); Evolved
`Wireless, LLC v. HTC Corp., C.A. 15-cv-543 (D. Del.); Evolved Wireless,
`LLC v. Lenovo Group Ltd., C.A. 15-cv-544 (D. Del.); Evolved Wireless,
`LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-545 (D. Del.); Evolved
`Wireless, LLC v. ZTE Corp., C.A. 15-cv-546 (D. Del.); and Evolved
`Wireless, LLC v. Microsoft Corp., C.A. 15-cv-547 (D. Del.). Pet. 2.
`The ’481 patent is the subject of IPR2016–00758, in which a trial has
`been instituted on claims 1–3, 6, 8–10, and 13. The ’481 patent is also the
`subject of IPR2016-01342, IPR2016-01349, IPR2017-00068, and IPR2017-
`
`
`
`2
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`00106, in which decisions as to whether or not to institute have not yet been
`rendered.
`
`B. The ’481 Patent
`The ’481 patent is titled “Method of Transmitting Data in a Mobile
`Communication System.” Ex. 1001, [54]. It issued on July 10, 2012, from
`U.S. Patent Application No. 12/303,947, filed on June 8, 2007, which claims
`priority to KR 10-2006-0052167, filed June 9, 2006, and KR 10-2006-
`0057488, filed June 26, 2006. Id. at [21], [22], [30], [45]. According to the
`Specification, “[t]he present invention relates to a mobile communication
`system, and more particularly, to a method of expanding a code sequence, a
`structure of a random access channel and a method of transmitting data in a
`mobile communication system.” Id. at 1:16–20. The disclosed methods and
`systems are alleged to increase the amount of data which can be transmitted
`to make the data transmission more robust and less susceptible to noise or
`channel change. Id. at 2:45–49. And the invention is alleged to be
`applicable to wireless Internet systems. Id. at 18:28–30.
`The ’481 patent contains sixteen claims, all of which are directed to
`the structure of a preamble sequence of a data transmission. Id. at 18:33–
`20:16. Independent claim 1 is directed to “[a] method of transmitting a
`preamble sequence” and independent claim 8 is directed to “[a] transmitter
`for transmitting a preamble sequence.” Id. at 18:33–42, 18:60–19:3. The
`independent claims require “repeating a specific sequence, having a length
`(L), N times to generate a consecutive sequence having a length (N*L)” and
`“concatenating a single cyclic prefix (CP) to a front end of said consecutive
`sequence.” Id. Figure 11, which illustrates the claimed preamble structure
`with a single prefix and a repeated sequence, is reproduced below.
`
`
`
`3
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`
`Figure 11 depicts a single prefix at the front end of consecutive, repeated
`sequences. Id. at 18:46–60.
`C. The ’481 Patent Claims
`Of the challenged claims, claims 1 and 8 are independent. Claim 1
`recites:
`1. 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.
`
`Ex. 1001, 18:33–42. Claim 8 recites:
`
`8. A transmitter for transmitting a preamble sequence in a
`mobile communication system, the transmitter comprising:
`
`a preamble generation unit configured to generate said
`preamble sequence by repeating a specific sequence, having
`a length (L), N times to generate a consecutive sequence
`having a length (N*L) and concatenating a single cyclic
`prefix (CP) to a front end of said consecutive sequence;
`
`
`
`4
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`a transmission unit configured to transmit, on a random access
`channel, said preamble sequence to a receiving side.
`
`Ex. 1001, 18:60–19:3.
`
`
`
`Dependent claims 15 and 16 depend from claims 1 and 8 respectively,
`and recite “said consecutive sequence comprises at least a first sequence, a
`second sequence, and an N-th sequence; and said CP is identical to a rear
`part of said N-th sequence.” Id. at 20:9–16.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims of the ’481 patent on the following
`grounds of unpatentability. Petitioner presents two sets of alternative
`grounds of unpatentability. The first set, styled as Grounds 1A, 1B, 1C, and
`1D, applies if the preambles of independent claims 1 and 8 are construed to
`be non-limiting; and the second set, Grounds 2A, 2B, 2C, and 2D, applies if
`the preambles are construed to be limiting. Pet. 16–19.
`
`Ground
`
`Reference(s)
`
`Basis1
`
`1A
`
`1B
`
`IEEE802.16-20042
`
`IEEE802.16-2004 and
`Chou3
`
`§ 102(a)
`
`§ 103(a)
`
`Challenged
`Claims
`1 and 15
`
`8 and 16
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’481 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 IEEE Std 802.16-2004, “IEEE Standard for Local and metropolitan area
`networks Part 16: Air Interface for Fixed Broadband Wireless Access
`Systems” (Oct. 1, 2004) (Ex. 1005).
`3 US Patent No. 8,977,258 B2 (Ex. 1010).
`
`
`
`5
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`Ground
`
`1C
`
`1D
`
`2A
`
`2B
`
`2C
`
`2D
`
`
`
`
`
`Reference(s)
`
`IEEE802.16-2004 and
`Tan4
`IEEE802.16-2004,
`Chou, and Tan
`IEEE802.16-2004 and
`IEEE802.16e-20055
`IEEE802.16-2004,
`IEEE802.16e-2005, and
`Chou
`IEEE802.16-2004,
`IEEE802.16e-2005, and
`Tan
`IEEE802.16-2004,
`IEEE802.16e-2005,
`Chou, and Tan
`
`Basis1
`
`§ 103(a)
`
`Challenged
`Claims
`2-4 and 6
`
`§ 103(a)
`
`9–11 and 13
`
`§ 103(a)
`
`1 and 15
`
`§ 103(a)
`
`8 and 16
`
`§ 103(a)
`
`2–4 and 6
`
`§ 103(a)
`
`9–11 and 13
`
`Petitioner asserts that IEEE802.16-2004 and IEEE802.16e-2005 are
`prior art to the ’481 patent under 35 U.S.C. §§ 102(a) and 102(b), and Chou
`is prior art under 35 U.S.C. §§ 102(a) and 102(e). Pet. 4–5. Patent Owner
`does not, at this stage of the proceeding, challenge the prior art status of
`these references. Prelim. Resp. 10–12.
`
`
`4 US Provisional Application No. 60/759,697, filed Jan. 17, 2006 (Ex. 1007).
`5 IEEE Std 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” (Feb. 28, 2006)
`(Ex. 1008).
`
`
`
`6
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`Petitioner asserts that Tan is prior art under 35 U.S.C. § 102(e). Pet.
`4. Patent Owner argues that Tan, a US provisional patent application, is not
`prior art. Prelim. Resp. 2, 12, 27–29.
`II. ANALYSIS
`A. Claim Construction
`A claim of an unexpired patent subject to inter partes review receives
`the “broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). At this preliminary
`stage, we construe the claims only to the extent necessary to determine
`whether or not “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition”
`pursuant to 35 U.S.C. § 314(a).
`In the “Claim Construction” section of the Petition, Petitioner
`discusses the preambles of independent claims 1 and 8, and “preamble
`generating unit” and “transmission unit” in claim 8. Pet. 5–13. Petitioner
`argues the preambles of claims 1 and 8 are not limiting. Id. at 10.
`Petitioner, however, presents two sets of alternative grounds of
`unpatentability: the first applies if the preambles are construed to be non-
`limiting (Grounds 1A–1D); and the second applies if the preambles are
`construed to be limiting (Grounds 2A–2B). Pet. 16 (“Grounds 1A-1D are
`applicable when the preambles of the Challenged Claims are properly
`construed as NOT being limiting.”), 17 (“Grounds 2A-2D are applicable
`when the preambles of the Challenged Claims are deemed to be limiting.”).
`“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.”
`
`
`
`7
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
`Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`1298, 1305). “Conversely, 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.’” Id.
`(quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The Federal
`Circuit noted that “a preamble is generally not limiting when the claim body
`describes a structurally complete invention such that deleting the preamble
`phrase does not affect the structure or steps of the claimed invention.” Id. at
`809.
`
`Based on the current record, we conclude that the preamble of claim 1
`does not recite an essential step of the claimed invention that is necessary to
`give the claim meaning. The preamble of claim 1 recites “[a] method of
`transmitting a preamble sequence in a mobile communication system.” The
`first two steps of claim 1 recite “repeating a specific sequence . . .” and
`“generating said preamble sequence . . . .” The last recited step is
`“transmitting, on a random access channel, said preamble sequence to a
`receiving side.” Claim 1 recites a complete “method of transmitting a
`preamble sequence” in the claim body, and the preamble states only an
`intended use. Moreover, if the preamble were deleted, it would not affect
`the steps of the claimed invention. Thus, our preliminary claim
`construction, at this stage, is that the preamble of claim 1 is not limiting.
`Similarly, based on the current record, we conclude that the preamble
`of claim 8 does not recite essential structure of the claimed invention that is
`necessary to give the claim meaning. The preamble of claim 8 recites “[a]
`transmitter for transmitting a preamble sequence in a mobile communication
`
`
`
`8
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`system.” The two recited structural limitations are “a preamble generation
`unit configured to generate said preamble sequence . . .” and “a transmission
`unit configured to transmit, on a random access channel, said preamble
`sequence to a receiving side.” Claim 8 recites a complete transmitter in the
`claim body and the preamble states only an intended use. Moreover, if the
`preamble were deleted, it would not affect the structure of the claimed
`invention. Thus, our preliminary claim construction, at this stage, is that the
`preamble of claim 8 is not limiting.
`With regard to “preamble generating unit” and “transmission unit” in
`claim 8, Petitioner argues that these are not means-plus-function limitations
`under 35 U.S.C. § 112(6) and “should be given [their] plain meaning as
`understood under the BRI standard.” Id. at 10–13. The word “means” is not
`used in claim 8. As a result, there is a presumption that the limitations at
`issue are not means-plus-function limitations that should be construed in
`accordance with Section 112, paragraph 6. Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (“When a claim term lacks the
`word ‘means,’ the presumption can be overcome and §112, para. 6 will
`apply if the challenger demonstrates that the claim fails to ‘recite sufficiently
`definite structure’ or else recites ‘function without reciting sufficient
`structure for performing that function.’” (citation omitted)). On the current
`record, there is no persuasive argument or evidence to overcome the
`presumption. Petitioner is not challenging the presumption (Pet. 11, 12) and
`Patent Owner takes no position on this issue (Prelim. Resp. 13).
`Accordingly, at this stage in the proceeding, we do not construe the
`“preamble generating unit” and “transmission unit” as means-plus-function
`limitations.
`
`
`
`9
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`Moreover, with regard to the claim construction issues addressed in
`the Petition, Patent Owner argues that:
`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. 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.
`
`Prelim. Resp. 13 (emphasis added; footnote reserving right to contest or
`assert claim constructions omitted). Patent Owner, at this stage in the
`proceeding, explicitly declines to take a position on Petitioner’s proposed
`claim constructions and does not argue that the constructions of the disputed
`terms are “reasons why no inter partes review should be instituted.” See 35
`U.S.C. § 313.
`Patent Owner raises an additional claim construction issue not
`addressed explicitly by Petitioner, arguing that “both the claim language and
`the file history establish that under the broadest reasonable interpretation,
`‘generating said preamble sequence by concatenating a single prefix to a
`front end of said consecutive sequence’ [as recited in independent claim 1]
`must be construed as limiting the claims to preamble sequences which
`include only one cyclic prefix located at the beginning of the preamble
`sequence.” Prelim. Resp. 14–15. We do not agree based on the current
`record and do not adopt Patent Owner’s proposed construction.
`
`
`
`10
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`Claim 1 is directed to a “method comprising” three recited steps. It is,
`
`thus, open-ended: the method requires that those three steps be performed,
`but the method is not limited to those three steps. Claim 1 recites “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 (CP) to a front end of said
`consecutive sequence.” The wording of this method claim does not support
`limiting the claim to the structure Patent Owner argues. To the contrary,
`although the claim requires “by concatenating a single cyclic prefix (CP) to
`a front end of said consecutive sequence,” this method claim does not
`preclude additional steps such as repeating this step and concatenating
`another cyclic prefix to the front end of another consecutive sequence.
`Similar reasoning applies to claim 8. The transmitter must contain a
`preamble generation unit as required by the claim, but the claim does not
`preclude additional components that may generate additional sequences.
`
`Patent Owner relies on an argument submitted by the applicant during
`prosecution of the ’481 patent in support of its construction. Prelim. Resp.
`14. Patent Owner states:
`[T]he 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.)
`
`Id. Figure 2 of Jung (Ex. 2001) as annotated by applicant and submitted
`during prosecution of the ’481 patent (Ex. 1002, 77; see also Prelim. Resp.
`8) is reproduced below.
`
`
`
`11
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`
`Figure 2 of Jung depicts a preamble sequence structure in a mobile
`communication system. Ex. 2001 ¶ 28. We do not interpret this argument
`as sufficiently clear and unequivocal to overcome the plain meaning of the
`language of claim 1, and to support a broadest reasonable construction that is
`limited in the manner argued by Patent Owner. In addition, as this issue was
`raised in the Preliminary Response (Prelim Resp. 13–15), we have not had
`the benefit of briefing by Petitioner on this issue (see Pet. 5–13). Based on
`the record before us, at this preliminary stage, we do not adopt Patent
`Owner’s construction.
`B. Asserted Anticipation of Claims 1 and 15 by IEEE802.16-2004
`Petitioner, in its ground styled as “1A,” challenges independent claims
`1 and 15 as anticipated by IEEE802.16-2004. Pet. 3, 19–29. Petitioner
`relies on paragraphs 100–114 of the Declaration of Jonathan Wells, Ph.D.
`(Ex. 1003) in support of this challenge. Id. Patent Owner argues
`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,” and “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. Prelim. Resp. 19–22. We are persuaded, based on the information
`
`
`
`12
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`before us, that there is a reasonable likelihood Petitioner will prevail in
`showing anticipation of claims 1 and 15 by IEEE802.16-2004.
`1. IEEE802.16-2004 (Ex. 1005)
`IEEE802.16-2004 is an Institute of Electrical and Electronics
`Engineers (IEEE) Standard for local and metropolitan area networks titled
`“Part 16: Air Interface for Fixed Broadband Wireless Access Systems.” Ex.
`1005, 1. Patent Owner acknowledges “IEEE802.16-2004 is a standard
`published in 2004 by IEEE.” Prelim. Resp. 10.
`
`IEEE802.16-2004 discloses a “long preamble” that:
`[C]onsists of two consecutive OFDM symbols. The first
`OFDM symbol uses only subcarriers the indices of which are
`multiples 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 subscribers, resulting in time domain structure composed
`of two repetitions of a 128-sample fragment, preceded by a CP.
`
`
`Ex. 1005, 483. Figure 205 of IEEE802.16-2004 is reproduced below.
`
`
`Figure 205 of IEEE802.16-2004 depicts a “long preamble” structure
`including a single cyclic prefix preceding four 64 sample fragments and a
`single cyclic prefix preceding two 128 sample fragments.
`2. Claims 1 and 15
`Petitioner’s showing that IEEE802.16-2004 discloses all elements of
`claims 1 and 15 is detailed and supported by citations to the record. Pet. 22–
`29. The preamble of claim 1 recites “[a] method of transmitting a preamble
`
`
`
`13
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`sequence in a mobile communication system.” As indicated by the title,
`IEEE802.16-2004 discloses an air interface of fixed broadband wireless
`systems. Ex. 1005, 1; see also Pet. 22 (citing Ex. 1005, 4 (Abstract)),
`Prelim. Resp. 10 (citing Ex. 1005, 6). IEEE802.16-2004 discloses that a
`Subscriber Station (SS) “shall transmit the long preamble.” Ex. 1005, 477.
`Petitioner asserts Figure 205 and the related description in IEEE802.16-2004
`disclose “repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L),” as recited in claim
`1. Pet. 22–24. Petitioner asserts Figure 205 and the related description in
`IEEE802.16-2004 disclose “generating said preamble sequence by
`concatenating a single cyclic prefix (CP) to a front end of said consecutive
`sequence,” as recited in claim 1. Pet. 24. Petitioner asserts IEEE802.16-
`2004 on page 477 discloses “transmitting, on a random access channel, said
`preamble sequence to a receiving side,” as recited in claim 1. Pet. 24–25.
`Petitioner asserts IEEE802.16-2004 discloses “said consecutive sequence
`comprises at least a first sequence, a second sequence, and an N-th
`sequence; and said CP is identical to a rear part of said N-th sequence,” as
`recited in claim 15. Pet. 25–29.
`Patent Owner challenges Petitioner’s showing regarding two
`limitations of claim 1. Prelim. Resp. 19–26. With regard to “generating said
`preamble sequence by concatenating a single cyclic prefix (CP) to a front
`end of said consecutive sequence,” Patent Owner relies on its proffered
`claim construction discussed above, which we declined to adopt. Id. at 19–
`22. Patent Owner argues that IEEE802.16-2004 discloses multiple cyclic
`prefixes, as does Jung which was cited and distinguished on this basis during
`the prosecution of the ’481 patent. Id. Thus, Patent Owner contends
`
`
`
`14
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`IEEE802.16-2004 does not anticipate claims 1 and 15 because, as shown in
`Figure 205 of IEEE802.16-2004 (and as in Fig. 2 of Jung), there is not one
`and only one cyclic prefix in the preamble. We agree with Petitioner that
`Figure 205 and the related description in IEEE802.16-2004 discloses the
`features of this limitation by disclosing a preamble sequence with at least
`one repeated sequence with a single cyclic prefix at the front end of the
`repeated sequence.
`Patent Owner’s argument regarding “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, is similar to its argument regarding the
`“generating . . . by concatenating” step. Prelim. Resp. 22–26. Rather than
`showing how the challenged claim limitations may be distinguished from
`IEEE802.16-2004, Patent Owner presents an argument as to how the “long
`preamble” structure of IEEE802.16-2004 is similar to the preamble of Jung.
`Id. As a result, Petitioner’s detailed and supported assertions relating to
`disclosure of all features of this limitation by Figure 205 and the related
`description in IEEE802.16-2004 are not persuasively rebutted.
`We have reviewed the cited portions of IEEE802.16-2004 and on the
`record before us, find that the information presented shows that there is a
`reasonable likelihood that Petitioner will prevail in showing that claims 1
`and 15 are anticipated by IEEE802.16-2004.
`C. Asserted Obviousness of Claims 8 and 16 Over
`IEEE802.16-2004 and Chou
`Petitioner asserts, in its ground styled as “1B,” that the subject matter
`
`of claims 8 and 16 of the ’481 patent would have been rendered obvious by
`
`
`
`15
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`IEEE802.16-2004 and Chou. Pet. 3, 29–36. We discussed IEEE802.16-
`2004 above.
`1. Chou (Ex. 1010)
`Chou is titled “System and Method for Communicating with Fixed
`
`and Mobile Subscriber Stations in Broadband Wireless Access Networks.”
`Ex. 1010 [54]. Chou relates to wireless networks and wireless
`communications. Id. at 1:9–10. Figure 1 of Chou is reproduced below.
`
`
`Figure 1 depicts a broadband wireless access (BWA) network. Id. at 2:3–14.
`Chou provides this description of Figure 1:
`Broadband wireless network 100 includes base station (BS) 102
`which may communicate with one or more fixed subscriber
`stations (SS) 104 and one or more mobile subscriber stations
`(MS) 106. Base station 102 may be coupled through network
`108 to network management system (NMS) 112, servers 116
`and database 114.
`
`
`
`
`
`16
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`Id. at 2:5–10. Chou states, “[n]etwork 100 may be based on the IEEE
`802.16-2004 standard and/or IEEE 802.16(e) proposed specification” and
`the base stations may communicate with the subscriber stations and mobile
`subscriber stations on physical layer (PHY) configurations using “a SS
`based on IEEE 802.16-2004.” Id. at 2:15–16, 5:38–41. Chuo also provides,
`“the downlink PHY data units transmitted by the base station may begin
`with a long preamble.” Id. at 6:29–30.
`2. Claims 8 and 16
`Petitioner provides a detailed and supported showing that all the
`
`limitations of claims 8 and 16 of the ’481 patent are taught in IEEE802.16-
`2004 and Chou. Pet. 29–36. Petitioner also provides a showing of an
`articulated basis with rational underpinnings for combining the relevant
`teachings of the references (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`418 (2007)). Pet. 29–36.
`
`Patent Owner relies on the arguments made with respect to the two
`disputed limitations in claim 1 in challenging whether Petitioner has shown a
`reasonable likelihood of prevailing as to any challenged claim including
`claims 8 and 16. Prelim. Resp. 17–19. Patent Owner argues “[w]hile the
`Petition sets forth 8 grounds for alleged invalidity, each of these 8 grounds
`relies upon the same prior art document, IEEE802.16-2004, as allegedly
`disclosing the two missing limitations.” Id. at 17. As discussed above,
`contrary to Patent Owner’s contentions, Petitioner has shown a reasonable
`likelihood that IEEE802.16-2004 discloses the limitations of claim 1. Patent
`Owner does not discuss claims 8 and 16 or, except for disputing the two
`limitations in claim 1 are taught by the cited art, dispute any part of
`
`
`
`17
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`Petitioner’s showing that claims 8 and 16 are obvious over IEEE802.16-
`2004 and Chou.
`
`On the record before us, we determine that the information presented
`shows that there is a reasonable likelihood that Petitioner will prevail in
`showing that the subject matter of claims 8 and 16 would have been obvious
`over IEEE802.16-2004 and Chou.
`D. Asserted Obviousness of Claims 1 and 15 Over
`IEEE802.16-2004 and IEEE802.16e-2005
`
`Petitioner asserts, in its ground styled as “2A,” that the subject matter
`of claims 1 and 15 of the ’481 patent would have been rendered obvious by
`IEEE802.16-2004 and IEEE802.16e-2005. Pet. 4, 52–55. We discussed
`IEEE802.16-2004 above.
`1. IEEE802.16e-2005 (Ex. 1008)
`IEEE802.16e-2005 is an Institute of Electrical and Electronics
`Engineers (IEEE) Standard for local and metropolitan area networks titled
`“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.” Ex. 1005, 1. IEEE802.16e-2005 was not cited during prosecution of the
`patent application from which the ’481 patent issued. Ex. 1001 [56].
`IEEE802.16e-2005 “updates and expands IEEE Std 802.16-2004 to
`allow for mobile subscriber stations.” Ex. 1008, 4. Patent Owner
`acknowledges the preamble structure disclosed in IEEE802.16-2004 was
`unchanged in IEEE802.16e-2005. Prelim Resp. 12.
`
`
`
`18
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`
`2. Claims 1 and 15
`Petitioner provides a detailed and supported showing that
`IEEE802.16-2004 and IEEE802.16e-2005 teach all the limitations6 of claims
`1 and 15 and provides a showing of an articulated basis with rational
`underpinnings for combining the teachings of these references. Pet. 52–55.
`Patent Owner relies on its arguments related to the alleged failure of
`IEEE802.16-2004 to disclose the two disputed limitations in claim 1 and
`does not separately address the obviousness of claims 1 and 15 over
`IEEE802.16-2004 and IEEE802.16e-2005. Prelim. Resp. 17–19.
`For the reasons stated in the Petition and the reasons explained above
`in connection ground 1A, on the record before us, Petitioner has established
`a reasonable likelihood that the subject matter of claims 1 and 15 would
`have been obvious over IEEE802.16-2004 and IEEE802.16e-2005.
`E. Asserted Obviousness of Claims 8 and 16 Over
`IEEE802.16-2004, IEEE802.16e-2005, and Chou
`Petitioner asserts, in its ground styled as “2B,” that the subject matter
`of claims 8 and 16 of the ’481 patent would have been rendered obvious by
`IEEE802.16-2004, IEEE802.16e-2005, and Chou. Pet. 4, 55–58. These
`references were discussed above.
`Petitioner provides a detailed and supported showing that
`IEEE802.16-2004, IEEE802.16e-2005, and Chou teach all the limitations7 of
`
`
`6 As indicated above, for purposes of this Decision, we do not construe the
`preamble of claim 1 to be limiting. But even if the preamble were construed
`to be limiting, Petitioner has shown a reasonable likelihood that it will
`prevail in showing that all the features of the preamble of claim 1 are taught
`or suggested by IEEE802.16e-2005. See Pet. 53–55.
`7 As indicated above, for purposes of this Decision, we do not construe the
`preamble of claim 8 to be limiting. But even if the preamble were construed
`
`
`
`19
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`claims 8 and 16 and provides a showing of an articulated basis with rational
`underpinnings for combining the teachings of these references. Id. at 55–58.
`Patent Owner relies on its arguments related to the alleged failure of
`IEEE802.16-2004 to disclose the two disputed limitations in claim 1 and
`does not separately address the obviousness of claims 8 and 16 over
`IEEE802.16-2004, IEEE802.16e-2005, and Chou. Prelim. Resp. 17–19.
`On the record before us, for the reasons stated in the Petition and
`explained above in connection with ground 1B, Petitioner has established a
`reasonable likelihood that claims 8 and 16 would have been obvious over
`IEEE802.16-2004, IEEE802.16e-2005, and Chou.
`F. Tan Is Not Prior Art
`Petitioner relies, in part, on Tan (Ex. 1007) to establish the
`unpatentability of claims 2–4, 6, 9–11, and 13 in its grounds styled as “1C,”
`“1D,” “2C,” and “2D.” Pet. 4, 36–51, 58–59. Tan is a U.S. provisional
`patent application. Ex. 1007. Petitioner asserts Tan is prior art under
`35 U.S.C. § 102(e). Pet. 4. Petitioner’s entire presentation as to why Tan is
`prior art states:
`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.
`
`Pet. 4. Petitioner has not established sufficiently that Tan is prior art.
`First, Tan is not prior art under pre-AIA 35 U.S.C. § 102(e). Section
`102(e), prior to enactment of the America Invents Act, provided: “[a]
`
`to be limiting, Petitioner has shown a reasonable likelihood that it will
`prevail in showing that all the features of the preamble of claim 8 are taught
`or suggested by IEEE802.16e-2005. See Pet. 55–57.
`
`
`
`20
`
`

`
`IPR2016-00981
`Patent 8,218,481 B2
`
`person shall be entitled to a patent u

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket