` 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
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`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-
`
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`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.
`
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`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;
`
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`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).
`
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`Ground
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`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).
`
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`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.”
`
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`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
`
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`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.
`
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`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.
`
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`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.
`
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`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
`
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`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
`
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`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
`
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`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
`
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`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.
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`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
`
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`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.
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`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
`
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`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.
`
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`person shall be entitled to a patent u