IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY, MICROSOFT
`MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`
`Petitioner,
`v.
`
`EVOLVED WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-012081
`Patent 7,746,916 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,746,916
`
`
`1 IPR2016-01277 has been consolidated with this proceeding.
`
`
`

`

`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`TABLE OF CONTENTS
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`
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`FACTUAL BACKGROUND.......................................................................... 3
` United States Patent No. 7,746,916 ...................................................... 3
`Challenged Claims ................................................................................ 7
`Overview of Inter Partes Review ......................................................... 9
`1.
`Zhuang327 (Ex. 1007) ................................................................ 9
`2.
`Hou (Ex. 1011) ..........................................................................10
`3.
`Popović (Ex. 1009) ...................................................................12
`III. CLAIM CONSTRUCTION ..........................................................................13
`“a code sequence generator” [Claim 6-10] .........................................14
`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” [Claim 6-
`10] ........................................................................................................16
`IV. ARGUMENT .................................................................................................21
`Zhuang327 does not disclose “a code sequence generator for
`generating a code sequence having a second length by . . .
`performing a circular shift to the code sequence having the
`second length.” [Grounds 1a, 1b, and 1c] ...........................................23
`Petitioners have failed to articulate a reason to combine or
`modify Zhuang327 with Hou to disclose “a code sequence
`generator for generating a code sequence having a second
`length by . . . performing a circular shift to the code sequence
`having the second length.” [Grounds 2a and 2b] ................................28
`CONCLUSION ..............................................................................................32
`
`I.
`II.
`
`V.
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`
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`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`TABLE OF AUTHORITIES
`
`
`
` Page(s)
`
`Cases
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 21
`Cutsforth, Inc. v. MotivePower, Inc.,
`643 F. App’x 1008 (Fed. Cir. 2016) ................................................................... 13
`Dippin’ Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007) .......................................................................... 27
`Dish Network LLC v. TQ Beta, LLC,
`IPR2015-01791, Paper No. 30 (PTAB Jan. 30, 2017) ....................................... 27
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 20
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 21
`In re Magnum Oil Tools Int’l,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 26, 27
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 13
`In re Varma v. IBM Corp. (In re Varma),
`816 F.3d 1352 (Fed. Cir. 2016) .......................................................................... 27
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 21
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 13
`Nautilus Hyosung, Inc. v. Diebold, Inc.,
`IPR2016-00580, Paper No. 15 (PTAB Jan. 31, 2017) ....................................... 27
`
`ii
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`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 13
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 21
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 21
`Statutes
`35 U.S.C. § 316(a)(8) ................................................................................................. 1
`35 U.S.C. § 316(e) ..................................................................................................... 2
`Rules
`37 C.F.R. § 42.100(b) .............................................................................................. 13
`37 C.F.R. § 42.220 ..................................................................................................... 1
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`iii
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`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`Exhibit List
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`
`
`Exhibit No.
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`
`
`Reference
`
`[RESERVED]
`Excerpt from McGraw-Hill dictionary of Scientific and
`Technical Terms (6th ed. 2003)
`Excerpt from Oxford Dictionary of Computing (4th ed. 1996)
`Excerpt from The Computer Glossary (8th ed. 1998)
`Excerpt from Academic Press Dictionary of Science and
`Technology (1992)
`Transcript of Deposition of Petitioners’ Expert, Dr. Jonathan
`Wells, dated March 21, 2017
`
`iv
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`

`

`INTRODUCTION
`Patent Owner Evolved Wireless, LLC (“Evolved Wireless”) provides this
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`
`I.
`
`response under 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.220. The Patent Trial and
`
`Appeal Board has instituted this Inter Partes Review to consider whether claims 1-
`
`10 of U.S. Patent No. 7,746,916 (Ex. 1001, the “’916” Patent) are anticipated
`
`and/or obvious based on five grounds advanced by Apple, Inc., Microsoft
`
`Corporation, Microsoft Mobile Oy, Microsoft Mobile Inc., ZTE (USA) Inc.,
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., HTC
`
`Corporation, and HTC America, Inc. (“Petitioners”).
`
`The ’916 Patent relates to code sequence generation and transmission in a
`
`wireless communication system that is part of the Long Term Evolution (“LTE”)
`
`standard, sometimes referred to as 4G. The ’916 Patent describes an improved
`
`method and apparatus for generating code sequences while maximizing the number
`
`of available unique code sequences and at the same time maintaining good
`
`correlation properties for the generated sequences. In the LTE standard, these
`
`generated sequences are used as demodulation reference signals and sounding
`
`reference signals for channel estimation over the physical uplink shared channel
`
`(“PUSCH”).
`
`1
`
`

`

`The Patent Trial and Appeal Board (the “Board”) instituted this proceeding
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`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`in the Institution of Inter Partes Review decision (Paper 7, “Dec.” or “Decision”)
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`on December 21, 2016 on the following grounds:
`
`Ground Claims
`
`Basis
`
`1a
`
`1b
`
`1c
`
`2a
`
`2b
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`
`
`1-3, 5-8, and 10
`
`§ 102: Zhuang327
`
`6-8 and 10
`
`§ 103: Zhuang327
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`4 and 9
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`§ 103: Zhuang327 and Popović
`
`1-3, 5-8, and 10
`
`§ 103: Zhuang327 and Hou
`
`4 and 9
`
`§ 103: Zhuang327, Hou and Popović
`
`Patent Owner is no longer contesting the validity of claims 1-5, and
`
`therefore addresses these five grounds only with respect to claims 6-10 in this
`
`Patent Owner Response.
`
`Petitioners bear “the burden of proving a proposition of unpatentability by a
`
`preponderance of the evidence.” 35 U.S.C. § 316(e). For the reasons set forth
`
`herein, Petitioners have failed to meet their burden on the instituted grounds with
`
`respect to claims 6-10 which rely upon a primary reference, U.S. Patent No.
`
`7,599,327 to Zhuang et al. (“Zhuang327”). Zhuang327 does not anticipate or
`
`render obvious claims 6-10 of the ’916 Patent. Claims 6-10 recite a “code sequence
`
`generator for generating a code sequence having a second length by cyclic
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`2
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`

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`extension of a code sequence having a first length, and performing a circular shift
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`IPR 2016-01208
`U.S. Patent No. 7,746,916
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`to the code sequence having the second length[.]” (Ex. 1001 at 18:9-12 (emphasis
`
`added).) Zhuang327, instead of applying a circular shift on the cyclically extended
`
`sequence, performs a “cyclic shift” on a signal only after taking the Inverse Fast
`
`Fourier Transformation of the sequence. Petitioners’ obviousness combination with
`
`Hou to cure the Zhuang327 deficiency results in a system and method with
`
`additional complexity with no additional benefit, and accordingly is not supported
`
`by a motivation to combine or modify Zhuang327.
`
`Petitioners therefore fail to establish by a preponderance of the evidence that
`
`Zhuang327 alone or in combination with the remaining art anticipates or renders
`
`obvious claims 6-10 of the ’916 Patent.
`
`II.
`
`FACTUAL BACKGROUND
` United States Patent No. 7,746,916
`The ’916 Patent issued from Application No. 11/563,909 (the “’909
`
`Application”), originally filed on November 28, 2006 by LG Electronics Inc. (“LG
`
`Electronics”). The ’909 Application claims the benefit of Korean Application No.
`
`P2005-114306, filed on Nov. 28, 2005, Korean Application No. P2006-62467,
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`filed on Jul. 4, 2006, and Korean Application No. P2006-64091, filed on Jul. 7,
`
`2006. In addition to the ’916 Patent, which issued on June 29, 2010, U.S. Patent
`
`3
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`

`

`RE45522 reissued from U.S. Patent No. 8,036,256 on May 19, 2015 from a
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`U.S. Patent No. 7,746,916
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`continuation application with the same specification as the ’909 Application.
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`LG Electronics, the original assignee of the ’916 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 ’916 Patent
`
`specification relate to LG Electronics’ contributions to the development of that
`
`standard, and the specific inventions claimed by the ’916 Patent have been adopted
`
`as part of the 3GPP LTE standard. Members of 3GPP recognized and agreed that
`
`the claimed inventions in the ’916 Patent, by being adopted into the 3GPP LTE
`
`standard, were innovative solutions to the problems faced during the development
`
`of the standard.
`
`The ’916 Patent relates to code sequence generation and transmission in
`
`wireless communication systems, such as LTE. (See, e.g., Ex. 1001 at 1:15-18,
`
`6:43-48.) As the patent specification explains, “a pilot signal or preamble of a
`
`wireless communication system is referred to as a reference signal used for initial
`
`synchronization, cell search, and channel estimation. Further, the preamble is
`
`comprised of a code sequence, and the code sequence is further comprised of
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`orthogonal or quasi-orthogonal [codes] which represent good correlation
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`properties.” (Ex. 1001 at 1:20-26.)
`
`The patent further describes problems associated with prior art code
`
`sequences. “Although the [Hadamard] code sequence and a poly-phase Constant
`
`Amplitude Zero Auto-Correlation (CAZAC) code sequence are orthogonal codes,
`
`[the] number of codes used to maintain orthogonality is limited.” (Id. at 1:31-34.)
`
`“Accordingly, the [’916 Patent] is directed to a method and apparatus for
`
`generating and transmitting code sequence[s] in a wireless communication system
`
`that substantially obviates one or more problems due to limitations and
`
`disadvantages of the related art.” (Id. at 1:51-55.) These limitations include
`
`maximizing the number of unique code sequences available in a wireless
`
`communication system while maintaining good correlation properties for the
`
`generated sequences. (See, e.g., Ex. 1001 at 1:43-47, 4:63-65, 8:13-23, 10:49-60,
`
`11:1-9, 11:22-33.)
`
`To address these problems in the prior art, the ’916 Patent’s claimed
`
`apparatus generates a code sequence of a desired length L, by cyclically extending
`
`and circularly shifting a code sequence of length X, where the length of X is the
`
`largest prime number smaller than L. (Ex. 1001 at 11:38-42, 12:37-49, 13:53-64.)
`
`5
`
`

`

`Figure 13 of the ’916 Patent describes one embodiment of this method:
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`(Ex. 1001 at Fig. 13, 12:37-49.) By beginning with a code sequence of a prime
`
`number length X, the number of available code sequences of length L with desired
`
`correlation properties is maximized. (See Ex. 1001 at 8:13-22, 10:49-60.)
`
`Cyclically extending the code sequence of length X preserves the correlation
`
`properties of the original sequence. (Ex. 1001 at 11:4-9.) Performing a circular
`
`shift “increase[s] an amount of control information transmitted to the
`
`communication system.” (Ex. 1001 at 11:22-25.)
`
`Figure 16 of the ’916 Patent depicts “a structural diagram for transmitting
`
`the code sequence . . . compris[ing] a sequence selection unit . . . and a transmitting
`
`unit[.]” (Ex. 1001 at 15:6-15.)
`
`6
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`

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`U.S. Patent No. 7,746,916
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`(Ex. 1001 at FIG. 16, 15:6-30.)
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`The generated code sequences according to the inventions of the ’916 Patent
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`further maximize the number of available code sequences concurrently used in a
`
`wireless communication system by reducing interference with other transmitted
`
`code sequences. This provides tangible benefits to the wireless network, such as
`
`maintaining good correlation properties for the generated sequences (thereby
`
`minimizing interference between mobile units). (See id. at 1:43-47, 4:63-65, 7:35-
`
`44, 8:13-23; 8:44-51, 10:49-60, 11:1-9, 11:22-33.)
`
` Challenged Claims
`Claims 6-10 claim an apparatus for generating the code sequences according
`
`to the ’916 Patent teachings. Claim 6, the independent apparatus claim, recites:
`
`An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
`
`a code sequence generator for generating a code sequence having a
`second length by cyclic extension of a code sequence having a first
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`length, and performing a circular shift to the code sequence having
`the second length; and
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`U.S. Patent No. 7,746,916
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`a transmitting unit for transmitting the circular shifted code sequence
`having the second length,
`
`wherein the first length is a largest prime number smaller than the
`second length,
`
`wherein the cyclic extension of the code sequence having the first
`length is performed such that a part of the code sequence having
`the first length, having a length corresponding to a difference
`between the first length and the second length, is added to either a
`start or an end of the code sequence having the first length, and
`
`wherein the circular shift is performed to the code sequence having
`the second length such that either a rear portion of the code
`sequence having the second length moves to a start of the code
`sequence having the second length, or a front portion of the code
`sequence having the second length moves to an end of the code
`sequence having the second length.
`
`(Ex. 1001 at 18:7-28.)
`
`Dependent claims 7 through 10 add additional limitations that provide
`
`further improvements over the prior art. For example, dependent claim 9 requires
`
`the sequence of length X to be a Zadoff-Chu sequence. (Ex. 1001 at 18:38-40.)
`
`Claims 6-10 thus all require “a code sequence generator for generating a code
`
`sequence having a second length by cyclic extension of a code sequence having a
`8
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`

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`first length, and performing a circular shift to the code sequence having the second
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`U.S. Patent No. 7,746,916
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`length.” (Ex. 1001 at 18:9-12.)
`
` Overview of Inter Partes Review
`The instituted IPR grounds rely on three references: U.S. Patent No.
`
`7,599,327 to Zhuang et al. (“Zhuang327”), U.S. Patent No. 8,116,195 to Hou et al.
`
`(“Hou”), and an article by Branislav M. Popović, titled Generalized Chirp-Like
`
`Polyphase Sequences with Optimum Correlation Properties, Vol. 38 No. 4 IEEE
`
`Transactions on Information Theory (1992) (“Popović”).
`
`None of these references, either alone or in combination, disclose “a code
`
`sequence generator for generating a code sequence having a second length by
`
`cyclic extension of a code sequence having a first length, and performing a circular
`
`shift to the code sequence having the second length.” (Ex. 1001 at 18:9-12.)
`
`1. Zhuang327 (Ex. 1007)
`Petitioners rely on Zhuang327 as an anticipatory reference for Ground 1a
`
`and a primary reference for remaining Grounds 1b, 1c, 2a, and 2b. Pet. at 3.
`
`Zhuang327 states that it relates to a method and apparatus “for randomly accessing
`
`a wireless communication system by a subscriber station in order to obtain or
`
`maintain such parameters as uplink timing, power control, channel estimation, and
`
`frequency alignment of the subscriber station.” (Ex. 1007 at 1:7-11.) Zhuang327
`
`explains that the access signals, used by subscriber stations to access the network,
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`9
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`are “generated based on a ranging sequence (interchangeable with ‘access
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`sequence’ and ‘ranging code’ and ‘access code’).” (Id. at 5:14-18.) Zhuang327
`
`describes a method of generating access signals whereby a first code sequence is
`
`generated by cyclic extension of a base sequence, but before the sequence is
`
`circularly shifted, an IFFT is performed to create an access signal. (See Ex. 1007 at
`
`5:14-31, 7:28-29, 7:57-67, 8:65-9:1, 10:12-17, and 10:25-40; see also Pet. at 16,
`
`20.) Zhuang327 does not expressly or inherently disclose the claimed code
`
`sequence generator of the ’916 Patent, wherein the circular shift is performed by
`
`the code sequence generator to “the code sequence having the second length.”
`
`2. Hou (Ex. 1011)
`Petitioners rely on Hou as a secondary reference for Grounds 2a and 2b. Pet.
`
`at 3. Hou states that it “relates to orthogonal frequency division multiplexing
`
`(OFDM) and orthogonal frequency division multiple access (OFDMA)
`
`communication systems, and more particularly to generation and transmission of
`
`preamble signals for fast cell searching, time-synchronization, and correcting
`
`initial frequency offset in an OFDM or OFDMA communication system.” (Ex.
`
`1011 at 1:19-25.)
`
`10
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`

`

`Petitioners specifically rely on Hou to remedy the shortcomings of
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`U.S. Patent No. 7,746,916
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`Zhuang327’s “circular shift.” See Pet. at 48-68. In particular, two figures from
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`Hou, and their descriptions, are cited:
`
`
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`Pet. at 53 (citing Ex. 1011 at Figure 2A, Figure 2B). Hou explains that “FIG. 2A
`
`shows an example of using the cyclic shift of initial CAZAC sequence in the
`
`frequency domain to generate two new initial CAZAC sequences in the frequency
`
`domain.” (Ex. 1011 at 3:11-13.) “FIG. 2B shows an example of using the cyclic
`
`shift of the preamble sequence in the time domain to generate two new preamble
`
`sequences in the time domain.” (Ex. 1011 at 3:18-19.)
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`11
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`Petitioners propose adding the circular shift of Hou to the Zhuang327
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`method that already includes a circular shift:
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`
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`Pet. at 55 (annotated Petitioner-FIG. 4).
`
`Petitioners, however, do not adequately explain why a POSITA would
`
`modify Zhuang327 with Hou to include the additional circular shift in the
`
`frequency domain.
`
`3. Popović (Ex. 1009)
`Petitioners rely on Popović as a secondary reference for Grounds 1c and 2b.
`
`Pet. at 3. Petitioners rely specifically on Popović to disclose the limitation of
`
`dependent claim 9, “wherein the code sequence having the first length is a Zadoff-
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`12
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`Chu (ZC) sequence.” (Ex. 1001 at 18:38-40.) Petitioners do not rely on Popović to
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`U.S. Patent No. 7,746,916
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`describe any structure for generation of code sequences used in a wireless
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`communication system.
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`III. CLAIM CONSTRUCTION
`Claims must be given their broadest reasonable construction in light of the
`
`specification. See 37 C.F.R. § 42.100(b). “Above all, the broadest reasonable
`
`interpretation must be reasonable in light of the claims and specification.” PPC
`
`Broadband, Inc. v. Corning Optical Communs. RF, LLC, 815 F.3d 747, 755 (Fed.
`
`Cir. 2016) (emphasis in original); see also Cutsforth, Inc. v. MotivePower, Inc.,
`
`643 F. App’x 1008, 1010 (Fed. Cir. 2016). “A construction that is ‘unreasonably
`
`broad’ and which does not ‘reasonably reflect the plain language and disclosure’
`
`will not pass muster.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`
`2010)).
`
`In this proceeding, Petitioners have argued broadening interpretations for
`
`two limitations, “a code sequence generator” and “generating a code sequence
`
`having a second length by a cyclic extension of a code sequence having a first
`
`length.” Neither of Petitioners’ proposed interpretations are supported by the
`
`intrinsic or extrinsic evidence.
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`13
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` “a code sequence generator” [Claim 6-10]
`
`The phrase “a code sequence generator” is found in independent claim 6 of
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`the ’916 Patent and accordingly is in all of the apparatus claims. The Petitioners
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`did not propose a formal construction for the phrase, but instead argued that “the
`
`’916 Patent does not limit the recited code sequence generator to a unitary device.”
`
`Pet. at 8-11. In its Institution Decision, the Board declined to construe “a code
`
`sequence generator.” Dec. at 10. The Board did not address Petitioners’ argument
`
`that would allow a code sequence generator to encompass multiple devices within
`
`a system. Id. The plain meaning of “generator” and the intrinsic record counsels
`
`against the broad interpretation of “generator” advanced by Petitioners.
`
`Relevant dictionary definitions suggest that a POSITA would understand
`
`that the phrase “code sequence generator” refers to a discrete circuit or module
`
`within a single device. For example, the McGraw-Hill Dictionary of Scientific and
`
`Technical Terms includes the following relevant definition of generator: “A circuit
`
`that generates a desired repetitive or nonrepetitive waveform, such as a pulse
`
`generator.” (Ex. 2002 (McGraw Hill (6th ed. 2003)) at 3.) The Oxford Dictionary
`
`of Computing defines a sequence generator as “[a] digital logic circuit whose
`
`purpose is to produce a prescribed sequence of outputs.” (Ex. 2003 (Oxford
`
`Dictionary of Computing (4th ed. 1996)) at 4; see also Ex. 2004 (The Computer
`
`Glossary (8th ed. 1998)) at 3 (generator . . . (2) a device that creates electrical
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`power or synchronization signals).) Each one of these definitions connotes a code
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`U.S. Patent No. 7,746,916
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`module or digital circuit (or combination thereof) within a single device. Thus a
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`POSITA would not interpret the phrase “code sequence generator” to broadly
`
`encompass hardware or software logic found across multiple devices.
`
`The portions of the ’916 Patent specification cited in the Petition do not
`
`support Petitioners’ argument to broaden “generator” beyond its well-understood
`
`meaning. Figure 16 and accompanying description are cited by Petitioners as
`
`structure for the claimed code sequence generator. Pet. at 9 (citing “sequence
`
`selection unit” of FIG. 16 and col. 15 ll. 12-35). Assuming the “sequence selection
`
`unit” refers to the claimed code sequence generator, the term unit would again
`
`refer to software or hardware logic within a single device. (See Ex. 2002
`
`(McGraw-Hill Dictionary of Scientific and Technical Terms (6th ed. 2003)) at 4
`
`(“unit [ENG] An assembly or device capable of independent operation, such as a
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`radio receiver, cathode-ray oscilloscope, or computer subassembly that performs
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`some inclusive operation or function.”); Ex. 2005 (Academic Press Dictionary of
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`Science and Technology (1992)) at 3 (“any device that can operate independently,
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`such as a radio receiver or an oscilloscope).)
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`Petitioners’ contention that the recitation of an “apparatus” in the preamble
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`of claim 6 does not thereby limit the claim to a single device is inapposite. See Pet.
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`at 10 n.1. Even if one were to read an “apparatus” as co-extensive with the term
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`“system,” as Petitioners contend that the case law suggests, that would only mean
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`that the two elements recited in claim 6—“a code sequence generator” and a
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`“transmitting unit”—need not be co-located in a single device. (See Ex. 1001 at
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`18:7-14.) The interpretation of the claims to cover a “system” would not give
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`reason to depart from the well-understood meaning of “generator”—as confirmed
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`by the specification—of being found in a single device.
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`Patent Owner respectfully requests that the Board find that the term “a code
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`sequence generator” be given its plain and ordinary meaning without the
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`Petitioners’ broadening interpretation.
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`
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`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” [Claim 6-10]
`Petitioners proposed that the phrase “generating a code sequence having a
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`second length by a cyclic extension of a code sequence having a first length” be
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`construed as “generating a code sequence having a second length through
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`execution of one or more operations that include performing a cyclic extension of
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`a code sequence having a first length.” Pet. at 5 (emphasis added to show
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`Petitioners’ added language). Petitioners’ apparent intention was to read the claims
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`on prior art code sequences generated by additional, intermediate operations—such
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`as a Fourier transform—between a cyclic extension and circular shift operation.
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`See Pet. at 19-23, 30-31. The Board declined to adopt Petitioners’ construction,
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`finding that the Petitioners “fail[ed] to cite to the claims, the specification, or the
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`file history, and d[id] not argue the claims, specification, or file history support the
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`proposed interpretation.” Dec. at 8-9 (citing Pet. at 5-6).
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`In addition to the reasons articulated in the Institution Decision, the Board
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`should again decline to adopt Petitioners’ broadening claim construction because it
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`is unreasonably broad in view of the plain language of the claims and specification,
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`and not supported by Petitioners’ extrinsic evidence.
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`The phrase for construction appears in independent apparatus claim 6:
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`An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
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`a code sequence generator for generating a code sequence having a
`second length by cyclic extension of a code sequence having a
`first length, and performing a circular shift to the code sequence
`having the second length; and
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`a transmitting unit for transmitting the circular shifted code sequence
`having the second length . . . .
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`(Ex. 1001 at 18:7-28 (emphasis added).) The claimed generator thus
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`expressly recites performing a circular shift to the cyclically extended sequence.
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`(Ex. 1001 at 18:7-28.) The Petitioners’ construction would unreasonably allow any
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`number and variety of mathematical operations to occur.
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`The plain reading of the claim language is consistent with the specification
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`of the ’916 Patent. No embodiment in the ’916 Patent specification recites an IFFT
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`between a cyclic extension and circular shift. Petitioners’ own expert, Dr. Wells,
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`testified that “[t]he embodiments that are disclosed within the 916 patent don’t
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`have that IFFT . . . .” (Ex. 2006 at 11:17-12:13.) Instead, every embodiment in the
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`specification reciting a circular shift explains that it is performed to the cyclically
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`extended sequence.
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`Figure 13 of the ’916 Patent, cited by both parties as exemplary of the
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`claimed code sequence generation, depicts applying a circular shift to cyclically
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`extended (or padded) code sequences:
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`With the addition of the padding portion, the length of the CAZAC
`sequence equals the desired length L. Thereafter, the result of the
`generated code sequence having length L 1303 is applied circular
`shift thereto, resulting in the CAZAC sequence 1304.
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`(Ex. 1001 at 12:37-49 (emphasis added).)
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`(Ex. 1001 at Fig. 13.)
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`Likewise, other unclaimed embodiments from the ’916 Patent describe
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`applying a circular shift to an extended or truncated sequence. (See, e.g., Ex. 1001
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`at 11:38-42 (“First, select a smallest prime number greater than L or a largest
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`prime number less than L, which is referred to as X. Second, remove or add a
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`sequence unit having a length corresponding to X-L or L-X. Third, apply the
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`circular shift to the resulting sequence.”) (emphasis added); id. at 11:52-55, 11:66-
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`12:3). Thus every embodiment disclosed in the ’916 Patent supports a reading of
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`the claims that would not include an IFFT between the cyclic extension and
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`circular shift.
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`Citing to extrinsic evidence, Petitioners contend that the terms “acquiring,”
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`“generating,” and “by” are all open ended terms allowing for multiple other
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`operations to be read into the limitation acquiring/generating. Petitioners’ cited
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`definition for “by” as “with the use or help of; through: we came by the back
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`road,” however, contradicts their own argument. (Ex. 1005 at 4 (emphasis in
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`original)). As evidenced by the dictionary example, “by” is open-ended to allow
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`for additional modifiers (e.g., we came by car), but not modifiers that would
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`change the meaning of the sentence (e.g., we came by the back road, and then
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`circled back around to take the highway). In any event, Petitioners have not shown
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`how the terms “acquiring,” “generating,” and “by,” are ambiguous necessitating a
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`resort to dictionary definitions.
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`Petitioners also cite In re Bigio for the proposition that the inventors could
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`have, but chose not to use the phrase “acquiring . . . only by a cyclic extension.”
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`Pet. at 6 (emphasis in original). In re Bigio, however, involved the ambiguous term
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`“hair brush” and an inventor’s attempt to narrow the term beyond its reasonable
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`meaning. See 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“In this case, the term ‘hair
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`brush’ alone does not specify the kind of hair to be groomed by the claimed
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`invention. Thus, the term may reasonably encompass not only scalp hair brushes
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`but also facial hair brushes.”) Here, Petitioners have not shown how the terms
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`“acquiring,” “generating” and “by” are ambiguous and are instead attempting to
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`broaden the claim language beyond its reasonable meaning.
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` Patent Owner respectfully requests the Board again decline to adopt
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`Petitioners’ attempt to broaden “generating a code sequence having a second
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`length by a cyclic extension of a code sequence having a first length” beyond its
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`reasonable meaning.
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`IV. ARGUMENT
`A claim is anticipated only when “every element and limitation of the claim
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`was previously described in a single prior art reference, either expressly or
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`inherently.” Sanofi-Synthelabo, Inc. v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir.
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`2008). Similarly, “obviousness requires a suggestion of all limitations in a claim.”
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`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (cited
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`authority omitted). In additio