`
`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
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`1 IPR2016-01277 has been consolidated with this proceeding.
`
`

`

`I.
`II.
`
`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 2
`A. “a code sequence generator” ..................................................................... 3
`B. “generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” ................................. 7
`III. Zhuang327 discloses “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] ............ 13
`A. EW does not dispute that Zhuang327 discloses “a code sequence
`generator” even under EW’s narrow interpretation ................................ 13
`B. Under the correct construction, EW does not dispute that Zhuang327
`satisfies the claims. ................................................................................. 13
`IV. The combination of Zhuang327 and Hou satisfies the claims and Petitioner
`has articulated sufficient reasons to combine or modify Zhuang327 with Hou
`[Grounds 2a and 2b] ...................................................................................... 15
`A. EW does not dispute that the combined teaching of Zhuang327 and Hou
`satisfies the claims even under EW’s narrow construction .................... 15
`B. Petitioner has articulated sufficient reasons supported by expert
`testimony to combine or modify Zhuang327 with Hou while EW, in
`contrast, bases its non-combinability contentions on unsupported
`attorney argument ................................................................................... 16
`C. The alternative equivalence argument advanced with respect to
`combining the teachings of Zhuang327 with those of Hou is uncontested
`
` ................................................................................................... 19
`Conclusion ..................................................................................................... 21 
`
`V.
`
`
`
`
`
`
`
`i
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`
`EXHIBIT LIST
`
`APPLE-1001
`
`U.S. Patent No. 7,746,916 to Han, et al. (“the ‘916 Patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ‘916 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Jonathan Wells
`
`APPLE-1004
`
`Curriculum Vitae of Jonathan Wells
`
`APPLE-1005
`
`Definitions of terms “acquire,” “generate” and “by” in
`American Heritage® Dictionary of the English Language,
`Fourth Edition, Copyright © 2000 by Houghton Mifflin
`Harcourt Publishing Company
`
`APPLE-1006
`
`U.S. Patent No. 8,340,232 to Ding et al. (“Ding”)
`
`APPLE-1007
`
`U.S. Patent No. 7,599,327 to Zhuang et al. (“Zhuang327”)
`
`APPLE-1008
`
`Excerpts from the Prosecution History of Zhuang327
`
`APPLE-1009
`
`Popovic, “Generalized chirp-like polyphase sequences with
`optimum correlation properties”, IEEE Trans. On Information
`Theory, vol. 38, pp. 1406-1409, July 1992 (“Popovic”)
`
`APPLE-1010
`
`Declaration of Mr. Gerard Grenier of IEEE
`
`APPLE-1011
`
`U.S. Patent No. 8,116,195 to Hou et al. (“Hou”)
`
`APPLE-1012
`
`U.S. Patent No. 7,426,175 to Zhuang et al. (“Zhuang175”)
`
`APPLE-1013
`
`[Reserved]
`
`APPLE-1014
`
`[Reserved]
`
`APPLE-1015
`
`[Reserved]
`
`APPLE-1016
`
`[Reserved]
`
`
`
`ii
`
`

`

`APPLE-1017
`
`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
`
`APPLE-1021
`
`APPLE-1022
`
`APPLE-1023
`
`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`N. Abramson, "THE ALOHA SYSTEM—Another alternative for
`computer communications," Proceedings of the Fall Joint
`Computer Conference, pp. 281-5, Nov. 1970
`3GPP TS 25.213 V6.4.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Spreading and modulation (FDD) (Release 6)”
`3GPP TS 25.211 V6.6.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical channels and mapping of transport channels onto
`physical channels (FDD) (Release 6)”
`D.C. Chu, “Polyphase codes with good periodic correlation
`properties,” IEEE Trans. Information Theory, vol. 18, pp. 531–
`532, July 1972
`
`3GPP TS 25.201 V3.0.0 (1999-10), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical layer - General description (3G TS 25.201 version
`3.0.0)”
`3GPP TS 36.211 V8.0.0 (2007-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-UTRA);
`Physical channels and modulation (Release 8)”
`“Defendants’ Preliminary Identification of Terms Needing
`Construction and Proposed Constructions,” from Case Nos. 15-
`542-SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-
`SLR-SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D.
`Del.
`
`
`
`iii
`
`

`

`APPLE-1024
`
`APPLE-1025
`
`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`“Evolved Wireless’s Identification of Claim Terms and Proposed
`Constructions” from Case Nos. 15-542-SLR-SRF, 15-543-SLR-
`SRF, 15-544-SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF,
`15-547-SLR-SRF filed in N.D. Del.
`
`IEEE 802.16-2004 Standard, entitled “IEEE Standard for Local
`and Metropolitan Area Networks Part 16: Air Interface for
`Fixed Broadband Wireless Access Systems” (“IEEE802.16-
`2004”)
`
`APPLE-1026
`
`Declaration of Mr. David Ringle for IEEE802.16-2004
`
`APPLE-1027
`
`U.S. Patent No. 7,400,573 to Sundstrom et al. (“Sundstrom”)
`
`APPLE-1028
`
`“Joint Claim Construction Statement,” filed on May 17th, 2016,
`from Case Nos. 15-542-SLR-SRF, 15-543-SLR-SRF, 15-544-
`SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF, 15-547-SLR-
`SRF filed in N.D. Del.
`
`APPLE-1029
`
`U.S. Patent No. 7,701,919 to Ah Lee (“Ah Lee”)
`
`APPLE-1030
`
`U.S. Patent No. 7,693,924 Cho et al. (“Cho”)
`
`APPLE-1031
`
`Motorola, Inc. 2004 Annual Report to Stockholders
`
`APPLE-1032
`
`
`
`WCDMA for UMTS: Radio Access for Third Generation
`Communications, Holma and Toskala, 3rd ed, Wiley and Sons,
`
`
`
`
`
`
`
`Ltd., 2004
`
`APPLE-1033
`
`APPLE-1034
`
`Declaration of Mr. Gerard Grenier for APPLE-1020 (served,
`not filed)
`
`Declaration of Mr. Mel DeSart for APPLE-1017 and APPLE-
`1032 (served, not filed)
`
`
`
`iv
`
`

`

`APPLE-1035
`
`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`Definitions of terms “circuit” in The American Heritage®
`Student Science Dictionary Copyright © 2002 Houghton
`Mifflin Company
`
`
`
`
`
`
`
`v
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`
`I.
`
`Introduction
`Petitioners submit this Reply to Evolved Wireless’s (“EW’s” or “PO’s”)
`
`Response (Paper 14) (“POR”). EW no longer contests the validity of method
`
`claims 1-5, and, therefore, these claims should be canceled. POR, 2. EW only
`
`addresses the validity of apparatus claims 6-10, which recite the same operations as
`
`recited in method claims 1-5.
`
`In essence, EW argues that claims 6-10 are valid because they recite an
`
`apparatus, despite the apparatus performing known methods. More specifically,
`
`EW’s entire case rests on an unreasonably narrow claim construction of the phrase
`
`“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, in particular,
`
`of the mathematical “generating” operation implemented by the recited “code
`
`sequence generator.” In an effort to attempt to evade prior art, EW seeks to narrow
`
`the broadest reasonable construction of the recited “generating” operation by
`
`improperly importing aspects of the preferred embodiments of the ‘916 Patent into
`
`the operation. Yet EW cites to no express disclaimer or clear disavowal of claim
`
`scope in either the ‘916 Patent or its prosecution history that would mandate a
`
`departure from the ordinary meaning. Moreover, EW provides no expert
`
`testimony, leaving only unsupported attorney argument that reflects a flawed
`
`
`
`1
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`understanding of the prior art references. As explained in greater detail herein,
`
`EW’s arguments should be dismissed.
`
`II. Claim Construction
`To manufacture patentability, EW attempts to make issues of claim
`
`construction where there are none. Claims receive their “broadest reasonable
`
`construction” in an inter partes review, see Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2142 (2016); 37 C.F.R. § 42.100(b). “The words of a claim are
`
`generally given their ordinary and customary meaning as understood by a person
`
`of ordinary skill in the art when read in the context of the specification and
`
`prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012). “There are only two exceptions to this general rule: 1)
`
`when a patentee sets out a definition and acts as his own lexicographer, or 2) when
`
`the patentee disavows the full scope of a claim term either in the specification or
`
`during prosecution.” Id. “A disclaimer or disavowal of claim scope must be clear
`
`and unmistakable, requiring ‘words or expressions of manifest exclusion or
`
`restriction’ in the intrinsic record.” Unwired Planet, LLC, v. Apple Inc., 829 F. 3d
`
`1353, 1358 (Fed. Cir. 2016) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`
`1313, 1327 (Fed. Cir. 2002)).
`
`Given its absence from the intrinsic record, it is not surprising that EW is
`
`unable to identify any express definition or clear disavowal that triggers departure
`
`
`
`2
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`from the general rule. Instead, EW advances constructions that either contort the
`
`ordinary meaning by importing limitations not found in proffered dictionary
`
`definitions (“a code sequence generator” feature) or depart from the ordinary
`
`meaning by improperly importing limitations from the ‘916 Patent’s preferred
`
`embodiments into the claims (“generating a code sequence” feature).
`
`The Applicants of the ‘916 Patent have intentionally drafted their apparatus
`
`claims using the most generic terminology – “unit,” “device,” “generator,” and
`
`“by.” Indeed, this type of broad language used for claim elements that recite
`
`conventional structures and functionality, rather than the point of novelty, does not
`
`find its way into the claim by some random process. Patent prosecutors go broad
`
`for those portions of the claim so that future defendants cannot practice the heart of
`
`the invention and yet avoid infringement by employing some alternate
`
`conventional structure not covered by the claim language. This is really just a
`
`morality play – the Applicants chose to use broad claim language, and they should
`
`be held to it. EW now wants to undo this earlier decision to pursue broad coverage
`
`through use of the terms. But the proper avenue for this is a claim amendment, and
`
`EW chose not to pursue a claim amendment.
`
`A.
`“a code sequence generator”
`EW impermissibly limits the term “a code sequence generator” to “a code
`
`module or digital circuit (or combination thereof) within a single device,” not to
`
`
`
`3
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`“encompass hardware or software logic found across multiple devices.” POR, 15
`
`(emphasis added). The requirement that the recited generator be a “single” device
`
`plays a pivotal role in EW’s arguments to attempt to distinguish the cited prior art
`
`in the related IPR proceeding (IPR2016-01209), and yet neither the intrinsic
`
`evidence nor the extrinsic evidence introduced by EW supports such a narrow
`
`reading of this term.
`
`Perhaps recognizing the lack of supporting intrinsic evidence, EW first relies
`
`upon selected extrinsic dictionary definitions of “generator” to support its narrow
`
`construction. EW’s selected dictionary definitions, however, fail to specify the
`
`“single” requirement. While they use the word “a device” or “a circuit,” they fail to
`
`use words like “single” or “unitary,” and they instead choose to embellish
`
`definitions by adding “discrete” and “within a single device” nowhere found in the
`
`definitions. POR, 14.
`
`Indeed, in this context, the term “circuit” is defined as “[a] system of
`
`electrically connected parts or devices.” Ex. 1035. Such a definition makes clear
`
`that a circuit is broad enough to encompass multiple devices, unlike EW’s
`
`construed limitation that prohibits the recited “code sequence generator” from
`
`“encompass[ing] hardware or software logic found across multiple devices,” POR,
`
`15.
`
`
`
`4
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`As such, contrary to EW’s proposal, the ordinary meaning of the recited
`
`“code sequence generator” encompasses any number of devices that implement the
`
`mathematical “generating” operation. Given that this feature is merely a rewriting
`
`of a “generating” operation into a noun form, this feature is properly construed as
`
`encompassing any hardware and/or software logic able to perform the recited
`
`mathematical operation of “generating,” irrespective of implementation-specific
`
`details such as the number of devices used to implement the hardware and/or
`
`software.
`
`Moreover, EW’s “single device” restriction is not mandated by the intrinsic
`
`evidence. There is no definition or clear disavowal of claim scope for this term in
`
`the patent or the prosecution history. In fact, nothing in the intrinsic evidence
`
`suggests that a single device implementation of the recited “code sequence
`
`generator” is critical to the invention. On the contrary, the intrinsic evidence is
`
`actually inconsistent with EW’s construction proposal.
`
`EW asserts the “code sequence generator” is restricted to a single device by:
`
`(i) assuming “code sequence generator” means “sequence selection unit” and then
`
`(ii) proffering a dictionary definition of “unit.” POR, 15. First, the claims do not
`
`recite a sequence selection unit. In fact, the very claims in which EW is attempting
`
`to import this limitation (i.e., claims 6-10) recite the term “unit” in a distinct phrase
`
`“transmitting unit” (emphasis added). Second, EW’s dictionary definition of “unit”
`
`
`
`5
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`never refers to a single device. Finally, the specification plainly rejects the “single
`
`device” restriction because it actually describes a “unit” as encompassing multiple
`
`devices—a fact EW omits from its response. As reproduced with highlighting
`
`below, FIG. 17 of the ’916 Patent depicts a code sequence generation unit (i.e.,
`
`“basic code sequence generation unit 1701”) that includes multiple, interoperating
`
`units (i.e., “a code sequence generation unit 1701 a,” and “a circular shift
`
`application unit 1701 b”) to generate the code sequence.
`
`The ’916 Patent, FIG.17 (highlighted)
`
`
`
`For at least the above reasons, the Board should reject EW’s overly narrow
`
`interpretation of “a code sequence generator” to a single device because such an
`
`
`
`
`
`6
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`interpretation does not capture the full breadth of the ordinary meaning and the
`
`intrinsic evidence fails to mandate a departure from that ordinary meaning.
`
`B.
`
`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length”
`While not stated explicitly, EW is advocating that the Board narrow the
`
`
`
`reading of the term “by” in the above mathematical “generating” feature to instead
`
`be “only by,” thereby excluding any “additional, intermediate operations—such as
`
`a Fourier transform—between a cyclic extension and circular shift operation.”2
`
`POR, 16. Consistent with Thorner, Unwired Planet, and In re Bigio, however, this
`
`phrase should not be narrowed beyond its ordinary meaning as advocated in the
`
`Petition because that ordinary meaning is consistent with the ‘916 Patent
`
`specification and its prosecution history, which, notably, lack any express
`
`definition or clear disavowal of claim scope for this claim term.
`
`
`2 Perhaps recognizing that its construction proposal is tantamount to improperly
`
`amending the “generating” feature to add the word “only” in front of “by,” EW
`
`goes to Herculean efforts to avoid characterizing its claim construction proposal as
`
`merely changing the word “by” to “only by.” POR at 16. Nevertheless, EW’s
`
`express exclusion of “additional, intermediate operations” from the scope of the
`
`“generating” feature limits the claim in exactly the same way as changing the word
`
`“by” to “only by.”
`
`
`
`7
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`As noted in the Petition, the plain and ordinary meaning of “by” in the
`
`
`
`mathematical “generating” feature is open-ended, merely requiring “with the use or
`
`help of, through.” Petition, 5. This ordinary meaning is consistent with the ‘916
`
`Patent specification, which only discloses embodiments in which the code
`
`sequence having a second length is generated “with the use or help of, through”
`
`extending a code sequence having a first length. Not surprisingly, EW failed to
`
`identify any embodiment disclosed in the ‘916 Patent in which the code sequence
`
`having a second length is NOT generated “with the use or help of, through”
`
`extending a code sequence having a first length. Nor did EW identify a
`
`redefinition of “by” from “with the use or help of, through” to “only with the use or
`
`help of, only through.” EW also failed to identify any portion of the prosecution
`
`history of the ‘916 Patent as being inconsistent with this plain and ordinary
`
`meaning.
`
`
`
`Instead, EW relies heavily on its assertion that all embodiments of the ‘916
`
`Patent disclose generating a code sequence having a second length only by
`
`cyclically extending a code sequence having a first length to support its claim
`
`construction proposal. POR, 18. But the Federal Circuit has repeatedly found
`
`such disclosure to be insufficient to rise to the level of a clear disavowal of claim
`
`scope. See Thorner at 1366-7 (“It is likewise not enough that the only
`
`embodiments, or all of the embodiments, contain a particular limitation. We do not
`
`
`
`8
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`read limitations from the specification into claims; we do not redefine words. Only
`
`the patentee can do that. To constitute disclaimer, there must be a clear and
`
`unmistakable disclaimer.” (emphasis added)). See also In re Am. Acad. of Sci.
`
`Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004), (“We
`
`have cautioned against reading limitations into a claim from the preferred
`
`embodiment described in the specification, even if it is the only embodiment
`
`described, absent clear disclaimer in the specification.”). And this stands to
`
`reason, as the specification examples are merely exemplary. Ex. 1001, 2:43-47.
`
`
`
`In re Bigio further supports the conclusion that EW’s narrowing of the
`
`“generating” feature is unreasonable. In an attempt to distinguish In re Bigio, EW
`
`limits its holding to ambiguous terms, apparently concluding, based on this, that In
`
`re Bigio is inapplicable to the present facts. POR, 20. To the contrary, In re Bigio
`
`is directly relevant to the present facts. Consistent with the Federal Circuit’s later
`
`decision in Thorner, the Court in In re Bigio counsels the PTO to “avoid the
`
`temptation to limit broad claim terms solely on the basis of specification passages,”
`
`and notes that “[a]bsent language carrying a narrow meaning, the PTO should only
`
`limit the claim based on the specification or prosecution history when those
`
`sources expressly disclaim the broader definition.” See 381 F.3d 1320, 1325 (Fed.
`
`Cir. 2004). In In re Bigio, the PO relied on passages from the specification to add
`
`the word “scalp” to narrow the recited claim term “hair brush” when the
`
`
`
`9
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`specification and prosecution history do not clearly disclaim the broader definition.
`
`The Federal Circuit refused to accept such narrowing. EW also relies on passages
`
`from the specification to add the word “only” in front of the word “by” to narrow
`
`the recited “generating” feature when the specification and prosecution history
`
`similarly do not clearly disclaim the broader definition. Consistent with In re
`
`Bigio, therefore, the Board should similarly refuse to accept such narrowing.
`
`
`
`As mentioned, the express disclosure of the ‘916 Patent itself further
`
`discourages such narrowing. The ‘916 Patent allows “various modifications and
`
`variations” to be made to the disclosed embodiments and further declares that “the
`
`present invention covers the modifications and variations of this invention
`
`provided they come within the scope of the appended claims and their
`
`equivalents.” Ex. 1001, 17:26-32. The claim terms chosen by EW only recite that
`
`a code sequence having a second length is generated “by” cyclically extending a
`
`code sequence having a first length, not “only by” cyclically extending the code
`
`sequence having a first length. See Ex. 1001, claim 6. Thus, the claims, as written,
`
`define a broad scope. Performing an operation, such as an IFFT, in addition to
`
`cyclic extension in generating a code sequence having a second length is a
`
`modification or variation of the disclosed embodiment that “come within the scope
`
`of the [] claims.” See id.
`
`
`
`10
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`In an attempt to undermine Petitioner’s plain meaning proposal, EW uses an
`
`
`
`analogy to support its assertion that the Petitioner’s construction is unreasonably
`
`broad because it could encompass an additional operation that “would change the
`
`meaning of the sentence.” POR, 20. Both the PO’s assertion and the analogy upon
`
`which it is premised are flawed.
`
`
`
`First, the PO’s assertion assumes, without justification, that the claims have
`
`some presupposed meaning distinct from the plain and ordinary meaning of the
`
`claim language (i.e., that the “generating” feature is narrowly limited to the recited
`
`cyclic extension and precludes any additional steps in the generation of the code
`
`sequence). As noted previously, there is no clear disavowal or express redefinition
`
`in the ‘916 Patent or its prosecution history that would require departure from the
`
`plain meaning. And certainly nothing exists in the intrinsic record that would
`
`justify importing the word “only” in front of “by,” as advocated by EW. See
`
`generally Ex. 1001 and Ex. 1002.
`
`Moreover, EW’s analogy does not support its position. EW states that “‘by’
`
`is open-ended to allow for additional modifiers (e.g., we came by car), but not
`
`modifiers that would change the meaning of the sentence (e.g., we came by the
`
`back road, and then circled back around to take the highway).” POR, 20.
`
`Accordingly, EW contends that if “we came by the back road, and then circled
`
`back around to take the highway,” the meaning of “come by the back road” would
`
`
`
`11
`
`

`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`be changed simply because we also came “by the highway.” Id. This is plainly not
`
`true. We arrived at the destination both “by the back road” and “by the highway”
`
`because the path to the destination went through both the back road and the
`
`highway. The circling back does not undo the fact that the path to arrive at the
`
`destination still went through the back road and, hence, was “by the back road.”
`
`EW’s analogy is also deficient because EW has failed to explain why the
`
`additional IFFT operation disclosed by Zhuang327 corresponds to a “circling
`
`back.” After all, the additional IFFT operation is also used to generate the code
`
`sequence having a second length and does not reverse or otherwise undo the prior
`
`cyclic extension operation. Thus, “generating a code sequence having a second
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`length” still went through a cyclic extension in Zhuang327, and, hence, was “by a
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`cyclic extension,” without changing the alleged meaning of this feature in a
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`manner equivalent to a “circling back.” As such, even if EW’s different meaning
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`of the “generating” feature were coherent and correct (which it is not), it is unclear
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`how this different meaning would exclude those intermediary operations, such as
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`Zhuang 327’s IFFT operation, that are not equivalent to a “circling back” of the
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`cyclic extension operation.
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`
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`12
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`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`III. Zhuang327 discloses “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]
`A. EW does not dispute that Zhuang327 discloses “a code sequence
`generator” even under EW’s narrow interpretation
`Despite EW having argued that “a code sequence generator” should be
`
`limited to a single device, EW does not (and cannot) dispute that Zhuang327
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`discloses a code sequence generator (i.e., a subscriber station) that is implemented
`
`as a single device, and, therefore, satisfies this feature. See POR, 14-15 and 22-23.
`
`See also Petition, 30-32. EW’s only argument to distinguish Zhuang327 under
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`Grounds 1a-c is that Zhuang327’s subscriber station does not perform the recited
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`“generating” mathematical operation because it “performs a ‘cyclic shift’ on a
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`signal only after taking the Inverse Fast Fourier Transformation [IFFT] of the
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`sequence.” POR, 22. EW’s argument fails as set forth below.
`
`B. Under the correct construction, EW does not dispute that
`Zhuang327 satisfies the claims.
`At the outset, under the correct broadest reasonable construction, the phrase
`
`“generating a code sequence having a second length by a cyclic extension of a
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`code sequence having a first length” should NOT be read as “generating a code
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`sequence having a second length only by a cyclic extension of a code sequence
`
`having a first length” as advanced by EW. See Section II-B. Indeed, after
`
`resolving the term “by” that is presently in dispute, the plain meaning of this
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`
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`13
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`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`mathematical “generating” feature is simply “generating a code sequence having a
`
`second length with the use or help of, or through a cyclic extension of a code
`
`sequence having a first length” (emphasis added). Such a plain meaning, therefore,
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`does not exclude mathematical operations that, in addition to the “cyclic
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`extension” operation, are also used to generate the code sequence having the
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`second length provided that the code sequence having the second length is also
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`generated “with the use or help of” or “through” the “cyclic extension” operation.
`
`See id.
`
`Accordingly, Zhuang327 satisfies this feature because it discloses
`
`mathematically generating a code sequence having a second length (i.e., an access
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`signal 130 having a length NFFT/IFFT) “with the use or help of” or “through” a cyclic
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`extension of a code sequence having a first length (i.e., a GCL sequence having a
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`length NG), despite the code sequence having a second length also being generated
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`“with the use or help of” or “through” an IFFT performed on the cyclically
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`extended GCL sequence. See Petition, 19-23, 30-31. Indeed, Zhuang327 discloses
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`generating a code sequence having a second length both by a cyclic extension of a
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`code sequence having a first length and by performing an IFFT operation.
`
`EW does not dispute that Zhuang327 satisfies this feature under the correct
`
`construction. See POR, 23-24. Moreover, EW does not dispute Zhuang327’s
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`satisfaction of the other features of claims 6-8 and 10, nor Popovic’s satisfaction of
`
`
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`14
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`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`the Zadoff-Chu (ZC) sequence feature recited in claim 9. Therefore, under the
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`correct construction, claims 6-8 and 10 are unpatentable in view of Zhuang327,
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`and claim 9 is unpatentable in view of Zhuang327 and Popovic. Claims 6-10,
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`therefore, should be canceled. See Petition, Grounds 1a, 1b, and 1c.
`
`IV. The combination of Zhuang327 and Hou satisfies the claims and
`Petitioner has articulated sufficient reasons to combine or modify
`Zhuang327 with Hou [Grounds 2a and 2b]
`A. EW does not dispute that the combined teaching of Zhuang327 and
`Hou satisfies the claims even under EW’s narrow construction
`To the extent that the Board adopts EW’s unreasonably narrow construction
`
`of the recitation “generating a code sequence having a second length by a cyclic
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`extension of a code sequence having a first length” as being limited to “generating
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`a code sequence having a second length only by a cyclic extension of a code
`
`sequence having a first length,” the combined teaching of Zhuang327 and Hou
`
`discloses this feature and renders claims 6-10 obvious. See Petition, Grounds 2a-b.
`
`EW does not dispute that the combination of Zhuang327 and Hou indeed satisfies
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`this feature, but only alleges a lack of a reason to combine Zhuang327 and Hou in
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`an attempt to save the claims under Grounds 2a-b. See POR, 22 and 28. EW’s
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`allegation is unfounded as set forth below.
`
`
`
`15
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`

`

`B.
`
`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`Petitioner has articulated sufficient reasons supported by expert
`testimony to combine or modify Zhuang327 with Hou while EW, in
`contrast, bases its non-combinability contentions on unsupported
`attorney argument
`As set forth in the Petition and corroborated by expert testimony, one of the
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`reasons to combine the teachings of Zhuang327 with those of Hou is “to achieve
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`the goal of creating more code sequences to further increase the number of ranging
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`opportunities. See Ex. 1003, ¶¶176-190.” See e.g., Petition, 48. EW fails to
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`counter with expert testimony or any other evidence. Rather, EW simply advances
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`attorney arguments largely premised on a mischaracterization of the testimony of
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`Petitioner’s expert, Dr. Wells. EW’s arguments, however, are not only unfounded
`
`but also reflect a flawed understanding of the prior art references and the
`
`underlying technology.
`
`As explained in greater detail in the Petition and by Dr. Wells, one way to
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`combine Zhuang327 and Hou is to perform two cyclic shifts, one in the frequency
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`domain per Hou’s teachings and another in the time domain per Zhuang327’s
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`teachings. See Petition, 54-55; Ex. 1003, ¶¶192-199. More specifically, as shown
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`in the Petitioner-FIG. 4 below, such a combination of Zhuang327 and Hou teaches
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`“performing a circular shift, in the frequency domain, to the ranging code 120
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`having the second length K = NFFT/IFFT, resulting in a circularly-shifted access
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`sequence [152]” and performing another circular shift, in the time domain, to the
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`access signal 162, resulting in a circularly-shifted access signal 172. Petition, 54.
`
`
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`16
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`

`Proceeding No.: IPR2016-01208
`Attorney Docket: 00035-0006IP1
`“A POSITA would have had reasons to do so to obtain more such sequences for
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`synchronization, channel estimation and transmitter identification purposes as set
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`forth above and in Ex. 1003, ¶¶195-199.” Id.
`
`
`
`
`
`In an attempt to undermine Dr. Wells’s credibility as to whether ranging
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`opportunities would increase if the two cyclic shifts are performed, EW
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`mischaracterizes Dr. Wells’s technical rigor when EW mischaracterizes Dr. Wells’
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`deliberative approach of approaching EW’s questions during deposition.
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`Specifically, when asked questions that require mathematical proof without
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`
`
`17
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`

`

`Proceeding No.: IPR2016-0