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., MICROSOFT CORPORATION, MICROSOFT MOBILE
`OY, AND MICROSOFT MOBILE INC.,
`Petitioners,
`
`V.
`
`EVOLVED WIRELESS, LLC,
`Patent Owner
`_____________________
`
`Case IPR2016-01208
`Patent 7,746,916
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,746,916
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`FACTUAL BACKGROUND.......................................................................... 3
`
`A. United States Patent No. 7,746,916 ...................................................... 3
`
`B.
`
`C.
`
`Challenged Claims ................................................................................ 6
`
`Overview of Petition for Inter Partes Review ...................................... 9
`
`1.
`
`2.
`
`3.
`
`Zhuang327 (Ex. 1007) ..............................................................10
`
`Hou (Ex. 1011) ..........................................................................14
`
`Popović (Ex. 1009) ...................................................................15
`
`III.
`
`PROSECUTION HISTORY .........................................................................16
`
`IV. CLAIM CONSTRUCTION ..........................................................................20
`
`V.
`
`PETITIONERS FAIL TO ESTABLISH A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED CLAIM ......27
`
`A.
`
`B.
`
`C.
`
`D.
`
`Legal Standard .....................................................................................27
`
`Zhuang327 does not disclose “performing a circular shift to the
`code sequence having the second length.” [Grounds 1a, 1b, and
`1c] ........................................................................................................29
`
`Petitioners have failed to articulate a reason to combine or
`modify Zhuang327 with Hou. [Grounds 2a and 2b] ...........................31
`
`Petitioners have failed to show how combining Popović with
`Zhuang327 and Hou renders obvious “wherein the code
`sequence having the first length is a Zadoff-Chu (ZC)
`sequence.” [Grounds 1c and 2b] .........................................................36
`
`VI. CONCLUSION ..............................................................................................39
`
`i
`
`

`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Communs., Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 34
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 38
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 28
`
`Cutsforth, Inc. v. MotivePower, Inc.,
`643 F. App’x 1008 (Fed. Cir. 2016) ................................................................... 20
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 27
`
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 28
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 20
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`327 F.3d 1364 (Fed. Cir. 2003) .......................................................................... 22
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 28
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,
`152 F.3d 1368 (Fed. Cir. 1998) .......................................................................... 22
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 20
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................................... 38
`
`ii
`
`

`
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 20
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 28
`
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 28
`
`Statutes
`
`35 U.S.C. § 314(a) ................................................................................................... 28
`
`Rules
`
`37 C.F.R. § 42.20(c) ................................................................................................. 27
`
`37 C.F.R. § 42.100(b) .............................................................................................. 20
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108(c) ............................................................................................... 28
`
`
`
`iii
`
`

`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`submits this Preliminary Response to the above-captioned Petition for Inter Partes
`
`Review of U.S. Patent No. 7,746,916 (the “’916” Patent) (“Pet.,” Paper 2).
`
`I.
`
`INTRODUCTION
`
`The present Petition should be denied because it fails to establish a
`
`reasonable likelihood that Petitioners would prevail with respect to any claim
`
`challenged in the Petition. The challenged ’916 Patent claims relate to a method
`
`and apparatus for generating code sequences in a wireless communication system.
`
`The independent claims recite three key aspects of the invention: first, base
`
`sequences are generated from a code sequence of a prime number length that is the
`
`greatest prime number smaller than a desired length; second, the base sequences
`
`are cyclically extended to reach the desired length; and third, the cyclically
`
`extended code sequences are circularly shifted. Dependent claims 4 and 9
`
`specifically claim an embodiment of the invention wherein the base sequences are
`
`Zadoff-Chu code sequences.
`
`The Petition asserts five Grounds. All Grounds rely on a primary reference,
`
`Zhuang327, that fails to disclose performing a circular shift on “the code sequence
`
`having the second length” as required by the plain meaning of the claims. Grounds
`
`1a-1c of the Petition accordingly should be denied because they all rely on
`
`Zhuang327 alone to disclose this limitation.
`
`1
`
`

`
`Petitioners’ proposed combination of Zhuang327 with Hou to remedy the
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`shortcomings of Zhuang327 is not supported by a reason to combine or modify
`
`Zhuang327. Petitioners fail to acknowledge that the very combination of
`
`Zhuang327 and Hou advanced in the Petition would add complexity to the signal
`
`generation method of Zhuang327 with no added benefit. Thus a POSITA would in
`
`fact not be motivated to implement the modified system proposed by Petitioners.
`
`Finally, the Petitioners fail to articulate a reason to combine the asserted
`
`references to disclose the dependent claims 4 and 9, wherein the base sequence is a
`
`Zadoff-Chu sequence. Petitioners instead rely on a hindsight argument
`
`unsupported by the record evidence.
`
`Because Petitioners do not meet their burden on any of the challenged
`
`claims, the Petition for Inter Partes Review should be denied.
`
`2
`
`

`
`II.
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`FACTUAL BACKGROUND
`A. 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,
`
`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
`
`RE45522 reissued from U.S. Patent No. 8,036,256 on May 19, 2015 from a
`
`continuation application with the same specification as the ’909 Application.
`
`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. By being adopted into the 3GPP LTE standard,
`
`members of 3GPP recognized and agreed that the claimed inventions in the ’916
`
`3
`
`

`
`Patent were innovative solutions to the problems faced during the development of
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`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
`
`orthogonal or quasi-orthogonal [codes] which represent good correlation
`
`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
`
`4
`
`

`
`generated sequences. (See, e.g., Ex. 1001 at 1:43-47, 4:63-65, 8:13-23, 10:49-60,
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`11:1-9, 11:22-33.)
`
`To address these problems in the prior art, the ’916 Patent method and
`
`apparatus “of generating a code sequence in a wireless communication system
`
`includes recognizing a desired length of the code sequence, generating a code
`
`sequence having a length different from the desired length, and modifying the
`
`length of the generated code sequence to equal the desired length.” (Ex. 1001 at
`
`2:6-11.) In particular, the ’916 Patent claims a method of generating a code
`
`sequence of a desired length L, by cyclically extending and then 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.) Figure 13 of the ’916
`
`Patent describes one embodiment of this method:
`
`5
`
`
`
`

`
`(Ex. 1001 at Fig. 13, 12:37-49.) By beginning with a code sequence of a prime
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`number length X, the method maximizes the number of available code sequences
`
`of length L with desired correlation properties. (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.) And performing a circular
`
`shift “increase[s] an amount of control information transmitted to the
`
`communication system.” (Ex. 1001 at 11:22-25.)
`
`
`
`The ’916 Patent thus contributes important benefits to the current cellular
`
`technology, known as 4G or LTE. The transmitted code sequences according to the
`
`inventions of the ’916 Patent 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.)
`
`B. Challenged Claims
`’916 Patent captures the invention in two sets of claims. Claims 1-5 claim
`
`methods of generating code sequences according to the ’916 Patent teachings.
`
`Claims 6-10 claim an apparatus for generating the code sequences according to the
`
`’916 Patent teachings.
`
`6
`
`

`
`As issued, Claim 1, the independent method claim, recites:
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`A method for transmitting a code sequence from a transmitting party
`to a receiving party in a wireless communication system, the
`method comprising:
`
`acquiring a code sequence having a second length by a cyclic
`extension of a code sequence having a first length;
`
`performing a circular shift to the code sequence having the second
`length; and
`
`transmitting the circular shifted code sequence having the second
`length to the receiving party,
`
`wherein the first length is a largest prime number smaller than the
`second length, and
`
`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 17:35-57.)
`
`7
`
`

`
`Dependent claims 2 through 5 add additional specific limitations that
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`provide further improvements over the prior art. For example, dependent claim 4
`
`requires the sequence of length X to be a Zadoff-Chu sequence. (Ex. 1001 at 18:1-
`
`3.) Claims 1-5 thus all require “performing a circular shift to the code sequence
`
`having the second length.” (Ex. 1001 at 17:40-41.)
`
`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
`length, and performing a circular shift to the code sequence having
`the second length; and
`
`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
`8
`
`

`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`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 again 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
`
`first length, and performing a circular shift to the code sequence having the second
`
`length.” (Ex. 1001 at 18:9-12.)
`
`C. Overview of Petition for Inter Partes Review
`Petitioners base the Petition for IPR 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, 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
`
`“performing a circular shift to the code sequence having the second length . . .
`
`wherein the circular shift is performed to the code sequence having the second
`9
`
`

`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`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 17:35-57, 18:7-28.) Nor do the
`
`references disclose “wherein the code sequence having the first length is a Zadoff-
`
`Chu (ZC) sequence.” (Ex. 1001 at 18:1-3, 18:38-40.)
`
`1. Zhuang327 (Ex. 1007)
`Petitioners rely on Zhuang327 as an anticipatory reference for Ground 1a
`
`and, a primary reference for the remaining Grounds (1b, 1c, 2a, 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 “[i]n a wireless communication system, it is critical to design a
`
`mechanism for allowing a remote subscriber station (SS) to access the network by
`
`sending an access signal to a Base Station (BS).” (Id. at 1:15-18.)
`
`10
`
`

`
`Figure 1 of Zhuang327 depicts the communication system 100 with base
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`stations 104 and 105 and subscriber stations 101-103. (Id. at 2:46-67.)
`
`
`
`(Ex. 1007 at Fig. 1.) Zhuang327 explains that the access signals, used by
`
`subscriber stations to access the network, are “generated based on a ranging
`
`sequence (interchangeable with ‘access sequence’ and ‘ranging code’ and ‘access
`
`code’).” (Id. at 5:14-18.) As stated by Zhuang327, “[i]t is desirable to use ranging
`
`sequences that have low PAPR (peak to average power ratio) and good cross-
`
`correlation.” (Id. at 7:28-29.) One example of these types of ranging sequences
`
`given by Zhuang327 are “Generalized Chirp Like (GCL) sequences.” (Id. at 7:57-
`
`67.)
`
`In one embodiment for acquiring an access or ranging sequence, “the largest
`
`prime number that is smaller than the desired length is chosen and the GCL
`11
`
`

`
`sequence is cyclically extended to the desired length,” to arrive at the desired
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`sequence. (Id. at 8:65-9:1.) After the sequence is acquired, “[t]he time-domain
`
`access signal is generated by performing an IFFT on the ranging sequence after
`
`modulating the chosen sub-band.” (Id. at 5:27-29.) Zhuang327 explains that
`
`“[b]efore a CP is inserted in front of the access signal to form a complete access
`
`waveform, the access signal may be cyclically (circularly) shifted in time domain.”
`
`(Id. at 5:29-31.)
`
`
`
`Figure 8 generally depicts an embodiment of the “steps of methods used in a
`
`subscriber station, such as any of the subscriber stations 101, 102, 103 (FIG. 1)
`
`when operating as described” by Zhuang327 (Id. at 10:25-40):
`
`
`
`12
`
`

`
`(Ex. 1007 at Fig. 8.) Zhuang327 explains that “[a]t step 805 an access sequence is
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`selected from a set of Nc access sequences.” (Id. at 10:29-30.) “At step 815 an
`
`access signal is generated using the selected access sequence.” (Id. at 10:34-35
`
`(emphasis in original).) Zhuang327 again explains that “[s]ince the access
`
`sequence is used to modulate the subcarriers in the chosen sub-band, the time-
`
`domain access signal can be conveniently generated by taking an Inverse Fast
`
`Fourier Transformation (IFFT) of the frequency-domain sequence.” (Id. at 10:12-
`
`17 (referring to Figure 7).) Finally, “[a]t step 820 the generated access signal is
`
`cyclically time shifted by a shift value that is one of a defined set of Nsh shift
`
`values” and an access waveform is subsequently formed. (Id. at 10:35-40
`
`(emphasis in original).)
`
`
`
`Thus 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, thus, does not expressly or inherently disclose the
`
`claimed circular shift of the ’916 Patent, wherein the circular shift is performed to
`
`“the code sequence having the second length.” Nor does Zhuang327 disclose or
`
`suggest using Zadoff-Chu sequences to generate access signals.
`
`13
`
`

`
`2. Hou (Ex. 1011)
`Petitioners rely on Hou as a secondary reference for Grounds 2a and 2b. Pet.
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`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.)
`
`Petitioners specifically rely on Hou to remedy the shortcomings of
`
`Zhuang327’s “circular shift.” See Pet. at 48-68. In particular, two figures from
`
`Hou, and their descriptions, are cited:
`
`
`
`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
`
`14
`
`

`
`frequency domain to generate two new initial CAZAC sequences in the frequency
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`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.)
`
`A published version of the Hou patent application was submitted to the
`
`Patent Office in an IDS during prosecution of the ’916 Patent, (Ex. 1002 at 97;
`
`compare Ex. 1002 at 97 (lists “20060050799 2006-03-09 Hou, et al.”) with Ex.
`
`1011 (Prior Publication Data lists “US 2006/0050799 A1 Mar. 9, 2006”)), and is
`
`cited on the face of the patent. (Ex. 1001.)
`
`Petitioners propose adding the circular shift of Hou to the Zhuang327
`
`method that already discusses the use of a circular shift. This combination of Hou
`
`with Zhuang327, however, is not supported by a reason to combine and Petitioners
`
`fail to address a lack of incentive to modify Zhuang327. Moreover, as with
`
`Zhuang327, Hou does not disclose or suggest using Zadoff-Chu sequences to
`
`generate pilot sequences.
`
`3. Popović (Ex. 1009)
`Petitioners rely on Popović as a secondary reference for Grounds 1c and 2b.
`
`Pet. at 3. Popović is an article published by IEEE presenting “[a] new general class
`
`of polyphase sequences with ideal periodic autocorrelation function . . . . The new
`
`class of sequences is based on the application of Zadoff-Chu polyphase sequences
`
`15
`
`

`
`of length N = sm2, where s and m are any positive integers.” (Ex. 1009 at 1.)
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`Petitioners rely specifically on Popović to disclose claims 4 and 9, “wherein the
`
`code sequence having the first length is a Zadoff-Chu (ZC) sequence.” (Ex. 1001 at
`
`18:1-3, 18:38-40.) Popović, however, presents this new general class of polyphase
`
`sequences, but does not describe any algorithm for generation of code sequences
`
`used in a wireless communication system.
`
`III. PROSECUTION HISTORY
`Another patent issued to the same inventor, Zhuang, U.S. Patent No. 7,
`
`426,175 (“Zhuang175”) was substantively discussed and overcome during
`
`prosecution of the ’916 Patent. The Examiner rejected then pending claims in the
`
`’916 Patent application as anticipated over Zhuang175. (Ex. 1002 at 126-131.)
`
`Then pending claim 24 recited:
`
`24. (New) A method for generating a code sequence in a wireless
`communication system, the method comprising:
`generating the code sequence having a first length; and
`extending the generated code sequence to have a second length by a
`cyclic extension of the generated code sequence,
`wherein the first length is a largest prime number smaller than the
`second length, and wherein the cyclic extension of the generated code
`sequence is performed such that a part of the generated code
`sequence, having a length corresponding to a difference between the
`
`16
`
`

`
`first length and the second length, is added to either a start or an end
`of the generated code sequence.
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`(Ex. 1002 at 146.) Then pending dependent claim 28 further modified claim 24 to
`
`claim a circular shift:
`
`28. (New) The method according to claim 24, further comprising:
`circular shifting the generated code sequence extended to have the
`second length.
`
`(Id.) The examiner found that Zhuang175 anticipated claims 24 and 28. (Ex. 1002
`
`at 127-129.) Regarding claim 28, the Examiner cited to column 4, lines 18-21, of
`
`Zhuang175 as disclosing “circular shifting the generated code sequence extended
`
`to have the second length.” (Ex. 1002 at 129.) Column 4, lines 18-21 of
`
`Zhuang175 state:
`
`“Choose NG to be the largest prime number that is smaller than Np and
`generate the sequence set. Repeat the beginning elements of each
`sequence in the set to append at the end to reach the desired length
`Np.”
`
`(Ex. 1012 at 4:18-21.)
`
`
`
`In the subsequent office action, LG Electronics cancelled dependent claim
`
`28 and amended claim 24 to include a particular circular shift of the code sequence
`
`having a second length:
`
`17
`
`

`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`24. (Currently Amended) A method for generating transmitting a code
`sequence from a transmitting party to a receiving party in a wireless
`communication system, the method comprising:
`generating the acquiring a code sequence having a first second length
`by a cyclic extension of a code sequence having a first length; [[and]]
`extending the generated code sequence to have a second length by a
`cyclic extension of the generated code sequence
`performing a circular shift to the code sequence having the second
`length; and transmitting the code sequence having the second length
`to the receiving party,
`wherein the first length is a largest prime number smaller than the
`second length, and
`wherein the cyclic extension of the generated code sequence having
`the first length is performed such that a part of the generated 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 generated 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. 1002 at 114.) The inventors further explained that the cited
`portions of Zhuang175 did not in fact disclose circularly shifting the
`
`18
`
`

`
`generated code sequence and accordingly amended independent claim 24
`was in a position of allowance:
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`In the above-cited portion (i.e., col. 4, lines 18-21), Zhuang discloses:
`“Choose NG to be the largest prime number that is smaller than Np and
`generate the sequence set. Repeat the beginning elements of each
`sequence in the set to append at the end to reach the desired length
`Np.” (Emphasis added.)
`
`Zhuang’s disclosure regarding repeating beginning elements of
`each sequence to append such elements at the end of the sequence
`does not teach or suggest performing a circular shift. In more detail,
`the repeating and appending of elements in order to reach the desired
`greater length Np does not teach or suggest “performing a circular
`shift to the code sequence having the second length[,]” as recited in
`claim 24. Moreover, such disclosure does not teach or suggest
`“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[,]” as also recited in claim 24.
`
`(Ex. 1002 at 119-120.) The amended claims were subsequently allowed, (Ex. 1002
`
`at 87-89.), and issued in ostensibly the same form following a clarifying
`
`amendment. (Ex. 1002 at 26-32, 76-80.)
`
`19
`
`

`
`IV. CLAIM CONSTRUCTION
`In this proceeding, the claims must be given their broadest reasonable
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`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)).
`
`The Petition proposes six terms for construction. Pet. at 4-11. Patent Owner
`
`does not believe any of these six terms need to be construed to resolve the present
`
`Petition. Patent Owner reserves the right to further challenge these constructions in
`
`the event of Institution, but for now, Patent Owner contests only Petitioners’
`
`construction for “acquiring/generating a code sequence having a second length by
`
`a cyclic extension of a code sequence having a first length.” Petitioners propose an
`
`interpretation contrary to the plain meaning of the claim language for the purposes
`
`of broadening the claims to cover the prior art.
`
`20
`
`

`
`Petitioners propose a construction of “acquiring/generating a code sequence
`
`IPR 2016-01208
`U.S. Patent No. 7,746,916
`
`
`having a second length by a cyclic extension of a code sequence having a first
`
`length” as “acquiring/generating a code sequence having a second length through
`
`execution of one or more operations that include performing a cyclic extension of
`
`a code sequence having a first length.” Pet. at 5 (emphasis added to show
`
`Petitioners’ added language). This construction is unreasonably broad in view of
`
`the plain mea