` Entered: December 21, 2016
`
`Trials@uspto.gov
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and MICROSOFT
`MOBILE INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01208
`Patent 7,746,916 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
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`I. INTRODUCTION
`Apple, Inc., Microsoft Corporation, Microsoft Mobile OY, and
`Microsoft Mobile Inc. (f/k/a Nokia, Inc.) (collectively, “Petitioner”) filed a
`Petition requesting an inter partes review of claims 1–10 of U.S. Patent No.
`7,746,916 B2 (Ex. 1001, “the ’916 patent”). Paper 2 (“Pet.”). Evolved
`Wireless, LLC (“Patent Owner”), the assignee of the ’916 patent, filed a
`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless the information presented in the Petition and any
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Taking into account the information presented, we conclude
`the record establishes there is a reasonable likelihood that Petitioner will
`prevail with respect to at least one of the challenged claims of the ’916
`patent. Accordingly, we institute trial as set forth below.
`A. Related Matters
`The ’916 patent has been asserted in several actions, captioned
`Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542-SLR (D. Del.);
`Evolved Wireless, LLC v. HTC Corp., C.A. 15-cv-543-SLR (D. Del.);
`Evolved Wireless, LLC v. Lenovo Group Ltd., C.A. 15-cv-544-SLR (D.
`Del.); Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-
`545-SLR (D. Del.); Evolved Wireless, LLC v. ZTE Corp., C.A. 15-cv-546-
`SLR (D. Del.); and Evolved Wireless, LLC v. Microsoft Corp., C.A. 15-cv-
`547-SLR (D. Del.). Pet. 1; Paper 5, 2–3.
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`The ’916 patent is also the subject of IPR2016-01209, IPR2016-
`01277, and IPR2016-01280, in which decisions instituting trial on claims 1–
`10 are being issued on the same date as this decision.
`B. The ’916 Patent
`The ’916 patent is titled “Method and Apparatus for Generating and
`Transmitting Code Sequence in a Wireless Communication System.” Ex.
`1001, [54]. According to Patent Owner, “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.” Prelim. Resp. 5 (citations
`omitted). The Specification states, “the code sequence or a code sequence
`set can be applied to 3rd Generation Partnership Project (3GPP) system or
`3GPP2 system as well as a Wibro system or a Wimax system.” Ex. 1001,
`17:22–25. Both parties cite Figure 13, which is reproduced below, as
`illustrating the invention. Pet. 13; Prelim. Resp. 5.
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`Figure 13 of the ’916 patent depicts code sequence 1301 with a “[r]equired
`sequence length, L”; “CAZAC sequence [1302] with prime length X ≤ L”;
`“[t]runcated CAZAC sequence [1303] length, L” with a padding portion
`added; and “[d]elayed CAZAC sequence [1304] length, L” in which the end
`portion from code sequence 1303 has been circularly shifted to the start of
`code sequence 1304. Ex. 1001, 12:37–49.
`
`C. The ’916 Patent Claims
`Of the challenged claims, claims 1 and 6 are independent. Claims 1
`and 6 recite:
`1. 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.
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`6. 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 the 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, 17:35–57, 18:7–28.
`
`Dependent claims 2 and 7 recite, “the part of the code sequence
`having the first length comprises at least a cyclic prefix or a cyclic postfix.”
`Id. at 17:58–60, 18:29–31.
`Dependent claims 3 and 8 recite, “the cyclic extension is performed
`such that a cyclic postfix of the code sequence having the first length, having
`the length corresponding to the difference between the first length and the
`second length, is added to the end of the code sequence having the first
`length.” Id. at 17:61–66, 18:32–37.
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`Dependent claims 4 and 9 recite, “the code sequence having the first
`length is a Zadoff-Chu (ZC) sequence.” Id. at 18:1–3, 18:38–40.
`Dependent claims 5 and 10 recite, “the code sequence having the
`second length is transmitted as a reference signal sequence.” Id. at 18:3–6,
`18:41–43.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims of the ’916 patent on the following
`grounds of unpatentability. Pet. 3.
`Ground Reference(s)
`
`Basis1
`
`Challenged Claims
`
`1a
`
`1b
`
`1c
`
`2a
`
`Zhuang3272
`
`Zhuang327
`
`§ 102(e)
`
`1–3, 5–8, and 10
`
`§ 103(a)
`
`6–8 and 103
`
`Zhuang327 and Popović4
`
`§ 103(a)
`
`4 and 9
`
`Zhuang327 and Hou5
`
`§ 103(a)
`
`1–3, 5–8, and 10
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’916 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 Zhuang (US 7,599,327 B2, filed Mar. 2, 2005, issued Oct. 6, 2009) (Ex.
`1007).
`3 Petitioner includes claim 5 in this group in the table on page 3 of the
`Petition. However, in its detailed presentation relating to this ground,
`Petitioner makes no reference to claim 5. Pet. 36–42.
`4 Branislav M. Popović, Generalized Chirp-Like Polyphase Sequences with
`Optimum Correlation Properties, 38 IEEE Transactions on Information
`Theory, 1406–1409 (1992) (Ex. 1009).
`5 Hou et al. (US 8,116,195 B2, filed July 27, 2005, issued Feb. 14, 2012)
`(Ex. 1011).
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`Ground Reference(s)
`
`Basis1
`
`Challenged Claims
`
`Zhuang327 and Hou and
`Popović
`
`§ 103(a)
`
`4 and 9
`
`2b
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`
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`Petitioner asserts that Zhuang327 and Hou are prior art to the ’916
`patent under 35 U.S.C. § 102(e) and Popović is prior art under 35 U.S.C.
`§ 102(b). Pet. 3–4. Patent Owner does not, at this stage of the proceeding,
`challenge the prior art status of these references. Prelim. Resp. 10–16.
`II. ANALYSIS
`A. Claim Construction
`A claim of an unexpired patent subject to inter partes review receives
`the “broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). We shall construe
`only terms that are in controversy and then only to the extent necessary to
`resolve the controversy. Vivid Technologies, Inc. v. American Science &
`Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the “Claim Construction” section of the Petition, Petitioner
`discusses: (1) “acquiring/generating a code sequence having a second length
`by a cyclic extension of a code sequence having a first length” (claims 1 and
`6); (2) “cyclic prefix” (claims 2 and 7); (3) “cyclic postfix” (claims 2, 3, and
`7); (4) “reference signal sequence” (claims 5 and 10); (5) “a code sequence
`generator” (claim 6); and (6) “a transmitting unit” (claim 6). Pet. 4–11. We
`analyze Petitioner’s claim construction contentions below.
`Patent Owner argues no claim construction is necessary. The
`Preliminary Response states:
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`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.
`Prelim. Resp. 20.
`1. “acquiring/generating a code sequence having a second length by a
`cyclic extension of a code sequence having a first length” (claims 1
`and 6)
`
`Petitioner argues:
`the broadest reasonable interpretation (BRI) of the phrase
`“acquiring/generating a code sequence having a second length
`by a cyclic extension of a code sequence having a first length”
`is broad enough to encompass “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. 5. Thus, Petitioner argues the word “by” in the context of claims 1 and
`6 should be interpreted as expanded to: “through execution of one or more
`operations that include performing.”
`
`In making this argument, Petitioner fails to cite to the claims, the
`specification, or the file history, and does not argue the claims, specification,
`or file history support the proposed interpretation. Pet. 5–6. The only
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`support cited is the “plain and ordinary meaning” based on a general purpose
`dictionary.6 Id.
`
`Patent Owner argues Petitioner’s proposed construction broadens the
`claim language beyond its reasonable meaning. See, e.g., Prelim. Resp. 27.
`Patent Owner does not, however, dispute at this stage of these proceedings
`that this limitation is disclosed in the cited art. Id. at 9–10.
`
`Based on this record, we do not adopt the interpretation of this
`limitation argued by Petitioner or otherwise construe this limitation. The
`interpretation argued by Petitioner is not supported by the intrinsic record
`and it is not necessary for us to construe this limitation in order to make this
`decision on institution of trial.
`2. “cyclic prefix” (claims 2 and 7); “cyclic postfix” (claims 2, 3, and
`7); and “reference signal sequence” (claims 5 and 10)
`For the terms “cyclic prefix” (claims 2 and 7), “cyclic postfix” (claims
`2, 3, and 7), and “reference signal sequence” (claims 5 and 10), Petitioner
`contends that, under the broadest reasonable interpretation, these terms are
`“broad enough to encompass” the interpretations offered and those
`interpretations are “consistent” with the specification. Pet. 6–8. Patent
`Owner argues these terms do not need to be construed for purposes of
`making this institution decision. Prelim. Resp. 20. And Patent Owner, at
`this stage in these proceedings, does not dispute the cited art teaches the
`limitations of the dependent claims in which these terms appear. Prelim.
`Resp. 9–10. We believe the meanings of these terms in the context of the
`claims are sufficiently clear at this stage without further interpretation.
`
`
`6 American Heritage Dictionary of the English Language (4th ed. 2000) (Ex.
`1005).
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`Based on this record and, for purposes of this decision to institute, we do not
`construe these terms explicitly.
`3. “a code sequence generator” (claim 6) and “a transmitting unit”
`(claim 6)
`Petitioner argues the terms “a code sequence generator” and “a
`transmitting unit” in claim 6 are not means-plus-function limitations under
`35 U.S.C. § 112(6) and “should be given [their] plain meaning as understood
`under the BRI standard.” Id. at 8–11. The word “means” is not used in
`claim 6. As a result, there is a presumption that the limitations at issue are
`not means-plus-function limitations that should be construed in accordance
`with Section 112, paragraph 6. Williamson v. Citrix Online, LLC, 792 F.3d
`1339, 1349 (Fed. Cir. 2015) (en banc) (“When a claim term lacks the word
`‘means,’ the presumption can be overcome and §112, para. 6 will apply if
`the challenger demonstrates that the claim fails to ‘recite[] sufficiently
`definite structure’ or else recites ‘function without reciting sufficient
`structure for performing that function.’” (citation omitted)). On the current
`record, there is insufficient persuasive argument or evidence to overcome the
`presumption. Petitioner is not challenging the presumption (Pet. 9, 11) and
`Patent Owner takes no position on this issue other than to state that these
`terms need not be construed (Prelim. Resp. 20). At this stage in this
`proceeding, we do not construe “a code sequence generator” and “a
`transmitting unit” as means-plus-function limitations.7
`
`
`7 In the related District Court litigations, Petitioner challenged the
`presumption and argued these terms were means-plus-function limitations.
`Pet. 8–9, 11. Patent Owner argued these terms were not means-plus-
`function limitations. Id. The District Court ruled that Petitioner failed to
`overcome the presumption and that Section 112, paragraph 6, did not apply
`
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`B. Asserted Anticipation of Claims 1–3, 5–8,
`and 10 by Zhuang327
`
`Petitioner, in its ground styled as “1a,” challenges claims 1–3, 5–8,
`and 10 as anticipated by Zhuang327. Pet. 3, 15–36. Petitioner relies on
`paragraphs 100–165 of the Declaration of Jonathan Wells, Ph.D. (Ex. 1003)
`in support of this challenge. Id. Patent Owner argues Zhuang327 fails to
`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 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
`recited in independent claims 1 and 6. Prelim. Resp. 9–10. Patent Owner
`does not argue that the art cited in the Petition fails to disclose any of the
`other limitations of claims 1–3, 5–8, and 10. Id. For the following reasons,
`we are persuaded, based on the information before us, that there is a
`reasonable likelihood Petitioner will prevail in showing anticipation of
`claims 1–3, 5–8, and 10 by Zhuang327.
`1. Zhuang327 (Ex. 1007)
`Zhuang327 is titled, “Method and Apparatus for Accessing a Wireless
`Communication System.” Ex. 1007, [54]. Zhuang327 was not cited during
`prosecution of the ’916 patent. Ex. 1001, [56].
`Zhuang327 relates to “a method and apparatus for randomly accessing
`a wireless communication system by a subscriber station in order to obtain
`
`to these limitations. Evolved Wireless, LLC, v. Apple, Inc., Civ. No. 15-542-
`SLR, slip op. at 3–5 (D. Del. Nov. 14, 2016).
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`or maintain such parameters as uplink timing, power control, channel
`estimation, and frequency alignment of the subscriber station.” Ex. 1007,
`1:7–11. Zhuang327 states, “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.
`Zhuang327 provides 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 5:14–16. An example of ranging sequences given by
`Zhuang327 are, “Generalized Chirp Like (GCL) sequences.” Id. at 7:57–67.
`Figure 1 of Zhuang327 is reproduced below.
`
`
`Figure 1 of Zhuang327 depicts a communication system 100 with base
`stations 104 and 105 and subscriber stations 101–103. Id. at 2:46–67.
`Figure 8 of Zhuang327 is reproduced below.
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`Figure 8 of Zhuang327 depicts the “steps of methods used in a subscriber
`station such as any of the subscriber stations 101, 102, 103 (FIG. 1).” Id. at
`10:25–27.
`
`In the Preliminary Response, Patent Owner acknowledges Zhuang327
`discloses:
`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 sequence is cyclically
`extended to the desired length,” to arrive at the desired
`sequence. . . . 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.”
`
`* * *
`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.
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`Thus Zhuang327 describes a method of generating access
`
`signals whereby a first code sequence is generated by cyclic
`extension of a base sequence . . .
`Prelim. Resp. 11–13 (citing Zhuang327, 5:29–31, 8:65–9:1, 10:35–40).
`2. Claims 1–3, 5–8, and 10
`Petitioner’s argument that Zhuang327 discloses all elements of claims
`1–3, 5–8, and 10 is detailed and supported by citations to the record. Pet.
`15–36. Patent Owner challenges Petitioner’s contention that Zhuang327
`discloses “performing a circular shift to the code sequence having the second
`length,” as recited in independent claims 1 and 6. Prelim. Resp. 9–10, 29–
`31. As noted above, at this stage in these proceedings, Patent Owner does
`not challenge Petitioner’s contention that Zhuang327 discloses the other
`limitations of claims 1–3, 5–8, and 10. Id.
`Patent Owner argues that the method disclosed in Zhuang327 does not
`disclose the disputed limitation because:
`independent claims 1 and 6 require that code sequences are
`generated by cyclically extending a first code sequence and
`then circularly shifting the resulting sequence. The method
`disclosed in Zhuang327, however, generates a code sequence
`by first cyclically extending the code sequence, then performing
`an Inverse Fast Fourier Transform, and then circularly shifting
`the result.
`Prelim. Resp. 30 (emphasis added). Patent Owner points out that
`Zhuang327 discloses “the time-domain access signal can be conveniently
`generated by taking an Inverse Fast Fourier Transformation (IFFT) of the
`frequency-domain sequence.” Prelim. Resp. 31 (quoting Ex. 1007, 10:14–
`16). And Patent Owner concludes that, because “[t]he resulting time-
`domain access signal is not the access sequence generated by way of the
`cyclic extension,” Zhuang327 fails to disclose the disputed limitation. Id.
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`For purposes of this Decision, we are not persuaded that Patent Owner
`has distinguished the claimed invention from the disclosure in Zhuang327
`on the basis of this argument. First, the claims are not limited to code
`sequences in either the frequency domain or the time domain and do not
`address whether the code sequences are subject to Fourier transformation
`prior to being transmitted. Second, the apparatus disclosed in the ’916
`patent for transmitting the code sequences (id. at 4:16–24) includes “an
`inverse fast Fourier transform (IFFT) module 15 which transform the data
`symbols into a signal in a time domain” before transmission (id. at 4:47–49).
`See Figure 1. The Specification of the ’916 patent, therefore, includes a
`description of the invention that includes Fourier transformation of the code
`sequences. Third, the preambles of claims 1 and 6 both end with
`“comprising,” which is an inclusive or open-ended transitional term and
`does not exclude additional, unrecited, method steps or apparatus elements.
`Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368 (Fed.
`Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the
`claim is open-ended and allows for additional steps.”); Genentech, Inc. v.
`Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term
`of art used in claim language which means that the named elements are
`essential, but other elements may be added and still form a construct within
`the scope of the claim.”). Accordingly, acquiring/generating a code
`sequence having a second length by cyclic extension of a code sequence
`having a first length is disclosed in Zhuang327 regardless of whether or not
`Zhuang327 further discloses inverse Fourier transformation.
`We have reviewed the cited portions of Zhuang327, and on the record
`before us, find that the information presented shows that there is a
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`reasonable likelihood that Petitioner will prevail in showing that claims 1–3,
`5–8, and 10 are anticipated by Zhuang327.
`C. Asserted Obviousness of Claims 6–8 and 10 Over Zhuang327
`Petitioner asserts, in its ground styled as “1b,” that the subject matter
`
`of claims 6–8 and 10 of the ’916 patent would have been rendered obvious
`by Zhuang327. Pet. 3, 36–42. Petitioner provides a detailed and supported
`argument that all the limitations of claims 6–8 and 10 of the ’916 patent are
`taught in Zhuang327. Id. at 36–42. Petitioner’s reason for presenting this
`alternative ground relating to claims 6–8 and 10 is:
`Patent Owner may argue that the code sequence generator must
`be a unitary device and that Zhuang327 does not explicitly
`teach that the subscriber station performs the function of
`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. Rather, Patent Owner may assert the code
`sequence of Zhuang327 is generated by another device,
`transferred to the subscriber station, and then the subscriber
`station performs the circular shift. Though this is not how a
`[person of ordinary skill in the art] would interpret Zhuang327
`(for the reasons set forth previously), even if it were, it would
`have been obvious that the subscriber station described by
`Zhuang327 – which would be a “mobile device” (see Ex. 1007,
`7:35) – would be configured to include a processor, a state
`machine, or a combination thereof that acts as the code
`sequence generator recited in claim 6. See Wells Declaration
`(Ex. 1003), ¶¶ 147-148.
`Id. at 36–37.
`
`Patent Owner, however, relies on its arguments related to the alleged
`failure of Zhuang327 to disclose the disputed limitations in claims 1 and 6
`and does not address any of the additional limitations in claims 6–8 and 10.
`Prelim. Resp. 29–31. Patent Owner does not otherwise dispute any part of
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`Petitioner’s showing relating to the obviousness of claims 6–8 and 10 of the
`’916 patent based on Zhuang327. Id.
`
`For the reasons discussed in the prior ground, on the record before us,
`we determine that the information presented shows that there is a reasonable
`likelihood that Petitioner will prevail in showing that the subject matter of
`claims 6–8 and 10 would have been obvious over Zhuang327.
`D. Asserted Obviousness of Claims 4 and 9
`Over Zhuang327 and Popović
`Petitioner asserts, in its ground styled as “1c,” that the subject matter
`of claims 4 and 9 of the ’916 patent would have been rendered obvious by
`the combined disclosures of Zhuang327 and Popović. Pet. 3, 42–45. We
`discussed Zhuang327 above.
`1. Popović (Ex. 1009)
`Popović is titled, “Generalized Chirp-Like [GCL] Polyphase
`Sequences with Optimum Correlation Properties.” Ex. 1009, 1406. Popović
`is an article from IEEE Transactions on Information Theory dated July,
`1992. Id. Popović was not cited during prosecution of the ’916 patent. Ex.
`1001, [56].
`Popović relates to “[a] new general class of polyphase sequences with
`ideal periodic autocorrelation function.” Ex. 1009, 1406 (Abstract).
`Popović states, “[t]he new class of sequences is based on the application of
`Zadoff-Chu polyphase sequences.” Id. Popović also states, “it was shown
`that all the cyclic time shifted versions of the Zadoff-Chu sequences have
`the same absolute value of the aperiodic autocorrelation function.” Id. at
`1409.
`
`Thus, Popović recommends the use of Zadoff-Chu sequences and
`specifically discloses cyclic or circular shifted Zadoff-Chu sequences.
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`2. Claims 4 and 9
`Claims 4 and 9 of the ’916 patent recite, “wherein the code sequence
`having the first length is a Zadoff-Chu sequence.” Ex. 1001, 18:1–3, 38–40.
`Petitioner provides a detailed and supported argument that Zhuang327 and
`Popović teach the limitation in claims 4 and 9. Pet. 42–45. Petitioner also
`articulates reasoning with rational underpinning for combining the relevant
`teachings of the references (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`418 (2007)). Id.
`Patent Owner argues Petitioner has failed to show how combining
`Popović with Zhuang327 renders obvious, “wherein the code sequence
`having the first length is a Zadoff-Chu sequence,” as recited in claims 4 and
`9. Prelim. Resp. 36–39. Specifically, Patent Owner argues, “[t]he Petition,
`however, fails to make a prima facie case of obviousness because the
`Petition does not establish a motivation to combine Popović with the base
`reference [Zhuang327].” Id. at 36. With regard to motivation to combine
`Popović’s teachings related to the use of Zadoff-Chu sequences (Ex. 1009,
`1406) with Zhuang327’s teachings related to the use of GCL sequences (Ex.
`1007, 7:28–29, 7:57–66, 8:1–10, 8:13–41, 8:66–9:1), the Petition states:
`A [person of ordinary skill in the art] would have been
`motivated to choose the ZC sequences over the GCL sequences
`in practical systems because the ZC sequences provide the same
`optimal auto- and cross-correlation properties (i.e.,
`the
`properties of interest in Zhuang327) as GCL sequences while
`requiring less computations in generation by not performing the
`multiplications with the sequence {bk} of complex numbers
`required to generate the GCL sequences. Such computational
`advantages can, for example, decrease the loads on the
`processing units that generate the sequences, thereby resulting
`in power savings, which are particularly important for mobile
`devices for uplink communications.
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`Pet. 44–45 (citing Ex. 1003 (Wells Declaration) ¶¶ 172–173). Petitioner has
`shown an adequate reason to combine the teachings of Popović and
`Zhuang327.
`
`On the record before us, Petitioner has established a reasonable
`likelihood that the subject matter of claims 4 and 9 would have been obvious
`over Zhuang327 and Popović.
`E. Asserted Obviousness of Claims 1–3, 5–8, and 10
`Over Zhuang327 and Hou
`Petitioner asserts, in its ground styled as “2a,” that the subject matter
`of claims 1–3, 5–8, and 10 of the ’916 patent would have been rendered
`obvious by the combined disclosures of Zhuang327 and Hou. Pet. 3, 45–67.
`Zhuang327 was discussed above.
`1. Hou (Ex. 1011)
`Hou is titled, “Transmission and Reception of Reference Preamble
`Signals in OFDMA or OFDM Communication Systems.” Ex. 1011, [54].
`Hou relates to “[t]echniques for generating preamble sequences for OFDM
`and OFDMA communication systems based on CAZAC sequences with
`desired properties of constant amplitudes (CA) and zero autocorrelation
`(ZAC).” Id. at [57] (Abstract). Hou states, “[w]ell-known examples of
`CAZAC sequences include Chu and Frank-Zadoff sequences.” Id. at 3:39–
`40. Hou explains that if a particular sequence “is a CAZAC sequence in the
`frequency domain, then its corresponding time-domain sequence is also a
`CAZAC sequence” and “the desired properties of the constant-amplitude
`and zero-auto-correlation of CAZAC sequence are preserved in both time
`and frequency domain.” Id. at 5:12–14, 65–67. Figures 2A and 2B of Hou
`are reproduced below.
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`Figure 2A (top) of Hou depicts “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,” and Figure 2B of Hou depicts
`“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.” Id. at
`3:11–17.
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`2. Claims 1–3, 5–8, and 10
`Petitioner provides a detailed and supported argument that Zhuang327
`and Hou teach all the limitations of claims 1–3, 5–8, and 10 and articulates
`reasoning with rational underpinning for combining the teachings of these
`references. Pet. 45–67. Patent Owner relies on its argument related to the
`alleged failure of Zhuang327 to disclose the disputed limitations in claims 1
`and 6, which we addressed above. Prelim. Resp. 31–36. And, although
`recognizing that Hou contains teachings relating to the use of circular shift
`(Prelim. Resp. 14–15), Patent Owner limits its argument regarding Hou to
`contending Petitioner does not articulate a reason to combine Zhuang327
`and Hou to disclose the claimed circular shift. Prelim. Resp. 15, 31. For the
`reasons stated above with regard to Zhuang327 and for the additional
`reasons provided in the Petition with regard to Hou (Pet. 45–67), Petitioner
`has established a reasonable likelihood of showing all the limitations of
`claims 1–3, 5–8, and 10 are taught or suggested by Zhuang327 and Hou.
`With regard to combining the teachings of Zhuang327 and Hou
`related to circular shift, Petitioner argues that Zhuang327 and Hou (and the
`’916 patent) are in the same field of endeavor as both prior art references
`relate to generation and transmission of CAZAC sequences for use in the
`same types of wireless c