IPR 2016-01209
`U.S. Patent No. 7,746,916
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY, MICROSOFT
`MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`
`Petitioner,
`v.
`
`EVOLVED WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-012091
`Patent 7,746,916 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,746,916
`
`
`1 IPR2016-01280 has been consolidated with this proceeding.
`
`
`
`U.S. Patent No. 7,746,916
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY, MICROSOFT
`MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`
`Petitioner,
`v.
`
`EVOLVED WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-012091
`Patent 7,746,916 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,746,916
`
`
`1 IPR2016-01280 has been consolidated with this proceeding.
`
`
`
`
`IPR 2016-01209
`U.S. Patent No. 7,746,916
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`FACTUAL BACKGROUND.......................................................................... 3
` United States Patent No. 7,746,916 ...................................................... 3
`Challenged Claims ................................................................................ 7
`Overview of Inter Partes Review ......................................................... 8
`1.
`Zhuang175 (Ex. 1012) ................................................................ 9
`2.
`Hou (Ex. 1011) ..........................................................................11
`3.
`Popović (Ex. 1009) ...................................................................12
`4.
`Fukuta (Ex. 1013) .....................................................................12
`III. CLAIM CONSTRUCTION ..........................................................................14
`“a code sequence generator” [Claim 6-10] .........................................15
`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” [Claim 6-
`10] ........................................................................................................17
`IV. ARGUMENT .................................................................................................22
`Zhuang175 does not disclose the claimed “code sequence
`generator.” [Grounds 1-4; claims 6-10] ..............................................23
`1.
`Zhuang175 does not disclose a unitary device that
`includes a “code sequence generator.” .....................................24
`Even under Petitioners’ construction of “code sequence
`generator,” Zhuang175 does not disclose a generator that
`both cyclically extends and circularly shifts code
`sequences. .................................................................................27
`
`
`
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`
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`
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`2.
`
`i
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`
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`The combination of Fukuta and Zhuang175 does not disclose
`the invention as a whole because Fukuta does not disclose the
`claimed “code sequence generator.” [Grounds 5 and 6; claims
`6-10] ....................................................................................................30
`The Petition does not demonstrate by a preponderance of the
`evidence that a person of ordinary skill in the art would be
`motivated to modify Fukuta in combination with Zhuang175.
`[Grounds 5 and 6; claims 6-10] ...........................................................35
`CONCLUSION ..............................................................................................37
`
`
`
`
`
`V.
`
`
`ii
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`TABLE OF AUTHORITIES
`
`
`
` Page(s)
`
`Cases
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 22
`Cutsforth, Inc. v. MotivePower, Inc.,
`643 F. App’x 1008 (Fed. Cir. 2016) ................................................................... 14
`Dippin’ Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007) .......................................................................... 34
`Dish Network LLC v. TQ Beta, LLC,
`IPR2015-01791, Paper No. 30 (PTAB Jan. 30, 2017) ....................................... 34
`Ex parte Levy,
`17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .......................................... 26, 30
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 21
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 22
`In re Magnum Oil Tools Int’l,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 33, 34
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 26
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 14
`In re Varma v. IBM Corp. (In re Varma),
`816 F.3d 1352 (Fed. Cir. 2016) .......................................................................... 34
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 22
`
`iii
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 14
`Nautilus Hyosung, Inc. v. Diebold, Inc.,
`IPR2016-00580, Paper No. 15 (PTAB Jan. 31, 2017) ....................................... 34
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 14
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 22
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 22
`Statutes
`35 U.S.C. § 316(a)(8) ................................................................................................. 1
`35 U.S.C. § 316(e) ..................................................................................................... 2
`Rules
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`37 C.F.R. § 42.220 ..................................................................................................... 1
`Other Authorities
`MPEP § 2112 IV ...................................................................................................... 26
`
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`iv
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`Exhibit List
`
`
`
`Exhibit
`No.
`2002
`2003
`2004
`2005
`
`2006
`
`2007
`
`2008
`2009
`
`2010
`
`2011
`
`
`
`Reference
`Excerpt from McGraw-Hill Dictionary of Scientific and Technical
`Terms (6th ed. 2003)
`Excerpt from Oxford Dictionary of Computing (4th ed. 1996)
`Excerpt from The Computer Glossary (8th ed. 1998)
`Excerpt from Academic Press Dictionary of Science and Technology
`(1992)
`Transcript of Deposition of Petitioners’ Expert, Dr. Jonathan Wells,
`dated March 21, 2017
`3GPP TS 23.002 V3.3.0 (2000-03) “3rd Generation Partnership
`Project; Technical Specification Group Services and Systems Aspects;
`Network architecture (Release 1999)”
`Declaration of Rajin Singh Olson
`Screenshot of 3GPP FAQs, 3GPP, http://www.3gpp.org/about-
`3gpp/3gpp-faqs#MI1 (last visited March 27, 2017)
`Screenshot of 3GPP specification #: 23.002 page, 3GPP,
`https://portal.3gpp.org/desktopmodules/Specifications/SpecificationD
`etails.aspx?specificationId=728 (last visited March 27, 2017)
`Screenshot ofwww.3gpp.org - /ftp/Specs/March_00/23_series/,
`Internet Archive Wayback Machine,
`https://web.archive.org/web/20001007220606/http://www.3gpp.org/ft
`p/Specs/March_00/23_series/ (last visited March 27, 2017)
`
`v
`
`
`
`INTRODUCTION
`Patent Owner Evolved Wireless, LLC (“Evolved Wireless”) provides this
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`I.
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`response under 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.220. The Patent Trial and
`
`Appeal Board has instituted this Inter Partes Review to consider whether claims 1-
`
`10 of U.S. Patent No. 7,746,916 (Ex. 1001, the “’916” Patent) are anticipated
`
`and/or obvious based on six grounds advanced by Apple, Inc., Microsoft
`
`Corporation, Microsoft Mobile Oy, Microsoft Mobile Inc., ZTE (USA) Inc.,
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., HTC
`
`Corporation, and HTC America, Inc. (“Petitioners”).
`
`The ’916 Patent relates to code sequence generation and transmission in a
`
`wireless communication system that is part of the Long Term Evolution (“LTE”)
`
`standard, sometimes referred to as 4G. The ’916 Patent describes an improved
`
`method and apparatus for generating code sequences while maximizing the number
`
`of available unique code sequences and at the same time maintaining good
`
`correlation properties for the generated sequences. In the LTE standard, these
`
`generated sequences are used as demodulation reference signals and sounding
`
`reference signals for channel estimation over the physical uplink shared channel
`
`(“PUSCH”).
`
`1
`
`
`
`The Patent Trial and Appeal Board (the “Board”) instituted this proceeding
`
`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`in the Institution of Inter Partes Review decision (Paper 7, “Dec.” or “Decision”)
`
`on December 21, 2016 on the following grounds:
`
`Ground Claims
`
`Basis
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`
`
`1-3, 5-8, and 10
`
`§ 102: Zhuang175
`
`4 and 9
`
`§ 103: Zhuang175 and Popović
`
`1-3, 5-8, and 10
`
`§ 103: Zhuang175 and Hou
`
`4 and 9
`
`§ 103: Zhuang175, Hou and Popović
`
`6-8 and 10
`
`§ 103: Zhuang175 and Fukuta
`
`9
`
`§ 103: Zhuang175, Fukuta and Popović
`
`Patent Owner is no longer contesting the validity of claims 1-5, and
`
`therefore addresses these six grounds only with respect to claims 6-10 in this
`
`Patent Owner Response.
`
`Petitioners bear “the burden of proving a proposition of unpatentability by a
`
`preponderance of the evidence.” 35 U.S.C. § 316(e). For the reasons set forth
`
`herein, Petitioners have failed to meet their burden on the instituted grounds with
`
`respect to claims 6-10 which rely upon a primary reference, U.S. Patent No.
`
`7,426,175 to Zhuang et al. (“Zhuang175”) that was previously considered by the
`
`Examiner and overcome during prosecution. Zhuang175 does not anticipate or
`
`2
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`render obvious claims 6-10 of the ’916 Patent. Claims 6-10 recite a “code sequence
`
`generator.” Petitioners and their expert fail to explain how Zhuang175 discloses,
`
`either alone or in combination with the remaining cited art, the claimed “code
`
`sequence generator.” Petitioners therefore necessarily fail to establish by a
`
`preponderance of the evidence that Zhuang175 alone or in combination with the
`
`remaining art anticipates or renders obvious claims 6-10 of the ’916 Patent.
`
`II.
`
`FACTUAL BACKGROUND
` United States Patent No. 7,746,916
`The ’916 Patent issued from Application No. 11/563,909 (the “’909
`
`Application”), originally filed on November 28, 2006 by LG Electronics Inc. (“LG
`
`Electronics”). The ’909 Application claims the benefit of Korean Application No.
`
`P2005-114306, filed on Nov. 28, 2005, Korean Application No. P2006-62467,
`
`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
`
`3
`
`
`
`Evolution, or LTE, standard. The inventions disclosed in the ’916 Patent
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`specification relate to LG Electronics’ contributions to the development of that
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`standard, and the specific inventions claimed by the ’916 Patent have been adopted
`
`as part of the 3GPP LTE standard. Members of 3GPP recognized and agreed that
`
`the claimed inventions in the ’916 Patent, by being adopted into the 3GPP LTE
`
`standard, were innovative solutions to the problems faced during the development
`
`of the standard.
`
`The ’916 Patent relates to code sequence generation and transmission in
`
`wireless communication systems, such as LTE. (See, e.g., Ex. 1001 at 1:15-18,
`
`6:43-48.) As the patent specification explains, “a pilot signal or preamble of a
`
`wireless communication system is referred to as a reference signal used for initial
`
`synchronization, cell search, and channel estimation. Further, the preamble is
`
`comprised of a code sequence, and the code sequence is further comprised of
`
`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
`4
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`
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`generating and transmitting code sequence[s] in a wireless communication system
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`that substantially obviates one or more problems due to limitations and
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`disadvantages of the related art.” (Id. at 1:51-55.) These limitations include
`
`maximizing the number of unique code sequences available in a wireless
`
`communication system while maintaining good correlation properties for the
`
`generated sequences. (See, e.g., Ex. 1001 at 1:43-47, 4:63-65, 8:13-23, 10:49-60,
`
`11:1-9, 11:22-33.)
`
`To address these problems in the prior art, the ’916 Patent’s claimed
`
`apparatus generates a code sequence of a desired length L, by cyclically extending
`
`and circularly shifting a code sequence of length X, where the length of X is the
`
`largest prime number smaller than L. (Ex. 1001 at 11:38-42, 12:37-49, 13:53-64.)
`
`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
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`number length X, the number of available code sequences of length L with desired
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`correlation properties is maximized. (See Ex. 1001 at 8:13-22, 10:49-60.)
`
`Cyclically extending the code sequence of length X preserves the correlation
`
`properties of the original sequence. (Ex. 1001 at 11:4-9.) Performing a circular
`
`shift “increase[s] an amount of control information transmitted to the
`
`communication system.” (Ex. 1001 at 11:22-25.)
`
`Figure 16 of the ’916 Patent depicts “a structural diagram for transmitting
`
`the code sequence . . . compris[ing] a sequence selection unit . . . and a transmitting
`
`unit[.]” (Ex. 1001 at 15:6-15.)
`
`
`
`(Ex. 1001 at FIG. 16, 15:6-30.)
`
`The generated 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
`
`6
`
`
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`code sequences. This provides tangible benefits to the wireless network, such as
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`maintaining good correlation properties for the generated sequences (thereby
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`minimizing interference between mobile units). (See id. at 1:43-47, 4:63-65, 7:35-
`
`44, 8:13-23; 8:44-51, 10:49-60, 11:1-9, 11:22-33.)
`
` Challenged Claims
`Claims 6-10 claim an apparatus for generating the code sequences according
`
`to the ’916 Patent teachings. Claim 6, the independent apparatus claim, recites:
`
`An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
`
`a code sequence generator for generating a code sequence having a
`second length by cyclic extension of a code sequence having a first
`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
`
`7
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`wherein the circular shift is performed to the code sequence having
`the second length such that either a rear portion of the code
`sequence having the second length moves to a start of the code
`sequence having the second length, or a front portion of the code
`sequence having the second length moves to an end of the code
`sequence having the second length.
`
`(Ex. 1001 at 18:7-28.)
`
`Dependent claims 7 through 10 add additional limitations that provide
`
`further improvements over the prior art. For example, dependent claim 9 requires
`
`the sequence of length X to be a Zadoff-Chu sequence. (Ex. 1001 at 18:38-40.)
`
`Claims 6-10 thus all require “a code sequence generator for generating a code
`
`sequence having a second length by cyclic extension of a code sequence having a
`
`first length, and performing a circular shift to the code sequence having the second
`
`length.” (Ex. 1001 at 18:9-12.)
`
` Overview of Inter Partes Review
`The instituted IPR grounds rely on four references: U.S. Patent No.
`
`7,426,175 to Zhuang et al. (“Zhuang175”), U.S. Patent No. 8,116,195 to Hou et al.
`
`(“Hou”), U.S. Patent Published Application No. 2007/0270273 to Fukuta et al.
`
`(“Fukuta”), and an article by Branislav M. Popović, titled Generalized Chirp-Like
`
`Polyphase Sequences with Optimum Correlation Properties, Vol. 38 No. 4 IEEE
`
`Transactions on Information Theory (1992) (“Popović”).
`
`8
`
`
`
`None of these references, either alone or in combination, disclose “a code
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`sequence generator for generating a code sequence having a second length by
`
`cyclic extension of a code sequence having a first length, and performing a circular
`
`shift to the code sequence having the second length.” (Ex. 1001 at 18:9-12.)
`
`1. Zhuang175 (Ex. 1012)
`Petitioners rely on Zhuang175 as an anticipatory reference for Ground 1 and
`
`a primary reference for all other Grounds. Pet. at 3. Zhuang175 states that it relates
`
`to a method and apparatus “for pilot signal transmission in a communication
`
`system.” (Ex. 1012 at 1:6-8.)
`
`The communication system of Zhuang175 is comprised of base units and
`
`mobile units (or remote units). (See Ex. 1012 at 2:66-67, Fig. 1.) Zhuang175 refers
`
`to base units and remote units generally as “communication unit[s].” (Ex. 1012 at
`
`3:27-28.) Whereas Figure 1 of Zhuang175 shows two base units and one remote
`
`unit, the “typical communication systems comprise many base units in
`
`simultaneous communication with many remote units.” (Ex. 1012 at 3:22.)
`
`9
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`(Ex. 1012 at Fig. 1.)
`
`Petitioners rely on Zhuang175’s system of assigning pilot sequences to base
`
`units as disclosing the ’916 Patent apparatus claims. See generally Pet. at 27-35.
`
`The assignment of pilot sequences in Zhuang175 is generally described in three
`
`steps: (1) determining the number of pilot sequences needed; (2) computing the
`
`pilot sequences; and (3) assigning the pilot sequences to base units.
`
`
`
`10
`
`
`
`(Ex. 1012 at Fig. 3, 8:52-9:18.) Zhuang175 explains that pilot sequences are
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`computed by first determining a desired pilot length Np, and then selecting a
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`starting sequence of prime number length NG and performing modifications,
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`including either truncation or extension. (Ex. 1012 at 3:64-4:13.) Once these
`
`modifications are performed, the pilot sequences of length Np are assigned to the
`
`base units. (Ex. 1012 at 4:47-51.) Zhuang175 explains that once assigned to the
`
`base units, “the actual signals may be the results of different functions of the same
`
`assigned sequence. Examples of the functions applied are circular shifting of the
`
`sequence, rotating the phase of the sequence elements, etc.” (Ex. 1012 at 6:25-32.)
`
`Zhuang175 is silent as to when and how the pilot sequences are generated before
`
`assignment to the base units.
`
`2. Hou (Ex. 1011)
`Petitioners rely on Hou as a secondary reference for Grounds 3 and 4. Pet. at
`
`3. Petitioners specifically rely on Hou to disclose the claimed “circular shift”
`
`wherein “a rear portion of the code sequence having the second length moves to a
`
`start of the code sequence having the second length.” See Pet. at 48-51. Other than
`
`this disclosure, Petitioners do not rely on any structure from Hou to disclose the
`
`claimed “code sequence generator.” See generally id.
`
`
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`11
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`
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`3. Popović (Ex. 1009)
`Petitioners rely on Popović as a secondary reference for Grounds 4 and 6.
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`Pet. at 3. Petitioners rely specifically on Popović to disclose the limitation of
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`dependent claim 9, “wherein the code sequence having the first length is a Zadoff-
`
`Chu (ZC) sequence.” (Ex. 1001 at 18:38-40.) Petitioners do not rely on Popović to
`
`describe any structure for generation of code sequences used in a wireless
`
`communication system.
`
`4. Fukuta (Ex. 1013)
`Petitioners rely on Fukuta as a secondary reference for Grounds 5 and 6. Pet.
`
`at 3. Fukuta “relates generally to fast cell search, and in particular to a method and
`
`apparatus for fast identification of a service cell or sector during initial or periodic
`
`access, or handover in a mobile communication system.” (Ex. 1013 at ¶ 0001.)
`
`Petitioners specifically rely on Fukuta to disclose “a code sequence generator for
`
`generating a code sequence having a second length by cyclic extension of a code
`
`sequence having a first length, and performing a circular shift to the code sequence
`
`having the second length” in combination with Zhuang175. See Pet. at 52-64. In
`
`particular, Figures 4 and 8 of transmitter 107 from Fukuta are cited:
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`12
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`(Ex. 1013 at Figure 4 (cited by Pet. at 56).)
`
`
`
`(Ex. 1013 at Figure 8 (cited by Pet. at 57).)
`
`
`
`In both transmitters 107 described by Fukuta, a cell-specific sequence is
`
`generated in the frequency domain, but before a cyclic shift is applied, an Inverse
`
`Fast-Fourier Transform (IFFT) is performed transforming the generated sequence
`
`into a time domain signal. (Ex. 1013 at ¶¶ 0054, 0066, 0073, 0076, Figures 4, 8,
`
`10, and 13.) Fukuta thus does not expressly or inherently disclose the claimed code
`
`sequence generator of the ’916 Patent, wherein the circular shift is performed to
`
`13
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`
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`“the code sequence having the second length.” Instead, Fukuta discloses a
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`transmitter where a circular shift is performed to the IFFT of a cell-specific
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`generated sequence.
`
`III. CLAIM CONSTRUCTION
`Claims must be given their broadest reasonable construction in light of the
`
`specification. See 37 C.F.R. § 42.100(b). “Above all, the broadest reasonable
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`interpretation must be reasonable in light of the claims and specification.” PPC
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`Broadband, Inc. v. Corning Optical Communs. RF, LLC, 815 F.3d 747, 755 (Fed.
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`Cir. 2016) (emphasis in original); see also Cutsforth, Inc. v. MotivePower, Inc.,
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`643 F. App’x 1008, 1010 (Fed. Cir. 2016). “A construction that is ‘unreasonably
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`broad’ and which does not ‘reasonably reflect the plain language and disclosure’
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`will not pass muster.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
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`(Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
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`2010)).
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`In this proceeding, Petitioners have argued broadening interpretations for
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`two limitations, “a code sequence generator” and “generating a code sequence
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`having a second length by a cyclic extension of a code sequence having a first
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`length.” Neither of Petitioners’ proposed interpretations are supported by the
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`intrinsic or extrinsic evidence.
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`14
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`
`
`“a code sequence generator” [Claim 6-10]
`
`The phrase “a code sequence generator” is found in independent claim 6 of
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`U.S. Patent No. 7,746,916
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`the ’916 Patent and accordingly is in all of the apparatus claims. The Petitioners
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`did not propose a construction for the phrase, but instead argued that “the ’916
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`Patent does not limit the recited code sequence generator to a unitary device.” Pet.
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`at 8-10. In its Institution Decision, the Board declined to construe “a code sequence
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`generator.” Dec. at 10-11. The Board did not address Petitioners’ argument that
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`would allow a code sequence generator to encompass multiple devices within a
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`system. Id. The plain meaning of “generator” and the intrinsic record counsels
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`against the broad interpretation of “generator” advanced by Petitioners.
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`Relevant dictionary definitions suggest that a POSITA would understand
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`that the phrase “code sequence generator” refers to a discrete circuit or module
`
`within a single device. For example, the McGraw-Hill Dictionary of Scientific and
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`Technical Terms includes the following relevant definition of generator: “A circuit
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`that generates a desired repetitive or nonrepetitive waveform, such as a pulse
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`generator.” (Ex. 2002 (McGraw Hill (6th ed. 2003)) at 3.) The Oxford Dictionary
`
`of Computing defines a sequence generator as “[a] digital logic circuit whose
`
`purpose is to produce a prescribed sequence of outputs.” (Ex. 2003 (Oxford
`
`Dictionary of Computing 441 (4th ed. 1996)) at 4; see also Ex. 2004 (The
`
`Computer Glossary (8th ed. 1998)) at 3 (generator . . . (2) a device that creates
`
`15
`
`
`
`electrical power or synchronization signals).) Each one of these definitions
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`connotes a code module or digital circuit (or combination thereof) within a single
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`device. Thus a POSITA would not interpret the phrase “code sequence generator”
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`to broadly encompass hardware or software logic found across multiple devices.
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`The portions of the ’916 specification cited in the Petition do not support
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`Petitioners’ argument to broaden “generator” beyond its well-understood meaning.
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`Figure 16 and accompanying description are cited by Petitioners as structure for
`
`the claimed code sequence generator. Pet. at 9 (citing “sequence selection unit” of
`
`FIG. 16 and col. 15 ll. 12-35). Assuming the “sequence selection unit” refers to the
`
`claimed code sequence generator, the term unit would again refer to software or
`
`hardware logic within a single device. (See Ex. 2002 (McGraw-Hill Dictionary of
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`Scientific and Technical Terms (6th ed. 2003)) at 4 (“unit [ENG] An assembly or
`
`device capable of independent operation, such as a radio receiver, cathode-ray
`
`oscilloscope, or computer subassembly that performs some inclusive operation or
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`function.”); Ex. 2005 (Academic Press Dictionary of Science and Technology
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`(1992)) at 3 (“any device that can operate independently, such as a radio receiver
`
`or an oscilloscope).)
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`Petitioners’ contention that the recitation of an “apparatus” in the preamble
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`of claim 6 does not limit the claim to a single device is inapposite. See Pet. at 10
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`n.1. Even if one were to read an “apparatus” as co-extensive with the term
`16
`
`
`
`“system,” as Petitioners contend that the case law suggests, that would only mean
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`that the two elements recited in claim 6—“a code sequence generator” and a
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`“transmitting unit”—need not be co-located in a single device. (See Ex. 1001 at
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`18:7-14.) The interpretation of the claims to cover a “system”, however, would not
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`give reason to depart from the well-understood meaning of “generator”—as
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`confirmed by the specification—of being found in a single device.
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`Patent Owner respectfully requests that the Board find that the term “a code
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`sequence generator” be given its plain and ordinary meaning without the
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`Petitioners’ broadening interpretation.
`
`
`
`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” [Claim 6-10]
`Petitioners proposed that the phrase “generating a code sequence having a
`
`second length by a cyclic extension of a code sequence having a first length” be
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`construed as “generating a code sequence having a second length through
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`execution of one or more operations that include performing a cyclic extension of
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`a code sequence having a first length.” Pet. at 5 (emphasis added to show
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`Petitioners’ added language). Petitioners’ apparent intention was to read the claims
`
`on prior art code sequences generated by additional, intermediate operations—such
`
`as a Fourier transform—between a cyclic extension and circular shift operation.
`
`See Pet. at 19-23, 30-31. The Board declined to adopt Petitioners’ construction,
`
`17
`
`
`
`finding that the Petitioners “fail[ed] to cite to the claims, the specification, or the
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`file history, and d[id] not argue the claims, specification, or file history support the
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`proposed interpretation.” Dec. at 8-9 (citing Pet. at 5-6).
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`In addition to the reasons articulated in the Institution Decision, the Board
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`should again decline to adopt Petitioners’ broadening claim construction because it
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`is unreasonably broad in view of the plain language of the claims and specification,
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`and not supported by Petitioners’ extrinsic evidence.
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`The phrase for construction appears in independent apparatus claim 6:
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`An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
`
`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 . . . .
`
`(Ex. 1001 at 18:7-28 (emphasis added).)
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`The claimed generator thus expressly recites performing a circular shift to
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`the cyclically extended sequence. (Ex. 1001 at 18:7-28.) The Petitioners’
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`construction would unreasonably allow any number and variety of mathematical
`
`operations to occur.
`
`18
`
`
`
`The plain reading of the claim language is consistent with the specification
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`IPR 2016-01209
`U.S. Patent No. 7,746,916
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`of the ’916 Patent. No embodiment in the ’916 Patent specification recites an IFFT
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`between a cyclic extension and circular shift. Petitioners’ own expert, Dr. Wells,
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`testified that “[t]he embodiments that are disclosed within the 916 patent don’t
`
`have that IFFT . . . .” (Ex. 2006 at 11:17-12:13.) Instead, every embodiment in the
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`specification reciting a circular shift explains that it is performed to the cyclically
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`extended sequence.
`
`Figure 13 of the ’916 Patent, cited by both parties as exemplary of the
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`claimed code sequence generation depicts applying a circular shift to cyclically
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`extended (or padded) code sequences:
`
`With the addition of the padding portion, the length of the CAZAC
`sequence equals the desired length L. Thereafter, the result of the
`generated code sequence having length L 1303 is applied circular
`shift thereto, resulting in the CAZAC sequence 1304.
`
`(Ex. 1001 at 12:37-49 (emphasis added).)
`
`19
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`(Ex. 1001 at Fig. 13.)
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`Likewise, other unclaimed embodiments from the ’916 Patent describe
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`applying a circular shift to an extended or truncated sequence. (See, e.g., Ex. 1001
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`at 11:38-42 (“First, select a smallest prime number greater than L or a largest
`
`prime number less than L, which is referred to as X. Second, remove or add a
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`sequen
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