IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of:
`
`Seung Hee Han, et al.
`
`
`
`U.S. Patent No.:
`
`7,746,916 Attorney Docket No.: 00035-0006IP2
`
`Issue Date:
`
`June 29, 2010
`
`Appl. Serial No.: 11/563,909
`
`Filing Date:
`
`November 28, 2006
`
`
`
`
`
`
`
`Title:
`
`
`
`Method and Apparatus for Generating and Transmitting
`Code Sequence in a Wireless Communication System
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,746,916 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Lead And Back-Up Counsel And Service Information ............................ 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 2
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 5
`IV. SUMMARY OF THE ‘916 PATENT ........................................................... 12
`A. Brief Description ..................................................................................... 12
`B. Summary of the Prosecution History ...................................................... 13
`C. The Effective Priority Date of the Claims of the ‘916 Patent ................ 14
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`‘916 PATENT IS UNPATENTABLE .......................................................... 15
`A. Ground 1: Zhuang175 anticipates claims 1-3, 5-8, and 10 ..................... 15
`1.
`Zhuang175 anticipates claim 1 ...................................................... 19
`2.
`Zhuang175 anticipates claim 2 ...................................................... 25
`3.
`Zhuang175 anticipates claim 3 ...................................................... 26
`4.
`Zhuang175 anticipates claim 5 ...................................................... 27
`5.
`Zhuang175 anticipates claim 6 ...................................................... 27
`6.
`Zhuang175 anticipates claim 7 ...................................................... 35
`7.
`Zhuang175 anticipates claim 8 ...................................................... 35
`8.
`Zhuang175 anticipates claim 10 .................................................... 35
`B. Ground 2: Zhuang175 in view of Popovic renders claims 4 and 9
`obvious .................................................................................................... 35
`C. Ground 3: Zhuang175 in view of Hou renders claims 1-3, 5-8, and 10
`obvious .................................................................................................... 39
`VI. REDUNDANCY ........................................................................................... 65
`VII. CONCLUSION .............................................................................................. 68
`
`
`
`i
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`
`EXHIBITS
`
`U.S. Patent No. 7,746,916 to Han, et al. (“the ‘916 patent”)
`Excerpts from the Prosecution History of the ‘916 Patent (“the
`Prosecution History”)
`Declaration of Jonathan Wells
`Curriculum Vitae of Jonathan Wells
`Definitions of terms “acquire,” “generate” and “by” in Ameri-
`can Heritage® Dictionary of the English Language, Fourth Edi-
`tion, Copyright © 2000 by Houghton Mifflin Harcourt Publish-
`ing Company
`U.S. Patent No. 8,340,232 to Ding et al. (“Ding”)
`U.S. Patent No. 7,599,327 to Zhuang et al. (“Zhuang327”)
`[Reserved]
`Popovic, “Generalized chirp-like polyphase sequences with op-
`timum correlation properties”, IEEE Trans. On Information
`Theory, vol. 38, pp. 1406-1409, July 1992 (“Popovic”)
`Declaration of Mr. Gerard Grenier re Popovic
`U.S. Patent No. 8,116,195 to Hou et al. (“Hou”)
`U.S. Patent No. 7,426,175 to Zhuang et al. (“Zhuang175”)
`U.S. Patent Publication No. 2007/0270273 to Fukuta et al.
`(“Fukuta”)
`Definitions of terms “circular shift” and “cyclic shift” in
`McGraw-Hill Dictionary of Scientific and Technical Terms, 6th
`Edition, Copyright © 2003
`Certified English Translation of Korean Application No. 10-
`2005-0114306 filed November 28, 2005 (Publication No. 10-
`2007-0055845)
`Certified English Translation of Korean application No. 10-
`2006-0062467 filed July 4, 2006 (Publication No. 10-2008-
`0004025)
`
`ii
`
`APPLE-1001
`APPLE-1002
`
`APPLE-1003
`APPLE-1004
`APPLE-1005
`
`APPLE-1006
`APPLE-1007
`APPLE-1008
`APPLE-1009
`
`APPLE-1010
`APPLE-1011
`APPLE-1012
`APPLE-1013
`
`APPLE-1014
`
`APPLE-1015
`
`APPLE-1016
`
`
`
`

`
`
`APPLE-1017
`
`
`APPLE-1018
`
`
`APPLE-1019
`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`
`N. Abramson, "THE ALOHA SYSTEM—Another alternative for
`computer communications," Proceedings of the Fall Joint Com-
`puter Conference, pp. 281-5, Nov. 1970
`
`3GPP TS 25.213 V6.4.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Spreading and modulation (FDD) (Release 6)”
`
`3GPP TS 25.211 V6.6.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical channels and mapping of transport channels onto phys-
`ical channels (FDD) (Release 6)”
`
`
`APPLE-1020 D.C. Chu, “Polyphase codes with good periodic correlation
`properties,” IEEE Trans. Information Theory, vol. 18, pp. 531–
`532, July 1972
`
`
`APPLE-1021
`
`
`APPLE-1022
`
`
`APPLE-1023
`
`
`APPLE-1024
`
`
`
`3GPP TS 25.201 V3.0.0 (1999-10), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical layer - General description (3G TS 25.201 version
`3.0.0)”
`
`3GPP TS 36.211 V8.0.0 (2007-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-UTRA); Physi-
`cal channels and modulation (Release 8)”
`
`“Defendants’ Preliminary Identification of Terms Needing Con-
`struction and Proposed Constructions,” from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-
`SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D. Del.
`
`“Evolved Wireless’s Identification of Claim Terms and Proposed
`Constructions” from Case Nos. 15-542-SLR-SRF, 15-543-SLR-
`SRF, 15-544-SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF,
`15-547-SLR-SRF filed in N.D. Del.
`
`iii
`
`

`
`APPLE-1025
`
`APPLE-1026
`
`APPLE-1027
`
`APPLE-1028
`
`
`APPLE-1029
`
`APPLE-1030
`
`APPLE-1031
`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`IEEE 802.16-2004 Standard, entitled “IEEE Standard for Local
`and Metropolitan Area Networks Part 16: Air Interface for
`Fixed Broadband Wireless Access Systems” (“IEEE802.16-
`2004”)
`Declaration of Mr. David Ringle for IEEE802.16-2004
`
`U.S. Patent No. 7,400,573 to Sundstrom et al. (“Sundstrom”)
`
`“Joint Claim Construction Statement,” filed on May 17th, 2016,
`from Case Nos. 15-542-SLR-SRF, 15-543-SLR-SRF, 15-544-
`SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF, 15-547-SLR-
`SRF filed in N.D. Del.
`
`U.S. Patent No. 7,701,919 to Ah Lee (“Ah Lee”)
`
`U.S. Patent No. 7,693,924 Cho et al. (“Cho”)
`
`Motorola, Inc. 2004 Annual Report to Stockholders
`
`APPLE-1032 WCDMA for UMTS: Radio Access for Third Generation Com-
`munications, Holma and Toskala, 3rd ed, Wiley and Sons, Ltd.,
`2004
`
`
`
`
`
`iv
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`Apple Inc., Microsoft Corporation, Microsoft Mobile Oy, and Microsoft
`
`Mobile Inc. (f/k/a Nokia Inc.) (collectively, “Petitioner”) petition for Inter Partes
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-10
`
`(“the Challenged Claims”) of U.S. Patent No. 7,746,916 (“the ‘916 patent”). As
`
`explained below, there exists a reasonable likelihood that Petitioner will prevail in
`
`demonstrating unpatentability of at least one of the Challenged Claims based on
`
`teachings set forth in the references presented in this petition.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc., Microsoft Corporation, Microsoft Mobile Oy, Microsoft Mobile
`
`
`
`Inc. (f/k/a Nokia Inc.), Microsoft Luxembourg International Mobile SARL and Mi-
`
`crosoft Luxembourg USA Mobile SARL are the real parties-in-interest. The Mi-
`
`crosoft entities have numerous affiliated and/or related entities. However, no un-
`
`named Microsoft entity is funding or controlling this Petition or any resulting IPR.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any disclaimers, reexamination certificates or peti-
`
`tions for inter partes review for the ‘916 Patent. The ‘916 patent is the subject of
`
`Civil Action Numbers 1:15-cv-00542 (Del.), 1:15-cv-00543 (Del.), 1:15-cv-00544
`
`(Del.), 1:15-cv-00545-SLR (Del.), 1:15-cv-00546 (Del.), and 1:15-cv-00547
`
`(Del.). Concurrently with this petition, Petitioner is filing one other petition for
`
`1
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`IPR (Proceeding No. IPR2016-01208) of the ‘916 Patent. The relationship be-
`
`tween the limited grounds presented in these two petitions is discussed in Section
`
`VI.
`
`C. Lead And Back-Up Counsel And Service Information
`Petitioner designates W. Karl Renner, Reg. No. 41, 265, as Lead Counsel
`
`and Roberto J. Devoto, Reg. No. 55,108, as Backup Counsel, both available at
`
`3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-783-
`
`5070; F: 877-769-7945), or electronically by e-mail at IPR00035-0006IP2@fr.com
`
`(referencing No. 00035-0006IP2 and cc’ing PTABInbound@fr.com, ren-
`
`ner@fr.com and devoto@fr.com).
`
`II.
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Patent and Trademark Office to charge Deposit Ac-
`
`count No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and fur-
`
`ther authorizes payment for any additional fees to be charged to this Deposit Ac-
`
`count.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘916 Patent is available for IPR. The present pe-
`
`tition is being filed within one year of service of each of the complaints against Pe-
`
`2
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`titioner. Petitioner is not barred or estopped from requesting this review on the be-
`
`low-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of unpatentability under the statutory grounds
`
`identified below is provided in the form of detailed description that follows, indi-
`
`cating where each element can be found in the cited prior art, and the relevance of
`
`that prior art. Additional explanation and support for each ground of rejection is
`
`set forth in Ex. 1003, Declaration of Dr. Jonathan Wells (“Wells Declaration”).
`
`Ground
`
`‘916 Patent Claims
`
`Basis for Rejection
`
`Ground 1 Claims 1-3, 5-8, and 10 §102: Zhuang175
`
`Ground 2 Claims 4 and 9
`
`§103: Zhuang175 and Popovic
`
`Ground 3 Claims 1-3, 5-8, and 10 §103: Zhuang175 and Hou
`
`Ground 4 Claims 4 and 9
`
`§103: Zhuang175, Hou and Popovic
`
`Ground 5 Claims 6-8, and 10
`
`§103: Zhuang175 and Fukuta
`
`Ground 6 Claim 9
`
`§103: Zhuang175, Fukuta and Popovic
`
`Zhuang175 qualifies as prior art under 35 U.S.C § 102 (e). Specifically,
`
`Zhuang175 (Ex. 1012) was filed on Mar 30, 2004, which is before the U.S. filing
`
`3
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`date of November 28, 2006 of the ‘916 Patent and any of the proclaimed priority
`
`dates of November 28, 2005, July 4, 2006, and July 7, 2006. The Pre-Grant Publi-
`
`cation of Zhuang175 (US20050226140 A1) is a 102(b) reference, published Oct
`
`13, 2005, more than one year before the U.S. filing date of the ‘916 Patent.
`
`Popovic qualifies as prior art under 35 U.S.C § 102 (b). Specifically, Popo-
`
`vic (Ex. 1009) is a journal article that was published in IEEE Trans. On Infor-
`
`mation Theory, vol. 38 in July, 1992. Popovic is a publication published more than
`
`a decade before both the U.S. filing date of November 28, 2006 of the ‘916 Patent
`
`and the proclaimed priority dates of November 28, 2005, July 4, 2006, and July 7,
`
`2006. See Ex. 1010.
`
`Fukuta qualifies as prior art under 35 U.S.C § 102 (e). Specifically, Fukuta
`
`(Ex. 1013) is a patent publication that was filed on May 18, 2006. Therefore, Fu-
`
`kuta is a patent publication based on an application that was filed before the U.S.
`
`filing date of November 28, 2006 of the ‘916 Patent. While Fukuta was filed after
`
`the earliest proclaimed priority date of November 28, 2005, the ‘916 Patent is not
`
`entitled to that priority date for the reasons noted in Section IV-C below.
`
`Hou qualifies as prior art under 35 U.S.C § 102 (e). Specifically, Hou (Ex.
`
`1011) is a patent that was filed on July 27, 2005. Therefore, Hou is a patent that is-
`
`sued on an application that was filed before the U.S. filing date of November 28,
`
`4
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`2006 of the ‘916 Patent and the proclaimed priority dates of November 28, 2005,
`
`July 4, 2006, and July 7, 2006.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
`
`purposes of this proceeding only, Petitioner submits constructions for the following
`
`terms. Petitioner submits that the remaining claim terms need not be construed at
`
`this time.
`
`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)
`For purposes of this proceeding, 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 en-
`
`compass “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.” See Wells Declaration, ¶¶ 82-85. Such a
`
`construction is consistent with the ‘916 Patent because: 1) the ‘916 Patent specifi-
`
`cation does not specifically define this term; and 2) the plain and ordinary meaning
`
`of “acquire” is “to gain possession of;” the plain and ordinary meaning of “gener-
`
`ate” is “to bring into being; give rise to;” and the plain and ordinary meaning of
`
`5
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`“by” is “with the use or help of, through.” See Ex. 1005 at 15, 732, 255. All of
`
`these terms are open-ended, especially the definition of “by”, and embrace, if not
`
`imply, that the acquisition/generation could involve other “use or help” besides “a
`
`cyclic extension” that immediately follows the term “by.”
`
`Moreover, the claim language fails to limit the claim element to “acquir-
`
`ing… only by a cyclic extension,” and the ‘916 Patent specification fails to dis-
`
`claim or exclude other operations being performed for “acquiring/generating a
`
`code sequence having a second length.” Accordingly, the broader construction
`
`should be adopted, rather than reading the word “only”—a word the Applicant did
`
`not use—into the term. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`
`Therefore, the BRI of the phrase “acquiring/generating a code sequence hav-
`
`ing 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 sec-
`
`ond length through execution of one or more operations that include performing a
`
`cyclic extension of a code sequence having a first length.”
`
`2. “cyclic prefix” (claims 2 and 7)
`For purposes of this proceeding, the BRI of the term “cyclic prefix” is broad
`
`enough to encompass “a portion of a sequence that includes the last one or more el-
`
`ements of the sequence and is appended to the front of the sequence.” See Wells
`
`Declaration, ¶¶ 86-90. The ‘916 Patent specification fails to specifically define the
`
`6
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`term “cyclic prefix.” However, a person of ordinary skill in the art at the time of
`
`the invention (POSITA) would recognize that the term “cyclic prefix” is a tech-
`
`nical term well-known in the art, especially in the context of wireless communica-
`
`tions. See e.g., “[a]s is well known, a cyclic prefix for a block of N data samples is
`
`created by copying the last L samples of the block of N data samples and append-
`
`ing them to the front of the block of N data samples.” Ex. 1006, 5:64-6:3.
`
`Such a construction is consistent with the ‘916 Patent specification: “a code
`
`sequence portion is added/attached to the generated code sequence (e.g., zero-pad-
`
`ding or cyclic prefix).” Ex. 1001, 10:37-39. “The length of the padding portion cor-
`
`responds to a length L−X. As discussed, the padding portion can be comprised of
`
`zeroes or cyclic prefix/postfix;” see also Ex. 1001, 12:43-47, 12:60-67. The ‘916
`
`Patent specification also contrasts the “cyclic prefix” with “cyclic postfix,” where
`
`the latter is “the portion corresponding to L−X of the code sequence 1204
`
`[that] can be duplicated and inserted/attached to the end of the code sequence
`
`1204.” Ex. 1001, 13:53-57 and 62-64. A POSITA in view of the ‘916 Patent speci-
`
`fication would have recognized that, rather than the end of the sequence, the “cy-
`
`clic prefix” is a portion of a sequence that includes the last one or more (e.g., L-X)
`
`elements of the sequence and is appended to the front of the sequence. See Wells
`
`Declaration, ¶¶ 89-90.
`
`3. "cyclic postfix" (claims 2, 3 and 7)
`
`7
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`For purposes of this proceeding, the BRI of the term “cyclic postfix” is
`
`broad enough to encompass “a portion of a sequence that includes the first one or
`
`more elements of the sequence and is appended to the end of the sequence.” See
`
`Wells Declaration, ¶¶ 91-93. Such a construction is consistent with the ‘916 Patent
`
`specification: “the padding portion can be comprised of a repeated portion. In other
`
`words, the portion corresponding to L−X of the code sequence 1204 can be dupli-
`
`cated and inserted/attached to the end of the code sequence 1204. This can be re-
`
`ferred to as cyclic postfix.” Ex. 1001, 13:53-57, 12:43-47, 60-67.
`
`4. "reference signal sequence" (claims 5 and 10)
`For purposes of this proceeding, the BRI of the term “reference signal se-
`
`quence” is broad enough to encompass “a sequence transmitted for the purpose of
`
`initial synchronization, cell search, or channel estimation.” See Wells Declaration,
`
`¶¶ 94-95. Such a construction is consistent with the ‘916 Patent specification: “a
`
`pilot signal or a preamble of a wireless communication system is referred to as a
`
`reference signal used for initial synchronization, cell search, and channel estima-
`
`tion.” Ex. 1001, 1:20-22.
`
`5. “a code sequence generator” (claim 6)
`Claim 6 recites “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
`
`8
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`length.” This term does not include the word “means.” Thus, the term “presump-
`
`tively is not a means-plus-function limitation under 35 U.S.C. § 112, paragraph 6.”
`
`See Facebook v. TLI Comm., Case IPR2015-00778, Paper No. 17, pp. 13-14
`
`(P.T.A.B. August 28, 2015) (citing Williamson v. Citrix Online, LLC, 792 F. 3d
`
`1339 (Fed. Cir. 2015) (en banc)). Petitioner has challenged this presumption in
`
`District Court (see Ex. 1023, p. 4; Ex. 1028, p. 8), but is not challenging it in this
`
`proceeding, in part because PTO proceedings have a broader standard of interpre-
`
`tation than in litigation. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)
`
`(explaining that for PTO proceedings, the BRI-standard should be used, in part due
`
`to the ability of the Patent Owner to amend claims to further clarify their scope).
`
`Accordingly, for purposes of this proceeding only, the term should be given its
`
`plain meaning as understood under the BRI standard.
`
`The Patent Owner has asserted in the District Court that this term is not gov-
`
`erned by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 8. However, to the
`
`extent that the Patent Owner alleges in this proceeding that the term is a means-
`
`plus-function limitation, the Patent Owner may identify the following portions of
`
`the specification as relating to structure for performing the recited functions “gen-
`
`erating a code sequence …and performing a circular shift …”: the sequence selec-
`
`tion unit 1602 of FIG. 16. See e.g., Ex. 1001, 15:12-35.
`
`9
`
`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`Regardless of whether “code sequence generator” is given its plain meaning
`
`or is governed by 35 U.S.C. § 112(6), the ’916 Patent does not limit the recited
`
`code sequence generator to a unitary device. See, e.g., Ex. 1001, 15:6-35.1 See
`
`Wells Declaration, ¶¶ 96-99. For example, in describing FIG. 16, the ’916 Patent
`
`states that, “[d]epending on whether the transmission of the code sequence is made
`
`in a downlink direction or an uplink direction, the structure can be in different
`
`form.” Ex. 1001, 15:7-9. In this regard the example implementation shown in
`
`FIG. 16 is not limiting. In fact, the ‘916 patent admits that “FIG. 16 is described
`
`with respect to a general transmitting end for 10 transmitting the control signal,”
`
`Ex. 1001, 15:9-11. Moreover, FIG. 16 merely shows that “the transmitting end
`
`1601 comprises a sequence selection unit 1602 and a transmitting unit 1603.” Ex.
`
`
`1 The recitation of the term “apparatus” in the preamble also does not limit the re-
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`cited features of claim 6 to a unitary device. The ’916 Patent does not specially de-
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`fine the term “apparatus,” and this term has been construed as generally encom-
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`passing a “system.” See Ex Parte Fressola, 27 U.S.P.Q.2D (BNA) 1608, 1611
`
`(B.P.A.I. 1993) (citing In re Walter, 618 F.2d 758, 762 n.2 (CCPA 1980)). The
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`term “apparatus” merely gives a descriptive name to the set of limitations in the
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`body of the claim, but does not otherwise limit the scope of the claim. See IMS
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`Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000).
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`10
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`

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`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`1001, 15:12-13. The ’916 Patent generally describes that “[t]he sequence selection
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`unit 1602 is used to generate the code sequence for transmitting the control infor-
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`mation,” without further design or configuration restraints. See Ex. 1001, 15:6-35.
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`6. “a transmitting unit” (claim 6)
`Claim 6 recites “a transmitting unit for transmitting the circular shifted code
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`sequence having the second length.” This term does not include the word
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`“means.” Thus, the term “presumptively is not a means-plus-function limitation
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`under 35 U.S.C. § 112, paragraph 6.” See Facebook, Paper No. 17 at 13-14. Peti-
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`tioner has challenged this presumption in District Court (see Ex. 1023, p. 4; Ex.
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`1028, p. 9), but is not challenging it in this proceeding, in part because PTO pro-
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`ceedings have a broader standard of interpretation than in litigation. See In re Zletz
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`at 1322. Accordingly, for purposes of this proceeding only, the term should be
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`given its plain meaning as understood under the BRI standard.
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`The Patent Owner has asserted in the District Court that this term is not gov-
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`erned by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 9. However, to the
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`extent that the Patent Owner alleges the term is a means-plus-function limitation,
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`the Patent Owner may identify the following portions of the specification as relat-
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`ing to structure for performing “transmitting the circular shifted code sequence
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`having the second length”: the transmitting unit 1603 of FIG. 16. Ex. 1001, 15: 13-
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`14.
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`11
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`IV.
`SUMMARY OF THE ‘916 PATENT
`A. Brief Description
`Generally, the ‘916 Patent purportedly provides a method of generating a
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`code sequence in a wireless communication system. Ex. 1001, Abstract. Particu-
`
`larly, the ‘916 patent describes generating a code sequence having a length differ-
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`ent from a desired length, and modifying the length of the generated code sequence
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`to equal the desired length. Ex. 1001, 2: 8-12. The step of modifying includes in-
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`serting a “cyclic prefix/postfix.” Ex. 1001, 13:23-25. The ‘916 Patent also dis-
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`cusses a circular shift that is “typically applied to increase an amount of control in-
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`formation” and “performed either before or after the padding portion is added to
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`the generated CAZAC sequence.” Ex. 1001, 11: 22-25 and 13:8-10.
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`FIG. 13 (reproduced below) illustrates “application of circular shift to the
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`generated code sequence after a padding portion is attached.” Ex. 1001, 12:37-39.
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`Specifically, a code sequence 1302 is generated with a length X which is the larg-
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`est prime number smaller than a desired length L. A padding portion of a length
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`L−X is added to the CAZAC sequence 1302. The “result of the generated code se-
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`quence having length L 1303 is applied circular shift thereto, resulting in the CA-
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`ZAC sequence 1304.” See Ex. 1001, 12:40-49.
`
`12
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`
`
`
`The ‘916 patent includes 11 claims, of which claims 1, 6 and 11 are independent.
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`Claims 1 and 6 are directed towards the implementation as shown in FIG. 13.
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`B.
`Summary of the Prosecution History
`In the first office action issued during original prosecution of the ’916 Patent
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`and dated June 26, 2009, the Examiner set forth rejections based on Zhuang175
`
`13
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`and a combination of Zhuang175 in view of Koslar. See Ex. 1002 at 120-127.
`
`Given that Zhuang175 unequivocally discloses the “cyclic extension” feature, the
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`Applicant resorted to rolling up dependent claims 27 and 28, which recited the
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`“circular shift” feature, into independent claim 1, arguing that the circular shift is
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`not disclosed in “the cited portions of Zhuang175” in the first Office Action. See
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`Ex. 1002 at 113-115. Admittedly, the cited portion of Zhuang175 discloses cyclic
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`extension not circular shift (“Choose NG to be the largest prime number that is
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`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.
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`1012, 4:18-21). However, in an entirely different and uncited portion, Zhuang175
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`explicitly discloses circular shifting: “the actual signals may be the results of dif-
`
`ferent functions of the same assigned sequence. Examples of the functions applied
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`are circular shifting of the sequence….” Ex. 1012, 6:29-32. Unfortunately, because
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`the applicant failed to point to the most relevant portions of the reference and made
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`misleading statements, the Examiner overlooked this very express disclosure of
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`Zhuang175 and issued a notice of allowance relying on the Applicant’s argument,
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`which itself asserts nothing more than that the cited portions of Zhuang175 did not
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`disclose the circular shift feature. See Ex. 1002, 79-84.
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`C. The Effective Priority Date of the Claims of the ‘916 Patent
`
`14
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`The ‘916 patent issued from U.S. Application No. 11/563,909, filed Novem-
`
`ber 28, 2006. This application claims priority to Korean application nos. 10-2005-
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`0114306 filed November 28, 2005, 10-2006-0062467 filed July 4, 2006 and 10-
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`2006-0064091 filed July 7, 2006. Petitioner notes that the claims ultimately
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`granted in the ‘916 patent are not fully supported by the priority application2; the
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`earliest effective filing date for those claims is thus no earlier than July 7, 2006.
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`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ESTAB-
`LISHING A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘916 PATENT IS UNPATENTABLE
`This request shows how the primary references above, alone or in combina-
`
`tion with other references, disclose the limitations of and thereby invalidating the
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`Challenged Claims. As detailed below, this request shows a reasonable likelihood
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`that the Requester will prevail with respect to the Challenged Claims.
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`A. Ground 1: Zhuang175 anticipates claims 1-3, 5-8, and 10
`
`
`2 The Korean application filed November 28, 2005 does not support any of the
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`claims of the ‘916 Patent because it is silent at least on “cyclic extension” and “cy-
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`clic shift” features as recited in the claims of the ‘916 Patent. See Ex. 1015. The
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`Korean application filed July 4, 2006 does not support any of the claims of the
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`‘916 Patent because it is silent at least on the “cyclic shift” feature as recited in the
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`claims of the ‘916 Patent. See Ex. 1016.
`
`15
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`Zhuang175 discloses “a method and apparatus for pilot signal transmis-
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`sion…. In particular, pilot sequences are constructed from distinct “classes” of
`
`chirp sequences that have an optimal cyclic cross correlation property while satis-
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`fying the ideal cyclic auto-correlation requirement. Utilization of chirp sequences
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`for pilot sequences results in pilot channels that have good cross correlation as well
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`as having good auto-correlation.” Ex. 1012, 2:22-29. See also Wells Declaration,
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`¶¶ 222-230. FIG. 3 (reproduced below) shows a method of “assignment of pilot
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`codes to various base units.” Ex. 1012, 8:52-53.
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`
`
`16
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`

`
`Attorney Docket No. 00035-0006IP2
`IPR of U.S. Patent No. 7,746,916
`Zhuang175 explains: at step 301, “a number of needed pilots (K), desired pi-
`
`
`
`lot length (Np) and a candidate length (NG) of each pilot sequence are determined;”
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`at step 303, “[b]ased on Np and NG, the pilot sequences are computed[;] the pilot
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`sequences are constructed from the Generalized Chirp-Like (GCL) sequences of
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`length Np…. at step 305, the pilot sequences are assigned to base units within
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`communication system 100… each base unit may receive more than one pilot se-
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`quence from the K available pilot sequences.” Ex. 1012, 8:52-64.
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`Corresponding to step 303, the Section entitled “Construction of a Set of Pi-
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`lot Sequences to Use within a Communication System” discloses that “the pilot se-
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`quence will be constructed by starting with a sequence whose length NG is a prime
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`number and then performing modifications” that include “[choosing] NG to be the
`
`largest prime number that is smaller than Np and generate the sequence set. Repeat
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`the beginning elements of each sequence in the set to append at the end to reach
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`the desired length Np.” See Ex. 1012, 3: 64-4:21. Notably, Zhuang175 makes clear
`
`that “[f]urther modifications to the truncated/extended sequences may also be ap-
`
`plied.” Ex. 1012, 4:44-46.
`
`Corresponding to step 305, the Section entitled “Assignment of Pilot Se-
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`quences within a Communication System” discloses that each communication unit
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`can be assigned a different or same pilot sequence “from the set of K pilot se-
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`quences” and “different functions [can be applied to] the same assigned sequence.
`
`17
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`

`
`Attorney Docket No. 00035-0006IP2