`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`1 IPR2016-01280 has been consolidated with this proceeding.
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`
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`I.
`II.
`
`V.
`
`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 2
`A. “a code sequence generator” ..................................................................... 4
`B. “generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length” ................................. 7
`III. Under the correct construction, Zhuang175 discloses the claimed “code
`sequence generator.” [Grounds-1-4; claims 6-10] ......................................... 12
`IV. Even under EW’s narrow construction, Zhuang175 discloses a base station,
`i.e., a single device, that includes “a code sequence generator” ................... 15
`The ‘916 Patent’s prosecution history further corroborates Zhuang175’s
`disclosure of “a code sequence generator,” irrespective of whether EW’s
`construction is adopted .................................................................................. 19
`VI. The combination of Zhuang175 and Fukuta discloses the invention as a whole,
`and Petitioner has articulated sufficient reasons to support such a combination
`[Grounds-5-6; claims 6-10] ........................................................................... 20
`A. The combination of Zhuang175 and Fukuta discloses the “invention as a
`whole,” including a “code sequence generator,” even when applying
`EW’s narrow construction ...................................................................... 22
`B. The Petition has demonstrated by a preponderance of the evidence that a
`POSITA would be motivated to combine Zhuang175 and Fukuta ........ 25
`VII. Conclusion ..................................................................................................... 28
`
`
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`
`
`
`i
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`
`EXHIBIT LIST
`
`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
`American Heritage® Dictionary of the English Language,
`Fourth Edition, Copyright © 2000 by Houghton Mifflin
`Harcourt Publishing Company
`U.S. Patent No. 8,340,232 to Ding et al. (“Ding”)
`U.S. Patent No. 7,599,327 to Zhuang et al. (“Zhuang175”)
`[Reserved]
`Popovic, “Generalized chirp-like polyphase sequences with
`optimum 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)
`N. Abramson, "THE ALOHA SYSTEM—Another alternative for
`computer communications," Proceedings of the Fall Joint
`Computer Conference, pp. 281-5, Nov. 1970
`
`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
`
`
`
`
`
`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`3GPP TS 25.213 V6.4.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Spreading and modulation (FDD) (Release 6)”
`3GPP TS 25.211 V6.6.0 (2005-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical channels and mapping of transport channels onto
`physical channels (FDD) (Release 6)”
`D.C. Chu, “Polyphase codes with good periodic correlation
`properties,” IEEE Trans. Information Theory, vol. 18, pp. 531–
`532, July 1972
`3GPP TS 25.201 V3.0.0 (1999-10), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Physical layer - General description (3G TS 25.201 version
`3.0.0)”
`3GPP TS 36.211 V8.0.0 (2007-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Evolved Universal Terrestrial Radio Access (E-UTRA);
`Physical channels and modulation (Release 8)”
`“Defendants’ Preliminary Identification of Terms Needing
`Construction and Proposed Constructions,” from Case Nos. 15-
`542-SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-
`SLR-SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D.
`Del.
`“Evolved Wireless’s Identification of Claim Terms and Proposed
`Constructions” from Case Nos. 15-542-SLR-SRF, 15-543-SLR-
`SRF, 15-544-SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF,
`15-547-SLR-SRF filed in N.D. Del.
`IEEE 802.16-2004 Standard, entitled “IEEE Standard for Local
`and Metropolitan Area Networks Part 16: Air Interface for
`Fixed Broadband Wireless Access Systems” (“IEEE802.16-
`2004”)
`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”)
`iii
`
`APPLE-1018
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`APPLE-1019
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`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`APPLE-1023
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`APPLE-1024
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`APPLE-1025
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`APPLE-1026
`APPLE-1027
`APPLE-1028
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`APPLE-1029
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`APPLE-1030
`APPLE-1031
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`APPLE-1032
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`APPLE-1033
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`APPLE-1034
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`APPLE-1035
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`U.S. Patent No. 7,693,924 Cho et al. (“Cho”)
`Motorola, Inc. 2004 Annual Report to Stockholders
`
`WCDMA for UMTS: Radio Access for Third Generation
`Communications, Holma and Toskala, 3rd ed, Wiley and Sons,
`Ltd., 2004
`Declaration of Mr. Gerard Grenier for APPLE-1020 (Served,
`not filed)
`Declaration of Mr. Mel DeSart for APPLE-1017 and APPLE-
`1032 (Served, not filed)
`Definitions of terms “circuit” in The American Heritage®
`Science Dictionary Copyright © 2002. Published by Houghton
`Mifflin Harcourt Publishing Company
`
`
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`iv
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
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`I.
`
`Introduction
`Petitioners submit this Reply to Evolved Wireless’s (“EW’s”) Response
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`(Paper 14) (“POR”). EW no longer contests the validity of method claims 1-5, and,
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`therefore, these claims should be canceled. POR,2. EW only addresses the validity
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`of apparatus claims 6-10, which recite the same operations as in method claims 1-
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`5.
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`In essence, EW argues that claims 6-10 are valid because they recite an
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`apparatus, despite the apparatus performing known methods. Specifically, EW’s
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`entire case rests largely on an improper claim construction of the phrase “a code
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`sequence generator for generating a code sequence having a second length by
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`cyclic extension of a code sequence having a first length, and performing a
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`circular shift to the code sequence having the second length.” Attempting to evade
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`prior art, EW seeks to narrow the broadest reasonable construction of this phrase
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`by advancing a purported plain meaning that finds no mooring in either the
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`intrinsic record or the new extrinsic evidence introduced by EW in its POR.
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`As set forth below, EW’s construction burdens the plain meaning by limiting
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`the structures that implement the recited mathematical “generating” operation to a
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`“single device,” expressly excluding implementations involving multiple devices.
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`Yet, the extrinsic dictionary definitions EW advances fail to include such
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`implementation-specific narrowing language, and at least one other science
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`dictionary directly refutes the contention that a “generator” must necessarily be
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`limited to single device implementations. Additionally, the intrinsic record fails to
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`include an express disclaimer or clear disavowal of claim scope that would
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`mandate a narrowing of the plain and ordinary meaning of the term “generator” to
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`implementations involving only a single device. Indeed, nothing in the intrinsic
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`record suggests that a single device implementation of the recited “code sequence
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`generator” is of any consequence to the invention. The Board should, therefore,
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`dismiss EW’s arguments as not credible.
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`EW provides no expert testimony, leaving only unsupported attorney
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`argument that reflects a flawed understanding of the prior art references and the
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`arguments advanced in the Petition. As explained in greater detail herein, EW’s
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`arguments should be dismissed.
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`II. Claim Construction
`To manufacture patentability, EW attempts to make issues of claim
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`construction where there are none. Claims receive their “broadest reasonable
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`construction” in an IPR, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
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`(2016); 37 C.F.R. § 42.100(b). “The words of a claim are generally given their
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`ordinary and customary meaning as understood by a person of ordinary skill in the
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`art when read in the context of the specification and prosecution history.” Thorner
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`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “There
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`are only two exceptions to this general rule: 1) when a patentee sets out a definition
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`and acts as his own lexicographer, or 2) when the patentee disavows the full scope
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`of a claim term either in the specification or during prosecution.” Id. “A
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`disclaimer or disavowal of claim scope must be clear and unmistakable, requiring
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`‘words or expressions of manifest exclusion or restriction’ in the intrinsic record.”
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`Unwired Planet, LLC, v. Apple Inc., 829 F. 3d 1353, 1358 (Fed. Cir. 2016).
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`Given its absence from the intrinsic record, EW is unable to identify any
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`express definition or clear disavowal that mandates departure from the general
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`rule. Instead, EW advances constructions that either contort the ordinary meaning
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`by importing limitations not found in proffered dictionary definitions (“a code
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`sequence generator” feature) or depart from the ordinary meaning by improperly
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`importing limitations from the ‘916 Patent’s preferred embodiments into the claims
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`(“generating a code sequence” feature).
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`The Applicants of the ‘916 Patent have intentionally drafted their apparatus
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`claims using the most generic terminology – “unit,” “device,” “generator,” and
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`“by.” Indeed, this type of broad language used for claim elements that recite
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`conventional structures and functionality, rather than the point of novelty, does not
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`find its way into the claim by some random process. Patent prosecutors go broad
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`for those portions of the claim so that future defendants cannot practice the heart of
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`the invention and yet avoid infringement by employing some alternate
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`conventional structure not covered by the claim language. This is really just a
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`morality play – the Applicants chose to use broad claim language, and they should
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`be held to it. EW now wants to undo this earlier decision to pursue broad coverage
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`through use of the terms. But the proper avenue for this is a claim amendment, and
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`EW chose not to pursue a claim amendment.
`
`A.
`“a code sequence generator”
`EW impermissibly limits the term “a code sequence generator” to “a code
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`module or digital circuit (or combination thereof) within a single device,” not to
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`“encompass hardware or software logic found across multiple devices.” POR,15
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`(emphasis added). The requirement that the recited generator be a “single” device
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`plays a pivotal role in EW’s arguments to attempt to distinguish the cited prior art,
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`and yet neither the intrinsic evidence nor the extrinsic evidence supports such a
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`narrow reading of this term.
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`Perhaps recognizing the lack of supporting intrinsic evidence, EW first relies
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`upon selected extrinsic dictionary definitions of “generator” to support its narrow
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`construction. EW’s selected dictionary definitions, however, fail to specify the
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`“single” requirement. While they use the word “a device” or “a circuit,” they fail to
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`use words like “single,” and they instead choose to embellish definitions by adding
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`“discrete” and “within a single device” nowhere found in the definitions. POR,15.
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`Indeed, in this context, the term “circuit” is defined as “a system of
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`electrically connected parts or devices.” Ex.1035. This definition makes clear that
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`a circuit is broad enough to encompass multiple devices, unlike EW’s construed
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`limitation that prohibits the recited “code sequence generator” from
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`“encompass[ing] hardware or software logic found across multiple devices,”
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`POR,16.
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`As such, contrary to EW’s proposal, the ordinary meaning of the recited
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`“code sequence generator” encompasses any number of devices that implement the
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`mathematical “generating” operation. Since this feature is merely a rewriting of a
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`“generating” operation into a noun form, this feature is properly construed as
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`encompassing any hardware and/or software logic able to perform the recited
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`mathematical operation of “generating,” irrespective of implementation-specific
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`details such as the number of devices used to implement the hardware and/or
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`software.
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`Moreover, EW’s “single device” restriction is not mandated by the intrinsic
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`evidence, which contains no definition or a clear disavowal of claim scope for this
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`term. Indeed, nor any suggestion that a single device implementation of the recited
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`“code sequence generator” is critical to the invention. Contrarily, the intrinsic
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`evidence is actually inconsistent with EW’s construction proposal.
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`EW asserts the “code sequence generator” is restricted to a single device by:
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`(i) assuming “code sequence generator” to mean “sequence selection unit” and
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`then (ii) proffering a dictionary definition of “unit.” POR,16. First, the claims do
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`not recite a sequence selection unit. In fact, the very claims in which EW is
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`attempting to import this limitation (i.e., claims 6-10) recite the term “unit” in a
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`distinct phrase “transmitting unit” (emphasis added). Second, EW’s dictionary
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`definition of “unit” never refers to a single device. Finally, the specification plainly
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`rejects the “single device” restriction because it actually describes a “unit” as
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`encompassing multiple devices—a fact EW omits from its response. As shown
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`below, FIG.17 of the ‘916 Patent depicts a code sequence generation unit (“basic
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`code sequence generation unit 1701”) that includes multiple, interoperating units
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`(“a code sequence generation unit 1701 a,” and “a circular shift application
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`unit 1701 b”).
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`6
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`
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`The ‘916 Patent, FIG.17 (highlighted)
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`Therefore, the Board should reject EW’s overly narrow interpretation of “a
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`code sequence generator” as limited to a single device because such an interpretation
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`does not capture the full breadth of the ordinary meaning and the intrinsic evidence
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`fails to mandate a departure from that ordinary meaning.
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`B.
`
`“generating a code sequence having a second length by a cyclic
`extension of a code sequence having a first length”
`While not stated explicitly, EW is advocating that the Board narrow the
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`
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`reading of the term “by” in the above mathematical “generating” feature to instead
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`be “only by,” thereby excluding any “additional, intermediate operations—such as
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`a Fourier transform—between a cyclic extension and circular shift operation.”2
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`POR,16. Consistent with Thorner, Unwired Planet, and In re Bigio, however, this
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`phrase should not be narrowed beyond its ordinary meaning as advocated in the
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`Petition because that ordinary meaning is consistent with the ‘916 Patent
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`specification and prosecution history, which, notably, lack any express definition
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`or clear disavowal of claim scope for this claim term.
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`
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`As noted in the Petition, the plain and ordinary meaning of “by” in the
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`mathematical “generating” feature is open-ended, merely requiring “with the use or
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`help of, through.” Petition,5. This ordinary meaning is consistent with the ‘916
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`Patent specification, which only discloses embodiments where the code sequence
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`having a second length is generated “with the use or help of, through” extending a
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`code sequence having a first length. Not surprisingly, EW failed to identify a
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`2 Perhaps recognizing that its construction proposal is tantamount to improperly
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`amending the “generating” feature to add the word “only” in front of “by,” EW
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`goes to Herculean efforts to avoid characterizing its claim construction proposal as
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`merely changing the word “by” to “only by.” POR,16. Nevertheless, EW’s
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`express exclusion of “additional, intermediate operations” from the scope of the
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`“generating” feature limits the claim in exactly the same way as changing the word
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`“by” to “only by.”
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`redefinition of “by” from “with the use or help of, through” to “only with the use or
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`help of, only through.” EW also failed to identify any portion of the ‘916 Patent’s
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`prosecution history as being inconsistent with this plain and ordinary meaning.
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`
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`Instead, EW relies on its assertion that all embodiments of the ‘916 Patent
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`disclose generating a code sequence having a second length only by cyclically
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`extending a code sequence having a first length to support its claim construction
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`proposal. POR,18. But the Federal Circuit has repeatedly found such disclosure
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`insufficient to rise to the level of a clear disavowal of claim scope. See Thorner at
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`1366-7 (“It is likewise not enough that the only embodiments, or all of the
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`embodiments, contain a particular limitation. We do not read limitations from the
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`specification into claims; we do not redefine words... To constitute disclaimer,
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`there must be a clear and unmistakable disclaimer” (emphasis added)). See also In
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`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004), (“We have
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`cautioned against reading limitations into a claim from the preferred embodiment
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`described in the specification, even if it is the only embodiment described, absent
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`clear disclaimer in the specification.”). And this stands to reason, as the
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`specification examples are merely exemplary. Ex. 1001,2:43-47.
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`
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`In re Bigio further supports the conclusion that EW’s narrowing of the
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`“generating” feature is unreasonable. The Court in In re Bigio counsels the PTO to
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`“avoid the temptation to limit broad claim terms solely on the basis of specification
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`passages,” and notes that “[a]bsent language carrying a narrow meaning, the PTO
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`should only limit the claim based on the specification or prosecution history when
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`those sources expressly disclaim the broader definition.” See 381 F.3d 1320, 1325
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`(Fed. Cir. 2004). In In re Bigio, the Federal Circuit refused to accept PO’s
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`narrowing the claim term “hair brush” by adding the word “scalp” from passages
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`of the specification. Similarly, the Board should refuse to accept EW’s narrowing
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`the recited “generating” feature by adding the word “only” in front of the word
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`“by” based on passages from the specification, when the specification and
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`prosecution history do not clearly disclaim the broader definition.
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`
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`As mentioned, the ‘916 Patent’s express disclosure itself further discourages
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`such narrowing. The ‘916 Patent allows “various modifications and variations” to
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`be made to the disclosed embodiments and further declares that “the present
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`invention covers the modifications and variations of this invention provided they
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`come within the scope of the appended claims and their equivalents.”
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`Ex.1001,17:26-32. The claim terms chosen by EW only recite that a code
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`sequence having a second length is generated “by,” but not “only by,” cyclically
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`extending a code sequence having a first length. Ex.1001,claim 6. Thus, the
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`claims, as written, define a broad scope. Performing an operation, such as an IFFT,
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`in addition to cyclic extension is a modification or variation of the disclosed
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`embodiment that “come within the scope of the [] claims.” See id.
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`EW uses an analogy to support its assertion that the Petitioner’s construction
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`
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`is unreasonably broad because it could encompass an additional operation that
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`“would change the meaning of the sentence.” POR,20. Both the PO’s assertion and
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`the analogy upon which it is premised are flawed.
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`
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`First, the PO’s assertion assumes, without justification, that the claims have
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`some presupposed meaning distinct from the plain and ordinary meaning of the
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`claim language (i.e., that the generating step is narrowly limited to the recited
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`cyclic extension and precludes any additional steps in the generation of the code
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`sequence). As noted previously, there is no clear disavowal or express redefinition
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`in the ‘916 Patent or its prosecution history that would mandate departure from the
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`plain meaning. And certainly nothing exists in the intrinsic record that would
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`justify importing the word “only” in front of “by,” as advocated by EW. See
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`generally Ex.1001, Ex.1002.
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`Moreover, the PO’s analogy does not support its position. EW states that
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`“‘by’ is open-ended to allow for additional modifiers (e.g., we came by car), but
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`not modifiers that would change the meaning of the sentence (e.g., we came by the
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`back road, and then circled back around to take the highway).” POR,20. EW
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`contends that if “we came by the back road, and then circled back around to take
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`the highway,” the meaning of “come by the back road” would be changed simply
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`because we also came “by the highway.” Id. This is plainly not true. We arrived at
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`the destination both “by the back road” and “by the highway” because the path to
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`the destination went through both the back road and the highway. The circling
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`back does not undo the fact that the path to arrive at the destination still went
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`through the back road and, hence, was “by the back road.”
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`
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`EW’s analogy is further deficient because EW has failed to explain why the
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`additional IFFT operation disclosed by Fukuta corresponds to a “circling back.”
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`After all, the additional IFFT operation is also used to generate the code sequence
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`having a second length and does not reverse or otherwise undo the prior cyclic
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`extension operation. Thus, “generating a code sequence having a second length”
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`still went through a cyclic extension, and, hence, was “by a cyclic extension,”
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`without changing the alleged meaning of this feature in a manner equivalent to a
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`“circling back.” As such, even if EW’s different meaning of the “generating” feature
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`were coherent and correct (which it is not), it is unclear how this different meaning
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`would exclude those intermediary operations, such as Fukuta’s IFFT operation, that
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`are not equivalent to a “circling back” of the cyclic extension operation.
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`III. Under the correct construction, Zhuang175 discloses the claimed “code
`sequence generator.” [Grounds-1-4; claims 6-10]
`As set forth in Section-II-A, the phrase “a code sequence generator” should
`
`NOT be limited to a single device because EW’s insertion of the extraneous
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`limitation “single” finds no support in either intrinsic or extrinsic evidence. The
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`broadest reasonable construction of this term encompasses various
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`hardware/software implementations, including hardware/software found across
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`multiple devices.
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`Under the correct construction, Zhuang175 satisfies this feature by
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`inherently disclosing a code sequence generator that both cyclically extends and
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`circularly shifts code sequences because of Zhuang175’s disclosure of the recited
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`operations of cyclic extension and circular shift. Petition,28-33. While admitting
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`that Zhuang175 indeed discloses “circular shifting by the base units once pilot
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`sequences are assigned to them,” EW faults Zhuang175 by alleging that
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`Zhuang175 “does not explain where or how the pilot sequences are generated prior
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`to their assignment to the base units.” POR,27. EW’s criticism of Zhuang175 is
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`misplaced.
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`Not only does Zhuang175 specifically identify a component (i.e., a base
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`unit) that circularly shifts code sequences, but Zhuang175 also necessarily
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`contemplates a component that cyclically extends the sequence in the manner
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`disclosed in Zhuang175. Petition,28-33, 20-22. The component that generates the
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`cyclically extended sequence is inherent in Zhuang175’s disclosure by virtue of
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`Zhuang175’s disclosure of a process that cyclically extends the code sequence by
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`the method disclosed in Zhuang175. Petition,20-22; Ex.1012, 4:10-21. The method
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`disclosed in Zhuang175 satisfies the recited “generating” method, a fact not
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`disputed by EW and further evident from EW’s concession of the validity of
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`13
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`method claims 1-5 that recite the very same operations. Petition,2. Because
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`Zhuang175 discloses the operation of both cyclically extending and circularly
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`shifting the code sequence, Zhuang175 envisions a generator including a cyclic
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`extension component, irrespective of where the cyclic extension component is
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`located (i.e., in system 100 or elsewhere), that generates the cyclically extended
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`sequence and sends that sequence to a base unit (assuming arguendo the cyclic
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`extension component is not part of the base unit) and the base unit then performs
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`the cyclic shifting on the cyclically extended sequence. Petition,29-30;
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`Ex.1012,4:44-46, 6:18-32; claim 16.
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`This cyclic extension component and the base unit together constitute the
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`recited code sequence generator. After all, without such a cyclic extension
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`component, Zhuang175’s system would be unable to perform its disclosed
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`function, specifically the function of cyclical extension to which Zhuang175
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`dedicates an entire section entitled “Construction of a Set of Pilot Sequences to
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`Use within a Communication System” and goes into great length in describing.
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`Ex.1012,4:56-6:14, 8:53-61. Thus, this cyclic extension component is inherently
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`disclosed by Zhuang175 because it “necessarily flows from the teachings of the
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`applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter.
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`1990). Accordingly, a code sequence generator that both cyclically extends and
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`circularly shifts code sequences is also inherently disclosed by Zhuang175.
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`14
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`Since EW does not dispute the cited references’ satisfaction of features other
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`than the “code sequence generator” feature of claims 6-10, claims 6-10 are
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`unpatentable and should, therefore, be canceled. Petition,Grounds-1-4.
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`IV. Even under EW’s narrow construction, Zhuang175 discloses a base
`station, i.e., a single device, that includes “a code sequence
`generator”
`To the extent that the Board adopts EW’s unreasonably narrow construction
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`that the “code sequence generator” must be a single device, Zhuang175 discloses a
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`single “base station” that includes multiple “base units,” which constitutes the
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`recited “code sequence generator” that performs the functions of “generating a
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`code sequence having a second length by cyclic extension …, and performing a
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`circular shift to the code sequence having the second length.” Petition,29-32;
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`Ex.1012,2:66-3:13.
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`Such a reading of Zhuang175 is supported not only by Dr. Wells’s detailed
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`analysis in his declaration, but also his unequivocal deposition testimony. See
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`Ex.1003,¶¶258-265; Ex.2006,27:2-28:17.
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`Ex.2006, 27:2-5 (highlighted).
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`15
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`Proceeding No.: IPR2016-01209
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`Moreover, Dr. Wells repeatedly denied EW’s leading questions that a
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`POSITA would have concluded that Zhuang175 contemplates code sequences
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`being generated offline and then loaded onto the base units of Zhuang175’s
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`system:
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`Ex.2006, 27:13-20 (highlighted).
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`16
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
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`Ex.2006,28:1-9 (highlighted).
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`Yet, EW chooses to ignore Dr. Wells’s repeated denials, instead relying on a
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`general notion, which Dr. Wells specifically denied as being applicable to
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`Zhuang175, that the cyclically extended code sequences could be generated
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`“offline” and then loaded onto the base units. POR,28; Ex.2006, 28:10-17:
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`
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`Ex.2006,28:10-17 (highlighted).
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`Dr. Wells based this denial on the fact that Zhuang175’s system is disclosed
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`as performing the noted functions, including the generation function (the
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`elaborated process of “construction of [] pilot sequence”), and yet the
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`communication system 100, as shown in FIG.1, is shown to only include base
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`units. Ex.1012,FIG.1, 3:13-17, 4:56-6:14; Ex.1003,¶¶258-263. If other units were
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`involved in the code sequence generation (which is a critical element of the
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`Zhuang175 invention evident from the specification and claims), the other units
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`17
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`would have been shown. Ex.1012,4:10-6:14, claims 10, 16, 20&28.
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`Moreover, as Dr. Wells noted, the way that Zhuang175’s system generates
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`the code sequence by itself rather than being loaded to the base unit from an
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`external source is “very reasonable.” Ex.2006,28:16-17. Indeed, “[configuring the
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`base station to generate the pilot sequence rather than performing a look-up of pre-
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`stored, fixed sequences] would have at least reduced the size of the memory
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`required by a base station by eliminating the need of storing a large number of
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`possible pilot sequences for the look-up.” Petition,31, citing Ex.1003,¶263.
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`“Additionally, generating the pilot sequences at the base station as needed on the
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`fly may also be more computationally efficient compared to the alternative where
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`the base station “selects” the pilot sequences.” Petition,31, citing Ex.1003,¶263.
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`EW alleges that “[a]nother alternative to generating pilot sequences within
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`communication system 100 … would be to rely on additional network-side
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`structures found in 3G and 2G wireless communications systems at the time.”
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`POR,28-29. However, EW provides only attorney arguments and relies on
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`extrinsic technical documents without expert opinion to support its assertion. See
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`id. EW’s assertions are conclusory.
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`As such, Zhuang175 discloses a single-device “code sequence generator”
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`and thus satisfies this feature even under EW’s narrow claim construction. Since
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`EW does not dispute the cited references’ satisfaction of other features of claims 6-
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`18
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`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`10, claims 6-10 are unpatentable and