`
`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
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`1 IPR2016-01280 has been consolidated with this proceeding.
`
`

`

`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 
`
`
`
`
`
`
`
`i
`
`

`

`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
`
`APPLE-1019
`
`APPLE-1020
`
`APPLE-1021
`
`APPLE-1022
`
`APPLE-1023
`
`APPLE-1024
`
`APPLE-1025
`
`APPLE-1026
`APPLE-1027
`APPLE-1028
`
`APPLE-1029
`
`
`
`

`

`APPLE-1030
`APPLE-1031
`
`APPLE-1032
`
`APPLE-1033
`
`APPLE-1034
`
`APPLE-1035
`
`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
`
`
`
`iv
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`
`I.
`
`Introduction
`Petitioners submit this Reply to Evolved Wireless’s (“EW’s”) Response
`
`(Paper 14) (“POR”). EW no longer contests the validity of method claims 1-5, and,
`
`therefore, these claims should be canceled. POR,2. EW only addresses the validity
`
`of apparatus claims 6-10, which recite the same operations as in method claims 1-
`
`5.
`
`In essence, EW argues that claims 6-10 are valid because they recite an
`
`apparatus, despite the apparatus performing known methods. Specifically, EW’s
`
`entire case rests largely on an improper claim construction of the phrase “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.” Attempting to evade
`
`prior art, EW seeks to narrow the broadest reasonable construction of this phrase
`
`by advancing a purported plain meaning that finds no mooring in either the
`
`intrinsic record or the new extrinsic evidence introduced by EW in its POR.
`
`As set forth below, EW’s construction burdens the plain meaning by limiting
`
`the structures that implement the recited mathematical “generating” operation to a
`
`“single device,” expressly excluding implementations involving multiple devices.
`
`Yet, the extrinsic dictionary definitions EW advances fail to include such
`
`implementation-specific narrowing language, and at least one other science
`
`
`
`1
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`dictionary directly refutes the contention that a “generator” must necessarily be
`
`limited to single device implementations. Additionally, the intrinsic record fails to
`
`include an express disclaimer or clear disavowal of claim scope that would
`
`mandate a narrowing of the plain and ordinary meaning of the term “generator” to
`
`implementations involving only a single device. Indeed, nothing in the intrinsic
`
`record suggests that a single device implementation of the recited “code sequence
`
`generator” is of any consequence to the invention. The Board should, therefore,
`
`dismiss EW’s arguments as not credible.
`
`EW provides no expert testimony, leaving only unsupported attorney
`
`argument that reflects a flawed understanding of the prior art references and the
`
`arguments advanced in the Petition. As explained in greater detail herein, EW’s
`
`arguments should be dismissed.
`
`II. Claim Construction
`To manufacture patentability, EW attempts to make issues of claim
`
`construction where there are none. Claims receive their “broadest reasonable
`
`construction” in an IPR, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`
`(2016); 37 C.F.R. § 42.100(b). “The words of a claim are generally given their
`
`ordinary and customary meaning as understood by a person of ordinary skill in the
`
`art when read in the context of the specification and prosecution history.” Thorner
`
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “There
`
`
`
`2
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`are only two exceptions to this general rule: 1) when a patentee sets out a definition
`
`and acts as his own lexicographer, or 2) when the patentee disavows the full scope
`
`of a claim term either in the specification or during prosecution.” Id. “A
`
`disclaimer or disavowal of claim scope must be clear and unmistakable, requiring
`
`‘words or expressions of manifest exclusion or restriction’ in the intrinsic record.”
`
`Unwired Planet, LLC, v. Apple Inc., 829 F. 3d 1353, 1358 (Fed. Cir. 2016).
`
`Given its absence from the intrinsic record, EW is unable to identify any
`
`express definition or clear disavowal that mandates departure from the general
`
`rule. Instead, EW advances constructions that either contort the ordinary meaning
`
`by importing limitations not found in proffered dictionary definitions (“a code
`
`sequence generator” feature) or depart from the ordinary meaning by improperly
`
`importing limitations from the ‘916 Patent’s preferred embodiments into the claims
`
`(“generating a code sequence” feature).
`
`The Applicants of the ‘916 Patent have intentionally drafted their apparatus
`
`claims using the most generic terminology – “unit,” “device,” “generator,” and
`
`“by.” Indeed, this type of broad language used for claim elements that recite
`
`conventional structures and functionality, rather than the point of novelty, does not
`
`find its way into the claim by some random process. Patent prosecutors go broad
`
`for those portions of the claim so that future defendants cannot practice the heart of
`
`the invention and yet avoid infringement by employing some alternate
`
`
`
`3
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`conventional structure not covered by the claim language. This is really just a
`
`morality play – the Applicants chose to use broad claim language, and they should
`
`be held to it. EW now wants to undo this earlier decision to pursue broad coverage
`
`through use of the terms. But the proper avenue for this is a claim amendment, and
`
`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
`
`module or digital circuit (or combination thereof) within a single device,” not to
`
`“encompass hardware or software logic found across multiple devices.” POR,15
`
`(emphasis added). The requirement that the recited generator be a “single” device
`
`plays a pivotal role in EW’s arguments to attempt to distinguish the cited prior art,
`
`and yet neither the intrinsic evidence nor the extrinsic evidence supports such a
`
`narrow reading of this term.
`
`Perhaps recognizing the lack of supporting intrinsic evidence, EW first relies
`
`upon selected extrinsic dictionary definitions of “generator” to support its narrow
`
`construction. EW’s selected dictionary definitions, however, fail to specify the
`
`“single” requirement. While they use the word “a device” or “a circuit,” they fail to
`
`use words like “single,” and they instead choose to embellish definitions by adding
`
`“discrete” and “within a single device” nowhere found in the definitions. POR,15.
`
`
`
`4
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`Indeed, in this context, the term “circuit” is defined as “a system of
`
`electrically connected parts or devices.” Ex.1035. This definition makes clear that
`
`a circuit is broad enough to encompass multiple devices, unlike EW’s construed
`
`limitation that prohibits the recited “code sequence generator” from
`
`“encompass[ing] hardware or software logic found across multiple devices,”
`
`POR,16.
`
`As such, contrary to EW’s proposal, the ordinary meaning of the recited
`
`“code sequence generator” encompasses any number of devices that implement the
`
`mathematical “generating” operation. Since this feature is merely a rewriting of a
`
`“generating” operation into a noun form, this feature is properly construed as
`
`encompassing any hardware and/or software logic able to perform the recited
`
`mathematical operation of “generating,” irrespective of implementation-specific
`
`details such as the number of devices used to implement the hardware and/or
`
`software.
`
`Moreover, EW’s “single device” restriction is not mandated by the intrinsic
`
`evidence, which contains no definition or a clear disavowal of claim scope for this
`
`term. Indeed, nor any suggestion that a single device implementation of the recited
`
`“code sequence generator” is critical to the invention. Contrarily, the intrinsic
`
`evidence is actually inconsistent with EW’s construction proposal.
`
`
`
`5
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`EW asserts the “code sequence generator” is restricted to a single device by:
`
`(i) assuming “code sequence generator” to mean “sequence selection unit” and
`
`then (ii) proffering a dictionary definition of “unit.” POR,16. First, the claims do
`
`not recite a sequence selection unit. In fact, the very claims in which EW is
`
`attempting to import this limitation (i.e., claims 6-10) recite the term “unit” in a
`
`distinct phrase “transmitting unit” (emphasis added). Second, EW’s dictionary
`
`definition of “unit” never refers to a single device. Finally, the specification plainly
`
`rejects the “single device” restriction because it actually describes a “unit” as
`
`encompassing multiple devices—a fact EW omits from its response. As shown
`
`below, FIG.17 of the ‘916 Patent depicts a code sequence generation unit (“basic
`
`code sequence generation unit 1701”) that includes multiple, interoperating units
`
`(“a code sequence generation unit 1701 a,” and “a circular shift application
`
`unit 1701 b”).
`
`
`
`6
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`
`
`
`The ‘916 Patent, FIG.17 (highlighted)
`
`Therefore, the Board should reject EW’s overly narrow interpretation of “a
`
`code sequence generator” as limited to a single device because such an interpretation
`
`does not capture the full breadth of the ordinary meaning and the intrinsic evidence
`
`fails to mandate a departure from that ordinary meaning.
`
`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
`
`
`
`reading of the term “by” in the above mathematical “generating” feature to instead
`
`be “only by,” thereby excluding any “additional, intermediate operations—such as
`
`
`
`7
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`a Fourier transform—between a cyclic extension and circular shift operation.”2
`
`POR,16. Consistent with Thorner, Unwired Planet, and In re Bigio, however, this
`
`phrase should not be narrowed beyond its ordinary meaning as advocated in the
`
`Petition because that ordinary meaning is consistent with the ‘916 Patent
`
`specification and prosecution history, which, notably, lack any express definition
`
`or clear disavowal of claim scope for this claim term.
`
`
`
`As noted in the Petition, the plain and ordinary meaning of “by” in the
`
`mathematical “generating” feature is open-ended, merely requiring “with the use or
`
`help of, through.” Petition,5. This ordinary meaning is consistent with the ‘916
`
`Patent specification, which only discloses embodiments where the code sequence
`
`having a second length is generated “with the use or help of, through” extending a
`
`code sequence having a first length. Not surprisingly, EW failed to identify a
`
`
`2 Perhaps recognizing that its construction proposal is tantamount to improperly
`
`amending the “generating” feature to add the word “only” in front of “by,” EW
`
`goes to Herculean efforts to avoid characterizing its claim construction proposal as
`
`merely changing the word “by” to “only by.” POR,16. Nevertheless, EW’s
`
`express exclusion of “additional, intermediate operations” from the scope of the
`
`“generating” feature limits the claim in exactly the same way as changing the word
`
`“by” to “only by.”
`
`
`
`8
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`redefinition of “by” from “with the use or help of, through” to “only with the use or
`
`help of, only through.” EW also failed to identify any portion of the ‘916 Patent’s
`
`prosecution history as being inconsistent with this plain and ordinary meaning.
`
`
`
`Instead, EW relies on its assertion that all embodiments of the ‘916 Patent
`
`disclose generating a code sequence having a second length only by cyclically
`
`extending a code sequence having a first length to support its claim construction
`
`proposal. POR,18. But the Federal Circuit has repeatedly found such disclosure
`
`insufficient to rise to the level of a clear disavowal of claim scope. See Thorner at
`
`1366-7 (“It is likewise not enough that the only embodiments, or all of the
`
`embodiments, contain a particular limitation. We do not read limitations from the
`
`specification into claims; we do not redefine words... To constitute disclaimer,
`
`there must be a clear and unmistakable disclaimer” (emphasis added)). See also In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004), (“We have
`
`cautioned against reading limitations into a claim from the preferred embodiment
`
`described in the specification, even if it is the only embodiment described, absent
`
`clear disclaimer in the specification.”). And this stands to reason, as the
`
`specification examples are merely exemplary. Ex. 1001,2:43-47.
`
`
`
`In re Bigio further supports the conclusion that EW’s narrowing of the
`
`“generating” feature is unreasonable. The Court in In re Bigio counsels the PTO to
`
`“avoid the temptation to limit broad claim terms solely on the basis of specification
`
`
`
`9
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`passages,” and notes that “[a]bsent language carrying a narrow meaning, the PTO
`
`should only limit the claim based on the specification or prosecution history when
`
`those sources expressly disclaim the broader definition.” See 381 F.3d 1320, 1325
`
`(Fed. Cir. 2004). In In re Bigio, the Federal Circuit refused to accept PO’s
`
`narrowing the claim term “hair brush” by adding the word “scalp” from passages
`
`of the specification. Similarly, the Board should refuse to accept EW’s narrowing
`
`the recited “generating” feature by adding the word “only” in front of the word
`
`“by” based on passages from the specification, when the specification and
`
`prosecution history do not clearly disclaim the broader definition.
`
`
`
`As mentioned, the ‘916 Patent’s express disclosure itself further discourages
`
`such narrowing. The ‘916 Patent allows “various modifications and variations” to
`
`be made to the disclosed embodiments and further declares that “the present
`
`invention covers the modifications and variations of this invention provided they
`
`come within the scope of the appended claims and their equivalents.”
`
`Ex.1001,17:26-32. The claim terms chosen by EW only recite that a code
`
`sequence having a second length is generated “by,” but not “only by,” cyclically
`
`extending a code sequence having a first length. Ex.1001,claim 6. Thus, the
`
`claims, as written, define a broad scope. Performing an operation, such as an IFFT,
`
`in addition to cyclic extension is a modification or variation of the disclosed
`
`embodiment that “come within the scope of the [] claims.” See id.
`
`
`
`10
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`EW uses an analogy to support its assertion that the Petitioner’s construction
`
`
`
`is unreasonably broad because it could encompass an additional operation that
`
`“would change the meaning of the sentence.” POR,20. Both the PO’s assertion and
`
`the analogy upon which it is premised are flawed.
`
`
`
`First, the PO’s assertion assumes, without justification, that the claims have
`
`some presupposed meaning distinct from the plain and ordinary meaning of the
`
`claim language (i.e., that the generating step is narrowly limited to the recited
`
`cyclic extension and precludes any additional steps in the generation of the code
`
`sequence). As noted previously, there is no clear disavowal or express redefinition
`
`in the ‘916 Patent or its prosecution history that would mandate departure from the
`
`plain meaning. And certainly nothing exists in the intrinsic record that would
`
`justify importing the word “only” in front of “by,” as advocated by EW. See
`
`generally Ex.1001, Ex.1002.
`
`Moreover, the PO’s analogy does not support its position. EW states that
`
`“‘by’ is open-ended to allow for additional modifiers (e.g., we came by car), but
`
`not modifiers that would change the meaning of the sentence (e.g., we came by the
`
`back road, and then circled back around to take the highway).” POR,20. EW
`
`contends that if “we came by the back road, and then circled back around to take
`
`the highway,” the meaning of “come by the back road” would be changed simply
`
`because we also came “by the highway.” Id. This is plainly not true. We arrived at
`
`
`
`11
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`the destination both “by the back road” and “by the highway” because the path to
`
`the destination went through both the back road and the highway. The circling
`
`back does not undo the fact that the path to arrive at the destination still went
`
`through the back road and, hence, was “by the back road.”
`
`
`
`EW’s analogy is further deficient because EW has failed to explain why the
`
`additional IFFT operation disclosed by Fukuta corresponds to a “circling back.”
`
`After all, the additional IFFT operation is also used to generate the code sequence
`
`having a second length and does not reverse or otherwise undo the prior cyclic
`
`extension operation. Thus, “generating a code sequence having a second length”
`
`still went through a cyclic extension, and, hence, was “by a cyclic extension,”
`
`without changing the alleged meaning of this feature in a manner equivalent to a
`
`“circling back.” As such, even if EW’s different meaning of the “generating” feature
`
`were coherent and correct (which it is not), it is unclear how this different meaning
`
`would exclude those intermediary operations, such as Fukuta’s IFFT operation, that
`
`are not equivalent to a “circling back” of the cyclic extension operation.
`
`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
`
`limitation “single” finds no support in either intrinsic or extrinsic evidence. The
`
`broadest reasonable construction of this term encompasses various
`
`
`
`12
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`hardware/software implementations, including hardware/software found across
`
`multiple devices.
`
`Under the correct construction, Zhuang175 satisfies this feature by
`
`inherently disclosing a code sequence generator that both cyclically extends and
`
`circularly shifts code sequences because of Zhuang175’s disclosure of the recited
`
`operations of cyclic extension and circular shift. Petition,28-33. While admitting
`
`that Zhuang175 indeed discloses “circular shifting by the base units once pilot
`
`sequences are assigned to them,” EW faults Zhuang175 by alleging that
`
`Zhuang175 “does not explain where or how the pilot sequences are generated prior
`
`to their assignment to the base units.” POR,27. EW’s criticism of Zhuang175 is
`
`misplaced.
`
`Not only does Zhuang175 specifically identify a component (i.e., a base
`
`unit) that circularly shifts code sequences, but Zhuang175 also necessarily
`
`contemplates a component that cyclically extends the sequence in the manner
`
`disclosed in Zhuang175. Petition,28-33, 20-22. The component that generates the
`
`cyclically extended sequence is inherent in Zhuang175’s disclosure by virtue of
`
`Zhuang175’s disclosure of a process that cyclically extends the code sequence by
`
`the method disclosed in Zhuang175. Petition,20-22; Ex.1012, 4:10-21. The method
`
`disclosed in Zhuang175 satisfies the recited “generating” method, a fact not
`
`disputed by EW and further evident from EW’s concession of the validity of
`
`
`
`13
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`method claims 1-5 that recite the very same operations. Petition,2. Because
`
`Zhuang175 discloses the operation of both cyclically extending and circularly
`
`shifting the code sequence, Zhuang175 envisions a generator including a cyclic
`
`extension component, irrespective of where the cyclic extension component is
`
`located (i.e., in system 100 or elsewhere), that generates the cyclically extended
`
`sequence and sends that sequence to a base unit (assuming arguendo the cyclic
`
`extension component is not part of the base unit) and the base unit then performs
`
`the cyclic shifting on the cyclically extended sequence. Petition,29-30;
`
`Ex.1012,4:44-46, 6:18-32; claim 16.
`
`This cyclic extension component and the base unit together constitute the
`
`recited code sequence generator. After all, without such a cyclic extension
`
`component, Zhuang175’s system would be unable to perform its disclosed
`
`function, specifically the function of cyclical extension to which Zhuang175
`
`dedicates an entire section entitled “Construction of a Set of Pilot Sequences to
`
`Use within a Communication System” and goes into great length in describing.
`
`Ex.1012,4:56-6:14, 8:53-61. Thus, this cyclic extension component is inherently
`
`disclosed by Zhuang175 because it “necessarily flows from the teachings of the
`
`applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter.
`
`1990). Accordingly, a code sequence generator that both cyclically extends and
`
`circularly shifts code sequences is also inherently disclosed by Zhuang175.
`
`
`
`14
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`Since EW does not dispute the cited references’ satisfaction of features other
`
`than the “code sequence generator” feature of claims 6-10, claims 6-10 are
`
`unpatentable and should, therefore, be canceled. Petition,Grounds-1-4.
`
`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
`
`that the “code sequence generator” must be a single device, Zhuang175 discloses a
`
`single “base station” that includes multiple “base units,” which constitutes the
`
`recited “code sequence generator” that performs the functions of “generating a
`
`code sequence having a second length by cyclic extension …, and performing a
`
`circular shift to the code sequence having the second length.” Petition,29-32;
`
`Ex.1012,2:66-3:13.
`
`Such a reading of Zhuang175 is supported not only by Dr. Wells’s detailed
`
`analysis in his declaration, but also his unequivocal deposition testimony. See
`
`Ex.1003,¶¶258-265; Ex.2006,27:2-28:17.
`
`Ex.2006, 27:2-5 (highlighted).
`
`
`
`15
`
`
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`Moreover, Dr. Wells repeatedly denied EW’s leading questions that a
`
`POSITA would have concluded that Zhuang175 contemplates code sequences
`
`being generated offline and then loaded onto the base units of Zhuang175’s
`
`system:
`
`Ex.2006, 27:13-20 (highlighted).
`
`
`
`16
`
`
`
`
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`
`Ex.2006,28:1-9 (highlighted).
`
`Yet, EW chooses to ignore Dr. Wells’s repeated denials, instead relying on a
`
`general notion, which Dr. Wells specifically denied as being applicable to
`
`Zhuang175, that the cyclically extended code sequences could be generated
`
`“offline” and then loaded onto the base units. POR,28; Ex.2006, 28:10-17:
`
`
`
`Ex.2006,28:10-17 (highlighted).
`
`Dr. Wells based this denial on the fact that Zhuang175’s system is disclosed
`
`as performing the noted functions, including the generation function (the
`
`elaborated process of “construction of [] pilot sequence”), and yet the
`
`communication system 100, as shown in FIG.1, is shown to only include base
`
`units. Ex.1012,FIG.1, 3:13-17, 4:56-6:14; Ex.1003,¶¶258-263. If other units were
`
`involved in the code sequence generation (which is a critical element of the
`
`Zhuang175 invention evident from the specification and claims), the other units
`
`
`
`17
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`would have been shown. Ex.1012,4:10-6:14, claims 10, 16, 20&28.
`
`Moreover, as Dr. Wells noted, the way that Zhuang175’s system generates
`
`the code sequence by itself rather than being loaded to the base unit from an
`
`external source is “very reasonable.” Ex.2006,28:16-17. Indeed, “[configuring the
`
`base station to generate the pilot sequence rather than performing a look-up of pre-
`
`stored, fixed sequences] would have at least reduced the size of the memory
`
`required by a base station by eliminating the need of storing a large number of
`
`possible pilot sequences for the look-up.” Petition,31, citing Ex.1003,¶263.
`
`“Additionally, generating the pilot sequences at the base station as needed on the
`
`fly may also be more computationally efficient compared to the alternative where
`
`the base station “selects” the pilot sequences.” Petition,31, citing Ex.1003,¶263.
`
`
`
`EW alleges that “[a]nother alternative to generating pilot sequences within
`
`communication system 100 … would be to rely on additional network-side
`
`structures found in 3G and 2G wireless communications systems at the time.”
`
`POR,28-29. However, EW provides only attorney arguments and relies on
`
`extrinsic technical documents without expert opinion to support its assertion. See
`
`id. EW’s assertions are conclusory.
`
`As such, Zhuang175 discloses a single-device “code sequence generator”
`
`and thus satisfies this feature even under EW’s narrow claim construction. Since
`
`EW does not dispute the cited references’ satisfaction of other features of claims 6-
`
`
`
`18
`
`

`

`Proceeding No.: IPR2016-01209
`Attorney Docket: 00035-0006IP2
`10, claims 6-10 are unpatentable and