` Entered: December 21, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and MICROSOFT
`MOBILE INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01209
`Patent 7,746,916 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
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`IPR2016-01209
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`I. INTRODUCTION
`Apple, Inc., Microsoft Corporation, Microsoft Mobile OY, and
`Microsoft Mobile Inc. (f/k/a Nokia, Inc.) (collectively, “Petitioner”) filed a
`Petition requesting an inter partes review of claims 1–10 of U.S. Patent No.
`7,746,916 B2 (Ex. 1001, “the ’916 patent”). Paper 2 (“Pet.”). Evolved
`Wireless, LLC (“Patent Owner”), the assignee of the ’916 patent, filed a
`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless the information presented in the Petition and any
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Taking into account the information presented, we conclude
`the record establishes there is a reasonable likelihood that Petitioner will
`prevail with respect to at least one of the challenged claims of the ’916
`patent. Accordingly, we institute trial as set forth below.
`A. Related Matters
`The ’916 patent has been asserted in several actions, captioned
`Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542-SLR (D. Del.);
`Evolved Wireless, LLC v. HTC Corp., C.A. 15-cv-543-SLR (D. Del.);
`Evolved Wireless, LLC v. Lenovo Group Ltd., C.A. 15-cv-544-SLR (D.
`Del.); Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-
`545-SLR (D. Del.); Evolved Wireless, LLC v. ZTE Corp., C.A. 15-cv-546-
`SLR (D. Del.); and Evolved Wireless, LLC v. Microsoft Corp., C.A. 15-cv-
`547-SLR (D. Del.). Pet. 1; Paper 5, 2–3.
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`The ’916 patent is also the subject of IPR2016–01208, IPR2016-
`01277, and IPR2016-01280, in which decisions instituting trial on claims 1–
`10 are being issued on the same date as this decision.
`B. The ’916 Patent
`The ’916 patent is titled “Method and Apparatus for Generating and
`Transmitting Code Sequence in a Wireless Communication System.” Ex.
`1001, [54]. According to Patent Owner, “the ’916 Patent claims a method of
`generating a code sequence of a desired length L, by cyclically extending
`and then circularly shifting a code sequence of length X, where the length of
`X is the largest prime number smaller than L.” Prelim. Resp. 5 (citations
`omitted). The Specification states the “code sequence or a code sequence set
`can be applied to 3rd Generation Partnership Project (3GPP) system or
`3GPP2 system as well as a Wibro system or a Wimax system.” Ex. 1001,
`17:22–25. Both parties cite Figure 13, which is reproduced below, as
`illustrating the invention. Pet. 13; Prelim. Resp. 5.
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`Figure 13 of the ’916 patent depicts a code sequence 1301 with a “[r]equired
`sequence length, L”; “CAZAC sequence [1302] with prime length X ≤ L”;
`“[t]runcated CAZAC sequence [1303] length, L” with a padding portion
`added; and “[d]elayed CAZAC sequence [1304] length, L” in which the end
`portion from code sequence 1303 has been circularly shifted to the start of
`code sequence 1304. Ex. 1001, 12:37–49.
`
`C. The ’916 Patent Claims
`Of the challenged claims, claims 1 and 6 are independent. Claims 1
`and 6 recite:
`1. A method for transmitting a code sequence from a transmitting
`party to a receiving party in a wireless communication system,
`the method comprising:
`acquiring a code sequence having a second length by a cyclic
`extension of a code sequence having a first length;
` performing a circular shift to the code sequence having the
`second length; and
`transmitting the circular shifted code sequence having the
`second length to the receiving party,
`wherein the first length is a largest prime number smaller than
`the second length, and
`wherein the cyclic extension of the code sequence having the
`first length is performed such that a part of the code sequence
`having the first length, having a length corresponding to a
`difference between the first length and the second length, is
`added to either a start or an end of the code sequence having
`the first length, and
`wherein the circular shift is performed to the code sequence
`having the second length such that either a rear portion of the
`code sequence having the second length moves to a start of
`the code sequence having the second length, or a front
`portion of the code sequence having the second length moves
`to an end of the code sequence having the second length.
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`6. An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
`a code sequence generator for generating a code sequence
`having a second length by a cyclic extension of a code
`sequence having a first length, and performing a circular shift
`to the code sequence having the second length; and
`a transmitting unit for transmitting the circular shifted code
`sequence having the second length,
`wherein the first length is a largest prime number smaller than
`the second length,
`wherein the cyclic extension of the code sequence having the
`first length is performed such that a part of the code sequence
`having the first length, having a length corresponding to a
`difference between the first length and the second length, is
`added to either the start or an end of the code sequence
`having the first length, and
`wherein the circular shift is performed to the code sequence
`having the second length such that either a rear portion of the
`code sequence having the second length moves to a start of
`the code sequence having the second length, or a front
`portion of the code sequence having the second length moves
`to an end of the code sequence having the second length.
`Ex. 1001, 17:35–57, 18:7–28.
`
`Dependent claims 2 and 7 recite, “the part of the code sequence
`having the first length comprises at least a cyclic prefix or a cyclic postfix.”
`Id. at 17:58–60, 18:29–31.
`Dependent claims 3 and 8 recite, “the cyclic extension is performed
`such that a cyclic postfix of the code sequence having the first length, having
`the length corresponding to the difference between the first length and the
`second length, is added to the end of the code sequence having the first
`length.” Id. at 17:61–66, 18:32–37.
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`Dependent claims 4 and 9 recite, “the code sequence having the first
`length is a Zadoff-Chu (ZC) sequence.” Id. at 18:1–3, 18:38–40.
`Dependent claims 5 and 10 recite, “the code sequence having the
`second length is transmitted as a reference signal sequence.” Id. at 18:3–6,
`18:41–43.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims of the ’916 patent on the following
`grounds of unpatentability. Pet. 3.
`Ground Reference(s)
`
`Basis1
`
`Challenged
`Claims
`1–3, 5–8, and 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Zhuang1752
`
`§ 102(e)
`
`Zhuang175 and Popović3
`
`§ 103(a)
`
`4 and 9
`
`Zhuang175 and Hou4
`
`§ 103(a)
`
`1–3, 5–8, and 10
`
`Zhuang175, Hou, and Popović
`
`§ 103(a)
`
`4 and 9
`
`Zhuang175 and Fukuta5
`
`§ 103(a)
`
`6–8 and 10
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’916 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 Zhuang (US 7,426,175 B2, filed Mar. 30, 2004, issued Sep. 16, 2008) (Ex.
`1012).
`3 Branislav M. Popović, Generalized Chirp-Like Polyphase Sequences with
`Optimum Correlation Properties, 38 IEEE Transactions on Information
`Theory 1406–1409 (1992) (Ex. 1009).
`4 Hou et al. (US 8,116,195 B2, filed July 27, 2005, issued Feb. 14, 2012)
`(Ex. 1011).
`5 Fukuta et al. (US 2007/0270273 A1, published Nov. 22, 2007) (Ex. 1013).
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`Ground Reference(s)
`
`Basis1
`
`Zhuang175, Fukuta, and Popović § 103(a)
`
`6
`
`
`
`Challenged
`Claims
`9
`
`Petitioner asserts that Zhuang175, Hou, and Fukuta are prior art to the
`’916 patent under 35 U.S.C. § 102(e) and Popović is prior art under 35
`U.S.C. § 102(b). Pet. 3–5. Patent Owner does not, at this stage of the
`proceeding, challenge the prior art status of these references. Prelim. Resp.
`10–19.
`
`II. ANALYSIS
`A. Claim Construction
`A claim of an unexpired patent subject to inter partes review receives
`the “broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). We shall construe
`only terms that are in controversy and then only to the extent necessary to
`resolve the controversy. Vivid Technologies, Inc. v. American Science &
`Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the “Claim Construction” section of the Petition, Petitioner
`discusses: (1) “acquiring/generating a code sequence having a second length
`by a cyclic extension of a code sequence having a first length” (claims 1 and
`6); (2) “cyclic prefix” (claims 2 and 7); (3) “cyclic postfix” (claims 2, 3, and
`7); (4) “reference signal sequence” (claims 5 and 10); (5) “a code sequence
`generator” (claim 6); and (6) “a transmitting unit” (claim 6). Pet. 5–11. We
`analyze Petitioner’s claim construction contentions below.
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`Patent Owner argues no claim construction is necessary. The
`Preliminary Response states:
`
`The Petition proposes six terms for construction. Pet. at
`5-11. Patent Owner does not believe any of these six terms
`need to be construed to resolve the present Petition. Patent
`Owner
`reserves
`the
`right
`to
`further challenge
`these
`constructions in the event of Institution, but for now, Patent
`Owner
`contests
`only
`Petitioners’
`construction
`for
`“acquiring/generating a code sequence having a second length
`by a cyclic extension of a code sequence having a first length.”
`Petitioners propose an interpretation contrary to the plain
`meaning of the claim language for the purposes of broadening
`the claims to cover the prior art.
`Prelim. Resp. 23–24.
`1. “acquiring/generating a code sequence having a second length by a
`cyclic extension of a code sequence having a first length” (claims 1
`and 6)
`Petitioner argues:
`the broadest reasonable interpretation (BRI) of the phrase
`“acquiring/generating a code sequence having a second length
`by a cyclic extension of a code sequence having a first length”
`is broad enough to encompass “acquiring/generating a code
`sequence having a second length through execution of one or
`more operations that include performing a cyclic extension of a
`code sequence having a first length.”
`Pet. 5. Thus, Petitioner argues the word “by” in the context of claims 1 and
`6 should be interpreted as expanded to: “through execution of one or more
`operations that include performing.”
`
`In making this argument, Petitioner fails to cite to the claims, the
`specification, or the file history, and does not argue the claims, specification,
`or file history support the proposed interpretation. Pet. 5–6. The only
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`support cited is the “plain and ordinary meaning” based on a general purpose
`dictionary.6 Id.
`
`Patent Owner argues Petitioner’s proposed construction broadens the
`claim language beyond its reasonable meaning. See, e.g., Prelim. Resp. 30.
`Patent Owner does not dispute, at least at this stage of these proceedings,
`that this limitation is disclosed in the cited art. Id. at 9.
`
`Based on this record, we do not adopt the interpretation of this
`limitation argued by Petitioner or otherwise construe this limitation. The
`interpretation argued by Petitioner is not supported by the intrinsic record
`and it is not necessary for us to construe this limitation in order to make this
`decision on institution of trial.
`2. “cyclic prefix” (claims 2 and 7); “cyclic postfix” (claims 2, 3, and
`7); and “reference signal sequence” (claims 5 and 10)
`For the terms “cyclic prefix” (claims 2 and 7), “cyclic postfix” (claims
`2, 3, and 7), and “reference signal sequence” (claims 5 and 10), Petitioner
`contends that, under the broadest reasonable interpretation, these terms are
`“broad enough to encompass” the interpretations offered and those
`interpretations are “consistent” with the specification. Pet. 6–8. Patent
`Owner argues these terms do not need to be construed for purposes of this
`institution decision. Prelim. Resp. 23. And Patent Owner, at least at this
`stage in these proceedings, does not dispute the cited art teaches the
`limitations of the dependent claims in which these terms appear. Id. at 10.
`We believe the meanings of these terms in the context of the claims are
`sufficiently clear at this stage without further interpretation. Based on this
`
`
`6 American Heritage Dictionary of the English Language (4th ed. 2000) (Ex.
`1005).
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`record and, at least for purposes of making this decision to institute, we do
`not construe these terms explicitly.
`3. “a code sequence generator” (claim 6) and “a transmitting unit”
`(claim 6)
`Petitioner argues the terms “a code sequence generator” and “a
`transmitting unit” in claim 6 are not means-plus-function limitations under
`35 U.S.C. § 112(6) and “should be given [their] plain meaning as understood
`under the BRI standard.” Id. at 8–11. The word “means” is not used in
`claim 6. As a result, there is a presumption that the limitations at issue are
`not means-plus-function limitations that should be construed in accordance
`with Section 112, paragraph 6. Williamson v. Citrix Online, LLC, 792 F.3d
`1339, 1349 (Fed. Cir. 2015) (en banc) (“When a claim term lacks the word
`‘means,’ the presumption can be overcome and §112, para. 6 will apply if
`the challenger demonstrates that the claim fails to ‘recite sufficiently definite
`structure’ or else recites ‘function without reciting sufficient structure for
`performing that function.’” (citation omitted)). On the current record, there
`is insufficient persuasive argument or evidence to overcome the
`presumption. Petitioner is not challenging the presumption (Pet. 9, 11) and
`Patent Owner takes no position on this issue other than to state that these
`terms need not be construed (Prelim. Resp. 23). At this stage in this
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`proceeding, we do not construe “a code sequence generator” and “a
`transmitting unit” as means-plus-function limitations.7
`B. Asserted Anticipation of Claims 1–3,
`5–8, and 10 by Zhuang175
`Petitioner challenges claims 1–3, 5–8, and 10 as anticipated by
`Zhuang175. Pet. 3, 15–35. Petitioner relies on paragraphs 222–267 of the
`Declaration of Jonathan Wells, Ph.D. (Ex. 1003) in support of this challenge.
`Id. Patent Owner argues Zhuang175 fails to disclose “performing a circular
`shift to the code sequence having the second length . . . wherein the circular
`shift is performed to the code sequence having the second length such that
`either a rear portion of the code sequence having the second length moves to
`a start of the code sequence having the second length, or a front portion of
`the code sequence having the second length moves to an end of the code
`sequence having the second length,” as recited in independent claims 1 and
`6. Prelim. Resp. 10. Patent Owner does not argue that the art cited in the
`Petition fails to disclose any of the other limitations of claims 1–3, 5–8, and
`10. Id. For the following reasons, we are persuaded, based on the
`information before us, that there is a reasonable likelihood Petitioner will
`prevail in showing anticipation of claims 1–3, 5–8, and 10 by Zhuang175.
`
`
`7 In the related District Court litigations, Petitioner challenged the
`presumption and argued these terms were means-plus-function limitations.
`Pet. 9, 11. Patent Owner argued these terms were not means-plus-function
`limitations. Id. The District Court ruled that Petitioner failed to overcome
`the presumption and that Section 112, paragraph 6, did not apply to these
`limitations. Evolved Wireless, LLC, v. Apple, Inc., Civ. No. 15-542-SLR,
`slip op. at 3–5 (D. Del. Nov. 14, 2016).
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`1. Zhuang175 (Ex. 1012)
`Zhuang175 is titled, “Method and Apparatus for Pilot Signal
`Transmission.” Ex. 1012, [54]. Zhuang175 was cited during prosecution of
`the ’916 patent. Ex. 1001, [56].
`Zhuang175 relates to “a method and apparatus for pilot signal
`transmission in a communication system.” Ex. 1012, 1:7–8. Zhaung175
`states, “[a] pilot signal (or preamble) is commonly used for communication
`systems to enable the receiver to perform a number of critical functions,
`including but not limited to, the acquisition and tracking of timing and
`frequency synchronization. . . .” Id. at 1:11–16. Figure 1 of Zhuang175 is
`reproduced below.
`
`
`Figure 1 of Zhuang175 depicts a communication system 100 with base units
`101 and 102 and remote unit 103. Id. at 2:66–67. Figure 2 of Zhuang175 is
`reproduced below.
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`Figure 2 of Zhuang175 depicts a pilot sequence 201 at the beginning of a
`transmission. Id. at 3:45–46. Figure 3 of Zhaung175 is reproduced below.
`
`
`Figure 3 of Zhuang175 depicts a method of “pilot sequence assignment for
`the communication system. Id. at 2:17–18.
`
`In the Preliminary Response, Patent Owner acknowledges Zhuang175
`discloses:
`[P]ilot sequences are computed by first determining a desired
`pilot length Np, and then selecting a starting sequence of prime
`number length NG and performing modifications. (Ex. 1012 at
`3:64-4:13.) One of two proposed modifications is to “[c]hoose
`NG to be the largest prime number that is 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. 1012 at 4:18-21.)
` “Further
`modifications to the truncated/extended sequences may also be
`applied, such as applying a unitary transform to them.” (Id. at
`1012 at 4:44-46.) Zhuang 175 explains that such unitary
`transformations include “the NG-point DFT/IDFT [Discrete
`Fourier Transform/Inverse Discrete Fourier Transform]
`operation” wherein
`“sequences
`formed
`on
`unitary
`transformations performed on the GCL [Generalized Chirp-
`Like] sequences still fall within the scope of the invention,
`because the final sequences are still constructed from GCL
`sequences. That is, the final sequences are substantially based
`on (but are not necessarily equal to) the GCL sequences.” (Id.
`at 5:35-51.)
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`Zhuang175 also explains that the same pilot sequence
`
`may be assigned to multiple communication units. Once
`assigned, “[h]owever, the actual signals may be the results of
`different functions of the same assigned sequence. Examples of
`the functions applied are circular shifting of the sequence,
`rotating the phase of the sequence elements, etc.” (Ex. 1012 at
`6:25-32).
`Prelim. Resp. 12–13. Patent Owner also acknowledges that the last cited
`passage in Zhuang175 “suggests ‘circular shifting’ of an assigned
`sequence.” Id. at 37.
`2. Claims 1–3, 5–8, and 10
`Petitioner’s argument that Zhuang175 discloses all elements of claims
`1–3, 5–8, and 10 is detailed and supported by citations to the record. Pet.
`15–35. Patent Owner challenges Petitioner’s contention that Zhuang175
`discloses, “performing a circular shift to the code sequence having the
`second length . . . wherein the circular shift is performed to the code
`sequence having the second length such that either a rear portion of the code
`sequence having the second length moves to a start of the code sequence
`having the second length, or a front portion of the code sequence having the
`second length moves to an end of the code sequence having the second
`length,” as recited in independent claims 1 and 6. Prelim. Resp. 10, 34–41.
`As noted above, at this stage in these proceedings, Patent Owner does not
`challenge Petitioner’s contention that Zhuang175 discloses the other
`limitations of claims 1–3, 5–8, and 10. Id.
`Patent Owner argues the Board should exercise its discretion not to
`institute trial on this ground under 35 U.S.C. § 325(d) because Zhaung175
`was the primary reference before the Examiner during prosecution and the
`claims were allowed over Zhaung175. Prelim. Resp. 32–34. Section 325(d)
`
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`provides: “[i]n determining whether to institute or order a proceeding under .
`. . chapter 31 [Inter Partes Review], the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`During prosecution, the Examiner cited column 4, lines 18–21, of
`Zhuang175 as disclosing “circular shifting the generated code sequence
`extended to have the second length.” Ex. 1002, 129. See also Pet. 14,
`Prelim. Resp. 20. Zhuang175, column 4, lines 18–21, states, “[c]hoose NG
`to be the largest prime number that is 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.” The patentee’s argument
`in response to the rejection was narrowly directed to this cited passage in
`Zhuang175. Ex. 1002, 119–120 (“In the above-cited portion (i.e., col. 4,
`lines 18-21), Zhuang[175] discloses . . .”). See also Prelim. Resp. 22 (“The
`inventors further explained that the cited portions of Zhuang175 did not in
`fact disclose circularly shifting the generated code sequence . . .”). There is
`no indication in the file history that either the Examiner or the patentee
`appreciated or considered that other portions of Zhuang175 expressly
`disclose circular shifting. See Pet. 14, Prelim. Resp. 34–35. Zhuang175 at
`column 6, lines 30–31, states, “the actual signals may be the results of
`different functions of the same assigned sequence. Examples of the
`functions applied are circular shifting of the sequence . . .” and, in claim 16,
`column 12, lines 20–24, states, “the second pilot sequence is based on a
`function of the first sequence and wherein the function of the first sequence
`is based on at least one of circular shifting of the first sequence and rotating
`the phase of elements of the first sequence.” Because the disclosure of
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`circular shifting in Zhuang175 appears not to have been adequately
`appreciated or considered during prosecution of the ’916 patent, we do not
`exercise the discretion granted under 35 U.S.C. § 325(d) to deny institution
`of trial.
`Patent Owner also argues that Zhuang175 “does not disclose the
`claimed ‘circular shift.’” Prelim. Resp. 34–41 (emphasis added). In making
`this argument, Patent Owner relies on the limitations in the last “wherein”
`clauses of claims 1 and 6, which recite “wherein the circular shift is
`performed to the code sequence having the second length such that either a
`rear portion of the code sequence having the second length movers to a start
`of the code sequence having the second length, or a front portion of the code
`sequence having the second length moves to an end of the code sequence
`having the second length.” Id. Petitioner relies on the passages in column 6
`(Ex. 1012, 6:18–32) and in claim 16 (id. at 12:20–24) of Zhuang175 as
`disclosing the circular shift recited in claims 1 and 6 of the ’916 patent. Pet.
`24–25, 34. See, also, Ex. 1003 (Wells Declaration) ¶¶ 246–249. Petitioner
`also cites a technical dictionary definition, which describes a circular shift
`as, “[a] computer shift in which the digits dropped off at one end of a word
`are returned at the other end of the word.” Pet. 25 (citing McGraw-Hill
`Dictionary of Scientific and Technical Terms (6th ed. 2003) (Ex. 1014 at
`396, 534)). We have considered the arguments of Petitioner and Patent
`Owner and, at least at this stage of this proceeding, Petitioner identifies
`sufficient evidence that Zhuang175 discloses the claimed circular shift.
`Therefore, on the record before us, we find that the information presented
`shows that there is a reasonable likelihood that Petitioner will prevail in
`showing that claims 1–3, 5–8, and 10 are anticipated by Zhuang175.
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`C. Asserted Obviousness of Claims 4 and 9 Over
`Zhuang175 and Popović
`Petitioner asserts that the subject matter of claims 4 and 9 of the ’916
`
`patent would have been rendered obvious by the combined disclosures of
`Zhuang175 and Popović. Pet. 3, 35–39.
`1. Popović (Ex. 1009)
`Popović is titled, “Generalized Chirp-Like [GCL] Polyphase
`Sequences with Optimum Correlation Properties.” Ex. 1009, 1406. Popović
`is an article from IEEE Transactions on Information Theory dated July,
`1992. Id. Popović was not cited during prosecution of the ’916 patent. Ex.
`1001, [56].
`Popović relates to “[a] new general class of polyphase sequences with
`ideal periodic autocorrelation function.” Ex. 1009, 1406 (Abstract).
`Popović states, “[t]he new class of sequences is based on the application of
`Zadoff-Chu polyphase sequences.” Id. Popović also states, “it was shown
`that all the cyclic time shifted versions of the Zadoff-Chu sequences have
`the same absolute value of the aperiodic autocorrelation function.” Id. at
`1409.
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`Thus, Popović recommends the use of Zadoff-Chu sequences and
`specifically discloses cyclic or circular shifted Zadoff-Chu sequences.
`2. Claims 4 and 9
`Claims 4 and 9 of the ’916 patent recite, “wherein the code sequence
`having the first length is a Zadoff-Chu sequence.” Ex. 1001, 18:1–3, 38–40.
`Petitioner provides a detailed and supported argument that Zhuang175 and
`Popović teach the limitation in claims 4 and 9. Pet. 35–39. Petitioner also
`articulates reasoning with rational underpinnings for combining the relevant
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`teachings of the references (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`418 (2007)). Id.
`Patent Owner argues Petitioner has failed to show how combining
`Popović with Zhuang175 renders obvious, “wherein the code sequence
`having the first length is a Zadoff-Chu sequence,” as recited in claims 4 and
`9. Prelim. Resp. 48–52. Specifically, Patent Owner argues, “[t]he Petition,
`however, fails to make a prima facie case of obviousness because the
`Petition does not establish a motivation to combine Popović with Zhuang175
`or its combinations.” Id. at 48. With regard to motivation to combine
`Popović’s teachings related to the use of Zadoff-Chu sequences (Ex. 1009,
`1406) with Zhuang175’s teachings related to the use of GCL sequences (Ex.
`1012, 2:30–53, 5:9–6:14, 6:43–7:8, 8:52–67, 9:33–59 (claim 1), 10:28–
`11:29 (claims 8–10), 11:36–61 (claim 13), 12:4–34 (claim 16), 12:46–51
`(claims 19 and 21), 12:57–67 (claim 23, 13: 16–14:18 (claim 28)), the
`Petition states:
`A [person of ordinary skill in the art] would have been
`motivated to choose the ZC sequences over the GCL sequences
`in practical systems because the ZC sequences provide the same
`optimal auto- and cross-correlation properties (i.e.,
`the
`properties of interest in Zhuang175) as GCL sequences while
`requiring less computations in generation by not performing the
`multiplications with the sequence {bk} of complex numbers
`required to generate the GCL sequences. Such computational
`advantages can, for example, decrease the loads on the
`processing units that generate the sequences, thereby resulting
`in power savings, which are particularly important for mobile
`devices for uplink communications. See Wells Declaration [Ex.
`1003], ¶ 276. Accordingly, the code sequences having the first
`length could have been a ZC sequence in view of the combined
`teachings of Zhuang175 and Popovic. See Wells Declaration
`[Ex. 1003], ¶¶ 268-277.
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`Pet. 39. Petitioner has shown an adequate reason to combine the teachings
`of Popović and Zhuang175.
`On the record before us, Petitioner has established a reasonable
`likelihood that the subject matter of claims 4 and 9 would have been obvious
`over Zhuang175 and Popović.
`D. Asserted Obviousness of Claims 1–3, 5–8, and 10 Over
`Zhuang175 and Hou
`Petitioner asserts that the subject matter of claims 1–3, 5–8, and 10 of
`the ’916 patent would have been rendered obvious by the combined
`disclosures of Zhuang175 and Hou. Pet. 3, 39–51.
`1. Hou (Ex. 1011)
`Hou is titled, “Transmission and Reception of Reference Preamble
`Signals in OFDMA or OFDM Communication Systems.” Ex. 1011, [54].
`Hou relates to “[t]echniques for generating preamble sequences for OFDM
`and OFDMA communication systems based on CAZAC sequences with
`desired properties of constant amplitudes (CA) and zero autocorrelation
`(ZAC).” Id. at [57] (Abstract). Hou states, “[w]ell-known examples of
`CAZAC sequences include Chu and Frank-Zadoff sequences.” Id. at 3:39–
`40. Hou explains that if a particular sequence “is a CAZAC sequence in the
`frequency domain, then its corresponding time-domain sequence is also a
`CAZAC sequence” and “the desired properties of the constant-amplitude
`and zero-auto-correlation of CAZAC sequence are preserved in both time
`and frequency domain.” Id. at 5:12–14, 65–67. Figures 2A and 2B of Hou
`are reproduced below.
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`Figure 2A (top) of Hou depicts “an example of using the cyclic shift of
`initial CAZAC sequence in the frequency domain to generate two new initial
`CAZAC sequences in the frequency domain,” and Figure 2B of Hou depicts
`“an example of using the cyclic shift of the preamble sequence in the time
`domain to generate two new preamble sequences in the time domain.” Id. at
`3:11–17.
`2. Claims 1–3, 5–8, and 10
`Petitioner provides a detailed and supported argument that Zhuang175
`and Hou teach all the limitations of claims 1–3, 5–8, and 10 and articulates
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`reasoning with rational underpinnings for combining the teachings of these
`references. Pet. 39–51. Although recognizing that Hou contains teachings
`relating to the use of circular shift (Prelim. Resp. 14–16, 41–42), Patent
`Owner relies on its argument related to the alleged failure of Zhuang175 to
`disclose the circular shift limitations in claims 1 and 6, which we discussed
`above. Id. at 41–42. For the reasons stated above with regard to Zhaung175
`and for the additional reasons provided in the Petition with regard to Hou
`(Pet. 39–51), Petitioner has established a reasonable likelihood of showing
`all the limitations of claims 1–3, 5–8, and 10 are taught or suggested by
`Zhuang175 and Hou.
`E. Asserted Obviousness of Claims 4 and 9 Over
`Zhuang175, Hou, and Popović
`Petitioner asserts that the subject matter of claims 4 and 9 of the ’916
`patent would have been rendered obvious by the combined disclosures of
`Zhuang175, Hou, and Popović. Pet. 3, 51–52. Patent Owner relies on
`arguments discussed above in opposing this assertion. Prelim. Resp. 41–42,
`48–52. On the record before us and for the reasons given in the Petition and
`explained above in connection with the previously discussed grounds,
`Petitioner has established a reasonable likelihood that claims 4 and 9 would
`have been obvious over Zhuang175, Hou, and Popović.
`F. Asserted Obviousness of Claims 6–8, and 10 Over
`Zhuang175 and Fukuta
`Petitioner asserts that the subject matter of claims 6–8 and 10 of the
`’916 patent would have been rendered obvious by the combined di