UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) Inc.,
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,746,916
`
`Case No. IPR2016-01277
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices Under 37 C.F.R § 42.8(A)(1) ..........................................1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)............................1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .....................................1
`C.
`Lead And Back-Up Counsel And Service Information ........................2
`Payment Of Fees – 37 C.F.R. § 42.103...........................................................2
`II.
`III. Requirements For IPR Under 37 C.F.R. § 42.104 ..........................................3
`A.
`Grounds for Standing Under 37 C.F.R. § 42.104(a).............................3
`B.
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested............3
`C.
`Claim Construction under 37 C.F.R. § 42.104(b)(3) ............................4
`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)...........................................................................5
`“cyclic prefix” (claims 2 and 7)..................................................6
`2.
`“cyclic postfix” (claims 2, 3 and 7) ............................................7
`3.
`“reference signal sequence” (claims 5 and 10)...........................8
`4.
`“a code sequence generator” (claim 6) .......................................8
`5.
`“a transmitting unit” (claim 6) ..................................................11
`6.
`Summary Of The ‘916 Patent........................................................................12
`A.
`Brief Description .................................................................................12
`B.
`Summary of the Prosecution History ..................................................14
`V. Manner Of Applying Cited Prior Art To Every Claim For Which An IPR Is
`Requested, Thus Establishing A Reasonable Likelihood That At Least One
`Claim Of The ‘916 Patent Is Unpatentable ...................................................15
`A.
`Ground 1a: Zhuang327 anticipates claims 1-3, 5-8, and 10 ...............15
`1.
`Zhuang327 anticipates claim 1 .................................................18
`2.
`Zhuang327 anticipates claim 2 .................................................28
`3.
`Zhuang327 anticipates claim 3 .................................................28
`4.
`Zhuang327 anticipates claim 5 .................................................29
`
`IV.
`
`i
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`B.
`C.
`
`Zhuang327 anticipates claim 6 .................................................29
`5.
`Zhuang327 anticipates claim 7 .................................................35
`6.
`Zhuang327 anticipates claim 8 .................................................35
`7.
`Zhuang327 anticipates claim 10 ...............................................35
`8.
`Ground 1b: Zhuang327 renders obvious claims 6-8 and 10...............35
`Ground 1c: Zhuang327 in view of Popovic renders claims 4 and 9
`obvious ................................................................................................42
`Ground 2a: Zhuang327 in view of Hou renders obvious claims 1-3, 5-
`8, and 10 ..............................................................................................45
`1.
`Zhuang327 in view of Hou renders obvious claim 1................48
`2.
`Zhuang327 in view of Hou renders obvious claim 2................59
`3.
`Zhuang327 in view of Hou renders obvious claim 3................59
`4.
`Zhuang327 in view of Hou renders obvious claim 5................59
`5.
`Zhuang327 in view of Hou renders obvious claim 6................60
`6.
`Zhuang327 in view of Hou renders obvious claim 7................65
`7.
`Zhuang327 in view of Hou renders obvious claim 8................65
`8.
`Zhuang327 in view of Hou renders obvious claim 10..............66
`Ground 2b: Zhuang327 in view of Hou and Popovic renders claims 4
`and 9 obvious.......................................................................................66
`VI. Redundancy ...................................................................................................67
`VII. Conclusion .....................................................................................................68
`
`D.
`
`E.
`
`ii
`
`

`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`IPR of U.S. Patent No. 7,746,916
`
`EXHIBITS
`
`U.S. Patent No. 7,746,916 to Han, et al. (“the ‘916 patent”)
`
`Excerpts from the Prosecution History of the ‘916 Patent (“the
`Prosecution History”)
`
`Declaration of Jonathan Wells
`
`Curriculum Vitae of Jonathan Wells
`
`Definitions of terms “acquire,” “generate” and “by” in 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. (“Zhuang327”)
`
`Excerpts from the Prosecution History of Zhuang327
`
`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 of IEEE
`
`U.S. Patent No. 8,116,195 to Hou et al. (“Hou”)
`
`U.S. Patent No. 7,426,175 to Zhuang et al. (“Zhuang175”)
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`N. Abramson, “THE ALOHA SYSTEM—Another alternative
`for computer communications,” Proceedings of the Fall Joint
`Computer Conference, pp. 281-5, Nov. 1970
`
`iii
`
`

`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`IPR of U.S. Patent No. 7,746,916
`
`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-
`542SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-
`SLRSRF, 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-
`SLRSRF, 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” (“IEEE802.162004”)
`
`Declaration of Mr. David Ringle for IEEE802.16-2004
`
`U.S. Patent No. 7,400,573 to Sundstrom et al. (“Sundstrom”)
`
`iv
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`Ex. 1028
`
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`“Joint Claim Construction Statement,” filed on May 17th, 2016,
`from Case Nos. 15-542-SLR-SRF, 15-543-SLR-SRF, 15-
`544SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF, 15-547-
`SLRSRF filed in N.D. Del.
`
`U.S. Patent No. 7,701,919 to Ah Lee (“Ah Lee”)
`
`U.S. Patent No. 7,693,924 Cho et al. (“Cho”)
`
`Motorola, Inc. 2004 Annual Report to Stockholders
`
`WCDMA for UMTS: Radio Access for Third Generation
`Communications, Holma and Toskala, 3rd ed, Wiley and Sons,
`Ltd., 2004
`
`v
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`ZTE (USA) Inc., Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., HTC Corporation, and HTC America, Inc. (collectively,
`
`“Petitioner”) petition for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42 of claims 1-10 (“the Challenged Claims”) of U.S. Patent No.
`
`7,746,916 (“the ‘916 patent”). As explained below, there exists a reasonable
`
`likelihood that Petitioner will prevail in demonstrating unpatentability of at least
`
`one of the Challenged Claims based on teachings set forth in the references
`
`presented in this petition.
`
`This petition is identical in substance to the petition that Apple Inc. et al.
`
`filed on June 20, 2016 in IPR2016-01208 (“the Apple proceeding”), as this petition
`
`is limited to the same claims, grounds, arguments, and evidence presented in the
`
`Apple proceeding. Petitioner will seek joinder with the Apple proceeding under 35
`
`U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b).
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`ZTE Corporation, ZTE (USA) Inc., Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., HTC Corporation, and HTC America, Inc. are the real
`
`parties-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ‘916 patent is the subject of Civil Action Numbers 1:15-cv-00542
`
`(Del.), 1:15-cv-00543 (Del.), 1:15-cv-00544 (Del.), 1:15-cv-00545-SLR (Del.),
`
`1
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`1:15-cv-00546 (Del.), and 1:15-cv-00547 (Del.). Concurrently with this petition,
`
`Petitioner is filing one other petition for IPR (Proceeding No. IPR2016-01280) of
`
`the ‘916 Patent. The relationship between the limited grounds presented in these
`
`two petitions is discussed in Section VI.
`
`The ‘916 patent is also the subject of inter partes review proceeding nos.
`
`IPR2016-01208 and IPR2016-01209.
`
`C.
`
`Lead And Back-Up Counsel And Service Information
`
`Petitioner designates Charles M. McMahon (Reg. 44,926) as Lead Counsel,
`
`and designates Hersh H. Mehta (Reg. 62,336), James M. Glass (Reg. 46,729),
`
`Kevin P.B. Johnson (Reg. 38,927), Todd M. Briggs (Reg. 44,040), John McKee
`
`(Reg. 65,926), Stephen Korniczky (Reg. 34,853), Martin Bader (Reg. 54,736), and
`
`Ericka Jacobs Schulz (Reg. 60,665) as Backup Counsel. Petitioner consents to
`
`service by e-mail. Please send all correspondence to lead and back-up counsel at
`
`the addresses provided in the signature block of this petition.
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 50-0417 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes payment for any additional fees to be charged to this Deposit
`
`Account.
`
`2
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘916 Patent is available for IPR. The present
`
`petition is being filed within one year of service of each of the complaints against
`
`Petitioner. Petitioner is not barred or estopped from requesting this review on the
`
`below-identified grounds.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of unpatentability under the statutory grounds
`
`identified below is provided in the form of detailed description that follows,
`
`indicating where each element can be found in the cited prior art, and the relevance
`
`of that prior art. Additional explanation and support for each ground of rejection is
`
`set forth in Ex. 1003, Declaration of Dr. Jonathan Wells (“Wells Declaration”).
`
`Ground
`
`‘916 Patent Claims
`
`Basis for Rejection
`
`Ground 1a Claims 1-3, 5-8, and 10
`
`§ 102: Zhuang327
`
`Ground 1b Claims 5-8 and 10
`
`§ 103: Zhuang327
`
`Ground 1c Claims 4 and 9
`
`§ 103: Zhuang327 and Popovic
`
`Ground 2a Claims 1-3, 5-8, and 10
`
`§ 103: Zhuang327 and Hou
`
`Ground 2b Claims 4 and 9
`
`§ 103: Zhuang327 and Hou and Popovic
`
`3
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`Zhuang327 qualifies as prior art under 35 U.S.C. § 102(e). Specifically,
`
`Zhuang327 (Ex. 1007) was filed on March 2, 2005, which is before the U.S. filing
`
`date of November 28, 2006 of the ‘916 Patent and which also is before any of the
`
`proclaimed priority dates of November 28, 2005, July 4, 2006, and July 7, 2006.
`
`Popovic qualifies as prior art under 35 U.S.C § 102 (b). Specifically,
`
`Popovic (Ex. 1009) is a journal article that was published in IEEE Trans. On
`
`Information Theory, vol. 38 in July, 1992. Popovic is a publication published more
`
`than a decade before both the U.S. filing date of November 28, 2006 of the ‘916
`
`Patent and the proclaimed priority dates of November 28, 2005, July 4, 2006, and
`
`July 7, 2006.
`
`Hou qualifies as prior art under 35 U.S.C § 102(e). Specifically, Hou (Ex.
`
`1011) is a patent that was filed on July 27, 2005. Therefore, Hou is a patent that
`
`issued on an application that was filed before the U.S. filing date of November 28,
`
`2006 of the ‘916 Patent and the proclaimed priority dates of November 28, 2005,
`
`July 4, 2006, and July 7, 2006.
`
`C.
`
`Claim Construction under 37 C.F.R. § 42.104(b)(3)
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
`
`purposes of this proceeding only, Petitioner submits constructions for the following
`
`4
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`terms. Petitioner submits that the remaining claim terms need not be construed at
`
`this time.
`
`1.
`
`“acquiring/generating a code sequence having a second
`length by a cyclic extension of a code sequence having a first
`length” (claims 1 and 6)
`
`For purposes of this proceeding, the broadest reasonable interpretation (BRI)
`
`of the phrase “acquiring/generating a code sequence having a second length by a
`
`cyclic extension of a code sequence having a first length” is broad enough to
`
`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.” See Wells Declaration, ¶¶ 82-85. Such a
`
`construction is consistent with the ‘916 Patent because: 1) the ‘916 Patent
`
`specification does not specifically define this term; and 2) the plain and ordinary
`
`meaning of “acquire” is “to gain possession of;” the plain and ordinary meaning of
`
`“generate” is “to bring into being; give rise to;” and the plain and ordinary
`
`meaning of “by” is “with the use or help of, through.” See Ex. 1005 at 15, 732,
`
`255. All of these terms are open-ended, especially the definition of “by”, and
`
`embrace, if not imply, that the acquisition/generation could involve other “use or
`
`help” besides “a cyclic extension” that immediately follows the term “by.”
`
`Moreover, the claim language fails to limit the claim element to
`
`“acquiring… only by a cyclic extension,” and the ‘916 Patent specification fails to
`
`5
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`disclaim or exclude other operations being performed for “acquiring/generating a
`
`code sequence having a second length.” Accordingly, the broader construction
`
`should be adopted, rather than reading the word “only”—a word the Applicant did
`
`not use—into the term. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`
`Therefore, the BRI of the phrase “acquiring/generating a code sequence
`
`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.”
`
`2.
`
`“cyclic prefix” (claims 2 and 7)
`
`For purposes of this proceeding, the BRI of the term “cyclic prefix” is broad
`
`enough to encompass “a portion of a sequence that includes the last one or more
`
`elements of the sequence and is appended to the front of the sequence.” See Wells
`
`Declaration, ¶¶ 86-90. The ‘916 Patent specification fails to specifically define the
`
`term “cyclic prefix.” However, a person of ordinary skill in the art at the time of
`
`the invention (POSITA) would recognize that the term “cyclic prefix” is a
`
`technical term well-known in the art, especially in the context of wireless
`
`communications. See e.g., “[a]s is well known, a cyclic prefix for a block of N data
`
`samples is created by copying the last L samples of the block of N data samples
`
`6
`
`

`
`and appending them to the front of the block of N data samples.” Ex. 1006, 5:64-
`
`IPR of U.S. Patent No. 7,746,916
`
`6:3.
`
`Such a construction is consistent with the ‘916 Patent specification: “a code
`
`sequence portion is added/attached to the generated code sequence (e.g., zero-
`
`padding or cyclic prefix).” Ex. 1001, 10:37-39. “The length of the padding portion
`
`corresponds to a length L−X. As discussed, the padding portion can be comprised
`
`of zeroes or cyclic prefix/postfix;” see also Ex. 1001, 12:43-47, 12:60-67. The
`
`‘916 Patent specification also contrasts the “cyclic prefix” with “cyclic postfix,”
`
`where the latter is “the portion corresponding to L−X of the code sequence 1204
`
`[that] can be duplicated and inserted/attached to the end of the code sequence
`
`1204.” Ex. 1001, 13:53-57 and 62-64. A POSITA in view of the ‘916 Patent
`
`specification would have recognized that, rather than the end of the sequence, the
`
`“cyclic prefix” is a portion of a sequence that includes the last one or more (e.g., L-
`
`X) elements of the sequence and is appended to the front of the sequence. See
`
`Wells Declaration, ¶¶ 89-90.
`
`3.
`
`“cyclic postfix” (claims 2, 3 and 7)
`
`For purposes of this proceeding, the BRI of the term “cyclic postfix” is
`
`broad enough to encompass “a portion of a sequence that includes the first one or
`
`more elements of the sequence and is appended to the end of the sequence.” See
`
`Wells Declaration, ¶¶ 91-93. Such a construction is consistent with the ‘916 Patent
`
`7
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`

`
`IPR of U.S. Patent No. 7,746,916
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`specification: “the padding portion can be comprised of a repeated portion. In other
`
`words, the portion corresponding to L−X of the code sequence 1204 can be
`
`duplicated and inserted/attached to the end of the code sequence 1204. This can be
`
`referred to as cyclic postfix.” Ex. 1001, 13:53-57, 12:43-47, 60-67.
`
`4.
`
`“reference signal sequence” (claims 5 and 10)
`
`For purposes of this proceeding, the BRI of the term “reference signal
`
`sequence” is broad enough to encompass “a sequence transmitted for the purpose
`
`of initial synchronization, cell search, or channel estimation.” See Wells
`
`Declaration, ¶¶ 94-95. Such a construction is consistent with the ‘916 Patent
`
`specification: “a pilot signal or a preamble of a wireless communication system is
`
`referred to as a reference signal used for initial synchronization, cell search, and
`
`channel estimation.” Ex. 1001, 1:20-22.
`
`5.
`
`“a code sequence generator” (claim 6)
`
`Claim 6 recites “a code sequence generator for generating a code sequence
`
`having a second length by cyclic extension of a code sequence having a first
`
`length, and performing a circular shift to the code sequence having the second
`
`length.” This term does not include the word “means.” Thus, the term
`
`“presumptively is not a means-plus-function limitation under 35 U.S.C. § 112,
`
`paragraph 6.” See Facebook v. TLI Comm., Case IPR2015-00778, Paper No. 17,
`
`pp. 13-14 (P.T.A.B. August 28, 2015) (citing Williamson v. Citrix Online, LLC,
`
`8
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`

`
`IPR of U.S. Patent No. 7,746,916
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`792 F. 3d 1339 (Fed. Cir. 2015) (en banc)). Petitioner has challenged this
`
`presumption in District Court (see Ex. 1023, p. 4; Ex. 1028, p. 8), but is not
`
`challenging it in this proceeding, in part because PTO proceedings have a broader
`
`standard of interpretation than in litigation. See In re Zletz, 13 USPQ2d 1320, 1322
`
`(Fed. Cir. 1989) (explaining that for PTO proceedings, the BRI-standard should be
`
`used, in part due to the ability of the Patent Owner to amend claims to further
`
`clarify their scope). Accordingly, for purposes of this proceeding only, the term
`
`should be given its plain meaning as understood under the BRI standard.
`
`The Patent Owner has asserted in the District Court that this term is not
`
`governed by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 8. However, to
`
`the extent that the Patent Owner alleges in this proceeding that the term is a means-
`
`plus-function limitation, the Patent Owner may identify the following portions of
`
`the specification as relating to structure for performing the recited functions
`
`“generating a code sequence …and performing a circular shift …”: the sequence
`
`selection unit 1602 of FIG. 16. See e.g., Ex. 1001, 15:12-35.
`
`Regardless of whether “code sequence generator” is given its plain meaning
`
`or is governed by 35 U.S.C. § 112(6), the ‘916 Patent does not limit the recited
`
`9
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`

`
`IPR of U.S. Patent No. 7,746,916
`
`code sequence generator to a unitary device. See, e.g., Ex. 1001, 15:6-35.1 See
`
`Wells Declaration, ¶¶ 96-99. For example, in describing FIG. 16, the ‘916 Patent
`
`states that, “[d]epending on whether the transmission of the code sequence is made
`
`in a downlink direction or an uplink direction, the structure can be in different
`
`form.” Ex. 1001, 15:7-9. In this regard the example implementation shown in FIG.
`
`16 is not limiting. In fact, the ‘916 patent admits that “FIG. 16 is described with
`
`respect to a general transmitting end for 10 transmitting the control signal,” Ex.
`
`1001, 15:9-11. Moreover, FIG. 16 merely shows that “the transmitting end 1601
`
`comprises a sequence selection unit 1602 and a transmitting unit 1603.” Ex. 1001,
`
`15:12-13. The ‘916 Patent generally describes that “[t]he sequence selection unit
`
`1602 is used to generate the code sequence for transmitting the control
`
`
`1 The recitation of the term “apparatus” in the preamble also does not limit the
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`recited features of claim 6 to a unitary device. The ’916 Patent does not specially
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`define the term “apparatus,” and this term has been construed as generally
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`encompassing a “system.” See Ex Parte Fressola, 27 U.S.P.Q.2D (BNA) 1608,
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`1611 (B.P.A.I. 1993) (citing In re Walter, 618 F.2d 758, 762 n.2 (CCPA 1980)).
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`The term “apparatus” merely gives a descriptive name to the set of limitations in
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`the body of the claim, but does not otherwise limit the scope of the claim. See IMS
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`Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000).
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`10
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`IPR of U.S. Patent No. 7,746,916
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`information,” without further design or configuration restraints. See Ex. 1001,
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`15:6-35.
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`6.
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`“a transmitting unit” (claim 6)
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`Claim 6 recites “a transmitting unit for transmitting the circular shifted code
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`sequence having the second length.” This term does not include the word “means.”
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`Thus, the term “presumptively is not a means-plus-function limitation under 35
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`U.S.C. § 112, paragraph 6.” See Facebook, Paper No. 17 at 13-14. Petitioner has
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`challenged this presumption in District Court (see Ex. 1023, p. 4; Ex. 1028, p. 9),
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`but is not challenging it in this proceeding, in part because PTO proceedings have a
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`broader standard of interpretation than in litigation. See In re Zletz at 1322.
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`Accordingly, for purposes of this proceeding only, the term should be given its
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`plain meaning as understood under the BRI standard.
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`The Patent Owner has asserted in the District Court that this term is not
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`governed by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 9. However, to
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`the extent that the Patent Owner alleges the term is a means-plus-function
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`limitation, the Patent Owner may identify the following portions of the
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`specification as relating to structure for performing “transmitting the circular
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`shifted code sequence having the second length”: the transmitting unit 1603 of
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`FIG. 16. Ex. 1001, 15: 13-14.
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`IPR of U.S. Patent No. 7,746,916
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`IV.
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`SUMMARY OF THE ‘916 PATENT
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`A.
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`Brief Description
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`Generally, the ‘916 Patent purportedly provides a method of generating a
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`code sequence in a wireless communication system. Ex. 1001, Abstract.
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`Particularly, the ‘916 patent describes generating a code sequence having a length
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`different from a desired length, and modifying the length of the generated code
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`sequence to equal the desired length. Ex. 1001, 2:8-12. The step of modifying
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`includes inserting a “cyclic prefix/postfix.” Ex. 1001, 13:23-25. The ‘916 Patent
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`also discusses a circular shift that is “typically applied to increase an amount of
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`control information” and “performed either before or after the padding portion is
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`added to the generated CAZAC sequence.” Ex. 1001, 11:22-25 and 13:8-10.
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`FIG. 13 (reproduced below) illustrates “application of circular shift to the
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`generated code sequence after a padding portion is attached.” Ex. 1001, 12:37-39.
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`Specifically, a code sequence 1302 is generated with a length X which is the
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`largest prime number smaller than a desired length L. A padding portion of a
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`length L−X is added to the CAZAC sequence 1302. The “result of the generated
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`code sequence having length L 1303 is applied circular shift thereto, resulting in
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`the CA-ZAC sequence 1304.” See Ex. 1001, 12:40-49.
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`IPR of U.S. Patent No. 7,746,916
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`The ‘916 patent includes 11 claims, of which claims 1, 6 and 11 are independent.
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`Claims 1 and 6 are directed towards the implementation as shown in FIG. 13.
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`13
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`IPR of U.S. Patent No. 7,746,916
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`B.
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`Summary of the Prosecution History
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`In the first office action issued during original prosecution of the ‘916 Patent
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`and dated June 26, 2009, the Examiner set forth rejections based on Zhuang175
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`and a combination of Zhuang175 in view of Koslar. See Ex. 1002 at 120-127. In
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`response, Applicant amended claims 24-26, 29-33, 36-37; cancelled claims 27-28,
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`34-35 and added an independent claim 38. Applicant argued that “the cited
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`portions [i.e., col. 4, lines 18-21] of Zhuang175 do not teach or suggest” the newly
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`added circular shift feature. See Ex. 1002 at 114-115. However, in an entirely
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`different and uncited portion, Zhuang175 explicitly discloses circular shifting: “the
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`actual signals may be the results of different functions of the same assigned
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`sequence. Examples of the functions applied are circular shifting of the
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`sequence2.” Ex. 1012, 6:29-32. Unfortunately, because the applicant failed to point
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`to the most relevant portions of the reference, the Examiner overlooked this very
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`express disclosure of Zhuang175 and issued a notice of allowance relying on the
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`Applicant’s argument. See Ex. 1002 at 79-84.
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`2 Italics represent emphases added by Petitioner in each citation, unless otherwise
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`specified.
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`IPR of U.S. Patent No. 7,746,916
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`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM
`FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ‘916 PATENT IS UNPATENTABLE
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`This request shows how the primary references above, alone or in
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`combination with other references, disclose the limitations of and thus invalidating
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`the Challenged Claims. As detailed below, this request shows a reasonable
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`likelihood that the Requester will prevail with respect to the Challenged Claims.
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`Ground 1a: Zhuang327 anticipates claims 1-3, 5-8, and 10
`A.
`Zhuang327 discloses “a method and apparatus for randomly accessing a
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`wireless communication system by a subscriber station.” Ex. 1007, 1:7-11. FIG. 8
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`illustrates a method “of accessing a communication system.” Ex. 1007, 2:23-26.
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`Because Zhuang327 uses various terminologies (e.g., “access sequences,” “access
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`signal,” and “access waveform”) and discloses different operations on the various
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`sequences/signals/waveforms, for clarity, Petitioner provides an illustration, which
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`is designated “Petitioner-FIG. 1,” that includes both an annotated version of FIG. 8
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`of Zhuang327 and a visual diagram showing an evolution from a Generalized
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`Chirp Like (GCL) sequence to an access waveform of the Zhuang327 system. As
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`can be seen from the accompanying textual explanation, the illustration strictly
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`follows the explicit teachings of Zhuang327.
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`IPR of U.S. Patent No. 7,746,916
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`Petitioner-FIG. 1: Highlighted FIG. 8 of Zhuang327 (left) and a corresponding
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`illustration prepared by Petitioner (right)
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`Specifically, Zhuang327 discloses that “at step 805 an access sequence is
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`selected from a set of Nc access sequences3,” “wherein the set of Nc access
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`3 Zhuang327 explains that “the terms ‘access’, ‘random access’, and ‘ranging’ will
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`be used interchangeably. Ex. 1007, 1:40-43. The “ranging sequence” is inter-
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`IPR of U.S. Patent No. 7,746,916
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`sequences [are] of length K, wherein K is a quantity of sub-carriers” in a sub-band.
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`Ex. 1007, 10:30-32 and 4-7. The “access sequences” (denoted as 120 in Petitioner-
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`FIG. 1) can be constructed based on “(GCL) sequences” (denoted as 110 in
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`Petitioner-FIG. 1) of length NG. Ex. 1007, 7:57-8:10. When NG is smaller than K
`(e.g., when NG is “the largest prime number that is smaller than the desired length
`[K]”), the “access sequence” is constructed by cyclic extension of the GCL
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`sequence “by copying (KNG) terms from the beginning of each GCL sequence and
`appending them to the end.” See e.g., Ex. 1007, 8:65-9:1 and claim 74. See Wells
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`Declaration, ¶¶ 100-104.
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`After selecting a sub-band at step 810, “an access signal [denoted as 130 in
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`FIG. 1] is generated using the selected access sequence” at step 815. Ex. 1007,
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`10:34-35. Zhuang327 explains that “the access sequence” (i.e., 120 in
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`PetitionerFIG. 1) is a frequency-domain signal “used to modulate the subcarriers in
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`the chosen sub-band,” while the “access signal” (i.e., 130 in Petitioner-FIG. 1) is a
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`time domain signal generated by “taking an Inverse Fast Fourier Transformation
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`changeable with “access sequence” and “ranging code” and “access code.” Ex.
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`1007, 5:15-16.
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`4 Claim 7 of Zhuang327 corresponds to the original claim 9 of the application that
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`resulted in the ‘916 Patent. See Ex. 1008 at 27.
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`IPR of U.S. Patent No. 7,746,916
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`(IFFT) of the frequency-domain sequence.” Ex. 1007, 10:12-16. See Wells
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`Declaration, ¶ 105.
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`“At step 820 the generated access signal is cyclically time shifted,” and the
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`resulting circularly-shifted access signal is denoted as 140 in Petitioner-FIG. 1. Ex.
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`1007, 10:35-37. See Wells Declaration, ¶ 106. “At step 825 [sic], an access
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`waveform [denoted as 150 in Petitioner-FIG. 1] is formed by appending a cyclic
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`prefix [denoted as 160 in Petitioner-FIG. 1] in front of the generated access signal.
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`See Wells Declaration, ¶¶ 107-108. At step 825 the access waveform is transmitted
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`using a sub-band of K sub-carriers.” Ex. 1007, 10:35-40. See Wells Declaration, ¶
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`109.
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`As set forth in greater detail below, Zhuang327 discloses each and every
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`element of claims 1-3, 5-8, and 10 of the ‘916 patent. See also Wells Declaration,
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`¶¶ 110-111.
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`Zhuang327 anticipates claim 1
`1.
`Zhuang327 discloses “[a] method for transmitting a code sequence from a
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`transmitting party to a receiving party in a wireless communication system,” as
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`recited in claim 1. Particularly, Zhuang327 discloses “a method and apparatus for
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`randomly accessing a wireless communication system by a subscriber station”
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`(SS) “by sending an access signal to a Base Station (BS).” Ex. 1007, 1:7-9, 17-18.
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`The access signal corresponds to the recited “code sequence” as “[e]ach random
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`18
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`IPR of U.S. Patent No. 7,746,916
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`access signal is generated based on a ranging sequence… that is randomly chosen
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`from a code group 601.” Ex. 1007, 5:14-17. See Wells Declaration, ¶¶ 112-113.
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`Zhuang327 discloses “acquiring a