throbber
Trials@uspto.gov
`571-272-7822
`
` Paper No. 11
` Entered: January 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ZTE (USA) INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01342
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, 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
`
`

`
`IPR2016-01342
`Patent 8,218,481 B2
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`
`I. INTRODUCTION
`
`ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc. (collectively, “Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1–4, 6, 8–11, and 13 of U.S.
`
`Patent No. 8,218,481 B2 (Ex. 1001, “the ’481 patent”). Paper 2 (“Pet.”).
`
`Evolved Wireless, LLC, the assignee of the ’481 patent, filed a Preliminary
`
`Response to the Petition. Paper 7 (“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 ’481
`
`patent. Accordingly, we institute trial as set forth below.
`
`A. Related Matters
`
`The ’481 patent has been asserted in several actions, captioned
`
`Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542 (D. Del.); Evolved
`
`Wireless, LLC v. HTC Corp., C.A. 15-cv-543 (D. Del.); Evolved Wireless,
`
`LLC v. Lenovo Group Ltd., C.A. 15-cv-544 (D. Del.); Evolved Wireless,
`
`LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-545 (D. Del.); Evolved
`
`Wireless, LLC v. ZTE Corp., C.A. 15-cv-546 (D. Del.); and Evolved
`
`Wireless, LLC v. Microsoft Corp., C.A. 15-cv-547 (D. Del.). Pet. 1; Prelim.
`
`Resp. 2–3.
`
`The ’481 patent is the subject of: IPR2016-00758, in which trial has
`
`been instituted on claims 1–3, 6, 8–10, and 13; IPR2016-00981, in which
`
`
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`2
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`

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`IPR2016-01342
`Patent 8,218,481 B2
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`trial has been instituted on claims 1, 8, 15, and 16; and IPR2016-01349 in
`
`which trial has been instituted on claims 1–4, 6, 8–11, 13, 15, and 16. The
`
`’481 patent is also the subject of IPR2017-00068, and IPR2017-00106, in
`
`which decisions as to whether to institute trial have not yet been rendered.
`
`B. The ’481 Patent
`
`The ’481 patent is titled “Method of Transmitting Data in a Mobile
`
`Communication System.” Ex. 1001, [54]. It issued on July 10, 2012, from
`
`U.S. Patent Application No. 12/303,947, filed on June 8, 2007, which claims
`
`priority to KR 10-2006-0052167, filed June 9, 2006, and KR 10-2006-
`
`0057488, filed June 26, 2006. Id. at [21], [22], [30], [45]. According to the
`
`Specification, “[t]he present invention relates to a mobile communication
`
`system, and more particularly, to a method of expanding a code sequence, a
`
`structure of a random access channel and a method of transmitting data in a
`
`mobile communication system.” Id. at 1:16–20. The disclosed methods and
`
`systems are alleged to increase the amount of data that can be transmitted to
`
`make the data transmission more robust and less susceptible to noise or
`
`channel change. Id. at 2:45–49. And, the invention is alleged to be
`
`applicable to wireless Internet systems. Id. at 18:28–30.
`
`The ’481 patent contains sixteen claims, all of which are directed to
`
`the structure of a preamble sequence of a data transmission. Id. at 18:33–
`
`20:16. Independent claim 1 is directed to “[a] method of transmitting a
`
`preamble sequence,” and independent claim 8 is directed to “[a] transmitter
`
`for transmitting a preamble sequence.” Id. at 18:33–42, 18:60–19:3. The
`
`independent claims require “repeating a specific sequence, having a length
`
`(L), N times to generate a consecutive sequence having a length (N*L)” and
`
`“concatenating a single cyclic prefix (CP) to a front end of said consecutive
`
`
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`3
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`IPR2016-01342
`Patent 8,218,481 B2
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`sequence.” Id. Figure 11, which illustrates the claimed preamble structure
`
`with a single prefix and a repeated sequence, is reproduced below.
`
`Figure 11 depicts a single prefix at the front end of consecutive, repeated
`
`
`
`sequences. Id. at 11:55–64.
`
`C. The ’481 Patent Claims
`
`Of the challenged claims, claims 1 and 8 are independent. Claim 1
`
`recites:
`
`1. A method of transmitting a preamble sequence in a mobile
`communication system, the method comprising:
`
`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
`
`generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
`and
`
`transmitting, on a random access channel, said preamble
`sequence to a receiving side.
`
`Ex. 1001, 18:33–42. Claim 8 recites:
`
`8. A transmitter for transmitting a preamble sequence in a mobile
`communication system, the transmitter comprising:
`
`a preamble generation unit configured to generate said preamble
`sequence by repeating a specific sequence, having a length
`(L), N times to generate a consecutive sequence having a
`
`
`
`4
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`IPR2016-01342
`Patent 8,218,481 B2
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`
`length (N*L) and concatenating a single cyclic prefix (CP) to
`a front end of said consecutive sequence;
`
`a transmission unit configured to transmit, on a random access
`channel, said preamble sequence to a receiving side.
`
`Ex. 1001, 18:60–19:3.
`
`
`
`Dependent claims 2 and 9 recite generating “said specific sequence
`
`from a Constant Amplitude Zero Auto Correlation (CAZAC) sequence.” Id.
`
`at 18:43–45, 19:4–7. Dependent claims 3 and 10 recite applying “a cyclic
`
`shift sequence to said specific sequence generated from said CAZAC
`
`sequence.” Id. at 18:46–48, 19:8–11. Dependent claims 4 and 11 recite “a
`
`value of said applied cyclic shift is determined as an integer multiple of a
`
`predetermined circular shift unit.” Id. at 18:49–51, 19:13–15. Dependent
`
`claims 6 and 13 recite “multiplying said specific sequence by an exponential
`
`sequence.” Id. at 18:54–56, 20:1–4.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims of the ’481 patent on the following
`
`grounds of unpatentability.
`
`
`
`5
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`Patent 8,218,481 B2
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`
`Reference(s)
`
`Panasonic 7002
`
`Panasonic 700 and Panasonic 1143
`
`Basis1
`
`§§ 102(a) and (b),
`103(a)
`§ 103(a)
`
`Panasonic 700, Panasonic 114, and Chu4 § 103(a)
`
`Panasonic 700 and Motorola 5955
`
`Panasonic 700, Panasonic 114, and
`Motorola 595
`Panasonic 700, Panasonic 114, Chu, and
`Motorola 595
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`Claims
`
`1 and 2
`
`3
`
`4 and 6
`
`8 and 9
`
`10
`
`§ 103(a)
`
`11 and 13
`
`Petitioner asserts that Panasonic 700, Panasonic 114, and Chu are
`
`prior art to the ’481 patent under 35 U.S.C. §§ 102(a) and 102(b), and
`
`Motorola 595 is prior art under 35 U.S.C. §102(e). Pet. 10–24. Petitioner
`
`makes a showing as to how Panasonic 700, Panasonic 114, and Chu qualify
`
`as printed publications. Id. at 18–24. Petitioner makes a showing that
`
`Motorola 595 is entitled to priority as of the filing date of the related
`
`
`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 ’481 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`
`2 Panasonic, RACH preamble evaluation in E-UTRA uplink, TSG-RAN
`WG1 Meeting #44, Denver, USA (February 13–17, 2006) (Ex. 1002).
`
`3 Panasonic, Random Access Design For E-UTRA Uplink, R1-061114,
`TSG-RAN WG1 Meeting #45, Shanghai, China (May 8–12, 2006) (Ex.
`1003).
`
`4 David C. Chu, Polyphase Codes With Good Periodic Correlation
`Properties, IEEE Transactions on Information Theory 531–32 (July 1972)
`(Ex. 1004).
`
`5 US 2007/0058595 A1, (published March 15, 2007, filed March 20, 2006)
`(Ex. 1020).
`
`
`
`6
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`provisional application. Id. at 14–17. Patent Owner does not, at this stage
`
`of the proceeding, challenge the prior art status of any of these references or
`
`challenge any of Petitioner’s related showings. See generally Prelim. Resp.
`
`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 generally
`
`construe only terms that are in controversy and then only to the extent
`
`necessary to resolve the controversy. See Vivid Tech., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`In the “Claim Construction” section of the Petition, Petitioner
`
`discusses, “repeating a specific sequence, having a length (L), N times to
`
`generate a consecutive sequence having a length (N*L),” as recited in claims
`
`1 and 8. Pet. 24–25. Petitioner argues this limitation should be given its
`
`“plain and ordinary meaning under the BRI standard” but fails to suggest
`
`any interpretation or to provide any explanation as to how to interpret this
`
`limitation. Id. Patent Owner does not discuss claim construction in its
`
`Preliminary Response and does not dispute that all the limitations in claims
`
`1 and 8 are disclosed in the cited art. See generally Prelim. Resp. Based on
`
`this record and because there is no controversy related to this limitation that
`
`it is necessary for us to resolve to make this decision on institution of trial,
`
`we do not interpret this limitation at this time.
`
`With regard to “preamble generating unit” and “transmission unit” in
`
`claim 8, Petitioner argues, “under the BRI standard, and for purposes of this
`
`
`
`7
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`IPR2016-01342
`Patent 8,218,481 B2
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`proceeding only, these terms should be interpreted as ‘hardware and/or
`
`software in the user equipment that is capable of” performing the respective
`
`functions recited in these terms.” Pet. 25–26. However, Petitioner’s
`
`argument is short and conclusory. Id. Petitioner fails to support this
`
`construction by citing any language in the claims, specification, or file
`
`history. Id. Petitioner states that Patent Owner proposed this construction in
`
`related litigation while at the same time noting Petitioner proposed a
`
`different construction in the litigation. Id. As noted previously, Patent
`
`Owner does not address claim construction and does not dispute Petitioner’s
`
`showing that these limitations are disclosed in the cited art. See generally
`
`Prelim. Resp. Thus, at least at this stage in these proceedings, there is no
`
`controversy relating to interpretation of these terms and it is not necessary
`
`for us to construe these terms in order to render this decision on institution
`
`of trial.6
`
`B. Asserted Invalidity of Claims 1 and 2
`Over Panasonic 700
`
`Petitioner challenges claims 1 and 2 as anticipated by and as obvious
`
`in view of Panasonic 700. Pet. 26–34. Patent Owner does not dispute
`
`Petitioner’s showing at this time. See generally Prelim. Resp. Most
`
`significantly, Patent Owner does not argue that Panasonic 700 is not prior art
`
`or that Panasonic 700 fails to fully disclose the subject matter of claims 1
`
`and 2. Id.
`
`
`6 In the related litigation, the District Court construed these terms as
`“hardware and/or software in the transmitter” capable of performing the
`recited functions. Evolved Wireless, LLC v. ZTE Corp., Civ. No. 15-546-
`SLR, slip op. at 16–17 (D. Del. Nov. 14, 2016).
`
`
`
`8
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`IPR2016-01342
`Patent 8,218,481 B2
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`1. Panasonic 700 (Ex. 1002)
`
`Panasonic 700 is titled “RACH preamble evaluation in E-UTRA
`
`uplink.” Ex. 1002, 1. According to Petitioner, Panasonic 700 was submitted
`
`to Working Group 1 (WG 1) of the Technical Specification Group Radio
`
`Access Network (TSG RAN) of Third Generation Partnership Project
`
`(3GPP) Long Term Evolution (LTE) for Meeting 44, held on February 13–
`
`17, 2006, in Denver. Pet. 5–6, 10. Panasonic 700 includes a heading which
`
`says, “TSG-RAN WG 1 Meeting#44, Denver, USA, February 13–17, 2006.”
`
`Ex. 1002, 1. Patent Owner acknowledges Panasonic 700 is a “Panasonic
`
`submission, for a February, 2006 meeting.” Prelim. Resp. 5. Panasonic 700
`
`was not cited during prosecution of the patent application from which the
`
`’481 patent issued. Ex. 1001, [56].
`
`Panasonic 700 discloses a random access channel (RACH) preamble
`
`structure. Ex. 1002 at 2. Panasonic 700 states, “[a] preamble sequence
`
`should have good auto-correlation and good-cross correlation [sic]. General
`
`chirp-like (GCL) has been considered to satisfy these requirements. In our
`
`preamble performance evaluation, Zadoff-Chu sequence, a special case of
`
`GCL, is used.” Id. (citations omitted). Figure 1 of Panasonic 700 is
`
`reproduced below.
`
`Figure 1 of Panasonic 700 depicts a “preamble structure” with a cyclic
`
`prefix (CP) and “M-times repetition of N=73 (1.25 MHz) or N=293 (5 MHz)
`
`
`
`
`
`9
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`

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`IPR2016-01342
`Patent 8,218,481 B2
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`CAZAC sequence.” Id. Panasonic 700 discloses use of a “[r]epetition
`
`factor (M) of CAZAC sequence” of 3, 7, 14, and 28. Id.
`
`2. Claims 1 and 2
`
`Petitioner’s showing that Panasonic 700 discloses all elements of
`
`claims 1 and 2 is detailed and supported by citations to the record. Pet. 27–
`
`35. Patent Owner does not challenge this showing at this time. See
`
`generally Prelim. Resp. We have reviewed the cited portions of Panasonic
`
`700 and, on the record before us, find that the information presented
`
`establishes there is a reasonable likelihood that Petitioner will prevail in
`
`showing that claims 1 and 2 are anticipated by Panasonic 700.
`
`Petitioner also challenges claims 1 and 2 as obvious over Panasonic
`
`700. Pet. 26. An obviousness conclusion is based on factual inquiries
`
`including the differences between the claimed invention and the prior art.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In keeping with its
`
`contention that Panasonic 700 anticipates claims 1 and 2, Petitioner has not
`
`articulated any difference between the claimed invention and Panasonic 700.
`
`Id. To the contrary, Petitioner asserts that Panasonic 700 discloses every
`
`feature of claims 1 and 2. Pet. 27 (“Panasonic 700 discloses every feature of
`
`claim 1 for the following reasons.”), 34 (“Panasonic 700 discloses every
`
`feature of claim 2 for the following reasons.”). Petitioner’s argument with
`
`regard to obviousness of claims 1 and 2 is limited to the terse phrase, “or §
`
`103 (a)” on page 26 of its Petition, and is not supported by any additional
`
`analysis or reasoning. Accordingly, Petitioner has failed to articulate
`
`sufficiently “[h]ow the construed claim is unpatentable under the statutory
`
`grounds identified.” 37 C.F.R. § 42.104(b)(4).
`
`
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`10
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`IPR2016-01342
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`
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`C. Asserted Obviousness of Claim 3 Over
`Panasonic 700 and Panasonic 114
`
`Petitioner asserts that the subject matter of claim 3 of the ’481 patent
`
`
`
`would have been rendered obvious by Panasonic 700 and Panasonic 114.
`
`Pet. 26, 35–39.
`
`1. Panasonic 114 (Ex. 1003)
`
`Panasonic 114 is a paper titled, “Random Access Design For E-UTRA
`
`Uplink.” Ex. 1003, 1. Panasonic 114 is dated May 8–12, 2006. Ex. 1003,
`
`1. Panasonic 114 was not cited during prosecution of the ’481 patent. Ex.
`
`1001, [56].
`
`
`
`Panasonic 114 is directed to comparing performance of different types
`
`of preamble sequences including cyclic-shifted CAZAC sequences. Ex.
`
`1003, 1. Panasonic 114 discloses, “cyclic-shifted CAZAC sequence has
`
`superior performance” and “[a]s the results [sic], we propose to choose
`
`cyclic-shifted Zadoff-Chu CAZAC as preamble sequence mainly.” Id. at 2.
`
`2. Claim 3
`
`
`
`Petitioner provides a detailed and supported showing that all the
`
`limitations of claim 3 of the ’481 patent are taught in Panasonic 700 and
`
`Panasonic 114. Pet. 35–36. Petitioner also provides a showing of an
`
`articulated basis with rational underpinnings for combining the relevant
`
`teachings of the references. Id. at 37–39. See KSR Int’l Co. v. Teleflex, Inc.,
`
`550 U.S. 398, 418 (2007). Patent Owner does not specifically address the
`
`challenge to claim 3 at this time. See generally Prelim. Resp.
`
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`11
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`On the record before us and for the reasons stated in the Petition,
`
`Petitioner has established a reasonable likelihood that the subject matter of
`
`claim 3 would have been obvious over Panasonic 700 and Panasonic 114.
`
`D. Asserted Obviousness of Claims 4 and 6
`Over Panasonic 700, Panasonic 114, and Chu
`
`Petitioner asserts that the subject matter of dependent claims 4 and 6
`
`
`
`of the ’481 patent would have been rendered obvious by Panasonic 700,
`
`Panasonic 114, and Chu. Pet. 26, 39–44.
`
`1. Chu (Ex. 1004)
`
`Chu is a paper titled, “Polyphase Codes With Good Periodic
`
`Correlation Properties.” Ex. 1004, 1. Chu was not cited during prosecution
`
`of the ‘481 patent. Ex. 1001, [56]. According to Petitioner and its declarant,
`
`“Chu discloses and introduces the sequence that is now known as the
`
`Zadoff-Chu sequence.” Pet. 14; Ex. 1014 ¶ 56. The purpose is to construct
`
`codes with good autocorrelation properties. Ex. 1004, 1. Chu teaches the
`
`use of “[t]rivial variations such as cyclic shifts” and “linear phase shifts of
`
`the form exp i(2πqk/N), where q is any integer.” Id. at 2.
`
`2. Claims 4 and 6
`
`
`
`Claim 4 recites, “a value of said applied cyclic shift is determined as
`
`an integer multiple of a predetermined circular shift unit,” and claim 6
`
`recites “multiplying said specific sequence by an exponential sequence.” Ex.
`
`1001, 18:49–51, 54–56. Petitioner’s showing that Panasonic 700, Panasonic
`
`114, and Chu disclose all the elements of dependent claims 4 and 6 is
`
`detailed and supported by citations to the record, and provides a showing of
`
`an articulated basis with rational underpinnings for combining the teachings
`
`
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`of these references. Pet. 39–44. Patent Owner does not specifically address
`
`the challenge to claims 4 and 6 at this time. See generally Prelim. Resp.
`
`
`
`On the record before us and for the reasons stated in the Petition,
`
`Petitioner has established a reasonable likelihood that claims 4 and 6 would
`
`have been obvious over Panasonic 700, Panasonic 114, and Chu.
`
`E. Asserted Obviousness of Claims 8 and 9 Over
`Panasonic 700 and Motorola 595
`
`Petitioner asserts that the subject matter of claims 8 and 9 of the ’481
`
`
`
`patent would have been rendered obvious by Panasonic 700 and Motorola
`
`595. Pet. 26, 44–53.
`
`1. Motorola 595 (Ex. 1020)
`
`
`
`Motorola 595 is titled, “Method and Apparatus for Reducing Round
`
`Trip Latency and Overhead Within a Communication System.” Ex. 1020,
`
`[54]. Motorola 595 relates to “wireless broadband system development,
`
`such as in the 3rd generation partnership project (3GPP) Long Term
`
`Evolution (LTE).” Id. ¶ 3. Motorola 595 was not cited during prosecution
`
`of the ’481 patent. Ex. 1001, [56].
`
`
`
` Motorola 595 discloses circuitry for a base station or mobile station
`
`to perform uplink and downlink transmission. Ex. 1020 ¶ 41. Figure 2 of
`
`Motorola 595 is reproduced below.
`
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`13
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`Figure 2 of Motorola 595 depicts circuitry 200 comprising logic circuitry
`
`201, a microprocessor controller, transmit circuitry 202, and receive
`
`circuitry 203. Id. ¶ 41. Motorola 595 states, “transmitter 202 and receiver
`
`203 are preferably well known transmitters and receivers that utilize a 3GPP
`
`
`
`network protocol.” Id.
`
`2. Claims 8 and 9
`
`
`
`Petitioner’s showing that Panasonic 700 and Motorola 595 disclose
`
`all the elements of claims 8 and 9 is detailed and supported by citations to
`
`the record, and provides a showing of an articulated basis with rational
`
`underpinnings for combining the teachings of these references. Pet. 44–53.
`
`Patent Owner does not specifically address the challenge to claims 8 and 9 at
`
`this time. See generally Prelim. Resp.
`
`
`
`On the record before us and for the reasons stated in the Petition,
`
`Petitioner has established a reasonable likelihood that claims 8 and 9 would
`
`have been obvious over Panasonic 700 and Motorola 595.
`
`14
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`F. Asserted Obviousness of Claim 10 Over
`Panasonic 700, Panasonic 114, and Motorola 595
`
`Petitioner asserts that the subject matter of claim 10 of the ’481 patent
`
`would have been rendered obvious by Panasonic 700, Panasonic 114, and
`
`Motorola 595. Pet. 26, 53–54.
`
`Petitioner provides a detailed and supported showing that Panasonic
`
`700, Panasonic 114, and Motorola 595 teach all the limitations of claim 10
`
`and provides a showing of an articulated basis with rational underpinnings
`
`for combining the teachings of these references. Id. at. 53–54. Patent
`
`Owner does not specifically address the challenge to claim 10 at this time.
`
`See generally Prelim. Resp.
`
`On the record before us and for the reasons stated in the Petition,
`
`Petitioner has established a reasonable likelihood that the subject matter of
`
`claim 10 would have been obvious over Panasonic 700, Panasonic 114, and
`
`Motorola 595.
`
`G. Asserted Obviousness of Claims 11 and 13 Over Panasonic 700,
`Panasonic 114, Chu, and Motorola 595
`
`Claim 11 recites “a value of said applied cyclic shift is determined as
`
`an integer multiple of a predetermined circular shift unit,” and claim 13
`
`recites “multiplying said specific sequence by an exponential sequence.” Ex.
`
`1001, 19:13–15, 20:1–4. Petitioner asserts that the subject matter of claims
`
`11 and 13 of the ’481 patent would have been rendered obvious by
`
`Panasonic 700, Panasonic 114, Chu, and Motorola 595. Pet. 26–27, 54–55.
`
`Petitioner provides a detailed and supported showing that Panasonic
`
`700, Panasonic 114, Chu, and Motorola 595 teach all the limitations of
`
`claims 11 and 13, and provides a showing of an articulated basis with
`
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`rational underpinnings for combining the teachings of these references. Id.
`
`at 54–55. Patent Owner does not specifically address the challenge to claim
`
`10 at this time. See generally Prelim. Resp.
`
`On the record before us and for the reasons stated in the Petition,
`
`Petitioner has established a reasonable likelihood that claims 11 and 13
`
`would have been obvious over Panasonic 700, Panasonic 114, Chu, and
`
`Motorola 595.
`
`H. Patent Owner’s Request That The Board Exercise Its Discretion
`Under 35 U.S.C. § 325(d) to Deny Institution
`
`Patent Owner requests that the Board exercise its discretion not to
`
`
`
`institute trial in this case under 35 U.S.C. § 325(d)7 “because it presents the
`
`same or substantially the same prior art and arguments previously presented
`
`to the Board in case IPR2016-00758 (‘the 758 case’).” Prelim. Resp. 1.
`
`This is the only argument presented in the Preliminary Response. See
`
`generally Prelim. Resp.
`
`The cited references were different in the 758 case. The principal
`
`reference was Panasonic 792,8 and Motorola 595 was not cited in the 758
`
`case. The arguments presented by the Petitioner were different in the 758
`
`case, especially as related to claims 4 and 11. Compare IPR2016-00758,
`
`Paper 2, 33–36 (Petition) (citing only Panasonic 114’s Figure 1 as teaching,
`
`
`7 35 U.S.C. § 325(d) provides: “In determining whether to institute or order
`a proceeding under this chapter . . . 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.”
`
`8 Panasonic, Random Access Burst Evaluation In E-UTRA Uplink, 3 GPP
`Tdoc R1-060792, TSG-RAN WG1 Meeting #44bis, Athens, Greece (March
`27–31, 2006). IPR2016-00758, Ex. 1002.
`
`
`
`16
`
`

`
`IPR2016-01342
`Patent 8,218,481 B2
`
`“a value of said applied circular shift is determined as an integer multiple of
`
`a predetermined circular shift unit” as recited in claims 4 and 11) with Pet.
`
`39–42 (providing additional explanation relating to Panasonic 114’s
`
`disclosure and also citing Chu, 2).
`
`Because of the differences between the records in the 758 case and
`
`this case, we believe our discretion is best exercised by instituting trial in
`
`this case on all challenged claims.
`
`III.
`
` CONCLUSION
`
`For the foregoing reasons, we conclude the information presented in
`
`the Petition and Preliminary Response establishes that there is a reasonable
`
`likelihood that Petitioner will prevail in challenging at least one claim of the
`
`’481 patent.
`
`Our discussion of facts or of claim construction in this Decision is
`
`only for the purpose of determining whether or not inter partes review
`
`should be instituted and is not dispositive of any issue. At this preliminary
`
`stage, the Board has not made a final determination with respect to the
`
`patentability of the challenged claims or any underlying factual and legal
`
`issues. The Board’s final determination will be based on the record as
`
`developed during the trial.
`
`Accordingly, it is:
`
`IV. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1–4, 6, 8–11, and 13 of U.S. Patent No.
`
`8,218,481 B2 on the following grounds of unpatentability:
`
`1. Whether claims 1 and 2 are unpatentable under 35 U.S.C. § 102(a)
`
`and (b) as having been anticipated by Panasonic 700;
`
`
`
`17
`
`

`
`IPR2016-01342
`Patent 8,218,481 B2
`
`
`2. Whether claim 3 is unpatentable under 35 U.S.C. § 103(a) as
`
`having been obvious over Panasonic 700 and Panasonic 114;
`
`3. Whether claims 4 and 6 are unpatentable under 35 U.S.C. § 103(a)
`
`as having been obvious over Panasonic 700, Panasonic 114, and
`
`Chu;
`
`4. Whether claims 8 and 9 are unpatentable under 35 U.S.C. § 103(a)
`
`as having been obvious over Panasonic 700 and Motorola 595;
`
`5. Whether claim 10 is unpatentable under 35 U.S.C. § 103(a) as
`
`having been obvious over Panasonic 700, Panasonic 114, and
`
`Motorola 595; and
`
`6. Whether claims 11 and 13 are unpatentable under 35 U.S.C.
`
`§ 103(a) as having been obvious over Panasonic 700, Panasonic
`
`114, Chu, and Motorola 595;
`
`
`
`FURTHER ORDERED that no other ground of unpatentability, with
`
`respect to any claim, is instituted for trial; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`
`commences on the entry date of this Decision.
`
`18
`
`
`
`
`
`

`
`19
`
`IPR2016-01342
`Patent 8,218,481 B2
`
`PETITIONER:
`
`Charles McMahon
`Hersh Mehta
`James Glass
`John McKee
`Kevin Johnson
`Todd Briggs
`QUINNE EMANUEL
`cmcmahon@mwe.com
`hmethta@mwe.com
`jimglass@quinnemauel.com
`johnmckee@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`
`
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com

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