`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
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`IPR2016-01342
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`I. INTRODUCTION
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`ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung
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`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
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`Response to the Petition. Paper 7 (“Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
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`instituted unless the information presented in the Petition and any
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`Preliminary Response shows “there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” Taking into account the information presented, we conclude
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`the record establishes there is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the challenged claims of the ’481
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`patent. Accordingly, we institute trial as set forth below.
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`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,
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`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
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`Wireless, LLC v. ZTE Corp., C.A. 15-cv-546 (D. Del.); and Evolved
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`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
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`been instituted on claims 1–3, 6, 8–10, and 13; IPR2016-00981, in which
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`2
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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
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`which trial has been instituted on claims 1–4, 6, 8–11, 13, 15, and 16. The
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`’481 patent is also the subject of IPR2017-00068, and IPR2017-00106, in
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`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
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`U.S. Patent Application No. 12/303,947, filed on June 8, 2007, which claims
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`priority to KR 10-2006-0052167, filed June 9, 2006, and KR 10-2006-
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`0057488, filed June 26, 2006. Id. at [21], [22], [30], [45]. According to the
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`Specification, “[t]he present invention relates to a mobile communication
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`system, and more particularly, to a method of expanding a code sequence, a
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`structure of a random access channel and a method of transmitting data in a
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`mobile communication system.” Id. at 1:16–20. The disclosed methods and
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`systems are alleged to increase the amount of data that can be transmitted to
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`make the data transmission more robust and less susceptible to noise or
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`channel change. Id. at 2:45–49. And, the invention is alleged to be
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`applicable to wireless Internet systems. Id. at 18:28–30.
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`The ’481 patent contains sixteen claims, all of which are directed to
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`the structure of a preamble sequence of a data transmission. Id. at 18:33–
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`20:16. Independent claim 1 is directed to “[a] method of transmitting a
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`preamble sequence,” and independent claim 8 is directed to “[a] transmitter
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`for transmitting a preamble sequence.” Id. at 18:33–42, 18:60–19:3. The
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`independent claims require “repeating a specific sequence, having a length
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`(L), N times to generate a consecutive sequence having a length (N*L)” and
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`“concatenating a single cyclic prefix (CP) to a front end of said consecutive
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`3
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`sequence.” Id. Figure 11, which illustrates the claimed preamble structure
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`with a single prefix and a repeated sequence, is reproduced below.
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`Figure 11 depicts a single prefix at the front end of consecutive, repeated
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`
`
`sequences. Id. at 11:55–64.
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`C. The ’481 Patent Claims
`
`Of the challenged claims, claims 1 and 8 are independent. Claim 1
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`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
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`transmitting, on a random access channel, said preamble
`sequence to a receiving side.
`
`Ex. 1001, 18:33–42. Claim 8 recites:
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`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
`
`
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`4
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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
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`from a Constant Amplitude Zero Auto Correlation (CAZAC) sequence.” Id.
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`at 18:43–45, 19:4–7. Dependent claims 3 and 10 recite applying “a cyclic
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`shift sequence to said specific sequence generated from said CAZAC
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`sequence.” Id. at 18:46–48, 19:8–11. Dependent claims 4 and 11 recite “a
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`value of said applied cyclic shift is determined as an integer multiple of a
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`predetermined circular shift unit.” Id. at 18:49–51, 19:13–15. Dependent
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`claims 6 and 13 recite “multiplying said specific sequence by an exponential
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`sequence.” Id. at 18:54–56, 20:1–4.
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`D. Asserted Grounds of Unpatentability
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`Petitioner challenges claims of the ’481 patent on the following
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`grounds of unpatentability.
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`5
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`Reference(s)
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`Panasonic 7002
`
`Panasonic 700 and Panasonic 1143
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`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
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`8 and 9
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`10
`
`§ 103(a)
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`11 and 13
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`Petitioner asserts that Panasonic 700, Panasonic 114, and Chu are
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`prior art to the ’481 patent under 35 U.S.C. §§ 102(a) and 102(b), and
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`Motorola 595 is prior art under 35 U.S.C. §102(e). Pet. 10–24. Petitioner
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`makes a showing as to how Panasonic 700, Panasonic 114, and Chu qualify
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`as printed publications. Id. at 18–24. Petitioner makes a showing that
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`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).
`
`
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`6
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`provisional application. Id. at 14–17. Patent Owner does not, at this stage
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`of the proceeding, challenge the prior art status of any of these references or
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`challenge any of Petitioner’s related showings. See generally Prelim. Resp.
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`II. ANALYSIS
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`A. Claim Construction
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`A claim of an unexpired patent subject to inter partes review receives
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`the “broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). We generally
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`construe only terms that are in controversy and then only to the extent
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`necessary to resolve the controversy. See Vivid Tech., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`In the “Claim Construction” section of the Petition, Petitioner
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`discusses, “repeating a specific sequence, having a length (L), N times to
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`generate a consecutive sequence having a length (N*L),” as recited in claims
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`1 and 8. Pet. 24–25. Petitioner argues this limitation should be given its
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`“plain and ordinary meaning under the BRI standard” but fails to suggest
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`any interpretation or to provide any explanation as to how to interpret this
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`limitation. Id. Patent Owner does not discuss claim construction in its
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`Preliminary Response and does not dispute that all the limitations in claims
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`1 and 8 are disclosed in the cited art. See generally Prelim. Resp. Based on
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`this record and because there is no controversy related to this limitation that
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`it is necessary for us to resolve to make this decision on institution of trial,
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`we do not interpret this limitation at this time.
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`With regard to “preamble generating unit” and “transmission unit” in
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`claim 8, Petitioner argues, “under the BRI standard, and for purposes of this
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`7
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`proceeding only, these terms should be interpreted as ‘hardware and/or
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`software in the user equipment that is capable of” performing the respective
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`functions recited in these terms.” Pet. 25–26. However, Petitioner’s
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`argument is short and conclusory. Id. Petitioner fails to support this
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`construction by citing any language in the claims, specification, or file
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`history. Id. Petitioner states that Patent Owner proposed this construction in
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`related litigation while at the same time noting Petitioner proposed a
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`different construction in the litigation. Id. As noted previously, Patent
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`Owner does not address claim construction and does not dispute Petitioner’s
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`showing that these limitations are disclosed in the cited art. See generally
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`Prelim. Resp. Thus, at least at this stage in these proceedings, there is no
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`controversy relating to interpretation of these terms and it is not necessary
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`for us to construe these terms in order to render this decision on institution
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`of trial.6
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`B. Asserted Invalidity of Claims 1 and 2
`Over Panasonic 700
`
`Petitioner challenges claims 1 and 2 as anticipated by and as obvious
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`in view of Panasonic 700. Pet. 26–34. Patent Owner does not dispute
`
`Petitioner’s showing at this time. See generally Prelim. Resp. Most
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`significantly, Patent Owner does not argue that Panasonic 700 is not prior art
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`or that Panasonic 700 fails to fully disclose the subject matter of claims 1
`
`and 2. Id.
`
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`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).
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`1. Panasonic 700 (Ex. 1002)
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`Panasonic 700 is titled “RACH preamble evaluation in E-UTRA
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`uplink.” Ex. 1002, 1. According to Petitioner, Panasonic 700 was submitted
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`to Working Group 1 (WG 1) of the Technical Specification Group Radio
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`Access Network (TSG RAN) of Third Generation Partnership Project
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`(3GPP) Long Term Evolution (LTE) for Meeting 44, held on February 13–
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`17, 2006, in Denver. Pet. 5–6, 10. Panasonic 700 includes a heading which
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`says, “TSG-RAN WG 1 Meeting#44, Denver, USA, February 13–17, 2006.”
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`Ex. 1002, 1. Patent Owner acknowledges Panasonic 700 is a “Panasonic
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`submission, for a February, 2006 meeting.” Prelim. Resp. 5. Panasonic 700
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`was not cited during prosecution of the patent application from which the
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`’481 patent issued. Ex. 1001, [56].
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`Panasonic 700 discloses a random access channel (RACH) preamble
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`structure. Ex. 1002 at 2. Panasonic 700 states, “[a] preamble sequence
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`should have good auto-correlation and good-cross correlation [sic]. General
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`chirp-like (GCL) has been considered to satisfy these requirements. In our
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`preamble performance evaluation, Zadoff-Chu sequence, a special case of
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`GCL, is used.” Id. (citations omitted). Figure 1 of Panasonic 700 is
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`reproduced below.
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`Figure 1 of Panasonic 700 depicts a “preamble structure” with a cyclic
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`prefix (CP) and “M-times repetition of N=73 (1.25 MHz) or N=293 (5 MHz)
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`9
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`CAZAC sequence.” Id. Panasonic 700 discloses use of a “[r]epetition
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`factor (M) of CAZAC sequence” of 3, 7, 14, and 28. Id.
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`2. Claims 1 and 2
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`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–
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`35. Patent Owner does not challenge this showing at this time. See
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`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
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`showing that claims 1 and 2 are anticipated by Panasonic 700.
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`Petitioner also challenges claims 1 and 2 as obvious over Panasonic
`
`700. Pet. 26. An obviousness conclusion is based on factual inquiries
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`including the differences between the claimed invention and the prior art.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In keeping with its
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`contention that Panasonic 700 anticipates claims 1 and 2, Petitioner has not
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`articulated any difference between the claimed invention and Panasonic 700.
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`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
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`feature of claim 2 for the following reasons.”). Petitioner’s argument with
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`regard to obviousness of claims 1 and 2 is limited to the terse phrase, “or §
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`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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`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
`
`
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`would have been rendered obvious by Panasonic 700 and Panasonic 114.
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`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].
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`
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`Panasonic 114 is directed to comparing performance of different types
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`of preamble sequences including cyclic-shifted CAZAC sequences. Ex.
`
`1003, 1. Panasonic 114 discloses, “cyclic-shifted CAZAC sequence has
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`superior performance” and “[a]s the results [sic], we propose to choose
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`cyclic-shifted Zadoff-Chu CAZAC as preamble sequence mainly.” Id. at 2.
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`2. Claim 3
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`
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`Petitioner provides a detailed and supported showing that all the
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`limitations of claim 3 of the ’481 patent are taught in Panasonic 700 and
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`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.,
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`550 U.S. 398, 418 (2007). Patent Owner does not specifically address the
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`challenge to claim 3 at this time. See generally Prelim. Resp.
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`On the record before us and for the reasons stated in the Petition,
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`Petitioner has established a reasonable likelihood that the subject matter of
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`claim 3 would have been obvious over Panasonic 700 and Panasonic 114.
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`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
`
`
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`of the ’481 patent would have been rendered obvious by Panasonic 700,
`
`Panasonic 114, and Chu. Pet. 26, 39–44.
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`1. Chu (Ex. 1004)
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`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,
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`“Chu discloses and introduces the sequence that is now known as the
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`Zadoff-Chu sequence.” Pet. 14; Ex. 1014 ¶ 56. The purpose is to construct
`
`codes with good autocorrelation properties. Ex. 1004, 1. Chu teaches the
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`use of “[t]rivial variations such as cyclic shifts” and “linear phase shifts of
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`the form exp i(2πqk/N), where q is any integer.” Id. at 2.
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`2. Claims 4 and 6
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`
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`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
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`recites “multiplying said specific sequence by an exponential sequence.” Ex.
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`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
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`detailed and supported by citations to the record, and provides a showing of
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`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.
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`
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`On the record before us and for the reasons stated in the Petition,
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`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
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`
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`patent would have been rendered obvious by Panasonic 700 and Motorola
`
`595. Pet. 26, 44–53.
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`1. Motorola 595 (Ex. 1020)
`
`
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`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].
`
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`
` Motorola 595 discloses circuitry for a base station or mobile station
`
`to perform uplink and downlink transmission. Ex. 1020 ¶ 41. Figure 2 of
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`Motorola 595 is reproduced below.
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`Figure 2 of Motorola 595 depicts circuitry 200 comprising logic circuitry
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`201, a microprocessor controller, transmit circuitry 202, and receive
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`circuitry 203. Id. ¶ 41. Motorola 595 states, “transmitter 202 and receiver
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`203 are preferably well known transmitters and receivers that utilize a 3GPP
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`
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`network protocol.” Id.
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`2. Claims 8 and 9
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`
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`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.
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`Patent Owner does not specifically address the challenge to claims 8 and 9 at
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`this time. See generally Prelim. Resp.
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`
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`On the record before us and for the reasons stated in the Petition,
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`Petitioner has established a reasonable likelihood that claims 8 and 9 would
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`have been obvious over Panasonic 700 and Motorola 595.
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`F. Asserted Obviousness of Claim 10 Over
`Panasonic 700, Panasonic 114, and Motorola 595
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`Petitioner asserts that the subject matter of claim 10 of the ’481 patent
`
`would have been rendered obvious by Panasonic 700, Panasonic 114, and
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`Motorola 595. Pet. 26, 53–54.
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`Petitioner provides a detailed and supported showing that Panasonic
`
`700, Panasonic 114, and Motorola 595 teach all the limitations of claim 10
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`and provides a showing of an articulated basis with rational underpinnings
`
`for combining the teachings of these references. Id. at. 53–54. Patent
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`Owner does not specifically address the challenge to claim 10 at this time.
`
`See generally Prelim. Resp.
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`On the record before us and for the reasons stated in the Petition,
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`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.
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`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.
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`1001, 19:13–15, 20:1–4. Petitioner asserts that the subject matter of claims
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`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.
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`at 54–55. Patent Owner does not specifically address the challenge to claim
`
`10 at this time. See generally Prelim. Resp.
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`On the record before us and for the reasons stated in the Petition,
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`Petitioner has established a reasonable likelihood that claims 11 and 13
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`would have been obvious over Panasonic 700, Panasonic 114, Chu, and
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`Motorola 595.
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`H. Patent Owner’s Request That The Board Exercise Its Discretion
`Under 35 U.S.C. § 325(d) to Deny Institution
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`Patent Owner requests that the Board exercise its discretion not to
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`
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`institute trial in this case under 35 U.S.C. § 325(d)7 “because it presents the
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`same or substantially the same prior art and arguments previously presented
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`to the Board in case IPR2016-00758 (‘the 758 case’).” Prelim. Resp. 1.
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`This is the only argument presented in the Preliminary Response. See
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`generally Prelim. Resp.
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`The cited references were different in the 758 case. The principal
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`reference was Panasonic 792,8 and Motorola 595 was not cited in the 758
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`case. The arguments presented by the Petitioner were different in the 758
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`case, especially as related to claims 4 and 11. Compare IPR2016-00758,
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`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.
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`IPR2016-01342
`Patent 8,218,481 B2
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`“a value of said applied circular shift is determined as an integer multiple of
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`a predetermined circular shift unit” as recited in claims 4 and 11) with Pet.
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`39–42 (providing additional explanation relating to Panasonic 114’s
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`disclosure and also citing Chu, 2).
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`Because of the differences between the records in the 758 case and
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`this case, we believe our discretion is best exercised by instituting trial in
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`this case on all challenged claims.
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`III.
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` CONCLUSION
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`For the foregoing reasons, we conclude the information presented in
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`the Petition and Preliminary Response establishes that there is a reasonable
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`likelihood that Petitioner will prevail in challenging at least one claim of the
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`’481 patent.
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`Our discussion of facts or of claim construction in this Decision is
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`only for the purpose of determining whether or not inter partes review
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`should be instituted and is not dispositive of any issue. At this preliminary
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`stage, the Board has not made a final determination with respect to the
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`patentability of the challenged claims or any underlying factual and legal
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`issues. The Board’s final determination will be based on the record as
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`developed during the trial.
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`Accordingly, it is:
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`IV. ORDER
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`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is instituted as to claims 1–4, 6, 8–11, and 13 of U.S. Patent No.
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`8,218,481 B2 on the following grounds of unpatentability:
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`1. Whether claims 1 and 2 are unpatentable under 35 U.S.C. § 102(a)
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`and (b) as having been anticipated by Panasonic 700;
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`IPR2016-01342
`Patent 8,218,481 B2
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`2. Whether claim 3 is unpatentable under 35 U.S.C. § 103(a) as
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`having been obvious over Panasonic 700 and Panasonic 114;
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`3. Whether claims 4 and 6 are unpatentable under 35 U.S.C. § 103(a)
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`as having been obvious over Panasonic 700, Panasonic 114, and
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`Chu;
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`4. Whether claims 8 and 9 are unpatentable under 35 U.S.C. § 103(a)
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`as having been obvious over Panasonic 700 and Motorola 595;
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`5. Whether claim 10 is unpatentable under 35 U.S.C. § 103(a) as
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`having been obvious over Panasonic 700, Panasonic 114, and
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`Motorola 595; and
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`6. Whether claims 11 and 13 are unpatentable under 35 U.S.C.
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`§ 103(a) as having been obvious over Panasonic 700, Panasonic
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`114, Chu, and Motorola 595;
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`
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`FURTHER ORDERED that no other ground of unpatentability, with
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`respect to any claim, is instituted for trial; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
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`commences on the entry date of this Decision.
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`IPR2016-01342
`Patent 8,218,481 B2
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`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