IPR 2016-01342
`U.S. Patent No. 8,218,481
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`
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`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.,
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`Petitioner,
`
`V.
`
`Evolved Wireless, LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-01342
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,218,481
`
`
`
`
`
`U.S. Patent No. 8,218,481
`
`
`
`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
`
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,218,481
`
`
`
`
`
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`TABLE OF CONTENTS
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`Page
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`RELATED PROCEEDINGS .......................................................................... 2
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`III.
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`FACTUAL BACKGROUND.......................................................................... 8
`
`A.
`
`B.
`
`The 8,218,481 Patent ............................................................................. 8
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`Overview of Petition for Inter Partes Review ....................................12
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`IV.
`
`the petition should be denied in its entirety ...................................................13
`
`A.
`
`B.
`
`Legal Standard .....................................................................................13
`
`The Petition Relies Upon Substantially the Same Prior Art and
`Arguments Previously Presented to the Office by Petitioner
`ZTE in the 758 Petition and Should Be Denied ..................................14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Panasonic 700 and Panasonic 792 Include the Same
`Disclosure ..................................................................................15
`
`The Instant Petition Presents the Same Art and
`Arguments as the 758 Petition by Continuing to Rely
`Upon Panasonic 114 .................................................................17
`
`The Strategic Decision to Assert Separate Grounds for
`Apparatus Claims Does Not Alter the Conclusion That
`the Petitions Present the Same or Substantially the Same
`Art and Arguments ....................................................................19
`
`The Board Should Deny Petitioner ZTE a Second Bite at
`the Apple on Claims 4 and 11 ...................................................20
`
`The Board Should Deny Institution for Claims Already
`Instituted in the 758 Case ..........................................................21
`
`V.
`
`CONCLUSION ..............................................................................................22
`i
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arista Networks, Inc. v. Cisco Sys. Inc.,
`Case IPR2015-01710, Paper 7 (P.T.A.B. Feb. 16, 2016) ................................... 20
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 13
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`Case 2014-00783, Paper 9 (P.T.A.B. Nov. 7, 2014) .................................... 18, 19
`
`In re Cyclobenzaprine Hydrochloride Extended—Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 14
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 13
`
`NetApp Inc. v. Crossroads Systems, Inc.,
`Case IPR2015-00772, Paper 12 (P.T.A.B. Sept. 3, 2015) .................................. 20
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 14
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`Case IPR2015-00118, Paper 14 (P.T.A.B. Jan. 28, 2015) ..................... 18, 21, 22
`
`Sanofi-Synthelabo, Inc. v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 13
`
`Unilever, Inc. v. Procter & Gamble Co.,
`Case IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) ................................... 18
`
`ZTE Corp. v. ContentGuard Holdings Inc.,
`Case IPR2013-00454, Paper 12 (P.T.A.B. Sept. 25, 2013) ................................ 21
`
`Statutes
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`35 U.S.C. § 314(a) ................................................................................................... 14
`ii
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`35 U.S.C. § 325(d) ....................................................................................... 14, 20, 22
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`35 U.S.C. § 371 .......................................................................................................... 8
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`Rules
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`37 C.F.R. § 42.1(b) .................................................................................................. 22
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`37 C.F.R. § 42.20(c) ................................................................................................. 13
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.108(c) ............................................................................................... 13
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`
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`iii
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Evolved Wireless, LLC
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`submits this Preliminary Response to the above-captioned Petition for Inter Partes
`
`Review of U.S. Patent No. 8,218,481 (“Pet.”).
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`I.
`
`INTRODUCTION
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`The Petition should be denied because it presents the same or substantially
`
`the same prior art and arguments previously presented to the Board in case
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`IPR2016-00758 (“the 758 Case”) and the Board should therefore exercise its
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`discretion under 325(d) to deny institution. The petition in the 758 Case (“the 758
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`Petition”) and the instant Petition both include ZTE (USA) Inc. (“ZTE”) among the
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`petitioners. The instant Petition was filed shortly after Evolved Wireless filed its
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`Patent Owner Preliminary Response in the 758 Case, in which Evolved Wireless
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`identified deficiencies in the 758 Petition. In filing the instant Petition, ZTE used
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`Evolved Wireless’s Patent Owner Preliminary Response to the 758 Petition as a
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`road map to correct flaws in its earlier-filed petition.
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`The Board has now issued its Institution Decision in the 758 Case,
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`instituting as to certain claims and denying as to others. Consideration of the
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`instant Petition with respect to the instituted claims is an inefficient use of the
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`Parties’ and the Board’s limited resources. The same or substantially the same art
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`and arguments are already before the Board in an instituted inter partes review,
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`1
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`and there simply is no reason to institute a second inter partes review with an
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`overlapping Petitioner on the same grounds.
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`The Board should also exercise its discretion to deny institution with respect
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`to the claims for which institution has now been denied in the 758 Case. Through
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`the instant Petition, filed with the benefit of Evolved Wireless’s identification of
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`the shortcomings in the 758 Petition, Petitioner ZTE is requesting a second chance
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`to address claims that it unsuccessfully challenged in the 758 Petition. Because
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`granting ZTE a second bite at the apple would not help secure the just, speedy, and
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`inexpensive resolution of every proceeding and would instead encourage the filing
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`of petitions that are partially inadequate, the instant Petition should be denied in its
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`entirety.
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`II.
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`RELATED PROCEEDINGS
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`Patent Owner Evolved Wireless is currently asserting the ’481 patent in six
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`cases in the District of Delaware against manufactures of cellular phones and other
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`devices that practice the LTE standard and thereby infringe the standard-essential
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`claims of the ’481 patent: Evolved Wireless, LLC v. Apple, Inc., Case No. 15-cv-
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`542-SLR; Evolved Wireless, LLC v. HTC Corp., et al, Case No. 15-cv-543-SLR;
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`Evolved Wireless, LLC v. Lenovo Group Ltd., et al, Case No. 15-cv-544-SLR;
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`Evolved Wireless, LLC v. Samsung Electronics Co., et al, Case No. 15-cv-545-
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`2
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`SLR; Evolved Wireless, LLC v. ZTE Corp., et al, Case No. 15-cv-546-SLR; and
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`Evolved Wireless, LLC v. Microsoft Corp., et al, Case No. 15-cv-547-SLR.
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`The ’481 patent is also the subject of six petitions for inter partes review
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`filed by various combinations of the Defendants in the Delaware litigations. Three
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`of the six petitions include Petitioner ZTE (USA) Inc. (“ZTE”). The first of these
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`petitions, in case IPR2016-00758, was filed March 23, 2016 by Petitioner ZTE as
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`well as HTC Corporation and HTC America, Inc. In the 758 Petition, ZTE asserted
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`that claims 1-4, 6, 8-11, and 13 were invalid over three references, Panasonic 792,
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`Panasonic 114, and Chu. Specifically, 758 Petition Ground 1 asserted that claims
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`1-2 and 8-9 are invalid based on Panasonic 792; 758 Petition Ground 2 asserted
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`that claims 3-4 and 10-11 are invalid based on Panasonic 792 and Panasonic 114;
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`and 758 Petition Ground 3 asserted that claims 6 and 13 are invalid based on
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`Panasonic 792, Panasonic 114, and Chu. Panasonic 792 was the primary reference
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`with respect to each challenged claim in the 758 Petition.
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`Evolved Wireless filed its Patent Owner Preliminary Response to the 758
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`Petition on June 29, 2016. ZTE (USA) Inc. v. Evolved Wireless LLC, Case
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`IPR2016-00758, Paper 9 (P.T.A.B. June 29, 2016) (“758 POPR”). Evolved
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`Wireless explained that the 758 Petition failed to establish a reasonable likelihood
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`of success that Panasonic 792 disclosed the limitation “repeating a specific
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`sequence, having a length (L), N times to generate a consecutive sequence having a
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`3
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`length (N*L),” required for every claim of the ’481 patent, under the construction
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`asserted in the 758 Petition. Id. at 11-14. Evolved Wireless also explained that the
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`758 Petition failed to establish a reasonable likelihood of success with respect to
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`the assertion that Panasonic 114 disclosed the “integer multiple” required by the
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`limitation “a value of said applied cyclic shift is determined as an integer multiple
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`of a predetermined circular shift unit” in dependent claims 4 and 11. Id. at 14-16.
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`Less than a week after Evolved Wireless filed its Patent Owner Preliminary
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`Response to the 758 Petition, Petitioners here, including ZTE, filed the instant
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`Petition. The instant Petition made slight modifications in response to the
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`deficiencies Evolved Wireless identified in its Patent Owner Preliminary Response
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`to the 758 Petition, but ultimately relies on the same or substantially the same art
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`and arguments as presented in the 758 Petition.
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`In particular, the instant Petition includes three changes from the 758
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`Petition.1 First, the instant Petition now asserts Panasonic 700 as the primary
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`reference for all grounds, rather than Panasonic 792. Panasonic 700 and Panasonic
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`1 The instant Petition also presents different claim constructions from the 758
`Petition. Compare 758 Petition at 21-23 with Pet. at 24-26. For example, in the
`instant Petition, ZTE abandons the construction for the phrase “repeating a specific
`sequence, having a length (L), N times to generate a consecutive sequence having
`a length (N*L)” which ZTE had previously argued applied in the 758 Petition. Pet.
`at 24-25. Petitioner ZTE’s new claim construction positions do not, however,
`change the fact that the instant Petition relies on the same or substantially the same
`arguments because the Petition nevertheless argues that the same disclosure
`allegedly discloses the same challenged claims in both Petitions.
`4
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`792 are two submissions by Panasonic to meetings of the Third Generation
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`Partnership Project (“3GPP”) standard-setting organization as part of the process
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`that led to adoption of the Long Term Evolution, or LTE, standard. The two
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`references include the same disclosure, however, because Panasonic 700 is simply
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`an earlier Panasonic submission, for a February 2006 meeting, the substance of
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`which was resubmitted as Panasonic 792 for the March 2006 meeting. Figure 1 of
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`each reference, on which the 758 Petition and the instant Petition rely, disclose
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`identical preamble structures:
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`ZTE (USA) Inc. v. Evolved Wireless LLC, Case IPR2016-00758, Paper 2, at 11
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`(citing Panasonic 792 at 2).
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`
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`(Pet. at 11 (citing Panasonic 700 at 2).)
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`5
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`Because the disclosure in Panasonic 700 on which the instant Petition relies
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`is identical to the disclosure in Panasonic 792 on which the 758 Petition relies, the
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`instant Petition is redundant.
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`Second, while the 758 Petition asserted that claim 4 was invalid based on
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`Panasonic 792 and Panasonic 114, the instant Petition now asserts that claim 4 is
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`invalid based on Panasonic 700, Panasonic 114, and Chu. This “change” too,
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`however, is immaterial. The instant Petition simply addresses claim 4 in its Ground
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`3, which includes Chu, as opposed to its Ground 2. But within Ground 3, the
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`instant Petition nevertheless asserts that claim 4 is disclosed by Panasonic 700 and
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`Panasonic 114. (See Pet. at 40-41 (“Panasonic 114 discloses ‘a value of said
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`applied cyclic shift is determined as an integer multiple of a predetermined circular
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`shift unit.’”) The instant Petition therefore relies on the same disclosure as
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`allegedly invalidating claim 4 that the 758 Petition relied upon and is redundant.
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`Third, in addition to Grounds 1, 2, and 3 (relying upon Panasonic 700,
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`Panasonic 114, and Chu), which correspond to 758 Petition Grounds 1, 2, and 3
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`(relying upon Panasonic 792, Panasonic 114, and Chu), the instant Petition has
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`added a second set of Grounds, Grounds 4, 5, and 6, which duplicate Grounds 1, 2,
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`and 3 and also add Motorola 595 as a reference. The instant Petition then asserts
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`that Grounds 1, 2, and 3 allegedly invalidate the method claims, while Grounds 4,
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`5, and 6 allegedly invalidate the corresponding apparatus claims. Here, too,
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`6
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`however, the “change” is immaterial. In particular, with respect to each of Ground
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`4, 5, and 6, the instant Petition asserts that the references relied upon in the
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`corresponding Ground 1, 2, or 3 also allegedly invalidate the apparatus claims.
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`(See, e.g., Pet. at 44 (“Panasonic 700 also discloses a transmitter for transmitting a
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`preamble sequence in a mobile communication system.”), 46 (“To the extent
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`Panasonic 700 lacks an express description of a hardware/software combination
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`that performs these steps, it would have been obvious to person skilled in the art
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`that a UE would include a hardware/software combination that is capable of
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`performing those steps.”).) Here, too, then the instant Petition relies on
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`substantially the same art and arguments as the 758 Petition and is redundant.
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`On September 12, 2016, the Board issued its Institution Decision regarding
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`the 758 Petition. After rejecting the claim construction proposed in the 758
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`Petition, the Board instituted inter partes review of claims 1, 2, 8, and 9 based on
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`Panasonic 792; claims 3 and 10 based on Panasonic 792 and Panasonic 114; and
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`claims 6 and 13 based on Panasonic 792, Panasonic 114, and Chu. ZTE (USA) Inc.
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`v. Evolved Wireless LLC, Case IPR2016-00758, Paper 12, at 21. The Board denied
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`institution with respect to claims 4 and 11. Id. at 16. The instant Petition therefore
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`seeks inter partes review of claims 1-3, 6, 8-10, and 13 based on the same or
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`substantially the same art and arguments for which review has already been
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`instituted as to those claims, and seeks a second bite at the apple for claims 4 and
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`7
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`11, based on the same or substantially the same art and arguments for which
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`institution has now been denied as to those claims.
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`III.
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`FACTUAL BACKGROUND
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`A. The 8,218,481 Patent
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`The ’481 patent issued from application no. 12/303,947, the National Stage
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`filing under 35 U.S.C. § 371 of International Application No. PCT/KR07/02784,
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`which was filed by LG Electronics Inc. (“LG Electronics”) on June 8, 2007 and
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`claims priority to two Korean Applications, No. 10-2006-0052617, filed on June 9,
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`2006, and No. 10-2006-0057488, filed on June 26, 2006. Following issuance of the
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`’481 patent on July 10, 2012, three additional patents have also issued from the
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`same specification.
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`LG Electronics, the original assignee of the ’481 patent, is a global leader
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`and technology innovator in consumer electronics and mobile communications. LG
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`Electronics is an active participant in the 3rd Generation Partnership Project
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`(“3GPP”), the standards-setting organization that developed the Long-Term
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`Evolution, or LTE, standard. The inventions disclosed in the ’481 patent
`
`specification relate to LG Electronics’ contributions to the development of that
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`standard, and the specific inventions claimed by the ’481 patent have been adopted
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`as part of the 3GPP LTE standard. By being adopted into the 3GPP LTE standard,
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`members of 3GPP recognized and agreed that the claimed inventions in the ’481
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`patent were innovative solutions to the problems faced during the development of
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`the standard.
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`The specification of the patent family that includes the ’481 patent discloses
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`data transmission methods for mobile communication systems that improve over
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`prior art systems in three ways: improved code sequences for use in such
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`transmissions, improved structures for the random access channels that enable user
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`equipment such as cell phones to access mobile communication networks, and
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`improved transmission methods that employ such sequences and random access
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`channels. (See, e.g., Ex. 1001 at 2:37-3:45.) The random access channel is used by
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`a user equipment to access a network when the user equipment is not yet
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`synchronized with the network, such as when the user equipment is first turned on
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`or after coming out of a prolonged idle state. (Ex. 1001 at 1:24-26.)
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`The claims of the ’481 patent itself are directed toward methods and
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`apparatuses for accessing a random access channel using a particular structure of a
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`code sequence. The claimed structure comprises a preamble sequence constructed
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`from consecutive sequences to which a single cyclic prefix is concatenated, as
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`shown in Figure 11:
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`Claim 1 recites a method for transmitting preamble sequences using this
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`
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`structure:
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`A method of transmitting a preamble sequence in a mobile
`communication system, the method comprising:
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`repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L);
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`generating said preamble sequence by concatenating a single
`cyclic prefix (CP) to a front end of said consecutive sequence;
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`and transmitting, on a random access channel, said preamble
`sequence to a receiving side.
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`The claims of the ’481 patent contribute to at least two important benefits of
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`the current cellular technology, known as 4G or LTE. First, using a cyclic prefix
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`followed by repetitive sequences enables a receiver (a base station or cell tower) to
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`easily identify preamble sequences transmitted on the random access channel. This
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`provides an efficient method that enables cell phones to quickly obtain
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`synchronization with cell towers, thus decreasing the latency experienced by users.
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`Second, repeating sequences provides an elegant means of enabling
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`flexibility in cell sizes in a deployed cellular system. Generally, urban areas with
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`higher density populations and obstacles such as large buildings require numerous
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`small cells, whereas rural areas with lower density populations can be serviced by
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`a smaller number of large cells. Large cells, however, cause longer delay time for
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`signal transmission, which necessitates the use of longer preamble sequences. (See
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`Ex. 1001 at 2:37-44.) The claims of the ’481 patent therefore provide an elegant,
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`novel mechanism to alter the length of a preamble sequence through repetition of a
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`specific sequence, thus enabling a cellular system which deploys smaller cells in
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`more densely populated areas and larger cells in rural areas. (See Ex. 1001 at
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`11:46-12:17.)
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`The dependent claims add additional steps to the method that provide further
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`improvements. Claim 2 adds that the specific sequence of claim 1 is “a Constant
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`Amplitude Zero Auto Correlation (CAZAC) sequence.” (Ex. 1001 at 18:43-45.)
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`CAZAC sequences exhibit “excellent transmission characteristics” that provide
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`additional benefits to LTE systems. (Ex. 1001 at 9:12-15.) Claim 3 adds the
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`additional step of applying a cyclic shift to the CAZAC sequence. (Ex. 1001 at
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`18:46-48.) Cyclically shifted CAZAC sequences are orthogonal to each other,
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`11
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`U.S. Patent No. 8,218,481
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`enabling a cell tower to differentiate between preamble sequences transmitted by
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`different cell phones. Claims 4 and 6 recite methods of applying the cyclic shift of
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`claim 3. The remaining challenged claims, 8-11 and 13, are directed toward
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`apparatuses configured to use the inventive methods of claims 1-4 and 6.
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`B. Overview of Petition for Inter Partes Review
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`Petitioners base their Petition for IPR on six Grounds. Grounds 1, 2, and 3
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`challenge the method claims of the ’481 patent, and Grounds 4, 5, and 6 challenge
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`the corresponding apparatus claims.
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`Ground 1 asserts that claims 1 and 2 are invalid based on Panasonic 700, a
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`submission from Panasonic for a meeting occurring on February 13-17, 2006 as
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`part of the process of developing the Long Term Evolution (“LTE”) mobile
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`communications standard. Ground 2 asserts that claim 3 is invalid based on
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`Panasonic 700 and Panasonic 114, another submission from Panasonic for a later
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`meeting, which proposes a different structure for a preamble sequence from that
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`proposed in Panasonic 700. Ground 3 asserts that claims 4 and 6 are invalid based
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`on Panasonic 700, Panasonic 114, and Chu, a paper published in 1972.
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`Grounds 4, 5, and 6 then challenge the apparatus claims by adding Motorola
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`595, a patent application published in 2007, to the corresponding Grounds 1, 2, or
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`3 challenging the method claims. Specifically, Ground 4 asserts that claims 8 and 9
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`are invalid based on Panasonic 700 and Motorola 595; Ground 5 asserts that claim
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`12
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
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`10 is invalid based on Panasonic 700, Panasonic 114, and Motorola 595; and
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`Ground 6 asserts that claims 11 and 13 are invalid based on Panasonic 700,
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`Panasonic 114, Chu, and Motorola 595.
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`IV.
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`THE PETITION SHOULD BE DENIED IN ITS ENTIRETY
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`A. Legal Standard
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`As the moving party, a petitioner “has the burden of proof to establish that it
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`is entitled to the requested relief.” 37 C.F.R. § 42.20(c). “Inter partes review shall
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`not be instituted for a ground of unpatentability unless the Board decides that the
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`petition supporting the ground would demonstrate a reasonable likelihood that at
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`least one of the claims challenged in the petition is unpatentable.” § 42.108(c).
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`A claim is anticipated only when “every element and limitation of the claim
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`was previously described in a single prior art reference, either expressly or
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`inherently.” Sanofi-Synthelabo, Inc. v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir.
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`2008). Similarly, “obviousness requires a suggestion of all limitations in a claim.”
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`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
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`(emphasis added). In addition, a party asserting obviousness bears the burden to
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`demonstrate both “that a skilled artisan would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention, and that the
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`skilled artisan would have had a reasonable expectation of success in doing so.”
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
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`13
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`2012) (quoting Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989,
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`994 (Fed. Cir. 2009) (internal quotation marks omitted)); In re Cyclobenzaprine
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`Hydrochloride Extended—Release Capsule Patent Litig., 676 F.3d 1063, 1068-69
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`(Fed. Cir. 2012).
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`Inter partes review may not be authorized unless “the information presented
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`in the petition . . . and any response . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a). In addition, the institution decision “may take
`
`into account whether, and reject the petition or request because, the same or
`
`substantially the same prior art or arguments were presented to the Office.” 35
`
`U.S.C. § 325(d).
`
`B.
`
`The Petition Relies Upon Substantially the Same Prior Art and
`Arguments Previously Presented to the Office by Petitioner ZTE
`in the 758 Petition and Should Be Denied
`
`The Board should exercise its discretion under 35 U.S.C. § 325(d) and reject
`
`the instant Petition because it relies on substantially the same art and arguments as
`
`were previously presented by Petitioner ZTE in the 758 Petition. While the
`
`asserted Grounds in the two Petitions appear to be different, these differences are
`
`on the surface only. In fact the two Petitions rely on the same disclosure as
`
`allegedly disclosing the challenged claims, and include changes to address issues
`
`14
`
`
`
`IPR 2016-01342
`U.S. Patent No. 8,218,481
`
`raised in Evolved Wireless’s Patent Owner Preliminary Response to the 758
`
`Petition and to attempt to obscure the overlap between the two petitions.
`
`1.
`
`Panasonic 700 and Panasonic 792 Include the Same
`Disclosure
`
`The 758 Petition relied upon Panasonic 792 as the primary reference for
`
`every challenged claim. 758 Petition at 24-36, 39-40. In response to the 758
`
`Petition, Evolved Wireless explained that that Petition failed to set forth evidence
`
`that Panasonic 792 disclosed the limitation “repeating a specific sequence, having
`
`a length (L), N times to generate a consecutive sequence having a length (N*L)”
`
`under the construction proposed by Petitioners, including ZTE, in the 758 Petition.
`
`758 POPR at 12-14. Petitioners, including ZTE, then abandoned their proposed
`
`construction (which was later rejected by the Board) in the instant Petition and
`
`shifted from Panasonic 792 to Panasonic 700 as allegedly disclosing the limitation.
`
`(Pet. at 25, 28.) The switch in Panasonic references is, however, a distinction
`
`without a difference because both Panasonic 792 and Panasonic 700 disclose the
`
`same preamble structure composed of multiple short CAZAC sequences.
`
`For example, the description in the 758 Petition of the preamble structure in
`
`Panasonic 792 mirrors the description in the instant Petition of the preamble
`
`structure in Panasonic 700, as seen below:
`
`15
`
`
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`IPR 2016-01342
`U.S. Patent No. 8,218,481
`
`
`
`758 Petition at 23-24 (emphasis added)
`
`Pet. at 28-29 (emphasis added)
`
`Panasonic 792 discloses “repeating
`a specific sequence, having a length
`(L), N times to generate a consecutive
`sequence having a length (N*L).” For
`example, Figure 1 of Panasonic 792
`shows a RACH preamble structure.
`(Ex. 1014, Min Decl., at ¶ 59.)
`
`Panasonic 700 discloses “repeating
`a specific sequence, having a length
`(L), N times to generate a consecutive
`sequence having a length (N*L).” For
`example, Figure 1 of Panasonic 700
`shows a RACH preamble structure.
`
`
`(Ex. 1002, Panasonic 792, at Fig. 1
`(annotation added).) The preamble
`structure consists of M repetitions of a
`CAZAC sequence having a length of
`N=73 (1.25 MHz) or N=293 (5MHz).
`(Ex. 1014, Min Decl., at ¶ 60 (citing Ex.
`1002, Panasonic 792, at § 2.2).) Each
`CAZAC sequence is a Zadoff-Chu
`(Id.) Each of
`sequence
`the M
`repetitions has a length of 512 samples,
`which corresponds to 66.67us. (Id.
`(citing Ex. 1002, Panasonic 792, at §
`2.2, Fig. 1).)
`
`
`(Ex. 1002, Panasonic 700, at Fig.1
`(annotation added).) The preamble
`structure consists of M repetitions of
`a CAZAC sequence having a length of
`N=73 (1.25 MHz) or N=293 (5MHz).
`(Ex. 1014, Min Decl., at ¶ 67 (citing
`Ex. 1002, Panasonic 700, at § 2.2).)
`Each CAZAC sequence is a Zadoff-
`Chu sequence. (Id.) Each of the M
`repetitions has a
`length of 512
`samples, which
`corresponds
`to
`(Id.
`66.67ux.
`(citing Ex. 1002,
`Panasonic 700, at § 2.2, Fig. 1).)
`Based
`on
`the disclosure
`
`of
`
`16
`
`
`
`IPR 2016-01342
`U.S. Patent No. 8,218,481
`
`Based on Figure 1 of Panasonic 792,
`a person of ordinary skill in the art
`would have understood that the part of
`the preamble structure emphasized
`above (e.g., “the consecutive sequence”)
`may be generated by repeating the
`(e.g., “a specific
`CAZAC sequence
`sequence”) M times. (Id. at ¶ 61.)
`
`Panasonic 700, persons of ordinary
`skill in the art would have understood
`the part of
`the preamble
`that
`structure emphasized above (e.g., “the
`consecutive
`sequence”) may be
`generated by repeating the CAZAC
`sequence (e.g., “a specific sequence”)
`M times. (Id. at ¶ 68.)
`
`
`
`The bolded portions of the text above are identical, establishing that
`
`notwithstanding the switch from Panasonic 792 to Panasonic 700, Petitioners
`
`nevertheless present the same art and arguments as to the primary reference in the
`
`instant Petition and the 758 Petition.
`
`2.
`
`The instant Petition Presents the Same Art and Arguments as the
`758 Petition by Continuing to Rely Upon Panasonic 114
`
`Evolved Wireless also explained in response to the 758 Petition that
`
`Petitioners in that case, including ZTE, had failed to establish that Panasonic 114
`
`discloses the limitation “a value of said applied cyclic shift is determined as an
`
`integer multiple of a predetermined circular shift unit,” required for claims 4 and
`
`11. 758 POPR at 14-16. After being informed of this deficiency, Petitioners in the
`
`instant Petition, including ZTE, moved claim 4 from 758 Petition Ground 2
`
`(Panasonic 792 and Panasonic 114) to Ground 3 in the instant Petition (Panasonic
`
`17
`
`
`
`IPR 2016-01342
`U.S. Patent No. 8,218,481
`
`700, Panasonic 114, and Chu). Petitioners here, including ZTE, continue however
`
`to assert that Panasonic 114 discloses the limitation and have provided additional
`
`discussion in the present Petition to attempt to remedy the shortcomings of the 758
`
`Petition. Compare Pet. at 41 with 758 Petition at 34. Petitioner ZTE’s attempt to
`
`bolster the previous, insufficient arguments should be rejected. See Unilever, Inc.
`
`v. Procter & Gamble Co., Case IPR2014-00506, Paper 17 at 8 (P.T.A.B. July 7,
`
`2014) (denying institution where second petition attempts “to bolster challenges
`
`that were advanced, unsuccessfully, in the [earlier] Petition”).
`
`Only after alleging that Panasonic 114 discloses the additional limitations of
`
`claim 4 does the instant Petition then assert that Chu also allegedly discloses those
`
`limitations. See Pet. at 41-42. Chu was also relied upon in the 758 Petition,
`
`however, and Petitioners then, including ZTE, chose not to advance this argument
`
`in that earlier-filed Petition, indicating that the reliance upon Chu in the instant
`
`Petition “is either superfluous or redundant.” See CustomPlay, LLC v. ClearPlay,
`
`Inc., Case 2014-00783, Paper 9, at 12 (P.T.A.B. Nov. 7, 2014) (denying institution
`
`because later-filed Petition presented substantially the same prior art and
`
`arguments as earlier-filed Petition notwithstanding addition of new reference).
`
`Indeed, by seeking to rely on Chu as well as Panasonic 114 with respect to claim 4,
`
`Petitioner ZTE “simply presents an argument now that it could have made in [the
`
`758 Petition], had it merely chosen to do so.” See Samsung Elecs. Co. v.
`
`18
`
`
`
`IPR 2016-01342
`U.S. Patent No. 8,218,481
`
`Rembrandt Wireless Techs., LP, Case IPR2015-00118, Paper 14 at 7 (P.T.A.B.
`
`Jan. 28, 2015).
`
`3.
`
`The Strategic Decision to Assert Separate Grounds for Apparatus
`Claims Does Not Alter the Conclusion That the Petitions Present
`the Same or Substantially the Same Art and Arguments
`
`Petitioners’ attempt to avoid the conclusion that the two Petitions assert the
`
`same art and arguments by adding additional Grounds for th
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