Paper No. 11
` Entered: January 12, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`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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`IPR2016-01349
`Patent 8,218,481 B2
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`I. INTRODUCTION
`ZTE (USA) Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–4, 6, 8–11, 13, 15, and 16 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.
`The ’481 patent is the subject of Case IPR2016-00758, in which trial
`has been instituted on claims 1–3, 6, 8–10, and 13, and of Case IPR2016-
`00981, in which trial has been instituted on claims 1, 8, 15, and 16. The
`’481 patent is also the subject of Cases IPR2016-01342, IPR2017-00068,
`
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`Patent 8,218,481 B2
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`and IPR2017-00106, in which decisions as to whether or not 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
`sequence.” Id. Figure 11, which illustrates the claimed preamble structure
`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
`sequences. Id. at 18:46–60.
`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
`length (N*L) and concatenating a single cyclic prefix (CP) to
`a front end of said consecutive sequence;
`
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`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. Dependent claims 15 and 16 recite
`“said consecutive sequence comprises at least a first sequence, a second
`sequence, and an N-th sequence; and said CP is identical to a rear part of
`said N-th sequence.” Id. at 20:9–16.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims of the ’481 patent on the following
`grounds of unpatentability. Petitioner presents two sets of alternative
`grounds of unpatentability. The first set, styled as Grounds 1A, 1B, 1C, and
`1D, applies if the preambles of independent claims 1 and 8 are construed to
`be non-limiting; and the second set, Grounds 2A, 2B, 2C, and 2D, applies if
`the preambles are construed to be limiting. Pet. 21–24.
`
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`Ground
`1A
`
`1B
`
`1C
`
`1D
`
`2A
`
`2B
`
`2C
`
`2D
`
`
`Reference(s)
`IEEE802.16-20042
`
`IEEE802.16-2004 and
`Chou3
`IEEE802.16-2004 and
`Tan4
`IEEE802.16-2004,
`Chou, and Tan
`IEEE802.16-2004 and
`IEEE802.16e-20055
`IEEE802.16-2004,
`IEEE802.16e-2005, and
`Chou
`IEEE802.16-2004,
`IEEE802.16e-2005, and
`Tan
`IEEE802.16-2004,
`IEEE802.16e-2005,
`Chou, and Tan
`
`Claims
`Basis1
`§ 102(a), (b) 1 and 15
`
`§ 103(a)
`
`8 and 16
`
`§ 103(a)
`
`2-4 and 6
`
`§ 103(a)
`
`9–11 and 13
`
`§ 103(a)
`
`1 and 15
`
`§ 103(a)
`
`8 and 16
`
`§ 103(a)
`
`2–4 and 6
`
`§ 103(a)
`
`9–11 and 13
`
`
`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 IEEE Std 802.16-2004, “IEEE Standard for Local and Metropolitan Area
`Networks Part 16: Air Interface for Fixed Broadband Wireless Access
`Systems” (Oct. 1, 2004) (Ex. 1005).
`3 US Patent No. 8,977,258 B2 (Ex. 1010).
`4 US Patent No. 8,000,305 B2 (Ex. 1026).
`5 IEEE Std 802.16e-2005 and IEEE Std 802.16-2004/Cor1-2005, “IEEE
`Standard for Local and metropolitan area networks Part 16: Air Interface
`for Fixed and Mobile Broadband Wireless Access Systems Amendment 2:
`Physical and Medium Access Control Layers for Combined Fixed and
`Mobile Operation in Licensed Bands and Corrigendum 1” (Feb. 28, 2006)
`(Ex. 1008).
`
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`Petitioner asserts that IEEE802.16-2004 and IEEE802.16e-2005 are
`prior art to the ’481 patent under 35 U.S.C. §§ 102(a) and 102(b), Chou is
`prior art under 35 U.S.C. §§ 102(a) and 102(e), and Tan is prior art under
`35 U.S.C. §102(e). Pet. 4–11. Patent Owner does not, at this stage of the
`proceeding, challenge the prior art status of any of these references. Prelim.
`Resp. 10–13.
`
`II. ANALYSIS
`A. Claim Construction
`A claim of an unexpired patent subject to inter partes review receives
`the “broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). We shall construe
`only terms that are in controversy and then only to the extent necessary to
`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999).
`In the “Claim Construction” section of the Petition, Petitioner argues
`the preambles of claims 1 and 8 are not limiting. Pet. 11–15. Petitioner,
`however, presents two sets of alternative grounds of unpatentability: the
`first applies if the preambles are construed to be non-limiting (Grounds 1A–
`1D); and the second applies if the preambles are construed to be limiting
`(Grounds 2A–2D. Id. at 21 (“Grounds 1A-1D are applicable when
`the preambles of the Challenged Claims are properly construed as NOT
`being limiting.”), 22 (“Grounds 2A-2D are applicable when the preambles of
`the Challenged Claims are deemed to be limiting.”). Patent Owner takes no
`position on this issue. Prelim. Resp. 13.
`
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`“A preamble limits the invention if it recites essential structure or
`steps or if it is ‘necessary to give life meaning, and vitality’ to the claim.”
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
`Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting
`‘where a patentee defines a structurally complete invention in the claim body
`and uses the preamble only to state a purpose or intended use for the
`invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
`The Federal Circuit noted that “a preamble is generally not limiting when
`the claim body describes a structurally complete invention such that deleting
`the preamble phrase does not affect the structure or steps of the claimed
`invention.” Id. at 809.
`Based on the current record, we conclude that the preamble of claim 1
`does not recite an essential step of the claimed invention that is necessary to
`give the claim meaning. The preamble of claim 1 recites “[a] method of
`transmitting a preamble sequence in a mobile communication system.” The
`first two steps of claim 1 recite “repeating a specific sequence . . .” and
`“generating said preamble sequence . . . .” The last recited step is
`“transmitting, on a random access channel, said preamble sequence to a
`receiving side.” Claim 1 recites a complete “method of transmitting a
`preamble sequence” in the claim body, and the preamble states only an
`intended use. Moreover, if the preamble were deleted, it would not affect
`the steps of the claimed invention. Thus, our preliminary claim
`construction, at this stage, is that the preamble of claim 1 is not limiting.
`Similarly, based on the current record, we conclude that the preamble
`of claim 8 does not recite essential structure of the claimed invention that is
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`necessary to give the claim meaning. The preamble of claim 8 recites “[a]
`transmitter for transmitting a preamble sequence in a mobile communication
`system.” The two recited structural limitations are “a preamble generation
`unit configured to generate said preamble sequence . . .” and “a transmission
`unit configured to transmit, on a random access channel, said preamble
`sequence to a receiving side.” Claim 8 recites a complete transmitter in the
`claim body and the preamble states only an intended use. Moreover, if the
`preamble were deleted, it would not affect the structure of the claimed
`invention. Thus, our preliminary claim construction, at this stage, is that the
`preamble of claim 8 is not limiting.
`With regard to “preamble generating unit” and “transmission unit” in
`claim 8, Petitioner argues that these are not means-plus-function limitations
`under 35 U.S.C. § 112, paragraph 6, and “should be given [their] plain
`meaning as understood under the BRI standard.” Pet. 10–13. The word
`“means” is not used in claim 8. As a result, there is a presumption that the
`limitations at issue are not means-plus-function limitations that should be
`construed in accordance with Section 112, paragraph 6. Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (“When a
`claim term lacks the word ‘means,’ the presumption can be overcome and
`§112, para. 6 will apply if the challenger demonstrates that the claim fails to
`‘recite sufficiently definite structure’ or else recites ‘function without
`reciting sufficient structure for performing that function.’” (citation
`omitted)). On the current record, there is no persuasive argument or
`evidence to overcome the presumption. Petitioner is not challenging the
`presumption in this proceeding (Pet. 16–17) and Patent Owner takes no
`position on this issue (Prelim. Resp. 13). Accordingly, at this stage in the
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`proceeding, we do not construe the “preamble generating unit” and
`“transmission unit” as means-plus-function limitations.6
`The Petition further states with regard to interpretation of “preamble
`generation unit” and “transmission unit” in claim 8:
`Petitioner is challenging this presumption [that these limitations
`are not means-plus function limitations] in district court. (See
`Ex. 1028, Joint Claim Construction Chart, at 18-20.) Patent
`Owner disagrees and, for each term, proposes the same
`interpretation: “hardware and/or software in the user equipment
`that is capable of” performing the recited function. (Id.) Patent
`Owner’s
`interpretation
`is broader
`than any applicable
`interpretation under § 112 ¶ 6. Therefore, under the BRI
`standard, and for purposes of this 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. 16–17. Although showing that both parties took positions in the related
`litigation that are different from the positions of the parties in this
`proceeding, the Petitioner fails to show how or why the interpretations
`proffered are appropriate or necessary.7 Id. As previously indicated, Patent
`Owner, at least at this stage of this proceeding, “takes no position on
`Petitioners’ proposed constructions for these terms.” Prelim. Resp. 13. In
`addition, Patent Owner does not dispute Petitioner’s showing that the cited
`art discloses a “preamble generation unit” and a “transmission unit” as
`recited in claim 8. Prelim. Resp. 18–28. Thus, it does not appear there is
`
`
`6 In the related litigation, the District Court found that Petitioner failed to
`overcome the presumption and that Section 112, paragraph 6, did not apply
`to these terms. Evolved Wireless, LLC v. ZTE Corp., Civ. No. 15-546-SLR,
`slip op. at 16–17 (D. Del. Nov. 14, 2016).
`7 The District Court construed these terms as “hardware and/or software in
`the transmitter” capable of performing the recited functions. Id.
`
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`any controversy, at least at this stage in this proceeding, between the parties
`related to interpretation of these terms that it is necessary for us to resolve.
`For purposes of this decision, the terms “preamble generation unit” and
`“transmission unit” as recited in claim 8 are sufficiently clear without further
`interpretation.
`Patent Owner raises an additional claim construction issue not
`addressed explicitly by Petitioner, arguing that “both the claim language and
`the file history establish that under the broadest reasonable interpretation,
`‘generating said preamble sequence by concatenating a single prefix to a
`front end of said consecutive sequence’ [as recited in independent claim 1]
`must be construed as limiting the claims to preamble sequences which
`include only one cyclic prefix located at the beginning of the preamble
`sequence.” Prelim. Resp. 14–15. We do not agree based on the current
`record and do not adopt Patent Owner’s proposed construction for purposes
`of institution.
`
`Claim 1 is directed to a “method comprising” three recited steps.
`“Comprising” is an inclusive or open-ended transitional term and does not
`exclude additional, unrecited, method steps or apparatus elements.
`Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir.
`2003) (“The transition ‘comprising’ in a method claim indicates that the
`claim is open-ended and allows for additional steps.”); Genentech, Inc. v.
`Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term
`of art used in claim language which means that the named elements are
`essential, but other elements may be added and still form a construct within
`the scope of the claim.”). Claim 1 is, thus, open-ended: the method requires
`that the three expressly recited steps be performed, but the method is not
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`limited to those three steps. Claim 1 recites “repeating a specific sequence,
`having a length (L), N times to generate a consecutive sequence having a
`length (N*L)” and “generating said preamble sequence by concatenating a
`single cyclic prefix (CP) to a front end of said consecutive sequence.” The
`wording of this method claim does not support limiting the claim to the
`structure Patent Owner argues. To the contrary, although the claim requires
`“by concatenating a single cyclic prefix (CP) to a front end of said
`consecutive sequence,” this method claim does not preclude additional steps
`such as repeating this step and concatenating another cyclic prefix to the
`front end of another consecutive sequence. Similar reasoning applies to
`claim 8. The transmitter must contain a preamble generation unit as required
`by the claim, but the claim does not preclude additional components that
`may generate additional sequences.
`
`In support of its construction, Patent Owner relies on an argument
`submitted by the applicant during prosecution of the ’481 patent. Prelim.
`Resp. 15. Patent Owner states:
`[T]he applicant explained during prosecution that “a review of
`FIG. 2 of Jung reveals that a preamble sequence of Jung may
`include more than one cyclic prefix,” and therefore “Jung cannot
`teach or suggest generating said preamble sequence by
`concatenating a single cyclic prefix (CP) to a front end of said
`consecutive sequence as recited in” the amended claims. (Ex.
`1002 at 76.)
`
`Id. Figure 2 of Jung (Ex. 2001) as annotated by applicant and submitted
`during prosecution of the ’481 patent (Ex. 1002, 77; see also Prelim. Resp.
`8) is reproduced below.
`
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`Figure 2 of Jung depicts a preamble sequence structure in a mobile
`communication system. Ex. 2001 ¶ 29. We do not interpret this argument
`as sufficiently clear and unequivocal to overcome the plain meaning of the
`language of claim 1 or to support a broadest reasonable construction that is
`limited in the manner argued by Patent Owner. In addition, as this issue was
`raised in the Preliminary Response (Prelim Resp. 13–15), we have not had
`the benefit of briefing by Petitioner on this issue (see Pet. 11–17). Based on
`the record before us, at this preliminary stage, we do not adopt Patent
`Owner’s construction for purposes of institution.
`B. Asserted Anticipation of Claims 1 and 15 by IEEE802.16-2004
`Petitioner, in its ground styled as “1A,” challenges independent claims
`1 and 15 as anticipated by IEEE802.16-2004. Pet. 3, 24–35. Patent Owner
`argues IEEE802.16-2004 fails to disclose “generating said preamble
`sequence by concatenating a single cyclic prefix (CP) to a front end of said
`consecutive sequence,” and “repeating a specific sequence, having a length
`(L), N times to generate a consecutive sequence having a length (N*L),” as
`recited in claim 1. Prelim. Resp. 21–28. We are persuaded, based on the
`information before us, that there is a reasonable likelihood Petitioner will
`prevail in showing anticipation of claims 1 and 15 by IEEE802.16-2004.
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`1. IEEE802.16-2004 (Ex. 1005)
`IEEE802.16-2004 is an Institute of Electrical and Electronics
`Engineers (IEEE) Standard for local and metropolitan area networks titled
`“Part 16: Air Interface for Fixed Broadband Wireless Access Systems.” Ex.
`1005, 1. Patent Owner acknowledges “IEEE802.16-2004 is a standard
`published in 2004 by IEEE.” Prelim. Resp. 10.
`
`IEEE802.16-2004 discloses a “long preamble” that:
`[C]onsists of two consecutive OFDM symbols. The first OFDM
`symbol uses only subcarriers the indices of which are multiples
`of 4. As a result, the time domain waveform of the first symbol
`consists of four repetitions of 64-sample fragment, preceded by
`a CP. The second OFDM symbol utilizes only even subscribers,
`resulting in time domain structure composed of two repetitions
`of a 128-sample fragment, preceded by a CP.
`
`Ex. 1005, 483. Figure 205 of IEEE802.16-2004 is reproduced below.
`
`
`Figure 205 of IEEE802.16-2004 depicts a “long preamble” structure
`including a single cyclic prefix preceding four 64 sample fragments and a
`single cyclic prefix preceding two 128 sample fragments.
`2. Claims 1 and 15
`Petitioner’s showing that IEEE802.16-2004 discloses all elements of
`claims 1 and 15 is detailed and supported by citations to the record. Pet. 24–
`35. The preamble of claim 1 recites “[a] method of transmitting a preamble
`sequence in a mobile communication system.” As indicated by the title,
`IEEE802.16-2004 discloses an air interface of fixed broadband wireless
`systems. Ex. 1005, 1; see also Pet. 26 (citing Ex. 1005, 4 (Abstract)),
`
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`Prelim. Resp. 10 (citing Ex. 1005, 6). IEEE802.16-2004 discloses that a
`Subscriber Station (SS) “shall transmit the long preamble.” Ex. 1005, 477.
`Petitioner asserts Figure 205 and the related description in IEEE802.16-2004
`disclose “repeating a specific sequence, having a length (L), N times to
`generate a consecutive sequence having a length (N*L),” as recited in claim
`1. Pet. 27–29.
`Petitioner asserts Figure 205 and the related description in
`IEEE802.16-2004 disclose “generating said preamble sequence by
`concatenating a single cyclic prefix (CP) to a front end of said consecutive
`sequence,” as recited in claim 1. Pet. 29–30. Petitioner asserts IEEE802.16-
`2004 on page 477 discloses “transmitting, on a random access channel, said
`preamble sequence to a receiving side,” as recited in claim 1. Pet. 30–31.
`Petitioner asserts IEEE802.16-2004 discloses “said consecutive sequence
`comprises at least a first sequence, a second sequence, and an N-th
`sequence; and said CP is identical to a rear part of said N-th sequence,” as
`recited in claim 15. Pet. 31–35.
`Patent Owner challenges Petitioner’s showing regarding two
`limitations of claim 1. Prelim. Resp. 21–28. With regard to “generating said
`preamble sequence by concatenating a single cyclic prefix (CP) to a front
`end of said consecutive sequence,” Patent Owner relies on its proffered
`claim construction discussed above, which we declined to adopt. Id. at 21–
`24. Patent Owner argues that IEEE802.16-2004 discloses multiple cyclic
`prefixes, as does Jung which was cited and distinguished on this basis during
`the prosecution of the ’481 patent. Id. Thus, Patent Owner contends
`IEEE802.16-2004 does not anticipate claims 1 and 15 because, as shown in
`Figure 205 of IEEE802.16-2004 (and as in Fig. 2 of Jung), there is not one
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`and only one cyclic prefix in the preamble. We agree with Petitioner that
`Figure 205 and the related description in IEEE802.16-2004 discloses the
`features of this limitation by disclosing a preamble sequence with at least
`one repeated sequence with a single cyclic prefix at the front end of the
`repeated sequence.
`Patent Owner’s argument regarding “repeating a specific sequence,
`having a length (L), N times to generate a consecutive sequence having a
`length (N*L),” as recited in claim 1, is similar to its argument regarding the
`“generating . . . by concatenating” step. Prelim. Resp. 24–29. Rather than
`showing how the challenged claim limitations may be distinguished from
`IEEE802.16-2004, Patent Owner presents an argument as to how the “long
`preamble” structure of IEEE802.16-2004 is similar to the preamble of Jung.
`Id. As a result, Petitioner’s detailed and supported assertions relating to
`disclosure of all features of this limitation by Figure 205 and the related
`description in IEEE802.16-2004 are not persuasively rebutted.
`We have reviewed the cited portions of IEEE802.16-2004 and on the
`record before us, find that the information presented shows that there is a
`reasonable likelihood that Petitioner will prevail in showing that claims 1
`and 15 are anticipated by IEEE802.16-2004.
`C. Asserted Obviousness of Claims 8 and 16 Over
`IEEE802.16-2004 and Chou
`
`Petitioner asserts, in its ground styled as “1B,” that the subject matter
`
`of claims 8 and 16 of the ’481 patent would have been rendered obvious by
`IEEE802.16-2004 and Chou. Pet. 3, 35–42.
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`1. Chou (Ex. 1010)
`Chou is titled “System and Method for Communicating with Fixed
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`and Mobile Subscriber Stations in Broadband Wireless Access Networks.”
`Ex. 1010, [54]. Chou relates to wireless networks and wireless
`communications. Id. at 1:9–10. Figure 1 of Chou is reproduced below.
`
`
`Figure 1 depicts a broadband wireless access (BWA) network. Id. at 2:3–14.
`Chou provides this description of Figure 1:
`Broadband wireless network 100 includes base station (BS) 102
`which may communicate with one or more fixed subscriber
`stations (SS) 104 and one or more mobile subscriber stations
`(MS) 106. Base station 102 may be coupled through network
`108 to network management system (NMS) 112, servers 116 and
`database 114.
`
`Id. at 2:5–10. Chou states, “[n]etwork 100 may be based on the IEEE
`802.16-2004 standard and/or IEEE 802.16(e) proposed specification” and
`the base stations may communicate with the subscriber stations and mobile
`subscriber stations on physical layer (PHY) configurations using “a SS
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`based on IEEE 802.16-2004.” Id. at 2:15–16, 5:38–41. Chuo also provides,
`“the downlink PHY data units transmitted by the base station may begin
`with a long preamble.” Id. at 6:29–30.
`2. Claims 8 and 16
`Petitioner provides a detailed and supported showing that all the
`
`limitations of claims 8 and 16 of the ’481 patent are taught in IEEE802.16-
`2004 and Chou. Pet. 35–42. Petitioner also provides a showing of an
`articulated basis with rational underpinnings for combining the relevant
`teachings of the references (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`418 (2007)). Id.
`
`Patent Owner relies on the arguments made with respect to the two
`disputed limitations in claim 1 in challenging whether Petitioner has shown a
`reasonable likelihood of prevailing as to any challenged claim including
`claims 8 and 16. Prelim. Resp. 19–21. Patent Owner argues “[w]hile the
`Petition sets forth 8 grounds for alleged invalidity, each of these 8 grounds
`relies upon the same prior art document, IEEE802.16-2004, as allegedly
`disclosing the two missing limitations.” Id. at 19. As discussed above,
`contrary to Patent Owner’s contentions, Petitioner has shown sufficiently
`that IEEE802.16-2004 discloses the limitations of claim 1. Patent Owner
`does not discuss claims 8 and 16 or, except for disputing the two limitations
`in claim 1 are taught by the cited art, dispute any part of Petitioner’s
`showing that claims 8 and 16 are obvious over IEEE802.16-2004 and Chou.
`
`On the record before us, we determine that the information presented
`shows that there is a reasonable likelihood that Petitioner will prevail in
`showing that the subject matter of claims 8 and 16 would have been obvious
`over IEEE802.16-2004 and Chou.
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`D. Asserted Obviousness of Claims 2–4 and 6
`Over IEEE802.16-2004 and Tan
`
`
`Petitioner asserts, in its ground styled as “1C,” that the subject matter
`of dependent claims 2-4 and 6 of the ’481 patent would have been rendered
`obvious by IEEE802.16-2004 and Tan. Pet. 4, 42–54.
`1. Tan (Ex. 1026)
`Tan is titled, “Preamble Sequencing for Random Access Channel in a
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`Communication System.” Ex. 1026, [54]. Tan is directed to “[a] system and
`method for initializing a system communication without previous
`reservations for random access channel (RACH) access.” Id. at [57]
`(Abstract). Tan teaches that, “[w]ith proper configuration of the preamble
`sequence, the amount of interference generated can be minimized.” Id. at
`3:17–19.
`
`Tan teaches the use of “cyclically shifted versions of the signature
`sequences” and that “the signature sequences are obtained from a constant
`amplitude zero autocorrelation (CAZAC) sequence, which include different
`“classes” of generalized chirp like (GCL) or Chu-sequences.” Id. at 3:35–
`36, 55–58. Chu sequences are complex quadratic sequences “with low cross
`correlation at all time lags which improves the detection performance.” Id.
`at 3:59–61, 4:37–64. Tan states that its teachings are applicable to “systems
`including 3GGP, 3GPP2, and 802.16 communication systems.” Id. at 8:17–
`18.
`Patent Owner repeatedly asserts that Petitioner relies on the same art
`
`already before the Board in IPR2016-00981. Prelim. Resp. 1, 16, 30. This
`assertion is incorrect. In IPR2016-00981, the Petitioner relied on the Tan
`provisional application (Ex. 1007) in challenging claims 2–4, 6, 9–11, and
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`13. IPR2016-00981, Paper 4 (Petition) 4, 36–51, 58–59. In opposition to
`this challenge, Patent Owner argued the Tan provisional application did not
`qualify as prior art. IPR2016-00981, Paper 9 (Patent Owner’s Preliminary
`Response) 2, 12, 27–29. The Board found the Tan provisional application
`was not prior art and, accordingly, did not institute trial on claims 2–4, 6, 9–
`11, and 13. IPR2016-00981, Paper 10 (Decision on Institution of Inter
`Partes Review), 20–21. In contrast, Petitioner in this proceeding relies on
`the Tan issued US patent (Ex. 1026). Pet. 4–10, 42–54. And Patent
`Owner’s response is very different from its response in IPR2016-00981.
`Patent Owner does not challenge the prior art status of the Tan issued US
`patent. Prelim. Resp. 12–13. Patent Owner does not specifically address the
`challenge to claims 2–4, 6, 9–11, and 13. See generally Prelim. Resp.
`1. Claims 2–4 and 6
`Petitioner’s showing that IEEE802.16-2004 and Tan disclose all the
`
`elements of dependent claims 2–4 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 of these references. Pet.
`42–54. Patent Owner relies on its arguments related to the alleged failure of
`IEEE802.16-2004 to disclose the two disputed limitations in claim 1 and
`does not separately address the obviousness of claims 2–4 and 6 over
`IEEE802.16-2004 and Tan. Prelim. Resp. 17–21.
`
`On the record before us, for the reasons stated in the Petition and
`explained above in connection with ground 1A rega