Paper 15
`
`Trials@uspto.gov
`Entered: March 12, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`AND SAMSUNG ELECTRONICS AMERICA, INC., ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-009271
`Patent 8,218,481 B2
`____________
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 IPR2016-01342 and IPR2016-01349 have been consolidated with
`IPR2016-00758. IPR2017-00068 and IPR2017-00106 have been joined
`with IPR2016-00758. IPR2016-00981 has been joined with IPR2016-
`01349. IPR2017-00927 has been joined with IPR2016-01342. Unless
`otherwise indicated, citations are to the record of IPR2016-00758, which is
`effectively, through the above-noted consolidations and joinders, the
`controlling case.
`
`
`
`Trials@uspto.gov
`Entered: March 12, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`AND SAMSUNG ELECTRONICS AMERICA, INC., ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-009271
`Patent 8,218,481 B2
`____________
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 IPR2016-01342 and IPR2016-01349 have been consolidated with
`IPR2016-00758. IPR2017-00068 and IPR2017-00106 have been joined
`with IPR2016-00758. IPR2016-00981 has been joined with IPR2016-
`01349. IPR2017-00927 has been joined with IPR2016-01342. Unless
`otherwise indicated, citations are to the record of IPR2016-00758, which is
`effectively, through the above-noted consolidations and joinders, the
`controlling case.
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`This is a Final Written Decision under 35 U.S.C. § 318(a) in
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, and IPR2017-00927 as to the patentability
`of claims 1–4, 6, 8–11, 13, 15, and 16 of U.S. Patent No. 8,218,481 B2 (“the
`’481 patent”) (Ex. 1001). We have jurisdiction under 35 U.S.C. § 6.
`Based on the record before us, Petitioners have shown, by a
`preponderance of the evidence, that claims 1–4, 6, 8–11, 13, 15, and 16 are
`unpatentable.
`
`
`I. BACKGROUND
`A. Joinder and Consolidation
`In IPR2016-00758, ZTE (USA) Inc., HTC Corporation, and HTC
`America, Inc., filed a Petition requesting an inter partes review of claims 1–
`4, 6, 8–11, and 13 of the ‘481 patent. Paper 2, 1. We instituted inter partes
`review on the following grounds of unpatentability: (1) whether claims 1, 2,
`8, and 9 are unpatentable under 35 U.S.C. §§ 102(a) or (b)2 as anticipated by
`Panasonic 792;3 (2) whether claims 3 and 10 are unpatentable under 35
`U.S.C. § 103(a) as having been obvious over Panasonic 792 and Panasonic
`114;4 and (3) whether claims 6 and 13 are unpatentable under 35 U.S.C.
`
`
`2 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.
`3 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) (Ex. 1002).
`4 Panasonic, Random Access Design For E-UTRA Uplink, 3GPP Tdoc R1-
`
`2
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`§ 103(a) as having been obvious over Panasonic 792, Panasonic 114, and
`Chu.5 Paper 12, 21.
`In IPR2017-00068, Apple, Inc., Microsoft Corporation, Microsoft
`Mobile Oy, and Microsoft Mobile, Inc. (f/k/a Nokia Inc.) filed a Petition that
`“substantively copies the petition in co-pending IPR2016-00758” (IPR2017-
`00068, Paper 2, 1) and “includes only the grounds filed in IPR2016-00758
`and is substantively identical on those grounds.” IPR2017-00068 Paper 3, 1.
`Concurrently with the Petition, a Motion for Joinder with IPR2016-00758
`was filed. IPR2017-00068 Paper 3. We instituted inter partes review in
`IPR2017-00068 and granted joinder of the parties in IPR2017-00068 to
`IPR2016-00758. Paper 27, 5.
`In IPR2017-00106, Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc., filed a Petition that “substantively copies the
`petition in co-pending IPR2016-00758” (IPR2017-00106 Paper 1, 1) and
`“raises the same grounds of unpatentability for which the 758 Proceeding
`was instituted, challenges the same claims, and relies of the same prior art,
`arguments and evidence.” IPR2017-00106 Paper 2, 1–2. Concurrently with
`its Petition, Samsung filed a Motion for Joinder with IPR2016-00758.
`IPR2017-00106 Paper 2. We instituted inter partes review in IPR2017-
`00106 and granted joinder of the parties in IPR2017-00106 to IPR2016-
`00758. Paper 28, 5.
`
`
`061114, TSG-RAN WG1 Meeting #45, Shanghai, China (May 8–12, 2006)
`(Ex. 1003).
`5 David C. Chu, Polyphase Codes With Good Periodic Correlation
`Properties, IEEE Transactions on Information Theory 531–32 (July 1972)
`(Ex. 1004).
`
`3
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`In IPR2016-01342, ZTE (USA) Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc., filed a Petition requesting an inter
`partes review of claims 1–4, 6, 8–11, and 13 of the ’481 patent. IPR2016-
`01342 Paper 2, 1. We instituted inter partes review on the following
`grounds of unpatentability: (1) whether claims 1 and 2 are unpatentable
`under 35 U.S.C. § 102(a) and (b) as anticipated by Panasonic 700;6 (2)
`whether claim 3 is unpatentable under 35 U.S.C. § 103(a) as having been
`obvious over Panasonic 700 and Panasonic 114; (3) whether claims 4 and 6
`are unpatentable under 35 U.S.C. § 103(a) as having been obvious over
`Panasonic 700, Panasonic 114, and Chu; (4) whether claims 8 and 9 are
`unpatentable under 35 U.S.C. § 103(a) as having been obvious over
`Panasonic 700 and Motorola 595;7 (5) whether claim 10 is unpatentable
`under 35 U.S.C. § 103(a) as having been obvious over Panasonic 700,
`Panasonic 114, and Motorola 595; and (6) whether claims 11 and 13 are
`unpatentable under 35 U.S.C. § 103(a) as having been obvious over
`Panasonic 700, Panasonic 114, Chu, and Motorola 595. IPR2016-01342
`Paper 11, 17–18.
`In IPR2017-00927, Apple, Inc., Microsoft Corporation, Microsoft
`Mobile Oy, and Microsoft Mobile, Inc. (f/k/a Nokia Inc.) filed a Petition that
`“substantively copies the petition filed in co-pending IPR2016-01342”
`(IPR2017-00927, Paper 2, 1) and “includes only the grounds filed in
`IPR2016-01342 and is substantively identical on those grounds.” IPR2017-
`
`
`6 Panasonic, RACH preamble evaluation in E-UTRA uplink, TSG-RAN
`WG1 Meeting #44, Denver, USA (February 13–17, 2006) (Ex. 1035).
`7 US 2007/0058595 A1, (published March 15, 2007, filed March 20, 2006)
`(Ex. 1040).
`
`4
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`00927 Paper 3, 1. Concurrently with the Petition, a Motion for Joinder with
`IPR2016-01342 was filed. IPR2017-00927 Paper 3. We instituted inter
`partes review in IPR2017-00927 and granted joinder of the parties in
`IPR2017-00927 to IPR2016-01342. IPR2017-00927 Paper 8, 5.
`In IPR2016-00981, Apple, Inc., Microsoft Corporation, Microsoft
`Mobile OY, and Microsoft Mobile Inc. (f/k/a Nokia, Inc.) filed a Petition
`requesting an inter partes review of claims 1–4, 6, 8–11, 15, and 16 of the
`’481 patent. IPR2016-00981 Paper 2, 1. We instituted inter partes review
`on the following grounds of unpatentability: (1) whether claims 1 and 15 are
`unpatentable under 35 U.S.C. § 102(a) as anticipated by IEEE802.16-2004;8
`(2) whether claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over IEEE802.16-2004 and IEEE802.16e-2005;9 (3)
`whether claims 8 and 16 are unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over IEEE802.16-2004 and Chou;10 and (4) whether
`claims 8 and 16 are unpatentable under 35 U.S.C. § 103(a) as having been
`obvious over IEEE802.16-2004, IEEE802.16e-2005, and Chou. IPR2016-
`00981 Paper 10, 22.
`
`
`8 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. 1054).
`9 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. 1057).
`10 US Patent No. 8,977,258 B2 (Ex. 1059).
`
`5
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`In IPR2016-01349, ZTE (USA) Inc. filed a Petition requesting an
`inter partes review of claims 1–4, 6, 8–11, 13, 15, and 16 of the ’481 patent.
`IPR2016-01349 Paper 2, 1. We instituted inter partes review on the
`following grounds of unpatentability: (1) whether claims 1 and 15 are
`unpatentable under 35 U.S.C. § 102(a) and (b) as having been anticipated by
`IEEE802.16-2004; (2) whether claims 1 and 15 are unpatentable under 35
`U.S.C. § 103(a) as having been obvious over IEEE802.16-2004 and
`IEEE802.16e-2005; (3) whether claims 2–4 and 6 are unpatentable under 35
`U.S.C. § 103(a) as having been obvious over IEEE802.16-2004 and Tan;11
`(4) whether claims 2–4 and 6 are unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over IEEE802.16-2004, IEEE802.16e-2005, and Tan;
`(5) whether claims 8 and 16 are unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over IEEE802.16-2004 and Chou; (6) whether claims 8
`and 16 are unpatentable under 35 U.S.C. § 103(a) as having been obvious
`over IEEE802.16-2004, IEEE802.16e-2005, and Chou; (7) whether claims
`9–11 and 13 are unpatentable under 35 U.S.C. § 103(a) as having been
`obvious over IEEE802.16-2004, Chou, and Tan; and (8) whether claims 9–
`11 and 13 are unpatentable under 35 U.S.C. § 103(a) as having been obvious
`over IEEE802.16-2004, IEEE802.16e-2005, Chou, and Tan. IPR2016-
`01349 Paper 11, 26.
`ZTE filed a Motion for Joinder of IPR2016-01349 with IPR2016-
`00981. IPR2016-01349 Paper 8. We granted joinder of the parties in
`IPR2016-00981 to IPR2016-01349. IPR2017-01349 Paper 14, 6.
`
`
`11 US Patent No. 8,000,305 B2 (Ex. 1074).
`
`6
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`Pursuant to agreement of the parties, and in order to more efficiently
`resolve the pending proceedings relating to the ’481 patent, we consolidated
`IPR2016-00758, IPR2016-01342, and IPR2016-01349. Paper 24, 3. After
`joinder and consolidation, we ordered the Petitioners to file each paper as a
`single, consolidated filing. Id. at 5. As a result, there was a single,
`consolidated reply filed on behalf of all the Petitioners. Paper 38
`(Petitioners’ Reply to Patent Owner’s Response (“Pet. Reply”)). And,
`because there is only one Patent Owner and these proceedings have been
`joined and consolidated, there was, of course, only one response in these
`proceedings. Paper 34 (Patent Owner’s Response (“PO Resp.”)).
`The Board held a consolidated oral hearing on October 17, 2017. The
`various Petitioners designated counsel to present consolidated argument on
`behalf of all Petitioners on all grounds of unpatentability, and the transcript
`of the hearing has been entered into the record. Paper 47 (Transcript of Oral
`Argument (“Tr.”)).
`B. Instituted Grounds of Unpatentability
`The instituted trial grounds of unpatentability are:
`Ground Reference(s)
`Basis Challenged
`Claims
`§ 102 1, 2, 8, and 9
`Panasonic 792
`§ 103
`3 and 10
`Panasonic 792 and Panasonic 114
`Panasonic 792, Panasonic 114, and Chu § 103
`6 and 13
`Panasonic 700
`§ 103
`1 and 2
`Panasonic 700 and Panasonic 114
`§ 103
`3
`Panasonic 700, Panasonic 114, and Chu § 103
`4 and 6
`Panasonic 700 and Motorola 595
`§ 103
`8 and 9
`
`1
`2
`3
`4
`5
`6
`7
`
`7
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`Ground Reference(s)
`
`Basis Challenged
`Claims
`10
`
`§ 103
`
`8
`
`9
`
`10
`11
`
`12
`13
`
`14
`15
`
`16
`17
`
`Panasonic 700, Panasonic 114, and
`Motorola 595
`Panasonic 700, Panasonic 114, Chu, and
`Motorola 595
`IEEE802.16-2004
`IEEE802.16-2004 and IEEE802.16e-
`2005
`IEEE802.16-2004 and Tan
`IEEE802.16-2004, IEEE802.16e-2005
`and Tan
`IEEE802.16-2004 and Chou
`IEEE802.16-2004, IEEE802.16e-2005
`and Chou
`IEEE802.16-2004, Chou, and Tan
`IEEE802.16-2004, IEEE802.16e-2005,
`Chou, and Tan
`
`
`
`
`
`C. 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 from 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 method of transmitting data in a
`mobile communication system.” Id. at 1:16–20. The disclosed methods and
`
`§ 103 9–11 and 13
`§ 103 9–11 and 13
`
`§ 103
`
`11 and 13
`
`§ 102
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`1 and 15
`1 and 15
`
`2–4 and 6
`2–4 and 6
`
`8 and 16
`8 and 16
`
`
`
`
`
`8
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`systems are alleged to increase the amount of data which 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 16 claims 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.
`
`
`Figure 11 depicts a single prefix at the front end of consecutive, repeated
`sequences. Id. at 11:55–64.
`Claims 1 and 8 of the ’481 patent are independent. Claim 1 recites:
`A method of transmitting a preamble sequence in a
`1.
`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);
`
`9
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`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;
`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.
`
`10
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`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 the rear part of said N-th sequence.”
`Id. at 20:9–16.
`D. Cited References
`The earliest priority date claimed for the ’481 patent is June 9, 2006.
`Ex. 1001, (30), 1:7–12. Panasonic 792 (Ex. 1002) “is a submission from
`Panasonic . . . for discussion at a meeting [of a Third Generation Partnership
`Project12 working group] on March 27-31, 2006.” PO Resp. 14. “Panasonic
`114 [Ex. 1003] is another submission from Panasonic . . . for discussion at a
`May 8-12, 2006 meeting.” Id. at 16. “Panasonic 700 [Ex. 1035] is simply
`an earlier Panasonic submission, for a February 2006 meeting.” Id. at 15.
`Chu (Ex. 1004) is a publication “from July 1972 IEEE Transactions on
`Information Theory.” Id. at 19. Motorola 595 (Ex. 1040) is a published US
`patent application filed on March 20, 2006. Ex. 1040, (22). “IEEE802.16-
`2004 [Ex. 1054] is a standard published in 2004 by IEEE.” PO Resp. 20.
`“IEEE802.16E-2005 [Ex. 1057] is an amendment to the IEEE 802.16
`standard published in 2005.” Id. at 21. Tan (Ex. 1074) is a US patent which
`claims priority to a provisional application filed on January 17, 2006. Ex.
`1074, (60). Chou (Ex. 1059) is a US patent which issued on an application
`
`
`12 The Third Generation Partnership Project (“3GPP”) was the standard
`setting organization that developed the Long Term Evolution (“LTE”)
`standard, sometimes referred to as 4G. PO Resp. 1, 7.
`
`11
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`filed September 9, 2005. Ex. 1059, (22). Patent Owner does not challenge
`the prior art status of any cited reference. See generally PO Resp. We find
`that the cited references are prior art under 35 U.S.C. §§ 102 and 103.
`1. Panasonic 792 (Ex. 1002)
`Panasonic 792 is a titled, “Random Access Burst Evaluation In E-
`UTRA Uplink.” Ex. 1002, 1. Panasonic 792 discloses a random access
`channel (RACH) preamble structure. Ex. 1002 at 2. Paragraph 2.2 of
`Panasonic 792 discloses a preamble structure which consists of a cyclic
`prefix (CP) and a repeated CAZAC sequence. Id. Figure 1 of Panasonic
`792 is reproduced below.
`
`
`Figure 1 of Panasonic 792 depicts a “preamble structure” with a cyclic
`prefix (CP) and “M-times repetition of N=73 (1.25 MHz) or N=293 (5 MHz)
`CAZAC sequence.” Id. Panasonic 792 discloses the preamble as
`constituting, or as part of, a “random access burst,” and further discloses
`transmitting the preamble. Id. at 5. Figure 6 of Panasonic 792 is reproduced
`below.
`
`12
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`
`Figure 6 of Panasonic 792 depicts transmission of a “random access burst”
`comprising the preamble from UE (user equipment) to Node B as part of
`five transmission methods. Id. at 5. Each of these five transmission
`methods is described in paragraph 2.3 of Panasonic 792. Id. at 5–6.
`2. Panasonic 700 (Ex. 1035)
`Panasonic 700 is titled “RACH preamble evaluation in E-UTRA
`uplink.” Ex. 1002, 1. Panasonic 700 discloses a random access channel
`(RACH) preamble structure. Ex. 1002 at 2. Panasonic 700 states, “[a]
`preamble sequence should have good auto-correlation and good-cross
`correlation [sic]. General chirp-like (GCL) has been considered to satisfy
`these requirements. In our preamble performance evaluation, Zadoff-Chu
`sequence, a special case of GCL, is used.” Id. (citations omitted). Figure 1
`of Panasonic 700 is reproduced below.
`
`13
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`
`
`Figure 1 of Panasonic 700 depicts a “preamble structure” with a cyclic
`prefix (CP) and “M-times repetition of N=73 (1.25 MHz) or N=293 (5 MHz)
`CAZAC sequence.” Id. Panasonic 700 discloses use of a “[r]epetition
`factor (M) of CAZAC sequence” of 3, 7, 14, and 28. Id.
`3. Panasonic 114 (Ex. 1003)
`Panasonic 114 is titled, “Random Access Design For E-UTRA
`Uplink.” Ex. 1003, 1. Panasonic 114 is directed to comparing performance
`of different types of preamble sequences including cyclic-shifted CAZAC
`sequences. Ex. 1003, 1. Panasonic 114 discloses, “cyclic-shifted CAZAC
`sequence has superior performance” and “[a]s the results [sic], we propose
`to choose cyclic-shifted Zadoff-Chu CAZAC as preamble sequence mainly.”
`Id. at 2.
`4. Chu (Ex. 1004)
`Chu is a paper titled, “Polyphase Codes With Good Correlation
`Properties.” Ex. 1004, 1. According to Petitioners, “Chu discloses and
`introduces the sequence that is now known as the Zadoff-Chu sequence.”
`Paper 2, 14; Ex. 1014 ¶ 52. Chu describes the construction of complex
`codes and discloses a number of mathematical equations. Ex. 1004, 1–2.
`The purpose is to construct codes with good autocorrelation properties. Id.
`at 1. Chu teaches the use of “[t]rivial variations such as cyclic shifts” and
`
`14
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`“linear phase shifts of the form exp i(2πqk/N), where q is any integer.” Id. at
`2.
`
`5. Motorola 595 (Ex. 1040)
`Motorola 595 is titled, “Method and Apparatus for Reducing Round
`Trip Latency and Overhead Within a Communication System.” Ex. 1040,
`(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 discloses circuitry for a base station or mobile station to
`perform uplink and downlink transmission. Id. ¶ 41. Figure 2 of Motorola
`595 is reproduced below.
`
`
`Figure 2 of Motorola 595 depicts circuitry 200 comprising logic circuitry
`201, a microprocessor controller, transmit circuitry 202, and receive
`circuitry 203. Id. ¶ 41. Motorola 595 states, “transmitter 202 and receiver
`203 are preferably well known transmitters and receivers that utilize a 3GPP
`network protocol.” Id.
`
`15
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`6. IEEE802.16-2004 (Ex. 1054)
`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.
`1054, 1. 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.
`Id. at 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.
`7. IEEE802.16E-2005 (Ex. 1057)
`IEEE802.16e-2005 is an Institute of Electrical and Electronics
`Engineers (IEEE) Standard for local and metropolitan area networks titled
`“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.” Ex. 1057, 1. IEEE802.16e-2005 “updates and expands IEEE Std
`802.16-2004 to allow for mobile subscriber stations.” Id. at 4.
`
`16
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`8. Tan (Ex. 1074)
`Tan is titled, “Preamble Sequencing for Random Access Channel in a
`
`Communication System.” Ex. 1074, (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.
`
`9. Chou (Ex. 1059)
`Chou is titled “System and Method for Communicating with Fixed
`
`and Mobile Subscriber Stations in Broadband Wireless Access Networks.”
`Ex. 1059, (54). Chou relates to wireless networks and wireless
`communications. Id. at 1:9–10. Figure 1 of Chou is reproduced below.
`
`17
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`
`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
`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.
`
`18
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`
`II. ANALYSIS
`A. Patent Owner Does Not Argue Claims 1, 2, 8, 9, 15, and 16
`“Patent Owner is no longer contesting the validity of claims 1-2, 8-9,
`and 15-16 and therefore addresses only grounds 2-3, 5-6, 8-9, 12-13 and 16-
`17 and only with respect to claims 3-4, 6, 10-11, and 13.” PO Resp. 4.
`Patent Owner’s position was discussed during the following exchange at oral
`argument:
`
`MR. FINN: Good afternoon, Your Honors. As I said, my
`name is Miles Finn and I represent Evolved Wireless here today.
`JUDGE MCMILLIN: Mr. Finn, a preliminary question,
`your response at page 4 says Patent Owner is no longer
`contesting the validity of claims 1, 2, 8, 9 and 15 and 16. Are
`you conceding the unpatentability of the claims?
`MR. FINN: No, Your Honor. We are saying that the – we
`are not contesting it. You, of course, have to find the Patent
`Owner make a prima facie case of invalidity.
`JUDGE CRUMBLEY: But you are not contesting it?
`MR. FINN: That’s correct.
`
`Tr. 19:14–24. Thus, Patent Owner has explicitly declined to challenge
`Petitioners’ arguments and evidence related to the unpatentability of claims
`1, 2, 8, 9, 15, and 16 of the ’481 patent. Patent Owner was repeatedly
`warned in the scheduling orders entered in these proceedings that “any
`arguments for patentability not raised in the response will be deemed
`waived.” Paper 13, 2; Paper 25, 3; IPR2016-01342 Paper 12, 3; IPR2016-
`01349 Paper 12, 3. As a result, Patent Owner has waived any argument that
`Petitioners have not shown that claims 1, 2, 8, 9, 15, and 16 are
`unpatentable. In re NuVasive, 842 F. 3d 1376, 1380–1381 (Fed. Cir.
`
`19
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`2016).13 However, as noted below, it is Petitioners’ burden to show why the
`challenged claims are unpatentable and this burden never shifts to Patent
`Owner.
`
`In addition, Patent Owner did not file any expert or other evidentiary
`declarations.14 In contrast, Petitioners presented 79 exhibits (see Paper 46
`(Petitioners’ Exhibit List)) including 3 expert declarations (2 Declarations of
`Paul S. Min, Ph.D (Ex. 1014 (in support of 758 Pet. 15); Ex. 1036 (in support
`of 1342 Pet.) and the Declaration of Jonathan Wells (Ex. 1052 (in support of
`1349 Pet.)) to which we give appropriate evidentiary weight in light of the
`cross-examination testimony submitted by Patent Owner. In our
`consideration of the record in these proceedings, we keep in mind that
`attorney argument is not evidence and Patent Owner cannot rebut evidence
`with unsworn attorney argument. See Gemtron Corp. v. Saint-Gobain
`Corp., 572 F. 3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney
`argument . . . is not evidence and cannot rebut . . . evidence.”).
`
`
`13 Because Patent Owner no longer contests the Petitioners’ showing relating
`to the unpatentability of claims 1, 2, 8, 9, 15, and 16, Petitioners did not
`address these claims and the related grounds in the Petitioners’ Reply to
`Patent Owner’s Response. See generally Pet. Reply.
`14 Patent Owner filed 3 exhibits: US Patent Appl. No. 11/332,531 (Jung)
`(Ex. 2001); Transcript of the Deposition of Dr. Jonathan Wells (Petitioners’
`expert) (Ex. 2002); and Patent Owner’s Demonstrative Exhibits (Ex. 2003).
`15 We use the term “758 Pet.” to refer to the Petition (Paper 2) in IPR2016-
`00758. In a like manner, we shall use “1342 Pet.” to refer to the Petition
`(Paper 2) in IPR2016-01342 and “1349 Pet.” to refer to the Petition (Paper
`2) in IPR2016-01349.
`
`20
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342, IPR2016-01349,
`IPR2017-00068, IPR2017-00106, IPR2017-00927
`Patent 8,218,481 B2
`
`B. 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).
`The parties’ dispute requires resolution of only one claim construction
`issue. Patent Owner argues:
`Grounds 12–13 and 16–17 rely upon IEEE802.16-2004 as
`allegedly disclosing the claimed preamble structure of the ’481
`patent. The structure disclosed in IEEE802.16-2004 includes
`multiple cyclic prefixes, however, and therefore fails to disclose
`the limitation “concatenating a single cyclic prefix (CP) to a front
`end of said consecutive sequence” under
`the proper
`construction.
`
`PO Resp. 32 (emphasis added)).16
`With regard to claim construction, Patent Owner argues:
`The arguments advanced in the 1349 Petition, however,
`require that a claim phrase for which Petitioners did not offer a
`construction be addressed in this Patent Owner Response.
`Specifically, the
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