UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.)
`Petitioner
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,218,481
`
`Case No. IPR2017-00927
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42.8) ............................................................ 1
`A. Real Parties-in-Interest (§ 42.8(B)(1)) ...................................................... 1
`B. Related Matters (§ 42.8(B)(2)) ................................................................. 1
`C. Counsel Information (§ 42.8(b)(3)) .......................................................... 2
`
`II.
`
`Payment of Fees (37 C.F.R. § 42.15(A)) ......................................................... 2
`
`III. Grounds for Standing (37 C.F.R. § 42.104(A)) ............................................... 3
`
`IV. Background of 481 Patent ............................................................................... 3
`A. Summary ................................................................................................... 3
`B. Prosecution History ................................................................................... 3
`C. Claimed Priority Date ............................................................................... 5
`
`V.
`
`Background of Technology ............................................................................. 5
`A. Person of Ordinary Skill in the Art ........................................................... 5
`B. Technical Background .............................................................................. 5
`C. State of the Art .......................................................................................... 8
`
`VI. Prior Art References ...................................................................................... 10
`A. Panasonic 700 (Ex. 1002) ....................................................................... 10
`B. Panasonic 114 (Ex. 1003) ....................................................................... 12
`C. Chu (Ex. 1004) ........................................................................................ 13
`D. Motorola 595 (Ex. 1020) ........................................................................ 14
`E. “Printed Publication” Status ................................................................... 17
`1.
`Panasonic References .................................................................... 18
`2.
`Chu ................................................................................................ 22
`
`VII. Claim Construction (37 C.F.R. § 42.104(B)(3)) ........................................... 23
`
`i
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`A. “repeating a specific sequence, having a length (L), N times to generate
`a consecutive sequence having a length (N*L)” (claims 1 and 8) ......... 23
`B. “preamble generation unit” and “transmission unit” (claim 8) .............. 24
`
`VIII. Grounds of Rejection (37 C.F.R. § 42.104(B)(1)-(2), (4)) ............................ 25
`A. Ground 1: Claims 1 and 2 are invalid based on Panasonic 700. ............ 26
`1.
`Independent claim 1 is invalid. ..................................................... 26
`2. Dependent claim 2 is invalid. ........................................................ 33
`B. Ground 2: Claim 3 is invalid based on Panasonic 700 and Panasonic
`114. .......................................................................................................... 34
`1. Dependent claim 3 is invalid. ........................................................ 35
`2.
`Reasons to Combine the Panasonic References ............................ 36
`C. Ground 3: Claims 4 and 6 are invalid based on Panasonic 700,
`Panasonic 114, and Chu. ......................................................................... 38
`1. Dependent claim 4 is invalid. ........................................................ 38
`2. Dependent claim 6 is invalid. ........................................................ 41
`3.
`Reasons to Combine the Panasonic References and Chu ............. 42
`D. Ground 4: Claims 8 and 9 are invalid based on Panasonic 700 and
`Motorola 595. .......................................................................................... 43
`1.
`Independent claim 8 is invalid. ..................................................... 43
`2. Dependent claim 9 is invalid. ........................................................ 49
`3.
`Reasons to Combine the Panasonic References and/or Chu with
`Motorola 595 ................................................................................. 50
`E. Ground 5: Claim 10 is invalid based on Panasonic 700, Panasonic 114,
`and Motorola 595. ................................................................................... 51
`1. Dependent claim 10 is invalid. ...................................................... 51
`
`ii
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`F. Ground 6: Claims 11 and 13 are invalid based on Panasonic 700,
`Panasonic 114, Chu, and Motorola 595. ................................................. 52
`1. Dependent claim 11 is invalid. ...................................................... 52
`2. Dependent claim 13 is invalid. ...................................................... 52
`G. No ground is redundant. .......................................................................... 53
`
`IX. Conclusion ..................................................................................................... 55
`
`
`
`
`
`iii
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`
`
`
`EXHIBITS
`
`1003
`
`Panasonic
`114
`
`1004
`
`Chu
`
`1005
`
`1006
`
`1007
`
`1008
`
`481 File His-
`tory
`Huawei 797
`
`Motorola/TI
`893
`
`Exhibit No. Short Name Description
`1001
`481 Patent
`U.S. Patent No. 8,218,481
`1002
`Panasonic
`“RACH preamble evaluation in E-UTRA
`700
`uplink,” 3GPP Tdoc R1-060700, Panasonic,
`TSG-RAN WG1 Meeting #44, Denver, USA,
`February 13-17, 2006
`“Random access design for E-UTRA uplink,”
`3GPP Tdoc R1-061114, Panasonic, TSG-RAN
`WG1 Meeting #45, Shanghai, China, May 8-12,
`2006
`“Polyphase Codes With Good Periodic
`Correlation Properties,” D.C. Chu, IEEE
`Transactions on Information Theory, pp. 531-
`32, July 1972
`File History of U.S. Patent Application No.
`12/303,947, which issued as the 481 Patent
`“RACH design for E-UTRA,” 3GPP Tdoc R1-
`060797, Huawei, TSG-RAN WG1 Meeting
`#44bis, Athens, Greece, March 27-31, 2006
`Samsung 028 U.S. Patent No. US 7,702,028 B2, originally
`assigned to Samsung Electronics Co., Ltd.
`“Proposal for RACH Preambles,” 3GPP Tdoc
`TSGR1#6(99)893, Motorola and Texas
`Instruments, TSG-RAN WG1 Meeting #6,
`Espoo, Finland, July 13-16, 1999
`“RACH Preamble Design,” 3GPP Tdoc R1-
`051058, Texas Instruments, TSG-RAN WG1
`Meeting #42bis, San Diego, USA, October 10-
`14, 2005
`Motorola 884 “Random Access Sequence Design,” 3GPP
`Tdoc R1-060884, Motorola, TSG-RAN WG1
`
`1009
`
`TI 058
`
`1010
`
`iv
`
`

`

`1011
`
`Nortel 908
`
`1012
`
`TI 867
`
`NTT/NEC
`992
`
`Min Decl.
`Zhisong
`Decl.
`Butler Aff.
`3GPP FAQs
`
`1013
`
`1014
`1015
`
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`Meeting #44-bis, Athens, Greece, March 24-26,
`2006
`“On the performances of LTE RACH,” 3GPP
`Tdoc R1-060908, Nortel Networks, TSG-RAN
`WG1 Meeting #44-bis, Athens, Greece, March
`27-31, 2006
`“A new preamble shape for the Random Access
`preamble in E-UTRA,” 3GPP Tdoc R1-060867,
`Texas Instruments, TSG-RAN WG1 Meeting
`#44-bis, Athens, Greece, March 27-31, 2006
`“Investigations on Random Access Channel
`Structure for E-UTRA Uplink,” 3GPP Tdoc R1-
`060992, NTT DoCoMo and NEC, TSG-RAN
`WG1 Meeting #44bis, Athens, Greece, March
`27-31, 2006
`Declaration of Paul S. Min, Ph.D
`Declaration of Zuo Zhisong
`
`v
`
`Affidavit of Christopher Butler
`Printout of 3GPP FAQs, available at
`http://www.3gpp.org/about-3gpp/3gpp-fa-
`qshttp://www.3gpp.org/specificationsgroups/
`delegates-corner
`Printout of Delegates Corner, available at
`http://www.3gpp.org/specificationsgroups/
`delegates-corner
`Printout of http://www.3gpp.org/ftp/tsg_ran/
`WG1_RL1/TSGR1_44/Docs/
`Motorola 595 U.S. Patent Application Publication No. US
`2007/0058595 A1
`Printout of list of Tdocs submitted at RAN1
`Meeting 44
`Printout of http://www.3gpp.org/ftp/tsg_ran/
`WG1_RL1/TSGR1_45/Docs/
`
`Delegates
`Corner
`
`44 Docs
`
`Tdoclist 44
`
`45 Docs
`
`

`

`1023
`
`1024
`
`1025
`
`1026
`1027
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`LG 916
`153 Patent
`284 Publica-
`tion
`3GPP FAQs
`Archive
`
`4/30/06 List
`Archives
`
`44 Participant
`List
`45 Participant
`List
`Dahlman
`
`5/2/06
`Hiramatsu
`E-Mail
`Tdoclist 45
`
`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`Printout of archived version of e-mail from
`Katsuhiko Hiramatsu to RAN1’s e-mail
`exploder list on May 2, 2006
`Printout of list of Tdocs submitted at RAN1
`Meeting 45
`Chu Citations Printout of IEEE Xplore Abstract (Citations) -
`Polyphase codes with good periodic correlation
`properties (Corresp.), available at
`http://ieeexplore.ieee.org/xpl/abstractCitations.js
`p?tp=&arnumber=1054840&filter%3DAND%2
`8p_IS_Number%3A22664%29
`U.S. Patent No. 7,746,916
`U.S. Patent No. 5,553,153
`U.S. Patent App. Pub. 2004/0047284
`
`Printout of archived version of 3GPP Frequency
`Asked Questions, available at
`http://web.archive.org/web/20060225053110/htt
`p://www.3gpp.org/faq/faq_2005_2.htm
`Printout of archived version of LISTSERV
`Archives at LIST.ETSI.ORG, available at
`https://web.archive.org/web/20060430104216/ht
`tp://list.3gpp.org/
`Printout of 3GPP Meeting Registration
`
`Printout of 3GPP Meeting Registration
`
`Excerpts from Dahlman, Erik. 3G Evolution:
`HSPA and LTE for Mobile Broadband.
`Amsterdam: Academic, 2008
`“On Uplink Pilot in EUTRA SC-FDMA,” 3GPP
`Tdoc R1-051062, Texas Instruments, TSG-RAN
`WG1 Ad Hoc on LTE, San Diego, USA,
`October 10-14, 2005
`
`vi
`
`1034
`
`TI 062
`
`

`

`“E-UTRA Random Access,” 3GPP Tdoc R1-
`051445, Ericsson, TSG-RAN WG1 #43, Seoul,
`Korea, November 7-11, 2005
`Motorola 025 “RACH Design for EUTRA,” 3GPP Tdoc R1-
`060025, Motorola, TSG-RAN WG1 #43,
`Helsinki, Finland, January 23-25, 2006
`3GPP TS 25.211 v6.7.0 (2005-12)
`
`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`3GPP TR 25.905 v7.0.0 (2005-09)
`
`3GPP TR 25.814 v1.0.2 (2006-01)
`
`Joint Claim Construction Chart, filed as
`Document 57-1 in Case 1:15-cv-00546-SLR-SRF
`(D. Del.)
`U.S. Provisional Application No. 60/666,494
`
`Declaration of Youngbum Kim
`
`vii
`
`3GPP TR
`21.905 v7.0.0
`3GPP TR
`25.814 v1.0.2
`Ericsson 445
`
`3GPP TS
`25.211 v6.7.0
`Joint Claim
`Construction
`Chart
`Motorola 595
`Provisional
`Kim Decl.
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, and Microsoft
`
`Mobile Inc. (f/k/a Nokia Inc.) (collectively “Petitioner”) request inter partes re-
`
`view (IPR) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-4, 6, 8-11,
`
`and 13 of U.S. Patent No. 8,218,481 (“the 481 patent”). This Petition substantively
`
`copies the petition filed in co-pending IPR2016-01342, which was instituted on
`
`January 20, 2017. Accompanying this Petition is a motion to join IPR2016-01342.
`
`Because this Petition substantively copies the petition filed in co-pending
`
`IPR2016-01342 and that IPR has been instituted, evidence presented in this Peti-
`
`tion establishes a reasonable likelihood Petitioner will prevail with regard to at
`
`least claims 1-4, 6, 8-11 and 13 of the 481 patent.
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`A. Real Parties-in-Interest (§ 42.8(B)(1))
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, Microsoft Mobile
`
`Inc. (f/k/a Nokia Inc.), Microsoft Luxembourg International Mobile SARL and Mi-
`
`crosoft Luxembourg USA Mobile SARL are the real parties-in-interest. The Mi-
`
`crosoft entities have numerous affiliated and/or related entities. However, no un-
`
`named Microsoft entity is funding or controlling this Petition or any resulting IPR.
`
`B. Related Matters (§ 42.8(B)(2))
`The 481 patent is the subject of the following pending matters, which may
`
`affect, or be affected by, a decision in this proceeding: Evolved Wireless, LLC v.
`
`Apple, Inc., C.A. 15-cv-542 (D. Del.); Evolved Wireless, LLC v. HTC Corp., C.A.
`1
`
`
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`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.). The 481
`
`patent is also the subject of inter partes review proceeding nos. IPR2016-00758,
`
`IPR2016-00981, IPR2016-01342, IPR2016-01349, IPR2017-00068, and IPR2017-
`
`00106.
`
`Petitioner is unaware of any other pending judicial or administrative matter
`
`that would affect, or be affected by, a decision in this proceeding.
`
`C. Counsel Information (§ 42.8(b)(3))
`Petitioner designates W. Karl Renner, Reg. No. 41, 265, as Lead Counsel
`
`and Roberto J. Devoto, Reg. No. 55,108 and David L. Holt, Reg. No. 65,161, as
`
`Backup Counsel, each available at 3200 RBC Plaza, 60 South Sixth Street, Minne-
`
`apolis, MN 55402 (T: 202-783-5070; F: 877- 769-7945), or electronically by e-
`
`mail at IPR00035-0010IP3@fr.com (referencing No. 00035-0010IP3 and cc’ing
`
`PTABInbound@fr.com, renner@fr.com, devoto@fr.com and holt2@fr.com.
`
`A power of attorney accompanies this petition.
`
`II.
`Payment of Fees (37 C.F.R. § 42.15(A))
`Petitioner authorizes the Office to charge the filing fee specified by 37
`
`C.F.R. § 42.15(a), and any other necessary fee, to Deposit Account No. 06-1050.
`
`
`
`2
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`III. Grounds for Standing (37 C.F.R. § 42.104(A))
`Petitioner certifies that the 481 patent is available for inter partes review and
`
`that it is not barred or estopped from requesting an inter partes review challenging
`
`the patent claims on the grounds identified in the petition.
`
`Neither Petitioner, nor any party in privity with Petitioner, has filed a civil
`
`action challenging the validity of any claim of the 481 patent. See 35 U.S.C. §
`
`315(a)(1). While Petitioner was served with a complaint alleging infringement of
`
`the 481 patent more than one year before the date this petition is filed, the time
`
`limitation of 35 U.S.C. § 315(b) “shall not apply to a request for joinder under” 35
`
`U.S.C. § 315(c). Because this petition is accompanied by a Motion for Joinder, it
`
`complies with 35 U.S.C. § 315(b). See, e.g., Dell Inc. v. Network-1 Security Solu-
`
`tions, Inc., IPR2013-00385, Paper 17 at 4-5 (granting joinder beyond the one-year
`
`window).
`
`IV. Background of 481 Patent
`A.
`Summary
`The 481 patent relates to “a method of expanding a code sequence, a struc-
`
`ture of a random access channel and a method of transmitting data in a mobile
`
`communication system.” (Ex. 1001, 481 Patent, at 1:16-20.) The 481 patent has 16
`
`claims, of which claims 1 and 8 are independent.
`
`B.
`Prosecution History
`On December 8, 2008, U.S. Patent Application No. 12/303,947 was filed as
`
`
`
`3
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`a national stage filing of International Application No. PCT/KR07/02784, filed on
`
`June 8, 2007 (“PCT 784”), which claims priority to Korean Application Nos. 10-
`
`2006-0052167, filed on June 9, 2006 (“KR 167”), and 10-2006-0057488, filed on
`
`June 26, 2006 (“KR 488”).
`
`On September 16, 2011, the examiner issued a non-final office action reject-
`
`ing every pending claim under 35 U.S.C. § 102(b) based on U.S. Patent Applica-
`
`tion No. 2006/0153282 (“Jung”). (Ex. 1005, 481 File History, at 1005-0374 – 380.)
`
`On December 16, 2011, in response to the office action, the applicant
`
`amended prosecution claim 31 (which corresponds to issued claim 1) as follows,
`
`amended prosecution claim 38 (which corresponds to issued claim 8) in a similar
`
`manner, and argued that the as-amended claims are patentable over Jung.
`
`(Id. at 1005-0541 – 548.)
`
`On March 6, 2012, the examiner issued a notice of allowance, leading to the
`
`
`
`
`
`4
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`issuance of the 481 patent. (Id. at 1005-0692 – 696.)
`
`C. Claimed Priority Date
`On its face, the 481 patent claims priority to KR 167, filed on June 9, 2006.
`
`V. Background of Technology
`A.
`Person of Ordinary Skill in the Art
`The person of ordinary skill in the art of the subject matter of the 481 patent
`
`would have had a master’s degree in electrical engineering with 2-3 years of expe-
`
`rience in cellular communication systems, and would have been aware of the ef-
`
`forts of the Third Generation Partnership Project (“3GPP”) and its various groups.
`
`(Ex. 1014, Min Decl., at ¶ 34.) Alternatively, that person would have had a Ph.D.
`
`in electrical engineering with the same familiarity with the work of the 3GPP and
`
`its various groups. (Id.)
`
`B.
`Technical Background
`In 2006, before the 481 patent’s claimed priority date, the telecommunica-
`
`tions industry was developing the cellular standard now known as Long Term Evo-
`
`lution (“LTE”). (Ex. 1014, Min Decl., at ¶ 35.) Development of LTE took place in
`
`a standard-setting organization called the Third Generation Partnership Project
`
`(“3GPP”). (Id.) 3GPP had members from virtually every telecommunications com-
`
`pany or organization in the world. (Id.)
`
`3GPP had several groups. (Id. at ¶ 36.) Relevant here is Technical Specifica-
`
`tion Group Radio Access Network (“TSG RAN”). (Id.) TSG RAN developed
`
`
`
`5
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`LTE’s radio access network, which allows user equipment (“UE”), such as a
`
`phone, to communicate with the cellular network. (Id.) TSG RAN itself had several
`
`working groups, of which Working Group 1 (“WG1”) is relevant here. (Id.)
`
`WG1 was developing the Random Access Channel (“RACH”) of LTE. (Id.
`
`at ¶ 37.) The RACH had a few purposes. (Id.) It would allow a UE to access a cel-
`
`lular network for the first time, for example, when the UE powers up. (Id.) The
`
`RACH would also allow the cellular network to perform a handover, a process by
`
`which the network transfers a UE from one cell of the network to another cell. (Id.)
`
`Finally, the RACH would allow the UE to become time-synchronized with the net-
`
`work. (Id.) This was all well-known in WG1 before the 481 patent’s claimed prior-
`
`ity date. (Id.)
`
`Also well-known was the risk of interference if multiple UEs used the same
`
`RACH sequence, called a preamble sequence. (Id. at ¶ 38.) At a given time, several
`
`UEs can perform respective random access procedures, each ideally using a differ-
`
`ent RACH preamble sequence to identify itself to a base station, or an eNodeB in
`
`the context of LTE. (Id.) There are a number of RACH preambles available for a
`
`given eNodeB, and when a UE performs a random access procedure, the UE se-
`
`lects, often randomly, a RACH preamble among the multitude of RACH preambles
`
`available for the eNodeB. (Id.) Because the UEs do not communicate among them-
`
`selves, when two or more UEs happen to use the same RACH preamble sequence
`
`
`
`6
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`at the same time, the eNodeB cannot differentiate these UEs, and for that matter,
`
`the eNodeB may not even know there are multiple UEs performing the random ac-
`
`cess procedure at the same time. (Id.) To correctly perform the random access pro-
`
`cedure, different UEs should use different RACH preamble sequences. (Id.) Well
`
`aware of this problem, WG1 was working on designing a sufficiently large number
`
`of preamble sequences that would be available to the UEs to reduce the probability
`
`that multiple UEs choose the same RACH preamble. (Id.)
`
`Two mathematical functions guided WG1’s design: (1) auto-correlation, and
`
`(2) cross-correlation. (Id. at ¶ 39.) The auto-correlation function compares a signal
`
`to a time-shifted version of itself. (Id.) The cross-correlation function compares
`
`different signals. (Id.) For both functions, a result of zero is ideal, while a higher
`
`value typically indicates a higher probability of interference. (Id.) When a signal is
`
`periodic, slightly different terminology applies. (Id.) An auto-correlation of a peri-
`
`odic signal is called a circular auto-correlation; a cross-correlation of that signal is
`
`called a circular cross-correlation; and the time shift of that signal is called a cyclic
`
`shift. (Id.)
`
`WG1 members knew these properties well. (Id. at ¶ 40.) WG1 members also
`
`knew that the RACH preamble sequence they were designing should have excel-
`
`lent auto-correlation and cross-correlation properties so that the eNodeB can per-
`
`form time estimation accurately without RACH preamble sequences interfering
`
`
`
`7
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`with one another. (Id.) Finally, WG1 members knew that sequences called Con-
`
`stant Amplitude Zero Auto Correlation (“CAZAC”) sequences were wellsuited to
`
`be used as RACH preamble sequences. (Id.)
`
`Those skilled in the art also knew that transmissions occurred within a radio
`
`frame, which, as of early 2006, was known to be a 10 ms duration. (Id. at ¶ 41.)
`
`Members of 3GPP WG1 who were developing the radio frame structures for the
`
`4G LTE standards were the same companies and organizations that developed and
`
`managed the 3G WCDMA standards wherein the duration of a radio frame is 10
`
`ms. (Id.) As such, in early 2006, WG1 members advocated the same 10 ms dura-
`
`tion for a radio frame in LTE. (See Ex. 1038, Motorola 025, at 3.) Skilled artisans
`
`also knew that the 10 ms radio frame was constructed of sub-frames. (Id. (citing
`
`Ex. 1036, 3GPP TR 25.814, at § 6.2.1.1.2; Ex. 1035, 3GPP TR 21.905, at 21); Ex.
`
`1020, Motorola 595, at ¶¶ [0036]-[0040].)
`
`C.
`State of the Art
`The challenged claims are directed to a RACH preamble that includes a sin-
`
`gle cyclic prefix followed by repetitions of a cyclic-shifted CAZAC sequence. (Ex.
`
`1014, Min Decl., at ¶ 42 (citing Ex. 1001, 481 Patent, at claims 1-4, 6, 8-11, 13).)
`
`Before the 481 patent’s claimed priority date, this concept was well-known to per-
`
`sons of ordinary skill in the art. (Id.)
`
`First, it was well-known that the RACH preamble could include a CAZAC
`
`
`
`8
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`sequence. (Id. at ¶ 43.) In July 1972, David C. Chu authored an IEEE article that
`
`introduced a type of CAZAC sequence now known as the Zadoff-Chu sequence.
`
`(Id. (citing Ex. 1004, Chu).) Citing to the Chu article more than 30 years later, sev-
`
`eral companies proposed to WG1 that the RACH preamble include a Zadoff-Chu
`
`sequence or other CAZAC sequence. (Id. (citing Ex. 1002, Panasonic 700, at 2; Ex.
`
`1003, Panasonic 114, at 1, 4-5; Ex. 1006, Huawei 797, at 2; Ex. 1007, Samsung
`
`028, at 8:8-11; Ex. 1010, Motorola 884, at 1; Ex. 1011, Nortel 908, at 1; Ex. 1012,
`
`TI 867, at 5).)
`
`It was also well-known that the RACH preamble could use cyclic shifts of a
`
`CAZAC sequence. (Id. at ¶ 44.) For example, in May 2006, Panasonic employees
`
`studied cyclic-shifted Zadoff-Chu sequences (which are CAZAC sequences) and
`
`concluded that the RACH preamble should use those cyclic-shifted sequences. (Id.
`
`(citing Ex. 1003, Panasonic 114, at 1).)
`
`Those skilled in the art also knew that the RACH preamble could be con-
`
`structed using a repeating code, including a repeating CAZAC sequence. (Id. at
`
`45.) In 1999, Motorola and Texas Instruments proposed a RACH preamble struc-
`
`ture formed of 256 repeated codes. (Id. (citing Ex. 1008, Motorola/TI 893, at 3).)
`
`In August 2005, citing to the 1999 paper, Texas Instruments proposed that same
`
`preamble structure for the RACH in LTE. (Id. (citing Ex. 1009, TI 058, at 1).)
`
`Motorola and Texas Instruments’ papers also disclosed multiplying the repetitions
`
`
`
`9
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`of the code with another code. (Id. (citing Ex. 1008, Motorola/TI 893, at 3; Ex.
`
`1009, TI 058, at 1).) In March 2006, NTT DoCoMo and NEC specifically pro-
`
`posed a RACH preamble with a repeating CAZAC sequence. (Id. (citing Ex. 1013,
`
`NTT/NEC 992, at 1).) Similarly, Panasonic proposed that the RACH preamble
`
`contain repetitions of a Zadoff-Chu CAZAC sequence. (Id. (citing Ex. 1002, Pana-
`
`sonic 700, at 2).) Panasonic also proposed that the RACH preamble contain repeti-
`
`tions of a cyclic-shifted Zadoff-Chu CAZAC sequence. (Id. (citing Ex. 1003, Pana-
`
`sonic 114, at 3).) Finally, skilled artisans knew that a RACH preamble could have
`
`a cyclic prefix followed by repetitions of a CAZAC sequence. (Id.) For example,
`
`Panasonic’s March 2006 submission to 3GPP WG1 proposed that the RACH pre-
`
`amble contain a cyclic prefix followed by repetitions of a Zadoff-Chu CAZAC se-
`
`quence. (Id. (citing Ex. 1002, Panasonic 700, at 2).)
`
`VI. Prior Art References
`A.
`Panasonic 700 (Ex. 1002)
`“Panasonic 700” refers to a meeting contribution document titled “RACH
`
`preamble evaluation in E-UTRA uplink” and numbered R1-060700. (Ex. 1002,
`
`Panasonic 700, at 1.) Panasonic 700 is provided as Exhibit 1002. Panasonic sub-
`
`mitted Panasonic 700 to WG1 for Meeting 44, held on February 13-17, 2006, in
`
`Denver, USA. (Id. at 1.) Panasonic 700 was not cited to the Patent Office or con-
`
`sidered by the examiner during the prosecution of the application that issued as the
`
`
`
`10
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`
`481 patent.
`
`Panasonic 700 is prior art to every claim of the 481 patent under pre-AIA 35
`
`U.S.C. § 102(a) and (b). Panasonic 700 is § 102(b) prior art because its publication
`
`date (on or before February 17, 2006) predates the 481 patent’s claimed U.S. filing
`
`date (June 8, 2007) by more than one year. Panasonic 700 is § 102(a) prior art be-
`
`cause its publication date (on or before February 17, 2006) predates the 481 pa-
`
`tent’s claimed priority date (June 9, 2006). Panasonic 700 is a “printed publica-
`
`tion” under §§ 102(a) and (b) for the reasons in Section VI.E, infra.
`
`Panasonic 700 discloses a RACH preamble structure. (Ex. 1014, Min Decl.,
`
`at ¶ 48 (citing Ex. 1002, Panasonic 700, at 2).) The preamble structure is shown be-
`
`low.
`
`
`
`(Ex. 1002, Panasonic 700, at 2.) The preamble structure consists of M repetitions
`
`of a Zadoff-Chu CAZAC sequence. (Ex. 1014, Min Decl., at ¶ 51 (citing Ex. 1002,
`
`Panasonic 700, at 2).) A cyclic prefix (labeled “CP” in Figure 1) is added to the
`
`preamble by concatenating at the front of the repeated CAZAC sequence. (Id.) A
`
`UE transmits the RACH preamble to a Node B. (Id.)
`
`
`
`11
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`
`B.
`Panasonic 114 (Ex. 1003)
`“Panasonic 114” refers to a meeting contribution document titled “Random
`
`access design for E-UTRA uplink” and numbered R1-061114. (Ex. 1003, Pana-
`
`sonic 114, at 1.) Panasonic 114 is provided as Exhibit 1003. Panasonic submitted
`
`Panasonic 114 to 3GPP WG1 for Meeting 45, held on May 8 to 12, 2006, in
`
`Shanghai, China. (Id.)
`
`Panasonic 114 was not cited to the Patent Office or considered by the exam-
`
`iner during the prosecution of the application that issued as the 481 patent.
`
`Panasonic 114 is prior art to every claim of the 481 patent under pre-AIA 35
`
`U.S.C. § 102(a) and (b). Panasonic 114 is § 102(b) prior art because its publication
`
`date (on or before May 2, 2006) predates the 481 patent’s claimed U.S. filing date
`
`(June 8, 2007) by more than one year. Panasonic 114 is § 102(a) prior art because
`
`its publication date (on or before May 2, 2006) predates the 481 patent’s claimed
`
`priority date (June 9, 2006). Panasonic 114 is a “printed publication” under §§
`
`102(a) and (b) for the reasons in Section VI.E, infra.
`
`Panasonic 114 discloses a RACH preamble design. (Ex. 1014, Min Decl., at
`
`¶ 54 (Ex. 1003, Panasonic 114, at 1-2).) Panasonic 114 provides test results of the
`
`performance of WCDMA sequences, CAZAC sequences, and cyclic-shifted CA-
`
`ZAC sequences, concluding that the “cyclic-shifted CAZAC sequence has superior
`
`performance among compared sequences.” (Id. (quoting Ex. 1003, Panasonic 114,
`
`
`
`12
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`at 2).) Panasonic 114 therefore “propose[s] to choose cyclic-shifted Zadoff-Chu
`
`CAZAC as preamble sequence mainly.” (Id. (quoting Ex. 1003, Panasonic 114, at
`
`2).) Panasonic 114 provides “two preamble lengths, around 400 usec and around
`
`800 usec” and discloses that “[f]or supporting larger cell size, repeating this [cy-
`
`clic-shifted CAZAC sequence] twice (i.e. 800 usec) can be used.” (Id. (quoting Ex.
`
`1003, Panasonic 114, at 2-3).)
`
`C. Chu (Ex. 1004)
`“Chu” refers to a publication titled “Polyphase Codes with Good Periodic
`
`Correlation Properties” in the July 1972 issue of IEEE Transactions on Information
`
`Theory. (Ex. 1004, Chu, at 1.) Chu is provided as Exhibit 1004.
`
`Chu was not cited to the Patent Office or considered by the examiner during
`
`the prosecution of the application that issued as the 481 patent.
`
`Chu is prior art to every claim of the 481 patent under pre-AIA 35 U.S.C. §
`
`102(a) and (b) because Chu’s publication date (on or before July 1972) predates
`
`the 481 patent’s claimed priority date (June 9, 2006) and claimed U.S. filing date
`
`(June 8, 2007) by more than one year. Chu is a “printed publication” under §§
`
`102(a) and (b) for the reasons in Section VI.E, infra.
`
`Chu discloses and introduces the sequence that is now known as the Zadoff-
`
`Chu sequence. (Ex. 1014, Min Decl., at ¶ 56.) Chu teaches that sequence in the
`
`form of the following equations:
`
`
`
`13
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`
`
`(Id. (citing Ex. 1004, Chu, at 1-2).) Equation (4) applies if the sequence length is
`
`an even number, while equation (7) applies if the sequence length is an odd num-
`
`ber. (Id.) Chu also discloses that this sequence, ak, may be subjected to “[t]rivial
`
`variations such as cyclic shifts” and that “certain linear phase shifts of the form exp
`
`, where q is any integer, when introduced into the code also will not af-
`
`fect the correlation.” (Id. (quoting Ex. 1004, Chu, at 2).)
`
`D. Motorola 595 (Ex. 1020)
`“Motorola 595” refers to U.S. Patent Application Publication No. US
`
`2007/0058595 A1, which names Motorola, Inc. as its assignee.
`
`Motorola 595 was not cited to the Patent Office or considered by the exam-
`
`iner during the prosecution of the application that issued as the 481 patent.
`
`Motorola 595 is prior art to every claim of the 481 patent under pre-AIA 35
`
`U.S.C. § 102(e) because Motorola 595’s filing date (March 20, 2006) predates the
`
`481 patent’s claimed priority date (June 9, 2006). Motorola 595 is also § 102(e)
`
`prior art because its priority provisional application’s filing date (March 30, 2005)
`
`predates the 481 patent’s claimed priority date (June 9, 2006). Motorola 595 is en-
`
`titled to the March 30, 2005 filing date of its priority provisional application (pro-
`
`vided as Ex. 1041) because the provisional application supports Motorola 595’s
`14
`
`
`
`

`

`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`claims. For example, as shown by the exemplary citations in the following table,
`
`Motorola 595’s priority provisional application supports Motorola 595’s independ-
`
`ent claim 1.1
`
`Motorola 595 Claim 1
`
`“A method for reducing round-trip la-
`tency within a communication system,
`the method comprising the steps of:”
`
`Exemplary Supporting Disclosure in
`Motorola 595’s Priority Provisional
`Application
`“Therefore, there is a need for an im-
`proved method for reducing both
`round-trip latency and overhead.”
`(page 1)
`
`“The different frame durations may be
`used to reduce latency and overhead
`based on the type of traffic served.”
`(page 1)
`“Data transmission is provided by:
` Receiving data to be transmitted
`over a radio fr