UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`___________________
`
`Case IPR2018-00689
`Patent No. 6,993,084
`
`DECLARATION OF DR. MICHAEL L. HONIG IN SUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10536457
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`Fraunhofer Ex 2003-1
`Sirius XM v Fraunhofer, IPR2018-00689
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`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`___________________
`
`Case IPR2018-00689
`Patent No. 6,993,084
`
`DECLARATION OF DR. MICHAEL L. HONIG IN SUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10536457
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`Fraunhofer Ex 2003-1
`Sirius XM v Fraunhofer, IPR2018-00689
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`Introduction
`1. My name is Michael L. Honig, Ph.D. I have been asked by
`
`Case IPR2018-00689
`Patent No. 6,993,084
`
`
`I.
`
`Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung E.V. (“Patent
`
`Owner”) to review the technologies involved in U.S. 6,993,084 (the “’3084
`
`patent”), the Petition for inter partes review of the ’3084 patent, the expert
`
`declaration of Dr. David Lyon, the cited references, and other pertinent facts and
`
`opinions regarding IPR2018-00689. My qualifications are summarized below and
`
`are addressed more fully in my CV attached as Exhibit 2004.
`
`2.
`
`I am a professor in the Department of Electrical and Computer
`
`Engineering at Northwestern University. I have held that position since 1994. At
`
`Northwestern University, I have taught courses in wireless communications,
`
`analog communications, and digital communications, among others. Prior to
`
`joining Northwestern University, I worked in the Systems Principles Research
`
`Division at Bellcore in Morristown, New Jersey, and at Bell Laboratories in
`
`Holmdel, New Jersey.
`
`3.
`
`I earned my Bachelor of Science degree in Electrical Engineering
`
`from Stanford University in 1977. I earned my Master of Science and Ph.D.
`
`degrees in Electrical Engineering from the University of California, Berkeley in
`
`1978 and 1981, respectively. I have held visiting scholar positions at the Naval
`
`Research Laboratory (San Diego), the University of California, Berkeley, the
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`University of Sydney, Princeton University, the Technical University of Munich,
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`Case IPR2018-00689
`Patent No. 6,993,084
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`and the Chinese University of Hong Kong.
`
`4.
`
`For over 25 years I have been involved in wireless communications
`
`including the technologies described in the ’3084 patent. While at Bellcore, I
`
`studied multi-carrier modulation for digital subscriber lines, and wrote several
`
`related reports and research papers. While at Northwestern, I managed a project
`
`funded by the European Space Agency aimed at integrating satellite links with
`
`terrestrial cellular. A large portion of my work has focused on interference
`
`management in wireless systems, including those that use OFDM. I was intimately
`
`involved in this area during the time of the ’3084 patent.
`
`5. My recent research has focused on wireless networks, including
`
`interference mitigation and resource allocation, and market mechanisms for
`
`dynamic spectrum allocation. I have led several research projects on those topics
`
`funded by industry, the National Science Foundation, and the Army Research
`
`Office.
`
`6.
`
`I have served as editor and guest editor for several journals, and as a
`
`member of the Board of Governors for the IEEE Information Theory Society. I am
`
`a Fellow of IEEE, the recipient of a Humboldt Research Award for Senior U.S.
`
`Scientists, and a co-recipient of the 2002 IEEE Communications and Information
`
`Theory Society paper award. Further details regarding my education and
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`background can be found in my CV.
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`Case IPR2018-00689
`Patent No. 6,993,084
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`7.
`
`For the purpose of this declaration, I apply the same skill level as
`
`proposed in the Petition, although I reserve the right to explain why this level is too
`
`high. I am being compensated for my work on this case at a fixed, hourly rate of
`
`$500, plus reimbursement for expenses. My compensation does not depend on the
`
`outcome of this case or any issue in it, and I have no interest in this proceeding.
`
`II.
`
`Summary of Opinions
`8.
`I have studied the Petition for inter partes review of U.S. Patent No.
`
`6,993,084, the expert declaration of Dr. David Lyon, and the cited references
`
`submitted with the Petition. Based on my analysis, it is my opinion that the
`
`primary reference relied upon in the Petition, Cimini (Ex. 1003) fails to disclose,
`
`teach, or suggest limitations of claims 1-3, 6-12, and 14-21 of the ’3084 patent.
`
`III. Summary of the ’3084 Patent
`9.
`U.S. Patent No. 6,993,084 is entitled “Coarse Frequency
`
`Synchronisation in Multicarrier Systems.” I will refer to this patent as the “’3084
`
`patent.” The ’3084 patent relates to a method and apparatus for providing frame
`
`synchronization in multi-carrier modulation (“MCM”) systems in the presence of
`
`frequency offsets. The ’3084 patent discloses, among other things, a method and
`
`apparatus for frame synchronization of a signal having a frame structure that
`
`contains a reference symbol having an amplitude modulated bit sequence, and
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`where the reference symbol includes a real part and an imaginary part that are
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`Case IPR2018-00689
`Patent No. 6,993,084
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`equal. The methods and apparatuses of the present invention overcome some of
`
`the problems and complexities related to frame synchronization in prior art MCM
`
`systems.
`
`IV. Brief Description of Cimini (Ex. 1003)
`10. The primary reference for all Grounds in the Petition is U.S. Patent
`
`No. 5,914,933, entitled “Clustered OFDM Communication System.” I will refer to
`
`this reference as “Cimini” or Exhibit 1003. Cimini discloses a method for dividing
`
`a block of data symbols into clusters, where each cluster of data symbols generates
`
`an independent OFDM signal. The Cimini patent is concerned with mitigating the
`
`peak-to-average power problem in OFDM, and combining OFDM with spatial
`
`diversity, given multiple antennas at the transmitter. Cimini does not disclose or
`
`provide any teaching for frame synchronization using a reference symbol that is
`
`generated by performing an amplitude modulation of a bit sequence. Cimini is
`
`similarly devoid of any disclosure or teaching of using a reference symbol that has
`
`a real part and an imaginary part that are equal.
`
`V. Cimini, Alone or in Combination, Does Not Anticipate or Make Obvious
`the Challenged Claims
`11.
`I have reviewed and analyzed both the Petition’s and Dr. Lyon’s
`
`declaration regarding the disclosure and teaching of Cimini related to the claim of
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`the ’3084 patent at issue in this inter partes review. Based on my analysis, I
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`Case IPR2018-00689
`Patent No. 6,993,084
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`believe there are significant gaps in the arguments presented by the Petition and
`
`Dr. Lyon. In my opinion, Cimini fails to disclose claim limitations that appear in
`
`independent claims 1, 6, 9, and 18 of the ’3084 patent. The Petition states that
`
`Cimini anticipates or renders obvious claims 1, 2, 6, 7, 9, and 18. Pet. at 20. I
`
`disagree.
`
`A. Cimini Does Not Disclose an Amplitude Modulated Bit Sequence
`12. Claim 1 of the ’3084 patent is reproduced below:
`
`1. A method for generating a signal having a frame structure,
`each frame of said frame structure comprising at least one useful
`symbol, a guard interval associated to said at least one useful symbol
`and a reference symbol, said method comprising the step of
`performing an amplitude modulation of a bit sequence, an
`envelope of the amplitude modulated bit sequence defining a
`reference pattern of said reference symbol; and
`inserting, in time domain, the reference symbol into said signal,
`wherein said reference symbol comprises a real part and an imaginary
`part, said real part and said imaginary part being equal and being
`formed by said amplitude modulated bit sequence.
`
`13. As highlighted above, claim 1 recites “performing an amplitude
`
`modulation of a bit sequence.” Cimini does not disclose, teach, or suggest this
`
`limitation.
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`14. The Petition states:
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`Case IPR2018-00689
`Patent No. 6,993,084
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`In Cimini, the SYNCH WORD is amplitude modulated to form
`a reference pattern. Lyon, ¶¶123-124. For example, the SYNCH
`WORD is inserted into MUX within element 45, converted to analog
`form (element 47), and then amplitude modulated by the complex
`carrier waveform ej2xfet (at element 52). Id.; Cimini, FIGS. 2 and 3;
`4:51–56; 6:35–44.
`Pet. at 26; see also Pet. at 23 (“This SYNCH WORD corresponds to the ’3084
`
`Patent’s bit sequence, which is amplitude modulated by RF mixer 52 (i.e. a
`
`reference symbol).”). The mathematical term ej2xfet is taken from Fig. 2 in Cimini,
`
`where x is equal to pi, and fe is the carrier frequency.
`
`15. There is no disclosure in Cimini that the SYNCH WORD is amplitude
`
`modulated. The Petition’s statements are not supported by the evidence they cite.
`
`Both the Petition (at p. 26) and Dr. Lyon (at ¶ 123) cite to Figures 2 and 3, column
`
`4, lines 51-56, and column 6, lines 35-44 of Cimini for support. The citations
`
`identified above do not support the Petition. Figures 2 and 3 are block diagrams of
`
`the system. They do not show or provide any teaching of amplitude modulation of
`
`the SYNCH WORD. The excerpt at column 6, lines 35-44 of Cimini describes the
`
`storage of the SYNCH WORD in ROM. There is no mention of the modulation
`
`format of the SYNCH WORD.
`
`16. The excerpt at column 4, lines 51-56 of Cimini states that the OFDM
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`multicarrier signal is carrier modulated by the RF mixer 52. An RF mixer merely
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`Case IPR2018-00689
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`multiplies the incoming signal by sinusoidal waveforms. It does not convert a bit
`
`sequence into a sequence of data symbols. That is, it does not assign phases,
`
`frequencies, or amplitudes to the bit sequence. The Petition and Dr. Lyon’s
`
`reliance on Cimini’s disclosure of RF mixer 52 is misguided. A POSA would
`
`understand that RF mixer 52 in Cimini is used to shift the baseband signal by the
`
`carrier frequency and that this is independent of the modulation format used.
`
`There is no disclosure or teaching in Cimini that RF mixer 52 performs amplitude
`
`modulation of any bit sequence.
`
`17. Cimini also discloses that the SYNCH WORDS are a pseudo-random
`
`number sequence. Ex. 1003 at 8:39-44. But the use of a pseudo-random number
`
`sequence is independent of the modulation format. There is no mention in Cimini
`
`that the SYNCH WORDS are amplitude modulated.
`
`18. The Petition also states on page 26 that “the SYNCH WORD is . . .
`
`amplitude modulated by the complex carrier waveform ej2xfet (at element 52).” But
`
`this is wrong. A complex number, z, can be represented as z = rejθ, where r is the
`
`amplitude and θ is the phase. See Ex. 1024 at 3 [eq. 3.7.2]. Thus, “the complex
`
`carrier waveform ej2xfet” has a fixed amplitude of 1 (i.e., only its phase varies over
`
`time), and is mathematically incapable of performing any amplitude modulation.
`
`19. The other independent claims include similar language as claim 1. In
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`particular:
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`Case IPR2018-00689
`Patent No. 6,993,084
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`Claim 6: “A method for generating a multi-carrier modulated signal having a
`
`frame structure, each frame of said frame structure comprising . . .
`
`generating said reference symbol by performing an amplitude modulation
`
`of a bit sequence;”
`
`Claim 9: “A method for frame synchronization of a signal having a frame
`
`structure . . . said method comprising the steps of: . . . in time domain,
`
`performing an amplitude-demodulation of said down-converted signal in
`
`order to generate an envelope;”
`
`Claim 18: “A method for frame synchronization of a multi-carrier
`
`modulated signal having frame structure . . . said method comprising the
`
`steps of: . . . in time domain, performing an amplitude-demodulation of
`
`said down-converted multi-carrier modulated signal in order to generate an
`
`envelope;”
`
`20.
`
`I note that claims 9 and 18 recite “amplitude-demodulation” rather
`
`than “amplitude modulation.” I also note that “amplitude modulation” takes place
`
`at a transmitter while “amplitude-demodulation” takes place at a receiver. Cimini
`
`fails to disclose or teach amplitude modulation or amplitude-demodulation. For
`
`the same reasons as discussed above with respect to claim 1, Cimini does not
`
`disclose these limitations of independent claims 6, 9, and 18.
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`B. Cimini Does Not Disclose a Reference Symbol Comprising a Real
`Part and an Imaginary Part That Are Equal
`21. Claim 1 of the ’3084 patent is reproduced below for convenience:
`
`1. A method for generating a signal having a frame structure,
`each frame of said frame structure comprising at least one useful
`symbol, a guard interval associated to said at least one useful symbol
`and a reference symbol, said method comprising the step of
`performing an amplitude modulation of a bit sequence, an
`envelope of the amplitude modulated bit sequence defining a
`reference pattern of said reference symbol; and
`inserting, in time domain, the reference symbol into said signal,
`wherein said reference symbol comprises a real part and an
`imaginary part, said real part and said imaginary part being equal
`and being formed by said amplitude modulated bit sequence.
`
`22. As highlighted above, claim 1 recites “wherein said reference symbol
`
`comprises a real part and an imaginary part, said real part and said imaginary part
`
`being equal.” This limitation is not disclosed, taught or suggested in Cimini.
`
`23. The Petition states:
`
`When Cimini’s SYNCH WORD (reference symbol) is
`amplitude modulated by the complex carrier waveform at element 52,
`the result of the modulation in fact contains a real and an imaginary
`part, which are equal to one another. Lyon, ¶¶130-132. This can be
`confirmed by a POSA invoking the following well-known
`mathematical identity:
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`ej2xfet = cos(2xfet) + j sin(2xfet)
`Id.; Ex. 1024 (Abramowitz) at 16.
`Since the SYNCH WORD is a real sequence of numbers in
`time, as it is simply a set of values read from ROM (a pseudo random
`number sequence in the preferred embodiment (Cimini, 8:39-44)),
`multiplying its analog counterpart (“S”) at the output of the digital to
`analog converter (element 47 in Fig. 2 os Cimini) by a summation of a
`real carrier waveform (cosine) and an equally scaled imaginary
`waveform (j sine) yields a result equal to:
`S x ej2xfet = S cos(2xfet) + S j sin(2xfet)
`Lyon, ¶¶130-132. The real part and imaginary part are equal
`(the two coefficients are equal to the same value S). Id.
`
`Pet. at 29-30.
`
`24. First, as I stated above in the previous Section, Cimini does not
`
`disclose the SYNCH WORD being amplitude modulated or amplitude
`
`demodulated. Second, Cimini does not disclose that the SYNCH WORD has a real
`
`part that is equal to an imaginary part. The Petition attempts to fill in the gaps of
`
`this deficiency in Cimini by relying on a mathematical identity from its expert.
`
`But Petitioner’s allegation is refuted on its face by the very mathematics on which
`
`they attempt to rely.
`
`25. Petitioner proposes multiplying the phase modulation factor, ej2xfet,
`
`with an “analog counterpart (‘S’)” to yield an expression:
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`S x ej2xfet = S cos(2xfet) + S j sin(2xfet)
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`Pet. at 30. The Petitioner then concludes, without explanation, that “[t]he real and
`
`imaginary part are equal (the two coefficients are equal to the same value S).” Id.
`
`Petitioner’s expert makes the identical conclusory statement. Ex. 1002 ¶ 131. The
`
`above expression is meant to represent the output of the RF mixer 52, and does not
`
`identify a reference symbol. To the extent Petitioner argues that S is the reference
`
`symbol, it is a real number as Petitioner admits (“Since the SYNCH WORD is a
`
`real sequence of numbers in time” Pet. at 30), and has no imaginary part.
`
`Therefore, S cannot have real and imaginary parts that are equal. Moreover, both
`
`the Petitioner and their expert also ignore the expressions “cos(2xfet)” from the
`
`real part and “sin(2xfet)” from the imaginary part. The expressions cos(2xfet) and
`
`sin(2xfet) are, in most instances, not equal. And the Petitioner and their expert
`
`have not made any attempt to state or prove that they are equal in this instance.
`
`Therefore, even under Petitioner’s position, the real and imaginary parts of the
`
`output of the RF mixer 52 are not equal. In my opinion, the Petition is deficient
`
`and fails to show that Cimini anticipates this limitation of claim 1.
`
`26. The other independent claims include similar language as claim 1. In
`
`particular:
`
`Claim 6: “A method for generating a multi-carrier modulated signal having a
`
`frame structure, each frame of said frame structure comprising . . . inserting,
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`in time domain, said reference symbol into said signal, wherein said
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`Case IPR2018-00689
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`reference symbol comprises a real part and an imaginary part, said real
`
`part and said imaginary part being equal and being formed by said
`
`amplitude modulated bit sequence.”
`
`Claim 9: “A method for frame synchronization of a signal having a frame
`
`structure, each frame of said frame structure comprising at least one useful
`
`symbol, a guard interval associated with said at least one useful symbol and
`
`a reference symbol, said reference symbol comprising a real part and an
`
`imaginary part, said real part and said imaginary part being equal and
`
`being formed by an amplitude modulated bit sequence.”
`
`Claim 18: “A method for frame synchronization of a multi-carrier
`
`modulated signal having frame structure, each frame of said frame structure
`
`comprising at least one useful symbol, a guard interval associated to said at
`
`least one useful symbol and a reference symbol, said reference symbol
`
`comprising a real part and an imaginary part, said real part and said
`
`imaginary part being equal and being formed by an amplitude modulated
`
`bit sequence.”
`
`
`
`27. For the same reasons as discussed above with respect to claim 1,
`
`Cimini does not disclose these limitations of independent claims 6, 9, and 18.
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`I declare under the penalty of perjury that all statements made herein of my own
`
`knowledgeare true andthat all statements made on information andbelief are
`
`believed to be true; and further that these statements were made with the
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`knowledgethat willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`
` MichaelL. Honig,Ph.DY
`Date: July 5, 2018
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