Paper No. 7
`
`Filed on behalf of: Optis Cellular Technology, LLC
`By: Brent N. Bumgardner
`Registration No. 48,476
`NELSON BUMGARDNER ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817)-377-3490
`Email: brent@nelbum.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`Huawei Device Co., Ltd.
`Petitioner
`v.
`OPTIS CELLULAR TECHNOLOGY, LLC
`Patent Owner
`______________________
`Case IPR2018-00807
`Patent 8,102,833
`______________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Patent Owner’s Preliminary Response
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................. 1
`
`THE ’833 PATENT AND CHALLENGED CLAIMS ................................................ 2
`
`A. Overview of the ’833 Patent ............................................................... 2
`
`
`TABLE OF CONTENTS .............................................................................................. ii
`
`TABLE OF AUTHORITIES ..........................................................................................iv
`
`TABLE OF EXHIBITS .............................................................................................. vii
`
`I.
`
`II.
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`
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`
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`
`
`III. SUMMARY OF ARGUMENTS .......................................................................... 28
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`IV. APPLICABLE LEGAL STANDARDS .................................................................. 29
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`V. OVERVIEW OF THE ALLEGED PRIOR ART ...................................................... 34
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`
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`
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`B.
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`C.
`
`A.
`
`B.
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`LG’s Contributions Related to the ’833 Patent .................................. 12
`
`Priority Date ..................................................................................... 18
`
`Standard for Instituting Review ........................................................ 29
`
`35 U.S.C. § 325(d) ............................................................................ 30
`
`C. Obviousness ...................................................................................... 31
`
`D.
`
`35 U.S.C. § 102(e) ............................................................................ 33
`
`A.
`
`Papasakellariou ................................................................................ 34
`
`
`
`
`
`i.
`
`ii.
`
`Overview ................................................................................ 35
`
`Two Embodiments .................................................................. 42
`
`Patent Owner’s Preliminary Response
`
`ii
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`

`

`
`
`
`
`iii.
`
`Priority Claim ......................................................................... 45
`
`B.
`
`Cho and Motorola ............................................................................. 46
`
`A.
`
`Papasakellariou Is Not Prior Art ....................................................... 51
`
`
`
`
`
`VI. CLAIM CONSTRUCTION ................................................................................ 47
`
`VII. THE BOARD SHOULD DECLINE TO INSTITUTE REVIEW BECAUSE
`PETITIONER CANNOT SHOW A LIKELIHOOD OF SUCCESS ON THE MERITS....... 50
`
`
`
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`
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`VIII. CONCLUSION ............................................................................................... 67
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT ................................................ 68
`
`CERTIFICATE OF SERVICE ....................................................................................... 69
`
`
`
`
`
`
`
`
`
`
`B.
`
`
`C.
`
`i.
`
`ii.
`
`iii.
`
`
`Test ......................................................................................... 51
`
`Petitioner’s reliance on Papasakellariou ................................. 52
`
`The Papasakellariou Provisional does not teach the subject
`matter Petitioner relies upon ................................................... 53
`
`Papasakellariou’s Publication Was Already Considered
`During Prosecution ........................................................................... 64
`
`Final Comments ................................................................................ 66
`
`Patent Owner’s Preliminary Response
`
`iii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Altiris, Inc. v. Symantec Corp.
`
`318 F.3d 1363 (Fed. Cir. 2003) ................................................................... 48
`
`CFMT, Inc. v. YieldUP Int’l Corp.
`
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 32
`
`Conopco, Inc. v. The Procter & Gamble Co.
`
`Case No. IPR2014-00628, Paper No. 21 (P.T.A.B. Oct. 20, 2014).............. 30
`
`Dynamic Drinkware v. Nat’l Graphics
`
`800 F.3d 1375 (Fed. Cir. 2009) ............................................................. 33, 51
`
`Ex Parte Mann et al.
`
`Appeal 2015-003571,
`
`2016 Pat. App. LEXIS 12592 (P.T.A.B. Dec. 23, 2016) ............................. 33
`
`Graham v. John Deere Co.
`
`383 U.S. 1 (1966)........................................................................................ 31
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.
`
`Case No. IPR2013-00183, Paper 12 (P.T.A.B. July 31, 2013) .................... 32
`
`In re Giacomini
`
`612 F.3d 1380 (Fed. Cir. 2010) ................................................................... 33
`
`In re Royka
`
`490 F.2d 981 (C.C.P.A. 1974)..................................................................... 32
`
`In re Translogic Tech., Inc.
`
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................... 47
`
`Insite Vision Inc. v. Sandoz, Inc.
`
`783 F.3d 853 (Fed. Cir. 2015) ..................................................................... 32
`
`
`Patent Owner’s Preliminary Response
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`iv
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`
`
`Loral Fairchild Corp. v. Sony Elecs. Corp.
`
`181 F.3d 1313 (Fed. Cir. 1999) ................................................................... 48
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs.
`
`152 F.3d 1368 (Fed. Cir. 1998) ................................................................... 48
`
`Microsoft Corp. v. Parallel Networks Licensing, LLC
`
`Case No. IPR2015-00483, Paper 10 (P.T.A.B. July 15, 2015) .............. 65, 66
`
`Mintz v. Dietz & Watson, Inc.
`
`679 F.3d 1372 (Fed. Cir. 2012) ............................................................. 31–32
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH
`
`139 F.3d 877 (Fed. Cir. 1998) ..................................................................... 32
`
`NEC Corp. of Am., et al. v. Cellular Commc’ns Equip. LLC
`Case No. IPR2014-01136, Paper 10 (P.T.A.B. Jan. 28, 2015) ..................... 63
`
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.
`
`566 F.3d 989 (Fed. Cir. 2009) ..................................................................... 31
`
`Source Techs., LLC v. LendingTree
`
`588 F.3d 1063, 1069 (Fed. Cir. 2009) ......................................................... 31
`
`Statutes & Rules
`
`35 U.S.C. § 102 .................................................................................................... 64
`
`35 U.S.C. § 102(e) ......................................................................................... passim
`
`35 U.S.C. § 103 ............................................................................................. passim
`
`35 U.S.C. § 314(a) ................................................................................................ 30
`
`35 U.S.C. § 325(d) .................................................................................... 30, 64, 66
`
`37 C.F.R. § 42.100(b) ........................................................................................... 47
`
`37 C.F.R. § 42.107 .................................................................................................. 1
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`Patent Owner’s Preliminary Response
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`
`37 C.F.R. § 42.107(c)............................................................................................ 66
`
`37 C.F.R. § 42.108(c)...................................................................................... 30, 50
`
`Other Authority
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ............. 30
`
`Amendments to the Rules of Practice for Trials
`Before the Patent Trial and Appeal Board, 81 Fed. Reg. 18,750 (Apr. 1, 2016) .... 66
`
`Amendments to the Rules of Practice for Trials
`Before the Patent Trial and Appeal Board, 81 Fed. Reg. 18,766 (Apr. 1, 2016) .... 66
`
`
`
`Patent Owner’s Preliminary Response
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`vi
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`

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`
`
`Exhibit
`2001
`
`2002
`
`2003
`2004
`
`2005
`
`2006
`
`2007
`2008
`
`2009
`
`TABLE OF EXHIBITS
`Description and Short Name
`Optis Cellular Tech., LLC, et al. v. Kyocera Corp., et al.,
`Civ. Nos. 2:16-CV-00059, -00060, Dkt. No. 108, Claim
`Construction Memorandum and Order (E.D. Tex. Feb. 9,
`2017) (“Kyocera Claim Construction Order”)
`LG Electronics, “PUSCH multiplexing of data, control,
`and ACK/NACK information,” 3GPP TSG RAN WG1
`#51bis, R1-080267
`Draft Report from the WG1 #51bis meeting
`LG Electronics, “Multiplexing of Control and Data in
`PUSCH,” 3GPP TSG RAN WG1#52, R1-081005
`LG Electronics, “Multiplexing of ACK/NACK in
`PUSCH,” 3GPP TSG RAN WG1#52, R1-081004
`Ericsson, “Summary of email discussion on UL control
`signaling,” TSG RAN WG1 #52, R1-080871
`Draft Report of 3GPP TSG RAN WG1 #52 v0.1.0
`Qualcomm Europe, “Draft CR to 36.212 incorporating
`decisions from RAN1#51bis and RAN1#52,” 3GPP TSG
`WG1 #52, R1-081157
`Optis Wireless Tech., LLC, et al. v. Huawei Techs. Co.
`Ltd., et al., Civ. No. 2:17-CV-00123, Dkt. No. 233, Joint
`Final Pretrial Order (Redacted) (E.D. Tex. July 27, 2018)
`
`Patent Owner’s Preliminary Response
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`vii
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`

`

`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Optis Cellular Technology,
`
`LLC (“Optis” or “Patent Owner”) respectfully submits this Preliminary Response
`
`to Petitioner Huawei Device Co. Ltd.’s (“Huawei” or “Petitioner”) Petition seeking
`
`inter partes review of claims 1–14 (the “Challenged Claims”) of U.S. Patent No.
`
`8,201,833 (Ex. 1001, the “’833 patent”). The Petition asserts a single ground of
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`invalidity—alleged obviousness under 35 U.S.C. § 103 based on the combination
`
`of U.S. Patent No. 8,331,328 to Papasakellariou (Ex. 1006, “Papasakellariou”),
`
`U.S. Patent Publication No. 2006/0262871 to Cho (Ex. 1010, “Cho”), and
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`Motorola, 3GPP TSG RAN WG1 #50, R1-073361, “Uplink channel interleaving”
`
`(Ex. 1011, “Motorola”). The Board should deny institution because Petitioner has
`
`failed to meet the threshold showing that any one claim of the ’833 patent is
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`unpatentable under Petitioner’s sole alleged ground of invalidity.
`
`Institution of trial should be denied for a simple reason: the primary
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`reference upon which Petitioner relies for its sole alleged ground of invalidity—
`
`Papasakellariou—is not, in fact, prior art to the ’833 patent. Petitioner and its
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`expert attempt to establish the reference as prior art under 35 U.S.C. § 102(e),
`
`relying on the filing date of the Papasakellariou Provisional application. But this
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`provisional application does not include critical teachings of the non-provisional
`
`application. In fact, the non-provisional application adds new matter to the
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`Patent Owner’s Preliminary Response
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`disclosure of the provisional application, and it is this new matter that Petitioner
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`relies on in its attempt to prove obviousness in its IPR Petition. Thus, under a
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`proper Drinkware analysis, Papasakellariou is not entitled to the priority date of its
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`provisional application. And because the priority date of the ’833 patent pre-dates
`
`the filing date of the Papasakellariou non-provisional application, Papasakellariou
`
`is not prior art. Accordingly, the Board should decline to institute IPR in this case.
`
`II. THE ’833 PATENT AND CHALLENGED CLAIMS
`
`Section A below presents an overview of the ’833 patent, including a
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`summary of its fundamental teachings and a discussion of required ordering of
`
`steps in the claimed method (and corresponding apparatus). Section B discusses
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`contributions to the LTE standard by LG (the original assignee) that relate to the
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`inventions claimed in the ’833 patent. This section is important as it aids in a full
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`understanding of the inventions disclosed and claimed in the ’833 patent. Finally,
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`Section C discusses the priority date of the ’833 patent and establishes its effective
`
`filing date.
`
`A. Overview of the ’833 Patent
`
`The ’833 patent is titled “Method for transmitting uplink signals.” The ’833
`
`patent addresses an issue in mobile communications related to the transmission of
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`ACK/NACK signals from user equipment (“UE”) on the uplink. Ex. 1001 at 1:20–
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`25. Uplink signals from the UE can be grouped into data and control signals. Id. at
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`Patent Owner’s Preliminary Response
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`1:27–29. Control signals generally include signals such as ACK/NACK for HARQ
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`communication, channel quality indicator (“CQI”) information, and precoding
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`matrix index (“PMI”). Id. at 1:29–32. The specification of the ’833 patent
`
`distinguishes ACK/NACK control signals from other control signals, and the
`
`specification and claims use the term “control signals” to refer to those signals
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`other than ACK/NACK signals. See, e.g., id. at 1:41–44, Claim 1.
`
`The distinction between ACK/NACK signals and control signals is an
`
`important one in the context of the ’833 patent, because it teaches an arrangement
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`for transmitting uplink ACK/NACK and other control and data signals over the
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`SC-FDMA uplink LTE channel in such a way that data is punctured (i.e., replaced)
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`by ACK/NACK signals while control signals (other than ACK/NACK signals) are
`
`not affected. It is important for control signals and ACK/NACK signals to be
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`reliably transmitted to enable efficient communications. But, as the ’833 patent
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`explains, ACK/NACK signals require higher reliability than other types of control
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`signals. See Ex. 1001 at 1:54–57. By recognizing that ACK/NACK signals have
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`the highest priority for correct reception (i.e., even higher than other control signals
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`and user data), the ’833 patent teaches that the ACK/NACK signals should be
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`placed as close in time as possible to the (Demodulation) Reference Signals (“RS”)
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`that are provided for accurate channel estimation and coherent demodulation. A
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`problem arises in ensuring that ACK/NACK signals are transmitted near the RS
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`Patent Owner’s Preliminary Response
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`without puncturing other control signals. Id. at 1:57–62. The ’833 patent teaches
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`efficiently arranging ACK/NACK signals and other control signals in the context
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`of an SC-FDMA transmitter on the LTE uplink, taking this challenge into account.
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`Id. at 1:64–67, 2:7–10, 3:66–4:4. Since the ACK/NACK signals occur
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`asynchronously, the ’833 patent teaches an arrangement wherein they are inserted
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`into the SC-FDMA symbols adjacent to the RS by puncturing (i.e., replacing) data
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`signals and minimizing the possibility of puncturing control signals. In this way,
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`the reception of the ACK/NACK signals is optimized by virtue of using the most
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`accurate channel estimation and carrier demodulation.
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`The ’833 patent teaches an ordered series of steps comprising: (1) serially
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`multiplexing control signals and data signals; (2) sequentially mapping the
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`multiplexed signals within a specific resource region of each SC-FDMA1 symbol’s
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`time-frequency grid in accordance with a time-first mapping method; and
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`(3) puncturing data with ACK/NACK signals at specific locations near the
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`reference signals to improve reliability. Id. This ordering of steps is one of the
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`fundamental teachings in the ’833 patent. As discussed further in Section VI, the
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`language in the claims of the ’833 patent logically and grammatically requires that
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`the claimed steps occur in a specific order. The ordering is important because it
`
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`1 SC-FDMA, or Single Carrier FDMA, is the LTE uplink multiple access scheme.
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`Patent Owner’s Preliminary Response
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`allows certain of the objectives of the ’833 patent to be realized—specifically, the
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`ideal placement of ACK/NACK relative to reference signals and the avoidance of
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`puncturing control signals with ACK/NACK.
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`Additionally, in connection with the ordering of steps, it is important to
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`understand the meaning of terms such as “multiplexing” and “puncturing” in the
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`’833 patent, as well as the distinct use of the terms “control” and “ACK/NACK.”
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`In the first step of the claims, data and control information other than ACK/NACK
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`are “serially multiplex[ed]” in such a way that “control signals are placed at a front
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`part of the multiplexed signals and the data signals are placed at a rear part of the
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`multiplexed signals.” Ex. 1001 at Claim 1. The term “multiplexing” as used in the
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`’833 patent involves combining signals in such a way that data is not lost to
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`puncturing. This is shown in, e.g., Figure 6, where control bits are represented as
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`1–NC, and data as 1–ND. When these signals are serially multiplexed as described
`
`in the claims, they are placed one set after the other without puncturing or
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`overwriting. The ’833 patent distinguishes between multiplexing (as in the case of
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`the data and control information) and puncturing (as in the case of ACK/NACK,
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`which involves overwriting, or replacing, data):
`
`When data are transmitted to the uplink, the control information can
`also be transmitted thereto. At this time, the control information and
`the data information are multiplexed through rate matching. However,
`the ACK/NACK information can be transmitted in such a manner that
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`Patent Owner’s Preliminary Response
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`it is overwritten in bit streams of the data information or symbols
`where data information and control information are multiplexed. In
`this case, “overwritten” means that specific information mapped in the
`resource region is skipped and the corresponding region is mapped.
`Also, “overwritten” means that the length of the entire information is
`maintained equally even after specific information is inserted. This
`overwriting procedure may be represented by puncturing.
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`Ex. 1001 at 6:9–21. This is an important consideration in part because certain of
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`the alleged prior art references either (a) do not distinguish between ACK/NACK
`
`and control signals other than ACK/NACK (which necessarily teaches away from
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`the present invention) or (b) do not distinguish between “multiplexing” and
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`“puncturing,” thereby teaching away from the present invention’s insistence on
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`maintaining both control and data before puncturing (i.e., replacing) with
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`ACK/NACK.
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`After the control signals and data are serially multiplexed, the ’833 patent
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`teaches a time-first mapping method for mapping the serially multiplexed
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`information in a 2-dimensional resource region. Ex. 1001 at 5:34–37. Figure 3
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`from the ’833 patent is an annotated diagram (red axes added) illustrating an
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`example of time-first mapping:
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`Patent Owner’s Preliminary Response
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`See also Ex. 1001 at 5:53–59.
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`In Figure 3, information to be transmitted on the uplink is arranged
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`temporally in the time-frequency mapper with 12 information data mapped in a
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`first virtual subcarrier region, then the next 12 in a second virtual subcarrier region,
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`and so on. See Ex. 1001 at 5:60–65. The subcarrier region is provided along a
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`“virtual” frequency axis because it is the logical input to the DFT transform, which
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`is mapped to the physical subcarriers of the IFFT input in SC-FDMA, as described
`
`further below.
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`As noted above, the control information generally requires higher reliability
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`than the data information. To this end, the ’833 patent teaches that control
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`Patent Owner’s Preliminary Response
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`information should be multiplexed or inserted near the reference signal where “it is
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`possible to obtain the effect of channel estimation performance, thereby improving
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`performance.” Ex. 1001 at 6:22–27. But, because ACK/NACK information also
`
`requires high reliability, priority between the control information and the
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`ACK/NACK signals should be considered. Id. at 6:28–32. To address this issue,
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`the ’833 patent teaches that control information is multiplexed serially with the
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`data information and is mapped according to the time-first mapping method. Id. at
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`6:37–44. Moreover, the ACK/NACK signals are arranged to be transmitted via
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`symbols near the reference signal. Id. at 6:44–48.
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`Annotated Figure 6, below, illustrates the effect of (a) serially multiplexing
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`control and data signals, (b) mapping them according to the method described in
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`the ’833 patent, and (c) puncturing the data with ACK/NACK signals before
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`transmitting the resultant uplink signals:
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`Patent Owner’s Preliminary Response
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`See also Ex. 1001 at 6:49–51.
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`As shown in Figure 6, the control information and data information are
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`serially multiplexed (i.e., multiplexed one set after the other without replacing or
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`overwriting) and then mapped with SC-FDMA symbols according to the time-first
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`mapping method, and then transmitted on the uplink. Ex. 1001 at 6:52–56. If the
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`UE has ACK/NACK information to transmit, the modulation symbols near the
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`reference signal are “punctured” by ACK/NACK, so that the ACK/NACK signals
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`Patent Owner’s Preliminary Response
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`are inserted and replace existing multiplexed signals. Id. at 6:56–60. In Figure 6,
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`601 shows the data and control signals multiplexed serially without ACK/NACK
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`signals. Id. at 6:60–63. If there are ACK/NACK signals to be transmitted, 602
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`shows that the ACK/NACK are arranged by puncturing the multiplexed data. Id. at
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`6:63–66. 603 shows the information sequences such as 602 mapped in the time-
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`frequency region according to the time-first mapping method. Id. at 6:66–7:2. In
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`this example, the reference signal is transmitted between symbol indexes #3 and #4
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`and between indexes #9 and #10. Id. at 7:3–5.
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`The claims of the ’833 patent recite methods and an apparatus using the
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`time-first mapping method disclosed in the specification and discussed above.
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`Notably, the orientation of the SC-FDMA symbols and subcarriers are transposed
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`in the claim language. See, e.g., Ex. 1001 at Claim 1 (“mapping the multiplexed
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`signals to a 2-dimensional resource matrix comprising a plurality of columns and a
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`plurality of rows, wherein the columns and rows of the 2-dimensional resource
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`matrix correspond to [SC-FDMA] symbols and subcarriers for each SC-FDMA
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`symbol, respectively”). Thus, the columns of the resource matrix are the SC-
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`FDMA symbols, and the rows are virtual subcarriers, as shown in the following
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`diagram:
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`
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`Ex. 2001, Kyocera Claim Construction Order at 31. This orientation is in contrast
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`to, e.g., Figures 3 and 6, discussed above.
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`The claimed inventions of the ’833 patent offer significant improvements
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`over the prior art in terms of the transmission quality of the received ACK/NACK
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`signals on an uplink. LTE employs a combination of automatic repeat request
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`(“ARQ”) and forward error correction (“FEC”) mechanisms, known as Hybrid-
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`ARQ (“HARQ”), for both uplink and downlink transmission to guarantee that
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`packets can be delivered over the radio link with the required level of reliability.
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`Since the overall reliability of packet delivery in the downlink cannot exceed the
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`reliability of the ACK/NACK messages in the uplink control channel, the
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`ACK/NACK transmission in the uplink control channel must have the highest
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`possible reliability. This is especially true for cell-edge users who may experience
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`Patent Owner’s Preliminary Response
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`large path losses and high inter-cell interference. The teachings of the ’833 patent,
`
`as described herein, are central to achieving this objective.
`
`B.
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`LG’s Contributions Related to the ’833 Patent
`
`Standardization helps to maximize compatibility and interoperability of a
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`technology between different manufacturers and/or operators. The standardization
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`process for LTE is contribution driven, meaning that written contributions of ideas
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`for the current or next generation of technology are submitted to the committee for
`
`consideration. A committee, typically composed of representatives of operators,
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`vendors, government agencies, and universities in the relevant technology, will
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`discuss, debate, and ultimately approve various ideas and compile them into a
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`document that controls which features are mandatory2 to comply with the standard.
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`This document is called a standard or technical specification.
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`LG Electronics, Inc. (“LG”), the original assignee of the ’833 patent, made
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`contributions to the LTE standard based on the technology taught in the ’833
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`patent. These contributions illustrate the teachings of the ’833 patent and support
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`the discussions above. First, LG discussed the “current description of TS36.212,”
`
`noting that it “shows that the control information is multiplexed with rate matched
`
`data information so that control information is always positioned near the
`
`
`2 There are also optional standards.
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`Patent Owner’s Preliminary Response
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`Reference Signal (RS).” Ex. 2002, R1-080267, “PUSCH multiplexing of data,
`
`control, and ACK/NACK information.” Figure 1 from R1-080267 illustrates the
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`then-current description of LTE:
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`SC-FDMA Symbol
`
`Reference Signal
`
`Reference Signal
`
`Virtual sub-carrier
`
`Data
`
`Control
`
`
`
`LG considered and rejected two potential options for addressing when
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`ACK/NACK is also to be positioned near the RS, as shown in Figure 2:
`
`
`
`
`
`
`
`
`(a) option 1
`
`(b) option 2
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`Patent Owner’s Preliminary Response
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`13
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`
`
`LG explained:
`
`The first option is to position the ACK/NACK information right next
`to the RS, effectively puncturing out either data or control information
`in the process. The second option is not to puncture out control
`information and only puncture out data information. The first option is
`not desirable due to disastrous cases where the ACK/NACK
`information may puncture out most of the control information,
`resulting in performance loss in control information as well as not
`[being] able to meet the target error rate requirements. The difference
`between option 1 and option 2 is shown in figure 2.
`
`Ex. 2002 at 1–2. Instead, LG proposed “to multiplex the control information in a
`
`uniform manner across all SC-FDMA symbols” where “the control information is
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`multiplexed with data by simple serial concatenation with data information and
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`mapped altogether by this simple time-first mapping rule.” Id. at 3. LG illustrated
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`this in Figure 3 from R1-080267, reproduced below:
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`Patent Owner’s Preliminary Response
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`14
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`

`

`…
`
`…
`
`Time- First Mapping
`
`SC-FDMA Symbol
`
`Reference Signal
`
`Reference Signal
`
`Virtual sub-carrier
`
`
`
`Data
`
`Control
`
`ACK/NACK
`
`
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`As LG explained, “[t]his will simplify the control information multiplexing
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`with data, compared to the current description of TS36.212” and “also has the
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`advantage of always being able to position the ACK/NACK information . . . near
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`the RS.” Ex. 2002 at 3. LG also proposed “to spread the ACK/NACK
`
`information across the virtual subcarriers evenly when puncturing ACK/NACK
`
`information into the data information resources” to “alleviate un-equal puncturing
`
`of code blocks.” Id. at 6 (emphasis added). LG showed this structure in Figure 11
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`of R1-080267, and it was also reflected in Figure 4, reproduced below:
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`Patent Owner’s Preliminary Response
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`15
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`

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`SC-FDMA Symbol
`
`Reference Signal
`
`Reference Signal
`
`Virtual sub-carrier
`
`
`
`Data
`
`Control
`
`ACK/NACK
`
`
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`The Draft Report (i.e., minutes) from the WG1 #51bis meeting, however,
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`indicates that R1-080267 was not discussed. See Ex. 2003 at 27–28. LG
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`resubmitted the content of R1-080267 at the next working group meeting, #52, as
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`document number R1-081005, titled “Multiplexing of Control and Data in
`
`PUSCH” (and document R1-081004, titled “Multiplexing of ACK/NACK in
`
`PUSCH”). See Exs. 2004, 2005. R1-081005 and R1-081004 included the same
`
`proposals and explanation as R1-080267.
`
`The working group #52 Draft Report referenced R1-080871 (Ex. 2006),
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`which was a “Summary of email discussion on UL control signaling from
`
`Ericsson.” See Ex. 2007 at 25. R1-080871 notes that “the treatment of ACK/NAK
`
`vs CQI when both of them are transmitted on PUSCH are not yet settled.” Ex.
`
`2006 at 1. It then notes that “[t]hree alternatives were proposed in an e-mail from
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`LG,” including alternative 3, “ACK/NACK mapping consecutive to RS + CQI
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`time-first mapping (near-RS mapping is not considered).” Id. Ericsson’s summary
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`Patent Owner’s Preliminary Response
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`
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`indicates, among other things, that “[d]iscussions expressed support for alternative
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`3 both from a simplicity and performance perspective.” Id. Ericsson’s summary
`
`did, however, note that “[o]ne company suggested to place the ACK/NAK bits two
`
`modulation symbols (not SC-FDMA symbols) from the RS in order not to conflict
`
`with time windowing” and “[o]ne company proposed to reserve ACK/NAK
`
`resources next to RS and then map CQI next to ACK/NAK (modified alternative 3)
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`to improve CQI performance” with “[t]he CQI position is independent on whether
`
`the ACK/NAK is present or not.” Id. The “[p]roposed way forward,” however, was
`
`to “[a]dopt alternative 3 above” from LG’s proposed alternatives. Id.
`
`The working group #52 Draft Report noted that R1-080871 was presented
`
`and then noted:
`
`Multiplexing of control and data on PUSCH
`• ACK/NACK mapping consecutive to RS, CQI time-first mapping
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`Patent Owner’s Preliminary Response
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`

`
`
`o ACK/NACK resources punctured into data starting from the bottom of figure
`
`
`o Maximum number of resources for ACK/NACK: 4 SC-FDMA symbols
`o CQI resources are placed at the beginning of the data resources
`Third bullet illustrated in figure 3 of R1-081005.
`Ex. 2007 at 25–26. The Draft Report further indicates that R1-081004 and R1-
`
`081005 were discussed at meeting #52. See id. at 26.
`
`The change request R1-081157, titled “Draft CR to 36.212 incorporating
`
`decisions from RAN1#51bis and RAN1#52,” submitted on February 29, 2008, was
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`also submitted during working group #52 and amends 3GPP TW 36.212 to
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`incorporate concepts from the LG submissions to section 5.2.2.8. See Ex. 2008.
`
`C.
`
`Priority Date
`
`The priority date of the ’833 patent is November 13, 2007. The ’833 patent
`
`issued from U.S. Patent Application No. 12/209,136 (the “’136 application”). The
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`Patent Owner’s Preliminary Response
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`

`
`
`’833 patent derives its priority date of November 13, 2007 from the ’136
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`application’s proper priority claim to U.S. Provisional Application No. 60/987,427
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`(Ex. 1004, the “’427 provisional”), filed November 13, 2007. The specification of
`
`the ’833 patent incorporates the content of this provisional application (as well as
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`two other provisional applications) by reference in its entirety. See Ex. 1001 at
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`1:11–15. It also incorporates by reference Korean Patent Application No. 10-2008-
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`0068634, filed on July 15, 2008. See id. at 1:6–10.
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`Petitioner has stipulated to the November 13, 2007 priority date of the ’833
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`patent. See Ex. 2009 at 13 (Joint Final Pretrial Order in District Court litigation
`
`stipulating to November 13, 2007 priority date for the ’833 patent3). Nevertheless,
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`in an abundance of caution, Patent Owner presents a claim chart below identifying
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`disclosures from the ’427 provisional that support Claim 1 of the ’833 patent.
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`These disclosures are from a document titled “PUSCH Control Channel
`
`Multiplexing,” which was included in the ’427 provisional (Ex. 1004 at 53–79)
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`along with a certified translation of the same. See id. at 7–43.
`
`
`3 As of the date of the Joint Final Pretrial Order, only Claims 8 and 13 are being
`
`asserted in the District Court litigation. However, Claim 8 is the apparatus claim
`
`version of method Claim 1, which includes nearly identical claim limitations and is
`
`entitled to the same priority date.
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`
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`Claim Language
`[1pre] A method for
`transmitting uplink
`signals comprising
`control signals and data
`signals in a wireless
`communication system,
`the method comprising:
`
`[1a] (a) serially
`multiplexing first control
`signals and data signals in