`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`HTC Corporation, and
`HTC America, Inc.,
`Petitioners
`
`v.
`
`INVT SPE, LLC
`Patent Owner
`_____________________
`
`Case: IPR2018-01581
`Patent No. 7,848,439
`_____________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. §42.107
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`TABLE OF CONTENTS
`
`
`
`Table of Contents ....................................................................................................... i
`List of Patent Owner’s Exhibits ................................................................................. v
`I.
`Introduction ...................................................................................................... 1
`II.
`The Challenged Patent ..................................................................................... 3
`A.
`State of the Art at the Time of the Patented Invention .......................... 3
`B.
`Challenged Claim .................................................................................. 8
`C. Overview of U.S. Patent No. 7,848,439 ................................................ 9
`D.
`Relevant Prosecution History ..............................................................13
`III. Person of Ordinary Skill in the Art ................................................................14
`IV. Claim Construction ........................................................................................14
`V. Overview of the Alleged Prior Art References .............................................16
`A. U.S. Patent No. 6,904,283 to Li et al. (“Li”).......................................16
`B. U.S. Patent No. 7,221,680 to Vijayan et al. (“Vijayan”) ....................19
`C. U.S. Patent No. 6,721,569 to Hashem et al. (“Hashem”) ...................22
`D. U.S. Patent No. 5,596,604 to Cioffi et al. (“Cioffi”) ...........................23
`VI. Legal Standards .............................................................................................24
`VII. The Petition Fails to Establish a Reasonable Likelihood the Challenged
`Claim Is Obvious. ..........................................................................................26
`A.
`The Petition Fails to Demonstrate that the Proposed Combination
`Discloses “Assigning a Weight Per Subband Group to a Sum of
`Information Bits that Are Able to Be Assigned to All of the Subbands
`Within the Subband Group.” ...............................................................26
`The Petition Fails to Establish that a POSITA Would Combine Cioffi
`with Other References in the Proposed Combination. ........................31
`1.
`The Petition fails to offer a reason to combine each and every
`reference in the Proposed Combination. ...................................32
`A POSITA would not combine Cioffi with Li, Vijayan, or
`Hashem. .....................................................................................34
`i
`
`B.
`
`2.
`
`
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`3.
`
`4.
`
`
`The Petition relies on unsupported, conclusory expert testimony
`for the alleged motivation to combine Cioffi with Li and
`Vijayan. .....................................................................................37
`The Petition relies on improper hindsight for the alleged
`motivation to combine. .............................................................40
`C. A POSITA Would Not Have Been Motivated to Combine the Li and
`Vijayan References. .............................................................................42
`VIII. Conclusion .....................................................................................................46
`Word Count Certification ........................................................................................47
`Certificate of Service ...............................................................................................48
`
`
`
`
`
`
`
`ii
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`TABLE OF AUTHORITIES
`
`
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 41
`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00441, Paper 11
`(PTAB July 13, 2015) ........................................................................................ 41
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2017-02041, Paper 10 (PTAB Mar. 8, 2018) ............................................... 38
`Apple Inc. v. Valencell, Inc.,
`IPR2017-00316, Paper 9 (PTAB Jul. 20, 2017) ................................................. 38
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 24
`Gen. Elec. Co. v. TAS Energy Inc.,
`IPR2014-00163, Paper 11 (PTAB May 13, 2014) ............................................. 41
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB July 13, 2013) ....................................... 30, 35
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................. 25, 26, 40
`In re NTP, Inc.,
`654 F. 3d 1279 (Fed. Cir. 2011) ......................................................................... 25
`
`Initiative for Medicines, Access & Knowledge (I-MAK), Inc. v. Gilead
`Pharmasset LLC,
`Case No. IPR2018-00390, Paper 7 (Jul. 19, 2018)............................................. 26
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367-
`79 (Fed. Cir. 2012) ............................................................................................. 32
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 24, 25, 30, 40
`iii
`
`
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 15
`Nikon Corp. v. ASML Netherlands B.V.,
`Case No. IPR2018-00227, Paper 11 (P.T.A.B. Sep. 10, 2018) .......................... 40
`Nokia of Am. Corp. v. Blackberry Ltd.,
`IPR2018-00652, Paper 10 (PTAB Oct. 1, 2018) ................................................ 45
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 14
`Purdue Pharma L.P. v. Depomed, Inc.,
`643 F. App’x 960 (Fed. Cir. 2016) ..................................................................... 40
`Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2014-00367,
`Paper 62 (PTAB May 26, 2015) ........................................................................ 33
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 25
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) ..................... 32
`Yamaha Golf Car Co. v, Club Car, LLC,
`IPR2017-02141, Paper 17 (PTAB Apr. 3, 2018) ............................................... 41
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 1
`Other Authorities
`37 C.F.R. § 42.65(a) ............................................................................... 25, 31, 38, 39
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`IPR2018-01581
`Patent 7,848,439
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`Exhibit No. Description
`2001
`Expert Declaration of Dr. Branimir Vojcic
`2002
`Curriculum Vitae of Dr. Branimir Vojcic
`
`
`
`
`
`
`
`
`
`
`
`
`
`v
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`I.
`
`
`
`INTRODUCTION
`
`Petitioners HTC Corporation and HTC America, Inc. (“Petitioners”)
`
`
`
`challenge Claim 8 (the “Challenged Claim”) of U.S. Patent No. 7,848,439
`
`(“the ’439 Patent”) as allegedly obvious under 35 U.S.C. § 103. The ’439 patented
`
`invention generally covers the use of “subband groups” comprised of frequency
`
`subbands selected based on patterns stored by the system in advance. Use of
`
`subband groups to transmit information allows certain devices, such as a base
`
`station and a cellular phone, to better communicate. Selecting subband groups
`
`based on specific, pre-stored patterns allows those devices to know beforehand
`
`which subbands contain that information, and further decreases the amount of
`
`information that needs to be exchanged over the same period of time at this stage.
`
`Petitioners’ sole ground seeks to combine four distinct references—U.S.
`
`Patent No. 6,904,283 to Li et al. (“Li”) with U.S. Patent No. 7,221,680 to Vijayan
`
`et al. (“Vijayan”), U.S. Patent No. 6,721,569 to Hashem et al. (“Hashem”), and
`
`U.S. Patent No. 5,596,604 to Cioffi et al. (“Cioffi”) (the “Proposed Combination”).
`
`However, the Proposed Combination fails to disclose key limitations required by
`
`the Challenged Claim—including “assigning a weight per subband group to a sum
`
`of information bits that are able to be assigned to all of the subbands within the
`
`subband group.”
`
`
`
`1
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`The Petition also fails to establish why the references in the Proposed
`
`Combination should or would have been combined or why such a combination
`
`would have a reasonable expectation of success. Indeed, the Cioffi reference is not
`
`even from the same field of endeavor as the other references in the Proposed
`
`Combination, and the Petition fails to demonstrate how or why it would be
`
`properly combined with the other references in the Proposed Combination. The
`
`unsupported opinions proffered by Petitioners’ expert rely on impermissible
`
`hindsight and do not compel a different conclusion.
`
`Moreover, the Petition relies on Li and Vijayan for the disputed limitation of
`
`“assigning a weight per subband group to a sum of information bits that are able to
`
`be assigned to all of the subbands within the subband group”; however, those two
`
`references are directly at odds with a key aspect of the invention’s goal—that is,
`
`how to avoid conflicts that would increase the risk of errors and interference when
`
`transmitting information between devices, such that a POSITA would not combine
`
`them.
`
`Accordingly, the Petition should be denied for these reasons.
`
`
`
`2
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`II. THE CHALLENGED PATENT
`
`
`
`A.
`
`State of the Art at the Time of the Patented Invention
`
`
`
`The ’439 Patent generally relates to improving communication between
`
`wireless devices, such as cellular phones, mobile terminals, and base stations,
`
`within cellular networks. See Ex. 1001 at 1:7-14, 2:54-60, 5:32-45. Cellular
`
`networks divide their coverage areas into specific regions called “cells.” Ex. 20011
`
`¶ 17. Each cell is serviced by a cellular tower mounted with a base station that
`
`directly communicates with cellular phones within the cell. Id. Each base station is
`
`assigned a frequency band that is unique from neighboring base stations. Id. Calls
`
`occur when a cellular phone transmits radio frequency (“RF”) signals to a base
`
`station that re-transmits those signals to the recipient cellular phone. Id.
`
`Communication between a base station and a cellular phone can only occur when
`
`the base station and cellular phone agree to transmit information using the same
`
`frequency band. Id.
`
`Base stations must be capable of simultaneously communicating with
`
`numerous cellular phones—otherwise, users within the cell will experience
`
`significant interference from other callers. Id. ¶ 18. One way to enable
`
`communications with numerous cellular phones is by using Orthogonal Frequency
`
`
`1 Exhibit 2001 refers to the supporting Expert Declaration of Dr. Branimir
`Vojcic.
`
`3
`
`
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`Division Multiplexing (“OFDM”). OFDM, which is employed by the Long Term
`
`Evolution (“LTE”) wireless communication standard, divides the base station’s
`
`allocated frequency band into many orthogonal (non-overlapping) subcarriers
`
`(narrower frequency bands), each of which can facilitate communication between
`
`the base station and a specific cellular phone. This orthogonality between
`
`subcarriers improves spectral efficiency—i.e., the number of cellular phones that
`
`can be simultaneously supported in the cell. Ex. 1001 at 1:22-24.
`
`Changing conditions caused by the distance between the base station and the
`
`cellular phone, signal interference, weather, and other transient factors, may also
`
`affect the spectral efficiency. Ex. 2001 ¶ 18. Conditions can also change as a result
`
`of cell phone users moving within the network. Id.
`
`One way that OFDM systems try to maintain spectral efficiency is by
`
`employing “adaptive modulation and coding” (“AMC”)—i.e., adjusting parameters
`
`such as the transmission power, symbol transmission rate, coordinate size, coding
`
`rate, and/or coding mechanism, etc., in response to changing channel conditions.
`
`Ex. 1001 at 1:43-52; Ex. 2001 ¶ 18. For example, when channel conditions are
`
`good, the system will typically transmit more information over the same amount of
`
`time. Conversely, when channel quality is poor, the system can readjust and
`
`transmit less information, thereby minimizing errors. Ex. 1001 at 1:43-52. Because
`
`
`
`4
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`channel conditions can fluctuate, each cellular phone will periodically estimate the
`
`“quality” of the channels between the phone and the base station, and send this
`
`information to the base station as a Channel Quality Indicator (“CQI”). Measuring
`
`and transmitting CQI information allows the base station to utilize AMC
`
`
`
`accordingly, if/when necessary. This channel quality estimation is performed on
`
`each individual subcarrier. See, e.g., id. at 3:26-30 (“Before transmitting each data
`
`block, the receiving side always first estimates transmission channel from the
`
`transmission side to the receiving side at the current time by channel estimating
`
`section 319, and obtains channel characteristics of the subcarriers of the OFDM.”).
`
`The ’439 Patent claims priority to a 2004 Chinese patent application. Ex.
`
`1001 at 1. As explained in the ’439 Patent specification, existing OFDM systems at
`
`the time of the invention employed two forms of AMC—(1) AMC based on
`
`individual subcarriers and (2) AMC based on groups of subcarriers (where those
`
`groups are known as subbands). Ex. 1001 at 2:2-15. Despite this clear distinction
`
`between “subcarriers” and “subbands,” references within the field often confuse
`
`the two concepts by using the latter to refer to the former. Ex. 2001 ¶ 33; Paper 1 at
`
`20 (stating that Vijayan’s “subband groups” are actually comprised of groups of
`
`subcarriers, not subbands).
`
`
`
`5
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`Within the context of the ’439 Patent, AMC based on individual subcarriers
`
`
`
`refers to AMC that differs per subcarrier. Ex. 1001 at 2:4-8. As explained by
`
`the ’439 Patent, this form of AMC was disadvantageous due to the sheer number of
`
`subcarriers and the presence of feedback overhead. Id. at 2:2-15. As a result, AMC
`
`based on subbands—i.e., adjusting adaptive parameters for each subband—was
`
`typically used. Id. at 2:12-15.
`
`Regardless of the relative benefits of one AMC method over the other, for
`
`both AMC methods in the prior art, “the receiving side always first . . . obtains
`
`channel characteristics of the subcarriers of the OFDM.” Id. at 3:26-30. Therefore,
`
`in the prior art systems, channel estimation must occur first for every subcarrier.
`
`One prior art configuration of AMC based on subbands is shown in ’439
`
`Patent, Figure 2:
`
`
`
`6
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`
`
`
`Id. at Fig. 2. In the configuration disclosed in Figure 2, subcarriers in neighboring
`
`positions on the frequency domain are grouped into subbands. Id. at 2:16-31. This
`
`configuration—while more efficient than AMC based on individual subcarriers—
`
`still had the drawback of being unable to effectively utilize “diversity
`
`performance” between the subbands, in part due to having to still perform
`
`independent coding for individual subbands. Id. at 4:56-63.
`
`
`
`7
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`
`
` “Diversity performance” refers to increasing the redundancy of information
`
`by simultaneously transmitting the same information using multiple paths, thereby
`
`compensating for any deficiencies in certain paths causing error on the receiving
`
`side. Id. at 4:64-5:8. Utilizing diversity performance results in larger coding
`
`gains—i.e., reduced error rates. Id. at 5:19-20. The ’439 Patent expressly discloses
`
`ways to “effectively utiliz[e] diversity performance between subbands” by
`
`grouping subbands on the frequency domain based on predetermined patterns. Id.
`
`at 12:17-24.
`
`B. Challenged Claim
`
`
`
`The Petition challenges the validity of independent Claim 8, presented
`
`below:
`
`8. A communication apparatus comprising:
`
` a
`
` channel estimating section that carries out a channel
`estimation per subband;
`
` a
`
` parameter deciding section that decides modulation
`parameters and coding parameters per subband group
`comprised of a plurality of the subbands based on a result
`of the channel estimation per subband;
`
` a
`
` parameter information transmission section that
`transmits to a communicating party, parameter
`information indicating the modulation parameters and the
`coding parameters decided at the parameter deciding
`section;
`
`
`
`
`8
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`a receiving section that receives a signal containing data
`modulated and encoded per subband group at the
`communicating party, using the modulation parameters
`and coding parameters of the parameter information
`transmitted at the parameter information transmission
`section; and
`
` a
`
` data obtaining section that demodulates and decodes
`the received signal received at the receiving section on a
`per subband group basis, using the modulation
`parameters and the coding parameters decided at the
`parameter deciding section, and obtains the data
`contained in the received signal;
`
`wherein the parameter deciding section decides the
`coding parameters in such a manner that a number of
`information bits obtained by assigning a weight per
`subband group to a sum of information bits that are able
`to be assigned to all of the subbands within the subband
`group, is assigned to the subband group.
`
`
`Ex. 1001 at 13:65-14:26.
`
`C. Overview of U.S. Patent No. 7,848,439
`
`
`
`The ’439 Patent presented a significant improvement over existing
`
`communication systems, including those that relied on AMC based on subbands.
`
`The invention unlocked the potential for mobile devices to use subband groups
`
`comprised of subbands selected based on patterns stored in advance of channel
`
`estimation in each mobile device. Ex. 1001 at 13:21-27. As shown below, the ’439
`
`Patent’s particular use of subband grouping patterns resulted in an order of
`
`magnitude of improvement over the use of subbands themselves:
`
`
`
`9
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`
`
`
`The ’439 Patent discloses, among other things, combining subbands on the
`
`frequency domain “based on a fixed rule,” i.e., predetermined stored patterns, into
`
`“several subband groups.” Id. at 5:32-45.
`
`The creation of “subband groups” allowed communication systems to use
`
`AMC based on subband groups—a significant advantage over the prior art, which
`
`relied on AMC based on individual subbands or, even worse, individual
`
`subcarriers. Id. at 5:9-27. Selecting subband groups as disclosed in the ’439 Patent
`
`meant that both the mobile device and the base station would know beforehand
`
`which subbands would contain reference signals with information about the
`
`channel quality of each subband within the subband groups. Ex. 2001 ¶ 21. This
`
`pre-agreement on subband grouping patterns (and, by extension, subbands for
`10
`
`
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`transmitting data) between the mobile device and the base station significantly
`
`reduces the information that must be transmitted before a link can be established
`
`between two devices. Id. By contrast, a device that feeds back the information on
`
`subbands (or subcarriers) based on predicting the performance of all subbands (or
`
`subcarriers) after channel estimation occurs (as disclosed in the prior art) must
`
`transmit a significant amount of information before establishing a link with the
`
`base station. Ex. 1003 at 3:18-23. This inefficiency was precisely what the
`
`invention disclosed in the ’439 Patent sought to improve.
`
`The ’439 Patent discloses that subband grouping patterns within the mobile
`
`device are independent from any channel quality estimation. Compare Ex. 1001 at
`
`8:2-22 (“the subband groups are formed by combining the OFDM subbands based
`
`on combination patterns”) with Ex. 1003 at 3:18-23 (“[E]ach subscriber first
`
`measures the channel and interference information for all the subcarriers and then
`
`selects multiple subcarriers with good performance . . . and feeds back the
`
`information on these candidate subcarriers to the base station.”). In the prior art,
`
`channel quality estimation typically required measuring channel quality across
`
`each and every subband or subcarrier and then selecting the optimal subbands for
`
`communicating with the base station. See, e.g., Ex. 1003 at Abstract, 2:13-22,
`
`3:18-23, 3:30-38, Fig. 1B.
`
`
`
`11
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`According to the ’439 Patent, joint “modulation parameters and coding
`
`parameters” are chosen on a “per subband group” basis. Ex. 1001 at 13:1-3. In one
`
`embodiment, along with selection of modulation and coding parameters for each
`
`subband group, “the number of corresponding transmission information bits is
`
`decided.” Id. at 9:33-37. Additionally, “weighting calculations” can be applied to
`
`the sum of the information bits assigned to each subband group. Id. at 11:35-47.
`
`For example, a weighting factor—such as “0.9” which presents a total reduction of
`
`10%—can be applied to “the sum of the number of transmission information bits”
`
`for an entire subband group, thereby reducing the total number of transmission
`
`information bits assigned to the subband group. Id. at 11:19-47.
`
`
`
`The invention in the ’439 Patent decreased the amount of information that
`
`was to be transmitted between devices over the same period of time, thereby
`
`enabling higher data reception rates due to the improved ability to adapt to
`
`changing radio frequency fast fading conditions and providing greater spectrum
`
`utilization. Id. at 5:32-44. This improvement can reduce power consumption and
`
`increase battery life for mobile devices, while simultaneously improving the
`
`network capacity for the base station. See Ex. 2001 ¶ 21.
`
`Figures 11 and 12 in the ’439 Patent, reproduced below, represent
`
`simulations illustrating the difference in performance between a prior art
`
`
`
`12
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`communication system and a communication system benefiting from an
`
`embodiment of the invention disclosed in the ’439 Patent:
`
`
`
`
`
`
`
`Ex. 1001 at Figs. 11-12 (comparing feedback delay times and different channel
`
`estimation errors, respectively), 7:18-25, 12:25-63. These simulations demonstrate
`
`that the patented invention presents a substantial “performance gain when
`
`compared to methods of the related art,” along with significantly reduced feedback
`
`overhead. Id. at 12:47-55.
`
`D. Relevant Prosecution History
`
`During prosecution of the U.S. application resulting in the ’439 Patent, the
`
`Examiner allowed the Challenged Claim expressly because the prior art failed to
`
`disclose several key limitations, including “wherein the parameter deciding section
`
`decides the coding parameters in such a manner that a number of information bits
`
`obtained by assigning a weight per subband group to a sum of the information bits
`13
`
`
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`that are able to be assigned to all of the subbands within the subband group, is
`
`assigned to the subband group.” Ex. 1002 at 201-02.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`
`
`Patent Owner does not dispute, for purposes of these preliminary
`
`proceedings, the level of skill for a person of ordinary skill in the art (“POSITA”)
`
`of the ’439 Patent at the time of the invention, as laid out in the Petition. Paper 1 at
`
`13. Patent Owner does not waive, however, any argument regarding the proper
`
`level of skill for a POSITA, and further reserves the right to advance additional or
`
`modified arguments at a later date.
`
`IV. CLAIM CONSTRUCTION
`
`
`
`The Challenged Claim should be afforded its “broadest reasonable
`
`construction” in light of the specification. 37 C.F.R. § 42.100(b). Claim terms are
`
`“generally given their ordinary and customary meaning” as understood by a person
`
`of ordinary skill in the art (“POSITA”) at the time of the invention. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`The Petition proposes constructions for the following terms: “subband,”
`
`“pattern storage section,” and “patterns for selecting subbands.” Paper 1 at 15-16.
`
`However, the terms “pattern storage section” and “patterns for selecting subbands”
`
`
`
`14
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`do not appear in Challenged Claim 8 at all, and Petitioners’ proposed constructions
`
`for those terms are therefore irrelevant.
`
`For the purposes of this preliminary proceeding only, and without waiving
`
`the right to address any claim constructions in the future, Patent Owner does not
`
`believe that the claim term “subband” or any other claim terms not specifically
`
`addressed below, require express construction to deny the Petition because the
`
`Petition’s proposed constructions do not establish any of the missing elements in
`
`the proposed prior art combination. See infra § VII. See Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(“[W]e need only construe terms that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”). Patent Owner does not waive, however,
`
`any argument regarding the proper scope of the Challenged Claim. Patent Owner
`
`reserves the right to advance additional or modified constructions at a later date.
`
`
`
`
`
`
`
`15
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`V. OVERVIEW OF THE ALLEGED PRIOR ART REFERENCES
`
`A. U.S. Patent No. 6,904,283 to Li et al. (“Li”)
`
`
`
`Li discloses an OFDM system that “partition[s] subcarriers into groups of at
`
`least one cluster of subcarriers,” measures the channel quality across each and
`
`every subcarrier, and then has the base station select the best performing
`
`subcarriers for communication. See, e.g., Ex. 1003 at Abstract, 2:13-22, 3:18-23,
`
`3:30-38, Fig. 1B. Li’s goal is to “adaptively allocate the subcarriers so as to
`
`mitigate the effect of intercell interference.” Id. at 1:64-67. Li accomplishes this
`
`through the use of a “subscriber” (cellular phone) that dynamically selects “one or
`
`more groups in the groups” of subcarrier clusters after assessing the performance
`
`of all subcarrier clusters. Id. at Abstract, 2:13-22, 3:18-23, 3:30-38. “For downlink
`
`channels, each subscriber first measures the channel and interference information
`
`for all the subcarriers and then selects multiple subcarriers with good performance
`
`(e.g., a high signal-to-interference plus noise ratio (SINR)) and feeds back the
`
`information on these candidate subcarriers to the base station.” Id. at 3:18-23.
`
`The base station then takes over: “[u]pon receiving the information from the
`
`subscriber, the base station further selects the subcarriers among the candidates,
`
`utilizing additional information available at the base station… .” Id. at 3:30-34,
`
`3:42-45 (“the selection by the base station of the channels to allocate, based on the
`
`
`
`16
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`feedback, results in the selection of coding/modulation rates”). “[T]he base station
`
`further selects one or more clusters for the subscriber among the candidates
`
`(processing block 104). The base station may utilize additional information
`
`available at the base station … .” Id. at 6:18-20. “The base station can use [the
`
`subcarrier loading information] in subcarrier allocation to reduce inter-cell
`
`interference.” Id. at 3:39-41, 6:26-29 (same). Indeed, Li discloses that, for both
`
`uplink and downlink transmission, “the base station makes the final decision of
`
`subcarrier allocation for each subscriber.” Id. at 3:64-65. The base station can
`
`“allocate[] all the clusters to be used by a subscriber at once” or “first allocate[]
`
`multiple clusters” and then “subsequently allocate[] more clusters … .” Id. at 6:41-
`
`62 (further discussing how the base station allocates subscribers). Li discloses that
`
`an exemplary “base station selects the clusters not only with high SINR, but also
`
`with low traffic load.” Id. at 11:10-15.
`
`Figure 1B in Li is representative of how Li’s base station allocates clusters to
`
`subscribers:
`
`
`
`17
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`
`
`
`Id. at Fig. 1B (highlighting added). Fig. 1B shows that “each subscriber
`
`continuously monitors the reception of the pilot symbols and measures the SINR
`
`and/or other parameters, including inter-cell interference and intra-cell traffic, of
`
`each cluster (processing block 102). Based on this information, each subscriber
`
`selects one or more clusters with good performance (e.g., high SINR and low
`
`traffic loading, etc.) relative to each other and feeds back the information on these
`
`candidate clusters to the base station through predefined uplink access channels
`
`(processing block 103).” Id. at Fig. 1B, 5:46-54. “Each subscriber selects the
`
`
`
`18
`
`

`

`
`
`IPR2018-01581
`Patent 7,848,439
`
`clusters with relatively better performance than others. The selection results in
`
`each subscriber selecting clusters they would prefer to use based on the measured
`
`parameters.” Id. at Fig. 1B, 5:57-61. Subsequently, the base station “selects one or
`
`more clusters for each subscriber” and then “notifies the subscriber regarding
`
`cluster allocation.” Id. at Fig. 1B. Therefore, it is the base station that performs the
`
`cluster selection and allocation. Id.
`
`Figure 6 of Li discusses partitioning clusters into “cluster groups” following
`
`channel estimation and determination of the above criteria:
`
`
`
`Id. at Fig. 6, 2:41-42.
`
`B. U.S. Patent No. 7,221,680 to Vijayan et al. (“Vijayan”)
`
`
`
`Vijayan discloses different ways to assign resources—in the form of
`
`subcarriers and subbands (as defined in the ’439 Patent)—to active physical layer
`
`
`
`19
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`channels (“PLCs”). Ex. 1004 at Abstract, 2:8-26. Vijayan’s PLCs are different
`
`from the subbands and subband groups2 claimed in the ’439 Patent. Vijayan’s
`
`PLCs are equivalent to “a data channel, a traffic channel, or some other
`
`terminology.” See, e.g., id. at 4:7-19.
`
`
`
`In Vijayan, “[e]ach data stream may be ‘allocated’ a variable number of
`
`transmission units in each super-frame depending on the stream’s payload in the
`
`super-frame, the availability of transmission units in the super-frame, and possibly
`
`other factors.” Id. at 2:46-50. The allocation of resource blocks in Vijayan spans
`
`both the frequency domain and the time domain. See, e.g., id. at Figs. 5-9. Slots
`
`may be assigned to specific PLCs based on a host of factors, including which PLCs
`
`have “the largest number of allocated slots,” “the priority of the PLCs, the
`
`relationship among the PLCs, and so on.” Id. at 10:21-37. Further, “[d]ifferent
`
`PLCs may be allocated different numbers of slots.” Id. at 9:48-53.
`
`
`
`Figure 7A in Vijayan shows “assignment of slots to PLCs” in rectangular
`
`shapes. Id. at Fig. 7A, 9:54-55.
`
`
`2 Although Vijayan discusses allocating “subband groups” to certain PLCs,
`the Petition admits that Vijayan’s “subband groups” are actually comprised of
`groups of subcarriers, not subbands. Paper 1 at 20. Vijayan’s “subband groups”
`are therefore not equivalent to the “subband groups” in the Challenged Claim.
`20
`
`
`
`

`

`IPR2018-01581
`Patent 7,848,439
`
`
`
`
`
`Id. at Fig. 7A. The size of the rectangle is determined by “the number of