UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`and APPLE INC.,
`Petitioners
`
`v.
`
`INVT SPE LLC,
`Patent Owner
`_____________________
`
`Case Nos. IPR2018-01555 and IPR2018-01581
`U.S. Patent No. 7,848,439
`_____________________
`
`PATENT OWNER INVT SPE LLC’S
`CONSOLIDATED SUR-REPLY
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`
`TABLE OF CONTENTS ........................................................................................ i
`LIST OF PATENT OWNER’S PREVIOUSLY FILED EXHIBITS ..................... iv
`EXHIBITS FILED WITH PATENT OWNER’S SUR-REPLY ............................. v
`I.
`Introduction ................................................................................................. 1
`II.
`Petitioners Concede that No Single Reference Teaches the ’439 Patented
`Invention. ..................................................................................................... 2
`III. Petitioners Fail to Establish that Claims 1-7 Are Obvious Over Li, Vijayan,
`and Hashem. ................................................................................................ 3
`A.
`Petitioners’ Reply Misinterprets the Fundamental Purpose of Li’s
`Invention—to Select Subcarriers or Subbands Based on Performance
`for Modulation and Coding by the Base Station. ................................ 3
`Petitioners’ Purported Motivation to Combine Li with Vijayan Ignores
`the Teachings of Both References. ..................................................... 8
`Petitioners’ Reply Fails to Establish that a POSITA Would Combine
`Li or Vijayan with Hashem. ..............................................................18
`IV. Petitioners Fail to establish that Claim 8 is Obvious Over Li, Vijayan,
`Hashem, and Cioffi. ....................................................................................22
`A.
`Petitioners Cannot Remedy Cioffi’s Failure to Teach “Assigning a
`Weight Per Subband Group” by Invoking Hindsight Bias. ...............22
`The Reply Presents Irrelevant Arguments Instead of a Motivation to
`Make the Cioffi Combination. ...........................................................24
`Conclusion ..................................................................................................27
`V.
`Word Count Certification ......................................................................................29
`Certificate of Service ............................................................................................30
`
`
`
`B.
`
`
`
`
`
`i
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Abbott Labs. v. Sandoz, Inc.,
`544 F.3d 1341 (Fed. Cir. 2008) .................................................................... 9, 23
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................ 26
`Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 9
`In re Fulton,
`391 F. 3d 1195 (Fed. Cir. 2004) ......................................................................... 9
`
`In re Magnum Oil Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 8, 23
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 8
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ........................................................................ 26
`Nikon Corp. v. ASML Netherlands B.V.,
`Case No. IPR2018-00227, Paper 11 (PTAB Sep. 10, 2018) ............................... 3
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .......................................................................... 26
`Plas-Pak Indus. Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) ................................................................... 10
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ........................................................................ 26
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) .................. 18
`
`ii
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc.,
`IPR2019-00133, Paper 10 (May 8, 2019) ................................................... 25, 26
`Other Authorities
`2019 Trial Practice Guide Update ......................................................................... 11
`
`
`
`
`
`iii
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`LIST OF PATENT OWNER’S PREVIOUSLY FILED EXHIBITS
`
`
`
`
`
`
`Exhibit No.
`2001
`2002
`2003
`
`2004
`
`2005-2100
`2101
`
`2102
`
`Description
`Expert Declaration of Dr. Branimir Vojcic
`Curriculum Vitae of Dr. Branimir Vojcic
`Procedural Schedule in the International Trade Commission
`proceeding captioned In the Matter of Certain LTE- AND 3G-
`Compliant Cellular Communications Devices, Inv. No. 337-TA-
`1138
`Respondents’ Notice of Prior Art in the International Trade
`Commission proceeding captioned In the Matter of Certain LTE-
`AND 3G-Compliant Cellular Communications Devices, Inv. No.
`337-TA-1138
`Numbers intentionally not used.
`Expert Declaration of Dr. Branimir Vojcic in Support of
`Patent Owner’s Response
`Curriculum Vitae of Dr. Branimir Vojcic
`
`
`
`iv
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`EXHIBITS FILED WITH PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`Exhibit No.
`2103
`
`Description
`Deposition Transcript of Dr. Zhi Ding Dated December 3, 2019
`
`v
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`I.
`
`INTRODUCTION
`
`Petitioners fail to establish that Challenged Claims 1-7 are invalid over the
`
`three-reference combination of Li, Vijayan, and Hashem (the “Li Combination”).
`
`Petitioners also fail to establish that Challenged Claim 8 is invalid over the same
`
`combination, plus a fourth reference, Cioffi (the “Cioffi Combination”).
`
`The ’439 Patent claims adaptive modulation and coding (“AMC”) based on
`
`subband groups, replacing prior art AMC based on more granular levels—i.e.,
`
`AMC based on subbands or subcarriers. The Challenged Claims require a
`
`communication apparatus with a “parameter deciding section” that "decides
`
`modulation and coding parameters for subband groups based on channel estimation
`
`per subband. No prior art reference teaches this claim element. Petitioners instead
`
`cobble together multiple disparate references in an attempt to manufacture the
`
`element from whole cloth based on hindsight. It is one thing to combine three
`
`references that cover various meaningless claim elements well-known in the art. It
`
`is quite another for Petitioners to attempt to cherry-pick various aspects of the Li,
`
`Vijayan, and Hashem references to conjure up the core aspect of the ’439 Patent’s
`
`invention disclosed to the Patent Office.
`
`Petitioners’ purported motivations to combine are also legally insufficient.
`
`Petitioners resort to making irrelevant arguments about the state of the art,
`
`misinterpreting the various references, and ignoring wholesale the teachings of the
`
`1
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`references that discourage any such combination. Accordingly, Petitioners fail to
`
`meet their burden of proving obviousness.
`
`II.
`
`PETITIONERS CONCEDE THAT NO SINGLE REFERENCE
`TEACHES SUBBAND-GROUP BASED AMC BASED ON CHANNEL
`ESTIMATION PER SUBBAND.
`
`
`
`It is undisputed that no single reference in this proceeding discloses the ’439
`
`Patent’s invention or the disputed elements of the Challenged Claims. See Reply at
`
`10 (conceding multiple missing limitations in Li, Vijayan, and Hashem).
`
`Specifically, the Challenged Claims require “a parameter deciding section that
`
`decides modulation and coding parameters per subband group comprised of a
`
`plurality of subbands, based on a result of channel estimation per subband.” Ex.
`
`1001 at 13:1-4. That limitation—including the use of a subband-level channel
`
`estimation to decide joint modulation and coding parameters for subband groups—
`
`is not present in the art. For example, Petitioners’ expert admits that Li reports
`
`SINR for each subband, not for a subband group. See Ex. 2103 (Ding Depo. Tr.) at
`
`57:2-15 (admitting Li never “reports an average SINR for a cluster group”), 58:3-8
`
`(“I don’t recall Li stated that they will report an average SINR for multiple
`
`clusters.”), 65:2-5 (no opinion regarding whether “Li supports cluster group SINR
`
`reporting”). Petitioners’ expert also admits that Vijayan, which deals with base
`
`station channel allocation for downlink transmission, rather than wireless device
`
`reporting to the base station, does not rely on channel estimation per subband. Id.
`
`2
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`at 139:6-17. Petitioners’ expert finally admits that Hashem does not even mention
`
`subband groups, let alone the rest of the claim element. Id. at 142:3-19 (agreeing
`
`Hashem “doesn’t mention subband groups”). See also Ex. 1017 (Vojcic Depo. Tr.)
`
`at 15:13-16:2 (For Li, “each cluster separately SINR is reported. So there is no
`
`SINR per group or for a group. It’s for each cluster individually.”).
`
`Petitioners, nevertheless, use the ’439 Patent as a thread in an attempt to
`
`stitch together multiple, disparate references into two different “Frankenstein”
`
`prior art combinations. See Nikon Corp. v. ASML Netherlands B.V., Case No.
`
`IPR2018-00227, Paper 11 at 8 (PTAB Sep. 10, 2018) (declining to institute inter
`
`partes review where Petitioners’ motivation to combine was “not supported by the
`
`references and represents an impermissible level of hindsight”). For the reasons
`
`discussed below, Petitioners’ arguments should be rejected.
`
`III. PETITIONERS FAIL TO ESTABLISH THAT CLAIMS 1-7 ARE
`OBVIOUS OVER LI, VIJAYAN, AND HASHEM.
`
`A.
`
`Petitioners’ Reply Misinterprets the Fundamental Purpose of Li’s
`Invention—to Select Subcarriers or Subbands Based on
`Performance for Modulation and Coding by the Base Station.
`
`Petitioners’ Reply asserts that a POSITA could apply Vijayan’s single joint
`
`AMC scheme to Li’s entire “cluster groups.” Reply at 22-30. Petitioners’
`
`argument, however, relies on a fundamentally flawed assumption—that Li’s
`
`singular goal is “reducing overhead.” Id. at 22 and 23 (“Li’s express goal of
`
`3
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`reducing overhead”). To the contrary, Li is focused on solving “frequency-
`
`selective fading” wherein “[t]he channel gains are different for different
`
`subcarriers,” and “the problem of intercell interference in an OFDMA system.” Ex.
`
`1003 at 1:46-67 (“Background of the Invention”). Li’s solution to both problems is
`
`to select and “adaptively allocate the subcarriers to subscribers so that each
`
`subscriber enjoys a high channel again” and further to “mitigate the effect of
`
`intercell interference.” Id. See also id. at 8:42-45 (“Ideally, the result of the
`
`selection by the subscriber is clusters with high channel gain, low interference
`
`from other cells, and high availability.”); Ex. 1017 (Vojcic Depo. Tr.) at 30:24-
`
`31:5, 33:16-35:8 (discussing how Li “clearly teaches [a] person of ordinary skill in
`
`the art” the goal of using “frequency diverse arrangements”), 38:21-40:11 (“It’s
`
`very clear that to achieve diversity, [Li] use[s] group clusters [] arranged in such
`
`and such manner. That’s as explicit I think to a person of ordinary skill in the art as
`
`it could be.”), 41:19-42:45:5 (discussing that Li teaches using frequency diverse
`
`cluster groups), 46:20-47:15. Vijayan’s goal is not directed to saving overhead
`
`signaling either. Ex. 1017 (Vojcic Depo. Tr.) at 55:7-57:21 (“That’s not the
`
`objective of Vijayan.”).
`
`Li accomplishes its goal of solving frequency-selective fading and
`
`interference by selecting and performing AMC only on the best performing
`
`subcarriers or subcarrier clusters. Li discloses three ways to conduct the subcarrier
`
`4
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`selection process—one at the “subcarrier” level, another at the “cluster” (subband)
`
`level, and a third at the “cluster group” (subband group) level. Ex. 1003 at 3:18-65,
`
`5:46-6:29, 12:9-29. At all three levels, the mobile subscriber first “measures the
`
`channel and interference information” for individual subcarriers, selects
`
`“candidate” subcarriers, clusters, or cluster groups based on performance, and
`
`presents those candidates to the base station. Id. The base station then makes the
`
`“final decision” by selecting individual subcarriers or clusters from the candidates
`
`proposed by the subscriber, for modulation and coding. Id. at 3:43-53, 3:64-65,
`
`6:18-29, 12:24-29. Li teaches that this final selection step is critical because the
`
`base station uses additional information not available to the mobile device to select
`
`the appropriate subcarriers or clusters for AMC:
`
`Upon receiving the feedback from a subscriber, the 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, e.g., the traffic load
`information on each subcarrier, amount of traffic requests
`queued at the base station for each frequency band,
`whether frequency bands are overused, and how long a
`subscriber has been waiting to send information. The
`subcarrier loading information of neighboring cells can
`also be exchanged between base stations. The base
`stations can use this information in subcarrier allocation
`to reduce inter-cell interference.
`
`
`Id. at 6:18-29.
`
`5
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`Petitioners’ expert, Dr. Ding, likewise testified that Li, throughout its
`
`specification, repeatedly discloses the “goal” of selecting “clusters, groups of
`
`subcarriers, with the best performance, for instance, high SINR and low traffic
`
`loading relative to other clusters.” Ex. 2103 (Ding Depo. Tr.) at 54:21-55:25, 81:4-
`
`18. Dr. Ding was unable to identify any embodiment in Li where the goal was not
`
`to select subcarriers or clusters of subcarriers “based on performance.” Id. at 86:8-
`
`15 (“Q. So I’m asking you if there is any embodiment in Li where that’s not the
`
`goal, where the subscriber is feeding back subcarriers or clusters, suggesting them
`
`not based on performance? A. Is there any embodiment in Li, I don’t recall. I don’t
`
`believe so.”). Dr. Ding also admitted that Li does not disclose any reporting other
`
`than SINR reporting. Id. at 83:14-20 (“Q. So whether you report it as an SINR or
`
`whether you rank it or whether you give all the clusters that are above a threshold,
`
`these are all performance-based recommendations of which clusters to use, right?
`
`A. These are measurement-based suggestions from the subscriber, yes.”). See also
`
`id. at 65:14-69:10 (discussing performance-based selection, such that the cluster
`
`with the “highest SINR, yes, would be the best cluster”).
`
`Petitioners incorrectly assert that, for Li’s “group-based cluster allocation,”
`
`“the only expressed goals are reducing overhead and reducing interference.” Reply
`
`at 22. Petitioners ignore the previous paragraph from Li, which provides the only
`
`two examples of “Group-Based Cluster Allocation” found in Li: clusters “spaced
`
`6
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`far apart over the entire bandwidth” and clusters “spaced apart farther than the
`
`channel coherence bandwidth.” Ex. 1003 at 11:46-61. Li then states “[t]his
`
`improves frequency diversity within each group and increases the probability that
`
`at least some of the clusters within a group can provide high SINR.” Id. at 11:58-
`
`61. Thus, Petitioners’ contention that frequency diversity is not a goal of Li must
`
`be rejected.
`
`Li’s subscriber reports its frequency diverse cluster groups to the base station
`
`based on performance, just like Li’s subcarrier and subband embodiments. Ex.
`
`1003 at 12:9-14. The base station in Li, unlike Vijayan, can then allocate frequency
`
`diverse clusters from within those groups in order to reduce interference. For
`
`example, Li teaches that the base station cherry-picks clusters from multiple
`
`different cluster groups:
`
`Upon receiving the feedback information from the
`subscriber, the cluster allocator at the base station selects
`multiple clusters from one or more groups, if available,
`and then assigns the clusters to the subscriber. This
`selection may be performed by an allocation in a media
`access control portion of the base station.
`
`
`Ex. 1003 at 12:24-29 (emphasis added); Ex. 2103 (Ding Depo. Tr.) at 62:13-63:14,
`
`68:17-20 (“So the base station chooses which clusters it wants out of those that are
`
`reported? A. Yeah, that’s right, from which the base station can make a choice.”),
`
`75:24-76:7 (“Q. Now, I’ll just ask if we’re doing group-based cluster allocation,
`
`7
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`that allocation is still going to be done by the base station right? A. Yes.”). This
`
`accomplishes “the express goal of the Li patent” “to maximize performance and
`
`throughput through frequency diversity.” Ex. 1017 (Vojcic Depo. Tr.) at 29:17-
`
`30:25. See also 32:22-33:23, 34:24-35:8, 35:18-36:4 (establishing that frequency
`
`diversity was the “whole thing” in Li), 36:11-22 (“But that’s all what group-based
`
`cluster allocation is about.”). As Patent Owner’s expert, Dr. Vojcic, established
`
`through unrebutted testimony: “It’s very clear that to achieve diversity, [Li would]
`
`use group of clusters [] arranged in such and such manner. That’s as explicit I think
`
`to person of ordinary skill in the art as it could be.” Ex. 1007 at 38:21-40:11.
`
`B.
`
`Petitioners’ Purported Motivation to Combine Li with Vijayan
`Ignores the Teachings of Both References.
`
`In both the Petition and the Reply brief, Petitioners fail to establish why a
`
`POSITA would have combined Li and Vijayan given the teachings of both
`
`references. It is not enough that the combination could have been made; it is
`
`Petitioners’ burden to explain why it would have been made. In re Magnum Oil
`
`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Here, Petitioners improperly
`
`combine disparate references “like separate pieces of a simple jigsaw puzzle”
`
`without “explain[ing] what reason or motivation one of ordinary skill in the art at
`
`the time of the invention would have had to place these pieces together.” InTouch
`
`Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014). The
`
`8
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`Board must “guard against slipping into use of hindsight and to resist the
`
`temptation to read into the prior art the teachings of the invention in issue.” Abbott
`
`Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed. Cir. 2008).
`
`Petitioners’ attempt to import and apply Vijayan’s joint modulation and
`
`coding parameters to an entire “cluster group” in Li which expressly contradicts
`
`multiple teachings in both Li and Vijayan that “criticize, discredit, or otherwise
`
`discourage” such a combination. In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir.
`
`2004). See also Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
`
`1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong
`
`where the prior art’s teachings undermine the very reason being proffered as to
`
`why a person of ordinary skill would have combined the known elements.”). Li and
`
`Vijayan teach away from the proposed combination for several reasons.
`
`1.
`
`Li’s use of “different modulation and coding rates” for
`different subcarriers and/or clusters directly discourages
`using a single modulation and coding scheme.
`
`Li fundamentally teaches that using “different modulation and coding rates
`
`are used to support reliable transmission over channels with different SINR.” Ex.
`
`1003 at 7:9-12. Indeed, “even for the same subscribers, different clusters can have
`
`different modulation/coding rates.” Id. at 8:1-5 (emphases added). See also Ex.
`
`1003 at 7:10-14, 7:56-65, 7:66-67; Ex. 2103 (Ding Depo. Tr.) at 55:13-23
`
`(identifying Li’s instruction to evaluate subcarriers with “good performance”),
`
`9
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`71:11-15 (“Q. Right. And what Li does say is report on a cluster basis so that you
`
`can have different ones, right? A. You can have different modulation and coding
`
`rates.”). That is because Li seeks to select “the appropriate coding/modulation rate
`
`for each cluster” of subcarriers or use “different modulation and coding rates” for
`
`different clusters “to support reliable transmission over channels with different
`
`SINR.” Ex. 1003 at 7:10-14, 7:56-67, 8:1-5 (emphasis added).
`
`Therefore, a POSITA would understand that Li flexibly applies different
`
`AMC schemes to different subcarriers or subcarrier clusters, and that using a single
`
`joint AMC scheme for all clusters within a cluster group would be disadvantageous
`
`and frustrate Li’s goal of maximizing performance/throughput at high SINR and
`
`improving transmission reliability at very low SINR. Ex. 2101 ¶ 47, 52; Plas-Pak
`
`Indus. Inc. v. Sulzer Mixpac AG, 600 F. App’x 755, 757 (Fed. Cir. 2015)
`
`(“[C]ombinations that change the ‘basic principles under which the [prior art] was
`
`designed to operate,’ or that render the prior art ‘inoperable for its intended
`
`purpose,’ may fail to support a conclusion of obviousness.”). A POSITA would
`
`reject the Li Combination, which ultimately sacrifices “the granularity of
`
`adjustments” to AMC required by Li, and “cannot be finely tuned,” thereby
`
`“forsaking some ability to make fine adjustments.” See Ex. 2103 (Ding Depo. Tr.)
`
`at 16:18-17:9 (discussing granularity between AMC based on subcarriers vs.
`
`subbands), 19:7-16 (discussing “sacrificing the granularity of adjustments” when
`
`10
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`using subband groups). Indeed, applying joint modulation and coding parameters
`
`to Li’s subband groups would “kill his objectives” and “kill his design.” Ex. 1017
`
`(Vojcic Depo. Tr.) at 56:17-57:21, 60:20-62:10.
`
`Petitioners’ Reply contends that “this is a design tradeoff that a POSITA
`
`would have understood.” Reply at 24 (citing Ex. 1016 ¶ 173). See also Ex. 1016 ¶¶
`
`179-184. Petitioners’ “design tradeoff” rationale for combining Li and Vijayan is a
`
`new motivation to combine that was necessary to Petitioners’ prima facie case, and
`
`should have been included in the Petition. As such the argument and the additional
`
`evidence provided in support, including at least Exhibits 1018-1021 and the
`
`corresponding discussion in the Petitioners’ Reply Declaration, should not be
`
`considered. See 2019 Trial Practice Guide Update, at 40 ([“A] reply that raises a
`
`new issue or belatedly presents evidence may not be considered.”).
`
`Even if it is considered, Petitioners still fail to meet their burden of proof
`
`because Petitioners’ argument is based on an unsupported paragraph of their Reply
`
`Declaration, and fails to explain why such a “tradeoff” is appropriate given Li’s
`
`teachings. See Ex. 1016 ¶ 173 (“A POSITA would have recognized (1) the benefit
`
`of reduced feedback signaling that would be realized by applying joint parameters;
`
`and (2) that benefit would come at a cost of potentially applying non-ideal
`
`parameters to some of the allocated clusters.”).
`
`11
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`
`Petitioners’ Reply also argues that a POSITA would select an AMC scheme
`
`based on the average SINR across all clusters in the group, rather than the highest
`
`or lowest SINR clusters. Reply at 24-25 (citing Ex. 1016 ¶ 177). Although
`
`Petitioners’ Reply Declaration asserts this is “more realistic,” Petitioners’ expert
`
`fails to explain why this would be appropriate. See Ex. 1016 ¶ 177. Even if true,
`
`conducting AMC based on the “average SINR” of all clusters within a cluster
`
`group would still modulate “subcarriers above and below the average” using the
`
`same AMC scheme, resulting in clusters being “assigned modulation and coding”
`
`“that’s not a best match.” Ex. 2103 (Ding Depo. Tr.) at 180:25-182:9. Using the
`
`same modulation scheme would be “too aggressive” or “too loose” for numerous
`
`subcarriers. Id. The clusters above the average SINR would experience sub-
`
`optimal throughput, and many clusters below the average SINR would “not be
`
`demodulated/decoded, resulting in loss of throughput while wasting frequency and
`
`power resources and generating additional interference within the network.” See
`
`Ex. 2101 ¶ 47, 52. Moreover, Dr. Vojcic expressly addressed scenarios involving
`
`modulation based on clusters between the highest and lowest SINR clusters, and
`
`reached the same conclusion. Ex. 1017 (Vojcic Depo. Tr.) at 62:19-66:10.
`
`Moreover, any overhead savings from the Li Combination would be
`
`minimal. Ex. 1017 (Vojcic Depo. Tr.) at 64:24-65:22 (“small saving for feedback
`
`signaling” would be “overwhelm[ed]” by “suboptimally using joint modulation
`
`12
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`and coding”). See also Ex. 2103 (Ding Depo. Tr.) at 88:3-89:15 (merely reducing
`
`three numbers to one number). Moreover, these purported savings would only
`
`apply to downlink transmission. See Ex. 1007 ¶ 74 (“At a high level, Vijayan
`
`discloses an OFDM system where the base station allocates a group of subbands
`
`for downlink transmission . . . .”); Ex. 2103 (Ding Depo. Tr.) at 109:14-110:14
`
`(Vijayan’s downlink transmission); Ex. 1017 (Vojcic Depo. Tr.) at 49:14-18 (“Q. I
`
`understand. So this part of Vijayan’s talking about the downlink from the base
`
`station to the UE? A. The whole Vijayan’s talking about that.”). Petitioners thus
`
`fail to establish that a POSITA would combine Li with Vijayan based on a
`
`motivation to reduce overhead.
`
`2.
`
`The proposed combination would preclude Li’s base station
`from further selecting high performing subcarriers and/or
`clusters.
`
`Li also teaches that it is advantageous for the base station to adaptively select
`
`high performing clusters from the various “candidate” cluster groups proposed by
`
`the mobile device, as discussed supra § III.A. Ex. 1003 at 12:24-29; Ex. 2103
`
`(Ding Depo. Tr.) at 62:13-63:14, 68:17-20, 75:24-76:7. It is undisputed that Li’s
`
`base station “makes the final decision of subcarrier allocation for each subscriber.”
`
`Ex. 1003 at 3:64-65 (emphasis added). See also id. at 6:18-29, 12:24-29.
`
`Petitioners’ expert conceded that Li teaches that the “base station can make that
`
`selection” and therefore “doesn’t have to follow” the cluster group candidates
`
`13
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`proposed by the mobile subscriber. Ex. 2103 (Ding Depo. Tr.) at 49:11-50:1, 56:1-
`
`10. For example, Petitioners’ expert testified that:
`
`Q.
`
`So if there’s a cluster in a group that is not
`available --
`
`
`A. Yes.
`
`Q.
`
`-- the base station is not going to select that cluster
`and it’s not going to assign that cluster, right?
`
`
`A. Yes.
`
`Q. Okay. And in that scenario, the base station can
`still indicate modulation and coding parameters to
`use for the other clusters based on the SINR values
`reported as, for example, in Figure 7?
`
`
`A. That’s correct. In that scenario when the cluster is
`not available as indicated by the base station, the
`base station will not assign that cluster to the
`subscriber.
`
`
`Q. Okay. But it can still assign other clusters in the
`group and use the SINR values for those clusters to
`indicate modulation and coding parameters, right?
`
`
`A.
`
`Q.
`
`It can still assign other clusters in that group.
`
`I agree. And if it does that, it’s going to use the SI
`-- or can use the SINR values for the clusters it
`does assign to help come up with the modulation
`and coding parameters, right?
`
`
`A. You can. You can use that information, yes.
`
`
`
`14
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`Id. at 98:10-99:13. See also id. at 62:13-63:14, 68:17-20 (agreeing that the “base
`
`station chooses which clusters it wants out of those that are reported”), 75:24-76:7
`
`(agreeing that “allocation is still going to be done by the base station right”),
`
`141:2-12. As such, numerous clusters in Li’s “cluster groups” would not be
`
`selected for modulation or coding. See id. at 49:23-52:18 (identifying a host of
`
`factors), 52:20-53:1.
`
`That Li’s base station selects only a subset of clusters from the candidate
`
`“cluster groups” offered by the mobile subscriber is fatal to the Li Combination,
`
`because Petitioners rely solely on Li’s subscriber-selected “cluster groups” for the
`
`claimed “subband group” limitations. Petition at 29 (“Li discloses that the
`
`subscriber (the UE) selects a cluster group comprised of a plurality of clusters
`
`(subbands).”), 32 (“The cluster groups in Li are the same as the subband groups in
`
`the ’439 Patent.”). That Li’s base station selects and applies adaptive coding and
`
`modulation to only some of the “clusters” selected by the mobile device—and not
`
`entire “cluster groups”—means there would be no “modulation parameters and
`
`coding parameters per subband group,” as required by the Challenged Claims.
`
`Alternatively, if Petitioners contend the base station is forced to accept and
`
`modulate every “cluster group” proposed by the mobile device, the resulting
`
`communication system would eliminate Li’s advantageous selection of clusters by
`
`the base station (which uses a host of information only available to the base
`
`15
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`station), and a POSITA would reject such a combination accordingly. See Ex. 1017
`
`(Vojcic Depo. Tr.) at 56:17-57:21 (“If someone wanted to redesign Li’s
`
`embodiment, then it would kill his objectives.”).
`
`3.
`
`Vijayan and Li are also at odds with respect to frequency
`diversity, and both references teach away from joint
`modulation and coding of diverse clusters.
`
`A POSITA also would not incorporate Vijayan’s joint modulation and
`
`coding parameters into Li’s frequency diverse subband groups. Petitioners do not
`
`dispute that Vijayan teaches combining subbands with adjoining frequencies (i.e.,
`
`Vijayan’s rectangular assignments). Ex. 2103 (Ding Depo. Tr.) at 118:18-122:3
`
`(discussing Vijayan’s rectangular allocation), 134:2-135:21 (“Vijayan’s frequency-
`
`contiguous, rectangular subband groups”). That is because Vijayan seeks to “make
`
`the slots assignments for the PLCs more compact, which then simplifies the
`
`packing of the PLCs within a frame.” Ex. 1004 at 10:7-20; Ex. 2103 (Ding Depo.
`
`Tr.) at 134:23-135:21. Vijayan’s preference for subband groups comprised of
`
`contiguous subbands also increases the accuracy of joint modulation and coding,
`
`because neighboring subbands have a higher chance of experiencing “similar
`
`channel condition[s].” See Ex. 2103 (Ding Depo. Tr.) at 136:22-137:11.
`
` By contrast, Li teaches spacing subbands within a subband group “apart
`
`farther than the channel coherence bandwidth” to improve “frequency diversity
`
`within each group and the probability that at least some of the clusters within a
`
`16
`
`

`

`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439
`
`group can provide high SINR.” Ex. 1003 at 11:52-61; Ex. 2101 ¶¶ 52-55; Ex. 1017
`
`(Vojcic Depo. Tr.) at 30:2-19. A POSITA would understand that “Li is teaching
`
`that by saying use frequency diversity clusters,” “that means don’t use frequency
`
`coherent clusters.” Ex. 1017 (Vojcic Depo. Tr.) at 44:25-45:5. See also id. at 42:9-
`
`45:9 (stating that Li criticizes spacing clusters within a group “within the channel
`
`coherence bandwidth”). By applying joint modulation and coding to a diverse
`
`subband group, the Li Combination would experience either increased overhead,
`
`contrary to Vijayan’s teachings of compactness, or increased interference, contrary
`
`to Li’s instruction to “reduce inter-cell interference” via frequency diversity. See
`
`Ex. 2101 ¶ 55.
`
`Petitioners’ Reply asserts that “bodily incorporating Vijayan’s contiguous
`
`subband groups is unnecessary and improper.” Reply at 27-29. But it is Petitioners
`
`who first raise incorporating Vijayan’s rectangular grouping patterns into Li for
`
`various claim elements. See, e.g., Peti