UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner
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`v.
`
`HERA WIRELESS S.A.,
`Patent Owner
`
`Case IPR2018-01700
`Patent No. 7,369,878
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`
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`
`
`DECLARATION OF DR. JACOB SHARONY
`IN SUPPORT OF PATENT OWNER
`
`Under 37 C.F.R. § 42.120
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
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`

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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
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`
`I.
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`II. BACKGROUND AND QUALIFICATIONS .................................................... 2
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`III. ASSIGNMENT AND MATERIALS CONSIDERED ....................................... 5
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`IV. LEGAL STANDARDS ....................................................................................... 6
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`A. Burden of Proof .............................................................................................. 6
`B. Anticipation 7 ................................................................................................ 7
`C. Obviousness 7 ................................................................................................ 7
`D. Level of Ordinary Skill in the Art .................................................................. 9
`
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`V. THE ’878 patent ................................................................................................11
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`A. Brief Description of the ’878 Patent Disclosure ..........................................11
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`VI. CLAIM CONSTRUCTION.............................................................................15
`
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`A. “wherein the signal is a [bit] having first and second bit values which
`specify first and second reception operations, respectively, one of the first and
`second bit values instructing the radio terminal apparatus to accept the frame
`only in a prescribed manner determined by the one bit value” (Claims 1 and
`3)
` ................................................................................................15
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`
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`1. The Claim’s Plain Language Requires “first” and “second” Bit Values
`That “specify” Distinct “first” and “second” Reception Operations ...........15
`2. The “second” Reception Operation Cannot Merely Be the Negation of
`the “first” Reception Operation ...................................................................16
`3. An Indication That an Operation Is “Possible” or “Available” Is Not an
`Instruction to the Receiver to Accept a Frame “only in a prescribed manner
`determined by the one bit value” .................................................................17
`
`
`VII. Ishida DOES NOT ANTICIPATE CLAIMS 1-4 BECAUSE IT FAILS TO
`EXPRESSLY OR INHERENTLY DISCLOSE KEY FEATURES OF THE
`CHALLENGED CLAIMS .......................................................................................18
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`i
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`A. Ishida’s D Flag Bit Set to “1” Fails to “specify” a “first” or “second”
`Reception Operation Because the “Diversity Stop” Instruction Given by D
`Flag Value of “1” Corresponds to Many Potential Reception Operations .....19
`
`B. Because a D Flag Value of “1” Fails to Specify a “first” or “second”
`Reception Operation, a D Flag Value of “1” Also Fails to Qualify as “one of
`the first and second bit values” That Instructs the Receiver “to accept the
`frame only in a prescribed manner determined by the one bit value” ............21
`
`C. Ishida’s D Flag Bit Set to “0” Does Not Instruct the Receiver to Accept a
`Frame “only in a prescribed manner determined by the one bit value”
`Because a D Flag Value of “0” Merely Indicates that Diversity Reception Is
`Possible—It Is Not an Instruction ...................................................................23
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`D. Ishida Does Not Anticipate Dependent Claims 2 and 4 of the ’878 Patent ...
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`………………………………………………………………24
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`VIII. Park Does Not Anticipate Or Render Obvious Claims 1-4 as it Fails to
`Teach or Suggest Key Features of the Challenged Claims ......................................25
`
`
`A. Park Does Not Teach or Suggest that the TSTD Mode Change
`Information Field Is a Bit Having First and Second Bit Values .....................25
`
`1. Petitioner’s Assumptions That the TSTD Mode Change Field Is a Single
`Bit and That TSTD Mode Can Be Turned “On” and “Off” with This Field
`Are Unsupported by the Reference ..............................................................25
`
`B. Even if the TSTD Mode Change Field Is Assumed to Be a Single Bit,
`Park Would Not Teach or Suggest First and Second Values of That Bit that
`“specify first and second reception operations, respectively” Because Neither
`“TSTD mode” nor “non-TSTD mode” Specifies a Unique Reception
`Operation
` ................................................................................................29
`
`C. Park Does Not Teach or Suggest that Either a “Change” or a “No Change”
`Value of TSTD Mode Change Instructs the Receiver to Accept a Frame Only
`in a Prescribed Manner Determined by the Value of TSTD Mode Change .......
`
`………………………………………………………………31
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`1. Neither a “Change” nor a “No Change” Value of TSTD Mode Change
`Instructs the Receiver to Accept a Frame in Any Prescribed Manner, as the
`Resulting Mode Is Variable .........................................................................31
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`ii
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`D. Park Does Not Anticipate or Render Obvious Dependent Claims 2 and 4
`of the ’878 Patent ............................................................................................32
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`IX. Uhlik DOES NOT ANTICIPATE OR RENDER OBVIOUS CLAIMS 1-4 AS
`IT FAILS TO TEACH OR SUGGEST KEY FEATURES OF THE
`CHALLENGED CLAIMS .......................................................................................33
`
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`A. Uhlik’s “Hopping” Bit Set to “1” Fails to “specify” a “first” or “second”
`Reception Operation Because the “Hopping” Mode of Operation May
`Correspond to a Plurality of Reception Operations ........................................34
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`B. Because a “Hopping” Bit Value of “1” Fails to Specify a “first” or
`“second” Reception Operation, the Value “1” Also Fails to Qualify as “one of
`the first and second bit values” That Instructs the Receiver “to accept the
`frame only in a prescribed manner etermined by the one bit value” ..............36
`
`C. Uhlik’s “Hopping” Bit Set to “0” Does Not Instruct the Receiver to Accept
`a Frame “only in a prescribed manner determined by the one bit value”
`Because a “Hopping” Bit Value of “0” Merely Indicates Not to Operate in a
`Mode—It Is Not an Instruction .......................................................................37
`
`D. Uhlik Does Not Anticipate or Render Obvious Dependent Claims 2 and 4
`of the ’878 Patent ............................................................................................38
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`X. PHSv2 IN VIEW OF Uhlik FAILS TO TEACH OR SUGGEST KEY
`FEATURES OF THE CHALLENGED CLAIM ....................................................39
`
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`A. PHSv2 Does Not Correct the Deficiencies in Uhlik...................................39
`B. PHSv2 and Uhlik Do Not Render Obvious Dependent Claims 2 and 4 of
`the ’878 Patent ................................................................................................39
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`XI. RESERVATION OF RIGHTS .........................................................................40
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`iii
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`I.
`
`INTRODUCTION
`1. My name is Jacob Sharony, and I have been retained as an expert
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`witness by Patent Owner Hera Wireless S.A. (“Patent Owner”) for the Inter Partes
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`Review of U.S. Patent No. 7,369,878 (“the ’878 patent”). More specifically, I have
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`been asked to render opinions regarding the validity of the ’878 patent with respect
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`to the Petition for Inter Partes Review (“Petition”) filed by Intel Corporation
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`(“Petitioner”).
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`2.
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`In IPR2018-01700, I understand that Petitioner is challenging the
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`validity of Claims 1-4 of the ’878 patent.
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`3.
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`I understand that Petitioner has petitioned for inter partes review on the
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`following Grounds:
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`Ground 1: Claims 1-4 as anticipated under 35 U.S.C. § 102 or obvious
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`under 35 U.S.C. § 103(a) by Park (Ex. 1003).
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`Ground 2: Claims 1-4 as anticipated under 35 U.S.C. § 102 by Ishida (Ex.
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`1005).
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`Ground 3: Claims 1-4 as anticipated under 35 U.S.C. § 102 or obvious
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`under 35 U.S.C. § 103(a) by Uhlik (Ex. 1004).
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`Ground 4: Claims 1-4 as obvious under 35 U.S.C. § 103(a) by PHSv2 (Ex.
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`1008) and Uhlik (Ex. 1004).
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`1
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`4.
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`I was asked to consider whether the challenged claims of the ’878
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`patent (Ex. 1001), which are Claims 1-4, were anticipated or would have been
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`obvious to a person of ordinary skill in the art as of the date of the invention. I was
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`also asked to review and comment on a number of technical statements made by
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`Petitioner and its expert.
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`5.
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`This report contains statements of my opinions formed to date and the
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`bases and reasons for those opinions. I may offer additional opinions based on
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`further review of materials in this case, including opinions and/or testimony of other
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`expert witnesses.
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`II. BACKGROUND AND QUALIFICATIONS
`Based on my qualifications and work background, I believe I am
`6.
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`qualified to offer opinions relating to the patented technology of the ’878 patent.
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`7.
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`I have over 25 years of experience working in mobile and wireless
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`technology, which has resulted in over 50 issued patents and numerous publications
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`in scientific journals and conferences. I have also served on various government
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`expert panels, including for the National Science Foundation and National Institutes
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`of Health.
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`8.
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`Since 2010, I have been an Adjunct Professor in Electrical Engineering
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`at Columbia University, teaching graduate level courses on advanced wireless
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`2
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`

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`technologies including in the areas of wireless sensing technology, mmWave
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`communications, and applications for 5G wireless networks and systems.
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`9.
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`I received a Bachelor’s Degree (1979) and Master’s Degree (1984) in
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`Electrical Engineering from Tel Aviv University. I have M.Phil. (1991) and Ph.D.
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`(1993) Degrees in Electrical Engineering from Columbia University. I also have an
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`MBA Degree (1989) from Tel Aviv University.
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`10.
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`I have been involved with mobile and wireless networking technologies
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`since the mid-1990s working as a researcher, developer and educator on wide and
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`local area networks infrastructure and mobile devices. Over these two decades I have
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`witnessed the change from voice-centric to data-centric networks, and have worked
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`on enterprise mobility products and solutions as early as the late 1990s.
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`11. After obtaining my Ph.D., I led the advanced mobile networking group
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`at BAE Systems, developing tactical mesh-based wireless network systems for the
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`Department of Defense. I also conducted research and development in advanced
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`mobile and wireless networks. My work resulted in several issued patents including
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`patents such as U.S. Patent No. 5,652,751 titled “Architecture for mobile radio
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`networks with dynamically changing topology using virtual subnets,” and U.S.
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`Patent No. 5,742,593 titled “On-line distributed TDMA/FDMA/CDMA link
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`assignment in mobile radio networks with flexible directivity.”
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`3
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`

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`12. From 1997-2005, I held various positions at Symbol Technologies
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`(acquired by Motorola Solutions). While working at Motorola/Symbol I gained
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`substantial experience
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`in application-specific mobile device, and wireless
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`networking and architecture solutions in several vertical applications, e.g.,
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`transportation and logistics, healthcare, warehousing, retail, education, among
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`others. As Senior Director, Research and Development, I initiated and led several
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`research and development programs in wireless LAN technologies including MIMO
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`networks, mobile device management and security. As Senior Director, Technology
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`Strategy and Development, I was responsible for the research and development of
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`new mobile applications for delivering multimedia-rich content to mobile devices
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`connected over heterogeneous networks. That work resulted in several U.S. patents,
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`including U.S. Patent No. 7,668,201 titled “Bandwidth management in wireless
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`networks”, U.S. Patent No. 7,778,649 titled “System and method for asset location
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`in wireless networks” and U.S. Patent No. 6,925,094 titled “System and method for
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`wireless network channel management.”
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`13.
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`In 2004, I founded Mobius Consulting, a consulting firm providing
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`professional services in mobile wireless strategy, technologies, systems, and
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`applications, including enterprise mobility, wireless communication networks,
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`mobile embedded devices, device management, and mobile applications and
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`services. In this capacity, I have worked with many companies in the mobile and
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`4
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`wireless ecosystem including service providers and operators, equipment vendors,
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`and semiconductor companies. Since founding Mobius Consulting, I have worked
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`with many enterprises interested in deploying mobile and wireless solutions in order
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`to become more productive, efficient, and cost effective. These solutions spanned
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`numerous industry sectors and involved various mobile and wireless technologies
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`including 3G/4G Cellular, Wi-Fi, Bluetooth, ZigBee, and RFID. I was awarded
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`many patents in these fields.
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`14.
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`In addition to the summary I have provided here, I describe my
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`education and experience, including a list of matters I have worked on, in greater
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`detail in my CV, attached as Patent Owner’s Exhibit 2002.
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`III. ASSIGNMENT AND MATERIALS CONSIDERED
`15. For time spent in connection with this case, I am being compensated at
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`my customary rate of $450 per hour. My compensation is not dependent upon the
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`outcome of this petition or any issues involved in or related to the ’878 patent, and I
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`have no other financial stake in this matter. I have no financial interest in, or
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`affiliation with, any of the real parties in interest, the patent owner or the named
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`inventors of the patent.
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`16.
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`I have considered information from various sources in forming my
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`opinions herein, including:
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`• the ’878 patent and its prosecution history;
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`5
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`• Petitioner’s Petition for Inter Partes Review of the ’878 patent (the
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`“Petition”), as well as the references cited therein;
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`• the declaration of Dr. Stephen B. Wicker, submitted by Petitioner as
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`Exhibit No. 1002;
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`• Patent Owner’s Preliminary Response in this proceeding;
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`• the Board’s April 19, 2019 Institution Decision in this proceeding;
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`• the deposition transcript of Dr. Stephen B. Wicker, submitted by
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`Patent Owner as Exhibit No. 2003; and
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`• all documents and other materials cited to herein.
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`17.
`
`I have reviewed Patent Owner’s Response, to which this Declaration is
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`being submitted as Exhibit No. 2004, and I agree with both its analysis and
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`conclusions.
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`IV. LEGAL STANDARDS
`I have applied the following legal principles provided to me by counsel
`18.
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`in arriving at the opinions set forth in this report.
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`A. Burden of Proof
`I have been informed that Petitioners have the burden to prove that the
`19.
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`claims challenged in the petition for IPR are not patentable by a preponderance of
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`the evidence, which I understand to be just enough evidence to make it more likely
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`than not that Petitioners’ argument is correct.
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`6
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`

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`B. Anticipation
`I have been informed that a claim is anticipated by a prior art reference
`20.
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`only if each and every element of the claim is present in the reference. I further
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`understand that a single prior art reference must disclose the claimed invention or
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`direct those skilled in the art to the invention without any need for picking, choosing,
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`and combining various disclosures not directly related to each other by the teachings
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`of the cited reference.
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`21.
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`I have also been informed that a reference cannot anticipate a claim if
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`it does not explicitly or inherently disclose each and every claim element, even if a
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`POSITA would immediately envision the missing claim element upon reading the
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`reference.
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`C. Obviousness
`I have been informed that, where each and every element is not present
`22.
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`in a single reference, a claim may still be invalid as “obvious” if the differences
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`between the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person of ordinary skill in the art to which said subject matter pertains. I
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`understand that the following factors must be evaluated to determine whether the
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`claimed subject matter is obvious: (1) the scope and content of the prior art; (2) the
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`7
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`difference or differences, if any, between each claim of the patent and the prior art;
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`and (3) the level of ordinary skill in the art at the time the patent was filed.
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`23.
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`I understand that obviousness may be shown by considering more than
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`one item of prior art and by considering the knowledge of a person of ordinary skill
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`in the art, and that obviousness may be based on various rationales including: (i)
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`combining prior art elements according to known methods to yield predictable
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`results; (ii) simple substitution of one known element for another to obtain
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`predictable results; (iii) use of known techniques to improve similar devices in the
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`same way; (iv) applying a known technique to a known device ready for
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`improvement to yield predictable results; (v) “obvious to try” – choosing from a
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`finite number of identified, predictable solutions, with a reasonable expectation of
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`success; (vi) known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; and
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`(vii) some teaching, suggestion, or motivation in the prior that would have led one
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`of ordinary skill to modify the prior art reference or to combine prior art reference
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`teachings to arrive at the claimed invention.
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`24.
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`I also understand that for an obviousness challenge based on a single
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`reference in view of the knowledge and skill of a POSITA, there must be a
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`motivation to make the combination and a reasonable expectation that such a
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`8
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`combination would be successful, otherwise a skilled artisan would not arrive at the
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`claimed combination. In other words, when a gap in a single prior art reference
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`requires filling with, for example, the knowledge of one of ordinary skill, there must
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`be a further showing that the skilled artisan would have arrived at the claimed
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`invention.
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`25.
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`I further understand that a claim is not obvious over a combination of
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`prior art references if such references “teach away” from the claimed combination,
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`if there is no motivation to combine such references, or if the combination would
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`lead to waste and inefficiencies not present in one or more of the references in
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`isolation.
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`26.
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`I also understand that one of ordinary skill in the art has ordinary
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`creativity, and is not an automaton. I understand that in considering obviousness,
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`hindsight analysis is inappropriate; obviousness must be measured at the time the
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`invention was made. The Petitioner should not use the patent as a roadmap for
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`selecting and combining items of prior art.
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`D. Level of Ordinary Skill in the Art
`I understand that the hypothetical person of ordinary skill in the art
`27.
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`(“POSITA”) is considered to have the normal skills and knowledge of a person in a
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`certain technical field, as of the time of the invention at issue. I understand that
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`factors that may be considered in determining the level of ordinary skill in the art
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`9
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`include: (1) the education level of the inventor; (2) the types of problems
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`encountered in the art; (3) the prior art solutions to those problems; (4) rapidity with
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`which innovations are made; (5) the sophistication of the technology; and (6) the
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`education level of active workers in the field. I also understand that “the person of
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`ordinary skill” is a hypothetical person who is presumed to be aware of the universe
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`of available prior art.
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`28. Based on the above, it is my opinion that the level of ordinary skill in
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`the art applicable to the ’878 patent as of around 2001 is a person with a working
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`knowledge of advanced antenna techniques. The person would have gained this
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`knowledge through an undergraduate Bachelor of Science degree in Electrical
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`Engineering or an equivalent degree, and three to five years of experience working
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`in the field of wireless communications. Additional education or experience may
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`serve as a substitute for these requirements.
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`29. The opinions I express herein are given from the point of view of a
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`POSITA, as described above, at the time of the effective filing date of the ’878
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`patent, which is August 6, 2001. Even if I do not repeat this explicitly, this is the
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`perspective that I applied in my analysis and in this declaration, unless I indicate
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`otherwise. My opinion is the same regardless of whether the earliest non-provisional
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`U.S. filing date of August 1, 2002 or earliest claimed priority date is accorded to
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`the ’878 patent.
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`10
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`V. THE ’878 PATENT
`A. Brief Description of the ’878 Patent Disclosure
`30. The ’878 patent is directed to an apparatus and method for a radio
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`terminal device to optimize a reception operation. The ’878 patent teaches that in
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`response to a connection request from a terminal, a radio base station provides the
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`terminal a signal indicating a reception operation adapted to a transmission operation
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`of the base station. Based on the indicating signal, the terminal selects and performs
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`the optimum reception operation. The terminal also provides its own reception
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`operation information in advance to the base station. Based on the reception
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`operation information, the base station transmits a reception operation indication to
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`the terminal. (Ex. 1001 at Abstract.)
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`31. The ’878 patent explains that prior art mobile communication systems,
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`such as the Personal Handyphone System (PHS), use PDMA (Path Division Multiple
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`Access) schemes to allow radio terminal apparatuses (terminals) of a plurality of
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`users to be connected to a radio base station apparatus (base station) in a spatial
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`multiplexing manner, by spatially dividing an identical time slot of an identical
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`frequency for improving the frequency effectiveness of a radio wave. (Ex. 1001 at
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`1:36-44.) In a PDMA scheme, a receiving terminal may use either selective diversity
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`reception (“diversity reception”) using a plurality of antennas, or adaptive array
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`reception where a received signal is extracted with reception directivity through an
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`11
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`adaptive array process. (Ex. 1001 at 1:64-66; 1:45-51.) When a terminal device
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`using diversity reception receives a transmission from a base station using an
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`adaptive array transmission technique, it may receive signals not intended for it,
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`thereby reducing its desired signal-to-undesired signal ratio (“DU ratio.”) (Ex. 1001
`
`at 4:6-14.) The invention of the ’878 patent, thus, aims to overcome this problem
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`by allowing a base station to provide to the terminal a single-bit signal indicating the
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`specific type of reception operation to perform such that the desired signal is
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`properly received and demodulated. (Ex. 1001 at 4:25-38.) Specifically, the
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`indicating signal instructs the terminal to receive the frame in the manner prescribed
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`by it—for instance, using diversity reception or adaptive array reception. When the
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`terminal receives this single-bit signal, it adapts its reception operation to the
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`transmission operation of the base station and proceeds to receive a frame in the
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`prescribed manner. (Ex. 1001 at 15:49-61; 16:14-20)
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`32. Exemplary Figure 16 of the ’878 patent (reproduced below) shows a
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`flowchart for the operation of a remote terminal that receives a reception operation
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`signal indicating either an adaptive array reception or a diversity reception operation.
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`12
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`

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`(Ex. 1001 at Fig. 16.)
`
`33. Petitioner has challenged claims 1-4 of the ’878 patent in this Petition.
`
`34.
`
`Independent claim 1 of the ’878 patent recites:
`
`
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`1. A radio base station apparatus for transmitting a frame to a
`radio terminal apparatus, the radio base station apparatus
`comprising:
`
`[a] a receiver for receiving a connection request from the radio
`terminal apparatus; and
`
`[b] a transmitter for transmitting the frame to the radio terminal
`apparatus which has sent the connection request, the frame
`including (1) a signal indicating a reception operation adapted to
`a transmission operation of the radio base station apparatus and
`(2) data,
`
`
`13
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`

`

`[c] wherein the signal is a [bit] having first and second bit values
`which specify first and second reception operations, respectively,
`one of the first and second bit values instructing the radio
`terminal apparatus to accept the frame only in a prescribed
`manner determined by the one bit value and adapted to a
`corresponding transmission operation of the radio base station
`apparatus.
`
`Independent claim 3 of the ’878 patent recites:
`
`35.
`
`3. A communication method comprising:
`
`[a] receiving a connection request from a radio terminal
`apparatus; and
`
`[b] transmitting a frame to the radio terminal apparatus which has
`sent the connection request, the frame including (1) a signal
`indicating a reception operation adapted to a transmission
`operation of the radio base station apparatus and (2) data,
`
`[c] wherein the signal is a [bit] having first and second bit values
`of which specify first and second reception operations,
`respectively, one of the first and second bit values instructing the
`radio terminal apparatus to accept the frame only in a prescribed
`manner determined by the one bit value and adapted to a
`corresponding transmission operation of the radio base station
`apparatus.
`
`36. Claim 2 of the ’878 patent depends from claim 1. Claim 4 of the ’878
`
`patent depends from claim 3.
`
`
`
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`14
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`

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`VI. CLAIM CONSTRUCTION
`37. Petitioner and its expert have applied improper claim constructions in
`
`asserting invalidity of the challenged claims. While the claims should obtain their
`
`ordinary meaning, Petitioner and its expert have twisted the meaning to something
`
`very different from ordinary. As set forth below, when the claims are properly
`
`understood to obtain their (actual) ordinary and plain meaning, Petitioner’s
`
`arguments must be rejected.
`
`A.
`
`38.
`
`“wherein the signal is a [bit] having first and second bit values
`which specify first and second reception operations, respectively,
`one of the first and second bit values instructing the radio
`terminal apparatus to accept the frame only in a prescribed
`manner determined by the one bit value” (Claims 1 and 3)
`The Claim’s Plain Language Requires “first” and “second”
`1.
`Bit Values That “specify” Distinct “first” and “second”
`Reception Operations
`I understand that under the broadest reasonable interpretation standard,
`
`words of the claim must be given their plain meaning, unless such meaning is
`
`inconsistent with the specification. Here, the patentee chose to use multiple plain-
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`English terms to define the scope of this claim limitation. The term “specify” is a
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`plain-English term a POSITA would understand to mean “identify” or “indicate.”
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`The ’878 patent specification supports this definition. (Ex. 1001 at 12:45-46; 12:53;
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`12:60; 12:64.)
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`39. The words “first,” “second,” and “respectively” are also plain-English
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`terms that a POSITA would understand to delineate the two—exactly two—
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`reception operations, one of which corresponds to one of the two recited bit values,
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`and the other of which corresponds to the other of the two recited bit values. The
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`patentee gave no special definitions in the specification or prosecution history for
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`these plain-English terms. Thus, by its plain language, the claim requires one bit
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`with two values that each identifies or indicates a single, unique reception operation.
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`This is the meaning that should be applied here.
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`2.
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`The “second” Reception Operation Cannot Merely Be the
`Negation of the “first” Reception Operation
`40. Petitioner appears to interpret the mere negation or absence of one
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`reception operation as the recited “second” reception operation, but interpreting the
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`claim this way would contradict its plain language.
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`41. As explained above, the claimed bit must specify exactly two
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`operations, one each for its first and second values. A negative instruction does not
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`qualify because it is non-specific. The mere negation of a particular reception
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`operation permits all other reception operations aside from the negated operation, as
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`a POSITA would naturally understand. Thus, an instruction “not X” would only
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`eliminate one of many possible reception operations at the receiver, but it would lack
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`the specificity needed to inform the receiver which of the many remaining operations
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`to perform instead. Consequently, a bit signaling reception operation “X” with the
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`value “1” and “not X” with the value “0” would collectively cover all possible
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`reception operations (namely, “X” along with “anything else”), instead of specifying
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`“first and second reception operations, respectively,” as the claims require.
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`42. Even Petitioner’s expert, Dr. Wicker, conceded that in a scenario with
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`as few as three potential reception operations, an instruction not to perform one of
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`these operations would lack the specificity to inform the receiver which of the
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`remaining operations to perform. (Ex. 2003 at 55:23-56:7.)
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`43. The ’878 patent specification repeatedly refers to at least three potential
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`reception operations: adaptive array reception, diversity reception, and reception
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`with a single antenna. (Ex. 1001 at Figs. 14, 16, 22; 21:34-37; 21:60-22:3; 22:10-
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`45; 24:33-61.) Dr. Wicker recognized this fact. (Ex. 2003 at 62:5-13.)
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`44. Finally, despite its multiple figures and embodiments, the specification
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`does not disclose a single example of a negative instruction serving as a reception
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`operation within the meaning of the invention.
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`3.
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`An Indication That an Operation Is “Possible” or
`“Available” Is Not an Instruction to the Receiver to Accept
`a Frame “only in a prescribed manner determined by the
`one bit value”
`45. The plain language of the claims requires that one of the two claimed
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`bit values “instruct[s]” the receiver to accept a frame “only in a prescribed manner
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`determined by the one bit value.” Petitioner’s suggestion otherwise—that an
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`indication that an operation is possible would satisfy this element—should be
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`rejected.
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`17
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`46. A POSITA would understand “instructing” in its plain and ordinary
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`sense here; i.e., a statement expressing an imperative or directive. Statements of
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`possibility (e.g., “it might rain tomorrow”) or availability (e.g., “concert tickets
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`available”) do not qualify as instructions as a matter of plain English. A POSITA
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`would understand that such statements lack the imperative or directive of an
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`“instruction.”
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`47. Petitioner’s expert, Dr. Wicker, agrees. (Ex. 2003 at 64:24-65:15;
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`66:24-67:10.)
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`48. Moreover, the plain language of this limitation requires that the receiver
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`“accept the frame only in a prescribed manner determined by the one bit value.”
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`Thus, the claimed bit value—and not a process performed by the receiver
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`independent of the bit value—must determine how the receiver accepts the frame.
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`And this bit value must specify “a prescribed manner” in which the receiver must
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`receive a frame. The term “prescribed” likewise suggests a single manner, consistent
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`with the earlier limitation that each of two claimed bit values “specify a first and
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`second reception operation, respectively.”
`
`VII. ISHIDA DOES NOT ANTICIPATE CLAIMS 1-4 BECAUSE IT FAILS
`TO EXPRESSLY OR INHERENTLY DISCLOSE KEY FEATURES
`OF THE CHALLENGED CLAIMS
`Ishida does not expressly or inherently disclose the limitation “wherein
`49.
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`the signal is a [bit] having first and second bit values which specify first a