IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Aldana et al.
`In re Patent of:
`8,416,862 Attorney Docket No.: 35548-0097IP1
`U.S. Patent No.:
`April 9, 2013
`
`Issue Date:
`Appl. Serial No.: 11/237,341
`
`Filing Date:
`September 28, 2005
`
`Title:
`EFFICIENT FEEDBACK OF CHANNEL INFORMATION IN A
`CLOSED LOOP BEAMFORMING WIRELESS COMMUNICA-
`TION SYSTEM
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,416,862 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`TABLE OF CONTENTS
`
`
`
`V. 
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................... 1 
`A.  Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1) .............................. 1 
`B.  Related Matters Under 37 C.F.R. §42.8(b)(2) .......................................... 2 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ...................... 2 
`D.  Service Information .................................................................................. 3 
`III.  PAYMENT OF FEES – 37 C.F.R. §42.103 .................................................... 3 
`IV.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 3 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 4 
`SUMMARY OF THE ’862 PATENT ............................................................. 4 
`A.  Background ............................................................................................... 4 
`B.  Brief Description ....................................................................................... 6 
`C.  Summary of the Prosecution History ........................................................ 9 
`D.  Critical Date ............................................................................................ 10 
`E.  Definition of a Person Having Ordinary Skill in the Art ........................ 11 
`VI.  CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3) ................ 12 
`A.  “a baseband processing module operable to…” ..................................... 13 
`B.  “decompose the estimated transmitter beamforming unitary matrix (V)
`to produce the transmitter beamforming information” ........................... 14 
`VII.  GROUND 1: CLAIMS 9-12 ARE OBVIOUS IN VIEW OF LI-748,
`TONG, AND MAO ...................................................................................... 16 
`A.  Overview of Li-748 ................................................................................ 16 
`B.  Overview of Tong ................................................................................... 18 
`C.  Overview of Mao .................................................................................... 23 
`D.  Obviousness in view of Li-748, Tong, and Mao .................................... 25 
`VIII.  GROUND 2: CLAIMS 9-12 ARE OBVIOUS OVER TONG AND MAO
` ....................................................................................................................... 39 
`IX.  GROUND 3: CLAIMS 9, 11, AND 12 ARE OBVIOUS OVER LI-054
`AND MAO .................................................................................................... 48 
`A.  Overview of Li-054 ................................................................................ 48 
`B.  Obviousness in view of Li-054 and Mao ................................................ 51 
`
`i
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`X.  GROUND 4: CLAIM 10 IS OBVIOUS IN VIEW OF LI-054, MAO,
`AND YANG .................................................................................................. 59 
`A.  Overview of Yang ................................................................................... 59 
`B.  Obviousness in view of Li-054, Mao, and Yang .................................... 60 
`XI.  GROUND 5: CLAIMS 9 AND 11-12 ARE OBVIOUS IN VIEW OF
`POON AND MAO ....................................................................................... 62 
`A.  Overview of Poon ................................................................................... 62 
`B.  Obviousness in view of Poon and Mao .................................................. 64 
`XII.  CONCLUSION .............................................................................................. 71 
`
`
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`
`
`
`EXHIBITS
`
`EX1001
`
`U.S. Pat. No. 8,416,862 to Aldana et al. (“the ’862 patent”)
`
`EX1002
`
`Prosecution History of the ’862 patent (Serial No. 11/237,341)
`
`EX1003
`
`Declaration of Dr. Jonathan Wells
`
`EX1004
`
`U.S. Pat. No. 7,236,748 to Li et al. (“Li-748”)
`
`EX1005
`
`U.S. Pub. No. 2008/0108310 to Tong et al. (“Tong”)
`
`EX1006
`
`U.S. Pat. No. 7,312,750 to Mao et al. (“Mao”)
`
`EX1007
`
`U.S. Pub. No. 2006/0092054 to Li et al. (“Li-054”)
`
`EX1008
`
`Yang et al., Reducing the Computations of the Singular Value De-
`composition Array Given by Brent and Luk, SIAM J. MATRIX ANAL.
`APPL., Vol. 12, No. 4, pp. 713-725, Oct. 1991 (“Yang”)
`
`EX1009
`
`U.S. Pat. No. 7,710,925 to Poon (“Poon”)
`
`EX1010
`
`EX1011
`
`EX1012
`
`U.S. Provisional Application Serial No. 60/673,451 (“’451 provi-
`sional”)
`
`U.S. Provisional Application Serial No. 60/698,686 (“’686 provi-
`sional”)
`
`U.S. Provisional Application Serial No. 60/614,621 (“’621 Provi-
`sional”)
`
`iii
`
`

`

`EX1013
`
`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`U.S. Provisional Application Serial No. 60/619,461 (“’461 Provi-
`sional”)
`
`EX1014
`
`U.S. Patent Application Serial No. 11/168,793 (“’793 application”)
`
`EX1015
`
`EX1016
`
`EX1017
`
`EX1018
`
`Plaintiff Bell Northern Research, LLC’s Patent Rule 3-1 and 3-2 Dis-
`closure of Asserted Claims and Infringement Contentions Against the
`Huawei Defendants in Bell Northern Research, LLC, v. Huawei De-
`vice (Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co., Ltd., and
`Huawei Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`Defendants’ Invalidity Contentions in Bell Northern Research, LLC,
`v. Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen)
`Co., Ltd., and Huawei Device USA, Inc. (Case No. 3:18-cv-1784)
`(S.D.Cal.)
`
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei De-
`vice (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case No.
`3:18-cv-1784) (S.D.Cal.)
`
`Plaintiff’s Opening Claim Construction Brief in Bell Northern Re-
`search, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei Device
`(Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case No. 3:18-
`cv-1784) (S.D.Cal.)
`
`EX1019
`
`Defendants’ Memorandum of Points and Authorities in Support of
`Their Joint Motion for Summary Judgement on Indefiniteness in Bell
`Northern Research, LLC, v. Huawei Device (Dongguan) Co., Ltd.,
`
`iv
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc.
`(Case No. 3:18-cv-1784) (S.D.Cal.)
`
`EX1020
`
`Transcript of Claim Construction Hearing, Day Two, Volume Two,
`Pages 1-122 in Bell Northern Research, LLC, v. Huawei Technologies
`CO., LTD., Huawei Device (Hong Kong) CO., LTD., and Huawei De-
`vice USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`EX1021
`
`Declaration of Jacob Munford
`
`
`
`
`v
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`
`I.
`INTRODUCTION
`Huawei Technologies Co., Ltd. (“Petitioner”) petitions for Inter Partes Re-
`
`view (“IPR”) of claims 9-12 (“the Challenged Claims”) of U.S. Patent 8,416,862
`
`(“the ’862 patent”). The’862 patent describes wirelessly “feeding back transmitter
`
`beamforming information” from a receiving device to a transmitting device.
`
`EX1001, Abstract. The device claimed in the ’862 patent was a conventional vari-
`
`ation of typical devices at the time of the alleged priority date—certainly not an in-
`
`novative achievement worthy of a patent exclusivity. KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 427 (2007). Grounds 1-5 set forth in this Petition raise prior art
`
`combinations never previously considered by the Patent Office in any examina-
`
`tion/proceeding involving the ’862 patent. If they had been, the ’862 patent never
`
`would have issued. Petitioner therefore requests the Board to institute IPR of the
`
`Challenged Claims.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`A. Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1)
`Huawei Technologies Co., Ltd.; Huawei Device USA, Inc.; Huawei Invest-
`
`ment & Holding Co., Ltd.; Huawei Device (Shenzhen) Co., Ltd.; Huawei Device
`
`Co., Ltd.; Huawei Tech. Investment Co., Ltd.; and Huawei Device (Hong Kong)
`
`Co., Ltd. are the real parties-in-interest. No other parties had access to or control
`
`over the present Petition, and no other parties funded the present Petition.
`
`1
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`B. Related Matters Under 37 C.F.R. §42.8(b)(2)
`Bell Northern Research, LLC (hereinafter, “BNR”)—the alleged Patent
`
`Owner—filed a complaint on August 1, 2018 in the U.S. District Court for the
`
`Southern District of California (Case No. 3:18-cv-01784-CAB-BLM) against
`
`Huawei Technologies Co., Ltd., Huawei Device (Hong Kong) Co., Ltd., and
`
`Huawei Device USA, Inc., asserting 6 patents, including the ’862 patent. The
`
`complaint was served on August 3, 2018.
`
`BNR also filed complaints in the Southern District of California alleging in-
`
`fringement of the ’862 patent by other parties: Coolpad Technologies, Inc. and
`
`Yulong Computer Communications (3:18-cv-1783); Kyocera Corporation and
`
`Kyocera International Inc. (3:18-cv-1785); and ZTE Corporation, ZTE (USA) Inc.,
`
`and ZTE (TX) Inc. (3:18-cv-1786). Petitioner is not a real party-in-interest to any
`
`of these above-listed district court proceedings. After the above suits were filed,
`
`BNR sued LG Electronics, Inc. et al. (3:18-cv-2864), though this later case is on a
`
`separate schedule from the earlier cases. Also, none of the parties in these district
`
`court proceedings is a real party-in-interest in the proceedings involving Petitioner
`
`or in privity with Petitioner.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`2
`
`

`

`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`
`Tel: 612-337-2569 / hawkins@fr.com
`
`
`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`Jennifer Huang, Reg. No. 64,297
`Tel: 612-766-2094 / jhuang@fr.com
`
`Kim Leung, Reg. No. 64,399
`Tel: 858-678-4713 / leung@fr.com
`
`Jason W. Wolff, Reg. No. 43,281
`Tel: 858-678-4719 / wolff@fr.com
`
`Christopher Hoff, Reg. No. 67,738
`Tel: 612-766-2066 / hoff@fr.com
`
`
`Craig Deutsch, Reg. No. 69,264
`Tel: 612-278-4514 / deutsch@fr.com
`
`Sangki Park, Reg. No. 77,261
`Tel: 612-638-5763 / spark@fr.com
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR35548-0097IP1@fr.com
`
`(referencing No. 35548-0097IP1 and cc’ing PTABInbound@fr.com and
`
`hawkins@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. §42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`the petition fee set in 37 C.F.R. §42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’862 patent is available for IPR and that Peti-
`
`tioner is not barred or estopped from requesting IPR.
`
`3
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Re-
`quested
`Petitioner requests an IPR of claims 9-12 on the grounds listed below, and
`
`requests that the Challenged Claims be found unpatentable. In support, this peti-
`
`tion includes a declaration of Jonathan Wells (EX1003).
`
`Ground
`1
`
`‘862 Patent Claims
`9-12
`
`Basis for Rejection
`§103 – Li-748 (EX1004) in view of Tong
`
`(EX1005) and Mao (EX1006)
`
`9-12
`
`§103 – Tong in view of Mao
`
`9, 11-12
`
`§103 – Li-054 (EX1007) in view of Mao
`
`10
`
`§103 – Li-054 in view of Mao and Yang
`
`(EX1008)
`
`9, 11-12
`
`§103 – Poon (EX1009) in view of Mao
`
`2
`
`3
`
`4
`
`5
`
`V.
`
`SUMMARY OF THE ’862 PATENT
`A. Background
`The ’862 patent explains that a typical “transceiver (i.e., receiver and trans-
`
`mitter)” for a wireless communication device was “coupled to the antenna” and in-
`
`cluded a low noise amplifier, and intermediate frequency, filtering, and data recov-
`
`ery stages. EX1001, 1:60-67; 2:1-10 (conventional conversion of “the amplified
`
`4
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`RF signal into baseband signals”). The ’862 patent acknowledges such transceiv-
`
`ers traditionally incorporated beamforming, “a processing technique to create a fo-
`
`cused antenna beam by shifting a signal in time or in phase to provide gain of the
`
`signal in a desired direction to attenuate the signal in other directions.” Id., 2:66-
`
`3:4. The ’862 patent explains that “[i]n order for a transmitter to properly imple-
`
`ment beamforming (i.e., determine the beamforming matrix [V]), it needs to know
`
`properties of the channel over which the wireless communication is conveyed,” so
`
`the “receiver must provide feedback information for the transmitter to determine
`
`the properties of the channel.” Id., 3:14-19; EX1003, ¶28. The receiver may send
`
`feedback to the transmitter by “determin[ing] a channel response (H)” and provid-
`
`ing it “as the feedback information.” EX1001, 3:19-22; EX1003, ¶28. This meth-
`
`odology was known to result in feedback data packs that were “so large that, dur-
`
`ing the time it takes to send it to the transmitter, the response of the channel has
`
`changed.” EX1001, 3:22-25. To reduce feedback size, conventional receivers “de-
`
`compose[d] the channel using singular value decomposition (“SVD”) and sen[t] in-
`
`formation relating only to a calculated value of the transmitter’s beamforming ma-
`
`trix (V) as the feedback information.” Id., 3:26-30; EX1003, ¶28. To reduce feed-
`
`back size, a conventional practice was for the receiver to calculate the matrix V
`
`5
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`based on H=UDV*,1 where H is the channel response matrix, D is a diagonal ma-
`
`trix, and U is a receiver unitary matrix, and only send information about matrix V.
`
`EX1003, 3:30-33; EX1003, ¶28.
`
`According to the ’862 patent, “[w]hile this approach reduces the size of the
`
`feedback information, its size is still an issue for a MIMO wireless communica-
`
`tion.” Id., 3:33-35. The ’862 patent alleged “a need” existed “for reducing beam-
`
`forming feedback information for wireless communications” (col. 3:49-51), but
`
`this allegation ignored the state of the art at that time. EX1003, ¶28.
`
`B.
`Brief Description
`The ’862 patent describes a wireless communication system 10 including a
`
`plurality of base stations 12, 16, wireless communication devices 18-32, and a net-
`
`work hardware component 34. EX1001, FIG. 1, 4:24-27. These base stations are
`
`coupled to the network hardware 34, which “provides the base station … with con-
`
`
`1 Each of the matrices H, U, D (also referred to as Σ), and V were referred to by
`
`various terminology in the art and the ’862 patent. While the colloquial terms for
`
`each of the matrices might have varied, a POSITA would have understood that
`
`they each identified the same respective matrix in this common equation. EX1003,
`
`¶[¶53-56.
`
`6
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`nectivity to other devices within the system.” Id., 4:46-52. Each of the base sta-
`
`tions antenna(s) to “communicate with the wireless communication devices.” Id.,
`
`4:52-55.
`
`
`
`The ’862 patent illustrates a wireless communication device that includes a
`
`host device 18-32 and a radio 60. Id., FIG. 3, 7:21-27. The host device includes “a
`
`processing module 50, memory 52, [and] radio interface 54.” Id., 7:28-30. The ra-
`
`dio interface “allows data to be received from and sent to the radio,” “provides the
`
`data to the processing module 50 for further processing,” and “provides data from
`
`the processing module 50 to the radio 60.” Id., 7:36-40, 7:43-44.
`
`
`
`As shown in Figure 3, the radio includes “a baseband processing module
`
`100, memory 65, a plurality of radio frequency (RF) transmitters 106-110, a trans-
`
`mit/receive (T/R) module 114, a plurality of antennas 81-85, [and] a plurality of
`
`RF receivers 118-120.” Id., 7:51-56. The baseband processing module and opera-
`
`tional instructions stored in memory 65 execute digital receiver/transmitter func-
`
`tions, including, for example “digital intermediate frequency to baseband conver-
`
`sion.” Id., 7:56-64.
`
`
`
`The baseband processing module is “implemented using one or more pro-
`
`cessing devices,” which “may be a microprocessor, micro-controller, … digital cir-
`
`cuitry,” and the like. Id., 8:1-9. In operation, in the receive mode, the “baseband
`
`processing module 100, based on the mode selection signal 102 produces one or
`
`7
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`more outbound symbol streams 104 from the outbound data 94.” Id., 8:46-48. It
`
`further “converts the inbound symbol streams 124 into inbound data 92, which is
`
`provided to the host device 18-32.” Id., 9:9-12.
`
`Figure 7 of the ’862 patent discloses providing beamforming feedback infor-
`
`mation from a receiver to a transmitter, which “addresses the feed back of ob-
`
`served transmitter beamforming information from a receiving wireless communi-
`
`cation device to a transmitting wireless communication device.” Id., 13:25-32;
`
`FIG. 7. The ’862 patent specifically admits that the steps of Figure 7 are “typically
`
`performed by a baseband processing module” of a receiving wireless device. Id.,
`
`13:25-35; FIG. 7.
`
`The ’862 patent states that the method includes a number of conventional
`
`steps, including receiving a preamble and estimating a channel response H at the
`
`receiver 702, and estimating the transmitter beamforming matrix V based on the
`
`channel response H and the receiver beamforming unitary matrix U at 704. Id.,
`
`13:36-47. The ’862 patent explains that the “channel response (H), estimated
`
`transmitter beamforming unitary matrix (V), and the known receiver beamforming
`
`unitary matrix (U) are related” by a well-known singular value decomposition
`
`(SVD) equation: “H=UDV*, where, D is a diagonal matrix,” in order to determine
`
`the estimated transmitter beamforming unitary matrix (V). Id., 13:47-53; EX1003,
`
`¶¶28, 39, 53.
`
`8
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`To purportedly address the need to reduce beamforming feedback infor-
`
`mation, the ’862 patent proposed a solution that was already known—decomposing
`
`the estimated transmitter beamforming unitary matrix (V) using, for example, a
`
`“Givens Rotation.” Id., 13:58-67; EX1003, ¶39. The ’862 patent explains that if a
`
`Givens Rotation is used, “the coefficients of the Givens Rotation and the phase
`
`matrix coefficients serve as the transmitter beamforming information that is sent
`
`from” the receiver to the transmitter. EX1001, 15:34-38. In particular, the trans-
`
`mitter beamforming information are the products of the Givens Rotation (“the set
`
`of angles … are reduced”). Id., 13:63-14:3; see also 14:34-36; EX1003, ¶39. Us-
`
`ing these techniques, “the feedback of transmitter beamforming information” re-
`
`quires less data. Id., 15:59-61. However, as explained in Grounds 1-5 of this Peti-
`
`tion, such a solution was plainly suggested in prior art publications, including a
`
`disclosure of using a “Givens Rotation” in the same manner.
`
`C.
`Summary of the Prosecution History
`The ’862 patent was filed with 20 claims, which were all rejected as obvious
`
`based on at least US 2002/0187753 to Kim et al. and US 2004/0042558 to Hwang
`
`et al. EX1002, 176-219, 153-164. In response, Applicant presented arguments
`
`without amendments, arguing that Kim “does not teach or suggest any mechanism
`
`for ‘producing the transmitter beamforming information’ from the decomposed, es-
`
`timated transmitter beamforming unitary matrix (V).” Id., 148-150. The examiner
`
`9
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`maintained his rejection, after which Applicant filed a response after final, arguing
`
`Kim’s purported shortcomings. Id., 133-145, 125-129. When the examiner again
`
`maintained the rejection, Applicant appealed. Id., 120-124. In its Appeal Brief,
`
`Applicant argued that Kim discloses “a method of determining the ‘transmission
`
`power’ to be allocated to each of the transmit antennas,” and not “any mechanism
`
`for determining transmitter beamforming information.’” Id., 91-92. The Patent
`
`Board agreed with Applicant and reversed the rejections. Id., 37-46. The ’862 pa-
`
`tent was allowed on December 28, 2012, with claims 9-12 remaining unamended
`
`throughout prosecution. Id., 22-30.
`
`D. Critical Date
`The ’862 patent issued on April 9, 2013, from U.S. Patent Application No.
`
`11/237,341 (“the ‘341 application”), which was filed on September 28, 2005.
`
`EX1001, cover page. It is a continuation-in-part of U.S. Application Serial No.
`
`11/168,793 (“’793 application”, EX1014), and claims priority to U.S. Provisional
`
`Application Serial No. 60/673,451 (“’451 provisional”, EX1010), filed April 21,
`
`2005, and U.S. Provisional Application Serial No. 60/698,686 (“’686 provisional”,
`
`EX1011), filed July 13, 2005. However, the evidence here demonstrates that the
`
`Challenged Claims require at least one feature that was never contemplated in the
`
`earlier ’451 provisional (filed April 21, 2005) or the ’793 application (filed June
`
`10
`
`

`

`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`28, 2005). EX1003, ¶¶48-50. Specifically, independent claim 9 recites “a base-
`
`band processing module operable to: … decompose the estimated transmitter
`
`beamforming unitary matrix (V)…” EX1001, 17:20, 17:28-30. The evidence here
`
`confirms that the ’451 provisional and the ’793 application are both silent with re-
`
`spect to decomposing matrix V. EX1003, ¶49; see, generally EX1010, EX1014.
`
`To the extent any of the earlier applications provide support for this element, only
`
`the later-filed ’686 provisional application on July 13, 2005 would arguably pro-
`
`vide a first disclosure of this claim requirement. EX1003, ¶50; EX1011, 22:3-5.
`
`Therefore, even if the ’642 patent was entitled to the filing date of one of which
`
`provisional applications, the Challenged Claims would be entitled at most to the
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`filing date of the ’686 provisional filed on July 13, 2005 (the “Critical Date”). Id.
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`Regardless, even if the claims of the ’862 patent were entitled to the ’451
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`provisional date of April 21, 2005, Petitioner notes that the prior art publications
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`cited in this Petition also predate April 21, 2005.
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`E. Definition of a Person Having Ordinary Skill in the Art
`For purposes of this IPR, Petitioner submits that a person of ordinary skill in
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`the art at the time of the alleged invention (a “POSITA”) would have had Bache-
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`lor’s degree in Electrical Engineering, Computer Engineering, Computer Science,
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`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`or a related field, and at least 2-4 years of experience in the field of wireless com-
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`munication, or a person with equivalent education, work, or experience in this
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`field. EX1003, ¶23.
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`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
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`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`C.F.R. § 42.100. The parties submitted briefing on claim construction issues in the
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`district court litigation. EX1017, EX1018. A Markman hearing was held on June
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`19-20, 2019.2 See EX1020. Petitioner notifies the Board here that in the district
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`court proceedings, Petitioner proposed that formal constructions should be adopted
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`for two claim phrases of the ’862 patent—(1) “a baseband processing module oper-
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`able to…” and (2) “decompose the estimated transmitter beamforming unitary ma-
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`trix (V) to produce the transmitter beamforming information.” As explained be-
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`low, the Court indicated that no such constructions for the ’862 patent claims were
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`required under the Phillips standard because the plain and ordinary meaning of the
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`
`2 The Court has not yet issued a claim construction order, so Petitioner cites to the
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`Markman hearing transcript (EX1020), in which the Court provided indications of
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`some claim constructions under the Phillips standard. Petitioner will provide the
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`Board with a copy of the order when it is available.
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`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`claim language was recognizable without adoption of any formal construction.
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`EX1020, 104:23-107:3-9 and 111:4-114:22.
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`Here, the prior art grounds fall within the scope of the claims regardless of
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`whether the proposed formal construction is adopted. Thus, Petitioner recognizes
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`the Board may likewise determine that no formal claim constructions are necessary
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`at institution because “claim terms need only be construed to the extent necessary
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`to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
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`1361 (Fed. Cir. 2011).
`
`A.
`“a baseband processing module operable to…”
`Petitioner previously argued in the concurrent litigation that this term should
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`be interpreted under §112, ¶6, but the Court explained that, according to the Phil-
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`lips standard, it was not a means-plus-function element. EX1020, 107:10-109:25,
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`114:24-115:15, 116:11-17; EX1019, 17:13-23:15. Specifically, the Court agreed
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`with Patent Owner that “a baseband processing module” was a known and recog-
`
`nizable structure, so the term was not subject to §112, ¶6. EX1020, 111:4-114:22;
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`116:18-118:5 (“THE COURT: … I don’t see this as a 112, 6 issue. This is a known
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`processing baseband processing module.”).
`
`According to the Court’s determination under the Phillips standard, Peti-
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`tioner recognizes that this term will be interpreted according to its plain and ordi-
`
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`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`nary meaning without any formal construction. Wellman, 642 F.3d at 1361. How-
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`ever, if the Board decides this claim phrase is a means-plus-function element, this
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`Petition satisfies 37 CFR §42.104(b)(3) by identifying columns 7-8 as the “specific
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`portions of the specification that describe the structure” corresponding to the re-
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`cited baseband processing. EX1001, 7:56-59 (“baseband processing module 100,
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`in combination with operational instructions stored in memory 65, executes digital
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`receiver functions and digital transmitter functions”), 8:1-3 (“may be implemented
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`using one or more processing devices”). As detailed below, the evidence here con-
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`firms significant overlap between the preferred embodiment of the ’862 patent and
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`each of the Li-748, Tong, Li-054, and Poon references. Infra, Sections VII-IX, XI.
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`Thus, regardless of whether “a baseband processing module” was subject to §112,
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`¶6, Grounds 1-5 set forth why this element was provided the prior art publications
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`in the same manner it was described in the ’862 patent specification. See EX1020,
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`111:4-10 (Patent Owner admitting this element “essentially was well known in the
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`art and its actual operation was well known”).
`
`B.
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`“decompose the estimated transmitter beamforming unitary
`matrix (V) to produce the transmitter beamforming infor-
`mation”
`Petitioner previously contended in the litigation that this term should be con-
`
`strued as “factor the estimated transmitter beamforming unitary matrix (V) to pro-
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`duce a reduced number of quantized coefficients” (EX1017, 26-30), and Petitioner
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`14
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`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
`cited to cols. 4:15-20, 9:59-62, 10:2-6, 10:38-60, 13:65-14:3, 14:31-37, and 14:63-
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`15:8 and the Abstract of the ’862 patent to show why this construction was con-
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`sistent with the specification’s description of using a “Givens rotation” for the de-
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`compose operation. See EX1017, 27:11-29:3. The Court subsequently indicated
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`that no construction of this claim phrase was required under the Phillips standard
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`because the plain and ordinary meaning of the claim language was recognizable
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`without adoption of any formal construction. EX1020, 104:23-105:2, 106:20-25,
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`107:3-9 (“Assume the Court will not construe that claim any further, that that lan-
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`guage of ‘transmitter beamforming information’ is what it is and that a person of
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`skill in the art would understand that is the result of the decomposition of the esti-
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`mated transmitter beamforming matrix”).
`
`According to the Court’s determination under the Phillips standard, Peti-
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`tioner understands that this term will be interpreted according to its plain and ordi-
`
`nary meaning without any formal construction. Wellman, 642 F.3d at 1361. To
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`the extent that it is interpreted in this manner as indicated by the Court, Petitioner
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`notes that Grounds 1-5 fall within the scope of this “decompose” operation. Alter-
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`natively, even if the Board disagreed with the Court’s determination (and applies
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`the formal construction set forth above), Petitioner notes that the prior art in
`
`Grounds 1-2 fall within the scope of this “decompose” operation because the prior
`
`art provides the same type of “Givens rotation” mentioned in the ’862 patent.
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`Attorney Docket No. 35548-0097IP1
`IPR of U.S. Patent No. 8,416,862
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`EX1001, 13:58-67 (“Givens Rotation”).
`
`VII. GROUND 1: CLAIMS 9-12 ARE OBVIOUS IN VIEW OF LI-
`748, TONG, AND MAO
`A. Overview of Li-748
`Li-748 (EX1004) qualifies as prior art at least under §102(e) because it was
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`filed (September 30, 2004) before the Critical Date of the ’862 patent. EX1004,
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`cover page. Substantively, Li-748 discloses a “closed loop MIMO system” that re-
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`duces feedback bandwidth “by representing a beamforming matrix using orthogo-
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`nal generator matrices.” Id., Abstract. With reference to Figure 1 (reproduced be-
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`low), Li-748 teaches stations 102, 104, which are “part of a wireless local area net-
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`work” and “include multiple antennas.” Id., 1:50-52, 2:6.
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`Id., FIG. 1.
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`
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`Attorney Docket No. 35548-0097IP1
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`Figure 4 (reproduced below) shows a system that “may be a station capable
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`of representing beamforming matrices.” Id., 9:36-40. The system 400 “sends and
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`receives signals using antennas 410, and the signals are processed by the various
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`elements shown in FIG. 4.” Id., 9:55-57. It includes a physical layer (430) “cou-
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`pled to antennas 410 to interact with a wireless network” and includes “circuitry to
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`support the transmission and reception of radio frequency (RF) signals,” such as
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`“an RF receiver to receive signals and perform ‘front end’ processing.” Id., 9:55-
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`10:1. The system also includes a processor 460 that “reads instructions and data
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`from memory 470 and performs actions in response thereto.” Id., 10:7-17.
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`Id., FIG. 4.
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`In “closed loop systems, communications bandwidth is utilized to transmit
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`current channel state information between stations, thereby reducing the necessary
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`Attorney Docket No. 35548-0097IP1
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`decoding complexity.” Id., 2:44-47. “The current channel state information may
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`be represented by … unitary beamforming matrix V determined using a singular
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`value decomposition (SVD) algorithm.” Id., 2:52-54. The “receiver sends each el-
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`ement of the unitary matrix V back to the transmitter.” Id., 2:57-59.
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`Li-748 discloses that a “transmit beamforming matrix may be found using
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`SVD,” using the equations H=UDV’ and x=Vd, “where d is the