IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Aldana et al.
`In re Patent of:
`Attorney Docket No.: 18768-0186IP2
`8,416,862
`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. 18768-0186IP2
`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) .......................................... 1 
`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 ............... 3 
`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) ................ 11 
`A.  “a baseband processing module operable to…” ..................................... 12 
`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 ...................................................................................... 15 
`A.  Overview of Li-748 ................................................................................ 15 
`B.  Overview of Tong ................................................................................... 18 
`C.  Overview of Mao .................................................................................... 22 
`D.  Obviousness in view of Li-748, Tong, and Mao .................................... 24 
`VIII.  GROUND 2: CLAIMS 9-12 ARE OBVIOUS OVER TONG AND MAO
` ....................................................................................................................... 38 
`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 ................................................ 50 
`
`i
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`X.  GROUND 4: CLAIM 10 IS OBVIOUS IN VIEW OF LI-054, MAO,
`AND YANG .................................................................................................. 58 
`A.  Overview of Yang ................................................................................... 58 
`B.  Obviousness in view of Li-054, Mao, and Yang .................................... 59 
`XI.  GROUND 5: CLAIMS 9 AND 11-12 ARE OBVIOUS IN VIEW OF
`POON AND MAO ....................................................................................... 61 
`A.  Overview of Poon ................................................................................... 61 
`B.  Obviousness in view of Poon and Mao .................................................. 63 
`XII.  CONCLUSION .............................................................................................. 71 
`
`
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 18768-0186IP2
`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. 18768-0186IP2
`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. 18768-0186IP2
`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. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`
`I.
`INTRODUCTION
`LG Electronics, Inc. (“LG” or “Petitioner”) petitions for Inter Partes Review
`
`(“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)
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Mobile Research
`
`U.S.A., LLC, are the real parties-in-interest. No other parties had access to or con-
`
`trol over the present Petition, and no other parties funded the present Petition.
`
`B. Related Matters Under 37 C.F.R. §42.8(b)(2)
`Bell Northern Research, LLC (“BNR”)—the alleged Patent Owner—filed a
`
`complaint in the U.S. District Court for the Southern District of California (Case
`
`1
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`3:18-cv-2864) against LG Electronics Mobile Research U.S.A., LLC, LG Electron-
`
`ics U.S.A. Inc., LG Electronics, Inc. asserting eight patents, including the ’862 pa-
`
`tent.
`
`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); Huawei Technologies Co.,
`
`Ltd., Huawei Device (Hong Kong) Co., Ltd., and Huawei Device USA, Inc. (3:18-
`
`cv-01784); Kyocera Corporation and Kyocera International Inc. (3:18-cv-1785);
`
`and ZTE Corporation, ZTE (USA) Inc., and ZTE (TX) Inc. (3:18-cv-1786). Peti-
`
`tioner is not a real party-in-interest to any of these above-listed district court pro-
`
`ceedings. 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 Peti-
`
`tioner.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`Timothy W. Riffe, Reg. No. 43,881
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax 877-769-7945
`riffe@fr.com
`IPR18768-0186IP2@fr.com
`
`Backup counsel
`Christopher C. Hoff, Reg. No. 67,738
`Tel: 612-335-5070
`PTABInbound@fr.com
`
`R. Andrew Schwentker, Reg. No.
`59,402
`Tel: 202-783-5070
`PTABInbound@fr.com
`
`2
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR18768-0186IP2@fr.com
`
`(referencing No. 18768-0186IP2) and cc’ing riffe@fr.com and
`
`PTABInbound@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.
`
`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)
`
`2
`
`9-12
`
`§103 – Tong in view of Mao
`
`3
`
`

`

`Ground
`3
`
`‘862 Patent Claims
`9, 11-12
`
`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`Basis for Rejection
`§103 – Li-054 (EX1007) in view of Mao
`
`4
`
`5
`
`10
`
`§103 – Li-054 in view of Mao and Yang
`
`(EX1008)
`
`9, 11-12
`
`§103 – Poon (EX1009) in view of Mao
`
`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
`
`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
`
`4
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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
`
`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.
`
`
`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.
`
`5
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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-
`
`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.
`
`6
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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
`
`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
`
`7
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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.
`
`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
`
`8
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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
`
`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
`
`9
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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
`
`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
`
`10
`
`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`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
`
`filing date of the ’686 provisional filed on July 13, 2005 (the “Critical Date”). Id.
`
`Regardless, even if the claims of the ’862 patent were entitled to the ’451
`
`provisional date of April 21, 2005, Petitioner notes that the prior art publications
`
`cited in this Petition also predate April 21, 2005.
`
`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
`
`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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`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. Patent Owner and other parties submitted briefing on claim con-
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`struction issues in other district court litigation. EX1017, EX1018. A Markman
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`11
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`

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`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`hearing was held in that other litigation on June 19-20, 2019.2 See EX1020. In
`
`that other district court proceedings, another party proposed that formal construc-
`
`tions should be adopted for two claim phrases of the ’862 patent—(1) “a baseband
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`processing module operable to…” and (2) “decompose the estimated transmitter
`
`beamforming unitary matrix (V) to produce the transmitter beamforming infor-
`
`mation.” As explained below, that Court indicated that no such constructions for
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`the ’862 patent claims were required under the Phillips standard because the plain
`
`and ordinary meaning of the claim language was recognizable without adoption of
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`any formal construction. 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
`
`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…”
`Another party previously argued in the another litigation that this term
`
`should be interpreted under §112, ¶6, but the Court in that litigation explained that,
`
`
`2 The Court has issued a claim construction order (EX1022).
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`12
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`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`according to the Phillips standard, it was not a means-plus-function element.
`
`EX1020, 107:10-109:25, 114:24-115:15, 116:11-17; EX1019, 17:13-23:15. Spe-
`
`cifically, the other Court agreed with Patent Owner that “a baseband processing
`
`module” was a known and recognizable structure, so the term was not subject to
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`§112, ¶6. EX1020, 111:4-114:22; 116:18-118:5 (“THE COURT: … I don’t see
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`this as a 112, 6 issue. This is a known processing baseband processing module.”).
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`According to the other Court’s determination under the Phillips standard,
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`Petitioner recognizes that this term will be interpreted according to its plain and or-
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`dinary meaning without any formal construction. Wellman, 642 F.3d at 1361.
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`However, if the Board decides this claim phrase is a means-plus-function element,
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`this Petition satisfies 37 CFR §42.104(b)(3) by identifying columns 7-8 as the
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`“specific portions of the specification that describe the structure” corresponding to
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`the recited baseband processing. EX1001, 7:56-59 (“baseband processing module
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`100, in combination with operational instructions stored in memory 65, executes
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`digital receiver functions and digital transmitter functions”), 8:1-3 (“may be imple-
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`mented using one or more processing devices”). As detailed below, the evidence
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`here confirms significant overlap between the preferred embodiment of the ’862
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`patent and each of the Li-748, Tong, Li-054, and Poon references. Infra, Sections
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`VII-IX, XI. Thus, regardless of whether “a baseband processing module” was sub-
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`ject to §112, ¶6, Grounds 1-5 set forth why this element was provided the prior art
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`13
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`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`publications in the same manner it was described in the ’862 patent specification.
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`See EX1020, 111:4-10 (Patent Owner admitting this element “essentially was well
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`known in the art and its actual operation was well known”).
`
`B.
`
`“decompose the estimated transmitter beamforming unitary
`matrix (V) to produce the transmitter beamforming infor-
`mation”
`Another party previously contended in another litigation that this term
`
`should be construed as “factor the estimated transmitter beamforming unitary ma-
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`trix (V) to produce a reduced number of quantized coefficients” (EX1017, 26-30),
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`and that party cited to cols. 4:15-20, 9:59-62, 10:2-6, 10:38-60, 13:65-14:3, 14:31-
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`37, and 14:63-15:8 and the Abstract of the ’862 patent to show why this construc-
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`tion was consistent with the specification’s description of using a “Givens rotation”
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`for the decompose operation. See EX1017, 27:11-29:3. The Court in that other lit-
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`igation subsequently indicated that no construction of this claim phrase was re-
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`quired under the Phillips standard because the plain and ordinary meaning of the
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`claim language was recognizable without adoption of any formal construction.
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`EX1020, 104:23-105:2, 106:20-25, 107:3-9 (“Assume the Court will not construe
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`that claim any further, that that language of ‘transmitter beamforming information’
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`is what it is and that a person of skill in the art would understand that is the result
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`of the decomposition of the estimated transmitter beamforming matrix”).
`
`14
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`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`According to that other Court’s determination under the Phillips standard,
`
`Petitioner understands that this term will be interpreted according to its plain and
`
`ordinary meaning without any formal construction. Wellman, 642 F.3d at 1361.
`
`To the extent that it is interpreted in this manner as indicated by the Court, Peti-
`
`tioner notes that Grounds 1-5 fall within the scope of this “decompose” operation.
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`Alternatively, even if the Board disagreed with the other Court’s determination
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`(and applies the formal construction set forth above), Petitioner notes that the prior
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`art in Grounds 1-2 fall within the scope of this “decompose” operation because the
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`prior art provides the same type of “Givens rotation” mentioned in the ’862 patent.
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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
`
`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-
`
`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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`15
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`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`
`
`
`Id., FIG. 1.
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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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`16
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`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`
`
`
`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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`decoding complexity.” Id., 2:44-47. “The current channel state information may
`
`be represented by … unitary beamforming matrix V determined using a singular
`
`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.
`
`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 n-vector of code
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`bits for n data streams; x is the transmitted signal vector on the antennas; H is the
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`channel matrix; H’s singular value decomposition is H=UDV’; U and V are uni-
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`tary; D is a diagonal matrix[.]” Id., 3:19-32. In particular, Li-748 states that to
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`17
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`

`

`Attorney Docket No. 18768-0186IP2
`IPR of U.S. Patent No. 8,416,862
`“obtain V at the transmitter, the transmitter may send training symbols to the re-
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`ceiver; the receiver may evaluate H, compute the matrix V’; and the receiver may
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`feedback parameters representing V to the transmitter.” Id., 3:32-35.
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`Li-748 further teaches feedback bandwidth is reduced because “the beam-
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`forming matrix V is represented by” fewer real numbers. Id.,