UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Ericsson Inc. (“Ericsson”),
`
`Petitioner,
`v.
`Uniloc 2017 LLC (“Uniloc”),
`
`Patent Owner
`
`_______________
`U.S. Patent No. 6,868,079
`_______________
`DECLARATION OF DR. VIJAY K. MADISETTI, PH.D.,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`ERICSSON v. UNILOC
`Ex. 1007 / Page 1 of 112
`
`

`

`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................................ 3
`I.
`QUALIFICATIONS ............................................................................................................. 4
`II.
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 11
`III.
`RELEVANT LEGAL STANDARDS ................................................................................ 13
`IV.
`A. Anticipation......................................................................................................................... 13
`B. Obviousness ........................................................................................................................ 15
`C. Claim Interpretation in Inter Partes Review ...................................................................... 17
`OVERVIEW OF THE ’079 PATENT ................................................................................ 18
`V.
`CLAIM CONSTRUCTION ................................................................................................ 22
`VI.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......................... 23
`VII.
`A. Ground #1: Claims 1, 5, 7, and 17 are unpatentable as obvious over Merakos in view of
`Kay and Alamouti ....................................................................................................................... 23
`1.
`Summary of Merakos ................................................................................................... 23
`2.
`Summary of Kay ........................................................................................................... 27
`3.
`Summary of Alamouti .................................................................................................. 32
`4.
`Reasons to Combine Merakos with Kay ...................................................................... 33
`5.
`Reasons to Combine Merakos and Kay with Alamouti ............................................... 50
`6.
`Claim 1 ......................................................................................................................... 55
`7.
`Claim 5 ......................................................................................................................... 73
`8.
`Claim 7 ......................................................................................................................... 83
`9.
`Claim 17 ....................................................................................................................... 87
`B. Ground #2: Claims 3 and 4 are unpatentable as obvious over the combination of Merakos
`in view of Kay, Alamouti, and Dent ........................................................................................... 92
`1.
`Summary of Dent.......................................................................................................... 93
`2.
`Reasons to Combine Merakos, Kay, and Alamouti with Dent ..................................... 94
`3.
`Claim 3 ......................................................................................................................... 98
`4.
`Claim 4 ....................................................................................................................... 101
`C. Ground #3: Claim 2 is unpatentable as obvious over the combination of Merakos in view
`of Kay, Alamouti, and Ling ...................................................................................................... 103
`1.
`Summary of Ling ........................................................................................................ 103
`2.
`Reasons to Combine Merakos, Kay, and Alamouti with Ling ................................... 104
`3.
`Claim 2 ....................................................................................................................... 107
`VIII. DECLARATION .............................................................................................................. 112
`
`2
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`Ex. 1007 / Page 2 of 112
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`
`
`I.
`
`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`INTRODUCTION
`1. My name is Vijay K. Madisetti, and I have been retained by counsel
`
`for Ericsson Inc. (“Petitioner,” “Ericsson”) as a technical expert in connection with
`
`the proceeding identified above. I submit this declaration in support of Ericsson’s
`
`Petition for Inter Partes Review of U.S. Patent No. 6,868,079 (“the ’079 Patent”).
`
`2.
`
`I am being compensated for my time in this matter at an hourly rate. I
`
`am also being reimbursed for reasonable and customary expenses associated with
`
`my work and testimony in this matter. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony. I have no personal or
`
`financial stake or interest in the outcome of the present proceeding.
`
`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) The ’079 Patent, Ex. 1001;
`
`(2) The Prosecution History of the ’079 Patent, Ex. 1002, (“’079
`
`Prosecution History”);
`
`(3) U.S. Patent No. 5,521,925 to Merakos et al. (“Merakos”), Ex. 1003;
`
`(4) U.S. Patent No. 5,299,198 to Kay et al. (“Kay”), Ex. 1004;
`
`(5) U.S. Patent No. 5,933,421 to Alamouti et al. (“Alamouti”), Ex. 1006;
`
`(6) U.S. Patent No. 5,430,760 Dent (“Dent”), Ex. 1005; and
`
`(7) U.S. Patent No. 6,172,970 Ling et al. (“Ling”), Ex. 1009.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`
`
`3
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`(1)
`
`The documents listed above, any additional documents discussed
`
`below; and
`
`(2) My own knowledge and experience based upon my work in the field of
`
`communication networks.
`
`II. QUALIFICATIONS
`5.
`I am an expert in the field of wireless communications. I have studied,
`
`taught, practiced, and researched this field for over thirty years. The following is a
`
`summary of my educational background, work experience, and other relevant
`
`qualifications. A true and accurate copy of my curriculum vitae can be found in
`
`exhibit Ex. 1008.
`
`6.
`
`I obtained my Ph.D. in Electrical Engineering and Computer Science at
`
`the University of California, Berkeley, in 1989. I received the Demetri Angelakos
`
`Outstanding Graduate Student Award from the University of California, Berkeley
`
`and the IEEE/ACM Ira M. Kay Memorial Paper Prize in 1989.
`
`7.
`
`I joined Georgia Tech in the fall of 1989 and am now a Professor in
`
`Electrical and Computer Engineering. I have been active in the areas of wireless
`
`communications, digital signal processing, integrated circuit design (analog &
`
`digital), software engineering, system-level design methodologies and tools, and
`
`software systems. I have been the principal investigator (“PI”) or co-PI in several
`
`active research programs in these areas, including DARPA’s Rapid Prototyping of
`
`4
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`Application Specific Signal Processors, the State of Georgia’s Yamacraw Initiative,
`
`the United States Army’s Federated Sensors Laboratory Program, and the United
`
`States Air Force Electronics Parts Obsolescence Initiative. I have received an IBM
`
`Faculty Award and the NSF’s Research Initiation Award. I have been awarded the
`
`2006 Frederick Emmons Terman Medal by the American Society of Engineering
`
`Education for contributions to Electrical Engineering, including authoring a widely-
`
`used textbook in the design of VLSI digital signal processors.
`
`8.
`
`I have developed and taught undergraduate and graduate courses in
`
`hardware and software design for signal processing and wireless communication
`
`circuits at Georgia Tech for the past twenty years. I have graduated more than 20
`
`Ph.D. students that now work as professors or in technical positions around the
`
`world.
`
`9.
`
`I have been an active consultant to industry and various research
`
`laboratories (including Massachusetts Institute of Technology (“MIT”) Lincoln
`
`Labs and Johns Hopkins University Applied Physics Laboratory). I have founded
`
`three companies in the areas of embedded software, military chipsets involving
`
`imaging technology, and wireless communications. I have supervised the Ph.D.
`
`dissertations of over twenty engineers in the areas of computer engineering, signal
`
`processing, communications, rapid prototyping, and system-level design
`
`methodology, five of which have resulted in thesis prizes or paper awards.
`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`10. My consulting work for MIT Lincoln Labs involved high resolution
`
`imaging for defense applications, where I worked in the area of prototyping
`
`complex and specialized computing systems. My consulting work for Johns
`
`Hopkins Applied Physics Lab (“APL”) mainly involved localization of objects in
`
`image fields, where I worked on identifying targets in video and other sensor fields
`
`and identifying computer architectures and circuits for power and space-efficient
`
`designs.
`
`11.
`
`I have developed wireless baseband and protocol stack software and
`
`assembly code for a leading telecommunications handset vendor that focused on
`
`efficient realization of speech codecs and echo-cancellation.
`
`12.
`
`The first of the companies I founded, VP Technologies, offers products
`
`in the area of semiconductor integrated circuits, including building computing
`
`systems for helicopter imaging systems for the United States Air Force. I remain a
`
`director of VP Technologies. The second company I founded, Soft Networks, LLC,
`
`offers software for multimedia and wireless computing platforms, including the
`
`development of a set-top box for Intel that decodes MPEG-2 video streams and
`
`imaging codes for multimedia phones. The technology involved with the design,
`
`development, and implementation of the Intel set-top box included parsing the bit
`
`streams, decoding communications protocols, extracting image and video data, and
`
`then processing for subsequent display or storage. The third of these companies,
`
`6
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`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`Elastic Video, uses region-of-interest based video encoding or decoding for
`
`capturing high quality video at very low bit rates, with a primary application of
`
`wireless video systems.
`
`13.
`
`I have been active in the area of 4G-related communications in several
`
`areas of technologies, including orthogonal frequency division multiplexing
`
`(OFDM)-multiple input multiple output (MIMO) communications systems for
`
`several years, and some of my publications in this area include “Frequency
`
`Dependent Space-Interleaving of MIMO OFDM Systems,” Proc. IEEE Radio and
`
`Wireless Conf. (2003); “Embedded Alamouti Space Time Codes for High Rate and
`
`Low Decoding Complexity,” Proc. Of IEEE Asilomar Conf. on Signals, Systems
`
`and Computers (2008); and “Asymmetric Golden Codes for Fast Decoding in Time
`
`Varying Channels,” Wireless Pers. Comms., Vol. 58, Issue No. 3, pp. 421-437
`
`(2011).
`
`14.
`
`I have authored or co-authored several books, including VLSI Digital
`
`Signal Processors (IEEE Press 1995) and the Digital Signal Processing Handbook
`
`(CRC Press, 1998). I am Editor of the three-volume DSP Handbook set (Volume 1:
`
`Digital Signal Processing Fundamentals; Volume 2: Video, Speech, and Audio
`
`Signal Processing and Associated Standards; and Volume 3: Wireless, Networking,
`
`Radar, Sensory Array Processing, and Nonlinear Signal Processing) (CRC Press,
`
`1998).
`
`
`
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`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`15. Additional representative peer-reviewed publications in the area of
`
`wireless communications are the following: (i) Turkboylari, M. and Madisetti,
`
`V.K., “Effect of Handoff Delay on System Performance of TDMA Cellular
`
`Systems,” 4th Intl. Workshop, on Mobile and Wireless Comms. Networks, pp. 411-
`
`415 (2002); (ii) Jatunov, L. and Madisetti, V.K., “Computationally-Efficient SNR
`
`Estimation for Bandlimited Wideband CDMA Systems,” IEEE Trans. on Wireless
`
`Comms., Vol. 5, Issue No. 12, pp. 3480-3491 (2006), and (iii) N. Radia, Y. Zhang,
`
`M. Tatipamula, V. Madisetti, “Next Generation Applications on Cellular Networks:
`
`Trends, Challenges, and Solutions,” Proc. of the IEEE, Vol. 100, Issue No. 4, pp.
`
`841-854 (2012).
`
`16. Since 2017, I have been Georgia Tech’s official representative to the
`
`Third Generation Partnership Project (3GPP), a standards body responsible for the
`
`development of wireless standards. In this role, I represent European
`
`Telecommunications Standards Institute (ETSI) member Georgia Tech in several
`
`task forces for the development of 5G technology and I have attended in-person
`
`meetings regarding the same in 2018.
`
`17.
`
`I have designed several specialized computer and communication
`
`systems over the past two decades at Georgia Tech for tasks including wireless
`
`audio and video processing and protocol processing for portable platforms, like cell
`
`phones and Person Digital Assistants. I have worked on designing systems that are
`
`
`
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`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`efficient from a performance, size, weight, area, and thermal point of view. I have
`
`developed courses and classes for the industry on these topics, and many of my
`
`lectures in advanced computer system design, developed under the sponsorship of
`
`the United States Department of Defense in the late 1990’s, are available for
`
`educational use at http://www.eda.org/rassp. These lectures have been used by
`
`several U.S. and international universities as part of their course work. Some of my
`
`recent publications in the area of design of wireless communications systems and
`
`associated protocols are listed in Ex-1004.
`
`18.
`
`In conjunction with a leading telecom vendor in Asia, through a joint
`
`venture called Soft Networks (“SN”), LLC in Atlanta in the late 1990’s and early
`
`2000’s, I collaborated with a team of engineers to support mobile and wireless
`
`services offerings in India. These involved the design and development of
`
`micropayment services for mobile phones, design of smartphones, soft switches,
`
`and telecom customer billing and fraud detection algorithms that included
`
`establishment of secure sessions and privileged access to customer account and
`
`billing data.
`
`19.
`
`I have proposed several draft proposals for standards to the Internet
`
`Engineering Task Force (“IETF”) in the area of VOIP and Voice/Video streaming
`
`over the internet, including, “A Transport Layer Technology for Improving the QoS
`
`of Networked Multimedia Applications,” IETF Draft (Jul. 2002)
`
`
`
`9
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`(http://tools.ietf.org/pdf/draft-madisettiargyriou-qos-sctp-00.pdf); “Voice & Video
`
`Over Mobile IP Networks,” IETF Draft (May 2002) (http://tools.ietf.org/html/draft-
`
`madisetti-argyriou-voice-video-mip-00); and “Enhancements to ECRTP with
`
`Applications to Robust Header Compression for Wireless,” IETF Draft (Jan. 2003)
`
`(http://tools.ietf.org/html/draft-madisetti-rao-suresh-rohc-00).
`
`20.
`
`I am knowledgeable and familiar with standards related to the wireless
`
`and telecommunications systems industry, and as shown in Ex-1004, some of my
`
`papers describe the application of these standards in optimizing design and testing
`
`of these systems. I am also knowledgeable and familiar with microprocessor
`
`architecture and associated software and firmware design for wireless and
`
`telecommunications mobile terminals and base stations.
`
`21.
`
`I have been elected a Fellow of the IEEE. The Fellow is the highest
`
`grade of membership of the IEEE, a world professional body consisting of over
`
`300,000 electrical and electronics engineers, with only one-tenth of one percent
`
`(0.1%) of the IEEE membership being elected to the Fellow grade each year.
`
`Election to Fellow is based upon votes cast by existing Fellows in IEEE.
`
`22.
`
`I have also been awarded the 2006 Frederick Emmons Terman Medal
`
`by the American Society of Engineering Education for contributions to Electrical
`
`Engineering, including authoring a widely used textbook in the design of VLSI
`
`digital signal processors. I was awarded the VHDL International Best Ph.D.
`
`10
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`Dissertation Advisor Award in 1997 and the NSF Research Initiation Award in
`
`1990. I was Technical Program Chair for both the IEEE MASCOTS in 1994 and the
`
`IEEE Workshop on Parallel and Distributed Simulation in 1990. In 1989 I was
`
`recognized with the Ira Kay IEEE/ACM Best Paper Award for Best Paper presented
`
`at the IEEE Annual Simulation Symposium.
`
`23.
`
`In light of the foregoing and my curriculum vitae (Ex. 1004), I
`
`consider myself to be an expert in the fields of radio-wave transmission/reception
`
`systems, telecommunications/cellular systems, wireless networking, wireless
`
`communications systems, and protocol design. Thus, as of the earliest priority date
`
`of the ’079 Patent, I was at least a person of ordinary skill in the art of the ’079
`
`Patent (see Section III, infra), and I had direct personal knowledge of the
`
`technologies involved in the ’079 Patent.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`24.
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record and that a person of ordinary skill in the art (“POSITA”) to which
`
`the claimed subject matter pertains would have the capability of understanding the
`
`scientific and engineering principles applicable to the pertinent art.
`
`25.
`
`I understand there are multiple factors relevant to determining the level
`
`of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention, (2) the
`
`11
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`sophistication of the technology, (3) the types of problems encountered in the field,
`
`and (4) the prior art solutions to those problems.
`
`26.
`
`I have been informed by counsel that Patent Owner may allege that the
`
`priority date for the ’079 Patent is December 10, 1998. I am familiar with the
`
`wireless communications art pertinent to the ’079 Patent. I am also aware of the
`
`state of the art at the time of the alleged priority date. Based on the technologies
`
`disclosed in the ’079 Patent, I believe that a POSITA would include someone who
`
`had a bachelor’s degree in electrical engineering, computer engineering, computer
`
`science or similar field, and three years of experience in wireless communications
`
`systems and networks, or equivalent. Moreover, I recognize that someone with
`
`more technical education, but less experience could have also met this standard. I
`
`believe that I possessed and exceeded such experience and knowledge before and at
`
`the priority date and that I am qualified to opine on the ’079 Patent.
`
`27.
`
`For the purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field before the earliest
`
`potential alleged priority date of the ’079 Patent.
`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`IV. RELEVANT LEGAL STANDARDS
`I am not an attorney. In preparing and expressing my opinions and
`28.
`
`considering the subject matter of the ’079 Patent, I am relying on certain legal
`
`principles that counsel has explained to me.
`
`A.
`29.
`
`Anticipation
`I have been informed by counsel that a patent claim is invalid as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that for a claim element to be
`
`inherently present in a prior art reference, the claim element must be “necessarily
`
`present” in the disclosed apparatus, system, product, or method, and not probably or
`
`possibly present; in other words, the mere fact that the apparatus, system, product,
`
`or method described in the prior art reference might possibly (or sometimes)
`
`practice or contain a claimed limitation is insufficient to establish that the reference
`
`inherently discloses the limitation. I understand it is acceptable to examine evidence
`
`outside the prior art reference (extrinsic evidence) in determining whether a feature,
`
`while not expressly discussed in the reference, is necessarily present in it. In
`
`determining whether or not every one of the elements of the claimed invention is
`
`found in the item of prior art, I understand one should take into account what a
`
`person of ordinary skill in the art would have understood from his examination of
`
`the particular item of prior art.
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`30.
`
`I have been informed that there are several ways in which a patent
`
`claim can be invalid under 35 U.S.C. § 102. First, I have been informed that a
`
`patent claim is invalid under 35 U.S.C. § 102(a) if the invention defined by the
`
`patent claim was known or used by others in the United States, or patented or
`
`described in a printed publication, such as a journal, magazine article, or
`
`newspaper, anywhere in the world before applicant’s invention date.
`
`31.
`
`Second, I have been informed that a patent claim is invalid under 35
`
`U.S.C. § 102(b) if an invention reflected in a patent claim was patented or described
`
`in a printed publication anywhere in the world or was in public use or on sale in the
`
`United States more than one year before the effective filing date of the patent claim
`
`in the United States.
`
`32.
`
`Third, I have been informed that the patent claim at issue is invalid
`
`under 35 U.S.C. § 102(e) if the invention defined by the claim was disclosed in a
`
`patent by another inventor that was filed in the United States before the applicant’s
`
`invention date.
`
`33.
`
`I have been informed that each of the above-described types of 35
`
`U.S.C. § 102 prior art can individually be a basis for invalidating a patent as
`
`anticipated, or these references can be combined to show a patent is invalid as
`
`obvious under 35 U.S.C. § 103.
`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`B. Obviousness
`I have been asked to provide my opinions regarding whether claims 1-
`34.
`
`5, 7, and 17 (the “Challenged Claims”) of the ’079 Patent would have been obvious
`
`to a POSITA at the time of the alleged invention, in light of the prior art.
`
`35.
`
`I have been informed that a claim preamble may or may not limit the
`
`claim scope. For the purposes of this Inter Partes Review, I have been informed to
`
`include the preamble in the analysis for obviousness in order to follow a
`
`conservative approach.
`
`36.
`
`I have been informed and understand that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103 if the differences between the invention and the
`
`prior art are such that the subject matter as a whole would have been obvious to a
`
`POSITA at the time the invention was made. I understand that the obviousness
`
`analysis takes into account factual inquiries, including the level of ordinary skill in
`
`the art, the scope and content of the prior art, the differences between the prior art
`
`and the claimed subject matter, and any secondary considerations, to the extent they
`
`exist, such as commercial success, long felt but unsolved needs in the prior art that
`
`was satisfied by the claimed invention, unexpected results achieved by the
`
`invention, and praise of the invention by others skilled in the art. I understand that
`
`there must be a relationship between any such secondary considerations/indicia and
`
`the claimed invention.
`
`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`37.
`
`I have been informed that a threshold inquiry as to whether a reference
`
`can be considered in the obvious analysis is whether the reference is analogous art to
`
`the claimed invention. A reference is analogous art to the claimed invention if: (1)
`
`the reference is from the same field of endeavor as the claimed invention (even if it
`
`addresses a different problem); or (2) the reference is reasonably pertinent to the
`
`problem faced by the inventor (even if it is not in the same field of endeavor as the
`
`claimed invention).
`
`38.
`
`I have been informed and understand that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a reasonable
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`expectation of success when there is a design need or market pressure to solve a
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`problem; and (f) some teaching, suggestion, or motivation in the prior art that would
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`have led a POSITA to modify the prior art reference or to combine prior art
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`reference teachings to arrive at the claimed invention.
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`16
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`ERICSSON v. UNILOC
`Ex. 1007 / Page 16 of 112
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
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`39. Also, I have been informed and understand that obviousness does not
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`require physical combination or bodily incorporation but rather consideration of
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`what the combined teachings of prior art references would have suggested to a
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`POSITA at the time of the alleged invention.
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`C.
`40.
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`Claim Interpretation in Inter Partes Review
`I understand that one step in determining the validity of a claim is for
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`the claim to be properly construed. It is my understanding that for the purposes of
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`this inter partes review, the claims are to be construed under the so-called Phillips
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`standard, under which claim terms are given their ordinary and customary meaning
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`as would be understood by one of ordinary skill in the art in light of the
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`specification and prosecution history, unless the inventor has set forth a special
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`meaning for a term.
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`41.
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`To the extent the claims and specification do not resolve the meaning
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`of a claim term, the prosecution history should be consulted in construing claim
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`terms. Additionally, claim terms are normally not interpreted in such a way that
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`exclude embodiments disclosed in the specification, except in cases of clear
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`disclaimer in the specification or prosecution history. I have been further informed
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`that claim terms only need to be construed to the extent necessary to resolve the
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`obviousness inquiry. Accordingly, in order to construe the claim terms, I have
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`reviewed the entirety of the ’079 Patent, as well as its prosecution history.
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`
`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`V. OVERVIEW OF THE ’079 PATENT
`42. The ’079 Patent relates to “a radio communication system in which
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`secondary stations use dedicated time slots to request services from a primary
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`station.” ’079 Patent, Abstract. An example secondary station is a mobile station
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`(MS) and an example primary station is a base station (BS). Id., 1:17-19.
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`43. According to the ’079 Patent, the “uplink signalling [sic] (from MS to
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`BS)” used to request voice or data services “requires [] detailed considerations.”
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`’079 Patent, Abstract, 1:25-26. The ’079 Patent considers a radio communication
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`system including a “dedicated signalling channel, which comprises frames
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`including a time slot for each MS registered with the controlling BS.” Id., 1:44-46.
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`In particular, “[i]f a MS requires service from the BS it transmits a request in its
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`allocated slot then waits for an acknowledgement from the BS setting up the
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`required service.” Id., 1:46-49.
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`44. The ’079 Patent proposes a system where the MS “re-transmit[s] the
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`request in at least a majority of its allocated time slots until an acknowledgment is
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`received from the primary station.” ’079 Patent, 1:65-67. For instance, annotated
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`FIG. 3 shown below is a flow chart illustrating an MS performing this technique.
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`Id., 3:54-55. As shown on the left-hand side of FIG. 3, “[r]equests 304 continue to
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`be made in successive allocated time slots 204 until a first test 306 determines that
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`no further requests should be made.” Id., 3:61-63. Meanwhile, in a “second test
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`
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
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`308” shown on the right-hand side of FIG. 3 that is performed at the same time as
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`the first test 306, the MS determines whether an acknowledgement (denoted as
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`“ACK” in FIG. 3) has been received from the BS; if the determination at step 308 is
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`yes (Y), the MS “at 310 stops any further requests from being sent, for example by
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`setting to false a flag that is checked by the first test 306.” Id., 3:66-4:4.
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`The MS re-transmits service
`“requests” in “successive
`allocated time slots” at step 304,
`subject to a first test at step 306
`that determines whether a “flag”
`has been set at step 310.
`’079 Patent, 3:55-4:5.
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`“A second test 308 determines whether
`the MS 110 has received an
`acknowledgement from the BS 100.
`When the second test 308 determines
`that an acknowledgement has been
`received from the BS 100, the MS 110
`at 310 stops any further requests from
`being sent.” ’079 Patent, 3:67-4:5.
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`’079 Patent, Fig. 3 (annotated in color)
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`19
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`Ex. 1007 / Page 19 of 112
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`Declaration of Dr. Vijay K. Madisetti, Ph.D.
`Inter Partes Review of U.S. Patent 6,868,079
`
`45. The ’079 Patent also proposes that the BS “determines whether a
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`request was sent by a particular secondary station … by examining the received
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`signals in multiple time slots.” ’079 Patent, 2:9-13. For instance, the BS can
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`“determin[e] from a combination of received signals in a plurality of successive
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`time slots allocated to the [MS] whether the [MS] has transmitted a request for
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`resources.” Id., 2:30-33. In an example in the ’079 Patent specification, time slots
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`may be allocated to a MS at the rate of one time slot per frame or less, so
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`“successive” allocated time slots in this context refers to spacing of one frame
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`interval or more between a MS’s allocated time slots. Ex. 1001, 4:8-12.
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`46. To determine whether a request was transmitted from a MS, receiver
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`outputs for different requests in the different allocated time slots may be combined
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`(e.g., “magnitudes” of two outputs “added together” and compared to a “threshold”)
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`or each output may be treated individual