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`DOCKET NO.: 01033300-00348US1
`Filed on behalf of Apple Inc.
`By: Jason D. Kipnis, Reg. No. 40,680
`Mary V. Sooter, Reg. No. 71,022
`Richard Goldenberg, Reg. No. 38,895
`David L. Cavanaugh, Reg. No. 36,476
`Ravinder Deol, Reg. No. 62,165
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Tel: (617) 526-6000
`Email:
`Jason.Kipnis@wilmerhale.com
`Mindy.Sooter@wilmerhale.com
`Richard.Goldenberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`Ravi.Deol@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPTIS CELLULAR TECHNOLOGY, LLC
`Patent Owner
`
`Case IPR2020-00465
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,102,833 B2
`CHALLENGING CLAIMS 1-14
`
`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES ............................................................................. 2 
`A. 
`Real Party-in-Interest ............................................................................ 2 
`B. 
`Related Matters ...................................................................................... 2 
`C. 
`Counsel .................................................................................................. 2 
`D. 
`Service Information ............................................................................... 3 
`III.  CERTIFICATION OF GROUNDS FOR STANDING .................................. 4 
`IV.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 4 
`A. 
`Prior Art Patents and Printed Publications ............................................ 4 
`B. 
`Grounds for Challenge .......................................................................... 6 
`C. 
`Discretion Under 35 U.S.C. §314(a) and §325(d) ................................ 7 
`TECHNOLOGY BACKGROUND ............................................................... 10 
`V. 
`VI.  THE ’833 PATENT ....................................................................................... 14 
`A.  Alleged Problem .................................................................................. 14 
`B. 
`Proposed Solution................................................................................ 15 
`1. 
`Arrangement of Signals ............................................................ 16 
`2. 
`Arrangement Steps .................................................................... 18 
`Priority of the Claimed Subject Matter ............................................... 21 
`C. 
`Prosecution History ............................................................................. 22 
`D. 
`VII.  CLAIM CONSTRUCTION .......................................................................... 23 
`VIII.  OVERVIEW OF PRIOR ART ...................................................................... 25 
`A.  Qualcomm (Ex-1006) .......................................................................... 25 
`B. 
`Cho (Ex-1005) ..................................................................................... 29 
`C. 
`Samsung (Ex-1008) ............................................................................. 30 
`D.  Qualcomm-269 (Ex-1007) .................................................................. 30 
`IX.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 31 
`X. 
`SPECIFIC GROUNDS FOR PETITION ...................................................... 31 
`A.  Ground I: Claims 1-14 are Obvious over Qualcomm, Cho,
`Qualcomm-269, and Samsung ............................................................ 31 
`
`i
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`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Claim 1 ...................................................................................... 31 
`1. 
`Claim 2 ...................................................................................... 65 
`2. 
`Claim 3 ...................................................................................... 66 
`3. 
`Claim 4 ...................................................................................... 67 
`4. 
`Claim 5 ...................................................................................... 68 
`5. 
`Claim 6 ...................................................................................... 72 
`6. 
`Claim 7 ...................................................................................... 77 
`7. 
`Claim 8 ...................................................................................... 77 
`8. 
`Claim 9 ...................................................................................... 79 
`9. 
`10.  Claim 10 .................................................................................... 80 
`11.  Claim 11 .................................................................................... 80 
`12.  Claim 12 .................................................................................... 81 
`13.  Claim 13 .................................................................................... 81 
`14.  Claim 14 .................................................................................... 82 
`XI.  CONCLUSION .............................................................................................. 83 
`
`
`
`
`ii
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`

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`I.
`
`INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) respectfully requests Inter Partes
`
`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`
`Review of claims 1-14 of U.S. Patent No. 8,102,833 (“’833 patent”) (Ex-1001)
`
`pursuant to 35 U.S.C. §§311-19 and 37 C.F.R. §42.1 et seq.
`
`The ’833 patent relates to the transmission of uplink signals in a wireless
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`communication system. The claims of the ’833 patent require (1) a particular
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`arrangement of three types of signals (data, control, and ACK/NACK) in an uplink
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`transmission and (2) three specific steps (multiplexing, mapping, and overwriting)
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`for producing such an arrangement. A combination of prior art references not
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`before the examiner render these two requirements obvious. For example, Cho1
`
`and Samsung2 disclose the claimed arrangement of control signals and
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`ACK/NACK signals, respectively. And Qualcomm3 and Qualcomm-2694 disclose
`
`
`1 U.S. Patent Application Publication 2006/0262871 (Ex-1005).
`
`2 Samsung, Control Signaling Location in Presence of Data in E-UTRA UL, 3GPP
`
`TSG RAN #49 Document R1-073094 (Ex-1008).
`
`3 Qualcomm Europe, Draft Change Request: 36.212.v.8.0.0, Document R1-075037
`
`(Ex-1006).
`
`4 Qualcomm Europe, Rate matching details for control and data multiplexing,
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`3GPP TSG-RAN #50 Document R1-073269 (Ex-1007).
`
`1
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`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`the multiplexing, mapping, and overwriting steps required by the claims to produce
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`the particular arrangement of signals. These references, all of which relate to the
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`formatting of uplink signals in a wireless network, would have been obvious to
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`combine to ensure that high priority signals, like ACK/NACK and control signals,
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`are placed in reliable locations in the uplink transmission. Accordingly, Petitioner
`
`respectfully requests that the Board institute inter partes review, and cancel claims
`
`1-14.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Apple is the real party-in-interest.
`
`B. Related Matters
`Optis Wireless Technology, LLC, Optis Cellular Technology, LLC (“Patent
`
`Owner”), Unwired Planet, LLC, Unwired Planet International Limited, and
`
`PanOptis Patent Management, LLC (“Plaintiffs”) have asserted the ’833 patent
`
`against Apple in Optis Wireless Technology, LLC v. Apple Inc., No. 2:19-cv-
`
`00066-JRG (E.D. Tex.) (Ex-1009) (“district court case”).
`
`Huawei Device Co., Ltd. previously filed a petition for inter partes review
`
`of claims 1-14 of the ’833 patent in Huawei Device Co., Ltd. v. Optis Cellular
`
`Technology, LLC, IPR2018-00807 (PTAB) (Ex-1010, “Huawei IPR”).
`
`C. Counsel
`Lead Counsel:
`
`Jason D. Kipnis (Registration No. 40,680)
`
`2
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`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Backup Counsel: Mary V. Sooter (Registration No. 71,022);
`
`Richard Goldenberg (Registration No. 38,895);
`
`David L. Cavanaugh (Registration No. 36,476); and
`
`Ravinder Deol (Registration No. 62,165).
`
`D.
`Service Information
`E-mail:
`Jason.Kipnis@wilmerhale.com;
`
`Mindy.Sooter@wilmerhale.com;
`
`
`
`Richard.Goldenberg@wilmerhale.com;
`
`David.Cavanaugh@wilmerhale.com;
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`Ravi.Deol@wilmerhale.com; and
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`WH-Apple-Optis-833-IPR@wilmerhale.com.
`
`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
`
`60 State Street
`
`
`
`Boston, Massachusetts 02109
`
`Tel: (617) 526-6000
`
`Fax: (617) 526-5000
`
`Petitioner consents to email delivery on lead counsel and backup counsel at
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`the email addresses listed above.
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`3
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`

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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under Rule 42.104(a) that the patent for which review is
`
`sought is available for inter partes review and that Petitioner is not barred or
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`estopped from requesting an inter partes review challenging the patent claims on
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`the grounds identified in this Petition.
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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1-14 of the ’833 patent.
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`A.
`Prior Art Patents and Printed Publications
`The following references are pertinent to the grounds of unpatentability
`
`explained below:5
`
`1.
`
`Qualcomm Europe, Draft Change Request: 36.212.v.8.0.0, Document
`
`R1-075037 (“Qualcomm” (Ex-1006)), published by November 9, 2007, is prior art
`
`under at least 35 U.S.C. §102(a).
`
`2.
`
`U.S. Patent Application Publication US 2006/0262871 A1 (“Cho”
`
`(Ex-1005)), filed on May 3, 2006, and published on November 23, 2006, is prior
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`art under at least 35 U.S.C. §102(a) and §102(e).
`
`
`5 The ’833 patent issued from an application filed prior to the America Invents Act
`
`(“AIA”). Accordingly, the pre-AIA statutory framework applies.
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`4
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Qualcomm Europe, Rate matching details for control and data
`
`3.
`
`multiplexing, 3GPP TSG-RAN #50 Document R1-073269 (“Qualcomm-269” (Ex-
`
`1007)), published by August 24, 2007, is prior art under at least 35 U.S.C. §102(a).
`
`4. Samsung, Control Signaling Location in Presence of Data in E-UTRA
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`UL, 3GPP TSG RAN #49 Document R1-073094 (Samsung (Ex-1008)), published
`
`by June 29, 2007, is prior art under at least 35 U.S.C. §102(a).
`
`The references were not before the Patent Office during prosecution.
`
`As evidenced by Mr. Bishop’s declaration (Ex-1003), Qualcomm,
`
`Qualcomm-269, and Samsung were all publicly accessible prior to November 13,
`
`2007. For example, Qualcomm, Qualcomm-269, and Samsung were each made
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`publicly available at least as of November 4, 2007, August 15, 2007, and June 20,
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`2007, respectively, when they were each emailed, with no obligation or
`
`expectation of confidentiality, to more than one thousand interested 3GPP
`
`participants and members of the public subscribed to TSG RAN WG1 email
`
`exploder. Subscription to this exploder was freely accessible to members of the
`
`general public exercising reasonable diligence. In addition, Qualcomm,
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`Qualcomm-269, and Samsung were made publicly available when submitted for
`
`consideration at TSG RAN WG1 meetings #51, #50, and #49bis, respectively,
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`which were held on November 5-9, 2007, August 20-24, 2007, and June 25-29,
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`2007. Each of these meetings were attended by persons of skill in the art, and were
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`5
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`held with no obligation or expectation of confidentiality. Finally, Qualcomm,
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`Qualcomm-269, and Samsung were made publicly available on 3GPP’s FTP server
`
`beginning on November 6, 2007, August 15, 2007, and June 20, 2007,
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`respectively, rendering each document freely accessible to the general public to
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`access with no login, password, or membership requirement. Ex-1003, ¶¶46-84.
`
`B. Grounds for Challenge
`Petitioner requests cancellation of claims 1-14 of the ’833 patent as
`
`unpatentable under 35 U.S.C. §103. This Petition, supported by the declaration of
`
`Jonathan Wells, Ph.D. (Ex-1002), demonstrates that there is a reasonable
`
`likelihood that Petitioner will prevail with respect to cancellation of at least one
`
`challenged claim. See 35 U.S.C. §314(a). The grounds for challenge are:
`
`Ground
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`References
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`Challenged Claims
`
`1.
`
`§103
`
`Qualcomm in view of Cho, Samsung,
`and Qualcomm-269
`
`1-14
`
`
`
`
`
`6
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`C. Discretion Under 35 U.S.C. §314(a) and §325(d)
`The ’833 patent is one of seven patents asserted by Optis against Apple.6
`
`Apple is diligently pursuing its defenses, including invalidity, in the district court;
`
`however, inter partes review is more efficient and expedient forum in which to
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`adjudicate validity. The Board should not exercise its discretion to deny the
`
`petition based on 35 U.S.C. §314(a) or §325(d) for at least the following reasons:
`
`First, the Petitioner has not previously filed a petition directed to the same
`
`claims of the ’833 patent, or even the same patent. See General Plastic Industrial
`
`Co., LTD v. Canon Kabushiki Kaisha, IPR2016-01357, -01358, -01359, -01360, -
`
`01361, Paper 19 at 9 (PTAB Sept. 6, 2017).
`
`Second, because there are no earlier petitions by Petitioner, and because
`
`there is no relationship between Petitioner and Huawei in relation to the petition
`
`previously filed by Huawei on different grounds regarding the ’833 patent, and
`
`because Optis had not even asserted the ’833 patent against Petitioner at the time
`
`Huawei’s petition was denied, Factors 2-5 of General Plastic do not apply. Id.; see
`
`
`6 Plaintiffs recently notified Apple that they seek to dismiss U.S. Patent No.
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`8,989,290 from the related litigation against Apple. The parties are in the process
`
`of negotiating the terms for the dismissal of this patent.
`
`7
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`

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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Valve Corp. v. Elec. Scripting Products, Inc., IPR2019-00062, -00063, -00084,
`
`Paper 11 at 9 (PTAB Apr. 2, 2019).
`
`Third, the ’833 patent involves the technical subject matter of arranging
`
`signals in an uplink transmission of a wireless communication system, and is thus
`
`well-suited to the expertise of the specialized patent judges at the PTAB.
`
`Fourth, all seven patents are currently set for jury trial starting the same day
`
`(August 17, 2020). Because there are far more asserted claims than could
`
`reasonably be tried in the available time, and because plaintiffs will need to
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`substantially narrow the number of asserted claims for trial, it is currently unclear
`
`which patents and claims will proceed on August 17, 2020. Furthermore, no claim
`
`construction ruling has been issued in the district court case, fact and expert
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`discovery are not scheduled to close until March 23, 2020 and May 11, 2020,
`
`respectively, and dispositive motions are not due to be filed until May 11, 2020.
`
`Compare Precision Planting, LLC v. Deere & Company, IPR2019-01044, Paper
`
`17 at 14-15 (PTAB Dec. 2, 2019) and Mylan Pharmaceuticals, Inc. v. Bayer
`
`Intellectual Property GmbH, IPR2018-01143, Paper 13 at 13–14 (PTAB Dec. 3,
`
`2018) with NHK Spring Co., Ltd. v. IntriPlex Technologies, Inc., IPR2018-
`
`00752,Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denial of institution
`
`due in part to co-pending district court proceeding nearing completion). Petitioner
`
`neither seeks nor achieves any strategic advantage based on the filing date of this
`
`8
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`

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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Petition. See Precision Planting at *19-20. In addition, although this Petition is
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`timely, any delay by Petitioner in filing the instant petition is excused by
`
`Plaintiff/Patent Owner’s assertion of numerous claims across numerous patents,
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`increasing the burden on Petitioner to draft petitions. Id. at *20.
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`Fifth, Optis is currently asserting all 14 claims of the ’833 patent against
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`Petitioner. See Optis Wireless Technology, LLC v. Apple Inc., No. 2:19-cv-00066-
`
`JRG, at 2 (E.D. Tex. June 17, 2019) (Plaintiff’s Disclosure of Asserted Claims and
`
`Infringement Contentions) (Ex-1017). No order has been issued in the district
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`court case to reduce the number of claims or patents. Therefore, compared to the
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`PTAB, a jury trial is necessarily a more difficult forum for presenting a detailed
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`obviousness case for this number of asserted claims, especially for multi-reference
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`obviousness combinations presented herein and among other invalidity arguments
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`for the remaining six patents.
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`Finally, no disputes in different fora diminish the ability to provide a Final
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`Written Decision not later than one year after the decision on institution. Even
`
`following a jury verdict, the time required for briefing and resolution of post-trial
`
`9
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`motions could result in an Institution Decision before the district court’s final
`
`appealable judgment is docketed.7
`
`Petitioner respects the limited resources of the Board, but because inter
`
`partes review would be a more effective and efficient alternative to litigation under
`
`the present circumstances, and because Petitioner was timely in pursuing this
`
`relief, and in light of the substantive grounds discussed below, Petitioner requests
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`that the Petition be granted. General Plastic, Paper 19 at 9-10. Petitioner may
`
`request additional briefing if Patent Owner urges the Board to exercise its
`
`discretion to deny this Petition under 35 U.S.C. §§ 314(a) or 325(d).
`
`V. TECHNOLOGY BACKGROUND
`The ’833 patent relates to mobile communication technology. Ex-1001,
`
`1:33-35, 4:4-5, 4:9-11, 8:58-62. The ’833 patent describes “a method for
`
`transmitting uplink signals, which include ACK/NACK signals, control signals
`
`other than the ACK/NACK signals, and data signals.” Id., Abstract. In a mobile
`
`
`7 For example, in Optis Wireless Technology v. Huawei Technologies Co., Ltd.,
`
`No. 2:17-cv-00123-JRG (E.D. Tex.) in which Patent Owner asserted the ’833
`
`patent against different defendants, the jury issued a verdict on August 27, 2018,
`
`and final judgment was not entered until March 18, 2019, with briefing continuing
`
`through December 2019.
`
`10
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`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`communication system, a user equipment (“UE”), such as a mobile device,
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`transmits “uplink signals” (“ULs”) to a base station, and the base station transmits
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`“downlink signals” to the UE. Both uplink and downlink signals can contain
`
`different kinds of information, such as data signals (e.g., voice information from a
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`telephone call) and control information (e.g., information passed between network
`
`nodes relating to operation of and coordination between such nodes). ACK/NACK
`
`signals are a type of control information or signals (Id., 5:3-6) sent from a UE that
`
`signifies the acknowledgment (“ACK”) of receipt or a negative acknowledgment
`
`(“NACK”) indicating a problem with receiving downlink data.8 The ’833 patent
`
`also uses the terms “control information” or “control signals” to refer to control
`
`information or signals other than the ACK/NACK signals. See id., 1:40-44, 5:13-
`
`24. Reference signals, which are known to both the UE and base station, can also
`
`be transmitted to make reception more accurate. Ex-1002, ¶35.
`
`In some mobile communication networks, such as 3GPP LTE networks, the
`
`frequency space of the airwaves is divided into frequency bands (“carriers”) and
`
`sub-bands (“sub-carriers”) that can each be used to transmit streams of data
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`simultaneously. A common way to represent this division is called a
`
`
`8 NACK signals are also sometimes referred to as “NAK” signals. See Ex-1007,
`
`§2.2.
`
`11
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`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`frequency/time grid, such as that shown below in Figure 5.2.1-1 of 3GPP TS
`
`36.211 (Ex-1018). A frequency-time grid is made up of a number of squares
`
`(“resource elements”), each of which is associated with a particular frequency
`
`(sub-carrier) and time period during which information is to be transmitted. For an
`
`uplink transmission, data, control, and ACK/NACK signals can be arranged in
`
`particular locations on this resource grid. See Ex-1002, ¶37.
`
`slotT
`
`UL
`symbN
`
`N
`
`UL
`symb N
`
`
`RB
`sc
`
`
`
` ),( lk
`
`sc N
`RB
`
`sc
`RB
`
`RBN
`UL
`
`
`
`N
`
`0l
`
` Nl
`
`UL
`symb 
`
`1
`
`
`
`Ex-1018, Figure 5.2.1-1
`
`12
`
`

`

`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`According to the ’833 patent, the 3GPP LTE system uses a single carrier
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`frequency division multiple access (SC-FDMA) scheme for sending uplink
`
`transmissions across multiple carriers. Ex-1001, 1:33-35. SC-FDMA assigns data
`
`to be transmitted to a predetermined number of sub-carrier frequencies, which are
`
`then processed using a discrete Fourier Transform to make the multiple sub-
`
`carriers appear as a single carrier. This signal is then transmitted in a time period
`
`known as an SC-FDMA symbol. A single uplink transmission can comprise
`
`multiple SC-FDMA symbols transmitted over time. Ex-1002, ¶38.
`
`In LTE, a resource block represents the basic unit of transmission, and is
`
`defined in both the time and frequency domains. See Ex-1018, §§4.1, 5.2.1, FIG.
`
`5.2.1-1. An uplink resource block comprises one slot (7 SC-FDMA symbols) in
`
`the time domain. Ex-1018, §5.2.3. Each SC-FDMA symbol in a slot comprises a
`
`multiple of 12 subcarriers in a frequency domain. Id. A sub-frame comprises two
`
`slots, totaling 14 SC-FDMA symbols. See Ex-1018, §5.2.3, Fig. 4.1-1 (reproduced
`
`below); §4.1; Ex-1001, 5:40-43. Ex-1002, ¶39.
`
`Ex-1018, Figure 4.1-1
`
`
`
`13
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`

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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`Thus, in the time domain, an LTE sub-frame comprises two resource blocks
`
`comprising 14 SC-FDMA symbols, each SC-FDMA symbol comprising a plurality
`
`of 12 sub-carriers. Two of the 14 SC-FDMA symbols in each sub-frame are used
`
`as reference signals, which, when received, are used to as reference points
`
`(“channel estimation”) for coherent demodulation of the received signal. All
`
`technical features described above were well known prior to the filing of the ’833
`
`patent. Ex-1002, ¶40.
`
`VI. THE ’833 PATENT
`The ’833 patent issued from U.S. App. No. 12/209,136, filed September 11,
`
`2008, and claims priority to U.S. Provisional Application Nos. 60/972,244 (“’244
`
`provisional,” Ex-1013), filed September 13, 2007, 60/987,427 (“’427 provisional,”
`
`Ex-1014), filed November 13, 2007, 60/988,433 (Ex-1015) filed November 16,
`
`2007, and Korean Application No. 10-2008-006834, filed July 15, 2008.
`
`A. Alleged Problem
`The ’833 patent relates to arranging control signals, data signals, and
`
`ACK/NACK signals in uplink signals using the SC-FDMA scheme and existing
`
`LTE resource blocks described in Section V. Ex-1001, 1:25-64. The ’833 patent
`
`explains that, at the time of the alleged invention, 3GPP had already “decided” that
`
`data information and control information would be multiplexed together. Id., 1:43-
`
`46. Furthermore, the ’833 patent admits that it was known that “to improve
`
`14
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`channel estimation performance” “control signals” could be placed close to
`
`reference signals, because “control signals generally require higher reliability than
`
`data signals.” Id., 1:46-51. Ex-1002, ¶42.
`
`The ’833 patent indicates that among the various control signals,
`
`“ACK/NACK signals require higher reliability than the other control signals” (Ex-
`
`1001, 1:53-55)—a requirement already identified in the prior art (see Ex-1008).
`
`When non-ACK/NACK control signals are placed close to the reference signals,
`
`“problems occur in that the ACK/NACK signals can neither be transmitted by
`
`puncturing the control signals arranged near the reference signal nor be transmitted
`
`near the reference signal.” Ex-1001, 1:57-61. Ex-1002, ¶43.
`
`B.
`Proposed Solution
`The purported invention of the ’833 patent is “efficiently arranging
`
`ACK/NACK signals and other control signals in a resource region.” Ex-1001,
`
`1:63-64. The claims require (1) a particular arrangement of three types of signals
`
`(data, control, and ACK/NACK) in an uplink transmission and (2) three specific
`
`steps (multiplexing, mapping, and overwriting) for producing such an arrangement.
`
`15
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`IPR2020-00465
`U.S. Patent No. 8,102,833 B2
`
`Arrangement of Signals
`1.
`Figure 69 illustrates an arrangement of control information, data information,
`
`and ACK/NACK signals in a “time-frequency region” (reference numeral 603),
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`which is described as a “2-dimensional resource matrix” in claim 1. Ex-1001, cl.
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`1, 6:49-7:14. Ex-1002, ¶44.
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`Ex-1001, Figure 6
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`
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`In the matrix of Figure 6, the columns correspond to subcarriers and rows
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`correspond to SC-FDMA symbols. Ex-1001, 6:66-7:3, 7:6-10, 9:6-21. These SC-
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`FDMA symbols (rows in Figure 6) are transmitted one row at a time, with
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`9 Emphasis in quotations and figures added unless otherwise noted.
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`U.S. Patent No. 8,102,833 B2
`intervening reference signals. In the claims, the rows and columns are oriented
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`opposite of Figure 6. In claim 1, rows correspond to subcarriers, and columns
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`correspond to symbols. Ex-1001, cl. 1, limitation (b). In other words, the first
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`claimed row corresponds to the first subcarrier represented by the leftmost column
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`of the matrix in Figure 6, and the first claimed column corresponds to the first SC-
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`FDMA symbol (#1) represented by the top row of the matrix in Figure 6. Ex-1002,
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`¶45.
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`In Figure 6, control information is placed column-by-column in locations
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`corresponding to the first subcarriers of each SC-FDMA symbol. In this way,
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`control information is spread across multiple SC-FDMA symbols, which was
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`known to improve detection of control information by obtaining time diversity.
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`See Ex-1005, ¶62. Data information occupies resource elements in the remainder
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`of the matrix. Ex-1002, ¶46.
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`In addition to the control and data signals, reference signals are also
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`transmitted in a subframe. Ex-1001, 5:37-45, 6:60-7:5. For example, “the
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`reference signal is transmitted through a part between symbol indexes #3 and #4
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`and a part between symbol indexes #9 and #10.” Id., 7:2-5. These correspond to
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`“SC-FDMA symbols used for a reference signal” in claim 1. Id., cl. 1. Before the
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`’833 patent, it was well known that symbols transmitted adjacent to a reference
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`signal were more reliable than symbols transmitted farther away from the reference
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`U.S. Patent No. 8,102,833 B2
`signal. See Ex-1008, §2. Therefore, ACK/NACK signals are located in rows
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`adjacent to where reference signals will be transmitted. Ex-1001, 9:22-29; Fig. 6
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`(showing ACK/NACK signals in modulation symbols 5, 6, 11, 12, N-9, N-8, N-3,
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`N-1). Ex-1002, ¶47.
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`Arranging control signals in the first subcarriers of SC-FDMA symbols and
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`locating ACK/NACK signals in SC-FDMA symbols adjacent reference signals was
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`already well known by the time of the ’833 patent’s alleged priority date.
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`Arrangement Steps
`2.
`The claims of the ’833 patent require three steps to arrange signals as shown
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`in Figure 6: (1) multiplexing data and control signals, (2) mapping data and
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`control signals to a resource matrix, and (3) mapping ACK/NACK signals by
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`overwriting data signals. Ex-1002, ¶49.
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`First, data and control signals are multiplexed into a multiplexed signal 601.
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`Ex-1001, 6:60-63. As shown in Figure 6 below, control signals 1-NC are serially
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`multiplexed in front of (i.e., to the left of) data signals 1-ND. Id., Fig. 6, 6:52-60,
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`8:36-40, 9:1-5. Ex-1002, ¶50.
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`U.S. Patent No. 8,102,833 B2
`
`Ex-1001, Figure 6
`
`
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`Second, the multiplexed signals 601 is mapped to “a time-frequency region”
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`603, which is described as a “2-dimensional resource matrix” in claim 1. Ex-1001,
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`cl. 1, 6:60-7:5. Because the multiplexed signal is mapped column-by-column in
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`Figure 6 (or row-by-row as claimed), control signals in the front of the multiplexed
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`signal are mapped to the first columns (rows as claimed), while data signals are
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`mapped to the remaining columns (rows as claimed). See id., cl. 1. Ex-1002, ¶51.
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`
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`Third, ACK/NACK signals “overwrite some of the multiplexed signals
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`mapped to the 2-dimensional resource matrix” in columns (rows as claimed) “right
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`U.S. Patent No. 8,102,833 B2
`adjacent to the specific SC-FDMA symbols” where the reference signal is
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`transmitted. Ex-1001, 9:22-2, Fig. 6 (showing ACK/NACK signals in modulation
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`symbols 5, 6, 11, 12, N-9, N-8, N-3, N-1). Claims 1 and 8 require that the
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`ACK/NACK signals overwrite10 multiplexed signals “right adjacent to the specific
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`SC-FDMA symbols,” where the “specific SC-FDMA symbols” are “used for a
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`reference symbol.” Id., 9:22-25, 10:23-26. Claims 1 and 8 also require that the
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`ACK/NACK signals overwrite the multiplexed signals “from the last row of the
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`specific columns” (i.e., from the right-most column in Figure 6). Id., 9:26-29,
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`10:17-22. Overwriting the ACK/NACK signals from the last row locates them
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`farthest away from the control signals mapped to the first rows of the matrix and
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`overwrites lower priority data signals rather than higher priority control signals
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`(i.e., control information in the left-most columns in Figure 6). Id.
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`Multiplexing data and control information, followed by mapping the data,
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`control information, and ACK/NACK signals to columns and rows of a matrix was
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`
`10 The ’833 patent states, “overwritten means that specific information mapped in
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`the resource region is skipped and the corresponding region is mapped,” and that
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`“the length of the entire information is maintained equally even after specific
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`information is inserted. This overwriting procedure may be represented by
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`puncturing.” Ex-1001, 6:15-21, Fig. 6. Ex-1002, ¶53.
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`well known by the time of the ’833 patent’s alleged priority date, as discussed
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`below.
`
`C.
`Priority of the Claimed Subject Matter
`Independent claims 1 and 8 require a particular multiplexing for control and
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`data signals, and a specific mapping pattern for a 2-dimensional resource matrix.
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`The ’244 provisional, filed on September 13, 2007 and to which the ’833 patent
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`claims priority, provides no support for these limitations. See Ex. 1002, ¶56. In
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`fact, “matrices,” “columns,” and “rows” do not appear anywhere in the certified
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`translation of the original Korean-language specification—in words or concept—
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`much less the particular arrangement of signals found in the claims. See Ex-1013,
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`11-23. Nor do Figures 2-9 of the ’833 patent appear in that earlier ’244
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`provisional. See Ex-1013, 11-23, 33-39. Furthermore, November 13, 2007 (the
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`date of the later-filed ’427 provisional) is the earliest priority date alleged by
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`plaintiffs in the district court case, and in another patent infringement action
`
`asserting the ’833 patent. See Optis Wireless Technology, LLC v. Apple Inc., No.
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`2:19-cv-00066-JRG, *9 (E.D. Tex. June 17, 2019) (Plaintiffs’ Disclosure of
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`Asserted Claims, Infringement Contentions, and Accompanying Document
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`Production) (Ex-1017); Optis Wireless Technology, LLC v. Huawei Technologies
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`Co., No. 2:17-cv-00123-JRG-RSP, Skt. 243 at *8 (E.D. Tex. Aug. 6, 2018)
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`(Pretrial Order) (Ex-1019). Accordingly, the ’833 patent is entitled to a priority
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`U.S. Patent No. 8,102,833 B2
`date no earlier than the filing date of the ’427 provisional (Nov. 13, 2007).11 Ex-
`
`1002, ¶56.
`
`D.
`Prosecution History
`In an Office Action dated June 24, 2011, the Examiner rejected all pending
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`claims in the ’833 patent’s application over the combination of U.S. Patent
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`Application Publication No. 2008/0304467 (“Papasakellariou,” Ex-1020), U.S.
`
`Patent Application Publication No. 2003/0185159 (“Seo,” Ex-1021), and U.S.
`
`Patent Application Publication No. 2006/0098568 (“Oh,” Ex-1022). Ex-1004,
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`145-59.
`
`Applicant amended the claims to add limitations relating to (1) multiplexing
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`first control signals in front of data signals (limitation (a)), (2), mapping
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`multiplexed signals row-by-row to a resource matrix with columns and rows
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`corresponding to SC-FDMA symbols and sub-carriers, respectively (limitation
`
`(b)), and (3) overwriting multiplexed signals with ACK/NACK