`Claims 1-10
`
`DOCKET NO.: 103330-00350
`Filed on behalf of Apple Inc.
`By: Jason D. Kipnis, Reg. No. 40,680
`David L. Cavanaugh, Reg. No. 36,476
`Mary V. Sooter, Reg. No. 71,022
`Ravi Deol, Reg. No. 62,165
`Wilmer Cutler Pickering Hale and Dorr LLP
`Email:
`Jason.Kipnis@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`Mindy.Sooter@wilmerhale.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`APPLE INC.,
`Petitioner
`v.
`OPTIS WIRELESS TECHNOLOGY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2020-00466
`________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,411,557
`CHALLENGING CLAIMS 1-10
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`INTRODUCTION ............................................................................................ 1
`I.
`II. MANDATORY NOTICES .............................................................................. 1
`A. Real Party-in-Interest .................................................................................... 1
`B. Related Matters .............................................................................................. 1
`C. Counsel .......................................................................................................... 1
`D. Service Information ....................................................................................... 1
`III. CERTIFICATION OF GROUNDS FOR STANDING .............................. 2
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ............... 2
`A. Prior Art Patents and Printed Publications .................................................... 2
`B. Grounds for Challenge .................................................................................. 3
`V. DISCRETION UNDER 35 U.S.C. §314(a) AND §325(d) ............................ 4
`VI. BRIEF DESCRIPTION OF TECHNOLOGY ............................................ 7
`VII. OVERVIEW OF THE ’557 PATENT ..................................................... 10
`A. Summary of the ’557 Patent ........................................................................ 10
`B. Prosecution History ..................................................................................... 14
`VIII. CLAIM CONSTRUCTION ..................................................................... 19
`IX. LEVEL OF ORDINARY SKILL ................................................................ 20
`X. OVERVIEW OF PRIMARY PRIOR ART REFERENCES .................... 20
`A. Sutivong (Ex-1003) ..................................................................................... 20
`B. Harris (Ex-1004) .......................................................................................... 21
`C. Tan (Ex-1005) ............................................................................................. 23
`XI. SPECIFIC GROUNDS FOR PETITION .................................................. 24
`A. Ground 1: Claims 1-10 Are Obvious Over Harris in View of Tan ............. 24
`1. Claim 1 ..................................................................................................... 24
`2. Claim 2 ..................................................................................................... 37
`3. Claim 3 ..................................................................................................... 38
`4. Claim 4 ..................................................................................................... 39
`5. Claim 5 ..................................................................................................... 41
`i
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`6. Claim 6 ..................................................................................................... 42
`7. Claim 7 ..................................................................................................... 43
`8. Claim 8 ..................................................................................................... 44
`9. Claim 9 ..................................................................................................... 44
`10. Claim 10 ................................................................................................ 45
`B. Ground 2: Claims 1-10 Are Obvious Over Sutivong in View of Tan ........ 46
`1. Claim 1 ..................................................................................................... 46
`2. Claim 2 ..................................................................................................... 59
`3. Claim 3 ..................................................................................................... 59
`4. Claim 4 ..................................................................................................... 62
`5. Claim 5 ..................................................................................................... 62
`6. Claim 6 ..................................................................................................... 63
`7. Claim 7 ..................................................................................................... 64
`8. Claim 8 ..................................................................................................... 65
`9. Claim 9 ..................................................................................................... 66
`10. Claim 10 ................................................................................................ 66
`XII. LEGAL PRINCIPLES .............................................................................. 68
`XIII. CONCLUSION .......................................................................................... 68
`
`
`
`
`
`
`
`ii
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`I. INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) respectfully requests inter partes
`
`review of claims 1-10 of U.S. Patent No. 8,411,557 (“’557 patent”) (Ex-1001)
`
`pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.1 et seq.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Apple is the real party-in-interest.
`
`B. Related Matters
`Optis Wireless Technology, LLC (“Patent Owner”) has asserted the ’557
`
`patent against Apple in Optis Wireless Technology, LLC et al. v. Apple Inc., Case
`
`No. 2-19-cv-00066-JRG (E.D. Tex.). That case is currently pending.
`
`C. Counsel
`Lead Counsel:
`
`Jason Kipnis (Reg. No. 40,680),
`
`Backup Counsel: Mary (“Mindy”) V. Sooter (Reg. No. 71,022)
`
`
`
`
`
`
`
`
`
`
`
`
`
`David Cavanaugh (Reg. No. 36,476)
`
`Ravi Deol (Reg. No. 62,165)
`
`D. Service Information
`E-mail:
`
`Jason.Kipnis@wilmerhale.com,
`
`
`
`
`
`Mindy.Sooter@wilmerhale.com.
`
`
`
`David.Cavanaugh@wilmerhale.com
`
`
`
`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
`
`
`
`1
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`
`
`
`
`
`
`
`
`950 Page Mill Rd.
`
`Palo Alto, CA 94304
`
`Telephone: 650-600-5036
`
`
`
`
`
`Fax: 650-858-6100
`
`Petitioner consents to service by e-mail on lead and backup counsel.
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to 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 estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition. See 37 C.F.R. § 42.101(a-c).
`
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
`
`claims 1-10 of the ’557 patent.
`
`A. Prior Art Patents and Printed Publications
`The following references are pertinent to the grounds of unpatentability as
`
`explained below:1
`
`
`1 The ’557 patent issued from a patent application filed prior to enactment of the
`
`America Invents Act (“AIA”). Accordingly, the pre-AIA statutory framework
`
`applies.
`
`
`
`2
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`Published International Application No. WO 2006/019710
`
`1.
`
`(“Sutivong”) (Ex-1003), published on February 23, 2006, is prior art under at least
`
`35 U.S.C. § 102(b).
`
`2.
`
`U.S. Patent No. 8,009,637 (“Harris”) (Ex-1004), filed on January 18,
`
`2007, and claiming priority to provisional application 60/781,527 (filed Mar. 10,
`
`2006), was issued on August 30, 2011, is prior art under at least 35 U.S.C. §
`
`102(e).
`
`3.
`
`U.S. Patent Application No. 2007/0165567 (“Tan”) (Ex-1005), filed
`
`on January 10, 2007, and claiming priority to provisional application 60/759,697
`
`(filed Jan. 17, 2006) (“Tan Provisional”) (Ex-1009), was published on July 19,
`
`2007, is prior art under at least 35 U.S.C. § 102(e).
`
`B. Grounds for Challenge
`Petitioner requests cancellation of claims 1-10 of the ’557 patent as
`
`unpatentable under 35 U.S.C. § 103. This Petition, supported by the declaration of
`
`Mark Lanning (Ex-1002) filed herewith, demonstrates that there is a reasonable
`
`likelihood that Petitioner will prevail with respect to cancellation of at least one of
`
`the challenged claims and that each challenged claim is not patentable. See 35
`
`U.S.C. § 314(a). The grounds for challenge are as follows:
`
`
`
`
`
`Ground References
`
`Challenged Claims
`
`3
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`1.
`
`2.
`
`§103 Harris in view of Tan
`
`1-10
`
`§103
`
`Sutivong in view of Tan2
`
`1-10
`
`
`V. DISCRETION UNDER 35 U.S.C. §314(a) AND §325(d)
`The ’557 patent is one of seven3 patents asserted by Optis against Apple.
`
`Apple is diligently pursuing its defenses, including invalidity, in the district court;
`
`
`2 As discussed below in more detail, the U.S. PTO considered the combination of
`
`Sutivong and Tan during prosecution of the’557 patent application. During that
`
`prosecution, all pending claims were rejected over the combination and the
`
`applicant narrowed the claims significantly to obtain allowance. However, the
`
`claims of the ’557 patent itself appear to have been given a more cursory fast track
`
`examination, due to entry of the ’557 patent application into the U.S. Patent
`
`Prosecution Highway (PPH) Program Between the Japan Patent Office and the
`
`U.S. PTO.
`
`3 Plaintiffs recently notified Apple that they seek to dismiss U.S. Patent No.
`
`8,989,290, which includes four asserted claims, from the related litigation against
`
`Apple. The parties are in the process of negotiating the terms for the dismissal of
`
`this patent.
`
`
`
`4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`however, inter partes review is more efficient and expedient forum in which to
`
`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 ’557 patent, or even the same patent. See General Plastic Industrial
`
`Co., LTD v. Canon Kabushiki Kaisha, IPR2016-01357, -01358, -01359, -01360, -
`
`01361, *9 (PTAB Sept. 6, 2017).
`
`Second, the ’557 patent involves the technical subject matter of wireless
`
`communications and the Random Access Channel (“RACH”), and is thus well-
`
`suited to the expertise of the specialized patent judges at the PTAB.
`
`Third, 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
`
`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
`
`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, slip op.
`
`at *14-15 (PTAB Dec. 2, 2019) and Mylan Pharmaceuticals, Inc. v. Bayer
`
`
`
`5
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`Intellectual Property GmbH, IPR2018-01143, Paper 13 at 13–14 (PTAB Dec. 3,
`
`2018) with NHK Spring Co. v. IntriPlex Technologies, Inc., IPR2018-00752, slip
`
`op. 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 Petition.
`
`See Precision Planting at *19-20. In addition, although this Petition is timely, any
`
`delay by Petitioner in filing the instant petition is excused by Plaintiff/Patent
`
`Owner’s assertion of numerous claims across numerous patents, increasing the
`
`burden on Petitioner to draft petitions. See Id. at *20.
`
`Fourth, Optis is currently asserting at least eight claims of the ’557 patent
`
`against Petitioner. See Optis Wireless Technology, LLC v. Apple Inc., No. 2:19-cv-
`
`00066-JRG, *2 (E.D. Tex.) (Plaintiff’s Disclosure of Asserted Claims,
`
`Infringement Contentions, and Accompanying Document Production) (Ex-1010).
`
`No order has been issued in the district court case to reduce the number of claims
`
`or patents. Therefore, compared to the PTAB, a jury trial is necessarily a more
`
`difficult forum for presenting a detailed obviousness case for this number of
`
`asserted claims, especially for multi-reference obviousness combinations presented
`
`herein and among other invalidity arguments for the remaining six patents.
`
`Finally, no disputes in different fora diminish the ability to provide a Final
`
`Written Decision not later than one year after the decision on institution. Even
`
`
`
`6
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`following a jury verdict, the time required for briefing and resolution of post-trial
`
`motions could result in an Institution Decision before the district court’s final
`
`appealable judgment is docketed.4
`
`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
`
`that the Petition be granted. General Plastic 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).
`
`VI. BRIEF DESCRIPTION OF TECHNOLOGY
`The ’557 patent relates to access request messages sent over a channel called
`
`the Random Access CHannel (“RACH”).
`
`For most cellular networks, including the 4G LTE (Long Term Evolution)
`
`
`4 For example, in Optis Wireless Technology v. Huawei Technologies Co., Ltd., No.
`
`2:17-Ccv-00123-JRG (E.D. Tex.) in which Patent Owner asserted a different
`
`wireless patent against different defendants, while the jury issued a verdict after
`
`trial on August 27, 2018, final judgment was not entered until March 18, 2019,
`
`with briefing continuing through December 2019.
`
`
`
`7
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`network, when a mobile device (User Equipment, UE) wants to communicate with
`
`a base station (eNodeB, eNB), the UE’s first transmission is an access request.
`
`This initial transmission is sent over a specific uplink channel called the RACH.
`
`This channel is called the random access channel because messages sent over it are
`
`unscheduled, and the base station may not be aware of the UEs sending the
`
`requests. When a random access procedure is successful, the UE is then known to
`
`the base station, and after further negotiation, may begin communicating with the
`
`base station. Ex-1002 ¶33.
`
`Before the filing of the ’557 patent, it was well known for UEs to send initial
`
`access messages over a RACH. Ex-1001, 1:10-18 (admitting “studies [were]
`
`underway to use [the] RACH (Random Access Channel) for initial access from a
`
`radio communication mobile station apparatus …. The RACH is utilized, for
`
`example, to make an association request and a resource request to the base station,
`
`and in initial access upon acquiring uplink transmission timing synchronization.”).
`
`Ex-1002 ¶34.
`
`According to the ’557 patent, a UE seeking access selects a signature—a
`
`predefined sequence of bits used to modulate a radio signal—and transmits that
`
`signature over the RACH. As the patent acknowledges, the process of selecting
`
`and transmitting signatures over the RACH was already well known. Id., 1:19-22
`
`(stating in Background Art, “a mobile station transmitting a RACH signal selects
`
`
`
`8
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`one of a plurality of unique signatures in the RACH and transmits the selected
`
`signature to the base station to distinguish itself from other mobile stations
`
`transmitting RACH signals”). Ex-1002 ¶35.
`
`Because RACH transmissions are not prescheduled (and resources are not
`
`yet allocated by the base station to the requesting UEs), multiple UEs may transmit
`
`initial access requests on the RACH simultaneously, resulting in interference
`
`between the transmissions. However, if multiple different signatures with low
`
`cross-correlation and high autocorrelation characteristics are used, these signatures
`
`will not interfere with each other even when sent from different UEs
`
`simultaneously. Ex-1002 ¶¶36-38.
`
`Before the ’557 patent, it was known that CAZAC (Constant Amplitude
`
`Zero Auto-Correlation) sequences were one type of sequence that had low cross-
`
`correlation and high autocorrelation if generated from the same base sequence, and
`
`that CAZAC sequences could be used as RACH signatures. Specifically, the ’557
`
`patent acknowledges that studies were already underway “to use sequences having
`
`low cross-correlation and high autocorrelation” characteristics as RACH
`
`signatures, including CAZAC sequences. Generalized Chirp-Like Sequences
`
`(GCL) are one specific example of CAZAC sequences. Id., 1:23-32. Ex-1002 ¶¶
`
`X. Another example of CAZAC sequences is a “Chu sequence,” discussed below.
`
`Ex-1002 ¶39.
`
`
`
`9
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`A UE can convey “control information” to the base station in its initial
`
`RACH access request. This information may be conveyed by selecting a signature
`
`that is associated with the control information the UE desires to send. Thus, by
`
`selecting and transmitting a signature associated with appropriate control
`
`information, the UE conveys control information to the base station. Control
`
`information can include, e.g., the size of a forthcoming message or the channel
`
`quality. The base station may use this control information to determine what
`
`resources to grant to the UE for subsequent communications. The idea of sending
`
`control information with an initial access request was known prior to the alleged
`
`priority date of the ’557 patent. Id., 1:33-39 (“[T]o reduce the processing delay
`
`after the initial access, studies [were] underway to report, in the RACH, control
`
`information including the mobile station ID, the reason for RACH transmission,
`
`bandwidth allocation request information, and downlink received quality
`
`information.”). Ex-1002 ¶40.
`
`VII. OVERVIEW OF THE ’557 PATENT
`The ’557 patent relates to a purported improvement in sending control
`
`information over the RACH.
`
`A. Summary of the ’557 Patent
`The ’557 patent explains that it is “an object of the present invention to
`
`provide a mobile station and radio communication method for efficiently reporting
`
`
`
`10
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`control information in the RACH.” Id., 1:60-62. The patent describes a technique
`
`for conveying this control information by associating control information with
`
`groups of signatures, randomly selecting a signature from the group representing
`
`the control information to be reported, and sending the randomly selected signature
`
`to the base station. The claimed UE includes a selecting unit for selecting a
`
`sequence from a group associated with certain characteristics (“control
`
`information”). Id. 9:61-10:8; Ex-1002 ¶42.
`
`As shown in annotated Figure 4 below, signatures are organized by the value
`
`of the control information to be conveyed over the RACH. Ex-1001,, 4:64-67. For
`
`example, signatures #1-8 are associated with control information “000” (blue).
`
`Signatures #9-16 are associated with control information “001” (green). To
`
`convey control information “000,” according to the patent, a UE would randomly
`
`select a signature from among signatures #1-8. To convey control information
`
`“001,” a UE would randomly select a signature from among signatures #9-16. Id.,
`
`5:1-8; Ex-1002 ¶43.
`
`
`
`11
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`According to the patent, the number of signatures assigned to a particular
`
`value of control information may vary, based on a “control signal” sent from the
`
`
`
`12
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`base station to the mobile device. Ex-1001, 8:41-51. As shown in annotated
`
`Figures 9 and 11 below, the mobile device “changes the associations in the table
`
`shown in FIG. 9 … as shown in FIG. 11,” based on the control signal received
`
`from the base station. Id., 8:54-59. Figure 11 “shows a case where the number of
`
`code sequences associated with control information ‘000’ [blue] is increased due to
`
`an increased rate of occurrence of control information ‘000’ and where the number
`
`of code sequences associated with control information ‘001’ [green] is decreased
`
`due to a decreased rate of occurrence of control information ‘001.’” Id., 8:58-63;
`
`Ex-1002 ¶44.
`
`
`
`13
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`
`
`
`B. Prosecution History
`The ’557 patent issued from U.S. Patent Application No. 13/333,805 (“’805
`
`Application”). It was filed on December 21, 2011, and claims priority to U.S.
`
`Patent Application No. 12/293,530 (“’530 Application”), which was filed as a
`
`National Stage Application of PCT/JP2007/055695 (filed Mar. 20, 2007) under 35
`
`U.S.C. § 371, and which claims priority to Japanese Patent Application No. 2006-
`
`076995 (filed Mar. 20, 2006).
`
`On June 14, 2011, during prosecution of the ’557’s parent application (the
`
`’530 Application) the Examiner rejected all pending claims, as anticipated by Tan
`14
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`(Ex-1005). Ex-1007 at 255 (“2011-06-14 Office Action” at 3). The Examiner
`
`stated, inter alia, that “Tan discloses a mobile station apparatus comprising a
`
`selecting unit to randomly select a sequence from a group of sequences
`
`corresponding to an amount of data or reception quality.” Id. The Examiner went
`
`on to describe Tan’s disclosure in six pages of the office action. Id., 3-8.
`
`In response to the Office Action, the applicant amended the claims of the
`
`’530 Application, including independent claim 12:
`
`12. A mobile station apparatus comprising:
`
`a selecting unit configured to randomly select a sequence from a group of
`
`sequences, the group corresponding to an amount of data or and a reception
`
`quality, wherein a plurality of sequences generated from a plurality of base
`
`sequences are grouped into a plurality of groups, which are respectively
`
`associated with both different amounts of data or and different reception
`
`qualities, such that each group provides an indication of an amount of data and
`
`a reception quality and that those sequences that are generated from the same
`
`base sequence are first included in a predetermined number of the sequences
`
`contained in the same group; and
`
`a transmitting unit configured to transmit the selected sequence.
`
`Ex-1007 at 291-293 (“2011-09-08 Patentee Reply” at 2-4).
`
`
`
`15
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`On November 2, 2011, the Examiner finally rejected all pending claims of
`
`the ’530 Application as obvious over Tan in view of Sutivong (Ex-1003). Ex-1007
`
`at 294 (“2011-11-02 Office Action”). The Examiner explained that Sutivong
`
`taught the amended limitations, including groups of sequences with each group
`
`providing an indication of an amount of data and a reception quality. Id., 298-299;
`
`see also (Ex-1003 at Fig. 7, [0038], [0062].
`
`To overcome the rejection, the patentee further amended the pending
`
`independent claims to include the following limitation: “wherein the plurality of
`
`sequences generated from the plurality of base sequences are grouped into the
`
`plurality of groups, such that all of sequences that are generated from one of the
`
`base sequences and at least one of sequences are generated from another of the
`
`base sequences are included in the predetermined number of the sequences
`
`contained in the same group.” Ex-1007 at 317, 319 (“2011-12-22 Patentee Reply”
`
`at 2, 4). The Examiner subsequently allowed the claims, explaining that the prior
`
`art failed to disclose the claims, as amended. Ex-1007 at 328-334 (“2012-01-19
`
`Notice of Allowance”).
`
`The applicant filed the ’805 application on Dec. 21, 2011, i.e., the day before
`
`it narrowed its claims to distinguish the combination of Tan and Sutivong in the
`
`’530 application. Ex-1001; Ex-1006. This new ’805 application presented claims
`
`of similar scope to the ones the Examiner had rejected in the ’530 application.
`
`
`
`16
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`Rejected Dependent Claims 12, 16, 18, 23
`of the ’530 Application
`12. A mobile station apparatus
`comprising:
`
`
`
` a
`
` selecting unit configured to randomly
`select a sequence from a group of
`sequences, the group corresponding to an
`amount of data and a reception quality,
`wherein a plurality of sequences generated
`from a plurality of base sequences are
`grouped into a plurality of groups, which
`are respectively associated with both
`different amounts of data and different
`reception qualities, such that each group
`provides an indication of an amount of
`data and a reception quality and that
`those sequences that are generated from
`the same base sequence are first included
`in a predetermined number of the
`sequences contained in the same group;
`and
`a transmitting unit configured to transmit
`the selected sequence.
`
`
`16. The mobile station apparatus
`according to claim 12, wherein a number
`of the sequences contained in each of the
`plurality of groups varies in accordance
`with received control information.
`
`18. The mobile station apparatus
`according to claim 12, wherein the
`plurality of sequences are grouped by
`partitioning the plurality of sequences
`arranged in an increasing order of
`sequence indices of the base sequences.
`
`
`Claim 1 of the ’805 Application, which
`issued as claim 1 of the ’557 patent
`1. A mobile station apparatus
`comprising:
`a receiving unit configured to receive
`control information;
`a selecting unit configured to randomly
`select a sequence from a plurality of
`sequences contained in one group of a
`plurality of groups, into which a
`predetermined number of sequences that
`are generated from a plurality of base
`sequences are grouped and which are
`respectively associated with different
`amounts of data or reception qualities,
`wherein the predetermined number of
`sequences are grouped by partitioning
`the predetermined number of sequences,
`in which sequences generated from the
`same base sequence and having
`different cyclic shifts are arranged in an
`increasing order of the cyclic shifts; and
`
` a
`
` transmitting unit configured to transmit
`the selected sequence,
`
`
`wherein a position at which the
`predetermined number of sequences are
`partitioned is determined based on the
`control information, and a number of
`sequences contained in each of the
`plurality of groups varies in accordance
`with the control information.
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`
`
`
`
`
`Ex-1001.
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`23. The mobile station apparatus
`according to claim 12, wherein a plurality
`of the sequences with different cyclic
`shifts are generated from each of the base
`sequences.
`
`Ex-1007, 291-292.
`
`One day later, on Dec. 22, 2011, the applicant filed in the ’805 application a
`
`Request for Participation in the Patent Prosecution Highway (PPH) Program
`
`Between the Japan Patent Office (JPO) and the USPTO. Ex-1006 at 95-108
`
`(“2011-12-22 Petition by Patentee”). That request was granted. Ex-1006 at 62-63
`
`(“2012-02-28 Decision on Request”). The Tan and Sutivong references—on
`
`which the Examiner rejected highly similar claims during prosecution of the ’530
`
`application—were never considered by the Japanese patent office during
`
`prosecution of the Japanese counterpart on which the PPH request was based,
`
`and—despite the similarity of the pending claims to previously rejected claims in
`
`the parent application—were never the subject of any subsequent office actions
`
`during prosecution of the ’557 patent. Ex-1029.
`
`Although the claims of the new ’805 application were of similar scope as the
`
`claims rejected during prosecution of the ’530 application, the applicant avoided
`
`any substantive rejections once it made its PPH request. In the accelerated
`
`examination, the ’805 application was assigned to a new Examiner, the claims
`
`were rejected only for double patenting and were allowed after filing of a terminal
`
`
`
`18
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`disclaimer, without any discussion of Tan or Sutivong. Ex-1006 at 41-60 (“2012-
`
`11-02 Office Action”); Ex-1006 at 37-38 (“2012-11-12 Patentee Response”); Ex-
`
`1021 at 23-29 (“2013-01-08 Notice of Allowance”).
`
`Ground 2 herein uses the same Sutivong and Tan references that the
`
`Examiner used to reject highly similar claims in the parent ’530 application. As
`
`explained herein, the ’557 patent claims are obvious over those references.
`
`Petitioner respectfully requests that the Board cancel the challenged claims, just as
`
`similar claims in the ’530 application were rejected when the Examiner considered
`
`Sutivong and Tan.
`
`VIII. CLAIM CONSTRUCTION
`Claims in an inter partes review proceeding should be construed using the
`
`same claim construction standard that would be used to construe the claims in a
`
`civil action under 35 U.S.C. 282(b), known as the Phillips standard. 37 C.F.R. §
`
`42.100(b). Petitioner believes that no constructions are necessary for purposes of
`
`deciding this Petition. In the pending litigation, Apple contends that the term
`
`“selecting unit” should be interpreted under 35 U.S.C. § 112(6) and that the term is
`
`indefinite. For purposes of this petition only, however, Apple defers to the prior
`
`decision of the United States District Court for the Eastern District of Texas.
`
`There, the Court held that the claimed “selecting unit” in the ’557 patent is not
`
`
`
`19
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`governed by 35 U.S.C. § 112(6) and needs no construction. Ex-1011 (claim
`
`construction order).
`
`IX. LEVEL OF ORDINARY SKILL
`A person of skill in the art (POSITA), at the time of the alleged invention,
`
`would have a Bachelor’s degree in electrical engineering, computer science,
`
`computer engineering, or a related field, and two years of experience in the design,
`
`development, and/or testing of cellular networks or equivalent combination of
`
`education and experience. Such a person would have been familiar with the public
`
`discussion and public proposals made as part of the 3GPP standards-setting body.
`
`A higher level of education or skill might shorten the required experience, and
`
`vice-versa. Ex-1002 ¶57.
`
`X. OVERVIEW OF PRIMARY PRIOR ART REFERENCES
`The challenged claims of the ’557 patent are obvious over the following
`
`prio