Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`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
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`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
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`TABLE OF CONTENTS
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`Page(s)
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`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
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`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
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`I. INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) respectfully requests inter partes
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`review of claims 1-10 of U.S. Patent No. 8,411,557 (“’557 patent”) (Ex-1001)
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`pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.1 et seq.
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`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Apple is the real party-in-interest.
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`B. Related Matters
`Optis Wireless Technology, LLC (“Patent Owner”) has asserted the ’557
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`patent against Apple in Optis Wireless Technology, LLC et al. v. Apple Inc., Case
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`No. 2-19-cv-00066-JRG (E.D. Tex.). That case is currently pending.
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`C. Counsel
`Lead Counsel:
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`Jason Kipnis (Reg. No. 40,680),
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`Backup Counsel: Mary (“Mindy”) V. Sooter (Reg. No. 71,022)
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`David Cavanaugh (Reg. No. 36,476)
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`Ravi Deol (Reg. No. 62,165)
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`D. Service Information
`E-mail:
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`Jason.Kipnis@wilmerhale.com,
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`Mindy.Sooter@wilmerhale.com.
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`David.Cavanaugh@wilmerhale.com
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`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`950 Page Mill Rd.
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`Palo Alto, CA 94304
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`Telephone: 650-600-5036
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`Fax: 650-858-6100
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`Petitioner consents to service by e-mail on lead and backup counsel.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition. See 37 C.F.R. § 42.101(a-c).
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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 1-10 of the ’557 patent.
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`A. Prior Art Patents and Printed Publications
`The following references are pertinent to the grounds of unpatentability as
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`explained below:1
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`1 The ’557 patent issued from a patent application filed prior to enactment of the
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`America Invents Act (“AIA”). Accordingly, the pre-AIA statutory framework
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`applies.
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
`Published International Application No. WO 2006/019710
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`1.
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`(“Sutivong”) (Ex-1003), published on February 23, 2006, is prior art under at least
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`35 U.S.C. § 102(b).
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`2.
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`U.S. Patent No. 8,009,637 (“Harris”) (Ex-1004), filed on January 18,
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`2007, and claiming priority to provisional application 60/781,527 (filed Mar. 10,
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`2006), was issued on August 30, 2011, is prior art under at least 35 U.S.C. §
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`102(e).
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`3.
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`U.S. Patent Application No. 2007/0165567 (“Tan”) (Ex-1005), filed
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`on January 10, 2007, and claiming priority to provisional application 60/759,697
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`(filed Jan. 17, 2006) (“Tan Provisional”) (Ex-1009), was published on July 19,
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`2007, is prior art under at least 35 U.S.C. § 102(e).
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`B. Grounds for Challenge
`Petitioner requests cancellation of claims 1-10 of the ’557 patent as
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`unpatentable under 35 U.S.C. § 103. This Petition, supported by the declaration of
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`Mark Lanning (Ex-1002) filed herewith, demonstrates that there is a reasonable
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`likelihood that Petitioner will prevail with respect to cancellation of at least one of
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`the challenged claims and that each challenged claim is not patentable. See 35
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`U.S.C. § 314(a). The grounds for challenge are as follows:
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`Ground References
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`Challenged Claims
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`1.
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`2.
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`§103 Harris in view of Tan
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`1-10
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`§103
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`Sutivong in view of Tan2
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`1-10
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`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.
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`Apple is diligently pursuing its defenses, including invalidity, in the district court;
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`2 As discussed below in more detail, the U.S. PTO considered the combination of
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`Sutivong and Tan during prosecution of the’557 patent application. During that
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`prosecution, all pending claims were rejected over the combination and the
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`applicant narrowed the claims significantly to obtain allowance. However, the
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`claims of the ’557 patent itself appear to have been given a more cursory fast track
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`examination, due to entry of the ’557 patent application into the U.S. Patent
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`Prosecution Highway (PPH) Program Between the Japan Patent Office and the
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`U.S. PTO.
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`3 Plaintiffs recently notified Apple that they seek to dismiss U.S. Patent No.
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`8,989,290, which includes four asserted claims, from the related litigation against
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`Apple. The parties are in the process of negotiating the terms for the dismissal of
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`this patent.
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`4
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`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
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`adjudicate validity. The Board should not exercise its discretion to deny the
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`petition based on 35 U.S.C. §314(a) or §325(d) for at least the following reasons:
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`First, the Petitioner has not previously filed a petition directed to the same
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`claims of the ’557 patent, or even the same patent. See General Plastic Industrial
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`Co., LTD v. Canon Kabushiki Kaisha, IPR2016-01357, -01358, -01359, -01360, -
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`01361, *9 (PTAB Sept. 6, 2017).
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`Second, the ’557 patent involves the technical subject matter of wireless
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`communications and the Random Access Channel (“RACH”), and is thus well-
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`suited to the expertise of the specialized patent judges at the PTAB.
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`Third, all seven patents are currently set for jury trial starting the same day
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`(August 17, 2020). Because there are far more asserted claims than could
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`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
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`which patents and claims will proceed on August 17, 2020. Furthermore, no claim
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`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,
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`respectively, and dispositive motions are not due to be filed until May 11, 2020.
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`Compare Precision Planting, LLC v. Deere & Company, IPR2019-01044, slip op.
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`at *14-15 (PTAB Dec. 2, 2019) and Mylan Pharmaceuticals, Inc. v. Bayer
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`5
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`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,
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`2018) with NHK Spring Co. v. IntriPlex Technologies, Inc., IPR2018-00752, slip
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`op. at 19–20 (PTAB Sept. 12, 2018) (precedential) (denial of institution due in part
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`to co-pending district court proceeding nearing completion). Petitioner neither
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`seeks nor achieves any strategic advantage based on the filing date of this Petition.
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`See Precision Planting at *19-20. In addition, although this Petition is timely, any
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`delay by Petitioner in filing the instant petition is excused by Plaintiff/Patent
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`Owner’s assertion of numerous claims across numerous patents, increasing the
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`burden on Petitioner to draft petitions. See Id. at *20.
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`Fourth, Optis is currently asserting at least eight claims of the ’557 patent
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`against Petitioner. See Optis Wireless Technology, LLC v. Apple Inc., No. 2:19-cv-
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`00066-JRG, *2 (E.D. Tex.) (Plaintiff’s Disclosure of Asserted Claims,
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`Infringement Contentions, and Accompanying Document Production) (Ex-1010).
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`No order has been issued in the district court case to reduce the number of claims
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`or patents. Therefore, compared to the PTAB, a jury trial is necessarily a more
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`difficult forum for presenting a detailed obviousness case for this number of
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`asserted claims, especially for multi-reference obviousness combinations presented
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`herein and among other invalidity arguments 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
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`6
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`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
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`motions could result in an Institution Decision before the district court’s final
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`appealable judgment is docketed.4
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`Petitioner respects the limited resources of the Board, but because inter
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`partes review would be a more effective and efficient alternative to litigation under
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`the present circumstances, and because Petitioner was timely in pursuing this
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`relief, and in light of the substantive grounds discussed below, Petitioner requests
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`that the Petition be granted. General Plastic at 9-10. Petitioner may request
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`additional briefing if Patent Owner urges the Board to exercise its discretion to
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`deny this Petition under 35 U.S.C. §§ 314(a) or 325(d).
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`VI. BRIEF DESCRIPTION OF TECHNOLOGY
`The ’557 patent relates to access request messages sent over a channel called
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`the Random Access CHannel (“RACH”).
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`For most cellular networks, including the 4G LTE (Long Term Evolution)
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`4 For example, in Optis Wireless Technology v. Huawei Technologies Co., Ltd., No.
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`2:17-Ccv-00123-JRG (E.D. Tex.) in which Patent Owner asserted a different
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`wireless patent against different defendants, while the jury issued a verdict after
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`trial on August 27, 2018, final judgment was not entered until March 18, 2019,
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`with briefing continuing through December 2019.
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`7
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`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
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`a base station (eNodeB, eNB), the UE’s first transmission is an access request.
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`This initial transmission is sent over a specific uplink channel called the RACH.
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`This channel is called the random access channel because messages sent over it are
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`unscheduled, and the base station may not be aware of the UEs sending the
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`requests. When a random access procedure is successful, the UE is then known to
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`the base station, and after further negotiation, may begin communicating with the
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`base station. Ex-1002 ¶33.
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`Before the filing of the ’557 patent, it was well known for UEs to send initial
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`access messages over a RACH. Ex-1001, 1:10-18 (admitting “studies [were]
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`underway to use [the] RACH (Random Access Channel) for initial access from a
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`radio communication mobile station apparatus …. The RACH is utilized, for
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`example, to make an association request and a resource request to the base station,
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`and in initial access upon acquiring uplink transmission timing synchronization.”).
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`Ex-1002 ¶34.
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`According to the ’557 patent, a UE seeking access selects a signature—a
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`predefined sequence of bits used to modulate a radio signal—and transmits that
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`signature over the RACH. As the patent acknowledges, the process of selecting
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`and transmitting signatures over the RACH was already well known. Id., 1:19-22
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`(stating in Background Art, “a mobile station transmitting a RACH signal selects
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`8
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`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
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`signature to the base station to distinguish itself from other mobile stations
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`transmitting RACH signals”). Ex-1002 ¶35.
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`Because RACH transmissions are not prescheduled (and resources are not
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`yet allocated by the base station to the requesting UEs), multiple UEs may transmit
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`initial access requests on the RACH simultaneously, resulting in interference
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`between the transmissions. However, if multiple different signatures with low
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`cross-correlation and high autocorrelation characteristics are used, these signatures
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`will not interfere with each other even when sent from different UEs
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`simultaneously. Ex-1002 ¶¶36-38.
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`Before the ’557 patent, it was known that CAZAC (Constant Amplitude
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`Zero Auto-Correlation) sequences were one type of sequence that had low cross-
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`correlation and high autocorrelation if generated from the same base sequence, and
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`that CAZAC sequences could be used as RACH signatures. Specifically, the ’557
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`patent acknowledges that studies were already underway “to use sequences having
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`low cross-correlation and high autocorrelation” characteristics as RACH
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`signatures, including CAZAC sequences. Generalized Chirp-Like Sequences
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`(GCL) are one specific example of CAZAC sequences. Id., 1:23-32. Ex-1002 ¶¶
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`X. Another example of CAZAC sequences is a “Chu sequence,” discussed below.
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`Ex-1002 ¶39.
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`9
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`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
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`RACH access request. This information may be conveyed by selecting a signature
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`that is associated with the control information the UE desires to send. Thus, by
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`selecting and transmitting a signature associated with appropriate control
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`information, the UE conveys control information to the base station. Control
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`information can include, e.g., the size of a forthcoming message or the channel
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`quality. The base station may use this control information to determine what
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`resources to grant to the UE for subsequent communications. The idea of sending
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`control information with an initial access request was known prior to the alleged
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`priority date of the ’557 patent. Id., 1:33-39 (“[T]o reduce the processing delay
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`after the initial access, studies [were] underway to report, in the RACH, control
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`information including the mobile station ID, the reason for RACH transmission,
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`bandwidth allocation request information, and downlink received quality
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`information.”). Ex-1002 ¶40.
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`VII. OVERVIEW OF THE ’557 PATENT
`The ’557 patent relates to a purported improvement in sending control
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`information over the RACH.
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`A. Summary of the ’557 Patent
`The ’557 patent explains that it is “an object of the present invention to
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`provide a mobile station and radio communication method for efficiently reporting
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`10
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`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
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`for conveying this control information by associating control information with
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`groups of signatures, randomly selecting a signature from the group representing
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`the control information to be reported, and sending the randomly selected signature
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`to the base station. The claimed UE includes a selecting unit for selecting a
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`sequence from a group associated with certain characteristics (“control
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`information”). Id. 9:61-10:8; Ex-1002 ¶42.
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`As shown in annotated Figure 4 below, signatures are organized by the value
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`of the control information to be conveyed over the RACH. Ex-1001,, 4:64-67. For
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`example, signatures #1-8 are associated with control information “000” (blue).
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`Signatures #9-16 are associated with control information “001” (green). To
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`convey control information “000,” according to the patent, a UE would randomly
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`select a signature from among signatures #1-8. To convey control information
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`“001,” a UE would randomly select a signature from among signatures #9-16. Id.,
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`5:1-8; Ex-1002 ¶43.
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`According to the patent, the number of signatures assigned to a particular
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`value of control information may vary, based on a “control signal” sent from the
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`12
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`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
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`Figures 9 and 11 below, the mobile device “changes the associations in the table
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`shown in FIG. 9 … as shown in FIG. 11,” based on the control signal received
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`from the base station. Id., 8:54-59. Figure 11 “shows a case where the number of
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`code sequences associated with control information ‘000’ [blue] is increased due to
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`an increased rate of occurrence of control information ‘000’ and where the number
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`of code sequences associated with control information ‘001’ [green] is decreased
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`due to a decreased rate of occurrence of control information ‘001.’” Id., 8:58-63;
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`Ex-1002 ¶44.
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`Petition for Inter Partes Review of U.S. Patent No. 8,411,557
`Claims 1-10
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`
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`B. Prosecution History
`The ’557 patent issued from U.S. Patent Application No. 13/333,805 (“’805
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`Application”). It was filed on December 21, 2011, and claims priority to U.S.
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`Patent Application No. 12/293,530 (“’530 Application”), which was filed as a
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`National Stage Application of PCT/JP2007/055695 (filed Mar. 20, 2007) under 35
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`U.S.C. § 371, and which claims priority to Japanese Patent Application No. 2006-
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`076995 (filed Mar. 20, 2006).
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`On June 14, 2011, during prosecution of the ’557’s parent application (the
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`’530 Application) the Examiner rejected all pending claims, as anticipated by Tan
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`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
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`stated, inter alia, that “Tan discloses a mobile station apparatus comprising a
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`selecting unit to randomly select a sequence from a group of sequences
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`corresponding to an amount of data or reception quality.” Id. The Examiner went
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`on to describe Tan’s disclosure in six pages of the office action. Id., 3-8.
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`In response to the Office Action, the applicant amended the claims of the
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`’530 Application, including independent claim 12:
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`12. A mobile station apparatus comprising:
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`a selecting unit configured to randomly select a sequence from a group of
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`sequences, the group corresponding to an amount of data or and a reception
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`quality, wherein a plurality of sequences generated from a plurality of base
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`sequences are grouped into a plurality of groups, which are respectively
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`associated with both different amounts of data or and different reception
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`qualities, such that each group provides an indication of an amount of data and
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`a reception quality and that those sequences that are generated from the same
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`base sequence are first included in a predetermined number of the sequences
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`contained in the same group; and
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`a transmitting unit configured to transmit the selected sequence.
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`Ex-1007 at 291-293 (“2011-09-08 Patentee Reply” at 2-4).
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`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
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`the ’530 Application as obvious over Tan in view of Sutivong (Ex-1003). Ex-1007
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`at 294 (“2011-11-02 Office Action”). The Examiner explained that Sutivong
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`taught the amended limitations, including groups of sequences with each group
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`providing an indication of an amount of data and a reception quality. Id., 298-299;
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`see also (Ex-1003 at Fig. 7, [0038], [0062].
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`To overcome the rejection, the patentee further amended the pending
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`independent claims to include the following limitation: “wherein the plurality of
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`sequences generated from the plurality of base sequences are grouped into the
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`plurality of groups, such that all of sequences that are generated from one of the
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`base sequences and at least one of sequences are generated from another of the
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`base sequences are included in the predetermined number of the sequences
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`contained in the same group.” Ex-1007 at 317, 319 (“2011-12-22 Patentee Reply”
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`at 2, 4). The Examiner subsequently allowed the claims, explaining that the prior
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`art failed to disclose the claims, as amended. Ex-1007 at 328-334 (“2012-01-19
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`Notice of Allowance”).
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`The applicant filed the ’805 application on Dec. 21, 2011, i.e., the day before
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`it narrowed its claims to distinguish the combination of Tan and Sutivong in the
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`’530 application. Ex-1001; Ex-1006. This new ’805 application presented claims
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`of similar scope to the ones the Examiner had rejected in the ’530 application.
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`16
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`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:
`
`
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` a
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` 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