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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
`Patent No. 8,411,557
`___________________
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
`
`Case IPR2020-00466
`Patent No. 8,411,557
`
`I.
`II.
`
`B.
`
`Page
`INTRODUCTION ........................................................................................ 1
`FINTIV FACTORS FAVOR DISCRETIONARY DENIAL OF
`INSTITUTION UNDER 35 U.S.C. § 314(a) ............................................... 2
`A.
`Fintiv Factor #1: no evidence that the district court would
`grant a stay if a proceeding is instituted given that the
`institution date would be one month after the trial start date ............. 2
`Fintiv Factor #2: the court's trial date is one month before
`the Board's projected institution date and 13 months before
`Board's projected statutory deadline for a final written
`decision ............................................................................................... 4
`Fintiv Factor #3: There has been immense "investment in the
`parallel proceeding by the court and parties." .................................... 5
`Fintiv Factor #4: There is complete "overlap between issues
`raised in the petition and in the parallel proceeding." ........................ 6
`Fintiv Factor #5: "The petitioner and the defendant in the
`parallel proceeding are the same party." ............................................ 9
`Fintiv Factor #6: "Other circumstances that impact the
`Board's exercise of discretion, including the merits" favor
`non-institution. ................................................................................... 9
`III. THE BOARD SHOULD DENY THE INSTITUTION UNDER 35
`U.S.C. § 325(d) BECAUSE THE OFFICE HAS CONSIDERED
`TAN IN DEPTH UNDER PETITIONER'S THEORY .............................. 11
`IV. SUMMARY OF THE '557 PATENT......................................................... 13
`V.
`THE PRIOR ART REFERENCES DIFFER FROM THE '577
`INVENTIONS ............................................................................................ 16
`A. Harris ................................................................................................ 16
`B.
`Sutivong ............................................................................................ 18
`
`C.
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`D.
`
`E.
`
`F.
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`Case IPR2020-00466
`Patent No. 8,411,557
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`Page
`C.
`Tan .................................................................................................... 20
`VI. LEVEL OF ORDINARY SKILL ............................................................... 22
`VII. NEITEHR GROUND RENDERS '557 PATENT OBVIOUS ................... 22
`A. Ground 1: Claims 1-10 Are Not Rendered Obvious by Harris
`in View of Tan .................................................................................. 24
`1.
`Petitioner fails to explain why Harris in view of Tan
`discloses a recited "selecting unit." ........................................ 24
`Petitioner has not shown why Harris in view of Tan
`discloses element 1.3 ............................................................. 31
`Petitioner has not shown why Harris in view of Tan
`discloses element 1.4 ............................................................. 32
`The Petition Fails to Establish That Harris in View of
`Tan Renders Obvious Claims 2 through 9 ............................. 33
`The Petition Fails to Establish That Harris in View of
`Tan Renders Obvious Claim 10 ............................................. 34
`Petitioner Fails to Provide Sufficient Motivation to
`Combine Harris and Tan ........................................................ 34
`Ground 2: Claims 1-10 Are Not Rendered Obvious By
`Sutivong in View of Tan .................................................................. 42
`1.
`Sutivong and Tan does not disclose element 1.2 ................... 42
`2.
`Petitioner has not shown why Sutivong discloses
`element 1.4 ............................................................................. 42
`The Petition Fails to Establish That Sutivong in View
`of Tan Renders Obvious Claims 2 through 9 ........................ 44
`The Petition Fails to Establish That Sutivong in View
`of Tan Renders Obvious Claim 10 ........................................ 45
`
`2.
`
`3.
`
`4.
`
`5.
`
`B.
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`6.
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`3.
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`4.
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`Case IPR2020-00466
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`Page
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`5.
`
`Petitioner Fails to Provide Sufficient Motivation to
`Combine Sutivong and Tan ................................................... 45
`VIII. CONCLUSION ........................................................................................... 49
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`TABLE OF AUTHORITIES
`
`
`Case IPR2020-00466
`Patent No. 8,411,557
`
` Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 48
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB, March 20, 2020) ..................................passim
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1362 (Fed. Cir. 2016) .............................................................. 26, 35, 36
`DSS Technology Management, Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) .............................................................. 26, 45, 46
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16, 6-9 (PTAB May15, 2019) ......................................... 5
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00115, Paper 8 ....................................................................................... 8
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 48
`Intel Corporation v. VLSI Technology LLC,
`IPR2020-00106, Paper 17, 5-13 (PTAB May 17, 2020) .................................. 5, 8
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 22
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 26, 33, 41, 47
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) .......................................................................... 22
`Next Caller Inc. v. TRUSTID Inc.,
`IPR2019-00961, Paper 10, 9-15 (PTAB Oct. 16, 2019)....................................... 5
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .................................................................... 22, 23
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`Saint Lawrence Comm’ns LLC v. ZTE Corp.,
`No. 2:15-CV-349-JRG, 2017 U.S. Dist. LEXIS 84290 (E.D. Tex.
`Jan. 17, 2017) ........................................................................................................ 4
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`Case IPR2020-00466
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`Sand Revolution II, LLC, v. Continental Intermodal Group – Trucking
`LLC,
`IPR2019-01393, Paper 12, 16-17 (PTAB Feb. 5, 2020), rehearing
`denied .................................................................................................................... 8
`Tessera Advanced Techs., Inc. v. Samsung Elecs. Co.,
`No. 2:17-CV-00671-JRG, 2018 U.S. Dist. LEXIS 120999 (E.D.
`Tex. July 19, 2018) ............................................................................................... 3
`TQ Delta, LLC v. Cisco Sys., Inc.,
`No. 2018-1766 (Fed. Cir. Nov. 22, 2019)
` ................................................................................................................. 26, 27, 37
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 33
`W. L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 35
`Statutes
`35 U.S.C. § 314(a) ........................................................................................... 2, 8, 10
`35 U.S.C. § 325(d) ............................................................................................. 11, 13
`Regulations
`37 C.F.R. § 42.65(a) ........................................................................................... 37, 47
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Case IPR2020-00466
`Patent No. 8,411,557
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`EXHIBIT LIST
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`Declaration of Professor Murali Annavaram in Support of
`Patent Owner's Preliminary Response
`
`Amended Docket Control Order In Parallel District Court
`Case, Case 2:19-cv-00066, Doc. 159, June 9, 2020
`
`Judge Gilstrap's Standing Order re COVID19
`"Why Gilstrap is Getting Ready for Trial and Not on Zoom,"
`Law 360, May 15, 2020
`https://www.law360.com/texas/articles/1273188/why-
`gilstrap-is-getting-ready-for-trial-and-not-on-zoom
`
`Claim Construction Memorandum Opinion and Order, Case
`2:19-cv-00066, Doc. 130, April 7, 2020
`
`Sutivong et al., U.S. Publication No. US2006/0018336 A1,
`published Jan. 26, 2006
`
`Email chain on proposals on reducing asserted claims and
`prior art
`
`Table of Contents for Invalidity Expert Report of Mark
`Lanning regarding the Validity of U.S. Patent Number
`8,411,557
`
`Defendant Apple Inc.'s P.R. 3.3 Second Amended Invalidity
`Contentions
`
`KREHER, Ralf and RÜDEBUSCH, Torsten, UMTS
`Signaling,
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`I.
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`Case IPR2020-00466
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`INTRODUCTION
`The Petitioner filed a Petition on February 28, 2020 to challenge the '833
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`patent, fully aware that under the district court schedule, a jury would likely return
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`a verdict on the validity of the patent even before the Board decides whether to
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`institute. Since then, the trial has been moved up to August 3, 2020, making it
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`almost certain that the jury will reach a decision on the same grounds of challenge
`
`before a preliminary decision by the Board. Given that all six Fintiv factors favor
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`a discretionary denial, the Board should exercise this discretion to avoid
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`duplicative efforts that waste the judicial, administrative and the parties' resources
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`and to avoid potentially inconsistent outcome.
`
`On the merit, Petitioner acknowledges that neither reference discloses
`
`"sequences generated from the same base sequence and having different cyclic
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`shifts are arranged in an increasing order of the cyclic shifts." Pet. 34 (arguing that
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`Harris would use Tan's sequences, and it supposedly "would have been obvious for
`
`a POSITA to arrange Tan's sequences such that the cyclically shifted sequences
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`were in increasing order of the cyclic shifts"); Pet. 55 (referencing only to Ground
`
`1's analysis for the limitation). Nor has Petitioner provided any reason why a
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`POSITA would have arranged the sequences in an increasing order of the cyclic
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`shifts in the Harris or Sutivong systems, especially given the fact that the
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`secondary reference Tan supposedly discloses a set of cyclically shifted Chu-
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`sequences that Petitioner does not assert are arranged in the claimed manner.
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`Thus, Petitioner has failed to demonstrate that either combination discloses or
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`suggests all limitations of the claims.
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`For at least these reasons and the reasons stated below, Petitioner has failed
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`to show a likelihood of success and the petition should be denied.
`
`II. FINTIV FACTORS FAVOR DISCRETIONARY DENIAL OF
`INSTITUTION UNDER 35 U.S.C. § 314(a)
`In Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB, March 20,
`
`2020) (precedential), the Board set forth a number of factors related to a parallel,
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`co-pending proceeding in determining whether to exercise discretionary institution
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`or denial under 35 U.S.C. § 314(a). For the same reasons that the Board denied
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`Apple's petition in Fintiv, the Board should deny its petition here as well.
`
`A. Fintiv Factor #1: no evidence that the district court would grant a
`stay if a proceeding is instituted given that the institution date
`would be one month after the trial start date
`The first Fintiv factor is "whether court granted a stay or evidence exists that
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`one may be granted if a proceeding is instituted." Fintiv, Paper 11 at 6. Currently,
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`a trial is scheduled to start in the parallel district court case on August 3, 2020. Ex.
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`2002 (amended docket control order) at 1. Patent infringement trials before Judge
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`Gilstrap have generally been five to six court days. Thus, a jury will likely render
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`a verdict on the subject patent's validity even before the due date of the Board's
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`institution decision.
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`Given the advanced stage of the litigation—the parties will file all
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`dispositive motions by the end of day today (6/18/2020) and motions in limine
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`tomorrow (6/19/2020), and the trial is to begin in 1.5 months and before the due
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`date for the Board's institution decision (Ex. 2002)—it is highly unlikely that Court
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`will grant a stay should Apple seek one at this late stage.1 For example, Judge
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`Gilstrap's standing order concerning COVID19 states that while he will "consider,
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`where warranted, multiple requests for extensions over time," he cautioned that
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`"[a]ll such extensions must be reasonable in length, and none can effect a
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`complete halt of case activities for a long period of time." Ex. 2003.
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`The Court in the Eastern District of Texas has also noted that "[i]t is now
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`well established that this Court will not, barring exceptional circumstances, grant a
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`stay of proceedings for the mere filing of an IPR." Tessera Advanced Techs., Inc.
`
`v. Samsung Elecs. Co., No. 2:17-CV-00671-JRG, 2018 U.S. Dist. LEXIS 120999,
`
`at *10-11 (E.D. Tex. July 19, 2018). It is therefore highly unlikely that, even if
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`Apple moves for a stay now, the Court will grant a stay before trial.
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`Moreover, Petitioner has only filed petitions against three of the six asserted
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`patents. When IPRs cannot fully resolve all claims-in-suit, the court in the Eastern
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`1 Apple has not sought a stay of the district court proceeding since the start
`of the litigation.
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`District of Texas would deny a stay even if the IPRs were instituted. See, e.g.,
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`Case IPR2020-00466
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`Saint Lawrence Comm'ns LLC v. ZTE Corp., No. 2:15-CV-349-JRG, 2017 U.S.
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`Dist. LEXIS 84290, at *8-9 (E.D. Tex. Jan. 17, 2017) (IPR institution on less than
`
`all the patents favors denying discretionary stay). This diminishes the chance that
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`Apple can get a stay before the jury trial even further.
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`Thus, the first Fintiv factor favors discretionary denial.
`
`B.
`
`Fintiv Factor #2: the court's trial date is one month before the
`Board's projected institution date and 13 months before Board's
`projected statutory deadline for a final written decision
`The second Fintiv Factor is "proximity of the court's trial date to the Board's
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`projected statutory deadline for a final written decision." Fintiv, Paper 11 at 6. As
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`Fintiv explains, "[i]f the court's trial date is earlier than the projected statutory
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`deadline, the Board generally has weighed this fact in favor of exercising authority
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`to deny institution under NHK." Id., Paper 11 at 9. In this case, this factor weighs
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`particularly in favor of discretionary denial.
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`In the parallel district court, Judge Gilstrap has scheduled a jury trial starting
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`on August 3, 2020 and a jury verdict is expected by mid-August. Ex. 2002.2 That
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`is, the jury will render a decision on the validity of the '557 patent before the
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`2 Recently, Judge Gilstrap "told Law360 that he anticipates the court
`allowing jury trials to resume at the start of June" (Ex. 2004) and there is no
`indication that he would delay the current trial.
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`September 18, 2020 deadline for the Board's institution decision. If the Board
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`institutes a trial, the final written decision will be due in mid-September 2021,
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`approximately 13 months after the jury verdict. Given the 13-month gap between
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`the scheduled trial date and the final written decision deadline, this factor weighs
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`heavily in favor of the discretionary denial of institution.
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`Indeed, the Board has denied institution when the gap was as few as one
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`month. See Next Caller Inc. v. TRUSTID Inc., IPR2019-00961, Paper 10, 9-15
`
`(PTAB Oct. 16, 2019) (trial scheduled for three months before FWD); E-One, Inc.
`
`v. Oshkosh Corp., IPR2019-00161, Paper 16, 6-9 (PTAB May15, 2019) (trial
`
`scheduled one month before FWD); NHK (a six-month gap); Intel Corporation v.
`
`VLSI Technology LLC, IPR2020-00106, Paper 17, 5-13 (PTAB May 17, 2020) (a
`
`7-month gap).
`
`C. Fintiv Factor #3: There has been immense "investment in the
`parallel proceeding by the court and parties."
`As explained in Fintiv:
`
`[I]f, at the time of the institution decision, the district court has issued
`substantive orders related to the patent at issue in the petition, this fact
`favors denial. Likewise, district court claim construction orders may
`indicate that the court and parties have invested sufficient time in the
`parallel proceeding to favor denial.
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`Fintiv, Paper 10 at 9-10. Here, this factor weighs strongly in favor of denying
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`Case IPR2020-00466
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`institution.
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`In the parallel district court case, the Court held a Markman hearing in late
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`January and issued a claim construction order on April 7, 2020 with the Court
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`rejecting all Apple's proposed construction and indefiniteness argument. Ex. 2005.
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`Fact discovery has closed. The parties have exchanged expert reports (including
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`reports on the '557 patent's validity), conducted expert discovery, and filed (or will
`
`file at the end of the day) dispositive and Daubert motions. Ex. 2002. More
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`resources will be devoted to the district court case in the coming months in
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`preparation of the August trial. Thus, the parties and the court have already made
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`and will continue to make in the next couple of months tremendous "investment in
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`the parallel proceeding." The third Fintiv factor therefore also weighs heavily in
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`favor of discretionary denial.
`
`D. Fintiv Factor #4: There is complete "overlap between issues
`raised in the petition and in the parallel proceeding."
`The exact same combinations of references at issue in the Petition are also at
`
`issue in the district court. See Ex. 2007 at 1.
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`In particular, as shown in Exhibit 2007, combinations 2 and 3 of the election
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`
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`are the same as the asserted grounds in this petition; and combinations 1 and 4 are
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`slight variations of combinations 2 and 3.3 Petitioner also relies on the same
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`expert, Mr. Lanning, for the Petition and the district court case, and employs some
`
`of the same attorney for the district court case and the IPR. Compare Ex. 1002
`
`(Lanning Declaration) with Ex. 2008 (cover and TOC of Petitioner's 557 report);
`
`Pet. 1 (counsel list) with Ex. 2007 (sender of email).
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`Petitioner attempts to justify its late petition by alleging that there are too
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`many claims relating to the '557 patent at issue in the district court case. Pet. 6.
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`Basically, Petitioner is making a remarkable allegation that it will not be given
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`sufficient time to present its case and its due process is impaired in a federal
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`district court. If that argument ever had any merit, that merit has disappeared. The
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`Patent Owner has reduced the number of claims for the '557 patent to claims 1, 5
`
`and 10. Ex. 2007 at 2.
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`Further, in this case, the fact that there are more claims at issue in the
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`Petition than the ones elected for trial does not weigh in favor of discretionary
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`3 Petitioner elected to use a different version of Sutivong in the district court.
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`But the substance of the two are the same. Compare Ex. 2006 [Sutivong
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`US2006/0018336] with Ex. 1003.
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`institution. As evidenced by the Petition, the analysis for the dependent claims
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`relies on essentially the same evidence and argument as for claim 1; and Petitioner
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`devotes the bulk of the analysis to the elected claims. Compare Pet. 37-41, 42-44,
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`59-62, 63-66 (claims 2-4 & 7-9) with Pet. 24-37, 41-42, 45-46, 46-59, 62-63, 66-
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`68 (elected claims 1, 5 and 10). That is, the Petition spent 30 pages on elected
`
`pages but only 12 pages on unelected claims collectively. Id. Thus, like in the
`
`district court, the focus of the inter partes review will be on the elected claims as
`
`well. In other words, there is substantial, if not, complete overlap between this
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`inter partes review proceeding and the district court case.
`
`Hence, Fintiv factor 4 also favors discretionary denial. See IPR2020-00106,
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`Paper 17 at 10-11 (finding "the issues raised in the Petition largely overlap with
`
`those currently raised in the Western District of Texas litigation," and thus factor
`
`#4 weighed in favor of denying institution); Google LLC v. Uniloc 2017 LLC,
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`IPR2020-00115, Paper 8 at 8 (denying institution under Fintiv where petitioner
`
`raised many more obviousness combinations in parallel district court action); Sand
`
`Revolution II, LLC, v. Continental Intermodal Group – Trucking LLC, IPR2019-
`
`01393, Paper 12, 16-17 (PTAB Feb. 5, 2020), rehearing denied (denying
`
`institution under § 314(a) where petitioner's litigation defenses raised 16 additional
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`combinations, relying upon different aspects of references than IPR).
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`The fourth Fintiv factor therefore weighs also in favor of discretionary stay.
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`E.
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`Fintiv Factor #5: "The petitioner and the defendant in the parallel
`proceeding are the same party."
`As in Fintiv, this factor weighs in favor of denial, as Petitioner is both the
`
`defendant in the District Court Action and the petitioner here. Fintiv, Paper 10 at
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`11.
`
`F.
`
`Fintiv Factor #6: "Other circumstances that impact the Board's
`exercise of discretion, including the merits" favor non-institution.
`The other facts bearing upon the discretionary denial decision only confirm
`
`that institution should be denied.
`
`First, Petitioner's only excuse for its delay in filing the petition was allegedly
`
`the large number of claims asserted by Patent Owner. That excuse is not well taken
`
`and is not backed up by the facts: While Petitioner spent 30 pages on elected
`
`claims, it devoted no more than 12 pages on unelected claims collectively.
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`Compare Pet. 37-41, 42-44, 59-62, 63-66 (unelected claims) with Pet. 24-37, 41-
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`42, 45-46, 46-59, 62-63, 66-68 (elected claims). The remainder of the petition
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`relates to substance that Petitioner would include regardless whether the Petition
`
`has one claim or 14 claims: introduction, mandatory notices, certificate of grounds
`
`for standing, printed publication status, 314(a)/325(d) issues, technology
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`background, subject patent overview, prior art overview and skill level. Pet. 1-24.
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`In other words, the number of claims did not significantly affect the drafting of the
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`petition. Moreover, Petitioner had known about the references since August 19,
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`2019 when it served its invalidity contentions. Ex. 2009 at 30-31, 115 (original
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`Case IPR2020-00466
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`page numbers).
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`Second, given the schedule at the district court and the grounds of invalidity
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`chosen by Petitioner, Petitioner will have the opportunity to present its validity
`
`cases in court on more desired theories than it can before the Board. In the district
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`court action, in addition to the asserted ground, Petitioner also elected two other
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`grounds and one additional reference to challenge the validity of the '557 patent.
`
`(That of course also undermines Petitioner's purported reason for why IPR is more
`
`efficient: if it wanted to streamline the case, it should have down-selected the
`
`grounds of challenge rather than expanded them). Instituting this duplicative
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`petition would prejudice Patent Owner, waste Board resources, and contravene
`
`Congressional intent for a speedy, just and inexpensive adjudication of the patent
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`validity issues.
`
`Petitioner urges the Board not to exercise its discretion to deny institution
`
`under 35 U.S.C. § 314(a) in light of General Plastic factors. Pet. 5-7. However,
`
`while Petitioner mentions the various scheduled deadlines, it omits to acknowledge
`
`that given its filing date (February 28, 20020), the institution deadline would be
`
`after the trial date. Pet. 5-7. Petitioner contends that the IPR is a preferable
`
`"alternative" to a jury trial because there are too many claims at issue in the district
`
`court. Pet. 6. That excuse is now moot given that the district court trial will now
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`focus on independent claims 1, 5 and 10 (claims 1 and 10 are independent claims).
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`This IPR, therefore is not a more efficient alternative. Instead, it is a redundant
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`attack that harasses Patent Owner and wastes Board and the parties' resources.
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`Finally, regarding the merit, as explained in Sections VII and VIII, Petitioner
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`has not shown a likelihood of success on at least one challenged claim.
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` * * *
`In sum, the Board should exercise discretion to deny institution under the
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`Fintiv decision.
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`III. THE BOARD SHOULD DENY THE INSTITUTION UNDER 35
`U.S.C. § 325(d) BECAUSE THE OFFICE HAS CONSIDERED TAN IN
`DEPTH UNDER PETITIONER'S THEORY
`Petitioner concedes that the Office thoroughly considered validity of the
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`patents over Tan and a combination of Tan and Sutivong. Pet. 14-19. Although
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`Petitioner argues that the issued claims of the '557 patent are "of similar scope as
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`the claims rejected during prosecution of the [parent] '530 application," Pet. 17-18,
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`a review of the side-by-side claim chart on Pet. 17 reveals otherwise.
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`For example, claim 1 of the '557 patent includes the limitation "wherein the
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`predetermined number of sequences are grouped by partitioning the predetermined
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`number of sequences, in which sequences generated from the same base sequence
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`and having different cyclic shifts are arranged in an increasing order of the cyclic
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`shifts." Pet. 17. That limitation differs from claim 18 of the '530 application,
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`which relates to "wherein the plurality of sequences are grouped by partitioning the
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`Case IPR2020-00466
`Patent No. 8,411,557
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`plurality of sequences arranged in an increasing order of sequence indices of the
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`base sequences." This is because the issued claim 1 of the '557 patent requires the
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`differently cyclically shifted sequences generated from the same base sequence be
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`arranged in an increasing order of the cyclic shifts, while the rejected claim 18
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`contemplates arranging different base sequences in an increasing order of the base
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`sequence indices.
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`Indeed, for both grounds, Petitioner effectively concedes that its
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`combinations of references do not disclose this limitation, asserting only that "It
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`would have been obvious for a POSITA to arrange Tan's sequences such that the
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`cyclically shifted sequences were in increasing order of the cyclic shifts." Pet. 34
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`(Ground 1), Pet. 55 (relying solely on Ground 1 analysis). Trying to overcome the
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`fact that the office considered Tan and Tan/Sutivong, Petitioner appears to
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`speculate that the examiner, being different from the examiner who examined the
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`parent application, was unaware of Tan and Sutivong. Pet. 18-19. There is no
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`basis for that speculation because the applicants noticed those references in an IDS
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`and specifically pointed out "[t]he references listed on the attached Information
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`Disclosure Statement were submitted to and/or cited by the Patent and Trademark
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`Office in its prior application . . . ." Ex. 1006 at 113-116. Thus, given that the
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`Office has already reviewed Tan and Tan/Sutivong in detail and Petitioner has not
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`pointed out any obvious mistakes made by the Office or where the new limitation
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`Patent No. 8,411,557
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`is found in the references, the Board should deny the petition also under 35 U.S.C.
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`325(d).
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`IV. SUMMARY OF THE '557 PATENT
`U.S. Patent No. 8,411,557, entitled "Mobile Station Apparatus and Random
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`Access Method" (the "'557 patent"), was filed on December 21, 2011, claiming
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`priority to Japanese patent application filed on March 20, 2006. Ex. 1001 at 1.
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`The inventors taught that the '557 invention "is suitable for use in transmission of
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`uplink common channels including a RACH." Id., 9:55-56. In particular, the
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`invention "provide[s] a mobile station and radio communication method for
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`efficiently reporting control information in the RACH." Id., 1:60-62.
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`RACH stands for random access channel. This is the channel used to
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`transmit random access messages used to establish an initial connection between a
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`user equipment ("UE") and a base station upon UE's power-on or handover. Ex.
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`1005, [0004]. The UE uses random accesses to obtain an initial grant of resources,
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`with which it can then send additional information about itself to seek grants of
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`scheduled transmissions and/or user data.
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`UE generally sends the base station a random access preamble (or signature)
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`with which the base station can associate a responsive message with the UE that
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`sent the request. Ex. 1001, 1:19-22. One issue with random accesses is that the
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`transmissions are unscheduled such that multiple UEs may be attempting to access
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`the base station at the same time. Id., 1:23-28. The preambles sent by the different
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`UEs may interfere with one another, making it harder for the base station to
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`decipher the preambles properly. Id. Thus, it is desirable "to use code sequences
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`having low cross-correlation and high autocorrelation as signatures so as to
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`demultiplex and detect those signatures in the base station." Id. Cross-correlation
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`relates to the amount of interference between two different signatures and auto-
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`correlation relates to the interference between the same signature sent from two
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`UEs. Id., 6:29-32.
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`One problem that the invention tries to solve is how to allow multiple UEs
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`send a code corresponding to the same communication characteristics associated
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`with the UEs while still uniquely identifying each individual UEs and without
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`increasing the amount of information that the UE has to send over the random
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`access channel (which usually has a limited amount of resources). E.g., 5:36-40,
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`6:51-57, 7:13-1, 8:42-9:3. One thing to note is that the recited "control
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`information" in the claim differs from the term "control information" in the
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`specification. As is clear from the context of the claim language, "control
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`information" refers to that received by the mobile station, that is, downlink control
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`information. Ex. 1001, 9:58-59. This is equivalent to what the specification refers
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`to as the "control signal." Id., 8:42-45. In contrast, the "control information"
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`referenced in the specification generally refers to uplink control information or
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`control information sent from a UE to a base station. Id., 4:64-67.
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`After analyzing the cross-correlation characteristics of the CAZAC sequence
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`and recognizing that "a plurality of derived code sequence from a single base code
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`sequence are completely orthogonal" and "cross-correlation between a plurality of
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`base code sequences is relatively low . . . [but] not completely orthogonal," the
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`inventors recommend "associat[ing] derived code sequences derived from the a
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`single base code sequence" for the same control information. See id., Figs. 4, 5, 8,
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`9, 5:19-23, 6:6-32, 8:1-16. By embedding the control info