Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`DOCKET NO.: 1033300-00351US1
`Filed on behalf of APPLE INC.
`By:
`Joseph F. Haag, Reg. No. 42,612
`David L. Cavanaugh, Reg. No. 36,476
`Haixia Lin, Reg. No. 61,318
`Yu Yang, Reg. No. 68,839
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA
`Email: Joseph.Haag@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`Haixia.Lin@wilmerhale.com
`Ryan.Yang@wilmerhale.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`UNWIRED PLANET INTERNATIONAL LIMITED
`Patent Owner
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`Case IPR2020-00642
`Patent No. 9,001,774
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`PETITION FOR INTER PARTES REVIEW OF CLAIMS 6-10 OF U.S. PATENT
`NO. 9,001,774
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`TABLE OF CONTENTS
`Introduction .................................................................................................... 1 
`I. 
`II.  Mandatory Notices under 37 C.F.R. § 42.8 ................................................... 2 
`A.  Real Party-In-Interest ..................................................................................... 2 
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`B.  Related Matters ............................................................................................... 2 
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`C.  Lead and Back-Up Counsel ............................................................................ 2 
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`D.  Service Information ........................................................................................ 2 
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`Payment of Fees ............................................................................................. 3 
`III. 
`Requirements for Inter Partes Review........................................................... 3 
`IV. 
`A.  Grounds for Standing under 37 C.F.R. § 42.104(a) ....................................... 3 
`
`B. 
`
`Identification of the Challenge under 37 C.F.R. § 42.104(b) ........................ 3 
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`C.  Discretion Under 35 U.S.C. §314(a) and §325(d) ......................................... 5 
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`Technical Background to the ’774 Patent ...................................................... 8 
`V. 
`A.  Multiple Antenna Systems ............................................................................. 8 
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`B.  Use of “Gains,” “Phase Rotations,” and “Time Delays” for Diversity ....... 10 
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`The ’774 Patent ............................................................................................ 13 
`VI. 
`A.  Background to the ’774 Patent ..................................................................... 13 
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`B.  Summary of the ’774 Patent ......................................................................... 14 
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`C.  The Prosecution History of the ’774 Patent ................................................. 15 
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`D.  Person of Ordinary Skill in the Art .............................................................. 17 
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`VII.  Claim Construction - 37 CFR § 41.104(b)(3) .............................................. 17 
`A.  Legal Overview ............................................................................................ 17 
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`B. 
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`“At least one of a time delay, a phase rotation and a gain” ......................... 18 
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`VIII.  Overview of the Principal Prior Art References .......................................... 19 
`A.  Onggosanusi ................................................................................................. 20 
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`B.  Kuchi ............................................................................................................ 24 
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`IX.  GROUND 1: Claims 6-10 Are Unpatentable as Obvious under 35 U.S.C. §
`103 over Onggosanusi (Ex. 1003) in View of Kuchi (Ex. 1004). ........................... 25 
`A. 
`[6. Preamble]—“A method, comprising:” ................................................... 26 
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`B. 
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`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
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`[6.1]—“receiving a processing parameter for transmission of data on two
`antenna ports, the processing parameter including at least one of a time
`delay, a phase rotation and a gain determined based on a received uplink
`signal” ........................................................................................................... 26 
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`[6.2]—“receiving a first pilot, a second pilot, a first data symbol and a
`second data symbol transmitted on the two antenna ports” ......................... 39 
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`[6.3]—“demodulating the first data symbol and the second data symbol
`based on the processing parameter, the first pilot and the second pilot.” .... 41 
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`[7]—“The method of claim 6, wherein the first pilot and the second pilot
`are generated independently of the symbol processing parameter” ............. 45 
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`[8]—“The method of claim 6, wherein the processing parameter is
`determined on a user-by-user basis” ............................................................ 47 
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`[9]—“The method of claim 6, wherein the time delay is in a time domain
`and the phase rotation is in a frequency domain” ........................................ 48 
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`[10]—“The method of claim 6, wherein the demodulating further
`comprises: estimating a channel using the first pilot, the second pilot and
`the processing parameter; and demodulating the first and second data based
`on the estimated channel” ............................................................................. 51 
`
`GROUND 2: Claims 6-10 Are Unpatentable as Obvious under 35 U.S.C. §
`X. 
`103 over Onggosanusi (Ex. 1003) in View of Kuchi (Ex. 1004). ........................... 56 
`A. 
`[6. Preamble]—“A method, comprising:” ................................................... 57 
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
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`[6.1]—“receiving a processing parameter for transmission of data on two
`antenna ports, the processing parameter including at least one of a time
`delay, a phase rotation and a gain determined based on a received uplink
`signal” ........................................................................................................... 57 
`
`[6.2]—“receiving a first pilot, a second pilot, a first data symbol and a
`second data symbol transmitted on the two antenna ports” ......................... 66 
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`[6.3]—“demodulating the first data symbol and the second data symbol
`based on the processing parameter, the first pilot and the second pilot.” .... 66 
`
`[7]—“The method of claim 6, wherein the first pilot and the second pilot
`are generated independently of the symbol processing parameter” ............. 68 
`
`[8]—“The method of claim 6, wherein the processing parameter is
`determined on a user-by-user basis” ............................................................ 69 
`
`[9]—“The method of claim 6, wherein the time delay is in a time domain
`and the phase rotation is in a frequency domain” ........................................ 70 
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`[10]—“The method of claim 6, wherein the demodulating further
`comprises: estimating a channel using the first pilot, the second pilot and
`the processing parameter; and demodulating the first and second data based
`on the estimated channel” ............................................................................. 70 
`
`XI. 
`
`Conclusion .................................................................................................... 71 
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`I.
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`Introduction
`Apple Inc. (“Petitioner”) respectfully submits this Petition for inter partes
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`review of claims 6-10 of U.S. Patent No. 9,001,774 (“’774 patent”) (Ex. 1001).
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`The ’774 patent discloses a method that involves the reception of a “processing
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`parameter” used to transmit data from two antenna ports, and then use of the
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`processing parameter and pilot signals to demodulate data symbols. Ex. 1001
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`(’774 patent) at Abstract, claim 6. However, there was nothing inventive about the
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`claimed method as of the earliest priority date of the ’774 patent, and the claimed
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`concepts had been well-known in the prior art. Thus, claims 6-10 should be
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`canceled.
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`Because the parties in the related litigation (see Section II.B infra) dispute
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`the meaning of one key term from the ’774 patent, and because the grounds for
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`unpatentability turn on the construction of this term, Petitioner has set forth
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`separate grounds for unpatentability for the different claim constructions. In
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`particular, under Patent Owner’s broad construction of the term “at least one of a
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`time delay, a phase rotation and a gain,” the Petition sets forth that Onggosanusi
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`(Ex. 1003) in view of Kuchi (Ex. 1004) renders obvious claims 6-10 of the ’774
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`patent (Ground 1), using only one feature from Kuchi. Under Petitioner’s
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`narrower construction of “at least one of a time delay, a phase rotation and a gain,”
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`the Petition sets forth that Onggosanusi (Ex. 1003) in view of Kuchi (Ex. 1004)
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`renders obvious claims 6-10 (Ground 2), using two features from Kuchi.
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`II. Mandatory Notices under 37 C.F.R. § 42.8
`Pursuant to 37 C.F.R. § 42.8, Petitioner provides the following mandatory
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`disclosures:
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`A. Real Party-In-Interest
`Apple Inc. is a real party-in-interest.
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`B. Related Matters
`The ’774 patent has been asserted against Apple Inc. in Optis Wireless Tech.
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`LLC, et al. v. Apple Inc., Case No. 2:19-CV-66-JRG (E.D. Tex.).
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`C. Lead and Back-Up Counsel
`Lead Counsel: Joseph F. Haag (Reg. No. 42,612)
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`First Backup Counsel: David L. Cavanaugh (Reg. No. 36,476)
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`Backup Counsel: Haixia Lin (Reg. No. 61,318)
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`Backup Counsel: Yu Yang (Reg. No. 68,839)
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`D.
`Service Information
`Email: Joseph F. Haag, Joseph.Haag@wilmerhale.com; Haixia Lin,
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`Haixia.Lin@wilmerhale.com; Yu Yang, Ryan.Yang@wilmerhale.com, David
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`Cavanaugh, David.Cavanaugh@wilmerhale.com
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`Post and Hand Delivery: Wilmer Cutler Pickering Hale and Dorr LLP
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`60 State St., Boston MA 02109
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`Telephone: 617-526-6000
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`Facsimile: 617-526-5000
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`Petitioner consents to email delivery on lead and backup counsel.
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`III. Payment of Fees
`The undersigned authorizes the Patent Office to charge the fee required by
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`37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
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`No. 080219. Any additional fees that might be due are also authorized.
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`IV. Requirements for Inter Partes Review
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that the ’774 patent is available for inter partes
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`review and that the Petitioner is not barred or estopped from requesting an inter
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`partes review challenging the patent claims of the ’774 patent on the grounds
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`identified herein.
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`B.
`Identification of the Challenge under 37 C.F.R. § 42.104(b)
`Petitioner requests inter partes review of claims 6-10 of the ’774 patent and
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`that the Board cancel the same as unpatentable. This Petition, which is supported
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`by the Declaration of Dr. Zhi Ding (Ex. 1002), demonstrates a reasonable
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`likelihood that Petitioner will prevail with respect to at least one challenged claim
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`and that each challenged claim is unpatentable for the reasons cited herein. See 35
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`U.S.C. § 314(a).
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`1. The Specific Art on Which the Challenge is Based
`Petitioner relies upon the following published patent application and printed
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`publication1:
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`Onggosanusi (Exhibit 1003) – U.S. Patent Application Publication No.
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`2002/0114269 to Onggosanusi, et al. (“Onggosanusi”) was filed on October 3,
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`2001 and published on August 22, 2002. Onggosanusi published more than one
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`year before the earliest possible priority date of the ’774 patent and is therefore
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`prior art to the ’774 patent under at least pre-AIA 35 U.S.C. § 102(b).
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`Kuchi (Exhibit 1004) – U.S. Patent No. 6,542,556 to Kuchi et al. (“Kuchi”)
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`was filed on March 31, 2000 and issued on April 1, 2003. Kuchi issued more than
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`1 As described below, the prior art references relied on in this Petition predate the
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`earliest possible priority date for the ’774 patent by more than one year and are
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`therefore prior art under at least 35 U.S.C. § 102(b). Accordingly, for purposes of
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`this Petition, Petitioner does not take a position as to whether the ’774 patent is
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`entitled to the filing dates of the priority applications. Petitioner reserves the right
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`to argue in other proceedings (before the USPTO or other tribunals) that the
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`subject matter claimed in the ’774 patent is unsupported by the priority
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`applications.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`one year before the earliest possible priority date of the ’774 patent and is therefore
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`prior art to the ’774 patent under at least pre-AIA 35 U.S.C. § 102(b).
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`2. The Specific Grounds on Which the Challenge is Based
`Petitioner respectfully requests cancellation of claims 6-10 of the ’774 patent
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`on the following grounds:
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`Ground
`1
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`’774 Patent Claims
`6-10
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`2
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`6-10
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`Basis
`Obvious under 35 U.S.C. §103 based on
`Onggosanusi (Ex. 1003) in view of Kuchi
`(Ex. 1004), using Patent Owner’s
`construction of “at least one of a time delay,
`a phase rotation and a gain” from related
`litigation
`Obvious under 35 U.S.C. §103 based on
`Onggosanusi (Ex. 1003) in view of Kuchi
`(Ex. 1004), using Apple’s construction of
`“at least one of a time delay, a phase
`rotation and a gain” from related litigation
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`Pursuant to 37 C.F.R. § 42.104(b), Sections IX and X demonstrate that
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`claims 6-10 of the ’774 patent are unpatentable.
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`C. Discretion Under 35 U.S.C. §314(a) and §325(d)
`The ’774 patent is one of seven patents asserted by the plaintiffs in the
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`related litigation against Apple. Apple is diligently pursuing its defenses,
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`including invalidity, in the district court; however, inter partes review is a more
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`efficient and expedient forum in which to adjudicate validity using patents and
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`printed publications. The Board should not exercise its discretion to deny this
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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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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`First, neither Petitioner nor any other party has previously filed a petition
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`directed to any claims of the ’774 patent. See General Plastic Industrial Co., v.
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`Canon Kabushiki Kaisha, IPR2016-01357, -01358, -01359, -01360, -01361, *9
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`(PTAB Sept. 6, 2017).
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`Second, because there are no earlier petitions by Petitioner, Factors 2-5 of
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`General Plastic do not apply. Id.; see also Valve Corp. v. Elec. Scripting
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`Products, Inc., IPR2019-00062, -00063, -00084, at *9 (PTAB Apr. 2, 2019).
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`Third, the ’774 patent involves the technical subject matter of reception of a
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`“processing parameter” used to transmit data from two antenna ports, and then use
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`of the processing parameter and pilot signals to demodulate data symbols, and is
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`thus well-suited to the expertise of the specialized patent judges at the PTAB.
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`Fourth, all seven patents in the related litigation are currently set for jury
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`trial starting the same day (August 17, 2020).2 Because there are more asserted
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`claims than could reasonably be tried in the available time, and because plaintiffs
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`will need to narrow the number of asserted claims for trial, it is currently unclear
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`which patents and claims will proceed to trial on August 17, 2020. Furthermore,
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`2 Plaintiffs recently notified Apple that they seek to dismiss U.S. Patent No.
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`8,989,290 from the related litigation against Apple. The parties are in the process
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`of negotiating the terms for dismissal of this patent.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`no claim construction ruling has been issued in the district court case, fact and
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`expert discovery are not scheduled to close until March 23, 2020 and May 11,
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`2020, respectively, and dispositive motions are not due to be filed until May 11,
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`2020. Compare Precision Planting, LLC v. Deer & Company, IPR2019-01044,
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`slip op. at *14-15 (PTAB Dec. 2, 2019) and Mylan Pharmaceuticals, Inc. v. Bayer
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`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
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`part 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.
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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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`following a jury verdict, the time required for briefing and resolution of post-trial
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`motions will likely result in an Institution Decision before the district court’s final
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`appealable judgment is docketed.3
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`3 For example, in Optis Wireless Technology v. Huawei Technologies Co., No.
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`2:17-Ccv-00123-JRG (E.D. Tex.) in which the plaintiffs in the related litigation
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`asserted U.S. Patent No. 8,102,833 against different defendants (the ’833 patent is
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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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, because Petitioner was timely in pursuing this relief,
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`and in light of the substantive grounds discussed below, Petitioner requests that the
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`Petition be granted. General Plastic, at 9-10. Petitioner may request additional
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`briefing if Patent Owner urges the Board to exercise its discretion to deny this
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`Petition under 35 U.S.C. §§ 314(a) or 325(d).
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`V. Technical Background to the ’774 Patent
`A. Multiple Antenna Systems
`The ’774 patent discloses a method that involves the reception of a
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`“processing parameter” used to transmit data from two antenna ports, and then use
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`of the processing parameter and pilot signals to demodulate data symbols. Ex.
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`1001 (’774 patent) at Abstract, claim 6.
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`Multiple transmit antenna systems existed in the prior art to the ’774 patent.
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`For example, the prior art Kuchi reference sets forth a multiple antenna system
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`one of the seven patents asserted in the related litigation against Apple), while the
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`jury issued a verdict after trial on August 27, 2018, final judgment was not entered
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`until March 18, 2019, with briefing continuing through December 2019.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`(where the multiple antenna are shown in green, blue, purple, and orange below) at
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`a transmitter.
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`Ex. 1004 at Fig. 1 (annotated).
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`Multiple transmit antennas in a wireless system can improve the reliability
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`of signal reception. As an example, in some multiple transmitter systems, the same
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`data can be sent from multiple transmit antennas. If the wireless link to the
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`receiver from a first transmit antenna is weak or has interference issues, the
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`wireless link from a second transmit antenna may be better, which increases the
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`chances of successfully receiving the signal at the receiver. The use of multiple
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`transmit antennas can introduce spatial diversity in that the transmit antennas can
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`be spaced apart—if even by a small distance—to form multiple channels from the
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`transmitter to the receiver. Ex. 1002 at ¶39. A multiple transmit antenna wireless
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`system can introduce spatial diversity for signal quality enhancement in orthogonal
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`frequency division multiplexing (OFDM), which is a method of transmitting data
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`in a bank of orthogonal, frequency domain channels (known as subcarriers)
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`simultaneously. Ex. 1001 (’774 patent) at Abstract (mentioning an OFDM
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`network); Ex. 1002 at ¶40.
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`B. Use of “Gains,” “Phase Rotations,” and “Time Delays” for
`Diversity
`In order to introduce additional diversity to improve reception quality, data
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`signals can be transmitted from multiple transmit antennas using different
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`processing parameters. Signals transmitted from multiple antennas may cause the
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`multiple received signals at the receiver to interfere constructively or destructively.
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`Constructive signal superposition can improve the reception signal-to-noise ratio,
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`which is beneficial to the quality of signal reception. By estimating the channel
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`conditions between the transmitter and the receiver (also called a channel estimate
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`or channel state information (CSI)), the transmitter can determine and apply one or
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`more parameters to the data signals in order to generate constructive signal
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`superposition and achieve higher signal-to-noise ratio. Ex. 1002 at ¶41.
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`In particular, a “gain,” a “phase rotation,” and/or a “time delay”—each of
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`which was known in the prior art to the ’774 patent—can be used as a parameter
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`applied to the different transmit signals to generate constructive signal
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`superposition at the receiver. Id. at ¶42.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`The figure below4 shows a simplified example of a “gain” applied to two
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`signals from two different transmit antennas (shown in red and blue triangles on
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`the left) in a base station in a multiple transmit antenna wireless system. The
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`receiver is shown as a “UE,” or mobile device, on the right. The signal transmitted
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`from the bottom (red) transmit antenna has a larger amplitude than the top (blue)
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`signal, meaning that a larger “gain” was applied to the signal from the red antenna.
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`Id. at ¶43. Numerous different terms are used by persons of ordinary skill in the
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`art for a “gain,” including a “weight” or an “amplification factor.” Id.
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`
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`The figure below shows a simplified example of a “time delay” applied to
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`two signals from two different transmit antennas in the same wireless network as
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`4 Each of the three figures below was taken and/or modified from Apple’s
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`technology tutorial in the related litigation.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`the example above. The signal from the top (blue) antenna has been delayed by a
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`time D with respect to the signal transmitted from the bottom (red) antenna. Id. at
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`¶44.
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`The final example below shows a simplified example of a “phase rotation”
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`applied to two signals in the same wireless network as the examples above. The
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`signal from the top (blue) antenna has been phase-shifted by 180 degrees with
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`respect to the signal transmitted from the bottom (red) antenna. Id. at ¶45.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`
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`The technology described above existed prior to the ’774 patent. In fact, the
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`’774 patent background acknowledges that it was known in the prior art to use (1)
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`multiple transmit antennas systems, (2) processing parameters including “delay
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`values” and “gain values” in these systems, and (3) a channel estimate (or CSI) to
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`determine the processing parameters. Ex. 1001 (’774 patent) at 1:48-66; Ex. 1002
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`at ¶46.
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`VI. The ’774 Patent
`A. Background to the ’774 Patent
`The ’774 patent background sets forth the desirability of improving the
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`reliability in a wireless system by transmitting multiple copies of the same data
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`from different transmit antennas. Ex. 1001 (’774 patent) at 1:41-60. The
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`background further sets forth the need for an improved method for performing
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`channel estimation for selecting processing parameters to be applied to data
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`symbols transmitted from multiple antennas. Id. at 1:61-2:6.
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`B.
`Summary of the ’774 Patent
`The ’774 patent is directed to receiving processing parameters and then
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`using those processing parameters and pilot signals to demodulate received data
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`signals in a multi-antenna system. Id. at claim 6. For example, Figure 7 depicts a
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`message flow diagram illustrating the transmission of data symbols from base
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`station 102 to subscriber station 116 according to one embodiment. Id. at 8:63-66.
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`Id. at Fig. 7; Ex. 1002 at ¶48.
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`The base station of Figure 7, which has two antenna ports (ANT1 and
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`ANT2), determines the processing parameters based on one or more uplink signals
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`705 received from the subscriber station. Id. at 8:66-9:5. Claim 6 specifies that
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`“the processing parameter includ[es] at least one of a time delay, a phase rotation
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`and a gain.” Id. at claim 6. The base station then transmits two pilot signals 710,
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`715 and the processing parameters (in control message 720) to the subscriber
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`station. Id. at 9:6-13. The base station next transmits a first data symbol 725 and a
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`second data symbol 730 to the subscriber station, with each data symbol processed
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`using the processing parameter set. Id. at 9:6-13. Finally, the subscriber station
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`demodulates the first data symbol 725 and the second data symbol 730 based on
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`the processing parameters included in the control message 720 and the first and
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`second pilot signals 710, 715. Id. at 9:13-16; Ex. 1002 at ¶49.
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`As explained in this petition, each feature of the ’774 patent set forth above
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`was well-known in the prior art. Ex. 1002 at ¶50.
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`C. The Prosecution History of the ’774 Patent
`The application for the ’774 patent was filed on November 12, 2013,
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`claiming priority through a series of applications to provisional applications filed
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`in April and May 2005. During prosecution, the Applicant filed a Response on
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`May 7, 2014, canceling the pending claim and adding new claims 30-39, including
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`independent claims 30 and 35. Ex. 1006 at 176-81. On July 8, 2014, the Examiner
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`rejected pending claims 30-39 as being anticipated by a patent to Gupta. Id. at
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`188-94. In response to this rejection, on September 8, 2014, the Applicant
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`amended independent claim 35 (as well as claim 30) to recite that the transmission
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`of data occurs on two antenna ports:
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`35. (Currently Amended) A method, comprising:
`receiving a processing parameter for transmission
`of data on two antenna ports, the processing parameter
`including at least one of a time delay, a phase rotation
`and a gain determined based on a received uplink signal;
`receiving a first pilot, a second pilot, a first data
`symbol and a second data symbol transmitted on the two
`antenna ports; and
`demodulating the first data symbol and the second
`data symbol based on the processing parameter, the first
`pilot and the second pilot.
`
`Id. at 202. The Applicant explained in response to the rejection that:
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`The pending claims specify that the symbol
`processing parameters, which include one of a time
`delay, a phase rotation and a gain, are determined based
`on a channel estimate provided in an uplink signal from a
`user equipment (UE) to the base station (BS) and are
`employed to process signals transmitted/received by the
`two antennae.
`Such features are not disclosed in Gupta.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`Id. at 205-06.
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`The Examiner subsequently allowed pending claims 30-39, which issued as
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`claims 1-10 of the ’774 patent (with issued claim 6 being pending claim 35). Id. at
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`222-24. The Examiner allowed the claims under the misimpression that the prior
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`art did not disclose determining the processing parameters based on a received
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`uplink signal. As set forth below, this feature was known in prior art that was not
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`before the Patent Office.
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`D.
`Person of Ordinary Skill in the Art
`The prior art discussed herein demonstrates that a person of ordinary skill in
`
`the art (“POSA”) in the field of the ’774 patent at the time of the alleged invention
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`would have at least an undergraduate degree in electrical engineering, computer
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`science, or computer engineering, or a related field, plus two years of experience in
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`the design, development, and/or testing of wireless networks or equivalent
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`combination of education and experience. A higher level of education could
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`compensate for less experience, and vice-versa. Ex. 1002 at ¶58.
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`VII. Claim Construction - 37 CFR § 41.104(b)(3)
`A. Legal Overview
`The challenged claims should be construed “using the same claim
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`construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (Nov. 13, 2018). Thus, each
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`claim term should be given its plain and customary meaning as understood by a
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`POSA, in accordance with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`(en banc).
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`B.
`“At least one of a time delay, a phase rotation and a gain”
`Petitioner proposes one term for construction—“at least one of a time delay,
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`a phase rotation and a gain” from claim 6 of the ’774 patent. Because the parties in
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`the related litigation (see Section II.B infra) dispute the meaning of this claim
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`term,5 and because the grounds for unpatentability turn on the construction of this
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`term, Petitioner has set forth separate grounds for the different claim constructions.
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`In particular, Apple construes the term “at least one of a time delay, a phase
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`rotation and a gain” from claim 6 of the ’774 patent conjunctively as “at least one
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`time delay, at least one phase rotation, and at least one gain.” Ground 2 in this
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`Petition uses Apple’s construction of this term. Ground 1 uses the broader
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`construction proposed by plaintiffs in the related litigation—that “at least one of a
`
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`5 Exhibit 1007 sets forth Apple’s and the plaintiffs’ constructions of “at least one of
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`a time delay, a phase rotation and a gain” in Optis Wireless Tech. LLC, v. Apple
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`Inc., Case No. 2:19-CV-66-JRG (E.D. Tx.). Ex. 1007 at 17. Exhibits 1008-1010
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`are plaintiffs’ opening claim construction brief, Apple’s responsive claim
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`construction brief, and plaintiffs’ reply claim construction brief in this related
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`litigation. Ex. 1008 at 34-37; Ex. 1009 at 31-34; Ex. 1010 at 11-12.
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`time delay, a phase rotation and a gain” has “a disjunctive meaning, requiring at
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`least one of any of the three listed items alone or in some combination, and not
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`requiring at least one of all three.” Ex. 1007 at 17.
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`Petitioner submits that Apple’s proposed construction in the related litigation
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`is correct because the plain language of the claims supports this construction. The
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`Federal Circuit has addressed that the plain meaning of the disputed term requires
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`that the phrase “at least one of” modify each category recited afterwards, and the
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`term “and” used to separate the categories connotates a conjunctive list. See
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`SuperGuide Corp. v. DirecTV Enters., 358 F.3d 870, 886 (Fed. Cir. 2004).
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`Therefore, the plain language compels a difference in meaning between the
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`conjunctive language “at least one of A, B, and C,” and the disjunctive language
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`“at least one of A, B, or C.”
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`Here, as in SuperGuide, the phrase recited after “at least one of” in the
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`disputed term is a list of categories: each of a time delay, a phase rotation, and a
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`gain represents a category of processing parameters. They define different
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`physical characteristics and have different units. Ex. 1002 at ¶62. Therefore, like
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`the disputed term in SuperGuide, the term “at least one of a time delay, a phase
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`rotation and a gain” should be construed conjunctively as “at least one time delay,
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`at least one phase rotation, and at least one gain.”
`
`VIII. Overview of the Principal Prior Art References
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`Petition for Inter Partes Review of U.S. Patent No. 9,001,774
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`A. Onggosanusi
`Onggosanusi is a U.S. patent application filed on October 3, 2001 and
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`published on August 22, 2002. It was not considered during prosecution of the
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`’774 patent and is not cumulative of any prior art considered by the Examiner(s).
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`Ex. 1002 at ¶65.
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`Onggosanusi discloses a transmitter having multiple transmit antenna po