UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`A.
`
`B.
`
`P.O. fails to establish that its proposed substitute claims meet
`the requirements under 37 C.F.R. § 42.121 and 35 U.S.C.
`§316(d) .................................................................................................. 1
`
`Patent Owner’s proposed amended claims are unpatentable for
`the same reason presented in the Petition ............................................. 4
`
`1.
`
`2.
`
`3.
`
`Correlation between language in Proposed Amended
`Claims and original claims .......................................................... 4
`
`The proposed amendment does not add any patentably
`distinct limitation ........................................................................ 6
`
`The Proposed Amended Claims are unpatentable over
`Talukdar in view of Li (Ground 3) ............................................. 9
`
`C.
`
`The Board should not give any weight to P.O.’s unsupported
`and conclusory attorney argument in support of the
`patentability of the proposed substitute claims ................................... 16
`
`III. CONCLUSION .............................................................................................. 17
`
`
`
`
`
`
`
`
`
`-1-
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Description
`U.S. Patent No. 8,265,096 (“the ’096 patent”)
`Declaration of Dr. Sumit Roy (“Roy”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Eleventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Dec. 10, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL., FUNDAMENTALS OF
`WIMAX (2007)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ’096 Patent Claims
`U.S. Provisional App. No. 60/929,798
`Excerpts from ’096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20-cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69 (“Markman Order”)
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`U.S. Provisional Application No. 60/956,031
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`Ex. 1014
`Ex. 1015 WIPO Handbook on
`Industrial Property
`Information and
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`Excerpts from William Stallings, WIRELESS COMMUNICATIONS AND
`NETWORKS (2D ED. 2005)
`
`(“Talukdar
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`-2-
`
`
`
`of
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Ex. 1028
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (November 2005)
`Ex. 1023 Mohammad Azizul Hasan, Performance Evaluation
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4 (Jan.
`12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (IEEE, Vol. 4, No. 2, Mar. 2005)
`Declaration of Dr. Robert Akl
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post Grant (available at:
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`slip-after-ptab-discretionary-denials/)
`Declaration of Jonah D. Mitchell in Support of Petitioners’ Motion
`for Pro Hac Vice Admission
`Declaration of Christine M. Morgan in Support of Petitioners’
`Motion for Pro Hac Vice Admission
`ITRI’s Recorded Assignment, Reel/Frame No. 045200/0980
`Sino Matrix’s Recorded Assignment, Reel/Frame No. 021275/0468
`UNM’s Recorded Assignment, Reel/Frame No. 046854/0173
`June 22, 2021 hearing transcript before Judge Albright in UNM’s
`litigations against Dell and ASUSTek.
`Printout from Public PAIR showing the correspondence address of
`record for the ’096 patent
`Excerpt of ’096 file history showing ITRI’s prosecution counsel
`February 9, 2022 Deposition Transcript of Dr. Branimir Vojcic for
`IPR2021-00375
`Supplemental Declaration of Dr. Sumit Roy (“Supp. Dec.”)
`
`
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`
`Ex. 1036
`
`Ex. 1037
`Ex. 1038
`
`Ex. 1039
`
`-3-
`
`
`
`I.
`
`INTRODUCTION
`P.O.’s Motion to Amend (Paper 27, hereafter “Motion”) should be denied for
`
`at least two reasons. First, the Motion should be denied because it does not comply
`
`with the requirement of 37 C.F.R. § 42.121(b) to show support for the entirety of the
`
`Proposed Amended Claims. Second, Patent Owner and its expert have confirmed
`
`that the only allegedly “new” limitation added in the Proposed Amended Claims is
`
`“naturally present” in the original claims. Accordingly, the Proposed Amended
`
`Claims are invalid over the combination of Talukdar and Li, as described in Ground
`
`1 of the Petition. Notably, the Board granted institution on Ground 1. See Paper 14
`
`at 44. Petitioner respectfully asks that the Board deny the Motion.
`
`II. ARGUMENT
`A.
`P.O. fails to establish that its proposed substitute claims meet the
`requirements under 37 C.F.R. § 42.121 and 35 U.S.C. §316(d)
`While the Petitioner ultimately bears the burden of proving unpatentability of
`
`the substitute claims, before considering the patentability of any substitute claim,
`
`“the Board first must determine whether the motion to amend meets the statutory
`
`and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.”
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (P.T.A.B. Feb. 25,
`
`2019) (precedential). These statutory and regulatory requirements include 37 C.F.R.
`
`§ 42.121(b), which requires that a motion to amend show support for each proposed
`
`substitute claim in both the original specification and the priority disclosure: “(b)
`
`
`
`-1-
`
`
`
`Content. A motion to amend claims must … set forth: (1) The support in the
`
`original disclosure of the patent for each claim that is added or amended; and (2)
`
`The support in an earlier-filed disclosure for each claim for which benefit of the
`
`filing date of the earlier filed disclosure is sought.” 37 C.F.R. § 42.121(b) (emphasis
`
`added); see also 35 U.S.C. § 316(d)(3) (“An amendment under this subsection may
`
`not … introduce new matter.”).
`
`Accordingly, “the Board requires that a motion to amend set forth written
`
`description support in the originally filed disclosure of the subject patent for each
`
`proposed substitute claim, and also set forth support in an earlier filed disclosure for
`
`each claim for which benefit of the filing date of the earlier filed disclosure is
`
`sought.” Lectrosonics, IPR2018-01129, Paper 15 at 7. Here, Patent Owner’s
`
`Motion to Amend does not satisfy the requirements of 37 C.F.R. § 42.121(b).
`
`As the Lectrosonics precedential order makes clear, “to meet this
`
`requirement,” “the motion must set forth written description support for each
`
`proposed substitute claim as a whole, and not just the features added by the
`
`amendment.” Lectrosonics, IPR2018-01129, Paper 15 at 8 (emphasis added).
`
`Patent Owner’s Motion to Amend does not even attempt to satisfy the
`
`requirement to show support for each proposed substitute claim as a whole. Mot. at
`
`3–5. Rather, Patent Owner only purports to show support for the additional feature
`
`added by the amendments. Mot. at 4–6. Accordingly, by only attempting to show
`
`-2-
`
`
`
`support for “just the features added by the amendment,” rather than the “proposed
`
`substitute claim as a whole,” Patent Owner has not satisfied the requirements of 37
`
`C.F.R. § 42.121(b)(1). Lectrosonics, IPR2018-01129, Paper 15 at 8. Accordingly,
`
`Patent Owner’s Motion to Amend should be denied. See Lippert Components, Inc.
`
`v. Days Corp., IPR2018-00777, Paper 28 at 51 (PTAB Sept. 24, 2019) (“We
`
`conclude Patent Owner has not met its burden of production in asserting that
`
`proposed claims 15 and 16 have written description support in the original
`
`application….The Motion to Amend does not address, in any fashion, the limitations
`
`of the existing claims that are carried forward in the proposed claims…. Thus, there
`
`was nothing for Petitioner to oppose in that regard when filing the initial
`
`opposition.”).
`
`Patent Owner’s failure to attempt to make the required showing is
`
`inexcusable. The Board issued an Order informing P.O. of the requirements of a
`
`motion to amend that specifically directed the parties’ attention to the Lectrosonics
`
`precedential order:
`
`We direct the parties to the Board’s order in Lectrosonics, Inc. v. Zaxcom,
`Inc., Case IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential) and
`the Patent Trial and Appeal Board Consolidated Trial Practice Guide
`November 2019, which provide information and guidance on motions to
`amend.
`
`-3-
`
`
`
`Paper 24 at 2. Accordingly, Patent Owner’s Motion to Amend should be denied at
`
`least for failing to show support for the proposed substitute claims in the original
`
`disclosure, as required by 37 C.F.R. § 42.121(b)(1).
`
`B.
`
`Patent Owner’s proposed amended claims are unpatentable for
`the same reason presented in the Petition
`1.
`Correlation between language in Proposed Amended Claims
`and original claims
`Patent Owner has proposed a one-for-one replacement of original claims 1-4
`
`and 6-7 with Proposed Amended Claims 44-47 and 49-50, which Petitioner has
`
`labeled with identifiers below:
`
`Proposed Amended Claim 44:
`
`44[pre] A method of constructing a frame structure for data transmission, the
`method comprising:
`44[a]: generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`44[b]: generating a second section following the first section, the second
`section comprising data configured in a second format compatible with a
`second communication
`system using
`symbols, wherein
`the
`first
`communication system's symbols and the second communication system's
`symbols co-exist in one transmission scheme and wherein:
`44[c]: the second format is compatible with the second communication system
`configured to support higher mobility than the first communication system,
`wherein each symbol in the second communication system has a shorter
`symbol period than that in the first communication system; and
`44[d]: wherein the second communication system has pilot symbols that are
`denser than those in the first communication system;
`44[e]: generating at least one non-data section containing information
`describing an aspect of data in at least one of the first section and the second
`
`-4-
`
`
`
`section; and
`44[f]: combining the first section, the second section and the at least one
`nondata section to form the frame structure.
`Proposed Amended Claim 45:
`
`45: The method of claim [1]44, wherein the non-data section comprises
`mapping information for at least one of the first section and the second section.
`Proposed Amended Claim 46:
`
`46: The method of claim [1]44, wherein the non-data section comprises at
`least one of a preamble, a frame control header 60 (FCH), a burst, and a map
`of at least one of the first section and the second section.
`Proposed Amended Claim 47:
`
`47: The method of claim [3]46, wherein the second section follows the first
`section in at least one of time sequence and frequency spectrum.
`Proposed Amended Claim 49:
`
`49: The method of claim [1]44, wherein each of the first section and the
`second section carries at least one of uplink and downlink data.
`Proposed Amended Claim 50:
`
`50: The method of claim [1]44, wherein the second section carries mapping
`information for data in the second section.
`As can be seen above, the sole proposed change to each of the Proposed
`
`Amended Claims is to add the limitation that “the second system has pilot symbols
`
`that are denser than those in the first communication system” directly to Proposed
`
`Amended claim 44, and by dependence, to the other Proposed Amended Claims.
`
`-5-
`
`
`
`2.
`
`The proposed amendment does not add any patentably
`distinct limitation
`Although it superficially adds a limitation, the proposed amendment to
`
`original claim 1 in Proposed Amended Claim 44 does not add any limitation that is
`
`not already present in the original claim. The Proposed Amended Claims are
`
`therefore invalid for the same reason as the original claims.
`
`In its Response, attempting to find support for original claim 8 in the
`
`disclosure of U.S. Provisional Patent Application No. 60/929,798 (“the ’798
`
`Application”), Patent Owner and its expert expressly confirmed that the limitation
`
`“wherein the second system has pilot symbols that are denser than those in the first
`
`communication system” is “a natural result” of reduced symbol period:
`
`Response, Paper 28 at 27 (quoting Vojcic Declaration, Ex. 2001, at ¶ 52).
`
`
`
`-6-
`
`
`
`Petitioner’s expert, Dr. Sumit Roy, confirms that based on the construction of
`
`“pilot symbols that are denser than” proposed by both parties to this proceeding (and
`
`adopted by the district court in UNM Rainforest Innovations v. Apple), any prior art
`
`that disclosed the limitation “wherein each symbol in the second communication
`
`system has a shorter symbol period than that in the first communication system”
`
`would equally disclose “wherein the second system has pilot symbols that are denser
`
`than those in the first communication system.” Supplemental Declaration of Sumit
`
`Roy, Ph.D. (“Supp. Dec.”), Ex. 1039, at ¶¶ 19–24.
`
`Dr. Roy explains that because the unit time is defined as the symbol period
`
`for the first communication system, the unit time will necessarily be longer than the
`
`symbol period of the second communication system. Id. at 60. Because pilot
`
`symbols are assigned to a specific proportion of the total number of symbols in an
`
`OFDM frame, the number of pilot symbols per unit time in the second
`
`communication system will necessarily be higher than in the first communication
`
`system. Id. at 61–62.
`
`Dr. Roy uses the following figure to illustrate one example, taught by Li,
`
`where the second communication system has a period that is half the period of the
`
`first communication system:
`
`-7-
`
`
`
`
`
`Id.
`
`In this figure, the first communication system (left half of the figure) has a
`
`symbol period of T and has one pilot symbol inserted per every three subcarriers in
`
`each slot. Id. at 62. As a result, the first communication system in this example has
`
`two pilot symbols per unit time. The second communication system (right half) has
`
`a symbol period of T/2 and the same pilot distribution – one per every three
`
`subcarriers. Id. As indicated by the numbered pilot symbols in the figure, the second
`
`communication system has a higher number of pilot symbols per unit time than the
`
`first communication system (four vs. two) due to the shorter symbol period. Id.
`
`Because original claim 1 already included the limitation “wherein each
`
`symbol in the second communication system has a shorter symbol period than that
`
`in the first communication system,” both the above analysis from Dr. Roy and Patent
`
`-8-
`
`
`
`Owner’s argument that the new limitation is simply “a natural result of reduced
`
`symbol period” confirms that the new limitation does not add anything to the original
`
`claims.
`
`3.
`
`The Proposed Amended Claims are unpatentable over
`Talukdar in view of Li (Ground 3)
`As discussed in the Petition (Paper 1), Dr. Roy’s Original Declaration (Ex.
`
`1002 (“Roy”)), Petitioner’s Reply (filed concurrently herewith), and the Board’s
`
`Decision on Institution (Paper 14), the combination of Talukdar and Li renders
`
`obvious Original Claims 1-4 and 6-7.
`
`The limitations 44[pre] through 44[c] are disclosed in the combination of
`
`Talukdar and Li, as described in connection with claim elements 1[pre] through 1[c]
`
`in the Petition and in Dr. Roy’s original declaration (Ex. 1002). Likewise,
`
`limitations 44[e] and 44[f] are described in connection with claim elements 1[d] and
`
`1[e]. Each of the limitations of the dependent claims are described in connection
`
`with their corresponding original claims.
`
`As discussed above, the newly added element 44[d], “wherein the second
`
`system has pilot symbols that are denser than those in the first communication
`
`system,” is disclosed by any art that would disclose the second communication
`
`system having shorter symbol period, based on the construction of “pilot symbols
`
`that are denser than.” The combination of Talukdar and Li discloses that the second
`
`-9-
`
`
`
`communication system has a shorter symbol period than the first communication
`
`system, as shown below.
`
`Li disclosed
`
`that a higher-mobility subscriber station (a “second
`
`communication system”) experienced a greater degree of interference between
`
`subcarriers than a lower-mobility or fixed subscriber station. “[H]igh mobility, [or]
`
`high speed ... causes ICI [inter-subcarrier interference] for OFDM and OFDMA
`
`systems that may limit their application to mobile channels.” Li, [0034]; Roy ¶¶ 130,
`
`73. Li taught that using a shorter symbol duration for a faster-moving station helped
`
`reduce the inter-subcarrier interference experienced by that station. “[A] short
`
`OFDM symbol duration and larger subcarrier spacing reduces ICI[.]” Li, [0035]; id.,
`
`[0010] (“The grouping of subscribers according to their speed ... may reduce inter-
`
`subcarrier interference (‘ICI’) in OFDM and the corresponding OFDMA systems
`
`that support the subscribers.”); Roy ¶¶ 130-31.
`
`Specifically, Li disclosed that a node (such as a base station; see Li, [0026])
`
`assigned a faster-moving subscriber station OFDM symbols that had a shorter
`
`symbol period than the symbols assigned to a slower-moving station:
`
`[O]nce subscribers have been designated as either fast or
`slow ... node 110 of an embodiment may employ two
`OFDM symbol durations ... one set assigned to the slow
`and fast subscribers respectively. In an embodiment, the
`communications system 100 and/or node 110 of an
`
`-10-
`
`
`
`embodiment assigns shorter symbol duration and larger
`sub-carrier spacing (e.g., OFDM signal 410) to the fast
`subscribers and longer symbol duration and smaller
`subcarrier spacing (e.g., OFDM signal 400) to the slow
`subscribers less prone to ICI.
`Id., [0037]; Roy ¶¶ 130-31; supra § V(F). For example, the base station “assign[ed]
`
`to a fast subscriber a symbol duration that is half the duration of the slow subscriber
`
`symbol duration.” Li, [0038]. Figure 5 of Li showed an OFDM signal in which the
`
`base station transmitted OFDM symbols having a duration of T “to [a] slow
`
`subscriber,” but “shorten[ed] the symbol duration from T to T/2” for “a fast
`
`subscriber.” Id., [0038]; Roy ¶¶ 131-32. See also Li at Figure 5 (showing OFDM
`
`symbols with shortened period “T/2” for faster station 310) (annotations added):
`
`
`
`-11-
`
`
`
`Li thus disclosed that “each symbol in the second communication system
`
`ha[d] a shorter symbol period than that in the first communication system.” Roy ¶¶
`
`130-133.
`
`As discussed above, because each symbol in the second communication
`
`system has a shorter symbol period than in the first communication system, the
`
`second communication system would also have more pilot symbols per unit time.
`
`Supp. Dec. ¶ 60–62.
`
`Dr. Roy illustrated the example disclosed by Li where the second
`
`communication system has a period that is one half that of the first communication
`
`system, showing that the second communication system would have twice the
`
`number of pilot symbols per unit time:
`
`Id.
`
`-12-
`
`
`
`
`
`A POSA would have understood Li to provide a teaching, suggestion, or
`
`motivation to modify Talukdar by using shorter symbol periods for a faster-moving
`
`802.16(m) remote unit, because Li disclosed that doing so reduced the inter-
`
`subcarrier interference that would be experienced by these units. Roy ¶ 135. Li
`
`taught that subscriber stations experienced inter-subcarrier interference when
`
`traveling at higher speeds and that shortening the symbol period used for faster-
`
`moving stations helped reduce this interference. Li, [0034]-[0035], [0010].
`
`Talukdar’s wireless system included mobile remote units (Talukdar, [0024]) that
`
`would have been affected by inter-subcarrier interference in the manner Li
`
`described. Roy ¶¶ 130, 135-36. A POSA thus would have recognized that shortening
`
`the symbol period used for faster-moving remote units in Talukdar’s system would
`
`have yielded the predictable, and beneficial, result of reducing inter-subcarrier
`
`interference experienced by those remote units, as taught by Li. Id. ¶ 135. And a
`
`POSA would have had a reasonable expectation of success in making this
`
`combination because Li identified an example implementation that a POSA would
`
`have been able to execute in the context of Talukdar’s hybrid frame—by using
`
`symbols in the section for a mobile 802.16(m) remote unit (the “second
`
`communication system configured to support higher mobility”) with a symbol period
`
`shorter than (e.g., half as long as) the symbol period for a fixed 802.16(e) unit. Id.
`
`¶¶ 136, 138. Moreover, a POSA would have recognized Talukdar’s teaching that
`
`-13-
`
`
`
`“[i]t is possible to define a new pilot/subchannel/control structure in the 802.16(m)
`
`zones,” by modifying “parameters such as ... symbol duration” to further indicate a
`
`reasonable expectation of success in making this combination. Talukdar, [0064];
`
`Roy ¶ 136.
`
`Additionally, a POSA would have been motivated to combine the teachings
`
`of Li identified above with Talukdar with a reasonable expectation of success
`
`because Talukdar and Li disclosed similar systems. Both Talukdar and Li described
`
`802.16 systems that used OFDM/OFDMA symbols. E.g., Talukdar, [0027], [0029]-
`
`[0030] (describing 802.16(m) and 802.16(m) remote units/terminals and base units)
`
`& [0002], [0026] (recognizing 802.16m as “an evolution of the WiMAX-OFDMA
`
`specification for the IEEE 802.16e protocol” and 802.16(e) as an “exemplary OFDM
`
`based protocol”); Li, [0016] (system “communicate[d] information according to ...
`
`[the] 802.16 standards”), [0025] & [0020] (system comprised an OFDM or OFDMA
`
`network); Roy ¶¶ 137-38. Further, both Talukdar and Li disclosed combining
`
`symbols for different communication systems in a single frame. Talukdar, Fig. 7 &
`
`[0051]; Li, Fig. 5 & [0015], [0022], [0038]; Roy ¶ 137.
`
`Modifying Talukdar to incorporate the identified teachings of Li would also
`
`have been obvious because it amounted to combining prior art elements according
`
`to known methods to yield predictable results. The combination involved
`
`incorporating Li’s technique of using a shorter symbol period for the higher-mobility
`
`-14-
`
`
`
`device into Talukdar’s process of generating a hybrid frame for communication with
`
`a fixed or slow-moving 802.16(e) station and a faster-moving 802.16(m) station.
`
`This would have resulted in a 802.16(m) mobile remote unit that was configured to
`
`support higher mobility and a hybrid frame that used symbols with shorter symbol
`
`periods for the mobile 802.16(m) unit than for the 802.16(e) unit. Roy ¶ 138. A
`
`POSA would have implemented this combination by simply shortening the symbol
`
`period used for the faster-moving stations (as taught by Li, [0037]-[0038]). Roy ¶¶
`
`136, 138. This would have resulted in a reduction of inter-subcarrier interference for
`
`the faster-moving units, a result that was predictable in view of Li’s teachings (e.g.,
`
`at [0034]-[0035], [0010]). Roy ¶ 135, 138. The proposed combination would also
`
`have been obvious because it used a known technique (Li’s technique of
`
`communicating with faster stations using OFDM symbols with shorter periods) to
`
`improve Talukdar’s similar method (communicating with mobile remote units using
`
`OFDM symbols) in the same way (by reducing inter-subcarrier interference
`
`experienced by the mobile units). Id. ¶ 138.
`
`Because all the elements of claim 44 were disclosed by the combination of
`
`Talukdar and Li, and a POSA would have been motivated to make such a
`
`combination for the reasons discussed in the Petition and above, Proposed Amended
`
`Claim 44 would be obvious over Talukdar in view of Li.
`
`-15-
`
`
`
`The dependent Proposed Amended Claims, claim 45-47 and 49-50, would
`
`likewise be obvious over Talukdar in view of Li for the reasons set forth above and
`
`in the Petition.
`
`C. The Board should not give any weight to P.O.’s unsupported and
`conclusory attorney argument in support of the patentability of
`the proposed substitute claims
`
`In its Motion to Amend, Patent Owner has presented no analysis or evidence
`
`in support of its argument that Talukdar and Li do not teach the additional element
`
`of the proposed substitute claims. Mot. at 13. For example, Patent Owner did not
`
`submit a declaration from its expert, Dr. Vojcic, in support of its Motion to Amend.
`
`Patent Owner did not even include any attorney argument trying to explain how the
`
`additional elements of the proposed substitute claims are patentably distinguishable
`
`over the prior art. Id. Instead, the Motion to Amend offers nothing more than an
`
`unsupported, conclusory attorney assertion that Talukdar and Li do not teach the
`
`additional element of the proposed substitute claims. Id.
`
`On the one hand, it is true that “a patent owner does not bear the burden of
`
`persuasion to demonstrate the patentability of substitute claims presented in a motion
`
`to amend.” Lectrosonics, IPR2018-01129, Paper 15 at 4. That burden “ordinarily
`
`will lie with the petitioner ….” Id. On the other hand, Patent Owner’s unsupported
`
`conclusions provide no objective evidence rebutting the detailed analysis herein, as
`
`supported by Dr. Roy’s testimony. It is well-settled that attorney argument cannot
`
`-16-
`
`
`
`take the place of evidence missing from the record. Estee Lauder Inc. v. L’Oreal,
`
`S.A., 129 F.3d 588, 595 (Fed. Cir. 1997); see also RPX Corp. v. Link Engine Techs.,
`
`IPR2017-00886, Paper 30 (P.T.A.B. August 23, 2018) (relying on Estee Lauder in
`
`finding that “the attorney argument in Patent Owner's response provides no objective
`
`evidence rebutting Dr. Greenspun’s testimony” because “[i]t is well settled that
`
`argument of counsel cannot take the place of evidence lacking in the record.”).
`
`Accordingly, the lack of any objective evidence rebutting the detailed analysis
`
`herein, as supported by Dr. Roy’s testimony, further confirms that the proposed
`
`substitute claims are unpatentable over Talukdar in view of Li.
`
`III. CONCLUSION
`For at least the reasons given above, Petitioner respectfully requests that the
`
`Motion to Amend be denied.
`
`
`
`Dated: March 1, 2022
`
`Respectfully submitted,
`
`/s/ Jonathan I. Detrixhe
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Back-up Counsel
`
`-17-
`
`
`
`Jonah D. Mitchell (pro hac vice)
`Christine M. Morgan (pro hac vice)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Michael J. Forbes (Reg. No. 73,898)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`mforbes@reedsmith.com
`
`Counsel for Petitioner
`
`
`
`-18-
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`
`that on March 1, 2022, a complete copy of Petitioner’s Opposition to Patent Owner’s
`
`Motion to Amend was filed electronically through the Patent Trial and Appeal
`
`Board’s PTABE2E System and provided, via electronic service, to the Patent Owner
`
`by serving the correspondence address of record.
`
`Dated: March 1, 2022
`
`
`
`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Counsel for Petitioner
`
`19
`
`
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