UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`IPR2021-00375
`
`Patent 8,265,096 B2
`_____________________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`IPR2021-00375
`
`Patent 8,265,096 B2
`_____________________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`
`
`I.
`
`II.
`
`ARGUMENT ................................................................................................... 3
`
`A.
`
`Talukdar is prior art, because nothing in the record indicates
`that the ’096 Patent is entitled to an earlier priority date ...................... 3
`
`1.
`
`2.
`
`Patent Owner’s Response applies the wrong standard in
`arguing that the ’798 Application supports an earlier
`priority date ................................................................................. 5
`
`The supplemental declaration from Dr. Vojcic
`improperly imports elements from the POSITA and
`makes unsupportable assumptions .............................................. 6
`
`B.
`
`C.
`
`The Board should reject Patent Owner’s argument that Dr.
`Roy’s declaration should be accorded no weight ................................ 11
`
`Ground 1: Claim 1–4 and 6–7 are invalid as obvious over
`Talukdar in view of Li. ........................................................................ 12
`
`D. Ground 2: Claim 8 is obvious over Talukdar in view of
`Nystrom, and the Petition, Dr. Roy’s declaration, and Dr.
`Vojcic’s declaration provide sufficient motivation for this
`combination ......................................................................................... 14
`
`E.
`
`Patent Owner has not made an adequate showing of secondary
`considerations of non-obviousness ..................................................... 22
`
`III. CONCLUSION .............................................................................................. 22
`
`
`
`
`
`
`
`
`
`
`
`-i-
`
`
`
`EXHIBIT LIST
`
`(“Talukdar
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`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)
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`-ii-
`
`
`
`Exhibit
`Ex. 1021
`Ex. 1022
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Ex. 1028
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`Description
`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
`
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`
`of
`
`Ex. 1036
`
`Ex. 1037
`Ex. 1038
`
`
`
`-iii-
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner submits this Reply to Patent Owner’s Corrected Response,1 Paper
`
`38 (“Response” or “Resp.”) in the inter partes review of U.S. Patent No. 8,265,096
`
`(“the ’096 Patent”). The Response consists almost entirely of verbatim repetition of
`
`the arguments in Patent Owner’s Preliminary Response (“Preliminary Response” or
`
`“Prelim. Resp.”), which the Board already considered and largely rejected in issuing
`
`its Decision Granting Institution of Inter Partes Review. See Paper 14 (“Institution
`
`Decision” or “I.D.”). The only passages containing substantive new content in the
`
`Response over the Preliminary Response are: 1) additional paragraphs relying on a
`
`supplemental declaration from Dr. Vojcic to argue that Talukdar is not prior art
`
`(Resp. at 28–33); and 2) a paragraph arguing that Dr. Roy’s declaration should be
`
`accorded no weight (Resp. at 34). Patent Owner’s additional argument regarding
`
`the prior art status of Talukdar fails because it does not apply the correct standard
`
`for written description required to support an earlier priority date, and does not even
`
`attempt to show possession within the disclosure of the provisional application. See
`
`Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
`
`banc) (“the specification must describe an invention understandable to that skilled
`
`
`1 Patent Owner filed a Corrected Response on Feb. 17, 2022 to replace the
`
`Response it filed on Dec. 7, 2021 as Paper 28.
`
`
`
`-1-
`
`
`
`artisan and show that the inventor actually invented the invention claimed”).
`
`Instead, the new argument relies upon Patent Owner’s expert’s attempt to fill gaps
`
`with the knowledge of a POSITA. See, e.g., Resp. at 31–32 (“a POSITA would
`
`understand that OFDM systems are sensitive to frequency errors and Doppler shifts
`
`and that Intercarrier interference in OFDM increased with Doppler shift.”).
`
`However, this is insufficient. See Ariad, 598 F.3d at 1351 (“a description that merely
`
`renders the invention obvious does not satisfy the requirement”).
`
`Because Patent Owner’s new argument fails to apply the proper standard,
`
`nothing in the “supplemented” record changes the Board’s conclusion that Talukdar
`
`is prior art. Instead, as discussed below, Patent Owner’s supplemented record
`
`actually supports Petitioner’s argument that a POSITA would be motivated to
`
`combine Talukdar and Nystrom.
`
`Indeed, the Board correctly rejected the arguments presented in Patent
`
`Owner’s Preliminary Response, and the new arguments presented in Patent Owner’s
`
`Response do not change the outcome. For the reasons set forth in the Petition, and
`
`as the Board reasoned in granting institution, the challenged claims of the ’096
`
`Patent are unpatentable and should be cancelled.
`
`-2-
`
`
`
`II. ARGUMENT
`A. Talukdar is prior art, because nothing in the record indicates that
`the ’096 Patent is entitled to an earlier priority date
`
`In its Preliminary Response, Patent Owner argued that Talukdar is not prior
`
`art because all of the challenged claims are supported by the disclosure of
`
`Provisional Patent Application No. 60/929,798 (“the ’798 Application”). See Paper
`
`8 at 24–37. Both the Preliminary Response and Patent Owner’s Response rely on
`
`Dr. Vojcic’s opinion that “[a] POSITA would have known all elements of the ’096
`
`inventions of claims 1–8 from [the ’798 Application] disclosure.” Ex. 2001 at ¶ 53.
`
`In the supplemental declaration supporting Patent Owner’s Response, Dr. Vojcic
`
`attempts to provide additional factual bases to support his original opinion but does
`
`not describe or apply the proper legal standard for written description. Ex. 2001 at
`
`¶ 53; Ex. 1038 (Vojcic Tr.) at 21:6 – 22:7 (confirming that Dr. Vojcic’s standard was
`
`that “a POSITA would have known all elements of the [challenged claims] from the
`
`provisional”). Patent Owner’s Response should not change the Board’s preliminary
`
`conclusion that Talukdar is prior art for at least two reasons.
`
`First, Dr. Vojcic’s opinion, quoted above, is irrelevant, because it applies the
`
`wrong standard. As the Board stated in its Decision on Institution:
`
`For a claim in a later-filed application to be entitled to the filing date of
`an earlier application, the earlier application must provide written
`description support for the claimed subject matter. To satisfy the
`written description requirement, a prior application itself must describe
`
`-3-
`
`
`
`an invention, and do so in sufficient detail that one skilled in the art can
`clearly conclude that the inventor invented the claimed invention as of
`the filing date sought.
`
`I.D. at 25–26 (internal citations and quotations omitted). Because Dr. Vojcic does
`
`not show, or even attempt to show, “sufficient detail” within the four corners of the
`
`’798 Application itself, Patent Owner does not, and cannot, meet its burden. Despite
`
`the Board’s above express statement of the correct legal standard, the table that
`
`Patent Owner offered in its Response to show the alleged disclosure of the ’798
`
`Application is identical to the table that Patent Owner offered in its Preliminary
`
`Response. Compare Resp. at 16–27 with Prelim. Resp. at 25–36.2 This table
`
`expressly relies on evidence outside the ’798 Application, including at least the
`
`equations discussed below.
`
`Second, nothing in the supplemented record alters the fundamental flaw that
`
`plagued P.O’s Preliminary Response – namely, Patent Owner relies on improper
`
`imported support from the knowledge of a POSITA and then applies unfounded
`
`assumptions to reach Patent Owner’s desired conclusion. Neither Patent Owner nor
`
`its expert identified any teaching or disclosure within the ’798 Application that
`
`
`2 Because Dr. Vojcic’s original declaration has no page numbers and the identical
`table is reproduced in the Response at pages 16 through 27, all citations to the table
`will use page numbers from the response.
`
`-4-
`
`
`
`would cause a POSITA to apply equations from other prior art in the particular
`
`manner required by Patent Owner to show support within the ’798 Application.
`
`1.
`
`Patent Owner’s Response applies the wrong standard in
`arguing that the ’798 Application supports an earlier priority
`date
`In its Decision on Institution, the Board preliminarily rejected Patent Owner’s
`
`argument that Talukdar is not prior art. I.D. at 27 (“[W]e do not agree that the subject
`
`matter of the challenged claims is disclosed in the ’798 Provisional Application.”).
`
`In so doing, the Board confirmed that Patent Owner has the burden to show that the
`
`challenged claims are entitled to the earlier priority date. Id. at 25 (citing Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015)
`
`and Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir.
`
`2010)). Further, the Board explained that the Patent Owner’s burden is not merely
`
`to show that a POSITA “would know each element” of the claimed invention, but
`
`rather that the Application itself discloses the invention as a whole to a POSITA. Id.
`
`at 26 (citing Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
`
`2010) (en banc)).
`
`Dr. Vojcic’s opinion that “a POSITA would have known all elements of the
`
`[challenged claims] from the provisional,” Ex. 2001 at ¶ 53, does not meet this
`
`burden. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“a
`
`prior application must describe an invention … in sufficient detail that one skilled
`
`-5-
`
`
`
`in the art can clearly conclude that the inventor invented the claimed invention as of
`
`the filing date sought.”). Every element of the claimed invention must be present,
`
`as an integrated whole, in the disclosure itself, and elements of the invention cannot
`
`be imported from the knowledge of a POSITA. See, e.g., Ariad, 598 F.3d at 1351
`
`(“[T]he test requires an objective inquiry into the four corners of the specification
`
`from the perspective of a person of ordinary skill in the art.”).
`
`Here, neither Patent Owner nor its expert even attempt to identify disclosure
`
`“within the four corners of the specification.” Instead, as discussed below, Dr.
`
`Vojcic relies on equations (which he expressly acknowledges are not part of the
`
`specification) and assumptions.
`
` Accordingly, Dr. Vojcic’s original and
`
`supplemental declarations both apply the wrong standard, and should be afforded no
`
`weight.
`
`2.
`
`The supplemental declaration from Dr. Vojcic improperly
`imports
`elements
`from
`the POSITA and makes
`unsupportable assumptions
`Under the correct standard, it is plain that the ’798 Application does not
`
`provide written description support for at least the elements Patent Owner’s table
`
`describes as elements 1[c] and 8[b]. Patent Owner’s table relies exclusively on the
`
`disclosure of “higher speed” on slide 2 of 9 of the ’798 Application to support the
`
`following elements:
`
`-6-
`
`
`
` “the second communication system configured to support higher
`
`mobility than the first communication system” (table element 1[c],
`
`Resp. at 19)
`
` “each symbol in the second communication system has a shorter
`
`symbol period than that in the first communication system” (also table
`
`element 1[c], Resp. at 19–20)
`
` “wherein the second communication system has pilot symbols that are
`
`denser than those in the first communication system” (table element
`
`8[b], Resp. at 28)
`
`This fails to show “possession shown in the disclosure” as required. Ariad, 598 F.3d
`
`at 1352.
`
`At the threshold, Dr. Vojcic interprets the single reference to “higher speed”
`
`in the ’798 Application as meaning “higher mobility.” Resp. at 20. Dr. Vojcic’s
`
`declaration provides insufficient factual basis to support his interpretation that
`
`“higher speed” means “higher mobility,” particularly given his deposition testimony.
`
`Dr. Vojcic interprets higher speed to mean higher mobility because he states that
`
`spectrum efficiency “implies higher data rate,” id. (emphasis added), but testified
`
`that “increased spectrum efficiency” would mean to a POSITA “transmission of
`
`more bits per unit bandwidth.” Id. at 8:13 – 22. He confirmed that increased
`
`spectrum efficiency does not require higher data rate. Ex. 1038 (Vojcic Tr.) at 9:12
`
`-7-
`
`
`
`– 10:2. Dr. Vojcic also testified that a POSITA would generally interpret “faster”
`
`as relating to lower latency or higher data transfer rate, neither of which relate to
`
`mobility. Ex. 1038 (Vojcic Tr.) at 7:12 - 8:2; 9:12 – 10:9. Because Dr. Vojcic states
`
`only that increased spectrum efficiency implies higher data rate, his assumption that
`
`“higher speed” means “higher mobility” is unfounded. In fact, a reasonable
`
`conclusion from the two bullet points on which Dr. Vojcic relies is that 802.16(m)
`
`would support both higher bandwidth efficiency (increased spectrum efficiency)
`
`and higher data rate (higher speed). Because Dr. Vojcic’s assumption that “higher
`
`speed” means “higher mobility” is the only disclosure of “the second communication
`
`system configured to support higher mobility” within the ’798 Application, the
`
`Application fails to provide sufficient written description for this reason alone.
`
`Moreover, even if a POSITA did interpret “higher speed” to mean “higher
`
`mobility,” Dr. Vojcic’s analysis for the remainder of element 1[c] also requires that
`
`the POSITA apply specific equations not found in the Application to calculate the
`
`symbol period, using specific assumptions. As the Board already noted with respect
`
`to the identical table, expert testimony without a proper factual background is
`
`entitled to little weight. I.D. at 26–27 (citing 37 C.F.R. § 42.65 (a)).
`
`As the Board noted in the decision on institution, Dr. Vojcic’s original
`
`declaration relies upon application of the following equations for the symbol periods
`
`without any factual basis:
`
`-8-
`
`
`
`
`
`I.D. at 26. The Board specifically questioned “whether there is an assumption that
`
`N and NL and K and KL are the same for the second system and the legacy system.”
`
`Id. at 27. Although the supplemental declaration attempts to provide a factual
`
`backdrop for applying these equations in this particular manner, it instead confirms
`
`that, indeed, Patent Owner’s use of these equations to show that the second symbol
`
`period is shorter does rest on an unsupported assumption. The supplemental
`
`declaration expressly confirms that these equations would result in a shorter symbol
`
`period only if the POSITA chose values for N and NL specifically to result in a
`
`shorter symbol period. Ex. 2013 at ¶ 37 (“POSITA would understand that there are
`
`other possible arrangements such that TS is shorter than TSL while the number of
`
`subcarriers is not necessarily the same.”) (emphasis added). Thus, even if the Patent
`
`Owner could import the knowledge of these equations into the disclosure of the ’798
`
`Application, any “proof” that the second system would have a shorter symbol period
`
`relies on circular logic: the symbol period for the second system would be smaller
`
`if, and only if, the POSITA chose values for N and NL that would result in a shorter
`
`symbol period. Dr. Vojcic conceded in deposition, however, that a POSITA could
`
`also choose values for N and NL that would result in the second system having a
`
`longer symbol period. Ex. 1038 (Vojcic Tr.) at 28:9–14. And Dr. Vojcic could not
`
`-9-
`
`
`
`point to any disclosure in the ’798 Application other than the “higher speed”
`
`statement on slide 2 (which, again, is inadequate) that would teach a POSITA to
`
`choose specific values for N and NL. Ex. 1038 (Vojcic Tr.) at 30:12 – 33:3.
`
`Dr. Vojcic’s entire justification for claiming that the second communication
`
`system in the ’798 Application supports higher mobility, for applying specific
`
`equations which do not appear anywhere in the ’798 Application, and for requiring
`
`the POSITA to choose values within those equations (for N and NL) is the single
`
`reference to “higher speed.” This falls far short of the required showing of
`
`“possession shown in the disclosure.” Ariad, 598 F.3d at 1352. Dr. Vojcic’s attempt
`
`to gap-fill through unfounded POSITA support to, in turn, manufacture alleged
`
`disclosure for multiple claim elements in the table – in 1[c]: “configured to support
`
`higher mobility than the first communication system;” in 1[c]: “each symbol in the
`
`second communication system has a shorter symbol period than that in the first
`
`communication system;” and in 8[b]: “wherein the second communication system
`
`has pilot symbols that are denser than those in the first communication system” –
`
`fails.
`
`Because there is no disclosure within the four corners of the ’798 Application
`
`of at least these three elements, Patent Owner has failed to meet its burden of
`
`showing that the ’798 Application provides written description support for any of
`
`-10-
`
`
`
`the challenged claims. Accordingly, Talukdar is prior art to the ’096 Patent under
`
`pre-AIA 35 U.S.C. § 102(e).
`
`B.
`
`The Board should reject Patent Owner’s argument that Dr. Roy’s
`declaration should be accorded no weight
`
`Patent Owner argues that Dr. Roy’s declaration should be accorded no weight
`
`merely because “the technical aspects of the Roy declaration are a carbon copy of
`
`the report of another expert in another proceeding.” Resp. at 34. The other expert
`
`referred to by Patent Owner is Dr. Akl, Intel’s expert in the prior IPR proceeding to
`
`which this IPR proceeding sought joinder, and the Petition candidly acknowledged
`
`that Dr. Roy’s declaration is substantively identical to Dr. Akl’s. See Pet. at 5 n. 2
`
`(“Dr. Roy’s declaration is substantively identical to Dr. Robert Akl’s declaration in
`
`the Intel IPR. See Ex. 1028.”); see also Paper 3 (motion for joinder with the Intel
`
`IPR).
`
`Patent Owner’s argument is fundamentally flawed in at least two respects.
`
`First, Patent Owner neglects to acknowledge that the requirements of joinder
`
`mandated that Dr. Roy’s declaration be substantively identical to Dr. Akl’s, as
`
`discussed in Petitioner’s motion for joinder:
`
`Qualcomm submits a copycat declaration from Dr. Sumit Roy, on
`whom Qualcomm will rely only in the event that Intel is terminated
`from the proceedings. The supporting declaration submitted by
`Qualcomm only differs from that filed by Intel (from Dr. Robert Akl)
`in that it has been updated to list the qualifications and personal
`
`-11-
`
`
`
`experience of Dr. Roy. The opinions set forth in Dr. Roy’s declaration
`are identical to the opinions set forth in the declaration of Dr. Akl filed
`in the Intel IPR, and Dr. Roy’s discussion of the prior art and his
`analysis is the same as the analysis of Intel’s expert. See Celltrion, Inc.
`v. Genentech, Inc., IPR2018-01019, Paper 11 at 14 (P.T.A.B. Oct. 30,
`2018) (granting motion for joinder of petitioner who “relie[d] on
`different experts” when the petitioner “assert[ed] that its ‘copycat
`declarations’ provide a discussion and analysis that ‘is substantially the
`same as the analysis of Pfizer’s experts’ and will not be relied upon
`unless [the original petitioner] is terminated from the proceedings.”)
`
`Paper 3 at 6 n. 1. Had Dr. Roy’s declaration not been substantively identical to Dr.
`
`Akl’s, it may have introduced new issues and been a basis for denying joinder. See
`
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 14. Second, Patent
`
`Owner neglects that Dr. Roy reviewed his declaration in its entirety and agreed with
`
`Dr. Akl’s opinions. Ex. 2015 at 111:18–112:5. Patent Owner cites no support for
`
`the extraordinary proposition that an expert is not permitted to sign a declaration that
`
`agrees with the opinions of another expert. Patent Owner’s argument that Dr. Roy’s
`
`declaration should be accorded no weight is baseless.
`
`C. Ground 1: Claim 1–4 and 6–7 are invalid as obvious over
`Talukdar in view of Li.
`
`Petitioner has shown in the Petition, and in Dr. Roy’s supporting declaration,
`
`that the combination of Talukdar and Li renders each of Claims 1–4 and 6–7 invalid.
`
`After considering the Petition and the Patent Owner’s Preliminary Response, the
`
`-12-
`
`
`
`Board rejected Patent Owner’s arguments. I.D. at 44. Despite the Institution
`
`Decision’s well-reasoned rejection of the arguments in Patent Owner’s Preliminary
`
`Response, Patent Owner’s Response repeats verbatim the identical arguments
`
`concerning Talukdar and Li. Compare Resp. at 34–45 with Prelim. Resp. at 37–50.
`
`The Board should continue to reject Patent Owner’s Response arguments
`
`concerning the combination of Talukdar and Li with respect to Claims 1–4 and 6–7
`
`for the same reasons as the Institution Decision rejected the same arguments in
`
`Patent Owner’s Preliminary Response. See, e.g., Google LLC v. Uniloc 2017 LLC,
`
`IPR2020-00756, Paper 30 at 51 (P.T.A.B. Oct. 12, 2021) (“We agree with Google
`
`that Uniloc's arguments directed to the prosecution history of the '952 patent that are
`
`raised in the Patent Owner Response are the same arguments raised in the
`
`Preliminary Response. Compare PO Resp. 18-19, with Prelim. Resp. 24-25. For the
`
`same reasons discussed in the Institution Decision, those arguments are
`
`unavailing.”); see also Palo Alto Networks, Inc. v. Selective Signals, LLC, IPR2018-
`
`00594, Paper 46 at 10 (P.T.A.B. Aug. 8, 2019) (“In reply, Petitioner asserts that
`
`Patent Owner’s Response repeats arguments from the Preliminary Response, and did
`
`not respond to the Board’s reasons in the Institution Decision …. We agree with
`
`Petitioner’s characterization of the Response because Patent Owner’s arguments are,
`
`indeed, nearly identical to those of the Preliminary Response. Compare PO Resp.
`
`11–16 with, Prelim. Resp. 6–11.”); Palo Alto Networks, IPR2018-00594, Paper 46
`
`-13-
`
`
`
`at 11–14 (confirming analysis from Institution Decision). Moreover, because Patent
`
`Owner did not present any new argument responsive to the Institution Decision in
`
`its Response, any attempt to introduce such argument in sur-reply would be belated
`
`and should not be considered. See Palo Alto Networks, IPR2018-00594, Paper 46 at
`
`10–11 (“Patent Owner’s arguments responsive to the Institution Decision, presented
`
`for the first time in the Sur-Reply, are belated…. Accordingly, we do not consider
`
`Patent Owner’s belated Sur-Reply arguments and evidence….”).
`
`Accordingly, the Board should find that Claims 1–4 and 6–7 are unpatentable
`
`as obvious over Talukdar in view of Li.
`
`D. Ground 2: Claim 8 is obvious over Talukdar in view of Nystrom,
`and the Petition, Dr. Roy’s declaration, and Dr. Vojcic’s
`declaration provide sufficient motivation for this combination
`
`As described by the Board:
`
`Claim 8 is similar to claim 1, with the exception that claim 8 recites
`“wherein the second communication system has pilot symbols that are
`denser than those in the first communication system,” in place of the
`claim 1 recitation “wherein each symbol in the second communication
`system has a shorter symbol period than that in the first communication
`system.”
`
`I.D. at 47.
`
`The Petition references the teachings of Talukdar as discussed in Ground 1
`
`for the other elements of claim 8 and relies on a combination of Talukdar and
`
`-14-
`
`
`
`Nystrom for the denser pilot symbol limitation. Pet. at 62–67. After reviewing the
`
`Petition and the Patent Owner’s Preliminary Response, the Board appeared to
`
`acknowledge that the combination of Talukdar and Nystrom would disclose all
`
`elements of claim 8, but determined that the Petition did not provide a sufficient
`
`motivation to combine the teachings of Talukdar and Nystrom. I.D. at 47. Patent
`
`Owner’s Response to Ground 2 is identical to its Preliminary Response. Compare
`
`Resp. at 46–53 with Prelim. Resp. at 50–58.
`
`The teachings of Talukdar and Nystrom, as well as the declaration provided
`
`by Patent Owner’s own expert, confirm that a POSITA would have been motivated
`
`to combine Talukdar and Nystrom as set forth in the Petition. As noted in the
`
`Petition, Nystrom explicitly discloses that denser pilot symbols in the time
`
`dimension should be used for higher Doppler applications. Ex. 1017 at [[0042]] &
`
`Fig. 5A. Nystrom is clear that higher Doppler shift scenarios require pilot symbols
`
`that are denser in time, because paragraph 42 explains that users with higher Doppler
`
`shift would be assigned to either region 110A or 110D of Figure 5A. Ex. 1017 at 42
`
`(“In part 110A, the pilot structure is intended for a large Doppler and low delay
`
`spread.... In part 110D, the pilot structure is intended for a high Doppler and high
`
`delay spread”). As can be seen from the figure, and as Dr. Roy explained, each of
`
`those regions has three times denser pilot symbols in the time dimension than regions
`
`110B or 110C, which are intended for lower Doppler applications:
`
`-15-
`
`
`
`Ex. 1002 at 160. In his declaration, Patent Owner’s expert Dr. Vojcic annotated
`
`Figure 5A of Nystrom slightly differently, but his annotations also confirm that
`
`Nystrom teaches that higher mobility (‘high speed’) stations would be assigned to
`
`regions 110A or 110D, both of which have denser pilot symbols in the time
`
`dimension:
`
`-16-
`
`
`
`Ex. 2001 at ¶ 93. As both annotated versions of Figure 5A show, regions 110A and
`
`110D -- which are the regions intended for high Doppler -- have 3 times more pilot
`
`symbols per unit time than regions 110B and 110C. Indeed, in discussing the
`
`teachings of Nystrom, Dr. Vojcic expressly confirmed the teaching upon which
`
`Petitioners rely: “A POSITA would also understand that small/large Doppler
`
`spread (or equivalently velocity) corresponds to low/high time selectivity,
`
`requiring low/high pilot density over time.” Id. (emphasis added).
`
`As for Dr. Vojcic’s focus on delay spread, that is irrelevant because claim 8
`
`does not require pilot symbols that are denser in the frequency dimension. The fact
`
`that Nystrom also teaches increasing pilot symbol density in the frequency domain
`
`for distant stations (or stations with otherwise poor radio conditions) does not
`
`-17-
`
`
`
`discredit or remove its teaching of increased pilot symbol density in the time domain
`
`for higher mobility stations.
`
`Because Nystrom discloses the use of higher density pilot symbols for higher
`
`mobility users, and Talukdar discloses both stationary and mobile stations, a
`
`POSITA would have been motivated to combine the teachings of Talukdar and
`
`Nystrom by utilizing higher density pilot symbols for the high-mobility 802.16(m)
`
`portion of a hybrid frame, while using lower density pilot symbols for a stationary
`
`802.16(e) portion. This combination would be motivated by the express teachings
`
`of Talukdar and Nystrom for at least the following reasons.
`
`First, Talukdar itself expressly teaches that the pilot density for the 802.16(e)
`
`and 802.16(m) sections of a hybrid frame could be different. Talukdar at 29 (“In
`
`general, the structures of the 802.16(m) region (sub-channel and pilot structures)
`
`can be different from those of the 802.16(e) regions.”) (emphasis added). Based
`
`on this teaching alone, a POSITA would have been motivated to combine Talukdar
`
`and Nystrom, because Talukdar suggests that pilot structures can be different for the
`
`two components of a hybrid frame, and Nystrom teaches appropriate pilot structures
`
`for different scenarios. Pet. at 63–64; Roy at ¶¶ 163–64. For a higher mobility
`
`802.16(m) station, which both experts agree would be subject to higher Doppler
`
`effects than a low mobility station, at minimum, a POSITA would have found it
`
`-18-
`
`
`
`obvious to try the denser pilot symbols in the time dimension, which Nystrom
`
`teaches for high Doppler users. Ex. 1017 at [[0042]].
`
`Second, this combination also would have been obvious as a simple
`
`substitution of known elements to obtain predictable results. The Board
`
`preliminarily rejected this rationale because it found that Petitioner failed to show
`
`the underlying factual basis for this combination. Petitioner respectfully disagrees
`
`for the following reasons.
`
`Although the Board is correct that “Paragraphs 29, 37, 42, and 43 of Nystrom
`
`further do not disclose denser pilot symbols enhance or improve a faster moving
`
`unit’s ability to perform channel estimation,” this would have been well known to a
`
`POSITA, and Paragraph 3 of Nystrom expressly discloses that teaching. Ex. 1017
`
`at ¶ 3 (“A shorter time interval between successive pilot data [(i.e. denser pilot
`
`symbols in the time dimension)] gives a more accurate channel estimation.”). In
`
`paragraphs 162–163 of his declaration, Dr. Roy provides a detailed factual basis for
`
`his conclusion that “it was well-known that increasing pilot density improved
`
`performance in wireless communications by enhancing the ability of mobile stations
`
`to perform channel estimation,” including but not limited to a citation to paragraph
`
`3 of Nystrom.
`
`The Board further determined that “[p]aragraph
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