UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`Paper No. 44
`Filed: April 11, 2022
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-00734, which were
`granted.
`
`
`
`
`
`
`
`
`
`Paper No. 44
`Filed: April 11, 2022
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-00734, which were
`granted.
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MOTION TO AMEND PILOT PROGRAM .................................................. 2
`
`III. A REASONABLE NUMBER OF CLAIMS ARE AMENDED .................... 2
`
`IV. THE PROPOSED AMENDMENT RESPONDS TO A GROUND OF
`UNPATENTABILITY INVOLVED IN THIS TRIAL .................................. 3
`
`V.
`
`THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`BROADEN CLAIM SCOPE ........................................................................... 4
`
`VI. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`INTRODUCE NEW MATTER AND ARE SUPPORTED BY THE
`ORIGINAL SPECIFICATION ....................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Proposed Contingent Amended Claim 44 (replacing claim 1) .................. 5
`
`Proposed Contingent Amended Claim 45 (replacing claim 2) ................18
`
`Proposed Contingent Amended Claim 46 (replacing claim 3) ................18
`
`Proposed Contingent Amended Claim 47 (replacing claim 4) ................19
`
`Proposed Contingent Amended Claim 49 (replacing claim 6) ................19
`
`Proposed Amended Claim 50 (replacing claim 7) ...................................20
`
`VII. THE PROPOSED CONTINGENT AMENDED CLAIMS ARE
`PATENTABLE ..............................................................................................20
`
`VIII. CONCLUSION ..............................................................................................25
`
`APPENDIX A ..........................................................................................................27
`
`CONTINGENT AMENDED CLAIM 44 REPLACING ORIGINAL
`CLAIM 1 ..................................................................................................27
`
`CONTINGENT AMENDED CLAIMS 45-47, 49, AND 50 REPLACING
`ORIGINAL CLAIMS 2-4, 6 AND 7........................................................28
`ii
`
`A.
`
`B.
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 3
`
`35 U.S.C. § 103 ......................................................................................................1, 3
`
`Administrative Decisions
`
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 at 4-5 (PTAB Feb. 25, 2019) .......................... 2, 3, 21
`
`Regulations
`
`37 C.F.R § 42.121 ..................................................................................................2, 3
`
`
`
`iii
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
`
`Owner”) respectfully submits this Revised Motion to Amend (“Motion”) to request
`
`amendment of certain claims of U.S. Patent 8,265,096 B2 (EX1001, “’096 Patent”).
`
`Petitioner asserts that claims 1-4 and 6-8 of the ’096 Patent are unpatentable
`
`on two grounds based solely on 35 U.S.C. § 103:
`
`Ground 1 – Claims 1-4, 6, and 7 are unpatentable as obvious over Talukdar
`
`and Li.
`
`Ground 2 – Claim 8 is unpatentable as obvious over Talukdar and Nystrom.
`
`Patent Owner’s Original Motion to Amend requested amendment of
`
`independent claim 1 to provide further limitation and clarification of its claimed
`
`invention and reflect the proper scope of this claim considering the specification.
`
`Paper 37. Petitioner filed its Opposition thereto (Paper 41), and the Board issued its
`
`Preliminary Guidance (Paper 42). This revised Motion addresses certain
`
`shortcomings identified by the Board in its Preliminary Guidance. The amendments
`
`requested in this Motion are identical to those requested in Patent Owner’s original
`
`Motion to Amend (Paper 37). Patent Owner’s revised Motion is contingent upon a
`
`finding in a final written decision that the challenged claims are unpatentable.
`
`Specifically, Patent Owner requests the following contingencies:
`
`• if Claim 1 is found unpatentable, substitute Proposed Amended Claim 44, and
`o substitute Proposed Amended Claim 45 for Claim 2,
`1
`
`
`
`
`
`o substitute Proposed Amended Claim 46 for Claim 4,
`o substitute Proposed Amended Claim 47 for Claim 5,
`o substitute Proposed Amended Claim 48 for Claim 6, and
`o substitute Proposed Amended Claim 50 for Claim 7.
`II. MOTION TO AMEND PILOT PROGRAM
`
`Pursuant to 84 FR 9497, Patent Owner requested that this Motion to Amend
`
`be subject to the MTA Pilot Program. This IPR was instituted on July 19, 2021, (see
`
`Paper 14), and, therefore, it qualifies for the MTA Pilot Program effective on March
`
`15, 2019. Patent Owner requested preliminary guidance from the Board on this
`
`Motion to Amend and reserved the right to file a revised Motion to Amend subject
`
`to the Board’s preliminary guidance. Patent Owner now submits this Revised
`
`Motion considering the Board’s Preliminary Guidance.
`
`III. A REASONABLE NUMBER OF CLAIMS ARE AMENDED
`
`Pursuant to 37 C.F.R. § 42.121(a)(3), a motion to amend may propose a
`
`reasonable number of substitute claims for each challenged claim. Generally, it is
`
`presumed “that only one substitute claim would be needed to replace each
`
`challenged claim,” but that challenge may be rebutted by a showing of need. 37
`
`C.F.R. § 42.121(a)(3); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
`
`at 4-5 (PTAB Feb. 25, 2019). Petitioners challenge independent claims 1 and 8, and
`
`dependent claims 2-4, 6, and 7. Patent Owner now proposes only one substitute
`
`claim for challenged independent claim 1. Dependent claims 2-4, 6, and 7 are
`
`amended only by virtue of depending from proposed amended independent claim 1.
`
`
`
`2
`
`
`
`The Board agreed that the proposed number of substitute claims is reasonable and
`
`found that “Petitioner does not argue otherwise.” (Paper 42 at 5).
`
`IV. THE PROPOSED AMENDMENT RESPONDS TO A GROUND OF
`UNPATENTABILITY INVOLVED IN THIS TRIAL
`
`A motion to amend is proper where the amendment “respond[s] to a ground
`
`of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Where the
`
`proposed amendment is intended to address the grounds for institution, additional
`
`modifications may be permissible to address potential § 101 or § 112 issues.
`
`Lectrosonics, IPR2018-01129, Paper 15, 5-6. The Petition here necessarily alleges
`
`that every element of each challenged claim is disclosed by a combination of prior
`
`art references under 35 U.S.C. §§ 102 and 103. Based thereon, the Board found in
`
`its institution decision that “there is a reasonable likelihood Petitioner would prevail
`
`in showing claim 1 is unpatentable under 35 U.S.C. § 103 over Talukdar and Li”
`
`(Paper 14 at 44) and “there is a reasonable likelihood Petitioner would prevail in
`
`showing claims 2–4, 6, and 7 are unpatentable under 35 U.S.C. § 103 over Talukdar
`
`and Li.” Id. Adding the proposed substantive limitation to independent claim 1 is,
`
`thus, responsive to these grounds for institution. The Board agreed that “proposed
`
`substitute independent claim 44 recites new limitations that directly respond to a
`
`ground of unpatentability involved in the trial” and found that “Petitioner does not
`
`argue otherwise.” (Paper 42 at 5).
`
`
`
`3
`
`
`
`V. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`BROADEN CLAIM SCOPE
`
`The proposed amended claims are set forth in Appendix A below. Brackets
`
`are used to indicate deletions, and underlining is used to indicate additions. The
`
`proposed amended limitation is unchanged from Patent Owner’s original Motion to
`
`Amend. (Paper 37).
`
`Proposed amended claim 44 is narrower than the original claim 1 and does
`
`not broaden claim scope. The additional claim element “wherein the second
`
`communication system has pilot symbols that are denser than those in the first
`
`communication system” further narrows the claim by requiring that the “second
`
`communication system” has pilot symbols that are denser than those in the first
`
`communication system. Therefore, new proposed amended claim 44 is narrower
`
`than original claim 1.
`
`The Board agreed that “[p]roposed substitute independent claim 44 retains all
`
`claim limitations of its corresponding challenged claim (claim 1), and further
`
`includes narrowing limitations as compared to its corresponding challenged claim”
`
`and found that “Petitioner does not argue otherwise.” (Paper 42 at 6).
`
`VI. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`INTRODUCE NEW MATTER AND ARE SUPPORTED BY THE
`ORIGINAL SPECIFICATION
`
`The Board has already found that “(i) column 5, lines 17–18 and lines 35–36,
`
`column 7, lines 23–24, column 7, line 61 to column 8, line 6, and column 9, lines
`4
`
`
`
`
`
`18–20 in the ’096 Patent disclosure and (ii) corresponding portions of the
`
`Specification, as filed, of the ’855 Application, . . . along with adjacent disclosures
`
`at paragraphs 35–37 and Figures 6A, 6B, 7 of the ’855 Application appear to provide
`
`adequate written description support for proposed substitute claims 44–47, 49, and
`
`50 as a whole.” (Paper 42 at 7.) Regardless, Patent Owner here provides further
`
`exemplary identification of the written description relevant to each claim element.
`
`The proposed amended claims are set forth in Appendix A below, and the
`
`claim elements are numbered. The below identification of written support refers to
`
`these labels. Written description support is given for U.S. Patent Application
`
`12/168,855 (EX1010, “’855 Application”), which issued as the ’096 Patent.
`
`A.
`
`Proposed Contingent Amended Claim 44 (replacing claim 1)
`
`1. 44.preamble: “A method of constructing a frame structure for
`data transmission, the method comprising:”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 7 (“Examples of the present invention may provide a method for
`constructing a frame structure for data transmission, the method consisting …”);
`• Paras. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
`• Para. 28 and Fig. 4 (same);
`• Paras. 32-35 and Fig. 5 (same);
`• Paras. 35 and 36, and Figs. 6A and 6B (same);
`• Para. 37 and Fig. 7 (same).
`
`
`
`5
`
`
`
`2. 44.a: “generating a first section comprising data configured in a
`first format compatible with a first communication system using
`symbols”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 7 (“…generating a first section comprising data configured in a first format
`compatible with a first communication system”);
`• Paras. 26 and 27, and Fig. 3 (“The DL sub-frame 16 may include . . . and a data
`region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”; “the data
`region including the two zones DATA 30-1 (zone 1) and DATA 30-2 (zone 2),
`for the old system and the new system respectively, may be placed according to
`the mapping information of the two zones defined in the DL-MAP 11.”);
`• Para. 28 and Fig. 4 (describing a OFDM frame structure with first and second
`sections as claimed);
`• Paras. 32-35 and Fig. 5 (same);
`• Paras. 35 and 36, and Figs. 6A and 6B (same);
`• Para. 37 and Fig. 7 (same).
`
`3. 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”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 5 (“frame 16, it may be desirable to integrate the OFDMA frame structure
`of an old OFDMA system with that of a new OFDMA system by using the DL-
`MAP 12 to define different zones in the DATA 14-1 and DATA 14-2 of the frame
`structure for data of the old OFDMA system and data of the new OFDMA
`system.”);
`• Para. 7 (“…generating a second section following the first section comprising
`data configured in a second format compatible with a second communication
`system, wherein the second format is different from the first format”);
`6
`
`
`
`
`
`• Para. 25 (“Examples of the present invention may allow data of an old orthogonal
`frequency division multiple access (OFDMA) system (hereinafter a legacy
`system) and data of a new OFDMA system to co-exist in an OFDMA frame by
`changing a frame structure of the OFDMA frame.”);
`• Paras. 26 and 27, and Fig. 3 (“The DL sub-frame 16 may include . . . and a data
`region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”; “the data
`region including the two zones DATA 30-1 (zone 1) and DATA 30-2 (zone 2),
`for the old system and the new system respectively, may be placed according to
`the mapping information of the two zones defined in the DL-MAP 11.”);
`• Para. 28 and Fig. 4 (describing a OFDM frame structure with first and second
`sections as claimed);
`• Paras. 32-35 and Fig. 5 (same);
`• Paras. 35 and 36, and Figs. 6A and 6B (same);
`• Para. 37 and Fig. 7 (same).
`
`4. 44.c: the second format is compatible with the second
`communication system configured to support higher mobility
`than the first communication system”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 25 (“The new OFDMA system may have a larger bandwidth and support
`higher mobility”);
`• Para. 28 and Fig. 4 (FIG. 4 is a diagram illustrating an OFDMA frame structure
`supporting high mobility according to an example of the present invention);
`• Paras. 35 and 36, and Figs. 6A and 6B (FIG. 6A is a diagram illustrating an
`OFDMA frame structure supporting high mobility and having a scalable
`bandwidth according to an example of the present invention; FIG. 6B is a diagram
`illustrating an OFDMA frame structure supporting high mobility and having a
`scalable bandwidth according to another example of the present invention);
`• Para. 37 and Fig. 7 (“FIG. 7 is a diagram illustrating an exemplary placement of
`signals and pilots in time-domain and frequency-domain of an OFDMA system
`supporting high mobility and having a scalable bandwidth.”).
`
`
`
`7
`
`
`
`5. 44.d: wherein each symbol in the second communication system
`has a shorter symbol period than that in the first communication
`system”
`
`• Para. 28 and Fig. 4 (“The DATA 40-3 and/or 44-3 (zones 3) may have a shorter
`symbol period or more pilot symbols placed therein than the DATA 40-1, 40-5
`2, 44-1 and 44-2 in order to enhance the performance of channel estimation”; “As
`compared to the zones in the data region of the UL sub-frame 18-2 or the DL sub-
`frame 16-2 of the old/legacy system or the new/extended system, the placements
`of the pilot symbols may be denser, the symbol periods of OFDM symbols may
`be shorter”);
`• Para. 35, and Fig. 6A (similar disclosure exemplifying a shorter symbol period);
`• Para. 37 and Fig. 7 (“The new OFDMA system supporting high mobility may use
`larger frequency intervals or shorter OFDM symbol period to avoid frequency
`jitter”).
`
`6. 44.e: “wherein the second communication system has pilot
`symbols that are denser than those in the first communication
`system”
`
`As explained below, support for Patent Owner’s proposed amendment is
`
`found in at least the following disclosures: EX1010 at Paras. 28; 35; and 37.
`
`The additional claim element “wherein the second communication system has
`
`pilot symbols that are denser than those in the first communication system” finds
`
`support in the written description of the ’855 Application (EX1010) at Para. 28
`
`(“denser pilot symbols may achieve better channel estimation accuracy”) and (“the
`
`placements of the pilot symbols may be denser”); Paras. 35 and 37. Indeed, the
`
`claim element is present in original claim 8: “wherein the second communication
`
`system has pilot symbols that are denser than those in the first communication
`
`system.” EX1001, ’096 Patent at 9:18-20.
`
`
`
`8
`
`
`
`The additional claim element also finds support in provisional application No.
`
`60/929,798, filed on Jul. 12, 2007. Specifically, the provisional application discloses
`
`a second section in a second format compatible with 802.16m, which follows the
`
`first section compatible with 802.16e in one transmission scheme.
`
`EX2002 (’096 Provisional) at 3.
`
`
`
`
`
`EX2002 (’096 Provisional) at 8. The proper construction of “pilot symbols
`
`that are denser than” as “more pilot symbols per unit time than, wherein a unit time
`
`is the symbol period of the first communication system.” EX1011 (Claim
`
`Construction Order in UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-
`
`00351 (W.D. Tex.)). Petitioners have accepted this construction. (See Paper 1 at
`
`23). As explained by Dr. Vojcic, the provisional application, thus, discloses this
`
`
`
`9
`
`
`
`new claim limitation by pointing to increased density (in the temporal dimension) as
`
`a natural result of reduced symbol period:
`
`The provisional discloses that the second format compatible with
`802.16m is designed to support higher mobility, i.e., speed at which the
`mobile unit is moving, and uses symbols that are shorter (i.e. the
`bandwidth is larger) than the symbols in 802.16e.
`
`
`EX2002 (’096 Provisional) at 2. Both, “spectrum efficiency” and
`“higher speed” are advantages of the second communication system.
`The former implies higher data speed, which clarifies the meaning of
`“higher speed” as referring to a higher velocity mobile unit.
`
`
`
`EX2002 (’096 Provisional) at 3.
`
`A POSITA would have known at the time of the provisional application
`that by use of the following formulas a “shorter symbol period” can be
`shown for the second system.
`
` = number of subcarriers
`K = number of samples in the cyclic prefix
`
`𝑇𝑇𝑠𝑠=𝑁𝑁+𝐾𝐾3𝐵𝐵
`𝑇𝑇𝑠𝑠𝑠𝑠=𝑁𝑁𝑠𝑠+𝐾𝐾𝑠𝑠𝐵𝐵
`
`10
`
`
`
` N
`
`
`
`
`
`Where Ts is the symbol period of the second system and TSL is the
`symbol period of the legacy system.
`
`EX2001 at ¶ 52. “Further, the goal of achieving ‘higher speed’ in conjunction with
`
`the proposed dual-system frame structure would suggest modifying density of pilots
`
`in one of the systems as a solution to the problem caused by increased Doppler
`
`shifting due to high speed.” Id.
`
`The Board considered the above in its Institution Decision (Paper 14), and
`
`questioned the written description support for “wherein each symbol in the second
`
`communication system has a shorter symbol period than that in the first
`
`communications system,” recited in challenged claim 1, and “wherein the second
`
`communication system has pilot symbols that are denser than those in the first
`
`communications system,” recited in challenged claim 8. (Paper 14 at 26.)
`
`Specifically, the Board found that “Patent Owner and its declarant Dr. Vojcic do not
`
`provide underlying facts to support the contention that a person of ordinary skill in
`
`the art ‘would have known at the time of the provisional application that by use of
`
`the following formulas a ‘shorter symbol period’ can be shown for the second
`
`system.’” More specifically, Patent Owner does not provide the factual basis for the
`
`formulas:
`
`
`
`
`
`11
`
`
`
`Id. The Board further found that “Patent Owner also does not explain 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.) To address these questions, Patent Owner hereby
`
`supplements the record.
`
`Specifically, Dr. Vojcic provides the following background supporting that “a
`
`POSITA as of July 2007 would have known that TSYM = TGI + TDFT = N/Fs +
`
`K/Fs, where TDFT is the IDFT/DFT period, TGI is the length of the cyclic prefix
`
`(also called guard interval), N is the number of carriers.” EX2013 at ¶ 19. Indeed,
`
`OFDM, the origin of this formula, dates back to the 1970s. Id. at ¶ 20. Even as early
`
`as 1971, a seminal paper disclosed sufficient information to inform a POSITA that
`
`“the symbol period is the product of the sampling period Δt, and the number of
`
`samples N, TDFT = N Δt.” Id. at ¶ 22. The complex underlying mathematical proof
`
`is shown as well:
`
`
`
`Id. at ¶ 21. This is further confirmed by another seminal paper in 1985, which
`
`“shows that “the signaling interval”, in other words the symbol period, is TDFT = N
`
`Δt.” Id. at ¶¶ 23-24. The cited paper “also establishes the now well-known result
`
`that Δt =1/Fs.” Id. at ¶ 25. Further, “the 1985 paper also shows a modulo extension
`
`
`
`12
`
`
`
`(which present-day systems refer to as a cyclic prefix or guard interval). At the
`
`bottom of Fig. 8 of Cimini, the length of a block is ‘now N+l long’. In the Cimini
`
`system, l is the length of the guard interval, which in our notation is K.” Id. at ¶ 26.
`
`“Consequently, a block is now N+K long. Including this extension, the length of a
`
`block is TSYM = TGI + TDFT.”
`
`Dr. Vojcic further provides an example to illustrate the application of the well-
`
`known formula in the modern WiFi standard:
`
`28. Another prior art system is the 1999 standard IEEE 802.11a.
`
`See IEEE 802.11a at p. 9.
`
`29. IEEE 802.11 specifies that the number of carriers N is 64, N=64.
`These carriers are shown in the figure below, labeled from 0 to 63.
`
`
`
`
`
`13
`
`
`
`
`
`See IEEE 802.11a-1999 at page 12.
`
`30. A POSITA in 1999 would have known the 1971 and 1985 papers
`and would have been able to understand Table 79 of the standard,
`shown above. According to Table 79 the IFFT/FFT period is 3.2
`µs. Therefore TDFT = 3.2 µs = 64 Δt = 64 /Fs.
`31. The conclusions are that Δt = 50 ns and Fs = 1/ Δt = 20 MHz.
`32. According to Table 79 above, the guard interval is TDFT/4.
`Therefore, the guard interval in samples is K = 64/4 = 16 samples.
`The duration of the guard interval is 800 ns.
`33. A POSITA would have been able to calculate the symbol interval
`as TSYM = TGI + TDFT = 4 µs. Table 79 itself contains an entry
`for the symbol period as 4 µs.
`Id. at ¶¶ 28-33. Based on these disclosures and examples, “a POSITA as of at least
`
`1999 would have been able to calculate the symbol period of an OFDM system as
`
`TSYM = TGI + TDFT = N/Fs + K/Fs = (N+K)/Fs.” Id. at ¶ 34.
`
`
`
`14
`
`
`
`Dr. Vojcic further provides a logical explanation based on the fact that “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. Thus, in a system with higher mobility intercarrier spacing should be
`
`increased, or equivalently, OFDM symbol duration should be decreased.” Id. at ¶
`
`35.
`
`36. Specifically, as shown in Figure 5 (shown below) in Ex. 4
`(Armstrong, Grant, and Povey, Polynomial Cancellation Coding Of
`OFDM To Reduce Intercarrier Interference Due To Doppler
`Spread), signal to inter-carrier interference (ICI) ratio rapidly
`decreases, adversely impacting the performance) as the Doppler
`shift increases due to higher mobility. T is equal to 1/carrier
`separation, i.e., 1/Fs, thus, as the Doppler shift fd increases, the
`normalized Doppler shift fdT, for a fixed T, increases and, thus,
`signal to ICI ratio decrease. Thus, to mitigate adverse Doppler
`effects at higher mobility, symbol duration T must be decreased
`which also results in a larger subcarrier frequency spacing Fs, i.e.,
`decrease fdT, making the system more tolerant to Doppler. In some
`very high-speed scenarios, it might also be needed to implement
`very complex ICI cancelation schemes in addition, as in Ex. 4.
`Id. at ¶ 37. It is for this reason that “a POSITA would understand that the symbol
`
`duration in a high mobility 802.1m system needs to be shorter than in the legacy
`
`system 802.1e, e.g., L times, or, equivalently, the inter-carrier spacing needs to be
`
`larger L times.” Id. This is directly responsive to the Board’s question of “whether
`
`there is an assumption that N and NL and K and KL are the same for the second
`
`system and the legacy system” and directly relates to slide 3/9 of the provisional
`
`application of the ’326 Patent (EX2002 at 3) “where it is stated that subcarriers
`15
`
`
`
`
`
`bandwidth (i.e., spacing) in a legacy system 16.e is B, while in 16.m system it is
`
`B*L, i.e., L times larger.” Id. at ¶ 37. Dr. Vojcic further explains that
`
`Therefore, a POSITA would understand that the number of subcarriers
`N, and therefore the number of samples in the cyclic prefix, K, in both
`systems are the same in the provisional disclosure, taking into account
`the arrangement in the example L=3 in the provisional application at
`3/9. Thus, it also follows that Ts = (N+K)/3B is 3 times shorter than
`TsL = (NL+KL)/B. However, this example in the provisional should not
`be read as limiting, as a 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.
`
`Id. at ¶ 37 (emphasis added).
`
`Finally, Petitioner’s expert admitted that a shorter symbol period inherently
`
`implies that there are more pilot signal symbols per unit of time:
`
`Q. Would a shorter symbol period also imply that you will get more
`pilot signal symbols per unit of time?
`
`A. So depending on how you -- there's a nuance how you framed that
`question, yes, because if we mean by density, you know, the number of
`pilot symbols we are unit time -- so let's say I have two designs in which
`I have a symbol duration T and then I have a symbol duration T by two,
`if I keep the same number of pilots in the T symbol duration compared
`to the T by 2 I would get more pilots per unit time but per symbol
`duration the number of pilots are the same, so.
`
`Q. A POSITA would have understood that at the time of Li?
`
`A. The POSITA would have understood that, yes.
`
`EX2012 (Roy depo of Dec. 6, 2021– rough transcript) at 71:22-72:20. Dr. Roy
`
`thereby explicitly confirms that the disclosure of the ’326 provisional application
`
`implicitly shows denser pilot symbols (based on the construction of “pilot symbols
`
`
`
`16
`
`
`
`that are denser than” as “more pilot symbols per unit time than, wherein a unit time
`
`is the symbol period of the first communication system.”)
`
`7. 44.f: “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 section”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 7 (“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
`section”);
`• Pars. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
`• Para. 28 and Fig. 4 (same);
`• Paras. 32-35 and Fig. 5 (same);
`• Paras. 35 and 36, and Figs. 6A and 6B (same);
`• Para. 37 and Fig. 7 (same).
`
`8. 44.g: “combining the first section, the second section and the at
`least one non-data section to form the frame structure”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
`• Para. 7 (“combining the first section, the second section and the at least one non-
`data section to form the frame structure”);
`• Paras. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
`• Para. 28 and Fig. 4 (same);
`• Paras. 32-35 and Fig. 5 (same);
`• Paras. 35 and 36, and Figs. 6A and 6B (same);
`• Para. 37 and Fig. 7 (same).
`
`
`
`17
`
`
`
`Therefore, new proposed amended claim 44 does not introduce new subject
`
`matter and claims priority to Jul. 12, 2007, the filing date of the provisional patent
`
`application No. 60/929,798.
`
`B.
`
`Proposed Contingent Amended Claim 45 (replacing claim 2)
`
`1. “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.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
`• Paras. 10 and 11 (“The method may include allocating data of the first system
`and the second system in first mapping information or second mapping
`information,…”).
`• Paras. 27, 28 and Fig. 3 (“the data region including the two zones DATA 30-1
`(zone 1) and DATA 30-2 (zone 2), for the old system and the new system,
`respectively, may be placed according to the mapping information of the two
`zones defined in the DL-MAP 11”);
`• Paras. 33-35 and Fig. 6A (an embodiment illustrating the mapping scheme
`according to an example of the invention).
`
`C.
`
`Proposed Contingent Amended Claim 46 (replacing claim 3)
`
`1. “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.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
`• Para. 5 (“The DL sub-frame 16 may include a preamble 10-1, a frame control
`header (FCH) 11, a downlink map (DL-MAP) 12, a downlink burst (DL burst#l)
`13 and a data region (DATA) 14-1”);
`
`
`
`18
`
`
`
`• Paras. 26, 27 and Fig. 3 (“The DL sub-frame 16 may include a preamble 10-1, an
`FCH 11, a DL-MAP 12, a DL burst #1 13 with an UP-MAP (not shown), and a
`data region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”);
`• Para. 28 and Fig. 4 (exemplary embodiment exemplifying this claim);
`• Paras. 30, 33 and Fig. 5 (same);
`• Para. 35 and Fig. 6A (same).
`
`D.
`
`Proposed Contingent Amended Claim 47 (replacing claim 4)
`
`1. “The method of claim [3]46, wherein the second section follows
`the first section in at least one of time sequence and frequency
`spectrum.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
`• Para. 4 (“The UL sub-frame 18 may follow the DL sub-frame 16 in time domain
`with a transmit/receive transmission gap (TTG) 17 from the DL sub-frame 16.”);
`• Para. 7 (“generating a second section following the first section comprising data
`configured in a second format compatible with a second communication
`system”);
`• Para. 9 (“The method may include generating a first frame comprising a first sub-
`frame for downlink transmission and a second sub-frame for uplink transmission
`in a first band, generating a second frame comprising a third sub-frame for
`downlink transmission and a fourth sub-frame for uplink transmission in a second
`band”);
`• Para. 26 and Fig. 3 (showing example of the invention);
`• Paras. 30, 33 and Fig. 5 (same);
`• Para. 35 and Fig. 6A (same).
`
`E.
`
`Proposed Contingent Amended Claim 49 (replacing claim 6)
`
`1. “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.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
`
`
`19
`
`
`
`• Para. 4 (“the frame structure may include a downlink sub-frame (DL subframe)
`16 and an uplink sub-frame (UL sub-frame) 18.”);
`• Para. 8 (“The method may include generating a first sub-frame for downlink
`transmission, . . . and generating a second sub-frame for uplink transmission”);
`• Para. 9 (“The method may include generating a first frame comprising a first sub-
`frame for downlink transmission and a second sub-frame for uplink transmission
`in a first band, generating a second frame comprising a third sub-frame for
`downlink transmission and a fourth sub-frame for uplink transmission in a second
`band”);
`• Para. 26 and Fig. 3 (“the OFDMA frame structure may include a downlink sub-
`frame (DL sub-frame) 16 and an uplink sub-frame (UL sub-frame) 18.”).
`
`F.
`
`Proposed Amended Claim 50 (replacing claim 7)
`
`1. “The method of claim [1]44, wherein th
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
