UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 43
`April 11, 2022
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`Petitioners,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
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`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`PATENT OWNER’S SUR-REPLY TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
`CLAIMS 1-4 AND 6-8
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`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.
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`Paper No. 43
`April 11, 2022
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`Petitioners,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
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`
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`
`
`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`PATENT OWNER’S SUR-REPLY TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
`CLAIMS 1-4 AND 6-8
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`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.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`I.
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`II.
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`A.
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`Talukdar Is Not Prior Art ........................................................................... 1
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`1. Patent Owner Applies The Proper Standard, Which Requires An
`Objective Inquiry Into The Four Corners Of The Specification From The
`Perspective Of A Person Of Ordinary Skill In The Art. ................................. 2
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`2. Dr. Vojcic’s Supplemental Declaration Properly Sets Forth The
`Actual Disclosure Of The Provisional Application In Light Of The
`Knowledge Of A POSITA, As Required By The Federal Circuit. ................. 3
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`B.
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`C.
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`The Roy Declaration Should Be Accorded No Weight ............................. 9
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`Ground 1 – Claims 1–4 And 6–7 Are Not Obvious Over Talukdar In
`View Of Li. ...............................................................................................14
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`D. Ground 2 – Claim 8 Is Not Obvious Over Talukdar And Nystrom. ........14
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`It Would Not Have Been Obvious To One Of Ordinary Skill In The
`1.
`Art To Combine The Teachings Of Talukdar And Nystrom. .......................15
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`2. Nystrom Does Not Teach Enhancing Or Improving The Faster-
`Moving Unit’s Ability To Perform Channel Estimation. ..............................15
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`3. Nystrom Does Not Teach That Denser Pilot Symbols Counteract The
`Effects Of Doppler Shift And Fading Experienced By Faster-Moving
`Remote Units. ................................................................................................18
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`E.
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`Secondary Considerations Of Non-Obviousness .....................................20
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`III. CONCLUSION ..............................................................................................20
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`ii
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`I.
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`INTRODUCTION
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`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
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`Owner”) respectfully submits this Sur-Reply to Petitioner’s Reply To Patent
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`Owner’s Response To Petition for Inter Partes Review dated Dec. 28, 2020
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`(“Petition”) of U.S. Patent No. 8,265,096 (EX1001, “’096 Patent”) filed by
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`Qualcomm Incorporated (“Qualcomm” or “Petitioner”).
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`II. ARGUMENT
`Talukdar Is Not Prior Art
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`A.
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`Neither Talukdar, filed on Aug. 13, 2008, nor its provisional application No.
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`60/956,031, filed on Aug. 15, 2007, predate provisional application No. 60/929,798,
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`filed on Jul. 12, 2007 (“’798 application”), from which the challenged ’096 Patent
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`derives priority. Since the ’798 application properly supports the priority date of the
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`’096 Patent, Talukdar is not prior art to the challenged claims of the ’096 Patent.
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`Petitioner challenges this priority date and argues that Patent Owner “does not
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`apply the correct standard for written description required to support an earlier
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`priority date and does not even attempt to show possession within the disclosure of
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`the provisional application.” Paper 40 at 1-2 (citing Ariad Pharm., Inc. v. Eli Lilly
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`and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). Petitioner argues that
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`Patent Owner improperly attempts to “fill gaps with the knowledge of a POSITA.”
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`Paper 40 at 2. Petitioner mischaracterizes Patent Owner’s position, the relevant case
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`law, and the relevant legal standard.
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`1. Patent Owner Applies The Proper Standard, Which Requires
`An Objective Inquiry Into The Four Corners Of The
`Specification From The Perspective Of A Person Of Ordinary
`Skill In The Art.
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`Petitioner argues that Patent Owner applied the wrong standard in its analysis.
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`Paper 40 at 3-4 and 5-6. This is incorrect. As noted by the Board (Paper 14 at 25-
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`26), the “test for sufficiency [of the written description] is whether the disclosure of
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`the application relied upon reasonably conveys to those skilled in the art that the
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`inventor had possession of the claimed subject matter as of the filing date.” Ariad
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`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The Federal
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`Circuit explicitly clarified that this analysis takes place in the context of the
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`knowledge of a POSITA. Id. (“The test requires an objective inquiry into the four
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`corners of the specification from the perspective of a person of ordinary skill in the
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`art,” i.e., a POSITA). This inquiry is a question of fact and is, thus, highly dependent
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`on the facts and arguments presented in each case. Id. Further, the Federal Circuit
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`has made clear that “the written description requirement does not demand either
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`examples or an actual reduction to practice.” Id. Instead, a constructive reduction
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`to practice can satisfy the written description requirement. Falko–Gunter Falkner
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`v. Inglis, 448 F.3d 1357, 1366–67 (Fed.Cir.2006). And while “a description that
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`merely renders the invention obvious does not satisfy the requirement,” “the
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`description requirement does not demand any particular form of disclosure, or that
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`the specification recite the claimed invention in haec verba.” Ariad Pharms., 598
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`F.3d at 1352 (citations omitted). Patent Owner and its expert, Dr. Vojcic, have
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`shown in detail not only that each element of the challenged claims was disclosed in
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`the ’798 application, but also the knowledge of a POSITA at the relevant time, to
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`frame the context of this inquiry. This is an explicit requirement of the enablement
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`analysis set forth by the Federal Circuit. Id. at 1351.
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`2. Dr. Vojcic’s Supplemental Declaration Properly Sets Forth The
`Actual Disclosure Of The Provisional Application In Light Of
`The Knowledge Of A POSITA, As Required By The Federal
`Circuit.
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`Petitioner argues that Dr. Vojcic’s identification of the skill level of a POSITA
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`improperly imports required written description into the ’798 application’s
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`disclosure. Paper 40 at 4-5 and 6-11. This is incorrect. Patent Owner demonstrated,
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`element by element, that the ’798 application reasonably conveys the invention to
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`those skilled in the art as of its filing date. Paper 8 at 24-37. Specifically, regarding
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`claim element 1(c) Patent Owner showed that the claim element “wherein each
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`symbol in the second communication system has a shorter symbol period than that
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`in the first communication system” is supported by the ’798 application. First,
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`Patent Owner identified the relevant disclosure in the provisional application, which
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`is that the second format is designed to support higher mobility, i.e., the speed at
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`which the mobile unit is moving:
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`EX2002 at 2. Both, “spectrum efficiency” and “higher speed” are explicitly listed
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`in the provisional application as advantages of the second communication system.
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`The former (enhanced spectrum efficiency) means higher data speed, which clarifies
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`that “higher speed” refers to a higher velocity mobile unit. The provisional further
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`discloses that the second protocol uses multiple (L) contiguous 802.16e channels,
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`and that L BS’s share the same 802.16e zone with L*B bandwidth):
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`EX2002 at 3.
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`Second, Patent Owner sets forth the context for the analysis, which is the
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`knowledge of a POSITA at the time. Ariad Pharms., 598 F.3d at 1351. Dr. Vojcic
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`specifically testifies that the following formulas would have been well known to a
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`POSITA:
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`N = number of subcarriers
`K = number of samples in the cyclic prefix
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`𝑇𝑇𝑠𝑠=𝑁𝑁+𝐾𝐾3𝐵𝐵
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`𝑇𝑇𝑠𝑠𝑠𝑠=𝑁𝑁𝑠𝑠+𝐾𝐾𝑠𝑠𝐵𝐵
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`Where Ts is the symbol period of the second system and TSL is the
`symbol period of the legacy system. By explicitly disclosing that the
`bandwidth of the second system is larger, the provisional application
`discloses—to a POSITA—the claim requirement that the second
`system has a shorter symbol period.
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`EX2001¶52 (citing EX2002 at 4.) In the context of this level of knowledge of
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`someone of skill in the art, the disclosure of the ’798 application that the new
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`(second) communications system would have “higher spectrum efficiency” and
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`“higher speed” discloses to a POSITA that the second communication system
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`necessarily has a shorter symbol period than that in the first communication system.
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`The Board considered the above in its Institution Decision (Paper 14), but
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`stated that
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`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
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`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:
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`Paper 14 at 26. The Board further found that “Patent Owner also does not explain
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`whether there is an assumption that N and NL and K and KL are the same for the
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`second system and the legacy system.” Id.
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`Patent Owner addressed the Board’s concerns by detailing the knowledge of
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`a POSITA, i.e., the context in which the ’798 application should be interpreted.
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`Specifically, “a POSITA as of July 2007 would have known that TSYM = TGI +
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`TDFT = N/Fs + K/Fs, where TDFT is the IDFT/DFT period, TGI is the length of the
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`cyclic prefix (also called guard interval), N is the number of carriers.” EX2013 at ¶
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`19. Dr. Vojcic properly supports this assertion with reference to the relevant art
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`known at the time. Id. at ¶¶ 21, 23 (identifying two papers showing that “’the
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`signaling interval’, in other words the symbol period, is TDFT = N Δt.”) Dr. Vojcic
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`further supports his assertion with an example to illustrate the application of the
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`well-known formula in the modern WiFi standard (802.11). Id. at ¶¶ 28-33. Thus,
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`the level of knowledge of a POSITA, as explained by Dr. Vojcic, is well-supported.
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`Petitioner’s Reply raises two objections to Dr. Vojcic’s identification of the
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`relevant knowledge of a POSITA: (1) Petitioner argues that “Dr. Vojcic does not
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`show, or even attempt to show, ‘sufficient detail’ within the four corners of the ’798
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`Application itself,” because Patent Owner’s table “expressly relies on evidence
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`outside the ’798 Application, including at least the equations.” Paper 40 at 4.
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`Petitioner’s objection confuses the disclosure of the ’798 application with the
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`evidence of the knowledge of a POSITA. The ’798 application discloses that the
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`new (second) communications system would have “higher spectrum efficiency” and
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`“higher speed.” EX2002 (’096 Provisional) at 2. Dr. Vojcic’s explanation
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`(including the formulas) explains the relevant level of knowledge of a POSITA at
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`the relevant time. This knowledge must be considered in order to gather what one
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`of skill in the art would have known from the disclosure in the ’798 application.
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`Ariad Pharms. at 1351.
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`Petitioner’s reply further demonstrates its misconception. Petitioner states
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`that “Dr. Vojcic’s analysis for the remainder of element 1[c] also requires that the
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`POSITA apply specific equations not found in the Application to calculate the
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`symbol period, using specific assumptions.” Paper 40 at 8. But the patent claim
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`does not require that the symbol period is calculated. All that is required is that a
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`POSITA would understand that the second communications system of the ’798
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`application necessarily has a shorter symbol period than that in the first
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`communication system. The proper enablement requirement, therefore, is that a
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`POSITA (1) would know the formulas and, (2) based on that knowledge, would
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`realize from the ’798 application’s disclosure that the second communications
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`system would necessarily have a shorter symbol period. There is no requirement
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`that the POSITA must have been able to calculate the actual symbol period.
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`Petitioner’s second objection really just restates its first: “Second, . . . Patent
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`Owner relies on improper imported support from the knowledge of a POSITA and
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`then applies unfounded assumptions to reach Patent Owner’s desired conclusion.”
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`Paper 40 at 4-5. Petitioner invents the requirement that something in the “teaching
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`or disclosure within the ’798 Application” must “cause a POSITA to apply equations
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`from other prior art in the particular manner required by Patent Owner to show
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`support within the ’798 Application.” Id. This is neither the requirement nor the
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`argument Patent Owner is making. Instead, Dr. Vojcic simply explains the relevant
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`knowledge of a POSITA so that the disclosure of the ’798 application can be
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`properly understood. The same is true for Patent Owner’s response regarding the
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`Board’s question “whether there is an assumption that N and NL and K and KL are
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`the same for the second system and the legacy system.”
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`This is even more obvious in the context of the only other claim element for
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`which the Board questioned the disclosure in the ’798 application, “wherein the
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`second communication system has pilot symbols that are denser than those in the
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`first communications system,” recited in challenged claim 8. Paper 14 at 26. As
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`explained in Patent Owner’s response, the proper construction for the claim term
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`“pilot symbols that are denser than” as “more pilot symbols per unit time than,
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`wherein a unit time is the symbol period of the first communication system.” This
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`is the construction used by the District Court in UNM Rainforest Innovations v.
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`Apple Inc., No. 1-20-cv-00351 (W.D. Tex.). EX1011. Given that construction, the
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`provisional discloses the limitation regarding pilot density in multiple ways. First,
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`the goal of achieving “higher speed” in conjunction with the proposed dual-system
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`frame structure—a POSITA would understand—teaches modifying density of pilots
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`in one of the systems as a solution to the problem caused by the increased Doppler
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`shifting due to the high speed. This is confirmed by a POSITA’s understanding that
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`the reduced symbol period disclosed in the ’798 patent necessarily results in
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`increased density (in the temporal dimension) of pilot symbols. Petitioner’s expert
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`explicitly admitted a POSITA would know that a shorter symbol period necessarily
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`implies more pilot signal symbols per unit of time, i.e., increased pilot density.
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`Q. Would a shorter symbol period also imply that you will get more
`pilot signal symbols per unit of time?
`. . .
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`A. The POSITA would have understood that, yes.
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`EX2012 at 71:22-72:20.
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`B.
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`The Roy Declaration Should Be Accorded No Weight
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`The technical aspects of the Roy declaration (EX1002) should be discounted
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`in their entirety not because he may agree with the work of another expert, but
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`because he destroyed his credibility by claiming work that he did not do. His claim
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`that the analysis in his declaration is his own is belied by the redline to Dr. Akl’s
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`prior declaration, which is identical. Dr. Roy’s testimony makes clear beyond a
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`doubt that he did not perform reasonable due diligence in drafting his report, and
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`that he inexcusably misrepresented that fact in his deposition. Indeed, Dr. Roy’s
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`declaration does not even list Dr. Akl’s declaration—copied verbatim—in its
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`“materials considered” list. EX1002 at 11-12. As a result, Patent Owner was
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`prejudiced by having to depose an expert on a report which he did not write:
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`• Dr. Roy testified under oath that he wrote Section IX of his declaration
`titled “The Challenged '096 Patent” on Page 47, as well as Section X, “Overview of
`the Prior Art References.” EX2015 at 60:2-61:10.
`Q. So did you write this background, or was this provided to you?
`A. You know, I wrote it, again, you know, with -- with a draft based
`on -- based on a draft from counsel, but I did obviously add -- I
`refined the draft and finalized it.
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`. . .
`Q. And this Section IX, The Challenged '096 Patent on Page 47 -- does
`that -- is that your work and analysis of the '096 patent?
`A. Yes, it is.
`Q. Okay. So you wrote this section?
`A. Uh-huh, again, you know, with inputs from counsel.
`. . .
`Q. Okay. And there's Section X, Overview of the Prior Art References.
`Does this reflect your analysis of the prior art references?
`A. Yes, it does.
`Q. All right. And you wrote this section, right?
`A. Again, yes, with help of counsel.
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`• Dr. Roy testified under oath that he performed analysis on Talukdar and
`Nystrom and wrote it down in his report, and further revised and refined it. EX2015
`at71:5-72:4.
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`
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`Q. Okay. So you performed this analysis on Talukdar and Nystrom
`and wrote it down in your report?
`A. That is correct, yes.
`Q. Was -- and, again, was this written by you, or was this written by
`your attorneys?
`A. Again, in consultation with the attorneys’, you know, initial draft,
`which I revised, refined.
`Q. Okay. Let's take a look at the -- I'm sorry. Let me -- so you said
`which you revised and refined.
`So I'm sorry. The original draft then came from your attorneys,
`and you revised it?
`A. So in this -- I mean, for this part, yes, I would recall that it came
`from them, and I revised and refined it, yes.
`Q. Okay. How much -- how much revisions did you have? Did you
`change it a lot? Did you add a lot, or did you basically just read it
`and sign it?
`A. I, of course, did read it, and there were some changes that I -- that I
`suggested that were incorporated --
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`
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`• Dr. Roy testified under oath that his report reflected his own analysis
`of Li, Nystrom and Talukdar, and claimed that he spent >20 hours on drafting up his
`opinion and iterative revisions. EX2015 at 81:11-82:6.
`Q. your report reflects your analysis of Li, Nystrom, and Talukdar,
`right?
`. . .
`Q. How much time did you spend, you know, drafting up your opinion
`and analysis and putting it down in this report?
`A. You mean in number of hours? You know, this was iterated over
`several weeks. So I would say, again, 20, 25 hours on this.
`Q. Okay. So there -- you said iterative. So there were versions? You
`get a version, edit it, send it back and get a new version and go
`back and forth like that?
`A. That's correct, yes, and then discuss the prior art or, you know, other
`references that I may have discovered.
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`• Dr. Roy testified under oath that he used the same process for the
`detailed invalidity analysis for the ’096 Patent. EX2015 at 107:11-14.
`Q. Okay. So the same process was used also for the detailed invalidity
`analysis for the ‘096 patent; is that correct?
`A. Yes, I would say so, yes.
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`• Further, Dr. Roy testified under oath that he only took a quick look at
`Dr. Akl’s report and contributed himself to the drafts of the ’096 and ’204
`declarations. EX2015 at 110:14-111:17.
`Q. Following those discussions, did counsel provide you with an initial
`draft of your declarations on the '204 and '096 patents?
`A. Yes. I received an initial draft from counsel on those patents.
`Q. Were you aware that the technical substance of the drafts of your
`'096 and '204 declarations that were provided to you were based
`on the Ackel declarations on the
`'096 and
`'204 patents
`respectively?
`A. Yes, my understanding was that the analysis was based on the Ackel
`declaration. I had, as I deposed -- I had once taken a quick look at
`the Ackel declaration, but thereafter, I focused on the drafts -- on
`the initial draft as provided by counsel.
`Q. Okay. Do you recall making any edits to those drafts of the '096
`and '204 declarations?
`A. Yes, I do. Besides the obvious sections on my background and
`experience, I did contribute to editing the technical background
`portion of -- of the -- of the drafts.
`Q. Okay. Do you recall making any other edits to the technical
`substance, for example, on invalidity or obviousness?
`A. I believe that there were very minor changes, but I do not recall
`exactly what they were.
`However, a comparison of the two reports, which is attached to Patent
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`Owner’s Motion to Exclude (Paper 39) confirms that there are no substantive
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`differences whatsoever between the two documents. Paper 39, Attachment A.
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`The only edits concern punctuation, enumeration formatting, and changing
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`“POSITA” to “POSA.”
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`Petitioner’s Reply proffers two excuses. First, Petitioner argues that “had Dr.
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`Roy’s declaration not been substantively identical to Dr. Akl’s, it may have
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`introduced new issues and been a basis for denying joinder.” Paper 40 at 11.
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`However, this does not explain Dr. Roy’s false claims, under oath, that he performed
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`his own analysis and, based thereon, modified and edited the draft report he was
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`given. Petitioner could have easily avoided this concern by either exercising
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`reasonable diligence in the independent creation of Dr. Roy’s report, or simply hiring
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`Dr. Akl—the original author—himself. Even in the case of Dr. Roy simply adopting
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`Dr. Akl’s report verbatim as he has done here, it is simply unacceptable and must be
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`discouraged that that expert misrepresents that fact in his sworn testimony given
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`under penalty of perjury.
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`Ultimately, all that Dr. Roy is doing is vouching for the truth of what Dr. Akl
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`said, becoming in effect Dr. Akl’s spokesman. This is hearsay and is clearly
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`improper. See In re James Wilson Associates, 965 F.2d 160, 172-73 (7th Cir. 1992)
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`(it is improper to employ an expert as a screen against cross examination of the
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`witness who originally made the statement).
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`Second, Petitioner points out that, at the end of the deposition and after
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`conferring with its expert regarding the explicit misrepresentations he made
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`regarding his work under oath, Petitioner tried to rehabilitate his credibility by
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`eliciting the statement that Dr. Roy “reviewed his declaration in its entirety and
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`agreed with Dr. Akl’s opinions.” Paper 40 at 12. Again, Patent Owner’s position is
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`not that an expert cannot review and adopt the sound opinion of another expert. But
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`when an expert witness blatantly misrepresents the work performed and states that
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`he spent more than 20 hours to “edit” and “revise” work which he did not actually
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`do, and even fails to include the verbatim original work of another expert in the
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`materials considered list, the credibility of that expert cannot be rehabilitated. Based
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`on these material misrepresentations, Patent Owner has submitted a motion to
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`exclude the expert report of Dr. Roy in its entirety. Paper 39.
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`C. Ground 1 – Claims 1–4 And 6–7 Are Not Obvious Over Talukdar
`In View Of Li.
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`Regarding Ground 1, Patent Owner rests on its prior briefing.
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`D. Ground 2 – Claim 8 Is Not Obvious Over Talukdar And Nystrom.
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`In its Institution Decision, the Board correctly recognized that the
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`combination of Talukdar and Nystrom does not teach or suggest the claim element
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`“wherein each symbol in the second communication system has a shorter symbol
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`period than that in the first communication system.” Paper 14 at 47-51. This finding
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`was based on three points: (1) Petitioner did not set forth sufficient articulated
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`reasoning with rational underpinning to support the conclusion that it would have
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`been obvious to one of ordinary skill in the art to combine the teachings of Talukdar
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`and Nystrom; (2) Nystrom does not teach that denser pilot symbols counteract the
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`effects of Doppler shift and fading experienced by faster-moving remote units; and
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`(3) Nystrom does not teach enhancing or improving the faster-moving unit’s ability
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`to perform channel estimation. As confirmed below, the Board’s decision is correct.
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`1. It Would Not Have Been Obvious To One Of Ordinary Skill In
`The Art To Combine The Teachings Of Talukdar And Nystrom.
`
`As the Board noted in its Institution Decision (Paper 14), “Petitioner’s
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`proposed reasoning [to motivate Talukdar and Nystrom] is based on Nystrom’s
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`following asserted teachings: (1) denser pilot symbols counteract the effects of
`
`Doppler shift and fading experienced by faster-moving remote units; and (2)
`
`enhancing or improving the faster-moving unit’s ability to perform channel
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`estimation.” Paper at 49. For the reasons listed in Sections D(2)-(3), Nystrom does
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`not teach enhancing or improving the faster-moving unit’s ability to perform channel
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`estimation (Section D(2) below), nor that denser pilot symbols counteract the effects
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`of doppler shift and fading experienced by faster-moving remote units (Section D(3)
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`below). For these reasons, as well as those stated in Patent Owner’s Response, a
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`POSITA would not have been motivated to combine Talukdar and Nystrom.
`
`2. Nystrom Does Not Teach Enhancing Or Improving The Faster-
`Moving Unit’s Ability To Perform Channel Estimation.
`
`Petitioner’s Reply admits that “Paragraphs 29, 37, 42, and 43 of Nystrom
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`further do not disclose [that] denser pilot symbols enhance or improve a faster
`
`moving unit’s ability to perform channel estimation.” Paper 40 at 19. To address
`
`this shortcoming, Petitioner argues that “this would have been well known to a
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`- 15 -
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`POSITA, and Paragraph 3 of Nystrom expressly discloses that teaching.” Id. (citing
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`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.”).
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`However, Petitioner omits the remainder of the quote to Nystrom, which specifically
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`discourages and teaches away from that approach: “A shorter time interval between
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`successive pilot data gives a more accurate channel estimation, but decreases instead
`
`the transmission rate.” Ex. 1017 at ¶ 3. Nystrom thus expressly teaches away from
`
`utilizing “a shorter time interval between successive pilot data.”
`
`Petitioner also fails to relate Nystrom’s reference to “a shorter time interval
`
`between successive pilot data” to “pilot symbols that are denser than,” which is
`
`properly construed as “more pilot symbols per unit time than, wherein a unit time is
`
`the symbol period of the first communication system.” While Nystrom states that “a
`
`shorter time interval between successive pilot data gives a more accurate channel
`
`estimation,” it gives no detail regarding the number of pilot symbols in a given unit
`
`of time. Petitioner’s reference to Nystrom leaves open the possibility of a variable
`
`time interval between successive pilot data. This could be a shorter time interval
`
`between successive pilot data for a more accurate channel estimation followed by a
`
`longer time interval between successive pilot data to offset the decrease in
`
`transmission rate referenced in paragraph 3 of Nystrom. Indeed, Nystrom explicitly
`
`confirms the use of a variable pilot density: “A pilot density of a frame structure is
`
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`- 16 -
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`
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`continuously selected dependent on channel estimation information.” Id. This
`
`scheme does not result in “more pilot symbols per unit time” and therefore does not
`
`disclose the relevant claim element.
`
`The reasons for Nystrom’s disclosure of a variable pilot density is that “the
`
`methods suggested in Nystrom are on a per user basis; based on measurements and
`
`scheduling on a per user basis depending on the measured radio conditions.”
`
`EX2001¶95. “Talukdar’s frame structure, on the other hand, is based on a per
`
`system basis, 802.16e and/or 802.16m, and there are no facilities for measurements
`
`for adaptive real-time pilot structure and flexible scheduling as in Nystrom.” Id.
`
`Because of this paradigm difference, it would be nontrivial to combine Nystrom’s
`
`per-user approach with Talukdar’s whole-system approach. Id.
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`Assuming it is considered at all, which Patent Owner urges it should not be,
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`Dr. Roy’s declaration validates this. Paragraphs 162–163 of Dr. Roy’s declaration
`
`confirm Dr. Vojcic’s opinion that increasing pilot density can enhance channel
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`estimation but does not address Nystrom’s teaching that this results in decreased
`
`transmission rate, nor that Nystrom is referencing variable pilot density. And Dr.
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`Roy’s statement that “it was well-known that increasing pilot density improved
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`performance in wireless communications by enhancing the ability of mobile stations
`
`to perform channel estimation” simply does not address Nystrom’s teaching that “[a]
`
`shorter time interval between successive pilot data . . . decreases instead the
`
`
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`- 17 -
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`
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`transmission rate,” nor that “pilot density of a frame structure is continuously
`
`selected dependent on channel estimation information.” Ex. 1017 at ¶3.
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`3. Nystrom Does Not Teach That Denser Pilot Symbols Counteract
`The Effects Of Doppler Shift And Fading Experienced By
`Faster-Moving Remote Units.
`
`Petitioner argues that “Nystrom expressly teaches that higher pilot density
`
`regions 110A and 110D of Figure 5A should be used for higher Doppler situations
`
`(faster-moving remote units).” Paper 40 at 20. Petitioner bases this statement on
`
`the argument that “[a] POSITA would understand that better channel estimation
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`caused by the increased density of pilot symbols per unit time would counteract the
`
`effects of Doppler shift, because
`
`improved channel estimation
`
`improves
`
`transmission performance over non-ideal channels.” Paper 40 at 20 (citing Roy at ¶
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`162). This not only directly contradicts Nystrom’s teaching that “[a] shorter time
`
`interval between successive pilot data . . . decreases instead the transmission rate,”
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`but also Nystrom’s teaching of a variable pilot density: “pilot density of a frame
`
`structure is continuously selected dependent on channel estimation information.”
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`Ex. 1017 at ¶ 3.
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`Contrary to Petitioner’s argument, Nystrom only discloses four different
`
`combinations of Doppler and delay spread, each with its own recommendations for
`
`variations in pilot structure:
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`- 18 -
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`
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`EX1017, Fig. 5A (emphasis and annotations added).
`
`In the situation in FIG. 5A, there are pilot structures suitable for
`typically four combinations of Doppler and delay spread. In part 110A,
`the pilot structure is intended for a large Doppler and low delay spread.
`In part 110B, the pilot structure is intended for a low Doppler and low
`delay spread. In part 110C, the pilot structure is intended for a low
`Doppler and high delay spread. In part 110D, the pilot structure is
`intended for a high Doppler and high delay spread.
`EX1017¶42. Nystrom does not disclose a second communication system that
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`definitively has “pilot symbols that are denser than those in the first communication
`
`system.” Nystrom only discloses various possibilities of pilot structures and thus
`
`teaches a POSITA that pilot structure should be flexible, unlike the specific
`
`requirement of this claim element.
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`
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`- 19 -
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`E.
`
`Secondary Considerations Of Non-Obviousness
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`Regarding Ground secondary considerations of non-obviousness, Patent
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`Owner rests on its prior briefing.
`
`III. CONCLUSION
`
`For the reasons stated here and in Patent Owner’s response, the combination
`
`of Talukdar and Li does not render obvious any of Claims 1-4, 6, or 7, and the
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`combination of Talukdar and Nystrom does not render obvious Claim 8.
`
`Dated: April 11, 2022
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`Respectfully submitted,
`
`/s/ Jay P. Kesan
`
`Jay P. Kesan, Reg. No. 37,488
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`Telephone: (703) 289-5118
`
`Alfonso Chan, Reg. No. 45,964
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`achan@shorechan.com
`Telephone: (214) 593-9110
`
`Attorneys for Patent Owner UNM
`RAINFOREST INNOVATIONS
`
`
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`- 20 -
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`
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`Exhibit No.
`
`LIST OF EXHIBITS
`Descriptions
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`
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
`
`Declaration of Dr. Branimir Vojcic
`
`’096 Provisional
`
`2018 Economic Impac
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