UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`PRELIMINARY RESPONSE 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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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`RELATED PROCEEDINGS .......................................................................... 1
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`I.
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`II.
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`III. UNM BACKGROUND ................................................................................... 2
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`IV. THE BOARD SHOULD DENY INSTITUTION UNDER § 314(a). ............ 3
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`A. All of the Fintiv Factors Favor Denial of Institution. ................................ 5
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`B.
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`Efficiency and Integrity of the System Are Best Served by Denying
`Institution. ................................................................................................. 11
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`V.
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`THE ’096 PATENT ....................................................................................... 13
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`A.
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`B.
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`Technical Background .............................................................................. 13
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`The Challenged Claims ............................................................................ 14
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`1. Claim 1 ............................................................................................... 14
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`2. Claim 2 ............................................................................................... 15
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`3. Claim 3 ............................................................................................... 15
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`4. Claim 4 ............................................................................................... 15
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`5. Claim 6 ............................................................................................... 15
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`6. Claim 7 ............................................................................................... 16
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`7. Claim 8 ............................................................................................... 16
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`8. Prosecution History ............................................................................ 16
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`C.
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`Priority Date – Based on Provisional Application dated 2007/07/11 ...... 17
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`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 17
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`VII. PATENT OWNER’S CLAIM CONSTRUCTIONS .................................... 18
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`ii
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`A.
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`Claim Construction Order in UNM Rainforest Innovations v. Apple Inc.,
`No. 1-20-cv-00351 (W.D. Tex.) ............................................................... 18
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`VIII. THE ASSERTED PRIOR ART .................................................................... 19
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`A.
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`B.
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`C.
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`Talukdar (EX1012) .................................................................................. 19
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`Li (EX1016) .............................................................................................. 22
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`Nystrom (EX1017) .................................................................................... 23
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`IX. PETITIONER HAS FAILED TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING AS TO ANY CHALLENGED CLAIM.
` ....................................................................................................................... 24
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`A.
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`B.
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`Talukdar Is Not Prior Art ......................................................................... 24
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`Ground 1: Claims 1-4, 6, and 7 are not obvious over Talukdar and Li. .. 37
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`1. Claim 1 ............................................................................................... 37
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`2. Claim 2 ............................................................................................... 49
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`3. Claim 3 ............................................................................................... 49
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`4. Claim 4 ............................................................................................... 49
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`5. Claim 6 ............................................................................................... 49
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`6. Claim 7 ............................................................................................... 50
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`C.
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`Ground 2 – Claim 8 is not obvious over Talukdar and Nystrom. ............ 50
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`1. Claim 8 ............................................................................................... 50
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`X.
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`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .............. 57
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`XI. CONCLUSION .............................................................................................. 57
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`iii
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`TABLE OF AUTHORITIES
`
`Cases
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................................................................... 12
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`Continental Intermodal Group - Trucking LLC v. Sand Revolution LLC,
`No. 7-18-cv-00147-ADA, Text Order (W.D. Tex. July 22, 2020) ...................5, 6
`
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`
`Ecofactor Inc. v. Vivint, Inc.,
`6:20-cv-00080-ADA, Dkt. No. 55 (W.D. Tex. Apr. 16, 2021) ........................6, 7
`
`Industrial Technology Research Institute v. LG Electronics, Inc.,
`No. 2:15-cv-00552, Dkt. No. 1 (E.D. Tex. Apr. 24, 2015) ................................ 11
`
`Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial Holdings, LLC,
`6:20-cv-00200-ADA, Text Order (W.D. Tex. Aug. 2, 2020) ..........................5, 6
`
`MultiMedia Content Mgmt LLC v. Dish Network L.L.C.,
`6:18-cv-00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019) .......................5, 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–15 (Fed. Cir. 2005) (en banc) .......................................... 18
`
`Solas OLED v. Dell Techs. Inc.,
`6:19-cv-00514-ADA, Text Order (W.D. Tex. Jun. 23, 2020) .........................5, 6
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`Solas OLED v. Dell Techs. Inc.,
`6:19-cv-00515-ADA, Text Order (W.D. Tex. Jun. 23, 2020) .........................5, 6
`
`STC.UNM v. Quest Diagnostics Inc.,
`No. 17-1123 MV/KBM, 2019 WL 1091390, at *7, *13 (D. N.M. 2019) .......... 12
`
`Taylor v. Sturgell,
`533 U.S. 880 (2008) ............................................................................................ 10
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`iv
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`Statutes
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`35 U.S.C. § 312(a) ................................................................................................... 11
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`Rules
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`2011 U.S.C.C.A.N. 69 ............................................................................................. 12
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`Administrative Regulations
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`Apple Inc. v. Fintiv, Inc.,
`No. IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) ................. 5
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`No. IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) ................ 13
`
`Intel Corp. v. VLSI Tech., LLC
`No. IPR2020-00106, Paper 17 (PTAB May 5, 2020) .......................................... 7
`
`Mylan Pharms., Inc. v. Bayer Intellectual Property GMBH
`No. IPR2018-01143, Paper 13 (PTAB Dec. 3, 2018) ........................................ 13
`
`NetApp, Inc. v. Realtime Data LLC,
`No. IPR2017-01195, Paper 8 (PTAB Oct. 12, 2017) ......................................... 13
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`NetApp, Inc. v. Realtime Data LLC,
`No. IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) ......................................... 12
`
`NHK Spring Co., Ltd v. Intri-Plex Techs., Inc.,
`No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................. 12, 13
`
`Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc.
`No. IPR2020-0921, Paper 9 (PTAB Nov. 16, 2020) ................................ passium
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`v
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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 Patent Owner Preliminary Response to the
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`Petition for Inter Partes Review dated Dec. 28, 2020 (“Petition”) of U.S. Patent No.
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`8,265,096 (EX1001, “’096 patent”) filed by Qualcomm Incorporated (“Qualcomm”
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`or “Petitioner”). Qualcomm submitted an effectively verbatim copy of Intel’s
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`IPR2020-01576 (which has already been dismissed), albeit with the signature of a
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`different expert witness. Intel Corporation v. UNM Rainforest Innovations f/k/a
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`STC.UNM, No. IPR2020-01576 (Paper 8) (PTAB Feb. 02, 2021) (Termination
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`Decision). Petitioner asserts that claims 1-4 of the ’096 patent are unpatentable on
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`two grounds based solely on 35 U.S.C. § 103:
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`Ground 1 – Claims 1-4, 6, and 7 are unpatentable as obvious over Talukdar
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`and Li.
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`Ground 2 – Claim 8is unpatentable as obvious over Talukdar and Nystrom.
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`This Preliminary Response is timely filed based on the Board’s Notice Of
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`Filing Date Accorded To Petition And Time For Filing Patent Owner Preliminary
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`Response. See Paper 5.
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`II. RELATED PROCEEDINGS
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`Related Proceedings are listed in Paper 2, at 2-3.
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`1
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`III. UNM BACKGROUND
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`UNM Rainforest Innovations is the economic development and technology
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`transfer organization of The University of New Mexico, the State of New Mexico’s
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`flagship university. EX2003 (Economic Impact Report). In that role, UNM protects
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`and licenses technology owned by the university, including those developed by
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`university researchers. It connects the business community to the university and
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`facilitates the university’s role in the state’s economic development initiatives.1 As
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`a nonprofit corporation formed and owned entirely by the University of New Mexico
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`Board of Regents, UNM significantly contributes to the mission statement of the
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`University of New Mexico.
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`Since 1996, UNM university researchers have disclosed 2,222 new inventions
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`to UNM. UNM, in turn, has filed 1,628 patent applications, received 754 issued
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`U.S. patents, executed 733 licensing agreements, and facilitated the formation of
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`nearly 160 new startup companies to take those inventions to market.2 These
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`startups have created or stimulated the creation of hundreds of New Mexico jobs and
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`tens of millions of dollars in local economic output.3 UNM also subsidizes college
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`1 See https://innovations.unm.edu/about/.
`2 See https://innovations.unm.edu/unm-rainforest-innovations-celebrates-25-years/.
`3 See https://innovations.unm.edu/about/metrics/.
`2
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`students from the Navajo Nation by housing them at the UNM Lobo Rainforest
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`Building using licensing proceeds.4
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`Today, UNM is a core component of New Mexico’s innovation ecosystem
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`and an economic driver of high-tech industry. Among its 18 peer institutions
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`nationwide, UNM ranks first in number of licensing agreements, eighth in number
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`of faculty and staff invention disclosures, and second in number of startup
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`companies formed. Since the COVID-19 pandemic began, UNM has initiated new
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`programs to assist New Mexico small businesses and trained over 225 businesses on
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`how to build and scale an e-commerce platform that is tailored to their business.
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`UNM is a highly innovative institution involved in the international scientific
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`and technological community. As part of its international involvement and to
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`facilitate and support the mission of the University of New Mexico, UNM acquired
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`a patent portfolio including the ’096 patent from the Industrial Technology Research
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`Institute of Taiwan and has offered a license to its patent portfolio relating to wireless
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`technology to Qualcomm, which to date, Qualcomm has refused to consider.
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`IV. THE BOARD SHOULD DENY INSTITUTION UNDER § 314(a).
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`The Board should exercise its discretion under 35 U.S.C. § 314(a) to deny
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`Qualcomm’s Petition. Petitioner concedes that RPI Dell is a defendant in UNM
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`4 See https://housing.unm.edu/living-on-campus/housing-options/navajo-nation-
`student-housing.html.
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`3
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`Rainforest Innovations v. Dell Technologies Inc. et al., No. 6:20-cv-00468 (W. D.
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`Tex.) (“the Dell litigation”), and that all the claims that are at issue in the Dell
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`litigation are also at issue here. Paper 2, at 8. Accordingly, this proceeding would
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`be duplicative of the related district court case involving the same parties and the
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`same patent, and that case will outpace a final written decision in this proceeding.
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`Section 314(a) provides the Director with discretion to deny a petition. See
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`35 U.S.C. § 314(a); Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2140 (2016)
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`(“[T]he agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.”). When considering whether to exercise its discretion not to
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`institute, the circumstances surrounding proceedings “related to the same patent,
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`either at the Office, in the district courts, or the ITC” are considered. See
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`Consolidated Trial Practice Guide (November 2019) at 58. Several factors inform
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`that consideration:
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`whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`investment in the parallel proceeding by the court and the parties;
`overlap between issues raised in the petition and in the parallel
`proceeding;
`whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
`other circumstances that impact the Board’s exercise of discretion,
`including the merits.
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`4
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 5-6 (PTAB Mar. 20, 2020)
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`(precedential); Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc., IPR2020-
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`00921, Paper 9, at 14-15 (PTAB Nov. 16, 2020). The Board must then take “a
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`holistic view of whether efficiency and integrity of the system are best served by
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`denying or instituting review.” Fintiv, IPR2020-0019, Paper 11, at 6.
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`Applying the Fintiv analysis to the facts in this instance, Qualcomm’s Petition
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`must be denied.
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`A. All of the Fintiv Factors Favor Denial of Institution.
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`Regarding Fintiv Factor 1 (likelihood of a stay), no request to stay has been
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`filed in the related Dell litigation. The case has been pending for a year and there is
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`no chance that any stay will be requested or granted if it is requested. On the
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`contrary, the Court in which the related Dell litigation is pending has expressly stated
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`on multiple occasions that a stay is disfavored. See Continental Intermodal Group
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`- Trucking LLC v. Sand Revolution LLC (denying motion to stay pending instituted
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`IPR because “[t]he Court strongly believes [in] the Seventh Amendment.”); Kerr
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`Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial Holdings, LLC (denying motion
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`to stay pending post-grant review); MultiMedia Content Mgmt LLC v. Dish Network
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`L.L.C. (denying motion to stay pending IPR); Solas OLED v. Dell Techs. Inc. (same).
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`Qualcomm argues that Fintiv Factor 1 is “neutral” because the “district court
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`has not considered whether a stay would be appropriate in any of the litigations.”
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`5
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`Paper 1 at 7. However, Qualcomm is only claiming to have an interest in the Dell
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`litigation where its customers and RPIs Dell and EMC are defendants. Id. at 3. As
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`set forth below, the Dell litigation is now less than seven months from trial. No
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`prognostication is necessary to see that no stay can reasonably be expected in the
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`Dell litigation and that a final decision will issue there well before a final written
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`decision in this IPR. Further, the WDTX generally—and Judge Albright in
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`particular—is highly likely meet the scheduled trial date because “[t]his Court’s
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`default schedule would lead to a trial date much sooner than the average time to
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`trial.” Ecofactor, Inc, v. Vivint, Inc., 6-20-cv-00080, Dkt. No. 55 (W.D. Tex. Apr.
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`16, 2021) (Alan D. Albright). Thus, whether or not a stay might be granted in the
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`other litigations is irrelevant. This factor therefore heavily favors denying
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`institution.
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`Regarding Fintiv Factor 2 (trial date proximity), the trial in the Dell litigation
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`is scheduled to begin on November 8, 2021, less than seven months from now. See
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`EX2006, Dell Litigation Amended Scheduling Order (Dec. 18, 2020). The schedule
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`in the Dell litigation has already been reset once and the Court kept the same trial
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`date in the amended schedule. Compare id. with EX2005, Dell Litigation
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`Scheduling Order (Aug. 28, 2020). An institution decision in this IPR will likely
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`issue just about four months before the scheduled trial. A final written decision
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`would then not issue until July 2022, eight months after a final decision in the Dell
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`6
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`litigation. Qualcomm argues that the trial date for the Dell litigation is “inherently
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`uncertain,” that the average trial delay is three months, and that the disruption in
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`court procedures as a result of the COVID-19 pandemic makes such delay likely.
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`Paper 1 at 8. This is pure speculation. In fact, Judge Albright explicitly confirmed
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`in a recent order that his default schedule is much faster than other courts and that
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`“this Court is fully open and equipped to safely conduct jury trials in the COVID-19
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`pandemic.” Ecofactor, Inc, v. Vivint, Inc., 6-20-cv-00080, Dkt. No. 55 (W.D. Tex.
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`Apr. 16, 2021) (Alan D. Albright). In either event, however, a final decision in the
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`Dell litigation will still be issued four to five months before a final written decision
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`in this IPR even according to Qualcomm’s calculus. Thus, this factor also strongly
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`favors denying institution. See Philip Morris Prod., S.A. v. RAI Strategic Holdings,
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`Inc., No. IPR2020-00921, Paper 9, at 16 (PTAB Nov. 16, 2020); Intel Corp. v. VLSI
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`Tech., LLC, No. IPR2020-00106, Paper 17 at 13 (PTAB May 5, 2020).
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`Regarding Fintiv Factor 3 (investment in the district court action), there has
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`already been substantial activity in the Dell litigation that is relevant to the issues of
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`patent validity. Per the Amended Scheduling Order, the parties in the Dell litigation
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`submitted a Joint Claim Construction Statement and have exchanged final
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`infringement and invalidity contentions. See EX2006, Dell Litigation Amended
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`Scheduling Order. By the time an institution decision issues in this IPR, fact
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`discovery will be closed in the Dell litigation. Id. Qualcomm’s statement that “[t]he
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`7
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`court and the parties have made little to no investment,” Paper 1 at 8, is
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`fundamentally untrue. To the contrary, the pretrial litigation processes will be
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`roughly 50% complete before an institution decision is issued. The parties to the
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`Dell litigation are already actively taking merits-based discovery, and UNM has
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`served a subpoena for documents, source code, and other information pertaining to
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`the Qualcomm Wi-Fi chips that are incorporated into Dell’s accused products; and
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`Qualcomm has already responded to the subpoena.5 This factor therefore strongly
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`favors denying institution.
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`Regarding Fintiv Factor 4 (overlap of issues), there is a substantial overlap
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`between the issues of invalidity presented in this IPR and the Dell litigation.
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`Qualcomm deceptively argues that the issues “will be different” because here
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`Qualcomm “challenges claims … which are not asserted” in the Dell litigation.
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`Paper 1 at 9. Qualcomm cleverly seeks to disguise that it is challenging all the claims
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`asserted in the Dell litigation in this IPR. Thus, there is a 100% overlap with the
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`district court independent claims. Qualcomm also argues that Factor 4 favors
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`institution because Dell has stipulated that it “will not pursue invalidity of the
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`challenged claims on the same grounds or even the same references at issue in this
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`Petition.” Paper 1 at 9. However, that narrow stipulation does not eliminate the
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`5 Qualcomm has also been served subpoenas in the Asus case which will also reach
`trial before a final written decision issues here.
`8
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`possibility that substantially similar art and arguments will be raised in the Dell
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`litigation. See Philip Morris, IPR2020-00921, Paper 9, at 19 (considering Petitioner
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`stipulation that “it will not pursue any IPR grounds in the EDVA case if the Board
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`institutes”). This factor therefore strongly favors denying institution.
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`Regarding Fintiv Factor 5 (whether petitioner and defendant are the same),
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`Dell and EMC, Qualcomm’s customers, are real parties in interest in this IPR and
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`they have agreed to be bound by the results of this IPR. Paper 1 at 3, 9. Qualcomm’s
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`interests are thus completely aligned with Dell’s and EMC’s as to the issues
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`presented here and in the Dell litigation. Indeed, Qualcomm is indemnifying Dell;
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`Dell’s position is that all of the remaining chips in the Dell litigation are Qualcomm
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`chips; and Qualcomm is using the same counsel in this IPR as in the district court
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`and as in regard to UNM’s subpoena to Qualcomm. Qualcomm argues that Factor
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`5 favors institution because Qualcomm is “not the same party as any defendant.” Id.
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`at 10. That argument is a red herring because it ignores that Qualcomm is
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`representing and acting as an agent for Dell’s and EMC’s interests in this IPR, and
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`it is indemnifying Dell in District Court. Taylor v. Sturgell, 533 U.S. 880, 894-94
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`(2008). This factor therefore favors denying institution.
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`Regarding Fintiv Factor 6 (other circumstances), Patent Owner submits that
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`for the reasons detailed herein, Qualcomm’s grounds are not particularly strong on
`
`the merits. Further, Qualcomm’s petition relies primarily on the Talukdar reference
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`9
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`

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`(EX1012) which does not predate the priority date of the ’096 patent. Although
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`Talukdar derives priority from its provisional application No. 60/956,031, filed on
`
`Aug. 15, 2007, that priority date does not predate the provisional application from
`
`which the challenged ’096 patent derives priority (provisional application No.
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`60/929,798, filed on Jul. 12, 2007). Talukdar is thus not prior art to the ’096 patent
`
`at all, and UNM has offered uncontroverted expert testimony that the challenged
`
`claims of the ’096 patent are fully supported by its provisional application.
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`In addition, Qualcomm has failed to disclose all RPIs as required by § 312(a).
`
`As disclosed by Qualcomm in its Petition, the ’096 patent is also being asserted
`
`against ASUSTek Computer Inc. (“ASUSTek”) in the Western District of Texas.
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`Paper 1 at 3. The accused products in the ASUSTek matter include ASUSTek’s
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`ROG Phone 3. See EX2004, ASUSTek Litigation Final Infringement Contentions
`
`at 2. The ROG Phone 3 uses Qualcomm’s Snapdragon 888 platform. EX2011, Asus
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`ROG Phone 3 home page. The Snapdragon 888 is a system-on-a-chip that includes
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`the wireless functionality that is the subject of Patent Owner’s infringement claims
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`in the ASUSTek litigation. See EX2004, ASUSTek Litigation Final Infringement
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`Contentions at 7-119 (EX2012). Qualcomm admits that Dell and EMC are RPIs
`
`because they are customers named as defendants in a related district court action in
`
`the Western District of Texas. Paper 1 at 3. ASUSTek is also a Qualcomm customer
`
`that has been named as a defendant in a related district court action in the Western
`
`
`
`10
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`

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`District of Texas, but Qualcomm has conspicuously failed to disclose ASUSTek as
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`an RPI. See id. Additionally, the ’096 patent has been asserted against its customer
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`LG, to which, on information and belief, Qualcomm is also an RPI and/or privy and
`
`owes indemnity. Industrial Technology Research Institute v. LG Electronics, Inc.,
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`No. 2:15-cv-00552, Dkt. No. 1 (E.D. Tex. Apr. 24, 2015). As a result of this failure,
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`Qualcomm has not met all the necessary prerequisites for institution. 35 U.S.C. §
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`312(a). Accordingly, Qualcomm’s Petition must be denied as fatally defective
`
`procedurally. This factor therefore favors denying institution.
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`Thus, all of the Fintiv factors favor discretionary denial in this case.
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`B.
`
`Efficiency and Integrity of the System Are Best Served by Denying
`Institution.
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`“In general, an anticipated district court trial date substantially in advance of
`
`a projected statutory deadline for the Board to issue a final decision increases the
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`likelihood that the district court will reach a determination of the parties’ dispute as
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`to the validity of the challenged claims before the Board will. Under such
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`circumstances, the application of Office policy has often resulted in the denial of
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`institution.” Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc., IPR2020-
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`00921, Paper 9, at 28 (PTAB Nov. 16, 2020) (citations omitted).
`
`Here, there are no factors that favor institution. The petition is weak on the
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`merits and the primary alleged prior art reference (Talukdar) is not prior art at all
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`because it does not predate the priority date of the challenged claims. Even if the
`11
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`

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`merits of the asserted grounds were to favor institution, “the efficiency and integrity
`
`of the system … taking into account the consistent application of Office policy”
`
`requires that institution be denied. Id., at 28-29; see also NHK Spring Co., Ltd v.
`
`Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8, at 19-20 (PTAB Sept. 12,
`
`2018); NetApp, Inc. v. Realtime Data LLC, No. IPR2017-01195, Paper 9, at 12-13
`
`(PTAB Oct. 12, 2017). UNM is a university institution that protects and licenses
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`the University of New Mexico’s technology and, as Qualcomm admits, UNM has
`
`not asserted any patents against Qualcomm.6
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`Finally, the AIA was designed to “limit unnecessary and counterproductive
`
`litigation costs.” H.R. Rep. No. 112-98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 69,
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`69; Consolidated Trial Practice Guide at 56. Given the substantial overlap between
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`the district court action and this IPR, this proceeding is not an effective and
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`appropriate use of the Board’s resources and is contrary to the AIA’s overall goal to
`
`“make the patent system more efficient by the use of post-grant review proceedings.”
`
`See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, No. IPR2016-
`
`
`6 UNM objects to the entirety of these proceedings because it is a sovereign and
`has not waived its sovereign immunity. STC.UNM v. Quest Diagnostics Inc., No.
`17-1123 MV/KBM, 2019 WL 1091390, at *7, *13 (D. N.M. 2019) (holding that
`UNM is an arm of the state and did not waive sovereign immunity by suing in state
`court). UNM further objects to the entirety of these proceedings based on Arthrex,
`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), and UNM requests
`that this proceeding be terminated or suspended pending a final resolution of that
`case by the United States Supreme Court.
`
`
`
`
`12
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`

`

`01357, Paper 19, at 16-17 (PTAB Sept. 6, 2017) (precedential). IPRs are not a tool
`
`to delay prosecution for infringement. Thus, institution is not justified. NHK Spring,
`
`Paper 8, at 19-20; NetApp, Paper 8, at 12-13; see also Mylan Pharms., Inc. v. Bayer
`
`Intellectual Property GMBH, No. IPR2018-01143, Paper 13, at 12-14 (PTAB Dec.
`
`3, 2018).
`
`Accordingly, the Board should deny to institute institution under § 314(a).
`
`V. THE ’096 PATENT
`
`A. Technical Background
`
`Dr. Vojcic provides a short explanation of the technical background of the
`
`’096 patent in paragraphs 46-51 of his declaration, which is reproduced in full here:
`
`46. The invention of the ’096 patent relates to methods for constructing
`frame structures in orthogonal frequency-division multiple access (OFDMA)
`systems. EX1001, 1:16-19. “Orthogonal Frequency Division Multiple
`Access (OFDMA) is a multiple access scheme for transmitting data in
`different subcarriers in a channel, wherein the data may come from different
`users and may be transmitted in disjoint subsets of sub-channels in a
`transmission bandwidth.” Id, 1:22-24.
`47. The ’096 patent first describes the prior art. Id., Figs 1 (illustrating an
`OFDMA frame structure under the IEEE 802.16 standard) and 2 (illustrating
`a placement of guiding signals (or pilot symbols) 24-1 for time-domain and
`frequency -domain OFDMA signals under the IEEE 802.16 standard).
`“Referring to FIG. 2, upper and lower frequency bands may serve as
`48.
`guard bands 22-1 and 22-2, respectively, which may not be used to carry
`information.” Id. 1:61-63. “The placement of information may include a first
`part and a second part. For example, the first part of the placement includes
`a preamble 10'-1 having a fixed length, and the second part of the placement
`includes data and guard intervals between an upper row and a lower row of
`the data interlaced with the pilot symbols 24-1, represented by blocks marked
`with ‘X’.” Id., 1:63-2:2.
`
`
`
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`

`49. Then, ’096 patent illustrates problems faced by the prior art, including
`that: “[i]n some applications such placement of information may be inflexible
`to bandwidth scaling due to the fixed-length preambles 10'-1 and/or 10'-2 and
`the often unusable guard bands 22-1 and 22-2. Moreover, the placement may
`be susceptible to a Doppler effect in a high mobility scenario because the
`placement may be usually designed with a relatively large symbol period,
`which in tum may induce relatively short carrier spacing and less dense pilot
`symbol placement. Moreover, the limitation on pilot symbol placement may
`cause channel estimation error at a receiving end because of insufficient
`information provided for channel estimation.” Id., 2:2-14.
`50. The invention of the ’096 patent directly addresses these problems. For
`example, the ’096 patent discloses “a method for constructing a frame
`structure for data transmission, the method comprising generating a first
`section comprising data configured in a first format compatible with a first
`communication system, 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, 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, and combining the first section, the second section and the at least
`one non-data section to form the frame structure.” Id., at 2:18-30. The patent
`further details other examples of its invention. Id., 2:31-54, 2:55-67, 3:1-13,
`and 3:14-32.
`51. The invention of the ’096 patent enables “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.” Id., 4:21-25. The new
`system has the advantages of allowing larger bandwidth, higher mobility, and
`may use updated transmission technology while maintaining backward
`compatibility. Id., 4:26-30.
`The Challenged Claims
`B.
`
`1.
`
`Claim 1
`
`1. A method of constructing a frame structure for data transmission, the
`method comprising:
`
`
`
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`

`a. generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`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:
`c. the second format is compatible with the second communication system
`configured to support higher mobility than the first communication system, wherein
`each symbol in the second communication system has a shorter symbol period than
`that in the first communication system;
`d. 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; and
`e. combining the first section, the second section and the at least one non-data
`section to form the frame structure.
`Claim 2
`2.
`
`2. The method of claim 1, wherein the non-data section comprises mapping
`information for at least one of the first section and the second section.
`Claim 3
`3.
`
`3. The method of claim 1, 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.
`Claim 4
`4.
`
`4. The