UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`P.O.’S RMTA FAILS TO COMPLY WITH THE REQUIREMENTS
`OF THE PILOT PROGRAM .......................................................................... 1
`
`A.
`
`B.
`
`P.O.’s RMTA Was Not Authorized Because It Does Not
`Propose New Substitute Claims ............................................................ 1
`
`If Considered At All, P.O.’s RMTA Is a Reply and Should be
`Denied Because Attempted Showing of Written Description
`Support in Reply is Too Late ................................................................ 3
`
`III. THE RMTA’S ATTEMPTED SHOWING OF WRITTEN
`DESCRIPTION SUPPORT IS DEFICIENT ON THE MERITS ................... 7
`
`A.
`
`B.
`
`The RMTA does not meet P.O.’s Burden of Production ...................... 7
`
`The RMTA makes no effort to show support for most claim
`elements to the ’798 Application .......................................................... 9
`
`IV. P.O.’S PROPOSED AMENDED CLAIMS ARE UNPATENTABLE
`FOR THE SAME REASON PRESENTED IN THE PETITION ................. 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`Correlation between language in Proposed Amended Claims
`and original claims .............................................................................. 10
`
`The parties agree that “a shorter symbol period inherently
`implies that there are more pilot symbols per unit of time.” .............. 11
`
`The proposed amendment does not add any patentably distinct
`limitation ............................................................................................. 12
`
`The Proposed Amended Claims are unpatentable over Talukdar
`in view of Li (Ground 3) ..................................................................... 17
`
`THE BOARD SHOULD NOT GIVE ANY WEIGHT TO P.O.’S
`UNSUPPORTED AND CONCLUSORY ATTORNEY ARGUMENT
`IN SUPPORT OF THE PATENTABILITY OF THE PROPOSED
`SUBSTITUTE CLAIMS ............................................................................... 24
`
`-i-
`
`V.
`
`
`
`
`
`
`
`VI. CONCLUSION .............................................................................................. 25
`VI. CONCLUSION...ec eccseeseeeeeeesaeeeaeeeaeeesaeceaeeeseeesaeesaessaessaeseseeeseaseeeees 25
`
`
`
`
`
`
`
`-ii-
`-1i-
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Description
`U.S. Patent No. 8,265,096 (“the ’096 patent”)
`Declaration of Dr. Sumit Roy (“Roy”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Eleventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Dec. 10, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL., FUNDAMENTALS OF
`WIMAX (2007)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ’096 Patent Claims
`U.S. Provisional App. No. 60/929,798
`Excerpts from ’096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20-cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69 (“Markman Order”)
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`U.S. Provisional Application No. 60/956,031
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`Ex. 1014
`Ex. 1015 WIPO Handbook on
`Industrial Property
`Information and
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`Excerpts from William Stallings, WIRELESS COMMUNICATIONS AND
`NETWORKS (2D ED. 2005)
`
`(“Talukdar
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`-iii-
`
`
`
`
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Ex. 1028
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (November 2005)
`Ex. 1023 Mohammad Azizul Hasan, Performance Evaluation
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4 (Jan.
`12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (IEEE, Vol. 4, No. 2, Mar. 2005)
`Declaration of Dr. Robert Akl
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post Grant (available at:
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`slip-after-ptab-discretionary-denials/)
`Declaration of Jonah D. Mitchell in Support of Petitioners’ Motion
`for Pro Hac Vice Admission
`Declaration of Christine M. Morgan in Support of Petitioners’
`Motion for Pro Hac Vice Admission
`ITRI’s Recorded Assignment, Reel/Frame No. 045200/0980
`Sino Matrix’s Recorded Assignment, Reel/Frame No. 021275/0468
`UNM’s Recorded Assignment, Reel/Frame No. 046854/0173
`June 22, 2021 hearing transcript before Judge Albright in UNM’s
`litigations against Dell and ASUSTek.
`Printout from Public PAIR showing the correspondence address of
`record for the ’096 patent
`Excerpt of ’096 file history showing ITRI’s prosecution counsel
`February 9, 2022 Deposition Transcript of Dr. Branimir Vojcic for
`IPR2021-00375
`Supplemental Declaration of Dr. Sumit Roy (“Supp. Dec.”)
`
`
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`
`of
`
`Ex. 1036
`
`Ex. 1037
`Ex. 1038
`
`Ex. 1039
`
`-iv-
`
`
`
`
`
`I.
`
`INTRODUCTION
`Assuming that challenged claim 1 is determined to be unpatentable, Patent
`
`Owner’s “Revised” Motion to Amend (Paper 44, hereafter “RMTA” or “Motion”)
`
`seeks to replace original claims 1-4 and 6-7 with substitute claims 44-47 and 49-50.
`
`P.O.’s RMTA should be denied for at least the following reasons.
`
`First, it fails to comply with the Pilot Program requirement that it must include
`
`“new claims” and, therefore, is an unauthorized paper that should be expunged.
`
`Second, to the extent considered at all, P.O.’s RMTA is a reply, so it fails to rectify
`
`the original MTA’s failure to show written description support because it is too late
`
`to do so in the first instance on reply. Third, P.O. did not satisfy its burden to show
`
`written description because it relies on string citations without further explanation.
`
`Fourth, the proposed substitute claims are rendered obvious over the prior art.
`
`II.
`
`P.O.’S RMTA FAILS TO COMPLY WITH THE REQUIREMENTS
`OF THE PILOT PROGRAM
`A.
`
`P.O.’s RMTA Was Not Authorized Because It Does Not Propose
`New Substitute Claims
`
`Under the Pilot Program, a revised motion to amend must propose new
`
`substitute claims in place of the substitute claims that were presented in an original
`
`motion to amend. 84 Fed. Reg. 9497, 9498–99, 9501 ( “[a] revised MTA includes
`
`one or more new proposed substitute claims in place of previously presented
`
`substitute claims….”) (emphasis added).
`
`
`
`-1-
`
`
`
`
`
`P.O.’s RMTA fails the requirement to propose new substitute claims. P.O.
`
`expressly admits that the RMTA proposes identical claims to those previously
`
`presented. RMTA at 1 (“The amendments … are identical to those requested in
`
`Patent Owner’s original Motion to Amend.”). Therefore, P.O.’s RMTA fails to
`
`“include[] one or more new proposed substitute claims in place of previously
`
`presented substitute claims,” as required. 84 Fed. Reg. at 9498–99, 9501.
`
`P.O.’s failure to follow the Pilot Program Notice is inexcusable, as the Board
`
`directed the parties to consider it. See Paper 24 at 2 (“We also direct the parties to
`
`the Notice Regarding a New Pilot Program ….”); see also Orthofix Medical Inc. v.
`
`Spine Holdings, LLC, IPR2020-01411, Paper 33 at 3 n. 2 (PTAB Oct. 27, 2021)
`
`(citing the Pilot Program Notice and strongly recommending counsel “familiarize
`
`themselves with the Office rules and guidance when practicing before the Board.”).
`
`P.O. was not authorized to file a revised motion to amend directed to the same
`
`substitute claims as previously presented. See, e.g, id. at 3 (“We … did not authorize
`
`Patent Owner to file [a revised MTA] without new proposed substitute claims.”).
`
`Accordingly, because P.O. filed a paper that it was not authorized to file, to avoid
`
`prejudicing Petitioner, the Board should expunge the RFTA paper. 37 C.F.R. §
`
`42.20(b) (“A motion will not be entered without Board authorization.”); 37 C.F.R. §
`
`42.7(a) (“The Board may expunge any paper … that is not authorized ….”). If
`
`expunged, the effect would be that P.O. took no action in response to the Preliminary
`
`-2-
`
`
`
`
`
`Guidance. 84 Fed. Reg. at 9500 (“In response to … the preliminary guidance (if
`
`requested), patent owner may … (3) take no action ….”).
`
`In Orthofix Medical, following a conference call, the Board issued an order
`
`treating the unauthorized RMTA as a reply. IPR2020-01411, Paper 33 at 3. Here,
`
`expungement is a more appropriate remedy because the schedule in Orthofix
`
`Medical provided nearly six weeks between P.O.’s revised MTA and Petitioner’s
`
`opposition, giving the Board and the parties the opportunity to address the
`
`procedural deficiency prior to Petitioner’s responsive paper. IPR2020-01411, Paper
`
`33 at 2–3 (order following conference call); id., Paper 31 at 2, 6 (PTAB Oct. 4, 2021)
`
`(scheduling order). Thus, Petitioner in Orthofix Medical was not prejudiced in the
`
`manner that Petitioner was here. In this proceeding, Petitioner had only two weeks
`
`between the P.O.’s revised MTA and this paper, including a holiday weekend; far
`
`too compressed to permit the parties to seek guidance from the Board. As such, any
`
`consideration of the RMTA, even as a reply, rather than expunging it, would unfairly
`
`prejudice Petitioner, as P.O.’s failure to file a compliant paper should not force
`
`Petitioner to guess how it will be treated. Accordingly, the proper remedy for P.O.’s
`
`deficient revised MTA is expungement.
`
`B.
`
`If Considered At All, P.O.’s RMTA Is a Reply and Should be
`Denied Because Attempted Showing of Written Description
`Support in Reply is Too Late
`
`-3-
`
`
`
`
`
`To the extent that P.O.’s RMTA paper is considered at all, it can only be
`
`considered a reply. Orthofix Medical Inc. v. Spine Holdings, LLC, IPR2020-01411,
`
`Paper 41 at 2 n. 2 (PTAB Feb. 22, 2022) (“Patent Owner filed Paper 30 as a Revised
`
`Contingent Motion to Amend. Paper 30, however, does not include any new
`
`proposed substitute claim…. We, thus, deemed Paper 30 Patent Owner’s Reply to
`
`Petitioner’s MTA Opposition.”).
`
`In the RMTA, P.O. does not dispute that, under 37 C.F.R. § 42.121(b), it was
`
`required to show written description support for each limitation of the proposed
`
`substitute claims, including the original claim limitations, in its original MTA. Nor
`
`does P.O. dispute that the original MTA failed this requirement. See Lectrosonics,
`
`Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 8 (P.T.A.B. Feb. 25, 2019)
`
`(precedential) (“[T]o meet [the] requirement” of 37 C.F.R. § 42.121(b), “the motion
`
`must set forth written description support for each proposed substitute claim as a
`
`whole, and not just the features added by the amendment.”); Paper 37 at 3–12 (failing
`
`to address, in any fashion, the original claim limitations of the proposed substitute
`
`claims). Instead, the RMTA purports to provide a showing of written description
`
`support for the original limitations of the proposed substitute claims. RMTA at 5–
`
`20.
`
`This attempt on reply comes too late. As the moving party, P.O. was obligated
`
`to present all of its arguments and evidence in support of its written description
`
`-4-
`
`
`
`
`
`argument for each limitation of the proposed substitute claims in its original MTA.
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 8 (P.T.A.B. Feb. 25,
`
`2019) (precedential) (“All arguments and evidence in support of the motion to
`
`amend shall be in the motion itself.”) (emphasis added); 37 C.F.R. § 42.23(b) (“All
`
`arguments for the relief requested in a motion must be made in the motion,” and “[a]
`
`reply may only respond to arguments raised in the corresponding opposition”); Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“[A] reply that . . .
`
`belatedly presents new evidence will not be considered” and “[t]he board will not
`
`attempt to sort proper from improper portions of the reply.”).
`
`Lippert Components, IPR2018-00777, Paper 28 (PTAB Sept. 24, 2019)
`
`confirms that a patent owner’s attempted showing of written description support for
`
`the first instance on reply is “too late.” Id. at 51. In particular, Lippert Components
`
`addressed “[a] Motion to Amend [that] does not address, in any fashion, the
`
`limitations of the existing claims that are carried forward in the proposed claims.”
`
`Id. The Board held that a “Patent Owner’s attempt to rectify this deficiency in the
`
`Motion to Amend, via reply to Petitioner’s opposition, is unavailing” because “the
`
`attempt came too late.” Id. For the same reason, P.O.’s belated attempt to provide
`
`the missing written description support here is too late, and P.O.’s motion to amend
`
`should be denied. See Lippert Components, IPR2018-00777, Paper 28 at 52.
`
`-5-
`
`
`
`
`
`Lastly, the “further guidance” in the Preliminary Guidance that written
`
`description support for the proposed substitute claims “appears” to exist (Paper 42
`
`at 6) does not excuse P.O. from its obligation to satisfy its burden to show written
`
`description support, nor can it shift the burden to Petitioner to show a lack of written
`
`description support. No applicable rule or precedent authorizes late compliance on
`
`the ground that counsel for the nonmoving party should have been able to figure out
`
`where the moving party believed the written description support was located.
`
`Petitioner was not required to preemptively oppose the evidence that P.O. should
`
`have presented earlier but did not. Because P.O.’s original MTA failed to address
`
`the original limitations, there was nothing for Petitioner to oppose when filing its
`
`initial opposition. See Lippert Components, IPR2018-00777, Paper 28 at 51 (“The
`
`Motion to Amend does not address, in any fashion, the limitations of the existing
`
`claims that are carried forward in the proposed claims…. Thus, there was nothing
`
`for Petitioner to oppose in that regard when filing the initial opposition.”).
`
`Furthermore, if P.O.’s RMTA is deemed to be a reply, then this paper would
`
`be a sur-reply, which would prevent Petitioner from presenting new evidence to
`
`explain why P.O.’s alleged written description support is deficient. 84 Fed. Reg.
`
`9497, 9500 (“[N]ew evidence (including declarations) may be submitted with every
`
`paper in the MTA process, except a sur-reply.”); see also Lippert Components,
`
`IPR2018-00777, Paper 28 at 51 (finding that P.O. must present its arguments for
`
`-6-
`
`
`
`
`
`written description support in the original motion, as “[o]nly in this way is a
`
`petitioner accorded a fair opportunity to address [the] issue.”).
`
`III. The RMTA’s Attempted Showing of Written Description Support Is
`Deficient on the Merits
`A. The RMTA does not meet P.O.’s Burden of Production
`Whether it is expunged, treated as a reply (in the event it is not expunged), or
`
`even treated as a proper MTA (which it is not), P.O.’s alleged showing of written
`
`description support fails to meet the P.O.’s burden. Notably, for all but the one
`
`limitation of the substitute claims discussed below, P.O.’s alleged showing of written
`
`description support consists exclusively of string citations, with no further
`
`explanation as to the cited materials supports the claims. Compare RMTA at 8–16
`
`(8 pages of explanation for the new claim element) with RMTA at 5–8, 16–20 (string
`
`citations for all other elements). The mere recitation of string citations, without any
`
`further explanation as to how the cited material supports the claims as a whole, fails
`
`to satisfy the threshold burden that P.O. had to carry. See Intel Corp. v. Alacritech,
`
`Inc., IPR2017-01392, Paper 81 at 64–65 (PTAB Nov. 26, 2018) (“[M]ere string
`
`citations without explanation are insufficient to meet even this lower threshold
`
`burden of production.”); B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827, 2016
`
`U.S. App. LEXIS 20591, *21-22 (Fed. Cir. Nov. 17, 2017) (agreeing with the Board
`
`that string citations without explanation did not meet patent owner’s burden to show
`
`written description support); Greene's Energy Grp., LLC v. Oil States Energy
`
`-7-
`
`
`
`
`
`Services, LLC, No. IPR2014-00216, Paper 53 at 26 (PTAB May 1, 2015) (“A string
`
`citation does not explain how the original disclosure of the application relied upon
`
`reasonably conveys to a person the features intended to be encompassed by the
`
`proposed substitute claims.”); Respironics, Inc. v. Zoll Med. Corp., No. IPR2013-
`
`00322, Paper 46 at 24 (PTAB Sept. 17, 2014) (“Zoll's string citations amount to little
`
`more than an invitation … to peruse the cited evidence and piece together a coherent
`
`argument for them. This we will not do; it is the province of advocacy.”), vacated
`
`on other grounds, 656 Fed. Appx. 531, 532 (Fed. Cir. 2016).
`
`In Lippert Components, Inc. v. Days Corp., IPR2018-00777, Paper 28 (PTAB
`
`Sept. 24, 2019), the Board found that P.O.’s alleged written-description support that
`
`was untimely provided on reply was also “deficient on the merits” because it
`
`consisted of strong citations. Lippert Components, IPR2018-00777, Paper 28 at 52
`
`(“As other Board panels have found, mere string citations to an original application’s
`
`disclosure without explanation are insufficient to meet a patent owner’s burden of
`
`production.”). In particular, the Board declined to search through the string citations
`
`to find written description support:
`
`[I]t is unclear whether the citations for a given claim limitation are to
`be understood as a combination of disclosures that, taken together,
`disclose the corresponding limitation, or whether Patent Owner
`contends each citation within a string is sufficient to disclose the
`corresponding limitation. It is not the Board’s responsibility to search
`
`-8-
`
`
`
`
`
`through the string citations to find sufficient written description support
`for each limitation, and we decline to do so.
`
`Lippert Components, IPR2018-00777, Paper 28 at 52. The string citations in P.O.’s
`
`RMTA are deficient for the same reasons, and the Board should similarly decline to
`
`search through P.O.’s string citations to find sufficient written description support
`
`for each limitation. Accordingly, the RMTA should be denied on the basis that P.O.
`
`did not satisfy its burden of production under 35 U.S.C. § 316(d)(3). Lippert
`
`Components, IPR2018-00777, Paper 28 at 52.
`
`B.
`
`The RMTA makes no effort to show support for most claim
`elements to the ’798 Application
`P.O. attempts to claim the priority date of Provisional Patent Application No.
`
`60/929,798, but again makes no showing of written description for most claim
`
`elements. In Section VI.A.6 of its RMTA, P.O. attempts to find written description
`
`support for the allegedly new limitation in proposed amended claim 44 in U.S.
`
`Provisional Patent Application See RMTA at 9 (“The additional claim element also
`
`finds support in provisional application No. 60/929,798, filed on Jul. 12, 2007.”).
`
`However, P.O. makes no effort to show written description support in the ’798
`
`Application for any other limitations of any Proposed Amended Claim. See RMTA
`
`at VI.A.1–5, VI.A.7–VI.F (citing only to the ’855 Application for every other
`
`limitation of all Proposed Amended Claims).
`
`-9-
`
`
`
`
`
`IV. P.O.’s proposed amended claims are unpatentable for the same reason
`presented in the Petition
`A. Correlation between language in Proposed Amended Claims and
`original claims
`P.O. has proposed a one-for-one replacement of original claims 1-4 and 6-7
`
`with Proposed Amended Claims 44-47 and 49-50, which Petitioner has labeled
`
`with identifiers below:
`
`Proposed Amended Claim 44:
`
`44[pre] A method of constructing a frame structure for data transmission, the
`method comprising:
`44[a]: generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`44[b]: generating a second section following the first section, the second
`section comprising data configured in a second format compatible with a
`second communication
`system using
`symbols, wherein
`the
`first
`communication system's symbols and the second communication system's
`symbols co-exist in one transmission scheme and wherein:
`44[c]: the second format is compatible with the second communication system
`configured to support higher mobility than the first communication system,
`wherein each symbol in the second communication system has a shorter
`symbol period than that in the first communication system; and
`44[d]: wherein the second communication system has pilot symbols that are
`denser than those in the first communication system;
`44[e]: generating at least one non-data section containing information
`describing an aspect of data in at least one of the first section and the second
`section; and
`44[f]: combining the first section, the second section and the at least one
`nondata section to form the frame structure.
`Proposed Amended Claim 45:
`
`-10-
`
`
`
`
`
`
`45: The method of claim [1]44, wherein the non-data section comprises
`mapping information for at least one of the first section and the second section.
`Proposed Amended Claim 46:
`
`46: The method of claim [1]44, wherein the non-data section comprises at
`least one of a preamble, a frame control header 60 (FCH), a burst, and a map
`of at least one of the first section and the second section.
`Proposed Amended Claim 47:
`
`47: The method of claim [3]46, wherein the second section follows the first
`section in at least one of time sequence and frequency spectrum.
`Proposed Amended Claim 49:
`
`49: The method of claim [1]44, wherein each of the first section and the
`second section carries at least one of uplink and downlink data.
`Proposed Amended Claim 50:
`
`50: The method of claim [1]44, wherein the second section carries mapping
`information for data in the second section.
`As can be seen above, the sole proposed change to each of the Proposed
`
`Amended Claims is to add the limitation that “the second system has pilot symbols
`
`that are denser than those in the first communication system” directly to Proposed
`
`Amended claim 44, and by dependence, to the other Proposed Amended Claims.
`
`B.
`
`The parties agree that “a shorter symbol period inherently
`implies that there are more pilot symbols per unit of time.”
`Beginning with its Preliminary Response, and continuing through to its
`
`Revised Motion to Amend, P.O. has continually maintained that the limitation
`
`“wherein the second communication system has pilot symbols that are denser than
`
`-11-
`
`
`
`
`
`those in the first communication system” is a “natural result” of reduced symbol
`
`period in the second communication system. See Prelim. Resp., Paper 8, at 36; Rev.
`
`Mot. at 10. Indeed, in the Revised Motion, P.O. argues that “Petitioner’s expert
`
`admitted that a shorter symbol period inherently implies that there are more pilot
`
`signal symbols per unit time.” Rev. Mot. at 16. Petitioner does not dispute this, and
`
`indeed, Petitioner’s expert has not only “admitted” it, but has expressly declared it.
`
`See Supplemental Declaration of Sumit Roy, Ph.D. (“Supp. Dec.”), Ex. 1039, at ¶ 21
`
`(“[A] second communication system with a shorter symbol period would naturally
`
`have more pilot symbols per unit time.”). Because both parties agree that a system
`
`with a shorter symbol period would naturally have more pilot symbols per unit time,
`
`there is not actually any dispute about whether the Proposed Amended Claims add
`a new limitation.
`C. The proposed amendment does not add any patentably distinct
`limitation
`Although it superficially adds a limitation, the proposed amendment to
`
`original claim 1 in Proposed Amended Claim 44 does not substantively add any
`
`subject matter that is not already present in the original claim. The Proposed
`
`Amended Claims are therefore invalid for the same reason as the original claims.
`
`In its Revised Motion, attempting to find support for the newly added
`
`limitation of each Proposed Amended Claim within U.S. Provisional Patent
`
`Application No. 60/929,798 (“the ’798 Application”), P.O. and its expert again
`
`-12-
`
`
`
`
`
`expressly confirmed that the limitation “wherein the second system has pilot
`
`symbols that are denser than those in the first communication system” is “a natural
`
`result” of reduced symbol period. Rev. Mot. at 9–10 (quoting Ex. 2001 at ¶ 52).
`
`Petitioner’s expert, Dr. Sumit Roy, confirms that based on the construction of
`
`“pilot symbols that are denser than” proposed by both parties to this proceeding (and
`
`adopted by the district court in UNM Rainforest Innovations v. Apple), any prior art
`
`that disclosed the limitation “wherein each symbol in the second communication
`
`system has a shorter symbol period than that in the first communication system”
`
`would equally disclose “wherein the second system has pilot symbols that are denser
`
`than those in the first communication system.” Supp. Dec. at ¶¶ 19–24.
`
`Dr. Roy explains that because the unit time is defined as the symbol period
`
`for the first communication system, the unit time will necessarily be longer than the
`
`symbol period of the second communication system. Id. at ¶ 60. Therefore, the total
`
`number of symbols per unit time will also be larger for the same number of
`
`subcarriers. Id. at ¶¶ 61–63.
`
`Pilot symbols are assigned to a specific proportion of the total number of
`
`symbols in an OFDM frame. More specifically, IEEE 802.16 (WiMAX), which is
`
`expressly referenced in both Talukdar (see, e.g. Talukdar at ¶ 26), and Li (see, e.g.,
`
`Li at ¶ 16) has defined pilot ratios. In WiMAX, pilot ratios can be a fraction of 8/256
`
`-13-
`
`
`
`
`
`(~3.1%), 12/128 (~9.4%), or 60/512, 120/1024, or 240/2048 (each ~11.7%). See
`
`Fundamentals of WiMAX, Ex. 1005 at 29, Table 2.3 (highlighting added):
`
`
`
` In addition, both parties’ experts confirm that the number of pilot symbols is
`
`a fixed percentage of the total number of symbols. Petitioner’s Expert, Dr. Roy,
`
`explained that “[d]uring OFDM data transfers, pilot symbols are inserted in a defined
`
`proportion of sub-carriers.” Supp. Dec. at ¶ 59. P.O.’s witness also confirmed that
`
`the fraction of pilots is a fixed number that would vary from standard to standard but
`
`is typically “several percent.” Vojcic Tr. at 33:4–34:3.
`
`Dr. Roy uses the following figure to illustrate one example, taught by Li,
`
`where the second communication system has a period that is half the period of the
`
`first communication system:
`
`-14-
`
`
`
`
`
`Id.
`
`
`
`In this figure, the first communication system (left half of the figure) has a
`
`symbol period of T and has one pilot symbol inserted per every three subcarriers in
`
`each slot. Id. at 62. As a result, the first communication system in this example has
`
`two pilot symbols per unit time in the exemplary six subcarriers. The second
`
`communication system (right half) has a symbol period of T/2, the same number of
`
`subcarriers, and the same pilot distribution – one per every three subcarriers. Id. As
`
`indicated by the numbered pilot symbols in the figure, the second communication
`
`system has a higher number of pilot symbols per unit time than the first
`
`communication system (four vs. two) due to the shorter symbol period. Id.
`
`In this figure, Dr. Roy uses 33% of the total symbols for pilots (instead of the
`
`3.1%, 9.1%, or 11.7% ratios discussed above for WiMAX) simply for ease of
`
`illustration, but Dr. Roy’s figure accurately depicts the situation: because the
`
`-15-
`
`
`
`
`
`combination of Talukdar and Li discloses more total symbols per unit time for the
`
`same number of subcarriers, it also discloses more pilot symbols per unit time. Supp.
`
`Dec. at ¶ 62. This would remain true whether the pilot ratio is 1/3 (as illustrated) or
`
`one of the WiMAX defined ratios of 8/256, 12/128, or 60/512.
`
`Even though P.O. has expressly argued that a shorter symbol period
`
`“inherently” means more pilot symbols per unit time, P.O. attempts to argue that
`
`Figure 7 of Li demonstrates that Dr. Roy’s illustration is incorrect. Although P.O.
`
`is correct that both frames of Figure 7, which relates to splitting symbols across both
`
`frequency and time, show the same number of total symbols and the same number
`
`of pilot symbols, this is simply because the two frames of figure 7 show different
`
`numbers of subcarriers. Frame 700 of Figure 7 illustrates 12 subcarriers, with 7
`
`pilot symbols in 48 total symbols. On the other hand, Frame 710 of Figure 7
`
`illustrates only 6 subcarriers, again with 7 pilot symbols in 48 total symbols. If
`
`Frame 710 were expanded to show 12 subcarriers (the same number of subcarriers
`
`as Frame 700), there would be 14 pilot symbols in 96 total symbols, resulting in
`
`more pilot symbols per unit time. Nothing in the teachings of Li is limited to halving
`
`the number of subcarriers between the two communication systems. While Figure
`
`7 is the only figure in Li that shows pilot symbols, this does not and cannot change
`
`the fact that the figures in Li clearly disclose using a shorter symbol period for higher
`
`mobility communications (including at least Figures 5, 6, and 7), and the parties
`
`-16-
`
`
`
`
`
`agree that a shorter symbol period inherently means more pilot symbols per unit
`
`time.
`
`Because original claim 1 already included the limitation “wherein each
`
`symbol in the second communication system has a shorter symbol period than that
`
`in the first communication system,” both the above analysis from Dr. Roy and P.O.’s
`
`argument that the new limitation is simply “a natural result of reduced symbol
`
`period” confirms that the new limitation does not add anything to the original claims.
`
`D. The Proposed Amended Claims are unpatentable over Talukdar
`in view of Li (Ground 3)
`As discussed in the Petition, Dr. Roy’s Original Declaration (Ex. 1002),
`
`Petitioner’s Reply, and the Board’s Decision on Institution (Paper 14), the
`
`combination of Talukdar and Li renders obvious Original Claims 1-4 and 6-7.
`
`The limitations 44[pre] through 44[c] are disclosed in the combination of
`
`Talukdar and Li, as described in connection with claim elements 1[pre] through 1[c]
`
`in the Petition and in Dr. Roy’s original declaration (Ex. 1002) (“Roy”). Likewise,
`
`limitations 44[e] and 44[f] are described in connection with claim elements 1[d] and
`
`1[e]. Each of the limitations of the dependent claims is described in connection with
`
`the corresponding original claim.
`
`As discussed above, the newly added element 44[d], “wherein the second
`
`system has pilot symbols that are denser than those in the first communication
`
`system,” is disclosed by any art that discloses the second communication system
`
`-17-
`
`
`
`
`
`having shorter symbol period, based on the construction of “pilot symbols that are
`
`denser than.” The combination of Talukdar and Li discloses that the second
`
`communication system has a shorter symbol period than the first communication
`
`system, as shown below.
`
`Li disclosed
`
`that a higher-mobility subscriber station (a “second
`
`communication system”) experienced a greater degree of interference between
`
`subcarriers than a lower-mobility or fixed subscriber station. “[H]igh mobility, [or]
`
`high speed ... causes ICI [inter-subcarrier interference] for OFDM and OFDMA
`
`systems that may limit their application to mobile channels.” Li at ¶ 34; Roy ¶¶ 130,
`
`73. Li taught that using a shorter symbol duration for a faster-moving station helped
`
`reduce the inter-subcarrier interference experienced by that station. “[A] short
`
`OFDM s
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
