IPR2021-00375, Qualcomm v. UNMRI
`U.S. Patent No. 8,265,096
`Patent Owner UNMRI
`
`Oral Argument Demonstratives
`
`Patent Trial and Appeal Board
`May 12, 2022
`
`Demonstrative Exhibits – Not Evidence
`
`
`U.S. Patent No. 8,265,096
`Patent Owner UNMRI
`
`Oral Argument Demonstratives
`
`Patent Trial and Appeal Board
`May 12, 2022
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`PROPOSED AMENDED CLAIMS
`
`Demonstrative Exhibits – Not Evidence
`
`2
`
`
`
`Proposed Amended Claim Language
`
`AMENDED CLAIM 44 REPLACING ORIGINAL CLAIM 1
`
`•
`
`• Proposed Amended Claim 44 (replacing claim 1): A method of
`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 using symbols;
`generating a second section following the first section, the second
`section comprising data configured in a second format compatible with
`a second communication system using symbols, wherein the first
`communication system's symbols and the second communication
`system's symbols co-exist in one transmission scheme and wherein:
`• the second format is compatible with the second communication
`
`•
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Proposed Amended Claim Language
`
`AMENDED CLAIM 44 REPLACING ORIGINAL CLAIM 1
`
`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
`• wherein the second communication system has pilot symbols that
`are denser than those in the first communication system;
`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.
`
`•
`
`•
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Proposed Amended Claim Language
`
`AMENDED CLAIMS 45-47(2-4), 49(6) AND 50(7).
`Amended Claim 45 / Original Claim 2: 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.
`
`Amended Claim 46 / Original Claim 3: 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.
`
`Amended Claim 47 / Original Claim 4: The method of claim [3]46, wherein the second section
`follows the first section in at least one of time sequence and frequency spectrum.
`
`Amended Claim 49 / Original Claim 6: 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.
`
`Amended Claim 50 / Original Claim 7: The method of claim [1]44, wherein the second section
`carries mapping information for data in the second section.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Patent Owner UNM’s Motion to Amend
`The Proposed Amended Claims Do Not Broaden Claim Scope
`
`• Proposed amended 44 is narrower than the original claim 1 and does not broaden
`claim scope.
`
`• The additional claim element “wherein the second communication system has pilot
`symbols that are denser than those in the first communication system” further narrows
`this claim.
`
`
`
`Patent Owner UNM’s Motion to Amend
`
`The Proposed Amended Claims Do Not Introduce New Matter And Are
`Supported By The Original Specification
`• Support for Patent Owner’s proposed amendment is found in at least the following
`disclosures: EX1010 at 6-7, ¶0028; 9-10, ¶ 0035; 10-11, ¶ 0037.
`• The additional claim element “wherein the second communication system has pilot symbols
`that are denser than those in the first communication system” finds support in the written
`description of the ’096 Patent at 5:17-18 (“denser pilot symbols may achieve better channel
`estimation accuracy”); 5:35-36 (“the placements of the pilot symbols may be denser”); 7:23-
`24; 7:61-8:6; see also EX1010 at 6-7, ¶ 0028; 9-10, ¶ 0035; 10-11, ¶ 0037.
`• This claim element is present in Original Claim 8: “wherein the second communication system
`has pilot symbols that are denser than those in the first communication system.” ’096 Patent
`at 9:18-20.
`• This additional claim element finds support in provisional application No. 60/929,798, filed on
`July 12, 2007. Specifically, the provisional application discloses a second section in a second
`format compatible with 802.16m, which follows the first section compatible with 802.16e in one
`transmission scheme. EX2002 (’096 Provisional) at 3.
`
`
`
`Patent Owner UNM’s Motion to Amend
`
`The Proposed Amended Claims Do Not Introduce New Matter And Are
`Supported By The Original Specification
`• To address the Board’s institution decision (Paper 14), Dr. Vojcic testified that “a
`POSITA, as of July 2007, would have known that TSYM = TGI + TDFT = N/Fs + K/Fs, where TDFT
`is the IDFT/DFT period, TGI is the length of the cyclic prefix (also called guard interval), N is
`the number of carriers.” EX2013 at ¶ 19.
`
`• Dr. Vojcic provides an example to illustrate the application of the well-known formula in the
`modern WiFi standard. EX2013 ¶ ¶28-33. Based on these disclosures and examples, “a
`POSITA, as of at least 1999, would have been able to calculate the symbol period of an
`OFDM system as TSYM = TGI + TDFT = N/Fs + K/Fs = (N+K)/Fs.” Id. at 32.
`
`• Dr. Vojcic provides a logical explanation that “a POSITA would understand that OFDM systems
`are sensitive to frequency errors and Doppler shifts and that intercarrier interference in OFDM
`increased with Doppler shift. Thus, in a system with higher mobility intercarrier spacing should
`be increased, or equivalently, OFDM symbol duration should be decreased.” Id. at ¶ 35.
`
`
`
`Patent Owner UNM’s Motion to Amend
`
`The Proposed Amended Claims Do Not Introduce New Matter And Are
`Supported By The Original Specification
`“[A] POSITA would understand that the symbol duration in a high mobility 802.1m system
`needs to be shorter than in the legacy system 802.1e, e.g., L times, or, equivalently, the inter-
`carrier spacing needs to be larger L times.” EX2013 at ¶ 36.
`
`•
`
`• This is directly responsive to the Board’s question of “whether there is an assumption that N
`and NL and K and KL are the same for the second system and the legacy system” and directly
`relates to slide 3/9 of the provisional application of the ’326 Patent (EX2002 at 3) “where it is
`stated that subcarriers’ bandwidth (i.e., spacing) in a legacy system 16.e is B, while in 16.m
`system it is B*L, i.e., L times larger.” Id. at ¶ 37.
`
`• Petitioner ’s expert also admitted that a shorter symbol period inherently implies that there are
`more pilot signal symbols per unit of time. EX2015 (Roy depo of Dec. 6, 2021) at 74:5-75:1.
`
`
`
`Patent Owner UNM’s Motion to Amend
`
`The Proposed Amended Claims Do Not Introduce New Matter And Are
`Supported By The Original Specification
`• Dr. Roy testified that the construction of “pilot symbols that are denser than” means
`“more pilot symbols per unit time than, wherein a unit time is the symbol period of the
`first communication system.”
`
`• Thus, new proposed amended claim 44 does not introduce new subject matter and
`claims priority to July 12, 2007, the filing date of the Provisional Patent Application
`No. 60/929,798.
`
`
`
`Patent Owner UNM’s Motion to Amend
`
`The Proposed Amended Claims Are Patentable.
`“A patent owner does not bear the burden of persuasion to demonstrate the
`patentability of substitute claims presented in a motion to amend.” Lectrosonics, Inc. v.
`Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019).
`
`“The burden of persuasion ordinarily will lie with the petitioner to show that any
`proposed substitute claims are unpatentable by a preponderance of the evidence.” Id.
`
`•
`
`•
`
`• The additional claim element “wherein the second communication system has pilot
`symbols that are denser than those in the first communication system” is not taught or
`suggested by Talukdar, Li, or Nystrom.
`
`• Petitioners have not met their burden to show that the proposed substitute claims are
`unpatentable by a preponderance of the evidence. (Paper 37 at 13).
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Do Not Broaden Claim Scope
`
`• The proposed amended limitation is unchanged from Patent Owner’s original
`Motion to Amend. Paper 37.
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Do Not Broaden Claim Scope
`
`The Board agreed that “[p]roposed substitute independent claim 44 retains all
`
`claim limitations of its corresponding challenged claim (claim 1), and further includes
`
`narrowing limitations as compared to its corresponding challenged claim” and found
`
`that “Petitioner does not argue otherwise.” Paper 42 at 6.
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Do Not Introduce New Matter
`And Are Supported By The Original Specification
`• The Board has already found: “(i) column 5, lines 17–18 and lines 35–36,
`column 7, lines 23–24, column 7, line 61 to column 8, line 6, and column 9,
`lines 18–20 in the ’096 Patent disclosure and (ii) corresponding portions of the
`Specification, as filed, of
`the ’855 Application,
`.
`.
`. along with adjacent
`disclosures at paragraphs 35–37 and Figures 6A, 6B, 7 of the ’855 Application
`appear to provide adequate written description support for proposed substitute
`claims 44–47, 49, and 50 as a whole.” (Paper 42 at 7.)
`
`• Patent Owner also provides further exemplary identification of
`description relevant to each claim element.
`
`the written
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Do Not Introduce New Matter
`And Are Supported By The Original Specification
`• The proposed amended claims are set forth in Appendix A, and the claim
`elements are numbered. Written description support is given for U.S. Patent
`Application 12/168,855 (EX1010, “’855 Application”), which issued as the ’096
`Patent.
`
`• Patent Owner has added support from the patent specification in response to
`the Preliminary Guidance from the Board. Paper 44 at 5-20.
`
`
`
`The Board’s Preliminary Guidance
`
`The Proposed Contingent Amended Claims Are Patentable
`
`• The Board has already recognized that “it appears that Petitioner (or the record) does
`not show a reasonable likelihood that proposed substitute claims 44–47, 49, and 50
`are unpatentable as obvious over the combination of Talukdar (Ex. 1012) and Li (Ex.
`1016).” Paper 42.
`• Paper 42 at 10 (“For proposed substitute claim 44, Petitioner does not appear to have
`shown a reasonable likelihood that the teachings of Talukdar and Li, alone or in
`combination, render obvious the limitation reciting that ‘the second communication
`system has pilot symbols that are denser than those in the first communication
`system’”).
`“The burden of persuasion ordinarily will lie with the petitioner to show that any
`proposed substitute claims are unpatentable by a preponderance of the evidence.”
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25,
`2019). Petitioner has failed to meet this burden.
`
`•
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Are Patentable
`• Petitioner’s Opposition (Paper 41) blatantly mischaracterizes the record by
`implying that the proposed amended limitation is ‘naturally present’ in the original
`claims which were “invalid over the combination of Talukdar and Li, as described in
`Ground of the Petition. Notably, the Board granted institution on Ground 1.”
`• Petitioner intentionally omits that the Board’s institution decision found only Claim
`1 (the basis for proposed amended claim 44) likely to be obvious.
`• Regarding Claim 8, the Board found that “we are not persuaded that Petitioner
`establishes sufficiently, for the purpose of institution, that Talukdar and Nystrom
`renders obvious the subject matter of claim 8” on the basis of the claim element
`“wherein the second communication system has pilot symbols that are denser
`than those in the first communication system.” Paper 14 at 47.
`• This is the exact proposed amended limitation added in Amended Claim 44.
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Are Patentable
`The additional claim element “wherein the second communication system has
`pilot symbols that are denser than those in the first communication system” is
`not taught by Talukdar, Li, or Nystrom.
`• Petitioner relies solely on Li to teach this limitation and raises two arguments in
`support.
`• Petitioner argues that if the disclosure of U.S. Provisional Patent Application No.
`60/929,798 (“the ’798 Application”) teaches denser pilot symbols (as argued by
`Patent Owner), then so does Li. Paper 41 at 6. This is wrong for several reasons.
`• Li does not rely on the same disclosure as the ’798 Application – the conclusions
`drawn by a POSITA would likely differ from two different disclosures. Li’s
`addresses pilot symbols only in reference to its Fig. 7 which illustrates an
`embodiment of its invention and identifies the pilot symbols. EX1016 at Fig. 7.
`
`
`
`Patent Owner UNM’s Revised Motion to Amend
`
`The Proposed Contingent Amended Claims Are Patentable
`• Petitioner’s and its expert’s supposition that Li teaches more pilot symbols in the same
`time-period is explicitly contradicted by Fig. 7.
`• Petitioner argues that Li’s teaching (illustrated in Fig. 5) regarding shortening the
`symbol period implies that there will be more pilot symbols in a given time period. This
`is contradicted by Li’s Fig. 7 which illustrates that—despite the shortened symbol
`period—the total number of pilot symbols (seven pilot symbols), as well as the number
`of pilot symbols during a time period T (two pilot symbols)—remains the same.
`• Li does not disclose any example “showing that the second communication system
`would have twice the number of pilot symbols per unit time.” Paper 41 at 12. To the
`contrary, Li’s Fig. 5 does not reference pilot symbols at all, and Li’s figure 7, which is
`the only reference to pilot symbols flatly contradicts Petitioner’s statement.
`• Dr. Roy’s testimony should be discounted entirely because he explicitly and blatantly
`misrepresented his work. See Paper 39 (Patent Owner’s Motion to Exclude identifying
`multiple instances where Dr. Roy claimed work product that was not his own).
`
`
`
`Patent Owner UNM’s Revised Motion to Amend—Board’s Preliminary
`Guidance
`The Proposed Contingent Amended Claims Are Patentable
`
`• Dr. Roy’s arguments regarding the effect of Li’s invention on the number of pilot
`symbols using Fig. 5 completely disregard and omit Fig. 7.
`
`• Regarding Petitioner’s “example disclosed by Li where the second communication
`system has a period that is one half that of the first communication system, showing
`that the second communication system would have twice the number of pilot
`symbols per unit time” (Paper 42 at 12), the Board correctly concluded that this “is
`unsupported by the disclosure of Li. No such “example” is disclosed by Li in Figure
`5 or elsewhere.” Id.
`
`
`
`Status of Patent Owner UNMRI’s Revised Motion to Amend
`
`•
`
`•
`
`In its Opposition, Petitioners ask for extraordinary remedies that would be unjust
`and highly prejudicial to Patent Owner and the integrity of these proceedings.
`Petitioners concede that Patent Owner’s Motion is a Reply and that the Opposition
`is a Sur-Reply. Paper 49 at 5.
`
`In a parallel filing, Petitioners recognized that there is uncertainty surrounding the
`interpretation and application of the rules governing the revised motion to amend
`practice. IPR2021-00377, Paper 47 at 12, fn. 1.
`
`• Yet, Petitioners ask that Patent Owner’s Motion be disregarded and expunged.
`Paper 49 at 3-4. Not surprisingly, no decisions, including the ones on which
`Petitioners rely, support such a draconian result.
`
`
`
`Status of Patent Owner UNMRI’s Revised Motion to Amend
`
`• Petitioners then ask that Patent Owner’s written description support provided in
`response to the Board’s Preliminary Guidance be completely disregarded. Id. at 5-
`8. Again, such drastic relief has not been granted, even in the decisions that
`Petitioners cite.
`
`• Petitioners seek to strip Patent Owner of its due process rights by depriving Patent
`Owner the meaningful opportunity to preserve its claims as required by the AIA and
`the Office’s implementing rules. Petitioners’ extreme positions must be rejected.
`
`
`
`Status of Patent Owner UNMRI’s Revised Motion to Amend
`
`• Although the amendments requested in Patent Owner’s Motion are identical to
`those requested in Patent Owner’s original Motion to Amend (Paper 37), Patent
`Owner submitted its Revised Motion to address certain shortcomings identified by
`the Board in its Preliminary Guidance.
`• Patent Owner styled its filing a Revised Motion to Amend out of an abundance of
`caution because the rules regarding the form of a filing after issuance of the Board’s
`preliminary guidance are uncertain. IPR2021-00377, Paper 47 at 12, n.1.
`• Petitioners’ argument for the most extreme remedy—expungement of the paper—is
`improper
`and
`unnecessary
`form-over-substance
`argument
`under
`the
`circumstances. The very decision on which Petitioners rely demonstrates as much.
`See Orthofix Medical Inc. v. Spine Holdings, LLC, IPR2020-01411, Paper 33 at 3
`(PTAB Oct. 27, 2021).
`
`
`
`Status of Patent Owner UNMRI’s Revised Motion to Amend
`
`• Petitioners feign prejudice if Patent Owner’s Motion is accepted. Paper 49 at 3.
`Petitioners were clearly able to fully respond to Patent Owner’s Motion in the
`allotted time.
`
`• Petitioners’ position that it is improper for Patent Owner to restate the same
`amendment from its original Motion to Amend (see Paper 49 at 2-3) is expressly
`belied by the Office rules that it cites but studiously misrepresents.
`
`• Petitioners’ positions are not in accord with construing rules in a manner that will
`secure a just and speedy result. 37 C.F.R. § 42.1.
`
`
`
`Patent Owner Properly Addresses Written Description Support
`
`• Petitioners point to Lectrosonics’ argument that, as a reply, Patent Owner’s Motion
`should not be allowed to address the written description support because it is too
`late to do so in the first instance on reply. Paper 49 at 4-5 (citing Lectrosonics, Inc.
`v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 8 (PTAB Feb. 25, 2019)).
`
`• Petitioners cite Lippert to support the argument that Patent Owner’s more detailed
`identification of written description support
`for
`the original
`(as opposed to
`amended) claim elements is improper. Paper 49 at 5 (citing Lippert Components,
`IPR2018-00777, Paper 28 (PTAB Sept. 24, 2019)).
`
`• This matter is distinguished from Lippert in two important and dispositive ways.
`
`
`
`Patent Owner Properly Addresses Written Description Support
`
`• First, unlike Lippert, the Board here already recognized in the Preliminary Guidance that
`the portions identified by Patent Owner meet
`the written description requirement. “(i)
`column 5, lines 17–18 and lines 35–36, column 7, lines 23–24, column 7, line 61 to column
`8, line 6, and column 9, lines 18–20 in the ’096 Patent disclosure and (ii) corresponding
`portions of the Specification, as filed, of the ’855 Application, . . . along with adjacent
`disclosures at paragraphs 35–37 and Figures 6A, 6B, 7 of the ’855 Application appear to
`provide adequate written description support for proposed substitute claims 44–47, 49,
`and 50 as a whole.” Paper 42 at 7.
`
`• Lippert is inapposite because it found the written description requirement lacking because
`of undue string citations. Lippert Components, IPR2018-00777, Paper 28 at 52.
`
`• Unlike Lippert, Patent Owner identified—separately for each element—pinpoint citations
`along with parenthetical explanations to explain in detail how each claim element
`is
`disclosed. Compare id. with Motion at 5-20.
`
`
`
`Patent Owner Properly Addresses Written Description Support
`
`• Petitioners argue that “if P.O.’s RMTA is deemed to be a reply, then this paper
`would be a sur-reply, which would prevent Petitioners from presenting new
`evidence to explain why P.O.’s alleged written description support is deficient.”
`Paper 49 at 6.
`
`• Petitioners willfully ignore the fact that it did in fact address the written description
`support proffered by Patent Owner. Id. at 7-10.
`
`• In fact, Petitioners expanded its “sur-reply” from 12 to 25 pages to take full
`advantage of the opportunity to do so.
`
`
`
`Patent Owner UNM’s Written Description Support is Proper
`
`• Petitioners argue that “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.” Paper 49 at 7. This is demonstrably false.
`• Each of Patent Owner’s citations indicates specifically which claim element it pertains to,
`and includes a parenthetical explanation of its relevance, as demonstrated by the below
`example: Motion at 6; see also Motion at 5-20 for the remaining claim elements.
`
`
`
`Patent Owner UNM’s Written Description Support is Proper
`
`• Every last one of the allegedly supporting decisions cited by Petitioners is inapposite, as
`they all relate to “string citations without explanation.”
`
`• Unlike every one of these cases, Patent Owner provided parenthetical explanations to every
`last one of its pinpoint citations and has further indicated which specific claim element each
`is relevant to.
`
`• These claim-element specific pinpoint citations with explanatory parentheticals minimizes
`the burden on the Board to verify that the written description properly supports the claim
`elements.
`
`
`
`Patent Owner UNM’s Written Description Support is Proper
`
`• Petitioners argue that Patent Owner does not show support for the original claim
`elements to the provisional ’798 Application. Paper 49 at 9. This is irrelevant.
`
`is contingent upon a finding of
`• Patent Owner’s proposed amendment
`unpatentability of original claim 1. Written description support
`in the ’798
`Application for original claim 1 is provided in detail in Patent Owner’s Response
`(Paper 38) and Sur-Reply (Paper 43).
`
`then Claim 1 will not be found
`the Board finds this showing sufficient,
`• If
`unpatentable (because the primary prior art reference (Talukdar) does not predate
`the ’798 Application), and the Revised Motion to Amend will be rendered moot.
`
`
`
`The Proposed Amended Claims are Patentable
`
`• Petitioners agree that “P.O. is correct that both frames of Figure 7 [in Li], which relates
`to splitting symbols across both frequency and time, show the same number of total
`symbols and the same number of pilot symbols.” Paper 49 at 16.
`• Regardless, Petitioners argue that “this is simply because the two frames of figure 7
`show different numbers of subcarriers.” Id. “If,” Petitioners speculate, “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.” Id. However, this speculation is simply not disclosed in Li.
`• Petitioners did not submit expert testimony from Dr. Roy, nor any portion of Li, indicating
`that a POSITA would have interpreted Li’s Fig. 7 in that manner.
`• There is simply no support to credit Petitioners’ attorney argument that Fig. 7 should be
`interpreted to show more pilot symbols than it actually does.
`
`
`
`Conclusion Regarding the Amended Claims
`
`• The proposed amended claims meet all statutory requirements.
`
`• The Board should allow proposed amended claim 44 and dependent amended
`claims 45-47, 49, and 50, if the corresponding original claims are found
`unpatentable.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`THE ORIGINAL CHALLENGED CLAIMS
`
`Demonstrative Exhibits – Not Evidence
`
`33
`
`
`
`The Original Claims
`
`1. Claim 1
`
`1.
`
`A method of constructing a frame structure for data transmission,
`method comprising:
`a. generating a first section comprising data configured in a first
`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:
`
`the
`
`format
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`1. Claim 1
`
`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.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`2. Claim 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.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`3. Claim 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.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`4. Claim 4
`
`4. The method of claim 3, wherein the second section follows the first section
`in at least one of time sequence and frequency spectrum.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`5. Claim 6
`
`6. The method of claim 1, wherein each of the first section and the second
`section carries at least one of uplink and downlink data.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`6. Claim 7
`
`7. The method of claim 1, wherein the second section carries mapping
`information for data in the second section.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`The Original Claims
`
`7. Claim 8
`the
`8. A method of constructing a frame structure for data transmission,
`method comprising:
`a. generating a first section comprising data configured in a first format compatible with
`a first communication system using symbols;
`the second section
`b. generating a second section following the first section,
`comprising data configured in a second format compatible with a second
`communication system using symbols, wherein the first communication system's
`symbols and the second communication system’s symbols co-exist
`in one
`transmission scheme and wherein the second communication system has pilot
`symbols that are denser than those in the first communication system;
`c. 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
`d. combining the first section, the second section and the at least one non- data
`section to form the frame structure.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`ASSERTED GROUNDS
`
`Demonstrative Exhibits – Not Evidence
`
`42
`
`
`
`Asserted Grounds in the IPR2021-00375 Petition
`
`Claims 1-4 and 6-8 of the ’096 patent were obvious based on the following grounds:
`
`Ground
`
`Basis for Obviousness
`
`Challenged Claims
`
`1
`
`2
`
`Talukdar (Ex. 1012) and Li (Ex. 1016) 1-4, 6-7
`
`Talukdar and Nystrom (Ex. 1017)
`
`8
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`CLAIM CONSTRUCTION
`
`Demonstrative Exhibits – Not Evidence
`
`44
`
`
`
`Patent Owner UNMRI’s Claim Constructions
`
`Claim Construction Order in UNM Rainforest Innovations v. Apple Inc., No. 1-20-
`cv-00351 (W.D. Tex.)
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Patent Owner UNMRI’s Claim Constructions
`
`Claim Construction Order in UNM Rainforest Innovations v. Apple Inc., No. 1-20-
`cv-00351 (W.D. Tex.)
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art
`
`• Talukdar was filed on Aug. 13, 2008, and therefore does not predate the
`challenged ’096 Patent.
`
`• Although Talukdar derives priority from its provisional application No. 60/956,031,
`filed on Aug. 15, 2007, that priority date also does not predate the provisional
`application from which the challenged ‘096 Patent derives priority (provisional
`application No. 60/929,798, filed on Jul. 12, 2007).
`
`• Talukdar is thus not prior art to the challenged claims of the ‘096 Patent.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art
`• Every element of the challenged claims is properly supported by the provisional
`application. See claim charts in the Patent Owner’s Response (Paper 38 at 16-27).
`EX2001, ¶52.
`• Dr. Vojcic provides the following background supporting that “a POSITA as of July
`2007 would have known that TSYM = TGI + TDFT = N/Fs + K/Fs, where TDFT is the
`IDFT/DFT period, TGI is the length of the cyclic prefix (also called guard interval), N
`is the number of carriers.” EX2013 at ¶ 19.
`• OFDM, the origin of this formula, dates back to the 1970s. Id. at ¶ 20. Even as early
`as 1971, a seminal paper disclosed sufficient information to inform a POSITA that
`“the symbol period is the product of the sampling period Δt, and the number of
`samples N, TDFT = N Δt.” Id. at ¶ 22.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art
`• The underlying mathematical proof is shown by Dr. Vojcic: EX2013 at ¶ 21. This is further
`confirmed by another seminal paper in 1985, which “shows that “the signaling interval”, in
`other words the symbol period, is TDFT = N Δt.” Id. at 23.
`
`• The cited paper “also establishes the now well-known result that Δt=1/Fs.” Id. at ¶ 24.
`Further, “the 1985 paper also shows a modulo extension (which present-day systems refer
`to as a cyclic prefix or guard interval). At the bottom of Fig. 8 of Cimini, the length of a block
`is “now N+l long”. In the Cimini system, l is the length of the guard interval, which in our
`notation is K.” Id. at 25.
`
`• Dr. Vojcic further provides an example to illustrate the application of the well-known formula
`in the modern WiFi standard. Id. at ¶¶ 28-33.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art
`• Based on these disclosures and examples, “a POSITA as of at least 1999 would have been
`able to calculate the symbol period of an OFDM system as TSYM = TGI + TDFT = N/Fs + K/Fs
`= (N+K)/Fs.” EX2013 at 32.
`• Dr. Vojcic provides a logical explanation based on the fact that “a POSITA would
`understand that OFDM systems are sensitive to frequency errors and Doppler shifts and
`that intercarrier interference in OFDM increased with Doppler shift. Thus, in a system with
`higher mobility intercarrier spacing should be increased, or equivalently, OFDM symbol
`duration should be decreased.” Id. at ¶ 35.
`• “[A] POSITA would understand that the symbol duration in a high mobility 802.1m system
`needs to be shorter than in the legacy system 802.1e, e.g., L times, or, equivalently, the
`inter-carrier spacing needs to be larger L times.” Id. at ¶ 36.
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art
`• This is responsive to the Board’s question of “whether there is an assumption that N and
`NL and K and KL are the same for the second system and the legacy system” and directly
`relates to slide 3/9 of the provisional application of the ’326 Patent (EX2002 at 3) “where it
`is stated that subcarriers bandwidth (i.e., spacing) in a legacy system 16.e is B, while in
`16.m system it is B*L, i.e., L times larger.” Id. at ¶ 37.
`• Petitioner’s expert admitted that a shorter symbol period inherently implies that there are
`more pilot signal symbols per unit of time: EX2015 (Roy depo of Dec. 6, 2021) at 74:5-75:1.
`• Dr. Roy explicitly confirmed the construction of “pilot symbols that are denser than” as
`“more pilot symbols per unit time than, wherein a unit time is the symbol period of the first
`communication system.”
`
`Demonstrative Exhibits – Not Evidence
`
`
`
`Claims 1-4 and 6-8 Are Not Unpatentable
`
`Talukdar Is Not Prior Art:
`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.
`• Petitioner argues that Patent Owner applied the wrong standard in its analysis. Paper 40 at
`3-4 and 5-6. This is incorrect.
`• As noted by the Board (Paper 14 at 25- 26), the “test for sufficiency [of the written
`description] is whether the disclosure
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