PETITIONER’S ORAL ARGUMENT DEMONSTRATIVES
`May 12, 2022
`Jonathan I. Detrixhe, Michael J. Forbes, Peter J. Chassman
`REED SMITH LLP
`
`IPR2021-00375
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`May 12, 2022
`Jonathan I. Detrixhe, Michael J. Forbes, Peter J. Chassman
`REED SMITH LLP
`
`IPR2021-00375
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`
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`Table of Contents
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`Talukdar is Prior Art
`Claims 1-4, 6, and 7 are Invalid over Talukdar and Li
`Claim 8 is Invalid over Talukdar and Nystrom
`P.O.’s Motions to Amend Cannot be Granted
`P.O.’s Proposed Amended Claims are Invalid
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`Page
`3
`7
`10
`18
`26
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`22
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`Talukdar is Prior Art – Decision on Institution
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`Grounds for Institution:
`That the ’096 patent claims are NOT entitled to the priority date of the ’798
`Application because it does not provide §112(a) support for any independent
`claim.
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`33
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`(Paper 14 at 26.)
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`
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`Law - what is adequate§112 written description?
`
`Possession of the full scope of the invention must be shown in the
`four corners of the specification; obviousness is not enough.
`
`Ariad Pharm., Inc. v. Eli Lilly and Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc).
`(Paper 40 at 6.)
`
`Id. at 1351.
`(Paper 40 at 2.)
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`44
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`Talukdar is Prior Art – Claim 1 not disclosed by Provisional
`
`(Ex. 2001 at ¶ 53.)
`
`(Paper 28 at 19, reproducing Ex. 2001 at ¶ 52.)
`
`(Ex. 1038 at 24:10-18.)
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`55
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`Talukdar is Prior Art – Claim 8 not disclosed by Provisional
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`(Ex. 2001 at ¶ 53.)
`
`(Ex. 2001 at ¶ 52.)
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`(Ex. 1038 at 42:6-13.)
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`Claim 1 is invalid over Talukdar and Li
`
`Grounds for Institution:
`There is a reasonable likelihood that Talukdar in view of Li renders obvious
`Challenged Claims 1-4, 6, and 7:
`
`(Paper 14 at 30.)
`
`Patent Owner disputes only Claim 1, and points to no independent reason why
`claims 2-4, 6, or 7 would be valid over Talukdar and Li.
`
`(Paper 28 at 45-46.)
`
`Patent Owner’s Response on these claims is identical to its Preliminary
`Response.
`
`(Compare Paper 28 at 34-46 with Paper 8 at 37-50.)
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`77
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`Claim 1 is invalid over Talukdar and Li
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`The only two disputed elements of Claim 1 are disclosed by the
`Combination of Talukdar and Li
`
`(Paper 28 at 34.)
`
`(Paper 14 at 33-34.)
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`Claim 1 is invalid over Talukdar and Li
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`The only two disputed elements of Claim 1 are disclosed by the
`Combination of Talukdar and Li
`
`(Paper 28 at 42.)
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`99
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`(Paper 14 at 33-34.)
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`Claim 8 is invalid over Talukdar and Nystrom
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`Grounds for Institution:
`On the preliminary record, the Board did not find sufficient reason to combine
`Talukdar and Nystrom.
`
`(Paper 14 at 30.)
`
`(Paper 14 at 49.)
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`As shown in the following slides, the Board’s preliminary determination that the
`above reasoning was insufficient has been overcome in the developed record.
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`1010
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`Claim 8 is invalid over Talukdar and Nystrom
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`(Paper 14 at 30.)
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`1111
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`(Paper 40 at 20.)
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`Claim 8 is invalid over Talukdar and Nystrom
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`(Talukdar, Ex. 1012, at ¶29.)
`
`(Nystrom, Ex. 1017, at ¶3.)
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`(Nystrom, Ex. 1017 at ¶42.)
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`Claim 8 is invalid over Talukdar and Nystrom
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`(Paper 40 at 20.)
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`1313
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`(Roy Dec., Ex. 1002 at ¶160 (annotating Nystrom at Fig. 5A).)
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`Claim 8 is invalid over Talukdar and Nystrom
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`Dr. Vojcic agrees that denser pilot symbols in the time dimension counteract the
`effects of higher Doppler shift experienced by faster moving units.
`
`(Paper 14 at 30.)
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`1414
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`(Paper 40 at 17 (quoting Ex. 2002 at ¶ 93).)
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`Claim 8 is invalid over Talukdar and Nystrom
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`Dr. Vojcic’s annotation of Figure 5A of Nystrom confirms that Nystrom teaches the
`use of denser pilot symbols in the time domain for “High Speed” mobile devices,
`which are assigned to regions 110A and 110D.
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`1515
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`(Ex. 2001 at ¶93; Paper 40 at 17.)
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`Claim 8 is invalid over Talukdar and Nystrom
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`Patent Owner and its expert confirm that a POSITA would know to combine these
`prior art elements to achieve predictable results.
`
`(Paper 40 at 21 (quoting Paper 28 at 27)).
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`1616
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`Claim 8 is invalid over Talukdar and Nystrom
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`Although the Board found on the preliminary record that Petitioner had not
`established a motivation to combine Talukdar and Nystrom, the complete record
`establishes such a motivation for numerous reasons:
`• Petitioner’s Expert Dr. Roy’s opinion at Ex. 1002 ¶¶ 160-162 is supported by
`the factual record including ¶ 29 of Talkudar, and at least ¶¶ 3, 42 and Fig. 5A
`of Nystrom
`
`(Paper 40 at 15-16.)
`• Patent Owner’s expert Dr. Vojcic confirms that a POSITA would understand
`using high pilot density over time for higher velocity stations
`(Paper 40 at 17 (quoting Ex. 2002 at ¶ 93).)
`• Dr. Vojcic confirms that a POSITA would understand to modify the density of
`pilots in one of the systems as a solution to the problem of higher Doppler shift
`caused by higher speeds
`
`(Paper 40 at 21 (quoting Paper 28 at 27).)
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`1717
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`Patent Owner’s Unauthorized RMTA Should Be Expunged
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`The Board did not authorize Patent Owner to file an RMTA directed
`to the same substitute claims:
`
`(Paper 44 at 1.)
`
`(Paper 24 at 2;
`Paper 55 at 2.)
`
`(84 Fed. Reg. at 9498;
`Paper 55 at 2)
`
`(Orthofix Medical v. Spine Holdings,
`IPR2020-01411, Paper 49 at 3;
`Paper 55 at 3.)
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`18
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`Patent Owner’s Unauthorized RMTA Should Be Expunged
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`Because Patent Owner’s RMTA was unauthorized, the Board may
`expunge it:
`
`(Paper 49 at 2.)
`
`(Paper 55 at 2.)
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`19
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`Patent Owner’s Unauthorized RMTA Should Be Expunged
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`Petitioner has been prejudiced as a result of not knowing whether
`P.O.’s RMTA would be treated as a motion or a reply:
`• Petitioner has not received either of the remedies provided in Orthofix
`Medical—advance clarity that a revised MTA was actually a reply, with an
`enlarged 25 pages to respond in sur-reply. (Paper 55 at 3-4.)
`• No advance clarity: Patent Owner does not dispute that the compressed
`schedule in this proceeding prevented Petitioner from obtaining guidance from
`the Board in time to adjust its responsive paper. (Paper 49 at 3; Paper 54 at 3-4; Paper 55 at
`3.)
`• No enlarged pages to respond in sur-reply: Petitioner was forced to allocate its
`25 pages to presenting its opposition arguments or risk waiver, while also
`addressing issues that only arise if the RMTA is treated as a reply. (Paper 55 at 3-4.)
`• Petitioner was forced to guess whether it could submit responsive evidence
`(Paper 47 at 3-4; Paper 55 at 3-4.)
`
`Even if the RMTA is treated as a reply, it was not authorized to
`exceed page limits
`
`(Paper 55 at 2.)
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`20
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`P.O. Failed to Satisfy Its Burden To Show Written Description
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`P.O. now welcomes retroactive classification of its RMTA as a reply
`(Paper 54 at 3)
`But reply is too late to provide the written description support that P.O. was
`obligated to include in its original motion:
`
`(Paper 47 at 5.)
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`21
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`P.O. Failed to Satisfy Its Burden To Show Written Description
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`To the extent P.O.’s RMTA is considered a reply, P.O.’s attempt to
`show written description came “too late”:
`(Paper 49 at 5-8; Paper 55 at 5-9)
`
`(Lippert Components v. Days Corp.,
`IPR2018-00777, Paper 28 at 51-52;
`Paper 49 at 5-8; Paper 55 at 5-9.)
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`22
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`P.O. Failed to Satisfy Its Burden To Show Written Description
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`Even string cites that include quotations are inadequate to show
`written description without adequate explanation:
`
`(Paper 55 at 11.)
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`23
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`P.O. Failed to Satisfy Its Burden To Show Written Description
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`To find that P.O. has not carried its burden to show written
`description support, no finding of inadequate written description is
`necessary:
`
`(Paper 55 at 8.)
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`24
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`P.O. Failed to Satisfy Its Burden To Show Written Description
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`P.O.’s extraordinary position that its failure to comply with 37 C.F.R.
`§42.121 is “irrelevant” is wrong.
`(Paper 55 at 10.)
`
`(Paper 54 at 8.)
`
`(37 C.F.R. § 42.121(b); Paper 55 at 10.)
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`25
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`
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`The Proposed Amended Claims are Invalid over Talukdar and Li
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`The only newly added limitation in any Proposed Amended Claim is
`“wherein the second communication system has pilot symbols that
`are denser than those in the first communication system.”
`(Paper 49 at 11.)
`
`As the Board recognized, Talukdar and Li disclose the limitation that
`the second communication system has a shorter symbol period than
`the first communication system:
`
`(Paper 14 at 42.)
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`26
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`
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`The Proposed Amended Claims are Invalid over Talukdar and Li
`
`Petitioner has argued throughout this proceeding that the limitation
`“wherein the second communication system has pilot symbols that
`are denser than those in the first communication system” is a
`“natural result” of reduced symbol period.
`
`(Paper 49 at 11-12.)
`
`(Paper 49 at 12.)
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`27
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`P.O.’s Motion to Exclude Should Be Denied
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`Dr. Roy’s Petition Declaration is properly admitted:
`• P.O.’s motion fails to identify an objection to Dr. Roy’s
`Petition Declaration in the record. (Paper 56 at 2.)
`• P.O. failed to timely object to Dr. Roy’s Petition Declaration,
`as any objection was due within 10 business days of
`institution (Paper 56 at 2-7.)
`• P.O. failed to timely object even following Dr. Roy’s
`deposition (Paper 56 at 4.)
`• P.O.’s argument ignores that joinder required Dr. Roy’s
`Petition Declaration to be substantively identical to Dr. Akl’s
`(Paper 56 at 8-9.)
`• P.O.’s argument goes to weight, not admissibility (Paper 56 at 10.)
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`28
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