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`Paper No. 6444
`Filed: May 23April 11, 2022
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-00734, which were
`granted.
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`Ex. 2019 - IPR2021-00375
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MOTION TO AMEND PILOT PROGRAM .................................................. 2
`
`III. A REASONABLE NUMBER OF CLAIMS ARE AMENDED .................... 2
`
`IV. THE PROPOSED AMENDMENT RESPONDS TO A GROUND OF
`UNPATENTABILITY INVOLVED IN THIS TRIAL .................................. 3
`
`V.
`
`THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`BROADEN CLAIM SCOPE ........................................................................... 4
`
`VI. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`INTRODUCE NEW MATTER AND ARE SUPPORTED BY THE
`ORIGINAL SPECIFICATION ....................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
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`Proposed Contingent Amended Claim 44 (replacing claim 1) .................. 5
`
`Proposed Contingent Amended Claim 45 (replacing claim 2) ................ 18
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`Proposed Contingent Amended Claim 46 (replacing claim 3) ................ 18
`
`Proposed Contingent Amended Claim 47 (replacing claim 4) ................ 19
`
`Proposed Contingent Amended Claim 49 (replacing claim 6) ................ 19
`
`Proposed Contingent Amended Claim 50 (replacing claim 7) ................ 20
`
`VII. THE PROPOSED CONTINGENT AMENDED CLAIMS ARE
`PATENTABLE .............................................................................................. 20
`
`VIII. CONCLUSION .............................................................................................. 25
`
`
`
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`TABLE OF AUTHORITIES
`
`Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 3
`
`35 U.S.C. § 103 ......................................................................................................1, 3
`
`Administrative Decisions
`
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 at 4-5 (PTAB Feb. 25, 2019) .......................... 2, 3, 21
`
`Regulations
`
`37 C.F.R § 42.121 ..................................................................................................2, 3
`
`
`
`iii
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`Qualcomm Incorporated v. UNM Rainforest Innovations
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`I.
`
`INTRODUCTION
`
`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
`
`Owner”) respectfully submits this Revised Reply In Support Of Patent Owner’s
`
`Motion to Amend (“MotionReply”) to request amendment of certain claims of U.S.
`
`Patent 8,265,096 B2 (EX1001, “’096 Patent”).
`
`Petitioner asserts that claims 1-4 and 6-8 of the ’096 Patent are unpatentable
`
`on two grounds based solely on 35 U.S.C. § 103:
`
`Ground 1 – Claims 1-4, 6, and 7 are unpatentable as obvious over Talukdar
`
`and Li.
`
`Ground 2 – Claim 8 is unpatentable as obvious over Talukdar and Nystrom.
`
`Patent Owner’s Original Motion to Amend requestsed amendment of
`
`independent claim 1 to provide further limitation and clarification of its claimed
`
`invention and reflect the proper scope of this claim considering the specification.
`
`Paper 37. Petitioner filed its Opposition thereto (Paper 41), and the Board issued its
`
`Preliminary Guidance (Paper 42). This revised Motion addresses certain
`
`shortcomings identified by the Board in its Preliminary Guidance. The amendments
`
`requested in this Motion are identical to those requested in Patent Owner’s original
`
`Motion to Amend (Paper 37). Patent Owner’s revised Motion to Amend is
`
`contingent upon a finding in a final written decision that the challenged claims are
`
`unpatentable. Specifically, Patent Owner requests the following contingencies:
`
`
`
`1
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` if Claim 1 is found unpatentable, substitute Proposed Amended Claim 44, and
`o substitute Proposed Amended Claim 45 for Claim 2,
`o substitute Proposed Amended Claim 46 for Claim 4,
`o substitute Proposed Amended Claim 47 for Claim 5,
`o substitute Proposed Amended Claim 48 for Claim 6, and
`o substitute Proposed Amended Claim 50 for Claim 7.
`II. MOTION TO AMEND PILOT PROGRAM
`
`Pursuant to 84 FR 9497, Patent Owner requested that this Motion to Amend
`
`be subject to the MTA Pilot Program. This IPR was instituted on July 19, 2021, (see
`
`Paper 14), and, therefore, it qualifies for the MTA Pilot Program effective on March
`
`15, 2019. Patent Owner requested preliminary guidance from the Board on this
`
`Motion to Amend and reserved the right to file a revised Motion to Amend subject
`
`to the Board’s preliminary guidance. Patent Owner now submits this Revised Reply
`
`in Support of its Motion considering the Board’s Preliminary Guidance.
`
`III. A REASONABLE NUMBER OF CLAIMS ARE AMENDED
`
`Pursuant to 37 C.F.R. § 42.121(a)(3), a motion to amend may propose a
`
`reasonable number of substitute claims for each challenged claim. Generally, it is
`
`presumed “that only one substitute claim would be needed to replace each
`
`challenged claim,” but that challenge may be rebutted by a showing of need. 37
`
`C.F.R. § 42.121(a)(3); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
`
`at 4-5 (PTAB Feb. 25, 2019). Petitioners challenge independent claims 1 and 8, and
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`dependent claims 2-4, 6, and 7. Patent Owner’s Motion now proposes only one
`
`substitute claim for challenged independent claim 1. Dependent claims 2-4, 6, and
`
`
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`2
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`7 are amended only by virtue of depending from proposed amended independent
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`claim 1. The Board agreed that the proposed number of substitute claims is
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`reasonable and found that “Petitioner does not argue otherwise.” (Paper 42 at 5).
`
`IV. THE PROPOSED AMENDMENT RESPONDS TO A GROUND OF
`UNPATENTABILITY INVOLVED IN THIS TRIAL
`
`A motion to amend is proper where the amendment “respond[s] to a ground
`
`of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Where the
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`proposed amendment is intended to address the grounds for institution, additional
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`modifications may be permissible to address potential § 101 or § 112 issues.
`
`Lectrosonics, IPR2018-01129, Paper 15, 5-6. The Petition here necessarily alleges
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`that every element of each challenged claim is disclosed by a combination of prior
`
`art references under 35 U.S.C. §§ 102 and 103. Based thereon, the Board found in
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`its institution decision that “there is a reasonable likelihood Petitioner would prevail
`
`in showing claim 1 is unpatentable under 35 U.S.C. § 103 over Talukdar and Li”
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`(Paper 14 at 44) and “there is a reasonable likelihood Petitioner would prevail in
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`showing claims 2–4, 6, and 7 are unpatentable under 35 U.S.C. § 103 over Talukdar
`
`and Li.” Id. Adding the proposed substantive limitation to independent claim 1 is,
`
`thus, responsive to these grounds for institution. The Board agreed that “proposed
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`substitute independent claim 44 recites new limitations that directly respond to a
`
`ground of unpatentability involved in the trial” and found that “Petitioner does not
`
`argue otherwise.” (Paper 42 at 5).
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`V. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`BROADEN CLAIM SCOPE
`
`The proposed amended claims are set forth in Appendix A belowto Patent
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`Owner’s Motion to Amend. (Paper 37). Brackets are used to indicate deletions, and
`
`underlining is used to indicate additions. The proposed amended limitation is
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`unchanged from Patent Owner’s original Motion to Amend. (Paper 37).
`
`Proposed amended claim 44 is narrower than the original claim 1 and does
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`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 the claim by requiring that the “second
`
`communication system” has pilot symbols that are denser than those in the first
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`communication system. Therefore, new proposed amended claim 44 is narrower
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`than original claim 1.
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`The Board agreed that “[p]roposed substitute independent claim 44 retains all
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`claim limitations of its corresponding challenged claim (claim 1), and further
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`includes narrowing limitations as compared to its corresponding challenged claim”
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`and found that “Petitioner does not argue otherwise.” (Paper 42 at 6).
`
`VI. THE PROPOSED CONTINGENT AMENDED CLAIMS DO NOT
`INTRODUCE NEW MATTER AND ARE SUPPORTED BY THE
`ORIGINAL SPECIFICATION
`
`The Board has already found that “(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
`4
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`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
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`50 as a whole.” (Paper 42 at 7.) Regardless, Patent Owner here provides further
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`exemplary identification of the written description relevant to each claim element.
`
`The proposed amended claims are set forth in Appendix A belowto Patent
`
`Owner’s Motion to Amend (Paper 37), and the claim elements are numbered. The
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`below identification of written support refers to these labels. Written description
`
`support is given for U.S. Patent Application 12/168,855 (EX1010, “’855
`
`Application”), which issued as the ’096 Patent.
`
`A.
`
`Proposed Contingent Amended Claim 44 (replacing claim 1)
`1. 44.preamble: “A method of constructing a frame structure for
`data transmission, the method comprising:”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
` Para. 7 (“Examples of the present invention may provide a method for
`constructing a frame structure for data transmission, the method consisting …”);
` Paras. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
` Para. 28 and Fig. 4 (same);
` Paras. 32-35 and Fig. 5 (same);
` Paras. 35 and 36, and Figs. 6A and 6B (same);
` Para. 37 and Fig. 7 (same).
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`2. 44.a: “generating a first section comprising data configured in a
`first format compatible with a first communication system using
`symbols”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
` Para. 7 (“…generating a first section comprising data configured in a first format
`compatible with a first communication system”);
` Paras. 26 and 27, and Fig. 3 (“The DL sub-frame 16 may include . . . and a data
`region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”; “the data
`region including the two zones DATA 30-1 (zone 1) and DATA 30-2 (zone 2),
`for the old system and the new system respectively, may be placed according to
`the mapping information of the two zones defined in the DL-MAP 11.”);
` Para. 28 and Fig. 4 (describing a OFDM frame structure with first and second
`sections as claimed);
` Paras. 32-35 and Fig. 5 (same);
` Paras. 35 and 36, and Figs. 6A and 6B (same);
` Para. 37 and Fig. 7 (same).
`3. 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”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
` Para. 5 (“frame 16, it may be desirable to integrate the OFDMA frame structure
`of an old OFDMA system with that of a new OFDMA system by using the DL-
`MAP 12 to define different zones in the DATA 14-1 and DATA 14-2 of the frame
`structure for data of the old OFDMA system and data of the new OFDMA
`system.”);
` Para. 7 (“…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”);
`6
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` Para. 25 (“Examples of the present invention may allow 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.”);
` Paras. 26 and 27, and Fig. 3 (“The DL sub-frame 16 may include . . . and a data
`region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”; “the data
`region including the two zones DATA 30-1 (zone 1) and DATA 30-2 (zone 2),
`for the old system and the new system respectively, may be placed according to
`the mapping information of the two zones defined in the DL-MAP 11.”);
` Para. 28 and Fig. 4 (describing a OFDM frame structure with first and second
`sections as claimed);
` Paras. 32-35 and Fig. 5 (same);
` Paras. 35 and 36, and Figs. 6A and 6B (same);
` Para. 37 and Fig. 7 (same).
`4. 44.c: the second format is compatible with the second
`communication system configured to support higher mobility
`than the first communication system”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
` Para. 25 (“The new OFDMA system may have a larger bandwidth and support
`higher mobility”);
` Para. 28 and Fig. 4 (FIG. 4 is a diagram illustrating an OFDMA frame structure
`supporting high mobility according to an example of the present invention);
` Paras. 35 and 36, and Figs. 6A and 6B (FIG. 6A is a diagram illustrating an
`OFDMA frame structure supporting high mobility and having a scalable
`bandwidth according to an example of the present invention; FIG. 6B is a diagram
`illustrating an OFDMA frame structure supporting high mobility and having a
`scalable bandwidth according to another example of the present invention);
` Para. 37 and Fig. 7 (“FIG. 7 is a diagram illustrating an exemplary placement of
`signals and pilots in time-domain and frequency-domain of an OFDMA system
`supporting high mobility and having a scalable bandwidth.”).
`
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`5. 44.d: wherein each symbol in the second communication system
`has a shorter symbol period than that in the first communication
`system”
`
` Para. 28 and Fig. 4 (“The DATA 40-3 and/or 44-3 (zones 3) may have a shorter
`symbol period or more pilot symbols placed therein than the DATA 40-1, 40-5
`2, 44-1 and 44-2 in order to enhance the performance of channel estimation”; “As
`compared to the zones in the data region of the UL sub-frame 18-2 or the DL sub-
`frame 16-2 of the old/legacy system or the new/extended system, the placements
`of the pilot symbols may be denser, the symbol periods of OFDM symbols may
`be shorter”);
` Para. 35, and Fig. 6A (similar disclosure exemplifying a shorter symbol period);
` Para. 37 and Fig. 7 (“The new OFDMA system supporting high mobility may use
`larger frequency intervals or shorter OFDM symbol period to avoid frequency
`jitter”).
`
`6. 44.e: “wherein the second communication system has pilot
`symbols that are denser than those in the first communication
`system”
`
`As explained below, support for Patent Owner’s proposed amendment is
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`found in at least the following disclosures: EX1010 at Paras. 28; 35; and 37.
`
`The additional claim element “wherein the second communication system has
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`pilot symbols that are denser than those in the first communication system” finds
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`support in the written description of the ’855 Application (EX1010) at Para. 28
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`(“denser pilot symbols may achieve better channel estimation accuracy”) and (“the
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`placements of the pilot symbols may be denser”); Paras. 35 and 37. Indeed, the
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`claim element is present in original claim 8: “wherein the second communication
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`system has pilot symbols that are denser than those in the first communication
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`system.” EX1001, ’096 Patent at 9:18-20.
`
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`The additional claim element also finds support in provisional application No.
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`60/929,798, filed on Jul. 12, 2007. Specifically, the provisional application discloses
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`a second section in a second format compatible with 802.16m, which follows the
`
`first section compatible with 802.16e in one transmission scheme.
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`EX2002 (’096 Provisional) at 3.
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`
`
`
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`EX2002 (’096 Provisional) at 8. The proper construction of “pilot symbols
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`that are denser than” as “more pilot symbols per unit time than, wherein a unit time
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`is the symbol period of the first communication system.” EX1011 (Claim
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`Construction Order in UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-
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`00351 (W.D. Tex.)). Petitioners have accepted this construction. (See Paper 1 at
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`23.) As explained by Dr. Vojcic, the provisional application, thus, discloses this
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`new claim limitation by pointing to increased density (in the temporal dimension) as
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`a natural result of reduced symbol period:
`
`The provisional discloses that the second format compatible with
`802.16m is designed to support higher mobility, i.e., speed at which the
`mobile unit is moving, and uses symbols that are shorter (i.e. the
`bandwidth is larger) than the symbols in 802.16e.
`
`
`EX2002 (’096 Provisional) at 2. Both, “spectrum efficiency” and
`“higher speed” are advantages of the second communication system.
`The former implies higher data speed, which clarifies the meaning of
`“higher speed” as referring to a higher velocity mobile unit.
`
`
`
`EX2002 (’096 Provisional) at 3.
`
`A POSITA would have known at the time of the provisional application
`that by use of the following formulas a “shorter symbol period” can be
`shown for the second system.
`
` N
`
` = number of subcarriers
`K = number of samples in the cyclic prefix
`
`𝑇(cid:3046)(cid:3404)𝑁(cid:3397)𝐾3𝐵
`𝑇(cid:3046)(cid:3013)(cid:3404)𝑁(cid:3013)(cid:3397)𝐾(cid:3013)𝐵
`
`
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`10
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`Where Ts is the symbol period of the second system and TSL is the
`symbol period of the legacy system.
`
`EX2001 at ¶ 52. “Further, the goal of achieving ‘higher speed’ in conjunction with
`
`the proposed dual-system frame structure would suggest modifying density of pilots
`
`in one of the systems as a solution to the problem caused by increased Doppler
`
`shifting due to high speed.” Id.
`
`The Board considered the above in its Institution Decision (Paper 14), and
`
`questioned the written description support for “wherein each symbol in the second
`
`communication system has a shorter symbol period than that in the first
`
`communications system,” recited in challenged claim 1, and “wherein the second
`
`communication system has pilot symbols that are denser than those in the first
`
`communications system,” recited in challenged claim 8. (Paper 14 at 26.)
`
`Specifically, the Board found that “Patent Owner and its declarant Dr. Vojcic do not
`
`provide underlying facts to support the contention that a person of ordinary skill in
`
`the art ‘would have known at the time of the provisional application that by use of
`
`the following formulas a ‘shorter symbol period’ can be shown for the second
`
`system.’” More specifically, Patent Owner does not provide the factual basis for the
`
`formulas:
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`Id. The Board further found that “Patent Owner also does not explain whether there
`
`is an assumption that N and NL and K and KL are the same for the second system
`
`and the legacy system.” (Id.) To address these questions, Patent Owner hereby
`
`supplements the record.
`
`Specifically, 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. Indeed,
`
`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
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`samples N, TDFT = N Δt.” Id. at ¶ 22. The complex underlying mathematical proof
`
`is shown as well:
`
`
`
`Id. 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 ¶¶ 23-24. 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
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`(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
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`system, l is the length of the guard interval, which in our notation is K.” Id. at ¶ 26.
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`“Consequently, a block is now N+K long. Including this extension, the length of a
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`block is TSYM = TGI + TDFT.”
`
`Dr. Vojcic further provides an example to illustrate the application of the well-
`
`known formula in the modern WiFi standard:
`
`28. Another prior art system is the 1999 standard IEEE 802.11a.
`
`See IEEE 802.11a at p. 9.
`
`29. IEEE 802.11 specifies that the number of carriers N is 64, N=64.
`These carriers are shown in the figure below, labeled from 0 to 63.
`
`
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`See IEEE 802.11a-1999 at page 12.
`
`30. A POSITA in 1999 would have known the 1971 and 1985 papers
`and would have been able to understand Table 79 of the standard,
`shown above. According to Table 79 the IFFT/FFT period is 3.2
`µs. Therefore TDFT = 3.2 µs = 64 Δt = 64 /Fs.
`31. The conclusions are that Δt = 50 ns and Fs = 1/ Δt = 20 MHz.
`32. According to Table 79 above, the guard interval is TDFT/4.
`Therefore, the guard interval in samples is K = 64/4 = 16 samples.
`The duration of the guard interval is 800 ns.
`33. A POSITA would have been able to calculate the symbol interval
`as TSYM = TGI + TDFT = 4 µs. Table 79 itself contains an entry
`for the symbol period as 4 µs.
`Id. at ¶¶ 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
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`TSYM = TGI + TDFT = N/Fs + K/Fs = (N+K)/Fs.” Id. at ¶ 32.
`
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`Dr. Vojcic further 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.
`
`36. Specifically, as shown in Figure 5 (shown below) in Ex. 4
`(Armstrong, Grant, and Povey, Polynomial Cancellation Coding Of
`OFDM To Reduce Intercarrier Interference Due To Doppler
`Spread), signal to inter-carrier interference (ICI) ratio rapidly
`decreases, adversely impacting the performance) as the Doppler
`shift increases due to higher mobility. T is equal to 1/carrier
`separation, i.e., 1/Fs, thus, as the Doppler shift fd increases, the
`normalized Doppler shift fdT, for a fixed T, increases and, thus,
`signal to ICI ratio decrease. Thus, to mitigate adverse Doppler
`effects at higher mobility, symbol duration T must be decreased
`which also results in a larger subcarrier frequency spacing Fs, i.e.,
`decrease fdT, making the system more tolerant to Doppler. In some
`very high-speed scenarios, it might also be needed to implement
`very complex ICI cancelation schemes in addition, as in Ex. 4.
`Id. at ¶ 37. It is for this reason that “a POSITA would understand that the symbol
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`duration in a high mobility 802.1m system needs to be shorter than in the legacy
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`system 802.1e, e.g., L times, or, equivalently, the inter-carrier spacing needs to be
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`larger L times.” Id. This is directly responsive to the Board’s question of “whether
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`there is an assumption that N and NL and K and KL are the same for the second
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`system and the legacy system” and directly relates to slide 3/9 of the provisional
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`application of the ’326 Patent (EX2002 at 3) “where it is stated that subcarriers
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`bandwidth (i.e., spacing) in a legacy system 16.e is B, while in 16.m system it is
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`B*L, i.e., L times larger.” Id. at ¶ 37. Dr. Vojcic further explains that
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`Therefore, a POSITA would understand that the number of subcarriers
`N, and therefore the number of samples in the cyclic prefix, K, in both
`systems are the same in the provisional disclosure, taking into account
`the arrangement in the example L=3 in the provisional application at
`3/9. Thus, it also follows that Ts = (N+K)/3B is 3 times shorter than
`TsL = (NL+KL)/B. However, this example in the provisional should not
`be read as limiting, as a POSITA would understand that there are other
`possible arrangements such that Ts is shorter than TsL while the number
`of subcarriers is not necessarily the same.
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`Id. at ¶ 37 (emphasis added).
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`Finally, Petitioner’s expert admitted that a shorter symbol period inherently
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`implies that there are more pilot signal symbols per unit of time:
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`Q. Would a shorter symbol period also imply that you will get more
`pilot signal symbols per unit of time?
`
`A. So depending on how you -- there's a nuance how you framed that
`question, yes, because if we mean by density, you know, the number of
`pilot symbols we are unit time -- so let's say I have two designs in which
`I have a symbol duration T and then I have a symbol duration T by two,
`if I keep the same number of pilots in the T symbol duration compared
`to the T by 2 I would get more pilots per unit time but per symbol
`duration the number of pilots are the same, so.
`
`Q. A POSITA would have understood that at the time of Li?
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`A. The POSITA would have understood that, yes.
`
`EX2012 (Roy depo of Dec. 6, 2021– rough transcript) at 71:22-72:20. Dr. Roy
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`thereby explicitly confirms that the disclosure of the ’326 provisional application
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`implicitly shows denser pilot symbols (based on the construction of “pilot symbols
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`that are denser than” as “more pilot symbols per unit time than, wherein a unit time
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`is the symbol period of the first communication system.”)
`
`7. 44.f: “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”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
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`written description support for this claim element:
`
` Para. 7 (“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”);
` Paras. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
` Para. 28 and Fig. 4 (same);
` Paras. 32-35 and Fig. 5 (same);
` Paras. 35 and 36, and Figs. 6A and 6B (same);
` Para. 37 and Fig. 7 (same).
`8. 44.g: “combining the first section, the second section and the at
`least one non-data section to form the frame structure”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim element:
`
` Para. 7 (“combining the first section, the second section and the at least one non-
`data section to form the frame structure”);
` Paras. 26 and 27, and Fig. 3 (an embodiment illustrating an OFDMA frame
`structure according to an example of the present invention);
` Para. 28 and Fig. 4 (same);
` Paras. 32-35 and Fig. 5 (same);
` Paras. 35 and 36, and Figs. 6A and 6B (same);
` Para. 37 and Fig. 7 (same).
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`Therefore, new proposed amended claim 44 does not introduce new subject
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`matter and claims priority to Jul. 12, 2007, the filing date of the provisional patent
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`application No. 60/929,798.
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`B.
`
`Proposed Contingent Amended Claim 45 (replacing claim 2)
`1. “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.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
` Paras. 10 and 11 (“The method may include allocating data of the first system
`and the second system in first mapping information or second mapping
`information,…”).
` Paras. 27, 28 and Fig. 3 (“the data region including the two zones DATA 30-1
`(zone 1) and DATA 30-2 (zone 2), for the old system and the new system,
`respectively, may be placed according to the mapping information of the two
`zones defined in the DL-MAP 11”);
` Paras. 33-35 and Fig. 6A (an embodiment illustrating the mapping scheme
`according to an example of the invention).
`C.
`
`Proposed Contingent Amended Claim 46 (replacing claim 3)
`1. “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.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
` Para. 5 (“The DL sub-frame 16 may include a preamble 10-1, a frame control
`header (FCH) 11, a downlink map (DL-MAP) 12, a downlink burst (DL burst#l)
`13 and a data region (DATA) 14-1”);
`
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` Paras. 26, 27 and Fig. 3 (“The DL sub-frame 16 may include a preamble 10-1, an
`FCH 11, a DL-MAP 12, a DL burst #1 13 with an UP-MAP (not shown), and a
`data region including DATA 30-1 (zone 1) and DATA 30-2 (zone 2).”);
` Para. 28 and Fig. 4 (exemplary embodiment exemplifying this claim);
` Paras. 30, 33 and Fig. 5 (same);
` Para. 35 and Fig. 6A (same).
`D.
`
`Proposed Contingent Amended Claim 47 (replacing claim 4)
`1. “The method of claim [3]46, wherein the second section follows
`the first section in at least one of time sequence and frequency
`spectrum.”
`
`The ’855 Application as filed (EX1010) provides, for example, the following
`
`written description support for this claim:
`
` Para. 4 (“The UL sub-frame 18 may follow the DL sub-frame 16 in time domain
`with a transmit/receive transmission gap (TTG) 17 from the DL sub-frame 16.”);
` Para. 7 (“generating a second section following the first section comprising data
`configured in a second format compatible with a second communication
`system”);
` Para. 9 (“The method may include generating a first frame comprising a first sub-
`frame for downlink transmission and a second sub-frame for uplink transmission
`in a first ba