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 SUR-REPLY IN OPPOSITION TO
`PATENT OWNER’S 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 SUR-REPLY IN OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD SHOULD DENY THE MTA BECAUSE IT FAILS
`TO COMPLY WITH THE APPLICABLE RULES ....................................... 1
`
`A.
`
`B.
`
`The Board Should Deny the MTA Because Attempted Showing
`of Written Description Support in Reply is Too Late ........................... 1
`
`The Pilot Program Does Not Alter The PTAB Rules And
`Precedent That Prohibit New Written Description Theories On
`Reply ...................................................................................................... 4
`
`III. THE REPLY’S ATTEMPTED SHOWING OF WRITTEN
`DESCRIPTION SUPPORT IS ALSO DEFICIENT ON THE
`MERITS ........................................................................................................... 5
`
`A.
`
`The Reply makes no effort to show support for most claim
`elements to the ’798 Application .......................................................... 5
`
`B.
`
`The Reply does not meet P.O.’s Burden of Production ........................ 6
`
`IV. P.O.’S PROPOSED AMENDED CLAIMS ARE UNPATENTABLE
`BECAUSE THE ONLY NEW LIMITATION IS INHERENTLY
`PRESENT IN THE COMBINATION OF TALUKDAR AND LI ................. 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`Correlation between language in Proposed Amended Claims
`and original claims ................................................................................ 9
`
`The parties agree that “a shorter symbol period inherently
`implies that there are more pilot symbols per unit of time.” ................ 9
`
`The proposed amendment does not add any patentably distinct
`limitation ............................................................................................. 10
`
`The Proposed Amended Claims are Unpatentable over Talukdar
`in view of Li ........................................................................................ 16
`
`V.
`
`THE BOARD SHOULD NOT GIVE ANY WEIGHT TO P.O.’S
`UNSUPPORTED AND CONCLUSORY ATTORNEY ARGUMENT
`
`
`
`-i-
`
`
`
`
`
`IN SUPPORT OF THE PATENTABILITY OF THE PROPOSED
`SUBSTITUTE CLAIMS ............................................................................... 23
`
`VI. CONCLUSION .............................................................................................. 25
`
`
`
`-ii-
`
`
`
`
`
`I.
`
`INTRODUCTION
`Patent Owner’s Motion to Amend (Paper 27, hereafter “MTA” or “Motion”)
`
`seeks to replace original claims 1-4 and 6-7 with substitute claims 44-47 and 49-50.
`
`P.O.’s Reply (Paper 64, hereafter “Reply”) does not change any of the reasons why
`
`the MTA should be denied. Accordingly, P.O.’s MTA should be denied for at least
`
`the following reasons.
`
`First, the MTA’s failure to show written description support is fatal, because
`
`it is too late to do so in the first instance on reply. Second, even if it were not too
`
`late in reply, P.O. still did not comply with the precedential Lectronsonics decision,
`
`because even its Reply failed to meet its burden of production to show that all
`
`elements of the proposed amended claim were supported by the ’798 Provisional
`
`Application. Third, the proposed substitute claims are rendered obvious over the
`
`prior art; the Board has already found that the combination of Talukdar and Li
`
`discloses a hybrid frame structure wherein the second communication system has
`
`symbols with a shorter symbol period than the symbols of the first communication
`
`system, and the parties agree that the newly added limitation is inherently disclosed
`
`when the second communication system has such symbols.
`
`II. THE BOARD SHOULD DENY THE MTA BECAUSE IT FAILS TO
`COMPLY WITH THE APPLICABLE RULES
`A. The Board Should Deny the MTA Because Attempted Showing of
`Written Description Support in Reply is Too Late
`
`
`
`-1-
`
`
`
`
`
`In its Reply, 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 retained original claim limitations, in its MTA. Nor
`
`does P.O. dispute that the 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 27 at 3–12 (failing to address, in
`
`any fashion, the original claim limitations of the proposed substitute claims).
`
`Instead, on reply, P.O. purports to provide a showing of written description support
`
`for the original limitations of the proposed substitute claims. Reply, Paper 64, at 5–
`
`20.
`
`This attempt on reply comes too late. As the moving party, P.O. was obligated
`
`to present in its original MTA all of its arguments and evidence showing written
`
`description support for each limitation of the proposed substitute claims.
`
`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
`
`-2-
`
`
`
`
`
`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, Inc. v. Days Corp., IPR2018-00777, Paper 28 (PTAB
`
`Sept. 24, 2019), confirms that a patent owner’s attempted showing of written
`
`description support in 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.
`
`Lastly, while the Board’s Preliminary Guidance notes that written description
`
`support for the proposed substitute claims “appears” to exist (Paper 42 at 6), that
`
`guidance 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
`
`noncompliance on the ground that the Board or counsel for the nonmoving party
`
`should have been able to figure out where the moving party believed the written
`
`description support was located. Because P.O.’s original MTA failed to address the
`
`original limitations, there was nothing for Petitioner to oppose when filing its initial
`
`-3-
`
`
`
`
`
`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.”).
`
`B.
`
`The Pilot Program Does Not Alter The PTAB Rules And
`Precedent That Prohibit New Written Description Theories On
`Reply
`As explained above, the requirement that a patent owner’s showing of written
`
`description support be set forth in its motion to amend, rather than on reply, is based
`
`on controlling rules and precedent—37 C.F.R. §§ 42.23(b) and 42.121, the Trial
`
`Practice Guide, 77 Fed. Reg. at 48,767, and Lectrosonics, as well as supporting
`
`precedent—Lippert Components and Respironics. P.O. has presented no argument
`
`for why the controlling rules and precedent should not be followed. Reply at 5-13.
`
`To be sure, although this authority pre-dates the Pilot Program, nothing in the Pilot
`
`Program alters or suggests an intent to deviate from this well-established precedent
`
`on motion to amend practice by patent owners. In fact, citing Rule 42.121 and
`
`Lectrosonics, the Pilot Program Notice reiterates that “[t]o meet statutory and
`
`regulatory requirements, an MTA must … set forth written description support for
`
`each substitute claim.” 84 Fed. Reg. 9497, 9500.
`
`The Pilot Program does not include any language authorizing or permitting a
`
`patent owner to present on reply “new arguments” following the Board’s preliminary
`
`-4-
`
`
`
`
`
`guidance. See 84 Fed. Reg. 9497. This stands in stark contrast to Pilot Program’s
`
`language authorizing new arguments if, instead of a reply, the patent owner opts to
`
`pursue a revised motion to amend. 84 Fed. Reg. at 9498 (“A revised MTA may
`
`provide new arguments ….”) (emphasis added). By permitting new arguments only
`
`if a patent owner files a revised motion to amend following preliminary guidance,
`
`and not if a patent owner files a reply, the Notice makes clear that new arguments,
`
`including entirely new written description theories necessary to set forth a prima
`
`facie case for written description support, are not permitted on reply.
`
`III. THE REPLY’S ATTEMPTED
`SHOWING OF WRITTEN
`DESCRIPTION SUPPORT IS ALSO DEFICIENT ON THE MERITS
`A. The Reply makes no effort to show support for most claim
`elements to the ’798 Application
`P.O.’s Motion to Amend expressly attempts to claim the priority date of
`
`Provisional Patent Application No. 60/929,798. MTA at 12 (“[P]roposed amended
`
`claim 44 does not introduce new subject matter and claims priority to Jul. 12, 2007,
`
`the filing date of the provisional patent application No. 60/929,798.”); Reply at 18
`
`(same).
`
`Despite claiming priority, P.O. fails to even attempt to show written
`
`description support in the ’798 Provisional for all but one claim limitation. Indeed,
`
`even on reply, the lone limitation P.O. attempts to find written description support
`
`for in the ’798 Provisional is the allegedly new limitation in proposed amended claim
`
`-5-
`
`
`
`
`
`44. See Reply at 9, VI.A.6 (“The additional claim element also finds support in
`
`provisional application No. 60/929,798, filed on Jul. 12, 2007.”). For all other
`
`limitations of the Proposed Amended Claim, P.O. makes no effort to show written
`
`description support in the ’798 Provisional. See Reply 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).
`
`P.O. failure to comply with 37 C.F.R. § 42.121(b)(2), despite claiming priority
`
`to the ’798 Provisional Application for all of the Proposed Amended Claims, is
`
`particularly fatal here, given that both the Board’s pre-motion order and Preliminary
`
`Guidance expressly directed P.O. to the Lectrosonics precedential decision. See
`
`Paper 24 at 2 (“We direct the parties to the Board’s order in Lectrosonics…”); Paper
`
`42 at 6 (“We agree … that Patent Owner has not even attempted to show support in
`
`the original disclosure for any other limitations of the proposed substitute claims.”).
`
`Thus, the Board should deny the Motion for this reason alone.
`
`B.
`The Reply does not meet P.O.’s Burden of Production
`P.O.’s alleged showing of written description support in the Reply fails to
`
`meet the P.O.’s burden for another reason as well. 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 either minimal
`
`parenthetical or no further explanation as to the cited materials supports the claims.
`
`-6-
`
`
`
`
`
`Compare Reply at 8–16 (8 pages of explanation for the new claim element in
`
`proposed amended claim 44) with Reply 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 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).
`
`-7-
`
`
`
`
`
`Again, Lippert Components is instructive. There, the Board found that the
`
`patent owner’s alleged written-description support that it untimely provided on reply
`
`was also “deficient on the merits” because it consisted of string 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
`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 Reply 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 Board
`
`should deny the Motion to Amend 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.
`
`-8-
`
`
`
`
`
`IV. P.O.’S PROPOSED AMENDED CLAIMS ARE UNPATENTABLE
`BECAUSE THE ONLY NEW LIMITATION IS INHERENTLY
`PRESENT IN THE COMBINATION OF TALUKDAR AND LI
`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. 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 Reply
`
`in support of its MTA, P.O. continually has maintained 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 in the
`
`second communication system. See Prelim. Resp., Paper 8, at 36; Reply at 10.
`
`Indeed, in its Reply, P.O. argues “Petitioner’s expert admitted that a shorter symbol
`
`period inherently implies that there are more pilot signal symbols per unit time.”
`
`Reply at 16. Petitioner does not dispute this; in fact, Petitioner’s expert, Dr. Sumit
`
`Roy, expressly declared it. See Supplemental Declaration of Sumit Roy, Ph.D.
`
`(“Supp. Dec.”), Ex. 1039, at ¶ 21 (“[A] second communication system with a shorter
`
`-9-
`
`
`
`
`
`symbol period would naturally have more pilot symbols per unit time.”). Because
`
`the parties agree that in a hybrid frame, a second communication system with a
`
`shorter symbol period would naturally have more pilot symbols per unit time, there
`
`is no actual 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.
`
`P.O.’s Reply takes the inconsistent position of arguing that the new limitation is a
`
`“natural result” of the existing limitation, while also arguing that it is not found in
`
`the combination of Talukdar and Li. Compare Reply at 9-10 (higher pilot density is
`
`“natural result” of shorter symbol period) with Reply at
`
`In P.O.’s Reply, in 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 argued 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.
`
`Reply at 9–10 (quoting Ex. 2001 at ¶ 52).
`
`-10-
`
`
`
`
`
`Petitioner’s expert, Dr. 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 inherently 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 necessarily will be longer than the
`
`symbol period of the second communication system. Id. at ¶ 60. Therefore, the total
`
`number of symbols per unit time also will be larger for the same number of
`
`subcarriers. Id. at ¶¶ 61–63.
`
`In an OFDM system, a specific proportion of the total number of symbols in
`
`the frame are designated as pilot symbols, used for channel estimation. Supp. Dec.
`
`at ¶ 59. More specifically, IEEE 802.16 (WiMAX), which both Talukdar (see, e.g.
`
`Talukdar at ¶ 26), and Li (see, e.g., Li at ¶ 16) expressly reference, has defined pilot
`
`ratios. In WiMAX, pilot ratios can be a fraction of 8/256 (~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):
`
`-11-
`
`
`
`
`
`
`
`In addition, both parties’ experts agree that the number of pilot symbols is a
`
`fixed percentage of the total number of symbols. 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 of a hybrid frame,
`
`where the second communication system has a period that is half the period of the
`
`first communication system (as taught by Li):
`
`-12-
`
`
`
`
`
`Id.
`
`
`
`In this figure, the first communication system in the hybrid frame (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 in the hybrid frame (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
`
`-13-
`
`
`
`
`
`illustration, but Dr. Roy’s figure accurately depicts the teachings of the combination
`
`of Talukdar and Li: a hybrid frame where the second communication system has
`
`more total symbols per unit time for the same number of subcarriers, and therefore
`
`also that the second communication system has more pilot symbols per unit time.
`
`Supp. Dec. at ¶ 62. This would remain true whether the pilot ratio were 1/3 (as
`
`illustrated) or one of the WiMAX defined ratios of 8/256, 12/128, or 60/512.
`
`Even though P.O. has acknowledged 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. This argument misses the mark
`
`because it is premised on a flawed assumption. Indeed, while 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 not
`
`relevant, because Figure 7 does not and cannot teach the hybrid frame taught by
`
`the combination of Talukdar and Li.
`
`Instead, the two separate frames of Figure 7 are not the single hybrid frame of
`
`Talukdar and 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
`
`-14-
`
`
`
`
`
`symbols, resulting in more pilot symbols per unit time. Thus, the combination of
`
`Talukdar and Li, which discloses a hybrid frame with the second communication
`
`system having a shorter symbol period, also discloses the second communication
`
`system having 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. Neither Petitioner nor Dr. Roy relies on
`
`an express teaching of Li regarding increasing the density of pilot symbols. Indeed,
`
`Figure 7 of Li is the only figure that even mentions pilot symbols, and it does not
`
`teach increasing pilot symbol density, because it illustrates a situation where the
`
`symbol period is halved but the number of subcarriers also is halved. While Figure
`
`7 is the only figure in Li that shows pilot symbols, this does not and cannot change
`
`the fact that Li clearly discloses using a shorter symbol period for higher mobility
`
`communications (including at least Figures 5, 6, and 7). Moreover, the parties agree
`
`that a hybrid frame structure where the second symbols have a shorter symbol period
`
`inherently means that the second communication system would also have more pilot
`
`symbols per unit time.
`
`The combination of Talukdar and Li discloses a hybrid frame structure with
`
`a second communication system’s symbols having a shorter symbol period than the
`
`symbols of a first communication system. See Pet. at 33–53; Paper 14 at 44 (“For
`
`all of the foregoing reasons, for the purpose of institution and based on the record
`
`-15-
`
`
`
`
`
`before us, there is a reasonable likelihood Petitioner would prevail in showing claim
`
`1 is unpatentable under 35 U.S.C. § 103 over Talukdar and Li.”). 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
`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. In
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`other words, the combination of Talukdar and Li disclose a hybrid frame structure,
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`in which symbols from a second communication system have a shorter symbol
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`period than symbols from a first communication system.
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`The limitations 44[pre] through 44[c] are disclosed in the combination of
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`Talukdar and Li, as the Petition and Dr. Roy’s original declaration (Ex. 1002)
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`(“Roy”) described in connection with claim elements 1[pre] through 1[c]. Likewise,
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`the Petition and original Roy declaration describe limitations 44[e] and 44[f] in
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`connection with claim elements 1[d] and 1[e]. The Petition likewise describes each
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`of the limitations of the dependent claims in connection with the corresponding
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`original claim.
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`As discussed above, the newly added element 44[d], “wherein the second
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`system has pilot symbols that are denser than those in the first communication
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`system,” is disclosed by any art that discloses the second communication system
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`having shorter symbol period, based on the construction of “pilot symbols that are
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`denser than.” The combination of Talukdar and Li discloses that the second
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`communication system has a shorter symbol period than the first communication
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`system, as shown below.
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`Li disclosed
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`that a higher-mobility subscriber station (a “second
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`communication system”) experienced a greater degree of interference between
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`subcarriers than a lower-mobility or fixed subscriber station. “[H]igh mobility, [or]
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`high speed ... causes ICI [inter-subcarrier interference] for OFDM and OFDMA
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`systems that may limit their application to mobile channels.” Li at ¶ 34; Roy ¶¶ 130,
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`73. Li taught that using a shorter symbol duration for a faster-moving station helped
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`reduce the inter-subcarrier interference experienced by that station. “[A] short
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`OFDM symbol duration and larger subcarrier spacing reduces ICI[.]” Li at ¶ 35; ¶ 10
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`(“The grouping of subscribers according to their speed ... may reduce inter-
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`subcarrier interference (‘ICI’) in OFDM and the corresponding OFDMA systems
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`that support the subscribers.”); Roy ¶¶ 130-31.
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`-17-
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`Specifically, Li disclosed that a node, such as a base station (see Li at ¶ 26),
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`assigned a faster-moving subscriber station OFDM symbols that had a shorter
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`symbol period than the symbols assigned to a slower-moving station:
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`[O]nce subscribers have been designated as either fast or slow ... node
`110 of an embodiment may employ two OFDM symbol durations ...
`one set assigned to the slow and fast subscribers respectively. In an
`embodiment, the communications system 100 and/or node 110 of an
`embodiment assigns shorter symbol duration and larger sub-carrier
`spacing (e.g., OFDM signal 410) to the fast subscribers and longer
`symbol duration and smaller subcarrier spacing (e.g., OFDM signal
`400) to the slow subscribers less prone to ICI.
`Id. at ¶ 37; Roy ¶¶ 130-31. For example, the base station “assign[ed] to a fast
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`subscriber a symbol duration that is half the duration of the slow subscriber symbol
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`duration.” Li at ¶ 38. Figure 5 of Li showed an OFDM signal in which the base
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`station transmitted OFDM symbols having a duration of T “to [a] slow subscriber,”
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`but “shorten[ed] the symbol duration from T to T/2” for “a fast subscriber.” Id. at
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`¶ 38; Roy ¶¶ 131-32. See also Li at Figure 5 (showing OFDM symbols with
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`shortened period “T/2” for faster station 310) (annotations added):
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`-18-
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`Li thus disclosed that “each symbol in the second communication system
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`ha[d] a shorter symbol period than that in the first communication system.” Roy
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`¶¶ 130-133. Because each symbol in the second communication system has a shorter
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`symbol period than in the first communication system, the second communication
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`system would also have more pilot symbols per unit time. Supp. Dec. ¶ 60–62. This
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`conclusion does not depend on any express teaching of Li regarding pilot symbols,
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`but instead is a “natural result” of the combination of Talukdar and Li.
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`Dr. Roy illustrated the example disclosed by Li where the second
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`communication system has a period that is one half that of the first communication
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`system, showing that the second communication system would have twice the
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`number of pilot symbols per unit time:
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`-19-
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`Id. To be clear, this illustration does not depend on any specific teaching from Li
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`related to pilot symbols, but is a “natural result” of the fact that a hybrid frame with
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`a shorter symbol duration in the second communication system would have more
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`total symbols per unit time, and the pilot symbols are a fixed, standard dependent,
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`percentage of the total symbols.
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`A POSA would have understood Li to provide a teaching, suggestion, or
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`motivation to modify Talukdar by using shorter symbol periods for a faster-moving
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`802.16(m) remote unit, because Li disclosed that doing so reduced the inter-
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`subcarrier interference that these units would experience. Roy ¶ 135. Indeed, Li
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`taught that subscriber stations experienced inter-subcarrier interference when
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`traveling at higher speeds and that shortening the symbol period used for faster-
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`moving stations helped reduce this interference. Li at ¶¶ 34–35, 10. Talukdar’s
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`wireless system, in turn, included mobile remote units (Talukdar at ¶ 24) that would
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`-20-
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`have been affected by inter-subcarrier interference in the manner Li described. Roy
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`¶¶ 130, 135-36.
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`A POSA thus would have recognized that shortening the symbol period used
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`for faster-moving remote units in Talukdar’s system would have yielded the
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`predictable, and beneficial, result of reducing inter-subcarrier interference
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`experienced by those remote units, as taught by Li. Id. ¶ 135. Further, a POSA would
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`have had a reasonable expectation of success in making this combination because Li
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`identified an example implementation that a POSA would have been able to execute
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`in the context of Talukdar’s hybrid frame—by using symbols in the section for a
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`mobile 802.16(m) remote unit (the “second communication system configured to
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`support higher mobility”) with a symbol period shorter than (e.g., half as long as)
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`the symbol period for a fixed 802.16(e) unit. Id. ¶¶ 136, 138. Moreover, a POSA
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`would have recognized Talukdar’s teaching that “[i]t is possible to define a new
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`pilot/subchannel/control structure
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`in
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`the 802.16(m) zones,” by modifying
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`“parameters such as ... symbol duration” to further indicate a reasonable expectation
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`of success in making this combination. Talukdar, ¶ 64; Roy ¶ 136.
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`Additionally, a POSA would have been motivated to combine the teachings
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`of Li identified above with Talukdar with a reasonable expectation of success
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`because Talukdar and Li disclosed similar systems. Specifically, both Talukdar and
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`Li described 802.16 systems that used OFDM/OFDMA symbols. E.g., Talukdar,
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`-21-
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`¶¶ 2
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