Trials@uspto.gov
`571-272-7822
`
`Paper 68
`Entered: July 15, 2022
`
`
`
`
`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`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 was granted.
`
`
`571-272-7822
`
`Paper 68
`Entered: July 15, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`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 was granted.
`
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`I. INTRODUCTION
`We have authority to hear this inter partes review under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2019). For the reasons that
`follow, Petitioner has established by a preponderance of the evidence that
`claims 1–4, 6, and 7 of U.S. Patent No. 8,265,096 B2 (Ex. 1001, “’096
`Patent”) are unpatentable.
`
`A. Procedural History
`Qualcomm Incorporated (“Qualcomm”) filed a Petition requesting an
`inter partes review of claims 1–4 and 6–8 (“challenged claims”) of the ’096
`Patent. Paper 1 (“Pet.”). Qualcomm concurrently filed a Motion for Joinder
`seeking to join as a petitioner in Intel Corp. v. UNM Rainforest Innovations,
`IPR2020-01576. (Paper 3, “Qualcomm’s Motion for Joinder,” “Mot.
`Joinder”). UNM Rainforest Innovations (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). Pursuant to our
`authorization, Qualcomm filed a Reply to the Preliminary Response
`(Paper 10) to address discretionary denial under 35 U.S.C. § 314(a), to
`which Patent Owner filed a Sur-reply (Paper 12).
`Pursuant to 35 U.S.C. § 314, we instituted trial on July 19, 2021, as to
`all of the challenged claims of the ’096 Patent and dismissed Qualcomm’s
`Motion for Joinder as moot.2 Paper 14 (“Institution Decision” or “Dec.”).
`ZyXEL Communications Corporation (“ZyXEL”) filed a petition for
`inter partes review and a Motion for Joinder in IPR2021-00734, requesting
`
`
`2 Prior to instituting this proceeding, IPR2020-01576 was terminated upon
`granting a joint motion to terminate. Intel Corp. v. UNM Rainforest
`Innovations, IPR2020-01576, Paper 9.
`2
`
`
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
`that ZyXEL be joined as a petitioner in IPR2021-00375. ZyXEL Commc’ns
`Corp. v. UNM Rainforest Innovations, IPR2021-00734, Papers 1, 3. After
`considering the parties’ papers, we instituted trial in IPR2021-00734,
`granted ZyXEL’s Motion for Joinder, and added ZyXEL as a petitioner to
`IPR2021-00375. ZyXEL Commc’ns Corp. v. UNM Rainforest Innovations,
`IPR2021-00734, Paper 17. A copy of that decision was entered in this
`record. Paper 18.
`After institution of trial, Patent Owner filed a Response (Paper 38,
`“PO Resp.”), to which Qualcomm and ZyXEL (collectively “Petitioner”)
`filed a Reply (Paper 40, “Pet. Reply”), to which Patent Owner filed a Sur-
`reply (Paper 43, “PO Sur-reply”).
`Patent Owner also filed a Motion to Amend (Paper 37, “Mot.
`Amend”), to which Petitioner filed an Opposition (Paper 41, “Pet. Opp.
`MTA”). Pursuant to Patent Owner’s request (see Mot. Amend 1), we issued
`Preliminary Guidance (Paper 42, “PG”) on Patent Owner’s Motion to
`Amend. Patent Owner filed a Reply (Paper 64, “PO Reply MTA”) to
`Petitioner’s Opposition, to which Petitioner filed a Sur-reply (Paper 65, “Pet.
`Sur-reply MTA”).
`Petitioner relies on a first Declaration of Sumit Roy, Ph.D. (Ex. 1002)
`to support its Petition. Patent Owner relies on two Declarations of
`Branimir Vojcic, D.Sc. (Exs. 2001, 2013) to support its Response.
`Petitioner relies on a second Declaration of Dr. Roy (Ex. 1039) to support its
`Opposition to the Motion to Amend.
`Dr. Roy and Dr. Vojcic were cross-examined during trial, and
`transcripts of Dr. Roy’s deposition (Ex. 2015) and Dr. Vojcic’s deposition
`(Ex. 1038) are included in the record.
`
`
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`3
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`IPR2021-00375
`Patent 8,265,096 B2
`Patent Owner filed a Motion to Exclude Evidence (Paper 55, “PO
`Mot. Excl.), to which Petitioner filed an Opposition (Paper 57, “Pet. Opp.
`Mot. Excl.”), to which Patent Owner filed a Reply (Paper 61, “PO Reply
`Mot. Excl.”).
`Oral argument was held on May 12, 2022. A transcript of the oral
`argument is included in the record. Paper 66.
`
`B. Real Parties in Interest
`Qualcomm states that Qualcomm Incorporated is the real party in
`interest and further identifies its customers Dell Technologies Inc., Dell Inc.,
`and EMC Corporation as additional real parties in interest. See Pet. 2.
`ZyXEL states that ZyXEL Communications Corporation is a real
`party in interest. ZyXEL Commc’ns Corp. v. UNM Rainforest Innovations,
`IPR2021-00734, Paper 1, 2–3. ZyXEL also identifies ZyXEL
`Communications Inc. as a U.S. subsidiary of ZyXEL Communications
`Corporation, but indicates that ZyXEL Communications Corporation does
`not believe that ZyXEL Communications Inc. qualifies as a real party in
`interest. Id.
`Patent Owner states that the University of New Mexico Board of
`Regents is an additional real party in interest. See Paper 6, 2.
`
`C. Related Matters
`The parties indicate the following matters may affect or be affected by
`a decision in this proceeding: UNM Rainforest Innovations v. Industrial
`Technology Research Institute, No. D-202-CV-2021-02803 (N.M. 2d.
`Judicial District Court May 4, 2021); UNM Rainforest Innovations v.
`ASUSTek Computer, Inc., No. 6:20-cv-00142-ADA (W.D. Tex.); UNM
`
`
`
`4
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`IPR2021-00375
`Patent 8,265,096 B2
`Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA
`(W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp., No. 6:20-cv-
`00143-ADA (W.D. Tex.); UNM Rainforest Innovations v. TP-Link
`Technologies Co., No. 6:19-cv-00428-ADA (W.D. Tex.); and UNM
`Rainforest Innovations v. ZyXEL Communications Corp., No. 6:20-cv-
`00522-ADA (W.D. Tex.). See Pet. 2–3; Paper 6, 2; Paper 11, 1.
`
`D. The ’096 Patent (Ex. 1001)
`The ’096 Patent relates to methods for constructing frame structures
`for orthogonal frequency-division multiple access (OFDMA) systems. See
`Ex. 1001, 1:16–19.
`
`
`
`5
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`IPR2021-00375
`Patent 8,265,096 B2
`Figure 6A of the ’096 Patent is reproduced below:
`
`
`Figure 6A illustrates an OFDMA frame structure supporting high mobility
`and having a scalable bandwidth. See Ex. 1001, 4:1–3, 6:66–7:2. The frame
`structure includes downlink (DL) sub-frame 16-4 and uplink (UL)
`sub-frame 18-4. See id. at 7:5–7. The frame structure includes added
`regions related to zones 3 for high-mobility environments. See id. at 7:2–5.
`In DL sub-frame 16-4, a first added region includes preamble 68, a sub-
`MAP 67–2 and DATA 66-4. See id. at 7:5–7. In UL sub-frame 18-4, a
`6
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`IPR2021-00375
`Patent 8,265,096 B2
`second added region includes DATA 69-3 and 69-6 (zones 3). See id.
`at 7:7–8. DATA 66-4, 69-3, and 69-6 may be allocated for the extended
`OFDMA system under high mobility. See id. at 7:8–10. DL sub-frame 16-4
`is divided according to mapping information in DL-MAP 1, DL-MAP 2, and
`DL-MAP 3, and UL sub-frame 18-4 is divided according to the map
`information in UL-MAPs in DL burst #1 65-1 and/or 65-2. See id.
`at 7:10–14. A portion of the guard band that overlaps data zones 69-1
`and 69-2 in UL sub-frame 18-4 may be used to transmit data in the extended
`system. See id. at 7:14–17. “As compared to the zones in the data region of
`the DL sub-frame 16-4 or the UL sub-frame 18-4 of the old/legacy system or
`the new/extended system, the placements of the pilot symbols may be
`denser, [and] the OFDMA symbol periods may be shorter . . . in zones 3
`of UL sub-frame 18-4 or DL sub-frame 16-4 for the extended system under
`high mobility.” Id. at 7:21–27.
`
`E. Illustrative Claims
`Claims 1 and 8 are independent, and claims 2–4, 6, and 7 depend
`ultimately from claim 1. Claims 1 and 8 are illustrative and reproduced
`below:
`
`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
`
`
`
`7
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`IPR2021-00375
`Patent 8,265,096 B2
`symbols co-exist in one transmission scheme and
`wherein:
`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;
`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.
`
`
`8. 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
`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.
`Ex. 1001, 8:32–54, 9:6–25.
`
`
`
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`
`
`8
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`IPR2021-00375
`Patent 8,265,096 B2
`F. Patentability Challenges and Asserted Prior Art
`Petitioner asserts the following challenges to the patentability of
`claims 1–4 and 6–8:
`Claim(s) Challenged
`1–4, 6, 7
`8
`
`35 U.S.C. §3
`103
`103
`
`Reference(s)/Basis
`Talukdar,4 Li5
`Talukdar, Nystrom6
`
`
`II. PATENT OWNER’S MOTION TO EXCLUDE EXHIBIT 1002
`Before we address patentability of the challenged claims, we first
`address Patent Owner’s Motion to Exclude Dr. Roy’s Declaration (Ex. 1002)
`filed with the Petition and relied upon to support the Petition. Patent Owner
`moves to exclude Dr. Roy’s Declaration on the basis that it violates Federal
`Rules of Evidence (FRE) 702 and 703. See PO Mot. Excl. 1–3, 8.
`Petitioner contends that Patent Owner’s Motion to Exclude Dr. Roy’s
`Declaration should be denied because Patent Owner’s Motion failed to
`identify the objections in the record as required by 37 C.F.R. § 42.64(c) and
`failed to timely file an objection as required by 37 C.F.R. § 42.64(b)(1) in
`order to preserve its objection. See Pet. Opp. Mot. Excl. 1–8. Petitioner
`contends that, pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner was
`required to file any objection to Dr. Roy’s Declaration within ten business
`days of institution of trial. See id. at 2–3. We instituted trial on July 19,
`2021. See Dec. Petitioner contends that Patent Owner has waived its
`objection. See Pet. Opp. Mot. Excl. 1, 3–4.
`
`
`3 Petitioner challenges patentability under pre-AIA 35 U.S.C. § 103. Pet. 23,
`28, 30.
`4 Ex. 1012, US 2009/0067377 A1, published Mar. 12, 2009 (“Talukdar”).
`5 Ex. 1001, US 2007/0155387 A1, published July 5, 2007 (“Li”).
`6 Ex. 1017, US 2007/0104174 A1, published May 10, 2007 (“Nystrom”).
`9
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`IPR2021-00375
`Patent 8,265,096 B2
`Patent Owner asserts that Patent Owner did not become aware of the
`evidentiary problem with Ex. 1002 until Dr. Roy’s deposition on
`December 6, 2021. See PO Reply Mot. Excl. 2. Patent Owner contends that
`it filed objections one day later in its Patent Owner Response filed on
`December 7, 2021. See id. (quoting Paper 287, 34). Patent Owner also
`asserts that it filed objections on December 16, 2021, in Paper 31.8 See id.
`Patent Owner contends that it “filed its Motion to Exclude [] referring to its
`objections to EX1002 raised both in its Patent Owner’s Response [] and
`Objections to Evidence.” Id.
`A motion to exclude evidence must be filed to preserve a prior
`objection to evidence and must identify the objections in the record.
`37 C.F.R. § 42.64(c). An objection to evidence submitted prior to the
`institution of the trial, including evidence submitted with a petition to
`institute inter partes review, must be filed within ten business days of the
`institution of the trial. 37 C.F.R. § 42.64(b)(1). Once a trial is instituted,
`any objection must be filed within five business days of the service of
`evidence to which the objection is directed. Id. The objection must identify
`the grounds for the objection with sufficient particularity to allow for
`correction in the form of supplemental evidence. Id. An objection to
`deposition evidence “must be made during the deposition.”
`37 C.F.R. § 42.64(a).
`
`
`7 Patent Owner quotes Paper 28 which was expunged and replaced with
`Paper 38. See Ex. 3001.
`8 Paper 31 was expunged and replaced with Paper 39.
`10
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`IPR2021-00375
`Patent 8,265,096 B2
`As an initial matter, we do not consider Patent Owner’s arguments
`presented in the Patent Owner Response to be an objection. The pertinent
`portions of the Patent Owner Response are reproduced as follows:
`The technical aspect of the Roy declaration (EX1002) should be
`discounted in their entirety because they do not reflect the work
`of Dr. Roy. Instead, the technical aspects of the Roy
`declaration are a carbon copy of the report of another expert in
`another proceeding. Patent Owner intends to request
`authorization from the Board to file a motion to strike the
`technical aspects of the Roy declaration in their entirety.
`PO Resp. 34. Patent Owner’s arguments fail to comply with the requirement
`to identify the objection with sufficient particularity to allow for correction
`because the arguments do not mention an objection nor contend that
`Dr. Roy’s Declaration is inadmissible. See PO Resp. 34; 37 C.F.R.
`§ 42.64(b)(1).
`Patent Owner initially filed on December 16, 2021, a paper entitled
`“Patent Owner’s Objection to the Expert Report of Dr. Roy (Ex. 1002)”
`(Paper 39) explaining: “[b]ased on the deposition testimony taken on
`Dec. 6, 2021 (EX2015), EX1002 is objectionable and inadmissible as
`incomplete, irrelevant, misleading, improper expert testimony and lacking
`authenticity under F.R.E. 106, 401, 403, 702, and 901.” Paper 39, 1. Patent
`Owner’s Objection complies with the requirement to identify the objection
`with sufficient particularity to allow for correction. See id.; 37 C.F.R.
`§ 42.64(b)(1). Patent Owner’s Objection, however, is untimely. Dr. Roy’s
`Declaration (Ex. 1002) was submitted with the Petition, but Patent Owner’s
`Objection was not filed within 10 business days of the July 19, 2021,
`institution of trial. Patent Owner did not seek leave to file a motion to waive
`the timing requirement of 37 C.F.R. § 42.64(b)(1).
`
`
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`11
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`IPR2021-00375
`Patent 8,265,096 B2
`Patent Owner’s Reply to the Motion to Exclude and Patent Owner’s
`Objection both assert that Dr. Roy’s December 6, 2021, deposition is the
`pertinent measurement date. In particular, Patent Owner
`assert[s] the following objection to evidence proffered by
`Petitioner [] submitted on December 23, 20219, and related
`deposition testimony taken on December 6, 2021. These
`objections are being provided within 10 business days of receipt
`of the evidence to which the objection is related and are thus
`timely pursuant to 37 C.F.R. § 42.64(b)(1).
`Paper 39, 1; see PO Reply Mot. Excl. 2 (“Patent Owner [] did not become
`aware of the evidentiary problem with EX1002 until the deposition of
`Dr. Roy, which . . . did not take place until Dec. 6, 2021.”).
`Patent Owner mischaracterizes the Board’s Rule because
`37 C.F.R. § 42.64(b)(1) does not provide for new objections to evidence
`based on the date of related evidence. Even if 37 C.F.R. § 42.64(b)(1)
`permitted new objections based on the date of related evidence, once a trial
`is instituted, any objection must be filed within five business days. Even
`assuming that the December 6, 2021, deposition date could be a pertinent
`measurement date, Patent Owner’s Objection filed December 16, 2021, was
`not filed within five business days as required by 37 C.F.R. § 42.64(b)(1).
`Again, Patent Owner did not seek leave to file a motion to waive the timing
`requirement of 37 C.F.R. § 42.64(b)(1).
`For the foregoing reasons, Patent Owner does not direct us to timely
`filed objections to Dr. Roy’s Declaration (Ex. 1002). Under these
`circumstances, we will not waive the requirements for timely objection.
`
`
`9 Ex. 1002 was filed on December 28, 2020.
`12
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`IPR2021-00375
`Patent 8,265,096 B2
`Accordingly, we conclude that Patent Owner’s Motion to Exclude should be
`denied on this basis.
`
`In any event, even if Patent Owner’s Objections had been timely filed,
`and thus preserved by Patent Owner’s Motion to Exclude, Patent Owner’s
`arguments presented in the Motion to Exclude are unpersuasive. Patent
`Owner argues that FRE Rules 702 and 703 require that the expert has
`reliably applied the principles and methods to the facts of the case and that
`the expert is not merely a mouthpiece for another non-testifying expert. See
`PO Mot. Excl. 1–2; PO Reply Mot. Excl. 5. According to Patent Owner,
`Rule 703 “does not allow the mere adoption of a hearsay document without
`independent analysis.” PO Mot. Excl. 2. Patent Owner contends that
`Dr. Roy’s Deposition testimony confirmed that Dr. Roy failed to apply the
`principles and methods to the facts of the case and simply adopted wholesale
`the expert opinion of another non-testifying expert, namely, that set forth in
`a declaration of Dr. Robert Akl submitted in support of Intel Corporation’s
`petition in IPR2020-01576, filed as Exhibit 1028 in this proceeding. See id.
`Patent Owner asserts that “[c]ourts routinely require expert witnesses to
`properly support their work and opinions.” Id. at 3. In support of its
`arguments, Patent Owner asserts that the United States Court of Appeals for
`the Second Circuit affirmed a district court’s exclusion of an expert opinion
`where the expert merely reviewed and made minor revisions to an opinion
`provided to him by plaintiff’s counsel. See id. (citing Puppolo v. Welch, 771
`Fed. Appx. 64 (2d Cir., June 20, 2019) (summary order). In support of its
`arguments, Patent Owner also quotes United States v. Tomasian, 784 F.2d
`782, 786 (7th Cir. 1986); Crowley v. Chait, 322 F.Supp.2d 530, 553
`(D.N.J. 2004); 29 Charles Alan Wright & Victor James Gold, Federal
`
`
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`13
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`Patent 8,265,096 B2
`Practice and Procedure § 6273, at 312 (1997). Patent Owner contends that
`“Dr. Roy simply signed off on an expert report provided to him by counsel
`with effectively no substantive changes” and “fail[ed] to cite the original
`expert report in his materials considered list.” Id. at 4; PO Reply Mot.
`Excl. 4 (citing Ex. 1002, 10–12). Patent Owner asserts that there are no
`substantive differences whatsoever between Dr. Roy’s Declaration and
`Dr. Akl’s Declaration, only edits regarding punctuation, enumeration,
`changing “POSITA” to “POSA,” and two or three paraphrasing efforts. See
`PO Mot. Excl. 4–8 (citing PO Mot. Excl. Attachment A 53–55, 57–113).
`Patent Owner contends that Dr. Roy did not perform his own independent
`analysis and is submitting the work product of another expert as his own as
`pretense for submitting the substance of a hearsay document. See id. at 8;
`PO Reply Mot. Excl. 5.
`
`In the Opposition, Petitioner contends that the substance of Dr. Roy’s
`Declaration is largely the same as Dr. Akl’s Declaration because it is
`required by the rules of joinder, and Dr. Roy confirmed that he has read and
`agrees with Dr. Akl’s opinions. See Pet. Opp. Mot. Excl. 1, 8–9. Petitioner
`contends that Patent Owner’s arguments ignores the joinder requirements,
`and that if Dr. Roy’s Declaration had not been substantively identical to
`Dr. Akl’s Declaration, it may have introduced new issues and the basis for
`denying joinder. Id. at 8–9 (quoting Mot. Joinder 6 n.1; citing Celltrion, Inc.
`v. Genentech, Inc., IPR2018-01019, Paper 11 at 14 (PTAB Oct. 30, 2018).
`Petitioner asserts Patent Owner’s claim that Petitioner tried to hide the
`substantive similarity of Dr. Roy’s Declaration to Dr. Akl’s Declaration is
`meritless because the Petition and Qualcomm’s Motion for Joinder
`acknowledged the substantive similarity, and Dr. Roy acknowledged that he
`
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`used Dr. Akl’s Declaration as the basis for his Declaration. See id. at 9
`(quoting Pet. 5 n.1; Ex. 2015, 55:3–4, citing Mot. Joinder). Petitioner argues
`that Patent Owner’s Motion to Exclude ignores that Dr. Roy reviewed Dr.
`Akl’s Declaration in its entirety and agreed with Dr. Akl’s opinions. See id.
`(citing Ex. 201510, 111:18–112:5).
`
`Patent Owner also argues that Dr. Roy’s credibility has been
`diminished by not disclosing or citing Dr. Akl’s Declaration as the basis for
`his Declaration and misrepresenting under oath his own work in drafting the
`Declaration. PO Mot. Excl. 1, 2, 4; PO Reply Mot. Excl. 4 (quoting
`Ex. 2015, 60:2–61:10; citing Ex. 1002, 10–12), 5. Patent Owner contends
`that Dr. Roy testified that: (1) he wrote Section IX, “The Challenged ‘096
`Patent” as well as Section X, Overview of the Prior Art References; (2) he
`performed analysis on Talukdar and Nystrom; (3) his Declaration reflected
`his own analysis of Li, Nystrom, and Talukdar, and claimed he spent >20
`hours on drafting his opinion and iterative revisions; (4) he used the same
`process for the detailed invalidity analysis; and (5) he only took a quick look
`at Dr. Akl’s Declaration and contributed himself to the drafts of the
`Declaration. See Mot. Excl. 4 (quoting Ex. 2015, 60:2–61:10), 5 (quoting
`Ex. 2015, 71:5–72:4), 6 (quoting Ex. 2015, 81:11–82:6), 6–7 (quoting
`Ex. 2015, 107:11–14), 7 (quoting Ex. 2015, 110:14–111:17); see also PO
`Reply Mot. Excl. 4 (arguing Dr. Roy considered Dr. Akl’s Declaration and
`briefly read it before writing his own Declaration, quoting Ex. 2015,
`110:14–111:17).
`
`
`10 Petitioner incorrectly cites Exhibit 2013.
`15
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`
`Petitioner contends that Patent Owner’s arguments go to the weight
`not the admissibility of Dr. Roy’s Declaration. See Pet. Opp. Mot.
`Excl. 10–11. Petitioner contends that Patent Owner’s arguments also do not
`diminish the weight that should be given to Dr. Roy’s Declaration. See id.
`at 11. According to Petitioner, Patent Owner’s “argument that Dr. Roy
`misrepresented his involvement in making edits to his Petition Declaration is
`belied by the fact that Dr. Roy candidly acknowledged that he ‘used the Akl
`report as the basis of his report.’” Id. at 11 (quoting Ex. 2015, 55:3–4).
`
`In the Reply, Patent Owner contends that “Dr. Roy . . . made no
`mention of the Akl Report whatsoever, until specifically asked about it. And
`even then, he only said he considered it and briefly read it before writing his
`own report.” PO Reply Mot. Excl. 4 (citing Ex. 2015, 110:14–111:17).
`Even if Patent Owner’s objections were timely, we would deny Patent
`Owner’s Motion to Exclude because Dr. Roy’s testimony should not be
`excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes
`a special obligation upon a trial judge to ‘ensure that any and all scientific
`testimony . . . is not only relevant, but reliable,’” which is a “basic
`gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147
`(1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)).
`The policy considerations for excluding expert testimony, such as those
`implemented by Daubert’s gatekeeping framework, are less compelling in
`bench proceedings such as inter partes reviews than in jury trials because,
`unlike a lay jury, the Board has significant experience in evaluating expert
`testimony. Accordingly, the danger of prejudice in this proceeding would be
`considerably lower than in a lay jury trial and the wholesale exclusion of a
`witness’s declaration is rarely called for in a proceeding before the Board.
`
`
`
`
`
`16
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`IPR2021-00375
`Patent 8,265,096 B2
`Furthermore, Patent Owner’s arguments challenging the credibility of
`Dr. Roy go to the weight that should be given to Dr. Roy’s Declaration
`testimony, not the admissibility of the Declaration. In our patentability
`analysis that follows, we account for the evidence that Dr. Roy’s Declaration
`is substantially the same as Dr. Akl’s Declaration, the supporting evidence
`cited therein, as well as Dr. Roy’s deposition testimony in determining the
`appropriate weight to give Dr. Roy’s testimony when weighing the record
`evidence.
`
`III. ANALYSIS OF PATENTABILITY CHALLENGES
`A. Claim Construction
`The Board applies the same claim construction standard as applied in
`federal courts in a civil action under 35 U.S.C. § 282(b), which is generally
`referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2020);
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the
`Phillips standard, words of a claim are generally given their ordinary and
`customary meaning. Phillips, 415 F.3d at 1312.
`Petitioner identifies the following claim constructions, entered by the
`court in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351
`(W.D. Tex.) (Ex. 1011),11 as consistent with the positions advanced in the
`Petition:
`Claim Term or Phrase
`“frame structure”
`
`Construction
`“a single structure comprising one or
`more frames, wherein each frame may
`have one or more subframes”
`
`
`11 Patent Owner previously asserted the ’096 Patent in UNM Rainforest
`Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.), which was
`ultimately dismissed. See Pet. 3 n.1.
`17
`
`
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
`“data/ non-data”
`“communication system”
`
`“symbol”
`
`“[p]lain-and-ordinary meaning”
`“[p]lain-and-ordinary meaning, where the
`plain-and-ordinary meaning is ‘a
`combination of hardware and software
`that transmits and receives data according
`to one or more communication
`standards’”
`“[p]lain-and-ordinary meaning, wherein
`the plain-and-ordinary meaning means ‘a
`transmissible unit of information’”
`“[p]lain-and-ordinary meaning[,] where
`“wherein the first
`the plain-and ordinary
`communication system’s
`symbols and the second
`meaning is ‘wherein symbols of the first
`communication system’s
`communication system and symbols of
`symbols co-exist in one
`the second communication system exist
`together in one transmission scheme’”
`transmission scheme”
`“support higher mobility than” “support higher relative velocity
`between a transmitter and a receiver than”
`“the time it takes to transmit one symbol”
`“[...] and/or [...]”
`“more pilot symbols per unit time than,
`wherein a unit time is the symbol period
`of the first communication system”
`See Pet. 22–23 (alterations in original). Patent Owner identifies the same
`claim terms or phrases construed by the court. See PO Resp. 9–10.
`As demonstrated in the analysis below, we need not construe any
`claim term or phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`“symbol period”
`“at least one of […] and […]”
`“pilot symbols that are denser
`than”
`
`
`
`18
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`IPR2021-00375
`Patent 8,265,096 B2
`B. Level of Ordinary Skill in the Art
`Petitioner asserts:
`As of 2007, a person of ordinary skill in the art (“POSA”) in the
`field of the ’096 patent would have had a Bachelor’s degree in
`electrical engineering, computer engineering, or a related field,
`and around two years of experience in the design or
`development of wireless communication systems, or the
`equivalent.
`Pet. 21 (citing Ex. 1002 ¶¶ 49–51). Patent Owner offers a slightly different
`description as follows:
`At the relevant time, a person of ordinary skill in the art in the
`technical field of the ’096 patent would have had at least a
`Master’s Degree in Computer Engineering or Electrical
`Engineering, or equivalent work experience, along with at
`least 1 year of experience related specifically to wireless
`communications, including knowledge of MIMO [(multiple-
`input, multiple-output)] and OFDM [(orthogonal frequency-
`division multiplexing)].
`PO Resp. 8 (citing Ex. 2001 ¶ 17).
`We adopt Patent Owner’s definition of a person of ordinary skill in
`the art because it is consistent with the level of skill reflected by the ’096
`Patent Specification and the asserted prior art, but our conclusions would be
`the same under Petitioner’s definition.
`
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`19
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`IPR2021-00375
`Patent 8,265,096 B2
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) if in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Entitlement of Challenged Claims to Earlier Effective Filing Date
`Petitioner contends that the ’096 Patent is not entitled to the earlier
`effective filing date of Provisional Application No. 60/929,798
`(Ex. 1009, “’798 Provisional Application”), filed on July 12, 2007. See
`Pet. 19. Petitioner asserts that the ’798 Provisional Application does not
`contain any disclosure relating to a second communication system that had a
`shorter symbol period or denser pilot symbols, as recited in claims 1–4
`and 6–8 of the ’096 Patent. See id. (citing Ex. 1009; Ex. 1002 ¶¶ 86–88).
`According to Petitioner, the ’798 Provisional Application “did not contain
`written description support for the challenged claims, and September 17,
`2007, is their earliest possible priority date.” Id.
`Petitioner meets its initial burden of production (see Pet. 19, 23,
`25–27), thereby shifting the burden of production to Patent Owner to show
`entitlement of the challenged claims to the July 12, 2007 filing date. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80
`(Fed. Cir. 2015); Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d
`859, 870–71 (Fed. Cir. 2010). For a claim in a later-filed application to be
`entitled to the filing date of an earlier application, the earlier application
`must provide written description support for the claimed subject matter.
`Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed.
`Cir. 2010). To satisfy the written description requirement, “a prior
`application itself must describe an invention, and do so in sufficient detail
`20
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`IPR2021-00375
`Patent 8,265,096 B2
`that one skilled in the art can clearly conclude that the inventor invented the
`claimed invention as of the filing date sought.” Lockwood v. Am. Airlines,
`Inc., 107 F.3d 1565, 1572 (
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