UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 27
`Filed: December 7, 2021
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`
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`PTAB Case No. IPR2021-00375
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`Patent 8,265,096 B2
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`PATENT OWNER’S MOTION TO AMEND
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`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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`
`
`
`
`
`
`
`
`Paper No. 27
`Filed: December 7, 2021
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S 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.
`
`
`
`UPDATED LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Descriptions
`Declaration of Dr. Branimir Vojcic
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`’096 Provisional
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`2018 Economic Impact Report
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`’096 claim chart
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`Dell litigation scheduling order
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`Dell litigation amended scheduling order
`
`Dell litigation notice of withdrawn claims
`
`Asus litigation notice of withdrawn claims
`
`Apple litigation joint motion to dismiss with prejudice
`
`Apple litigation order of dismissal
`
`Asus ROG Phone 3 Home Page
`
`Asus litigation Qualcomm subpoena
`
`Supplemental Declaration of Dr. Branimir Vojcic
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`12/06/21 excerpts from rough draft depo transcript of Sumit Roy,
`
`Ph.D.
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`
`
`
`
`
`
`ii
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`
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MOTION TO AMEND PILOT PROGRAM .................................................. 1
`
`III. A REASONABLE NUMBER OF CLAIMS ARE AMENDED. ................... 2
`
`IV. THE PROPOSED AMENDMENT RESPONDS TO A GROUND OF
`UNPATENTABILITY INVOLVED IN THIS TRIAL .................................. 2
`
`V.
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`PROPOSED AMENDED CLAIMS ................................................................ 3
`
`A.
`
`B.
`
`The Proposed Amended Claims Do Not Broaden Claim Scope. ............... 3
`
`The Proposed Amended Claims Do Not Introduce New Matter And Are
`Supported By The Original Specification. ................................................. 3
`
`C.
`
`The Proposed Amended Claims Are Patentable. ..................................... 12
`
`VI. CONCLUSION .............................................................................................. 13
`
`APPENDIX A .......................................................................................................... 15
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`A. AMENDED CLAIM 44 REPLACING ORIGINAL CLAIM 1 .............. 15
`
`B.
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`AMENDED CLAIMS 2-4, 6 AND 7 ....................................................... 16
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`
`
`iii
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`
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`TABLE OF AUTHORITIES
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`Cases
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`UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-00351 (W.D. Tex) ........... 5
`
`Statutes
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`35 U.S.C. § 102 .......................................................................................................... 2
`
`35 U.S.C. § 103 ......................................................................................................1, 2
`
`Regulations
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`37 C.F.R § 42.121(a)(3) ............................................................................................. 2
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`37 C.F.R. § 42.121(a)(2)(i) ........................................................................................ 2
`
`37 C.F.R. § 42.121(a)(3) ............................................................................................ 2
`
`
`
`iv
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`
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`I.
`
`INTRODUCTION
`
`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
`
`Owner”) respectfully submits this Motion to Amend (“Motion”) 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.
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`Patent Owner requests amendment of independent claim 1 to provide further
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`limitation and clarification of its claimed invention and reflect the proper scope of
`
`this claims considering the specification.
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`II. MOTION TO AMEND PILOT PROGRAM
`
`Pursuant to 84 FR 9497, Patent Owner requests that this Motion to Amend be
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`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
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`15, 2019. Patent Owner requests preliminary guidance from the Board on this
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`Motion to Amend and reserves the right to file a revised Motion to Amend subject
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`to the Board’s preliminary guidance.
`
`
`
`1
`
`
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`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). Petitioner challenges independent claims 1 and 8, and
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`dependent claims 2-4, 6, and 7. Patent Owner now proposes only one substitute
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`claim for challenged independent claim 1. Dependent claims 2-4, 6, and 7 are
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`amended only by virtue of depending from proposed amended independent claim 1.
`
`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
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`in showing claim 1 is unpatentable under 35 U.S.C. § 103 over Talukdar and Li.”
`2
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`
`
`
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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,
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`thus, responsive to these grounds for institution.
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`V.
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`PROPOSED AMENDED CLAIMS
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`The proposed amended claims are set forth in Appendix A below. Brackets
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`are used to indicate deletions, and underlining is used to indicate additions.
`
`A. The Proposed Amended Claims Do Not Broaden Claim Scope.
`
`Proposed amended claim 44 is narrower than the original claim 1 and does
`
`not broaden claim scope. The additional claim element “wherein the second
`
`communication system has pilot symbols that are denser than those in the first
`
`communication system” further narrows the claim by requiring that the “second
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`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.
`
`B.
`
`The Proposed Amended Claims Do Not Introduce New Matter
`And Are Supported By The Original Specification.
`
`As explained below, support for Patent Owner’s proposed amendments is
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`found in at least the following disclosures: EX1010 at 6-7, ¶ 0028; 9-10, ¶ 0035; 10-
`
`11, ¶ 0037.
`
`
`
`3
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`
`
`The additional claim element “wherein the second communication system has
`
`pilot symbols that are denser than those in the first communication system” finds
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`support in the written description of the ’096 Patent at 5:17-18 (“denser pilot
`
`symbols may achieve better channel estimation accuracy”); 5:35-36 (“the
`
`placements of the pilot symbols may be denser”); 7:23-24; 7:61-8:6; see also
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`EX1010 at 6-7, ¶ 0028; 9-10, ¶ 0035; 10-11, ¶ 0037. Indeed, the claim element is
`
`present in original claim 8: “wherein the second communication system has pilot
`
`symbols that are denser than those in the first communication system.” ’096 Patent
`
`at 9:18-20.
`
`The additional claim element also finds support in provisional application No.
`
`60/929,798, filed on Jul. 12, 2007. Specifically, the provisional application discloses
`
`a second section in a second format compatible with 802.16m, which follows the
`
`first section compatible with 802.16e in one transmission scheme.
`
`
`
`
`
`4
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`
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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
`
`Construction Order in UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-
`
`00351 (W.D. Tex). Petitioners have accepted this construction. See Paper 1 at 23.
`
`As explained by Dr. Vojcic, the provisional application, thus, discloses this new
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`claim limitation by pointing to increased density (in the temporal dimension) as a
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`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.
`
`
`
`5
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`
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`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
`
`
`
`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
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`in one of the systems as a solution to the problem caused by increased Doppler
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`shifting due to high speed.” Id.
`
`The Board considered the above in its Institution Decision (Paper 14), and
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`questioned the written description support for “wherein each symbol in the second
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`communication system has a shorter symbol period than that in the first
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`communications system,” recited in challenged claim 1, and “wherein the second
`6
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`
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`
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`communication system has pilot symbols that are denser than those in the first
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`communications system,” recited in challenged claim 8.” Paper 14 at 26.
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`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:
`
`
`
`Id. Further, 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
`
`
`
`7
`
`
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`“the symbol period is the product of the sampling period Δt, and the number of
`
`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
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`“shows that “the signaling interval”, in other words the symbol period, is TDFT = N
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`Δt.” Id. at 23. The cited paper “also establishes the now well-known result that Δt
`
`=1/Fs.” Id. at ¶ 24. Further, “the 1985 paper also shows a modulo extension (which
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`present-day systems refer to as a cyclic prefix or guard interval). At the bottom of
`
`Fig. 8 of Cimini, the length of a block is “now N+l long”. In the Cimini system, l is
`
`the length of the guard interval, which in our notation is K.” Id. at 25.
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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.”
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`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.
`
`
`
`8
`
`
`
`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.
`
`
`
`
`
`See IEEE 802.11a-1999 at page 12.
`
`
`
`9
`
`
`
`30. A POSITA in 1999 would have known the 1971 and 1985 papers
`and would have been4able 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
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`POSITA would understand that OFDM systems are sensitive to frequency errors and
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`Doppler shifts and that Intercarrier interference in OFDM increased with Doppler
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`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,
`10
`
`
`
`
`
`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 ¶ 36. It is for this reason that “a POSITA would understand that the symbol
`
`duration in a high mobility 802.1m system needs to be shorter than in the legacy
`
`system 802.1e, e.g., L times, or, equivalently, the inter-carrier spacing needs to be
`
`larger L times.” Id. at ¶ 36. This is directly responsive to the Board’s question of
`
`“whether there is an assumption that N and NL and K and KL are the same for the
`
`second system and the legacy system” and directly relates to slide 3/9 of the
`
`provisional application of the ’326 Patent (EX2002 at 3) “where it is stated that
`
`subcarriers bandwidth (i.e., spacing) in a legacy system 16.e is B, while in 16.m
`
`system it is B*L, i.e., L times larger.” Id. at ¶ 37. Dr. Vojcic further explains that
`
`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. Id. at ¶¶ 36, 37.
`
`Id. at ¶ 37 (emphasis added).
`
`Finally, Petitioner’s expert admitted that a shorter symbol period inherently
`
`implies that there are more pilot signal symbols per unit of time:
`
`
`
`11
`
`
`
`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?
`
`A. The POSITA would have understood that, yes.
`
`EX2012 (Roy depo of Dec. 6, 2021– rough transcript) at 71:22-72:20. Dr. Roy
`
`thereby explicitly confirms that the disclosure of the ’326 provisional application
`
`implicitly shows denser pilot symbols (based on the construction of “pilot symbols
`
`that are denser than” as “more pilot symbols per unit time than, wherein a unit time
`
`is the symbol period of the first communication system.”)
`
`Therefore, new proposed 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.
`
`C. The Proposed Amended Claims Are Patentable.
`
`“A patent owner does not bear the burden of persuasion to demonstrate the
`
`patentability of substitute claims presented in a motion to amend.” Lectrosonics,
`
`Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019). Rather,
`
`“the burden of persuasion ordinarily will lie with the petitioner to show that any
`
`
`
`12
`
`
`
`proposed substitute claims are unpatentable by a preponderance of the evidence.”
`
`Id.
`
`The additional claim element “wherein the second communication system has
`
`pilot symbols that are denser than those in the first communication system” is not
`
`taught by Talukdar, Li, or Nystrom. Petitioners have not met their burden to show
`
`that the proposed substitute claims are unpatentable by a preponderance of the
`
`evidence.
`
`VI. CONCLUSION
`
`For the reasons set forth herein, Patent Owner asserts that the proposed
`
`amended claims meet all statutory requirements and respectfully requests that the
`
`Board allow proposed amended claim 44 and dependent amended claims 45-47, 49,
`
`and 50.
`
`Dated: December 7, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Jay P. Kesan
`Jay P. Kesan, Reg. No. 37,488
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`ckey@dimuro.com
`Telephone: (703) 289-5118
`
`
`
`
`13
`
`
`
`Alfonso Chan, Reg. No. 45,964
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`achan@shorechan.com
`Telephone: (214) 593-9110
`
`Attorneys for Patent Owner
`UNM RAINFOREST INNOVATIONS
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`that on December 7, 2021, a complete copy of Patent Owner’s Motion to Amend
`was filed electronically through the Patent Trial and Appeal Board’s PTABE2E
`System and provided, via electronic service, to the Petitioner by serving the
`correspondence address of record.
`
`Dated: December 7, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jay P. Kesan
`Jay P. Kesan
`
`
`
`
`
`14
`
`
`
`APPENDIX A
`
`Patent Owner’s proposed amended claims are set forth below. Use of brackets
`
`indicates deleted text (if any) and underlining indicates inserted text. For ease of
`
`reference, the below table indicates the correspondence between original and
`
`amended claims:
`
`Original Claim Amended Claim
`1
`44 (Amended)
`2
`45
`3
`46
`4
`47
`6
`49
`7
`50
`
`The indicated independent claim 44 is amended. Dependent claims 45-47, 49 and
`
`50 are amended only by virtue of being dependent from an amended independent
`
`claim. The remaining original claims are not amended.
`
`A. AMENDED CLAIM 44 REPLACING ORIGINAL CLAIM 1
`
`Proposed Amended Claim 44 (replacing claim 1). A method of
`constructing a frame structure for data transmission, the method
`comprising:
`generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`generating a second section following the first section, the second
`section comprising data configured in a second format
`compatible with a second communication system using symbols,
`wherein the first communication system's symbols and the
`second communication system's symbols co-exist in one
`transmission scheme and wherein:
`the second format is compatible with the second communication
`15
`
`
`
`
`
`system configured to support higher mobility than the first
`communication system,
`wherein each symbol in the second communication system has a
`shorter symbol period than that in the first communication
`system; and
`wherein the second communication system has pilot symbols that
`are denser than those in the first communication system;
`generating at least one non-data section containing information
`describing an aspect of data in at least one of the first section and
`the second section; and
`combining the first section, the second section and the at least one non-
`data section to form the frame structure.
`B. AMENDED CLAIMS 2-4, 6 AND 7
`
`Amended Claim 45 / Original Claim 2. The method of claim [1]44, wherein the
`non-data section comprises mapping information for at least one of the first
`section and the second section.
`
`
`Amended Claim 46 / Original Claim 3. The method of claim [1]44, wherein the
`non-data section comprises at least one of a preamble, a frame control
`header 60 (FCH), a burst, and a map of at least one of the first section and
`the second section.
`
`
`Amended Claim 47 / Original Claim 4. The method of claim [3]46, wherein the
`second section follows the first section in at least one of time sequence and
`frequency spectrum.
`
`
`Amended Claim 49 / Original Claim 6. The method of claim [1]44, wherein each
`of the first section and the second section carries at least one of uplink and
`downlink data.
`
`
`Amended Claim 50 / Original Claim 7. The method of claim [1]44, wherein the
`second section carries mapping information for data in the second section.
`
`
`
`16
`
`
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