UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED and
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`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 No. 8,265,096 B2
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`PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
`CLAIMS 1-4 AND 6-8
`
`
`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.
`
`
`
`1
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`

`

`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`
`RELATED PROCEEDINGS .......................................................................... 2 
`
`I. 
`
`II. 
`
`III.  UNM BACKGROUND ................................................................................... 2 
`
`IV.  THE ’096 PATENT ......................................................................................... 4 
`
`A. 
`
`B. 
`
`Technical Background ................................................................................ 4 
`
`The Challenged Claims .............................................................................. 5 
`
`1.  Claim 1 ................................................................................................. 5 
`
`2.  Claim 2 ................................................................................................. 6 
`
`3.  Claim 3 ................................................................................................. 6 
`
`4.  Claim 4 ................................................................................................. 6 
`
`5.  Claim 6 ................................................................................................. 6 
`
`6.  Claim 7 ................................................................................................. 6 
`
`7.  Claim 8 ................................................................................................. 6 
`
`8.  Prosecution History .............................................................................. 7 
`
`C. 
`
`Priority Date – Based on Provisional Application dated 2007/07/11 ........ 8 
`
`V. 
`
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8 
`
`VI.  PATENT OWNER’S CLAIM CONSTRUCTIONS ...................................... 9 
`
`A. 
`
`Claim Construction Order in UNM Rainforest Innovations v. Apple Inc.,
`No. 1-20-cv-00351 (W.D. Tex.) ................................................................. 9 
`
`VII.  THE ASSERTED PRIOR ART .................................................................... 10 
`
`A. 
`
`Talukdar (EX1012) .................................................................................. 10 
`
`
`
`i
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`

`

`B. 
`
`C. 
`
`Li (EX1016) .............................................................................................. 13 
`
`Nystrom (EX1017) .................................................................................... 14 
`
`VIII.  CLAIMS 1-4 AND 6-8 ARE NOT UNPATENTABLE ............................... 16 
`
`A. 
`
`B. 
`
`C. 
`
`Talukdar Is Not Prior Art ......................................................................... 16 
`
`The Roy Declaration Should Be Accorded No Weight ........................... 34 
`
`Ground 1: Claims 1-4, 6, and 7 are not obvious over Talukdar and Li. .. 34 
`
`1.  Claim 1 ............................................................................................... 34 
`
`2.  Claim 2 ............................................................................................... 45 
`
`3.  Claim 3 ............................................................................................... 45 
`
`4.  Claim 4 ............................................................................................... 45 
`
`5.  Claim 6 ............................................................................................... 46 
`
`6.  Claim 7 ............................................................................................... 46 
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`D.  Ground 2 – Claim 8 is not obvious over Talukdar and Nystrom. ............ 46 
`
`1.  Claim 8 ............................................................................................... 46 
`
`IX.  SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .............. 53 
`
`X. 
`
`CONCLUSION .............................................................................................. 54 
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`
`ii
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`

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`TABLE OF AUTHORITIES
`
`Cases 
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................... 13
`
`UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-00351 (W.D. Tex.) ........ 13
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`iii
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`I.
`
`INTRODUCTION
`
`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
`
`Owner”) respectfully submits this Patent Owner Response to the Petition for Inter
`
`Partes Review dated Dec. 28, 2020 (“Petition”) of U.S. Patent No. 8,265,096
`
`(EX1001, “’096 Patent”) filed by Qualcomm Incorporated (“Qualcomm” or
`
`“Petitioner”). Qualcomm submitted an effectively verbatim copy of Intel’s
`
`IPR2020-01576 (which has already been dismissed), albeit with the signature of a
`
`different expert witness. Intel Corporation v. UNM Rainforest Innovations f/k/a
`
`STC.UNM, Case IPR2020-01576 (Paper 8) (PTAB Feb. 02, 2021) (Termination
`
`Decision). 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.
`
`The Preliminary Response was timely filed based on the Board’s Notice Of
`
`Filing Date Accorded To Petition And Time For Filing Patent Owner Preliminary
`
`Response. Paper 5. The Board instituted the proceeding on July 19, 2021. Paper
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`13. This Patent Owner’s Response is timely pursuant to the Board’s Scheduling
`
`Order and Revised Scheduling Order. Papers 15, 20.
`
`
`
`1
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`

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`II. RELATED PROCEEDINGS
`
`Related Proceedings are listed in Paper 1, at 2-3.
`
`III. UNM BACKGROUND
`
`UNM is the economic development and technology transfer organization of
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`The University of New Mexico, the State of New Mexico’s flagship university.
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`EX2003 (Economic Impact Report). In that role, UNM protects and licenses
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`technology owned by the university, including those developed by university
`
`researchers. It connects the business community to the university and facilitates
`
`the university’s role in the state’s economic development initiatives.2 As a
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`nonprofit corporation formed and owned entirely by the University of New Mexico
`
`Board of Regents, UNM significantly contributes to the mission statement of the
`
`University of New Mexico.
`
`Since 1996, UNM university researchers have disclosed 2,222 new
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`inventions to UNM. UNM, in turn, has filed 1,628 patent applications, received
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`754 issued U.S. patents, executed 733 licensing agreements, and facilitated the
`
`formation of nearly 160 new startup companies to take those inventions to market.3
`
`These startups have created or stimulated the creation of hundreds of New Mexico
`
`jobs and tens of millions of dollars in local economic output.4 UNM also
`
`
`2 See https://innovations.unm.edu/about/.
`3 See https://innovations.unm.edu/unm-rainforest-innovations-celebrates-25-years/.
`4 See https://innovations.unm.edu/about/metrics/.
`2
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`

`

`subsidizes college students from the Navajo Nation by housing them at the UNM
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`Lobo Rainforest Building using licensing proceeds.5
`
`Today, UNM is a core component of New Mexico’s innovation ecosystem
`
`and an economic driver of high-tech industry. Among its 18 peer institutions
`
`nationwide, UNM ranks first in number of licensing agreements, eighth in number
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`of faculty and staff invention disclosures, and second in number of startup
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`companies formed. Since the COVID-19 pandemic began, UNM has initiated new
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`programs to assist New Mexico small businesses and trained over 225 businesses
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`on how to build and scale an e-commerce platform that is tailored to their business.
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`UNM is a highly innovative institution involved in the international
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`scientific and technological community. As part of its international involvement
`
`and to facilitate and support the mission of the University of New Mexico, UNM
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`acquired a patent portfolio including the ‘096 Patent from the Industrial
`
`Technology Research Institute of Taiwan and has offered a license to its patent
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`portfolio relating to wireless technology to Qualcomm, which to date, Qualcomm
`
`has refused to consider.
`
`
`5 See https://housing.unm.edu/living-on-campus/housing-options/navajo-nation-
`student-housing.html.
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`
`
`3
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`

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`IV. THE ’096 PATENT
`A. Technical Background
`
`Dr. Vojcic provides a short explanation of the technical background of the
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`’096 Patent in paragraphs 46-51 of his declaration, which is reproduced in full
`
`here:
`
`46. The invention of the ’096 patent relates to methods for constructing
`frame structures in orthogonal frequency-division multiple access (OFDMA)
`systems. EX1001, 1:16-19. “Orthogonal Frequency Division Multiple
`Access (OFDMA) is a multiple access scheme for transmitting data in
`different subcarriers in a channel, wherein the data may come from different
`users and may be transmitted in disjoint subsets of sub-channels in a
`transmission bandwidth.” Id, 1:22-24.
`47. The ’096 patent first describes the prior art. Id., Figs 1 (illustrating an
`OFDMA frame structure under the IEEE 802.16 standard) and 2 (illustrating
`a placement of guiding signals (or pilot symbols) 24-1 for time-domain and
`frequency -domain OFDMA signals under the IEEE 802.16 standard).
`48.
`“Referring to FIG. 2, upper and lower frequency bands may serve as
`guard bands 22-1 and 22-2, respectively, which may not be used to carry
`information.” Id. 1:61-63. “The placement of information may include a first
`part and a second part. For example, the first part of the placement includes
`a preamble 10'-1 having a fixed length, and the second part of the placement
`includes data and guard intervals between an upper row and a lower row of
`the data interlaced with the pilot symbols 24-1, represented by blocks marked
`with ‘X’.” Id., 1:63-2:2.
`49. Then, ’096 patent illustrates problems faced by the prior art, including
`that: “[i]n some applications such placement of information may be inflexible
`to bandwidth scaling due to the fixed-length preambles 10'-1 and/or 10'-2 and
`the often unusable guard bands 22-1 and 22-2. Moreover, the placement may
`be susceptible to a Doppler effect in a high mobility scenario because the
`placement may be usually designed with a relatively large symbol period,
`which in tum may induce relatively short carrier spacing and less dense pilot
`symbol placement. Moreover, the limitation on pilot symbol placement may
`
`
`
`4
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`

`

`cause channel estimation error at a receiving end because of insufficient
`information provided for channel estimation.” Id., 2:2-14.
`50. The invention of the ’096 patent directly addresses these problems. For
`example, the ’096 patent discloses “a method for 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, generating a second section following the first section
`comprising data configured in a second format compatible with a second
`communication system, wherein the second format is different from the first
`format, 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.” Id., at 2:18-30. The patent
`further details other examples of its invention. Id., 2:31-54, 2:55-67, 3:1-13,
`and 3:14-32.
`51. The invention of the ’096 patent enables “data of an old orthogonal
`frequency-division multiple access (OFDMA) system (hereinafter a legacy
`system) and data of a new OFDMA system to co-exist in an OFDMA frame
`by changing a frame structure of the OFDMA frame.” Id., 4:21-25. The new
`system has the advantages of allowing larger bandwidth, higher mobility, and
`may use updated transmission technology while maintaining backward
`compatibility. Id., 4:26-30.
`B.
`The Challenged Claims
`1.
`
`Claim 1
`
`1. A method of constructing a frame structure for data transmission, the
`method comprising:
`a. generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`b. generating a second section following the first section, the second section
`comprising data configured in a second format compatible with a second
`communication system using symbols, wherein the first communication system's
`symbols and the second communication system's symbols co-exist in one
`transmission scheme and wherein:
`
`
`
`5
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`

`

`c. 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;
`d. 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
`e. combining the first section, the second section and the at least one non-
`data section to form the frame structure.
`2.
`Claim 2
`
`2. The method of claim 1, wherein the non-data section comprises mapping
`information for at least one of the first section and the second section.
`3.
`Claim 3
`
`3. The method of claim 1, 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.
`4.
`Claim 4
`
`4. The method of claim 3, wherein the second section follows the first
`section in at least one of time sequence and frequency spectrum.
`5.
`Claim 6
`
`6. The method of claim 1, wherein each of the first section and the second
`section carries at least one of uplink and downlink data.
`6.
`Claim 7
`
`7. The method of claim 1, wherein the second section carries mapping
`information for data in the second section.
`7.
`Claim 8
`
`8. A method of constructing a frame structure for data transmission, the
`method comprising:
`
`
`
`6
`
`

`

`a. generating a first section comprising data configured in a first format
`compatible with a first communication system using symbols;
`b. generating a second section following the first section, the second section
`comprising data configured in a second format compatible with a second
`communication system using symbols, wherein the first communication system's
`symbols and the second communication system’s symbols co-exist in one
`transmission scheme and wherein the second communication system has pilot
`symbols that are denser than those in the first communication system;
`c. 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
`d. combining the first section, the second section and the at least one non-
`data section to form the frame structure.
`8.
`Prosecution History
`
`The application that resulted in the ‘096 Patent was filed on July 7, 2008.
`
`EX1001. An office action issued on Apr. 13, 2010 included a preliminary
`
`rejection of claims 1-50. EX1004, at 38-40. Patent Owner responded on Apr. 17,
`
`2010 and amended its claims. A final rejection issued on Aug. 31, 2010. Patent
`
`Owner responded on Nov. 30, 2010 and noted that “the claimed invention is
`
`patentably distinct from Ahmadi, Terabe, Seki, and Adams, but nonetheless
`
`amended claim 23 and added new claim 51. Another office action issued on Nov.
`
`23, 2011 which allowed claims 23-29 and 51 and rejected the remaining claims.
`
`Patent Owner submitted a response on Apr. 23, 2011 further amending its claims.
`
`Patent Owner conducted an interview with the examiner, and a notice of allowance
`
`issued on May 11, 2012.
`
`
`
`7
`
`

`

`C.
`
`Priority Date – Based on Provisional Application dated 2007/07/11
`
`The ‘096 Patent identifies its parent applications; provisional application No.
`
`60/929,798, filed on Jul. 12, 2007 and provisional application No. 60/973,157,
`
`filed on Sep. 17, 2007. UNM’s expert Dr. Vojcic has reviewed these provisional
`
`applications to determine whether the subject matter claimed in the ‘096 Patent is
`
`supported. His opinion reflects that both provisional applications properly support
`
`the subject matter claimed in the ’96 patent. The priority date of the ‘096 Patent is,
`
`therefore, the filing date of its earliest provisional application in which the
`
`inventions are properly disclosed and supported, which is provisional application
`
`No. 60/929,798, filed on Jul. 12, 2007. The below table assembled by Dr. Vojcic
`
`provides the specific references to the provisional application for each claim
`
`element at issue in this proceeding:
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`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 and OFDM. EX2001¶17.
`
`8
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`

`

`VI. PATENT OWNER’S CLAIM CONSTRUCTIONS
`
`Patent claims are construed using the framework set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–15 (Fed. Cir. 2005) (en banc).
`
`A.
`
`Claim Construction Order in UNM Rainforest Innovations v.
`Apple Inc., No. 1-20-cv-00351 (W.D. Tex.)
`
`The Court in UNM Rainforest Innovations v. Apple Inc., No. 1-20-cv-00351
`
`(W.D. Tex.) addressed a number of claim terms in the ‘096 Patent. The following
`
`table represents these claim constructions, which Patent Owner agrees with and
`
`adopts for the purpose of this proceeding. EX1005 (Apple Claim Construction
`
`Order).
`
`Term
`Whether the preambles for
`all asserted claims are
`limiting
`
`“frame structure”
`
`“symbol”
`
`“pilot symbols that are
`denser than”
`
`Construction
`
`Court’s Construction:
`Each preamble is limiting.
`
`Court’s Construction:
`“a single structure comprising one or more frames,
`wherein each frame may have one or more
`subframes”
`Court’s Construction:
`Plain-and-ordinary meaning, wherein the plain-and-
`ordinary meaning means “a transmissible unit of
`information”
`Court’s Construction:
`“more pilot symbols per unit time than, wherein a
`unit time is the symbol period of the first
`communication system”
`
`9
`
`

`

`“[first & second]
`communication system”
`
`“wherein the first
`communication system’s
`symbols and the second
`communication system’s
`symbols co-exist in one
`transmission scheme”
`
`“data” / “non-data”
`
`Court’s Construction:
`Construction for “communication system”: Plain-
`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 communications standards”
`Court’s Construction:
`Plain-and-ordinary meaning where the plain-and-
`ordinary meaning is “wherein symbols of the first
`communication system and symbols of the second
`communication system exist together in one
`transmission scheme”
`Court’s Construction:
`Data: Plain-and-ordinary meaning
`Non-data: Plain-and-ordinary meaning
`Court’s Construction:
`Not indefinite. “support higher relative velocity
`between a transmitter and a receiver than”
`Agreed Construction:
`“[…] and/or […]”
`Agreed Construction:
`“the time it takes to transmit one symbol”
`VII. THE ASSERTED PRIOR ART
`
`“support higher mobility
`than”
`“at least one of […] and
`[…]”
`“symbol period”
`
`A.
`
`Talukdar (EX1012)
`
`Talukdar refers to U.S. Patent Application 2009/0067377 A1 entitled
`
`“Medium Access Control Frame Structure In Wireless Communication System.”
`
`Talukdar was filed on Aug. 13, 2008 and, therefore, does not predate the
`
`challenged ‘096 Patent. Although Talukdar derives priority from its provisional
`
`application No. 60/956,031, filed on Aug. 15, 2007, that priority date also does not
`
`predate the provisional application from which the challenged ‘096 Patent derives
`
`10
`
`

`

`priority (provisional application No. 60/929,798, filed on Jul. 12, 2007). Talukdar
`
`is thus not prior art to the ‘096 Patent at all.
`
`Talukdar concerns a “wireless communication infrastructure entity
`
`configured to allocate radio resources, in a radio frame, to a wireless terminal
`
`compliant with a first protocol and to a wireless terminal compliant with a second
`
`protocol.” EX1012, Abstract.
`
`Talukdar recognizes that wireless communication systems may typically
`
`implement more than one communication technology. EX1012, ¶27. “For
`
`example, one or more of the base units 101 may be legacy technology base
`
`stations, for example, IEEE 802.16(e) protocol base stations, and other base station
`
`may be newer generation technologies, for example, IEEE 802.16(m) protocol base
`
`stations.” Id. “In these cases, it is generally desirable for the new technologies to
`
`be backward compatible with the legacy technology.” Id. For example, “[f]or the
`
`evolution of IEEE 802.16(e), the backward compatibility constraint implies that
`
`the legacy frame structure, for example, the 5 msec duration 802.16(e) frame, must
`
`be supported by 802.16(m) base stations. Additionally, in order to efficiently
`
`support delay sensitive applications, 802.16(m) base stations should be able to
`
`service both 802.16(m) and legacy terminals within the common frame structure.”
`
`Id.
`
`11
`
`

`

`Talukdar specifically addresses the problem of one-way air-interface
`
`latency, which is primarily dependent on the MAC frame duration. Id, ¶2.
`
`However, this concern is balanced against the referenced need for backward
`
`compatibility. Id, ¶3. The desire to vary the frame structure to improve latency
`
`must be balanced against the need of legacy systems to have a compatible frame
`
`structure:
`
`Regarding frame structure, it is generally necessary to design frames
`having a relatively short duration in order to reduce latency. Thus to
`deliver low latency in 802.16m systems with backward compatibility,
`it is necessary to develop a sub-frame structure based on the legacy
`802.16( e) frame. In order to address the latency requirements, it is
`necessary to design frames with shorter than 5 msec duration.
`However, to efficiently serve legacy traffic, it is also necessary that
`802.16(m) systems have 5 msec legacy frames. Thus two broad classes
`of frames would be required for an 802.16(m) system having reduced
`latency and support for legacy 802.16(e) devices.
`EX1012, ¶28.
`
`In summary, Talukdar discloses frames with the 1st and 2nd communication
`
`systems sections, where the 2nd section could have different symbol duration—but
`
`does not specifically disclose a shorter duration. Talukdar further discloses that
`
`the 2nd section could have a different pilot structure—but does not specifically
`
`disclose a denser structure. Regarding symbol duration, Talukdar discloses only
`
`that “in the 802.16(m) downlink and uplink zones (second protocol regions on
`
`downlink and uplink) the . . . symbol duration, may be the same as or different
`
`from those defined in 802.16(e).” EX1012, ¶64 (emphasis added). Similarly,
`12
`
`

`

`regarding pilot structures, Talukdar discloses only that “the structures of the
`
`802.16(m) region (sub-channel and pilot structures) can be different from those of
`
`the 802.16(e) regions.” EX1012, ¶29 (emphasis added); “The m-D L and m-UL
`
`regions in these frames may have different sub-channel/pilot structures than the
`
`legacy systems.” EX1012, ¶64 (emphasis added). It also includes at least one non-
`
`data section.
`
`B.
`
`Li (EX1016)
`
`Li refers to U.S. Patent Application 2007/0155387 A1 entitled “Techniques
`
`For Scheduling And Adaptation To Combat Fast Fading.” Li concerns “techniques
`
`to perform scheduling and adaptation to combat fast fading,” which specifically
`
`refers to a “scheduling/adaptation scheme for a communications system for which
`
`different Orthogonal Frequency Division Multiplexing (OFDM) symbol durations
`
`and subcarrier spacing are employed for slow and fast subscribers, respectively.”
`
`Id.
`
`Li recognizes that “[t]he grouping of subscribers according to their speed
`
`and apportionment of subcarrier spacing accordingly may reduce inter-subcarrier
`
`interference (“ICI”) in OFDM and the corresponding OFDMA systems that
`
`support the subscribers.” EX1016, ¶10.
`
`Li discloses “slow subscribers with … longer OFDM symbol durations” and
`
`“fast subscribers with … shorter OFDM symbol durations.” EX1016, ¶22; Fig. 8.
`
`13
`
`

`

`However, in Li all subscribers belong to 802.16e (a single system). Further, in Li,
`
`separate scheduling for slow and fast users occurs in separate frames, not in the
`
`same frame. So Li does not disclose one frame format with the 1st and 2nd
`
`sections corresponding to the 1st and 2nd communication systems as disclosed in
`
`the ‘096 Patent.
`
`C.
`
`Nystrom (EX1017)
`
`Nystrom refers to U.S. Patent Application 2007/0104174 A1 entitled
`
`“Method And Apparatus For Allocating A Pilot Signal Adapted To The Channel
`
`Characteristics.” Nystrom concerns a “set of different pilot structures[,] designed
`
`for use in different environments and/or different user behaviors that are expected
`
`to occur in a cell.” EX1017, Abstract. Nystrom thus attempts to adapt pilot
`
`structure to the particular radio conditions for a given user. Id. Nystrom teaches
`
`two embodiments to accomplish this, one in which “the entire resource space is
`
`provided with different pilot structures in different parts (110A-D) in advance and
`
`allocation of resources to the users are then performed in order to match estimated
`
`radio conditions to the provided pilot structure.” Id. In the second, “allocation is
`
`performed first, and then the actual pilot structure is adapted within the allocated
`
`resource space area to suit the environmental conditions.” Id.
`
`Nystrom addresses the problem of adapting a multi-carrier system to the
`
`“difficult, ever changing, hard-to-predict multi-user environments that are
`
`14
`
`

`

`envisioned for future wireless systems.” EX1017, ¶5. It teaches a balanced design
`
`of its pilot structure to accommodate the worst-case scenario so that detection
`
`becomes possible even under the worst possible conditions, as well as when the
`
`situation is better than the worst case, which typically is the case most of the time.
`
`In the first situation, “such a [worst-case] pilot structure gives rise to a substantial
`
`pilot overhead, and is indeed necessary in these worst-case scenarios.” EX1017,
`
`¶6. In the second, the normal case, “the pilot structure is unnecessarily extensive,
`
`giving an unnecessary pilot overhead for most users.” Id. “This reduces data
`
`capacity in the own cell and furthermore increases the interference to the
`
`neighboring cells (so called 'pilot pollution').” Id.
`
`In summary, Nystrom thus discloses the use of denser pilots for high
`
`mobility users: Users with “radio conditions demanding a high density of pilots”—
`
`such as fast-moving users—could be allocated resource space with increased pilot
`
`density in the time dimension, frequency dimension, or both.” EX1017, ¶43; Fig.
`
`5A (showing portions of the radio resource space 110A, 110C, and 110D with
`
`higher pilot density). But Nystrom also does not disclose one frame format with
`
`the 1st and 2nd sections.
`
`15
`
`

`

`VIII. CLAIMS 1-4 AND 6-8 ARE NOT UNPATENTABLE
`
`A.
`
`Talukdar Is Not Prior Art
`
`Talukdar was filed on Aug. 13, 2008, and therefore does not predate the
`
`challenged ‘096 Patent. Although Talukdar derives priority from its provisional
`
`application No. 60/956,031, filed on Aug. 15, 2007, that priority date also does not
`
`predate the provisional application from which the challenged ‘096 Patent derives
`
`priority (provisional application No. 60/929,798, filed on Jul. 12, 2007). Talukdar
`
`is thus not prior art to the challenged claims of the ‘096 Patent at all.
`
`claim element
`1. A method of
`constructing a frame
`structure for data
`transmission, the
`method comprising:
`
`support in provisional No. 60/929,798
`The provisional application discloses a method of
`constructing a frame structure for data transmission.
`The frame structure specifically supports the frame
`structure of 802.16m, while also ensuring backward
`compatibility with legacy systems.
`
`EX2002 (’096 Provisional) at 2.
`
`Exemplary frame structures are provided in the
`disclosure. EX2002 (’096 Provisional) at 3, 7.
`
`
`
`16
`
`

`

`The provisional discloses a first section comprises data
`configured in a first format compatible with 802.16e:
`
`a. generating a first
`section comprising data
`configured in a first
`format compatible with
`a first communication
`system using symbols;
`
`EX2002 (’096 Provisional) at 2.
`
`17
`
`

`

`The provisional 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.
`
`b. generating a second
`section following the
`first section, the second
`section comprising data
`configured in a second
`format compatible with
`a second communication
`system using symbols,
`wherein the first
`communication system's
`symbols and the second
`communication system's
`symbols co-exist in one
`transmission scheme and
`wherein:
`
`EX2002 (’096 Provisional) at 3.
`
`EX2002 (’096 Provisional) at 8.
`
`18
`
`

`

`c. 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;
`
`The provisional discloses that the second format
`compatible with 802.16m is designed to support higher
`mobility, i.e., speed at which the mobile unit is
`moving, and uses symbols that are shorter (i.e. the
`bandwidth is larger) than the symbols in 802.16e.
`
`EX2002 (’096 Provisional) at 2. Both, “spectrum
`efficiency” and “higher speed” are advantages of the
`second communication system. The former implies
`higher data speed, which clarifies the meaning of
`“higher speed” as referring to a higher velocity mobile
`unit.
`
`EX2002 (’096 Provisional) at 3.
`
`A POSITA would have known at the time of the
`provisional application that by use of the following
`formulas a “shorter symbol period” can be shown for
`the second system.
`
`N = number of subcarriers
`K = number of samples in the cyclic prefix
`
`𝑇(cid:3046)(cid:3404)𝑁(cid:3397)𝐾3𝐵
`𝑇(cid:3046)(cid:3013)(cid:3404)𝑁(cid:3013)(cid:3397)𝐾(cid:3013)𝐵
`
`Where Ts is the symbol period of the second system
`and TSL is the symbol period of the legacy system.
`
`19
`
`

`

`
`By explicitly disclosing that the bandwidth of the
`second system is larger, the provisional application
`clearly supports the claim requirement that the second
`system has a shorter symbol period.
`
`EX2002 (’096 Provisional) at 4.
`
`
`
`20
`
`

`

`d. 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
`
`The provisional discloses legacy sections, e.g., MAPs,
`which correspond to at least one non-data section
`containing information describing an aspect of data in
`at least one of the first section and the second section.
`The FCH (frame control header) and preambles (e.g.,
`P1, P2, P3) also comprise non-data sections.
`
`EX2002 (’096 Provisional) at 3.
`
`EX2002 (’096 Provisional) at 4.
`
`21
`
`

`

`e. combining the first
`section, the second
`section and the at least
`one non-data section to
`form the frame structure.
`
`The provisional discloses a composite frame, which
`combines 802.16e and 802.16m sections plus MAP,
`FCH, and preamble sections (Pi’s).
`
`EX2002 (’096 Provisional) at 2.
`
`EX2002 (’096 Provisional) at 3.
`
`
`
`
`
`22
`
`

`

`2. The method of claim
`1, wherein the non-data
`section comprises
`mapping information for
`at least one of the first
`section and the second
`section.
`
`3. The method of claim
`1, wherein the non-data
`section comprises at
`least one of a preamble,
`a frame control header
`(FC