UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Patent No. 8,265,096 B2
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S OBJECTION TO
`THE EXPERT REPORT OF DR. ROY (EX1002)
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.64, Patent Owner UNM Rainforest Innovations
`
`respectfully assert the following objection to evidence proffered by Petitioner
`
`Qualcomm submitted on December 23, 2021, 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). The Federal Rules of Evidence
`
`(F.R.E.) apply to these proceedings according to the provisions of 37 C.F.R. §
`
`42.62(a), and these rules form the basis of the objections contained herein.
`
`I.
`
`Objection to EX1002 based on related Deposition Testimony in EX2014
`
`Patent Owner objects to EX1002 (Declaration of Dr. Sumit Roy, Ph.D.).
`
`Based on the deposition testimony taken on Dec. 6, 2021 (EX2014), 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. Specifically, F.R.E. 702(d) concerning evidence in the form of expert
`
`testimony requires that “the expert has reliably applied the principles and methods
`
`to the facts of the case.” The deposition testimony has shown that the Qualcomm’s
`
`expert witness has failed to live up to the standard of F.R.E. 702 by failing to
`
`himself apply the principles and methods to the facts of the case, and further and
`
`more importantly, by affirmatively misrepresenting facts relating thereto under
`
`oath.
`
`
`
`[1]
`
`

`

`The touchstone for the admission of expert testimony in evidence is that it
`
`will “help the trier of fact to understand the evidence or to determine a fact in
`
`issue,” under Federal Rule of Evidence 702. Courts routinely require expert
`
`witnesses to properly support their work and opinions. For example, in the Second
`
`Circuit’s decision in Puppolo v. Welch, the court of appeals affirmed the district
`
`court’s exclusion of an expert opinion (and grant of partial summary judgment)
`
`where the expert merely reviewed and made minor revisions to an opinion
`
`provided to him by the plaintiff's counsel. Puppolo v. Welch, 18-2601 (2nd Cir.,
`
`June 20, 2019), affirming district court, 5:14-CV-95 (D. Vt. Sept. 12, 2017). Here,
`
`Dr. Roy simply signed off on an expert report provided to him by counsel with
`
`effectively no substantive changes. This problem is exacerbated severely by his
`
`failure to cite the original expert report in his materials considered list, and his
`
`blatant mischaracterization of the work and technical analysis he actual performed,
`
`as demonstrated below.
`
`Dr. Roy testified under oath that he wrote Section IX, “The Challenged '096
`
`Patent” on Page 47 as well as Section X, “Overview of the Prior Art References:”
`
`Q. So did you write this background, or was this provided to you?
`A. You know, I wrote it, again, you know, with -- with a draft based
`on -- based on a draft from counsel, but I did obviously add --I
`refined the draft and finalized it.
`…
`Q. And this Section IX, The Challenged '096 Patent on Page 47 --
`does that -- is that your work and analysis of the '096 patent?
`A. Yes, it is.
`
`
`
`[2]
`
`

`

`Q. Okay. So you wrote this section?
`A. Uh-huh, again, you know, with inputs from counsel.
`Q. Okay. So you wrote it and counsel edited it, or counsel wrote it
`and you edited it?
`THE WITNESS: Sorry. Yeah. Both. It depends on different
`sections, yeah.
`Q. Okay. And there's Section X, Overview of the Prior Art
`References.
`Does this reflect your analysis of the prior art references?
`A. Yes, it does.
`Q. All right. And you wrote this section, right?
`A. Again, yes, with help of counsel.
`Roy depo. (EX2014), taken Dec. 6, 2021 (rough transcript) at 57: 2-58:13.
`
`However, a comparison of the two reports shows that the only edits that were
`
`actually made in those two parts are regarding formats like punctuations, ways of
`
`enumeration, and from “POSITA” to “POSA”. There are no substantive
`
`differences whatsoever between the two documents. See Attachment A.
`
`Further, Dr. Roy testified under oath that he performed analysis on Talukdar
`
`and Nystrom and wrote it down in his report, and further revised and refined it:
`
`Q. Okay. So you performed this analysis on Talukdar and Nystrom
`and wrote it down in your report?
`A. That is correct, yes.
`Q. Was -- and, again, was this written by you, or was this written by
`your attorneys?
`A. Again, in consultation with the attorneys, you know, initial draft,
`which I revised, refined.
`Q. Okay. Let's take a look at the --I'm sorry. Let me -- so you said
`which you revised and refined.
`So I'm sorry. The original draft then came from your attorneys, and
`you revised it?
`A. So in this -- I mean for this part, yes, I would recall that it came
`from them, and I revised and refined it, yes.
`[3]
`
`
`
`

`

`Q. Okay. How much -- how much
`revisions did you have? Did you change it a lot? Did you add a lot, or
`did you basically just read it and sign it?
`A. I, of course, did read it, and there were some changes that I -- that I
`suggested that were incorporated --
`Roy depo. (EX2014), taken Dec. 6, 2021 (rough transcript) at 68: 20- 69:22.
`
`However, a comparison of the two reports shows that the only edits that were
`
`actually made in those two parts are regarding formats like punctuations, ways of
`
`enumeration, and from “POSITA” to “POSA”. There are no substantive
`
`differences whatsoever between the two documents. See Attachment A.
`
`Dr. Roy testified under oath that his report reflected his own analysis of Li,
`
`Nystrom and Talukdar, and claimed that he spent >20 hours on drafting up his
`
`opinion and iterative revisions:
`
`Q. your report reflects your analysis of Li, Nystrom, and Talukdar,
`right. . . . Did you hear me?
`A. Oh, yes, Sorry. I responded correct, yes.
`Q. Okay. I'm sorry. I did not hear your response how much time did
`you spend, you know, drafting up your opinion and analysis and
`putting it down in this report?
`A. You mean in number of hours, you know, this was iterative over
`several weeks, so I would say again, 20, 25 hours in this.
`Q. Okay. So there -- you said iterative, so there were versions you get
`a version edited and get a new version and go back and forth like
`that?
`A. That's correct, yes, and then discuss the prior art or -- you know,
`other references that I may have discovered, so . . .
`Roy depo. (EX2014), taken Dec. 6, 2021 (rough transcript) at 79: 9- 80:3.
`
`However, a comparison of the two reports shows that the only edits that were
`
`
`
`[4]
`
`

`

`actually made in those two parts are regarding formats like punctuations, ways of
`
`enumeration, and from “POSITA” to “POSA”. There are no substantive
`
`differences whatsoever between the two documents. See Attachment A.
`
`Further, Dr. Roy testified under oath that he used the same process for the
`
`detailed invalidity analysis for the ’096 Patent:
`
`Q. So the same process was used also for the detailed invalidity
`analysis for the '096 patent; is that correct?
`A. Why, I would say so, yes.
`Q. And the same process was also used for the detailed invalidity
`analysis of the '326 patent; is that right?
`A. Yes.
`Roy depo. (EX2014), taken Dec. 6, 2021 (rough transcript) at 106:2-9. However, a
`
`comparison of the two reports shows that the only edits that were actually made
`
`(aside from his background part) are regarding formats like punctuations, ways of
`
`enumeration, and two or three paraphrasing efforts (at best). There are no
`
`substantive differences whatsoever between the two documents. See Attachment
`
`A.
`
`Further, Dr. Roy testified under oath that he only took a quick look at Dr.
`
`Akl’s report and contributed himself to the drafts of ’096 and ’204 declarations:
`
`Q. Following those discussions, did counsel provide you with an
`initial draft of your declarations on the '204 and '096 patents?
`A. Yes.
`I received an initial draft from counsel on those patents.
`Q. Were you aware that the technical substance of the drafts of your
`'096 and '204 declarations that were provided to you were based on
`the Ackel declarations on the '096 and '204 patents respectively?
`[5]
`
`
`
`

`

`A. Yes, my understanding was that the analysis was based on the ac
`ankle declaration. I had, as I deposed -- I had once taken a quick
`look at the ac ankle declaration but thereafter I focused on the drafts
`-- on the initial draft as provided by counsel.
`Q. Okay. Do you recall making any edits to those drafts of the '096
`and '204 declarations?
`A. Yes, I did besides the obvious sections on my background and
`experience, I did contribute to editing the technical background
`portion of -- of the -- of the drafts.
`Q. Okay. Do you recall making any other edits to the technical
`substance for example on invalidity or obviousness?
`A. I believe that there were very minor changes but I do not recall
`exactly what they were.
`Roy depo. (EX2014), taken Dec. 6, 2021 (rough transcript) at 109:10-110:15.
`
`However, a comparison of the two reports shows that the only edits that were
`
`actually made (aside from his background part) are regarding formats like
`
`punctuations, ways of enumeration, and two or three paraphrasing efforts (at best).
`
`There are no substantive differences whatsoever between the two documents. See
`
`Attachment A.
`
`
`
`
`
`In summary, the record is clear that Dr. Roy did not perform his own
`
`independent analysis and has exacerbated the problem by grossly
`
`mischaracterizing his actual work done. This fails the requirements of F.R.E. 702.
`
`
`
`Dated: December 16, 2021
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Jay P. Kesan
`
`Jay P. Kesan, Reg. No. 37,488
`Cecil E. Key
`DIMUROGINSBERG, PC
`[6]
`
`

`

`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`ckey@dimuro.com
`Telephone: (703) 289-5118
`
`Ari Rafilson, Reg. No. 58,693
`Shore Chan DePumpo LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`arafilson@shorechan.com
`Telephone: (214) 593-9110
`
`Attorneys for Patent Owner UNM
`RAINFOREST INNOVATIONS
`
`
`
`[7]
`
`

`

`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`that on July 2, 2021, a complete copy of Patent Owner UNM Rainforest
`Innovations’ Sur-Reply In Support Of Patent Owner’s Preliminary Response To
`The Petition for Inter Partes Review dated April 21, 2021 of U.S. Patent No.
`8,565,326 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 16, 2021
`
`
`
`
`
`/s/ Jay P. Kesan
`
`Jay P. Kesan
`
`
`
`
`
`
`
`
`
`
`
`[8]
`
`

`

`ATTACHMENT A
`ATTACHMENT A
`
`
`
`

`

`12/14/2021 4:03:30 PM
`
`Compare Results
`
`Old File:
`IPR2020-01576 Intel Expert Declaration Robert
`Akl 096 Patent.pdf
`160 pages (2.69 MB)
`9/11/2020 5:34:03 PM
`
`versus
`
`New File:
`PTAB-IPR2021-00375-1002 - Roy Decl (096).pdf
`147 pages (2.61 MB)
`4/7/2021 7:58:05 AM
`
`Total Changes
`
`891
`
`Content
`309 Replacements
`156 Insertions
`316 Deletions
`
`Styling and
`Annotations
`96 Styling
`14 Annotations
`
`Go to First Change (page 1)
`
`file://NoURLProvided[12/14/2021 4:03:30 PM]
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`QUALCOMM INCORPORATED,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________________________
`INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,265,096 B2
`Case IPR2021-00375
`____________________________
`DECLARATION OF DR. SUMIT ROY, Ph.D.
`Ex. 1002
`
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 1 of 147
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 5
`I.
`BACKGROUND AND QUALIFICATIONS ............................................... 7
`II.
`III. MATERIALS RELIED UPON .................................................................... 10
`IV. SUMMARY OF OPINIONS ....................................................................... 12
`V.
`LEGAL STANDARDS ............................................................................... 13
`A.
`Legal Standards for Prior Art ............................................................ 13
`B.
`Legal Standard for Priority Date ....................................................... 15
`C.
`Legal Standard for Anticipation ........................................................ 15
`D.
`Legal Standard of Obviousness ......................................................... 17
`VI. CLAIM CONSTRUCTION ......................................................................... 22
`VII. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 24
`VIII. BACKGROUND ON THE STATE OF THE ART .................................... 25
`A. Overview of Cellular Communication Systems ................................ 25
`B. Overview of Broadband Wireless Communication Systems ............ 28
`1.
`First-Generation Broadband Systems ..................................... 29
`2.
`Second-Generation Broadband Systems and OFDM .............. 30
`C. Overview of 802.16/WiMAX ............................................................ 31
`1.
`History of 802.16 ..................................................................... 32
`2.
`Frame Structure of 802.16 ....................................................... 35
`3.
`OFDM in 802.16 ..................................................................... 39
`4.
`OFDMA in 802.16 .................................................................. 42
`802.16/WiMAX and Mobility ........................................................... 43
`D.
`IX. THE CHALLENGED ‘096 PATENT ......................................................... 47
`A.
`Background and ‘096 Patent Specification ....................................... 47
`B. Overview of the ‘096 Patent Prosecution History ............................. 48
`X. OVERVIEW OF THE PRIOR ART REFERENCES ................................. 50
`A. Overview of “Talukdar” (Ex. 1012) .................................................. 50
`B. Overview of “Li” (Ex. 1016) ............................................................. 53
`
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 2 of 147
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`

`

`C. Overview of Nystrom (Ex. 1017) ...................................................... 55
`XI. SPECIFIC GROUNDS OF CHALLENGE ................................................. 57
`A. Ground 1: Claims 1-4 and 6-7 were rendered obvious by Talukdar in
`View of Li .......................................................................................... 58
`1.
`Claim 1 .................................................................................... 58
`a) 1[pre]: “A method of constructing a frame structure for
`data transmission, the method comprising” ...................... 58
`b) 1[a]: “generating a first section comprising data configured
`in a first format compatible with a first communication
`system using symbols” ...................................................... 61
`c) 1[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” ................. 67
`d) 1[c]: “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” .................................................... 74
`e) 1[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” ........................... 89
`f) 1[e]: “combining the first section, the second section and
`the at least one non-data section to form the frame
`structure” ........................................................................... 94
`Claim 2 .................................................................................... 94
`2.
`Claim 3 .................................................................................... 97
`3.
`Claim 4 .................................................................................... 99
`4.
`Claim 6 ..................................................................................100
`5.
`Claim 7 ..................................................................................102
`6.
`B. Ground 2: Talukdar and Nystrom Rendered Claim 8 Obvious .......103
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 3 of 147
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`

`

`1.
`
`8[c]: “and wherein the second communication system has pilot
`symbols that are denser than those in the first communication
`system” ..................................................................................104
`XII. SECONDARY CONSIDERATIONS .......................................................113
`XIII. CONCLUSION ..........................................................................................113
`
`
`APPENDIX A (Curriculum Vitae)
`
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 4 of 147
`
`

`

`I.
`
`INTRODUCTION
` My name is Sumit Roy, and I have been retained by counsel for
`
`Petitioner Qualcomm Incorporated (“Qualcomm” or “Petitioner”) as an expert
`
`witness to provide assistance regarding U.S. Patent No. 8,265,096 (“the ‘096
`
`Patent”). Specifically, I have been asked to consider the validity of claims 1-4 and
`
`6-8 of the ‘096 Patent (the “Challenged Claims”) in view of prior art, anticipation
`
`and obviousness considerations, and understanding of a person of ordinary skill in
`
`the art (“POSA”) as it relates to the ‘096 Patent. I have personal knowledge of the
`
`facts and opinions set forth in this declaration, and believe them to be true. If called
`
`upon to do so, I would testify competently thereto.
`
`
`
`I am being compensated for my time at my standard consulting rate of
`
`$650 per hour. I am also being reimbursed for expenses that I incur during the course
`
`of this work. My compensation is not contingent upon the results of my study, the
`
`substance of my opinions, or the outcome of any proceeding involving the
`
`challenged claims. I have no financial interest in the outcome of this matter or on the
`
`pending litigation between Petitioner and Patent Owner.
`
` My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 5 of 147
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`

`

`
`
`I may rely upon these materials, my knowledge and experience, and/or
`
`additional materials to rebut arguments raised by the Patent Owner. Further, I may
`
`also consider additional documents and information in forming any necessary
`
`opinions, including testimony of other expert witnesses or documents that may not
`
`yet have been provided to me.
`
`
`
`I have been informed that Patent Owner UNM Rainforest Innovations
`
`(formerly STC.UNM) has asserted the patent in the following lawsuits: UNM
`
`Rainforest Innovations v. ZyXEL Commc’ns Corp., 6:20-cv-00522 (W.D. Tex.);
`
`UNM Rainforest Innovations v. Dell Techs., Inc., 6:20-cv-00468 (W.D. Tex.); UNM
`
`Rainforest Innovations v. ASUSTek Comput., Inc., 6:20-cv-00142 (W.D. Tex.);
`
`UNM Rainforest Innovations v. D-Link Corp., 6:20-cv-00143 (W.D. Tex.); UNM
`
`Rainforest Innovations v. Apple Inc., 1:20-cv-00351 (W.D. Tex.); UNM Rainforest
`
`Innovations v. TP-Link Techs. Co., Ltd., 6:19-cv-00262 (W.D. Tex.).
`
`
`
`In this declaration, I will discuss my qualifications and background, the
`
`technology background related to the ‘096 Patent and then provide my analyses and
`
`opinions on claims 1-4 and 6-8 of the ‘096 Patent. This overview provides bases for
`
`my opinions with respect to the ‘096 Patent.
`
` My analysis of the materials produced in this proceeding is ongoing and
`
`I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 6 of 147
`
`

`

`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`I am an expert in the field of wireless networks. I have studied, taught,
`
`practiced, and researched this field for over thirty years. I have summarized in this
`
`section my educational background, work experience, and other relevant
`
`qualifications. Attached hereto as Appendix A, is a true and correct copy of my
`
`curriculum vitae describing my background and experience.
`
`
`
`I earned my Bachelor of Technology degree in Electrical Engineering
`
`from Indian Institute of Technology in Kanpur in 1983. In 1985, I earned my Master
`
`of Science degree in Electrical Engineering from University of California in Santa
`
`Barbara. I earned a Doctor of Philosophy in Electrical Engineering and Master of
`
`Arts in Statistics & Applied Probability from University of California in Santa
`
`Barbara in 1988, with my dissertation being on “Estimation Strategies for a Network
`
`of Distributed Sensors.”
`
` While a graduate student, from 1983 through 1988, I worked on various
`
`projects related to networked wireless communication and radar systems using a mix
`
`of analytical modeling and computer simulation.
`
`
`
`In July of 1988, I joined the faculty of the University of Pennsylvania
`
`as an Assistant Professor in the Department of Electrical Engineering. While in this
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 7 of 147
`
`

`

`position, I taught upper level undergraduate course called “Communication
`
`Systems” and graduate level courses “Advanced Digital Signal Processing” and
`
`“Digital Communications”.
`
`
`
`In January of 1995, I became a tenured Associate Professor in the
`
`Division of Engineering at the University of Texas at San Antonio, in San Antonio,
`
`Texas. In April of 1998, I transferred to a tenured Associate Professor in the
`
`Department of Electrical Engineering at the University of Washington in Seattle,
`
`Washington and was promoted to Professor in September of 2002. As a faculty
`
`member at University of Washington, I have taught courses and directed research in
`
`networking and telecommunications, including 802.11 WLAN and Cellular
`
`technologies. From September 2014 to September of 2019, I received Integrated
`
`Systems Term Professorship at the University of Washington in recognition of my
`
`leadership and national stature in this area.
`
`
`
`I took full-time leave from my University of Washington position to
`
`serve as a Senior Staff Researcher at Intel Labs, Hillsboro, OR from September 2001
`
`to December 2003. At Intel, I served as Wireless Systems Architect researching
`
`IEEE 802.15.3a Ultra-Wideband PHY layer for Wireless Personal Area Networks
`
`and nascent pre-802.11n (MIMO WiFi) technology, with responsibility for
`
`representing Intel at IEEE Standards meetings and coordination with other industry
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 8 of 147
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`

`

`partners. My research resulted in several patents relating to the above, including
`
`design implementation of MIMO WiFi transceivers.
`
`
`
`I have knowledge and experience throughout my academic career and
`
`industry experience in technologies used in wireless networks. Since 1988, I have
`
`received over ten million dollars in funding from various national and international
`
`organizations to support my work on wireless networking.
`
`
`
`In addition to advising and mentoring students at UW, I have served as
`
`external dissertation reviewer in McGill Univ., Montreal, National University of
`
`Singapore, University of Victoria, and SIIT in Bangkok. At UW and U. Penn., I
`
`have advised and supervised over 20 Ph.D students and vising scholars.
`
`
`
`In addition to my academic work, I have remained active in the
`
`communication industry through my consulting work. I consulted for Mathworks, a
`
`vendor of WLAN toolbox products for design, on current 802.11 designs including
`
`MIMO systems. I am also the named inventor on U.S. Patent Nos. 7,782,970 and
`
`8,289,836 titled “Apparatus and associated methods to introduce diversity in a
`
`multicarrier communication channel,” among others, which are listed in my
`
`curriculum vitae.
`
`
`
`I have authored and co-authored over 200 journal publications,
`
`conference proceedings, technical papers, book chapters, and technical presentations
`
`in a broad array of communications-related technologies, including networking and
`
`
`
`Qualcomm Incorporated Ex. 1002
`Page 9 of 147
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`

`

`wireless communication. I have also developed and taught over 10 courses related
`
`to communications and computer systems, including several courses on signals and
`
`systems, wireless communication, communications systems. These courses included
`
`introductory courses on communication systems, as well as more advanced courses
`
`on wireless communications. A complete list of my publications and the courses I
`
`have developed and/or taught is also contained in my curriculum vitae.
`
` My professional affiliations include services in various professional
`
`organizations and serving as a reviewer for a number of technical publications,
`
`journals, and conferences. I have also received a number of awards and recognitions,
`
`including IEEE Communications Society’s Distinguished Lecturer award (2014-15,
`
`2017-18), Shanghai JiaoTung University High-end Foreign Expert award (1
`
`month/year, 2014-16), which are listed in my curriculum vitae.
`
`
`
`I have also served as an expert in certain legal proceedings. A list of
`
`cases in which I have testified at trial, hearing, or by deposition (including those
`
`during the past five years) is provided in my curriculum vitae. Over the years, I have
`
`been retained by both patent owners as well as petitioners.
`
`III. MATERIALS RELIED UPON
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`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in this
`
`
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`declaration, including the ‘096 Patent (Ex. 1001)1, the prosecution history of the
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`‘096 the Exhibits to Patent, the prior art references, and information discussed and
`
`any other references specifically identified in this declaration, including the
`
`materials identified in the chart below.
`
`
`
`I have considered information from various other sources in forming
`
`my opinions. I have also drawn on almost three decades of research and development
`
`in the field of wireless communication systems.
`
`Exhibit
`Ex. 1001
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`
`Description
`U.S. Patent No. 8,265,096 (“the ‘096 Patent”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Seventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Aug. 6, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL.,
`FUNDAMENTALS OF WIMAX (2007) (“Fund. of WiMAX”)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ‘096 Patent Claims
`U.S. Provisional App. No. 60/929,
`Excerpts from ‘096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20- cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`
`
`1 The citations in this declaration to an “Exhibit” or “Ex.” Refer to the Petition.
`
`
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`Exhibit
`Ex. 1013
`
`Ex. 1014
`Ex.1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Description
`U.S. Provisional Application No. 60/956,031 (“Talukdar
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`WIPO Handbook on Industrial Property Information and
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`Excerpts from WILLIAM STALLINGS, WIRELESS
`COMMUNICATIONS AND NETWORKS (2D ED. 2005)
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (Nov. 2005)
`Mohammad Azizul Hasan, Performance Evaluation of
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Jan. 12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (Mar. 2005)
`
`
`IV. SUMMARY OF OPINIONS
` Claims 1-4 and 6-7 of the ‘096 Patent are unpatentable as obvious in
`
`light of Talukdar in combination with Li.
`
` Claim 8 of the ‘096 Patent is unpatentable as obvious in light of
`
`Talukdar in combination with Nystrom.
`
`
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`V. LEGAL STANDARDS
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`I am not a lawyer. My understanding of legal principles comes from
`
`counsel. I have applied the following legal principles in arriving at the opinions set
`
`forth in this declaration.
`
`A. Legal Standards for Prior Art
`
`I understand that a patent or other publication must first qualify as prior
`
`art before it can be used to invalidate a patent claim.
`
`
`
`I understand that a U.S. or foreign patent qualifies as prior art to a patent
`
`if the date of issuance of the U.S. or foreign patent is prior to the invention of the
`
`patent. I further understand that a printed publication, such as an article published in
`
`a magazine or trade publication or a patent application, qualifies as prior art to a
`
`patent if the date of publication is prior to the invention of the patent. My
`
`understanding is that, for such prior art references, a patentee may attempt to show
`
`that the claimed invention was conceived prior to the issuance of the U.S. foreign
`
`patent or publication of the printed materials. To do so, it is my understanding that
`
`patentee must prove with corroborating evidence that the named inventors conceived
`
`of the complete claimed invention before the prior art, and were diligent in reducing
`
`the claimed inventions to practice.
`
`
`
`I understand that, regardless of the date of invention of the patent, a
`
`U.S. or foreign patent qualifies as prior art to a patent if the date of issuance of the
`
`
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`U.S. or foreign patent is more than one year before the earliest effective filing date
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`of the patent. I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication or a patent application, constitutes prior
`
`art to a patent if the publication occurs more than one year before the earliest
`
`effective filing date of the patent, again regardless of the date of invention of the
`
`patent.
`
`
`
`I understand that a U.S. patent or published U.S. application qualifies
`
`as prior art to a patent if the application for that patent was filed in the United States
`
`before the invention of the patent. My understanding is that, for such prior art
`
`references, a patentee may attempt to show that the claimed invention was conceived
`
`prior to the filing in the United States of the purported prior art U.S. patent or
`
`application. To do so, it is my understanding that patentee must prove with
`
`corroborating evidence that the named inventors conceived of the complete claimed
`
`invention before the prior art, and were diligent in reducing the claimed inventions
`
`to practice.
`
`
`
`I understand that to qualify as prior art, a reference must contain an
`
`enabling disclosure that allows one of ordinary skill to practice the claims without
`
`undue experimentation.
`
`
`
`I understand that documents and materials that qualify as prior art can
`
`be used