UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`In the Patent of: Yang, Xiu Zheng, Shulin (TW);
`Ren-Jr Chen, Hsinchu (TW);
`
`
`
`Chang-Lung Hsiao, Hsinchu (TW);
`
`
`
`Pang-An Ting, Fongyuan (TW)
`
`
`
`
`
`U.S. Patent No: 8,265,096
`Issue Date: September 11, 2012
`Appl. Serial No.: 12/168,855
`Filing Date: July 7, 2008
`Title: METHOD FOR CONSTRUCTING FRAME STRUCTURES
`
`
`
`
`
`
`PTAB Case No. IPR2021-00734
`Patent No. 8,265,096 B2
`_____________________
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,265,096 B2
`
`Claims 1-4 and 6-8
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 2
`A.
`Real Parties in Interest ........................................................................... 2
`B.
`Related Matters ...................................................................................... 3
`C.
`Notice of Counsel and Service Information .......................................... 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 6
`A.
`Standing ................................................................................................. 6
`B.
`Challenge Grounds ................................................................................ 6
`IV. THE BOARD SHOULD NOT DENY INSTITUTION FOR
`DISCRETIONARY REASONS ...................................................................... 7
`V. OVERVIEW OF THE ’096 PATENT .......................................................... 12
`A.
`Background: History of Broadband Wireless and the IEEE
`802.16 WiMAX Standards .................................................................. 12
`The ’096 Patent Discloses Constructing a Frame Structure to
`Provide Compatibility between 802.16 Systems with Mobility
`Support ................................................................................................ 17
`The Challenged Claims of the ’096 Patent ......................................... 19
`C.
`Priority Date and Prosecution History of the ’096 Patent ................... 21
`D.
`Level of Ordinary Skill in the Art ....................................................... 23
`E.
`Claim Construction ............................................................................. 23
`F.
`VI. OVERVIEW OF THE PRIOR ART RELIED UPON IN THIS
`PETITION ..................................................................................................... 25
`A.
`Talukdar ............................................................................................... 25
`B.
`Li .......................................................................................................... 30
`C.
`Nystrom ............................................................................................... 32
`VII. ARGUMENT: THE CHALLENGED CLAIMS OF THE ’096
`PATENT ARE UNPATENTABLE OVER THE PREVIOUSLY-
`UNCONSIDERED PRIOR ART RAISED HERE ....................................... 34
`
`B.
`
`
`
`- ii -
`
`

`

`A. Ground 1: Talukdar and Li Rendered Claims 1-4 and 6-7
`Obvious ............................................................................................... 35
`1.
`Claim 1 ...................................................................................... 35
`2.
`Claim 2 ...................................................................................... 55
`3.
`Claim 3 ...................................................................................... 56
`4.
`Claim 4 ...................................................................................... 58
`5.
`Claim 6 ...................................................................................... 60
`6.
`Claim 7 ...................................................................................... 61
`Ground 2: Talukdar and Nystrom Rendered Claim 8 Obvious .......... 62
`B.
`VIII. CONCLUSION .............................................................................................. 70
`
`
`
`
`
`- iii -
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`

`

`EXHIBIT LIST
`
`(“Talukdar
`
`Description
`U.S. Patent No. 8,265,096 (“the ’096 patent”)
`Declaration of Dr. Sumit Roy (“Roy”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Fourteenth Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Mar. 17, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL., FUNDAMENTALS OF
`WIMAX (2007)
`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. 60/929,798
`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 (“Markman Order”)
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`U.S. Provisional Application No. 60/956,031
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`Ex. 1014
`Industrial Property
`Information and
`Ex. 1015 WIPO Handbook on
`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”)
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`
`
`- iv -
`
`

`

`of
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Exhibit
`Ex. 1021
`Ex. 1022
`
`Description
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (November 2005)
`Ex. 1023 Mohammad Azizul Hasan, Performance Evaluation
`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 (IEEE, Vol. 4, No. 2, Mar. 2005)
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post Grant (available at:
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`slip-after-ptab-discretionary-denials/)
`
`Ex. 1028
`
`
`
`
`- v -
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`I.
`
`INTRODUCTION
`Petitioner ZyXEL Communications Corporation (“ZyXEL”) requests that the
`
`Board institute inter partes review (“IPR”) of claims 1-4 and 6-8 of U.S. Patent No.
`
`8,265,096 (“the ’096 patent”) (the “challenged claims”), because those claims were
`
`5
`
`unpatentable over the prior art discussed in this Petition but not considered by the
`
`Examiner during the original prosecution.
`
`The ’096 patent describes methods for constructing a data transmission frame
`
`structure with sections formatted for two communication systems, one of which
`
`supports higher mobility than the other. The frame includes: a first section
`
`10
`
`comprising data formatted for the first system; a second section comprising data
`
`formatted for the second, higher-mobility system; and a non-data section that
`
`describes some aspect of data in one of the sections. To support higher mobility, the
`
`second system has a shorter symbol period or denser pilot symbols than the first
`
`system.
`
`15
`
`During prosecution of the ’096 patent application, the Examiner did not
`
`appreciate that every aspect of the claimed methods was known in the prior art.
`
`Motorola had previously filed a patent application that described frame structures
`
`with data sections formatted for different communication systems. Four years before
`
`the application for the ’096 patent, Ericsson engineers had filed a patent application
`
`20
`
`disclosing a system that used denser pilot symbols for higher-mobility users. And
`
`
`
`- 1 -
`
`
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`two years before the application for the ’096 patent, Intel engineers had filed a patent
`
`application disclosing a system that used a shortened symbol period for higher-
`
`mobility users.
`
`The Patent Office did not have the benefit of considering these references
`
`5
`
`during prosecution. As shown below, all limitations of the challenged claims were
`
`known and obvious before the ’096 patent. IPR should therefore be instituted, and
`
`the challenged claims should be cancelled.
`
`II. MANDATORY NOTICES
`A. Real Parties in Interest
`ZyXEL Communications Corporation files this Petition because UNM
`
`10
`
`Rainforest Innovations (“UNM”), recorded with the Patent Office as the allegedly
`
`current assignee of the ’096 patent, sued ZyXEL Communications Corporation for
`
`infringing the ’096 patent. ZyXEL Communications Corporation has had sole
`
`control over this Petition and is the real party in interest for this Petition. No other
`
`15
`
`party controls, funds, or has been involved with the preparation or filing of this
`
`Petition. ZyXEL Communications Inc.
`
`is a U.S. subsidiary of ZyXEL
`
`Communications Corporation
`
`that also
`
`sells Wi-Fi products. ZyXEL
`
`Communications Inc. has not been sued for infringing the ‘096 patent. ZyXEL
`
`Communications Inc. does not have control over any decisions made by ZyXEL
`
`20
`
`Communications Corporation and had no input in the current petition. As such,
`
`- 2 -
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`ZyXEL Communication Corp. does not believe that ZyXEL Communications Inc.
`
`qualifies as a real party in interest to this proceeding. But, in the interest of full
`
`disclosure, ZyXEL Communications Corporation1
`
`identifies ZyXEL
`
`Communications Inc. to the Board.
`
`5
`
`B. Related Matters
`UNM has asserted certain claims of the ’096 patent in the following pending
`
`district-court lawsuits: UNM Rainforest Innovations v. ASUSTek Computer, Inc.,
`
`No. 6:20-cv-00142 (W.D. Tex.); UNM Rainforest Innovations v. Dell Techs. Inc. et
`
`al., No. 6:20-cv-00468 (W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp.,
`
`10
`
`No. 6:20-cv-00143 (W.D. Tex.); UNM Rainforest Innovations v. TP-Link Techs.
`
`Co., No. 6:19-cv-00262 (W.D. Tex.); and UNM Rainforest Innovations v. ZyXEL
`
`Commc’ns Corp., No. 6:20-cv-00522 (W.D. Tex.).2
`
`Third-party, Qualcomm Incorporated, has also filed IPR petitions challenging
`
`claims 1-4 and 6-8 of the ’096 Patent.3 Qualcomm Incorporated v. UNM Rainforest
`
`
`1 Any reference to “ZyXEL” in this petition refers to ZyXEL Communications
`Corporation.
`
`2 UNM also asserted the ’096 patent in UNM Rainforest Innovations v. Apple Inc.,
`No. 1:20-cv-00351 (W.D. Tex.) (“the Apple litigation”), which has been dismissed.
`See Dkt. #80 (Aug. 5, 2020).
`
`3 Third-party Intel Corp. also filed an IPR petition challenging the same claims in
`Intel Corp. v. UBM Rainforest Innovations, IPR2020-01576, Paper 2 (Sept. 14,
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`Innovations, IPR2021-00375, Paper 2 (Dec. 28, 2020) (“the Qualcomm IPR”). A
`
`motion for joinder with IPR2021-00375 accompanies this Petition.
`
`Finally, original patentee Industrial Technology Research Institute (“ITRI”)
`
`filed a civil complaint on January 25, 2021 against both UNM and Sino Matrix
`
`5
`
`Technology, Inc.(UNM’s assignee) in the Taiwan Hsinchu District Court seeking a
`
`declaratory judgment that ITRI is the owner of all rights in certain patents, including
`
`the ’096 patent.
`
`C. Notice of Counsel and Service Information
`Petitioner’s counsel are:
`
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No.
`68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`
`
`
`Back-Up Counsel
`Jonah D. Mitchell (will seek pro hac vice
`admission)
`Christine M. Morgan (will seek pro hac
`vice admission)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`
`
`2020), which was recently terminated before any institution decision or UNM’s
`preliminary response. See id., Paper 8.
`
`
`
`- 4 -
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Ismail C. Kuru (will seek pro hac vice
`admission)
`Reed Smith LLP
`10 S. Wacker Dr. 40th Floor
`Chicago, IL, 60606
`Tel: 312.207.1000
`Fax: 312.207.6400
`ikuru@reedsmith.com
`
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`mhopkins@sjclawpc.com
`
`Victoria Hao (Reg. No. 47,630)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`vhao@sjclawpc.com
`
`Filed herewith is a Power of Attorney appointing the above-named counsel.
`
`- 5 -
`
`
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A.
`Standing
`The ’096 patent qualifies for IPR, and Petitioner is not barred from requesting
`
`review.
`
`5
`
`B. Challenge Grounds
`Claims 1-4 and 6-8 of the ’096 patent were obvious on the following grounds:
`
`Ground
`1
`
`Basis for Obviousness
`Talukdar (Ex. 1012) and Li (Ex. 1016)
`
`Challenged Claims
`1-4, 6-7
`
`2
`
`Talukdar and Nystrom (Ex. 1017)
`
`8
`
`
`
`Talukdar, Li, Nystrom, and other references illustrate the state of the art at the
`
`time of the alleged invention. See Ariosa Diagnostics v. Verinata Health, Inc., 805
`
`10
`
`F.3d 1359, 1365 (Fed. Cir. 2015) (“Art can legitimately serve to document the
`
`knowledge that skilled artisans would bring to bear in reading the prior art identified
`
`as producing obviousness.”) (citation omitted).
`
`The Declaration of Dr. Sumit Roy4 (Ex. 1002, “Roy”) and other evidence cited
`
`therein and in the Exhibit List further support this Petition.
`
`
`4 Dr. Roy’s declaration is identical to his declaration in the Qualcomm IPR. See Roy
`¶ 1.
`
`- 6 -
`
`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`IV. THE BOARD SHOULD NOT DENY
`DISCRETIONARY REASONS
`Section 325 does not apply because the Qualcomm IPR, which raised prior art
`
`INSTITUTION FOR
`
`not cited or considered during prosecution to support entirely new arguments, and
`
`5
`
`Petitioner’s challenge is substantively identical to it. See Celltrion, Inc. v.
`
`Genentech, Inc., IPR2018-01019, Paper 11 at 7, 11-13 (P.T.A.B. Oct. 30, 2018)
`
`(declining to exercise discretion under § 325 with respect to a “copycat” petition “for
`
`the same reasons stated in our Institution Decision in the [original] IPR,” and further
`
`observing that “[Petitioner] filed a concurrent motion to join the [original] IPR,
`
`10
`
`effectively obviating any concerns of serial harassment and unnecessary expenditure
`
`of resources.”).
`
`Section 314 likewise does not support denial. This is the first petition
`
`Petitioner filed challenging any claim of the ’096 patent. Cf. Apple Inc. v. Uniloc
`
`2017 LLC, IPR2020-00854, Paper 9 at 8 (P.T.A.B. Oct. 28, 2020) (exercising
`
`15
`
`discretion under § 314 and denying institution with respect to follow-on petition
`
`where the petitioner had previously filed a petition that the Board declined to
`
`institute). Although Section 314 gives the Director discretion regarding IPR
`
`petitions, it does not appear to give the Director unfettered discretion to deny an
`
`otherwise meritorious petition. Further, although Petitioner is a defendant in one
`
`20
`
`action, UNM Rainforest Innovations v. ZyXEL Communications Corporation, No.
`
`6-20-cv-00522 (WDTX) (W.D. Tex.) (“the ZyXEL litigation”), the factors set out in
`
`- 7 -
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`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`Apple, Inc. v. Fintiv, Inc., Paper 11, IPR2020-00019 (PTAB Mar. 20, 2020)
`
`(precedential), favor proceeding with this Petition.
`
`Fintiv factor 1, likelihood of a stay. The district court has not granted a stay
`
`pending IPR in any of the parallel litigations, and Petitioner is not aware of grounds
`
`5
`
`for one in those litigations. Absent specific evidence regarding a potential stay based
`
`upon an IPR, the Board “will not attempt to predict” how the court will proceed.
`
`Sand Revolution II, LLC v. Cont’l Intermodal Group-Trucking LLC, IPR2019-
`
`01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (Ex. 1016). This factor is
`
`neutral. Id.
`
`10
`
`Fintiv factor 2, trial date proximity to Final Written Decision (FWD). The
`
`FWD will issue before the trial date in the ZyXEL case (April 4, 2022). The Court
`
`has not yet set a trial date in either the D-Link case or the TP-Link case, and, therefore
`
`trials in those cases are highly likely to be set later than the latest of the currently set
`
`trial dates in the other cases before the same court (April 4, 2022 in ZyXEL) that are
`
`15
`
`further along procedurally, which means that the FWD should issue before trial in
`
`D-Link and TP-Link. Although the scheduled trial dates in the Dell case (November
`
`8, 2021) and the ASUSTek case (January 3, 2022) are ostensibly before the expected
`
`FWD date, the Board has recognized that trial dates are often amended and
`
`continued, particularly as the calendared dates approach. Sand Revolution, Paper 24
`
`20
`
`at 9 (uncertainty of expected trial date weighed against exercising discretion to deny
`
`- 8 -
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`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`institution). A trial date that is a year away is inherently uncertain. Cf. In re Apple
`
`Inc., No. 2020-135, 2020 WL 6554063, at *8 n.5 (Fed. Cir. Nov. 9, 2020) (noting,
`
`in the transfer analysis context, that the time to trial factor “frequently calls for
`
`speculation” because “scheduled trial dates are often subject to change”). Across all
`
`5
`
`districts, the average trial delay is three months, and “[i]n the WDTX, 70% of trial
`
`dates initially relied upon by the PTAB to deny petitions have slid.” Ex. 1028. The
`
`Western District of Texas did not conduct any trials for several months after the
`
`COVID-19 pandemic, and recently postponed civil jury trials through April 30,
`
`2021. See Fourteenth Supplemental Order Regarding Court Operations Under the
`
`10
`
`Exigent Circumstances Created by the COVID-19 Pandemic (W.D. Tex. Mar. 17,
`
`2021) (Ex. 1007). The continuing uncertainty created by the pandemic and current
`
`backup of cases, including criminal cases that will take priority over civil cases when
`
`trials resume, creates significant uncertainty about trial dates in later cases. This
`
`factor is, therefore, at worst, neutral.
`
`15
`
`Fintiv factor 3, investment in the parallel proceedings. The “Investment in
`
`the Parallel Proceeding by the Court and the Parties” (Fintiv at 10) weighs heavily
`
`against denial. The ZyXel litigation is at an early stage. The Court has summarily
`
`denied ZyXEL’s motion to dismiss for lack of standing, which did not concern the
`
`validity or infringement of the ‘096 patent. Analogously, in Dish Network LLC v.
`
`20
`
`Broadband iTV, IPR2020-01267, the PTAB instituted IPR where, in a parallel case,
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`- 9 -
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`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`the Court had denied a motion to dismiss under 35 U.S.C § 101 and did not provide
`
`analysis of challenged claims or subject matter eligibility. Id., Paper 15 at p. 19. In
`
`addition, the Court has set a Markman hearing for May 13, 2021, and neither the
`
`claim construction process nor fact discovery has begun yet. The court issued a
`
`5
`
`three-page Markman order (Ex. 1005) in the prior Apple litigation that had no
`
`substantive analysis. Sand Revolution at 10-11 (two-page Markman Order did not
`
`demonstrate a high level of investment of time and resources). The parties in Dell
`
`and ASUSTek have stipulated to the Court’s previous claim constructions on all
`
`terms of the ‘096 patent and have adopted positions identical to those advanced by
`
`10
`
`the parties in the Apple case. Dell ECF No. 49, pp. 2-3; ASUSTek ECF No. 27, pp.
`
`2-3. The Court has not conducted Markman hearings in any other cases regarding
`
`the ‘096 patent and largely has been dealing with procedural motions unrelated to
`
`matters of claim construction, validity, or infringement of the ‘096 patent. Petitioner
`
`filed this Petition expeditiously, substantially before the one-year bar date. Fintiv at
`
`15
`
`11. This factor weighs against discretionary denial.
`
`Fintiv factor 4, overlap of issues. The invalidity grounds, arguments, and
`
`evidence presented in this Petition will be different than those presented in the
`
`litigations. This Petition challenges claims (claims 2 and 13), which are not asserted
`
`in any of the litigations. Further, ZyXEL will stipulate in the ZyXEL litigation, prior
`
`20
`
`to any trial, that if the Board institutes IPR of the challenged claims in this Petition,
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`

`

`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`ZyXEL will not pursue invalidity of the challenged claims on the same grounds or
`
`even the same references at issue in this Petition. This mitigates concerns of
`
`duplicated efforts and conflicting decisions. See VMware, Inc. v. Intellectual
`
`Ventures I LLC, IPR2020-00470, Paper 13 at 20 (PTAB Aug. 18, 2020) (finding
`
`5
`
`similar stipulation “mitigates any concerns of duplicative efforts between the district
`
`court and the Board, as well as concerns of potentially conflicting decisions”). This
`
`factor weighs against discretionary denial.
`
`Fintiv factor 5, whether petitioner and defendant are the same. This factor
`
`weighs against discretionary denial. Even though the petitioner is the same party as
`
`10
`
`the defendant in the ZyXEL litigation, this petition is substantively identical to
`
`Qualcomm IPR where the petitioner is not a defendant in any of the litigations.
`
`Fintiv, IPR2020-00019, Paper 11 at 13 (considering “whether the petitioner and the
`
`defendant in the parallel proceeding are the same party”). This factor therefore
`
`weighs against denial.
`
`15
`
`Fintiv factor 6. The “other circumstances that impact the Board’s exercise of
`
`discretion, including the merits” (Fintiv, IPR2020-00019, Paper 11 at 6, 14-15)
`
`heavily favor institution, because the grounds raised are particularly strong: the prior
`
`art demonstrates unpatentability based on references not considered by the Examiner
`
`that would have been combined by skilled artisans as asserted. Finally, this Petition
`
`20
`
`is substantively identical to the Qualcomm IPR, and does not raise any grounds for
`
`- 11 -
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`

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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
`
`invalidity that are not raised there. These circumstances weigh against discretionary
`
`denial.
`
`The Fintiv factors, viewed holistically, demonstrate that instituting review
`
`would promote efficiency and integrity of the system. Fintiv, IPR2020-00019, Paper
`
`5
`
`11 at 6. Discretionary denial under § 314 is not appropriate.
`
`V. OVERVIEW OF THE ’096 PATENT
`From the 1990s into the early 2000s, the popularity of wireless cellular
`
`communication systems and wired broadband communication systems grew
`
`exponentially. Both systems were widely adopted, but they were distinct.
`
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`A. Background: History of Broadband Wireless and the IEEE 802.16
`WiMAX Standards
`From the 1990s into the early 2000s, the popularity of wireless cellular
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`communication systems and wired broadband communication systems grew
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`exponentially. Both systems were widely adopted, but they were distinct.
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`Cellular wireless systems typically included a number of mobile stations (e.g.,
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`cellular telephones) and fixed base stations that communicated wirelessly with the
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`mobile stations. Roy ¶ 52. Base stations received communications from mobile
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`stations and helped route the communications to intended destinations, which could
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`be telephones on the public wired telephone network or other mobile stations on a
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`network like the Internet. Cellular wireless systems allowed users to stay connected
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`even while moving and were used primarily for voice calls and low-bitrate
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`applications. Roy ¶ 54. Broadband systems, on the other hand, typically involved
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`user equipment with more computational power (e.g., personal computers)
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`connected over a wireline medium to the Internet or a local network. Id. Broadband
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`systems provided users with significantly higher bandwidth than wireless systems
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`and facilitated data-heavy applications like Internet browsing, file downloading, and
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`media streaming.
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`In 1998, the Institute of Electrical and Electronics Engineers (IEEE) formed
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`the 802.16 group, which sought to combine broadband-level service with wireless
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`techniques in the “WiMAX” standard. Roy ¶ 63. The group released a first 802.16
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`standard in 2001 and established the WiMAX Forum to promote certification efforts.
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`Id. ¶¶ 63-65. In 2003, the group amended the standard to add support for multipath
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`environments, where the signal arriving at a receiver contained reflected radio waves
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`arriving via different paths. Id. ¶¶ 63-64. The air interface for 802.16 was based on
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`orthogonal frequency division multiplexing (OFDM) techniques, which allowed a
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`transmission to be sent over a large frequency bandwidth divided into multiple
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`overlapping but orthogonal sub-carrier frequencies (often called “subcarriers”). Id.
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`¶¶ 71-73. At the time, OFDM was the dominant technique for handling broadband
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`multipath scenarios. Id. ¶ 71.
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`But broadband wireless still could not provide the high-throughput data rates
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`of traditional broadband services. Roy ¶ 54, 58. The 802.16 group understood that
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`adoption of broadband wireless would depend largely on their ability to differentiate
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`it based on features such as portability and mobility, which traditional broadband
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`could not offer. Id. The group thus began work on revisions to the 802.16 standard
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`that were focused on providing mobility support. Id.
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`The first 802.16 revision that included mobility support was published in 2005
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`as 802.16(e). Roy ¶ 64. The 802.16(e) revision defined a mobile system profile
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`(called “Mobile WiMAX”) that used OFDM to support user equipment moving at
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`up to vehicular speeds. Id. The 802.16(e) revision also used orthogonal frequency
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`division multiple access (OFDMA)—a
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`technique
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`that allowed sub-carrier
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`frequencies to be allocated among multiple users—to scale the data rate based on
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`the available channel bandwidth. Roy ¶¶ 75-76.
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`The 802.16(e) revision specified a default frame structure for data
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`transmissions:
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`Ex. 1005 (“Fundamentals of WiMAX”) at 45; Roy ¶ 68. As shown above, an 802.16
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`frame included downlink (DL) subframes, which were used for communications
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`from the base station to mobile stations, and uplink (UL) subframes, which were
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`used for communications from mobile stations to the base station. Id. ¶¶ 68-69. The
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`downlink subframe began with a preamble that included information used for time
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`and frequency synchronization and channel estimation. Id. A frame control header
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`(FCH) and downlink and uplink MAP messages (DL-MAP, UL-MAP) followed. Id.
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`The FCH provided frame configuration information such as the length of the MAP
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`messages, the modulation and coding schemes used for the frame data, and the
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`usable subcarriers. Id. The DL-MAP and UL-MAP messages specified which data
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`regions within the frame were allocated to which users, as well as data modulation
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`and coding schemes. Id.
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`Mobility support created implementation challenges, particularly for OFDM
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`systems. Faster-moving user devices experienced frequently-changing channel
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`conditions, Doppler spreads, and higher levels of interference between OFDM
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`subcarriers. Roy ¶ 81. Wireless systems typically used “pilot” symbols—symbols
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`with a known value and format, transmitted at known intervals—to perform channel
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`estimation, which helped compensate for these issues. Id. But devices traveling at
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`vehicular speeds did not always receive pilot symbols frequently enough for channel
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`estimation purposes.
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`In 2006, the 802.16 group began developing another mobility-focused
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`revision, 802.16(m), which supported higher data rates for mobility scenarios and
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`improved the levels and quality of service of cell coverage. Roy ¶ 66. During
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`development, the 802.16 group specified that 802.16(m) would also support legacy
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`802.16(e) systems. Id. The 802.16(m) revision was released in 2011. Id.
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`Thus, by the mid-2000s—well before the ’096 patent—providing mobility
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`support in broadband wireless systems was a known goal. The IEEE had identified
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`mobility as a key objective for broadband wireless systems in the 802.16(e) standard,
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`which it released in 2005. The 802.16(m) standard, begun in 2006, extended mobility
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`support in a manner consistent with cellular standards. Implementation-level details
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`were left to equipment manufacturers and telecommunications providers to develop
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`more fully.
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`B.
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`The ’096 Patent Discloses Constructing a Frame Structure to
`Provide Compatibility between 802.16 Systems with Mobility
`Support
`Consistent with these industry efforts, the named inventors of the ’096 patent
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`described a frame structure for 802.16 systems that provided enhanced mobility
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`support. The ’096 patent recognizes the default frame structure defined by the 802.16
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`standard as prior art:
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`’096 patent, Fig. 1; id. at 1:28-31, 1:36-37. As discussed above (supra at 11-13), an
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`802.16 frame included a downlink subframe and an uplink subframe (subframes 16
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`and 18, respectively, in Figure 1). ’096 patent at 1:37-39. The downlink subframe
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`included sections for user data (DATA 14-1) and non-data information (preamble
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`10-1, FCH 11, and DL-MAP 12). Id. at 1:46-49.
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`The ’096 patent observes that 802.16(m), which was under development when
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`the ’096 patent application was filed, would require “full backward compatibility
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`with the legacy system defined in the IEEE Standard 802.16e” and provide “higher
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`speed tolerance” than 802.16(e). Id. at 1:30-35; supra, § IV(A). The patent proposes
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`an amended frame structure that addresses these compatibility and mobility
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`requirements.
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`To address backward compatibility, the patent calls for splitting the downlink
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`and uplink subframes into two zones: a first zone containing data formatted for a
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`first system (e.g., a user device compliant with 802.16(e)), and a second zone
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`containing data formatted for a second system (e.g., an 802.16(m) device):
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`Petition for Inter Partes Review of ’096 Patent (IPR2021-00734)
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`Id., Fig. 3 (downlink Zones 1 and 2 (30-1, 30-2), uplink Zones 1 and 2 (34-1, 34-2));
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`id. at 4:21-67. The frame retains the standard non-data portions of the 802.16 format,
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`including the preamble, FCH, and DL-MAP. Id., Fig. 3 (preamble 10-11, FCH 11,
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`DL-MAP 12); id. at 4:40-46, 4:57-67; Roy ¶ 84.
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`To address mobility support, the ’096 patent describes creating a zone for the
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`second system with a modified symbol structure. ’096 patent, Fig. 4 & 5:1-16. The
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`patent observes that shortening the duration of symbols could improve mobility
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`scenarios, because “a shorter symbol period may be more robust to inter-symbol
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`interference” experienced by faster-moving devices. Id. at 5:16-17. Alternatively,
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`increasing the density of pilot symbols could improve mobility support because
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`“denser pilot symbols may achieve better channel estimation accuracy.” Id. at 5:17-
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`18. The patent th