UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
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`PTAB Case No. IPR2021-00734
`Patent No. 8,265,096 B2
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`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
`CLAIMS 1-4 AND 6-8
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`

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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`RELATED PROCEEDINGS .......................................................................... 2
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`I.
`
`II.
`
`III. UNM BACKGROUND ................................................................................... 2
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`IV. THE BOARD SHOULD DENY INSTITUTION UNDER § 314(a). ............ 4
`
`A.
`
`B.
`
`C.
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`ZyXEL’s In Rem Petition Is Not Authorized Under 35 U.S.C. 311(A). ... 5
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`All of the Fintiv Factors Favor Denial of Institution. ................................ 7
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`Efficiency and Integrity of the System Are Best Served by Denying
`Institution. .................................................................................................11
`
`V.
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`THE ’096 PATENT .......................................................................................13
`
`A.
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`B.
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`Technical Background ..............................................................................13
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`The Challenged Claims ............................................................................14
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`1. Claim 1 ...............................................................................................14
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`2. Claim 2 ...............................................................................................15
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`3. Claim 3 ...............................................................................................15
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`4. Claim 4 ...............................................................................................15
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`5. Claim 6 ...............................................................................................15
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`6. Claim 7 ...............................................................................................15
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`7. Claim 8 ...............................................................................................16
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`8. Prosecution History ............................................................................16
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`C.
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`Priority Date – Based on Provisional Application dated 2007/07/11 ......17
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`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................17
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`
`i
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`

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`VII. PATENT OWNER’S CLAIM CONSTRUCTIONS ....................................18
`
`A.
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`Claim Construction Order in UNM Rainforest Innovations v.
`Apple Inc., No. 1-20-cv-00351 (W.D. Tex.) ............................................18
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`VIII. THE ASSERTED PRIOR ART ....................................................................19
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`A.
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`B.
`
`C.
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`Talukdar (EX1012) ..................................................................................19
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`Li (EX1016) ..............................................................................................22
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`Nystrom (EX1017) ....................................................................................23
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`IX. PETITIONER HAS FAILED TO DEMONSTRATE A
`REASONABLE LIKELIHOOD OF PREVAILING AS TO ANY
`CHALLENGED CLAIM. .............................................................................25
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`A.
`
`B.
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`Talukdar Is Not Prior Art .........................................................................25
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`Ground 1: Claims 1-4, 6, and 7 are not obvious over Talukdar and Li. ..37
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`1. Claim 1 ...............................................................................................37
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`a) 1b: “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” ...........................................37
`b) 1c: “the second format is compatible with the second
`communication system configured to support higher mobility than the
`first communication system” .......................................................................47
`2. Claim 2 ...............................................................................................49
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`3. Claim 3 ...............................................................................................49
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`4. Claim 4 ...............................................................................................50
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`5. Claim 6 ...............................................................................................50
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`6. Claim 7 ...............................................................................................50
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`ii
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`C.
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`Ground 2 – Claim 8 is not obvious over Talukdar and Nystrom. ............50
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`1. Claim 8 ...............................................................................................50
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`a) “the second communication system has pilot symbols that
`are denser than those in the first communication system” ..........................50
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ..............57
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`X.
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`XI. CONCLUSION ..............................................................................................58
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`iii
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`TABLE OF AUTHORITIES
`
`CASES:
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................... 4
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...........................................................................18
`
`
`STATUTES:
`
`35 U.S.C. § 103 .......................................................................................................... 1
`35 U.S.C. § 311 ................................................................................................ passim
`35 U.S.C. § 312 ........................................................................................................11
`
`35 U.S.C. § 314 ............................................................................................. 4, 13, 58
`RULES:
`2011 U.S.C.C.A.N. 69 .............................................................................................12
`OTHER AUTHORITIES:
`H.R. Rep. No. 112-98 ..............................................................................................12
`ADMINISTRATIVE PROCEEDINGS:
`Apple Inc. v. Fintiv, Inc.,
`No. IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ................................... passim
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`No. IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ............................................12
`Intel Corporation v. UNM Rainforest Innovations f/k/a STC.UNM,
`No. IPR2020-01578 (Paper 8) (PTAB Feb. 02, 2021) ........................................1, 58
`
`Intel Corp. v. VLSI Tech., LLC,
`No. IPR2020-00106, Paper 17 at 13 (PTAB May 5, 2020). ..................................... 8
`
`
`iv
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`Mylan Pharms., Inc. v. Bayer Intellectual Property GMBH
`No. IPR2018-01143, Paper 13 (PTAB Dec. 3, 2018) .............................................13
`NetApp, Inc. v. Realtime Data LLC,
`No. IPR2017-01195, Paper 8 (PTAB Oct. 12, 2017) ..............................................12
`
`NetApp, Inc. v. Realtime Data LLC,
`No. IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) ..............................................12
`NHK Spring Co., Ltd v. Intri-Plex Techs., Inc.,
`No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) .............................................12
`Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc.
`No. IPR2020-0921, Paper 9 (PTAB Nov. 16, 2020) ....................................... passim
`
`Qualcomm Incorporated v. UNM Rainforest Innovations,
`No. IPR2021-00377, Paper 2 (Dec. 28, 2020). ........................................................ 1
`
`
`
`
`
`v
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`

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`I.
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`INTRODUCTION
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`Patent Owner UNM Rainforest Innovations (hereinafter “UNM” or “Patent
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`Owner”) respectfully submits this Patent Owner Preliminary Response to the
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`Petition for Inter Partes Review dated Mar. 29, 2021 (“Petition”) of U.S. Patent
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`No. 8,265,096 (EX1001, “’096 patent”) filed by ZyXEL Communications
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`Corporation (“ZyXEL” or “Petitioner”). ZyXEL submitted an effectively verbatim
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`copy of Intel’s IPR2020-01576 (which has already been dismissed), albeit with the
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`signature of a different expert witness. Intel Corporation v. UNM Rainforest
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`Innovations f/k/a STC.UNM, Case IPR2020-01576 (Paper 8) (PTAB Feb. 02,
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`2021) (Termination Decision). Qualcomm Incorporated, has also filed an IPR
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`petition challenging the ’096 Patent. Qualcomm Incorporated v. UNM Rainforest
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`Innovations, IPR2021-00375, Paper 1 (Dec. 28, 2020). ZyXEL filed a motion for
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`joinder with IPR2021-00375. Petitioner asserts that claims 1-4 of the ’096 patent
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`are unpatentable on two grounds based solely on 35 U.S.C. § 103:
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`Ground 1 – Claims 1-4, 6, and 7 are unpatentable as obvious over Talukdar
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`and Li.
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`Ground 2 – Claim 8is unpatentable as obvious over Talukdar and Nystrom.
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`This Preliminary Response is timely filed based on the Board’s Notice Of
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`Filing Date Accorded To Petition And Time For Filing Patent Owner Preliminary
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`Response. See Paper 5.
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`1
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`II. RELATED PROCEEDINGS
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`Related Proceedings are listed in Paper 2, at 2-3.
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`III. UNM BACKGROUND
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`UNM Rainforest Innovations is the economic development and technology
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`transfer organization of The University of New Mexico, the State of New Mexico’s
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`flagship university. EX2005 (Economic Impact Report). In that role, UNM
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`protects and licenses technology owned by the university, including those
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`developed by university researchers. It connects the business community to the
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`university and facilitates the university’s role in the state’s economic development
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`initiatives.1 As a nonprofit corporation formed and owned entirely by the
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`University of New Mexico Board of Regents, UNM significantly contributes to the
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`mission statement of the University of New Mexico.
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`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
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`formation of nearly 160 new startup companies to take those inventions to market.2
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`These startups have created or stimulated the creation of hundreds of New Mexico
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`jobs and tens of millions of dollars in local economic output.3 UNM also
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`1 See https://innovations.unm.edu/about/.
`2 See https://innovations.unm.edu/unm-rainforest-innovations-celebrates-25-years/.
`3 See https://innovations.unm.edu/about/metrics/.
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`2
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`

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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.4
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`Today, UNM is a core component of New Mexico’s innovation ecosystem
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`and an economic driver of high-tech industry. Among its 18 peer institutions
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`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
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`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
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`Technology Research Institute of Taiwan and has offered a license to its patent
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`portfolio relating to wireless technology to ZyXEL, which to date, ZyXEL has
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`refused to consider.
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`4 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 BOARD SHOULD DENY INSTITUTION UNDER § 314(a).
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`The Board should exercise its discretion under 35 U.S.C. § 314(a) to deny
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`ZyXEL’s Petition. First, ZyXEL improperly filed its Petition as an in rem
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`proceeding, in violation of 35 U.S.C. § 311(a), authorizing a person who is not the
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`owner of a patent to “file with the Office a petition to institute an inter partes
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`review of the patent.” ZyXEL’s in rem petition does not satisfy the inter partes
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`requirement. Second, Petitioner concedes that all the claims that are at issue in the
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`UNM Rainforest Innovations v. ZyXEL Communications Corporation, No. 6:20-
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`cv-00522 (W.D. Tex.) (“the ZyXEL Litigation”) are also at issue here. Paper 2, at
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`8. Accordingly, this proceeding would be duplicative of the related district court
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`case involving the same parties and the same patent, and that case will outpace a
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`final written decision in this proceeding.
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`Section 314(a) provides the Director with discretion to deny a petition. See
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`35 U.S.C. § 314(a); Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.”). When considering whether to exercise its discretion not to
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`institute, the circumstances surrounding proceedings “related to the same patent,
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`either at the Office, in the district courts, or the ITC” are considered. See
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`Consolidated Trial Practice Guide (November 2019) at 58. Several factors inform
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`that consideration:
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`4
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`whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`investment in the parallel proceeding by the court and the parties;
`overlap between issues raised in the petition and in the parallel
`proceeding;
`whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
`other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 5-6 (PTAB Mar. 20, 2020)
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`(precedential); Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc., IPR2020-
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`00921, Paper 9, at 14-15 (PTAB Nov. 16, 2020). The Board must then take “a
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`holistic view of whether efficiency and integrity of the system are best served by
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`denying or instituting review.” Fintiv, IPR2020-0019, Paper 11, at 6.
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`Applying the Fintiv analysis to the facts in this instance, ZyXEL’s Petition
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`must be denied.
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`A. ZyXEL’s In Rem Petition Is Not Authorized Under 35 U.S.C.
`311(A).
`
`ZyXEL’s in rem petition violates the explicit requirement of 35 U.S.C.
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`§ 311(a), authorizing a “person who is not the owner of a patent” to “file with the
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`Office a petition to institute an inter partes review of the patent.” ZyXEL’s in rem
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`petition does not satisfy the inter partes requirement.
`
`ZyXEL has not filed this Petition as an inter partes petition, but instead as
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`an in rem proceeding against the patent itself. (Paper 1 at caption). ZyXEL thus
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`5
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`explicitly introduces the issue of patent ownership in this forum—despite having
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`previously unsuccessfully raised it in district court—by filing its Petition
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`effectively as in rem, i.e., against the patent itself, instead of against Patent Owner
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`UNM Rainforest Innovations (“UNM”). This forum is not authorized to adjudicate
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`patent ownership and exploration of this issue in this forum would unquestionably
`
`derail this proceeding. Out of 13,419 original, corrected, or amended petitions for
`
`IPR found on Docket Navigator, ZyXEL’s petitions in this matter and two related
`
`matters are the only instances in which an IPR petition has ever been filed as “in
`
`the patent of,” i.e., as an in rem proceeding against a patent itself, as opposed to the
`
`owner of the patent. ZyXEL’s improper in rem IPR defeats the very purpose of the
`
`inter partes aspect of this reexamination. As a result of this failure, ZyXEL has
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`not met all the necessary prerequisites for institution. 35 U.S.C. § 311(a).
`
`Although ZyXEL has stated that they do not want the PTAB to address
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`patent ownership, by proceeding only against the patent itself, ZyXEL has squarely
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`brought the issue of patent ownership into this IPR, thereby requiring the PTAB to
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`rule on this issue, including addressing the fact that this IPR is fundamentally not
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`an inter partes proceeding. However, the PTAB does not have jurisdiction under
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`the AIA to rule on the issue of patent ownership that has been presented on the
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`very face of the Petition by the Petitioner since it is not a patent validity issue. The
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`AIA is explicit in stating that only grounds related to Sec. 102 or 103 can be raised
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`6
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`in an IPR. 35 U.S.C. § 311(b) (stating that “[a] petitioner in an inter partes review
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`may request to cancel as unpatentable 1 or more claims of a patent only on a
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`ground that could be raised under section 102 or 103 and only on the basis of prior
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`art consisting of patents or printed publications.”) For these reasons alone, this
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`IPR should not be instituted.
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`B. All of the Fintiv Factors Favor Denial of Institution.
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`Regarding Fintiv Factor 1 (likelihood of a stay), no stay has been granted in
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`the related ZyXEL litigation. Per the current Scheduling Order, the ZyXEL
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`litigation is now less than nine months from trial. EX2006. The district Court is
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`therefore likely to reach a final decision well before a final written decision will be
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`reached in this IPR. Although ZyXEL has requested a stay as in the related Dell
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`litigation (UNM Rainforest Innovations v. Dell Technologies Inc. et al., No. 6:20-
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`cv-00468 (W.D. Tex.)), which has been stayed in light of the lawsuit that UNM
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`filed in New Mexico state court to quiet title to the ’326, ’096, and ’204 patents
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`(UNM Rainforest Innovations v. Industrial Technology Research Institute, et al.,
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`case number D-202-CV-2021-02803 in the Second Judicial District Court of
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`Bernalillo County, New Mexico), the defendant Industrial Technology Research
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`Institute has challenged the jurisdiction of the Court over it as a foreign entity. It is
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`therefore possible/likely that this case will be dismissed and the Dell trial resumed
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`in short order. If this occurs even within the next 8 months, it remains likely that
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`7
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`the Dell trial will occur before the final written decision in this matter can be
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`expected. This factor therefore favors denying institution.
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`Regarding Fintiv Factor 2 (trial date proximity), the ZyXEL litigation has
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`not been stayed and the trial is scheduled to begin on Apr. 4, 2022, less than nine
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`months from the writing of this preliminary response. EX2006. An institution
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`decision in this IPR will likely issue just about six months before the scheduled
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`trial. A final written decision would then not issue until Oct. 2022, six months
`
`after a final decision in the ZyXEL litigation. Further, Judge Albright explicitly
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`confirmed in a recent order that his default schedule is much faster than other
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`courts and that “this Court is fully open and equipped to safely conduct jury trials
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`in the COVID-19 pandemic.” Ecofactor, Inc, v. Vivint, Inc., 6-20-cv-00080 (Order
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`dated Apr. 16, 2021) (W.D. Tex.) (Alan D. Albright). Thus, this factor also favors
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`denying institution. See Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc.,
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`IPR2020-00921, Paper 9, at 16 (PTAB Nov. 16, 2020); Intel Corp. v. VLSI Tech.,
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`LLC, IPR2020-00106, Paper 17 at 13 (PTAB May 5, 2020).
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`Regarding Fintiv Factor 3 (investment in the district court action), there has
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`already been substantial activity in the ZyXEL litigation and the Dell litigation that
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`is relevant to the issues of patent validity. Per the Scheduling Order, the parties in
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`the ZyXEL litigation submitted a Joint Claim Construction Statement and have
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`exchanged final infringement and invalidity contentions. See EX2006. By the
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`8
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`time an institution decision issues in this IPR, fact discovery will be nearly closed
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`in the ZyXEL litigation. Id. This factor therefore favors denying institution.
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`Regarding Fintiv Factor 4 (overlap of issues), there is a substantial overlap
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`between the issues of invalidity presented in this IPR and the ZyXEL litigation.
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`ZyXEL deceptively argues that the issues “will be different” because here ZyXEL
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`“challenges claims … which are not asserted” in the ZyXel litigation. Paper 1 at
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`11. However, ZyXEL is indeed challenging all the claims asserted in the ZyXEL
`
`litigation in this IPR. Thus, there is a 100% overlap with the district court
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`independent claims. ZyXEL also argues that Factor 4 favors institution because it
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`has stipulated that it “will not pursue invalidity of the challenged claims on the
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`same grounds or even the same references at issue in this Petition.” Paper 1 at 11.
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`However, that narrow stipulation does not eliminate the possibility that
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`substantially similar art and arguments will be raised in the ZyXEL litigation. See
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`Philip Morris, IPR2020-00921, Paper 9, at 19 (considering Petitioner stipulation
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`that “it will not pursue any IPR grounds in the EDVA case if the Board institutes”).
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`This factor therefore strongly favors denying institution.
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`Regarding Fintiv Factor 5 (whether petitioner and defendant are the same),
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`Petitioner ZyXEL is the same party as in the related ZyXEL litigation. ZyXEL
`
`does not explain or provide support for its argument that this factor should be
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`9
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`discounted merely because other parties are also litigants in district court. This
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`factor therefore favors denying institution.
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`Regarding Fintiv Factor 6 (other circumstances), Patent Owner submits that
`
`for the reasons detailed herein, ZyXEL’s grounds are not strong on the merits.
`
`Further, ZyXEL’s petition relies primarily on the Talukdar reference (EX1012)
`
`which does not predate the priority date of the ’096 patent. Although Talukdar
`
`derives priority from its provisional application No. 60/956,031, filed on Aug. 15,
`
`2007, that priority date 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 ’096 patent at all, and
`
`UNM has offered uncontroverted expert testimony that the challenged claims of
`
`the ’096 patent are fully supported by its provisional application.
`
`In addition, ZyXEL has not filed this petition as an inter partes petition, but
`
`instead as an in rem proceeding against the patent itself. ZyXEL thus explicitly
`
`introduces the issue of patent ownership in this forum—despite having previously
`
`unsuccessfully raised it in district court—by filing its Petition effectively as in rem,
`
`i.e., against the patent itself, instead of against Patent Owner UNM Rainforest
`
`Innovations (“UNM”). This forum is not authorized to adjudicate patent
`
`ownership and exploration of this issue in this forum would unquestionably derail
`
`this proceeding. Out of 13,419 original, corrected, or amended petitions for IPR
`
`10
`
`

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`found on Docket Navigator, ZyXEL’s petitions in this matter and two related
`
`matters are the only instances in which an IPR petition has ever been filed as “in
`
`the patent of,” i.e., as an in rem proceeding against a patent itself, as opposed to the
`
`owner of the patent. ZyXEL’s improper in rem IPR defeats the very purpose of the
`
`inter partes aspect of this reexamination. As a result of this failure, ZyXEL has
`
`not met all the necessary prerequisites for institution. 35 U.S.C. § 312(a).
`
`Accordingly, ZyXEL’s Petition must be denied as fatally defective procedurally.
`
`This factor therefore favors denying institution.
`
`Thus, all of the Fintiv factors favor discretionary denial in this case.
`
`C. Efficiency and Integrity of the System Are Best Served by Denying
`Institution.
`
`“In general, an anticipated district court trial date substantially in advance of
`
`a projected statutory deadline for the Board to issue a final decision increases the
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`likelihood that the district court will reach a determination of the parties’ dispute as
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`to the validity of the challenged claims before the Board will. Under such
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`circumstances, the application of Office policy has often resulted in the denial of
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`institution.” Philip Morris Prod., S.A. v. RAI Strategic Holdings, Inc., IPR2020-
`
`00921, Paper 9, at 28 (PTAB Nov. 16, 2020) (citations omitted).
`
`Here, there are no factors that favor institution. The petition is weak on the
`
`merits and the primary alleged prior art reference (Talukdar) is not prior art at all
`
`because it does not predate the priority date of the challenged claims. Even if the
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`11
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`

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`merits of the asserted grounds were to favor institution, “the efficiency and
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`integrity of the system … taking into account the consistent application of Office
`
`policy” requires that institution be denied. Id., at 28-29; see also NHK Spring Co.,
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`Ltd v. Intri-Plex Techs., Inc., Case IPR2018-00752, Paper 8, at 19-20 (PTAB Sept.
`
`12, 2018); NetApp, Inc. v. Realtime Data LLC, Case IPR2017-01195, Paper 9, at
`
`12-13 (PTAB Oct. 12, 2017). UNMRI is a university institution that protects and
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`licenses the University of New Mexico’s technology and, as ZyXEL admits,
`
`UNMRI has not asserted any patents against ZyXEL. The patent system is not
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`advanced by allowing a large, non-defendant to attack the valuable intellectual
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`property owned by a sovereign institution of higher learning.
`
`Finally, the AIA was designed to “limit unnecessary and counterproductive
`
`litigation costs.” H.R. Rep. No. 112-98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 69,
`
`69; Consolidated Trial Practice Guide at 56. Given the substantial overlap between
`
`the district court action and this IPR, this proceeding is not an effective and
`
`appropriate use of the Board’s resources and is contrary to the AIA’s overall goal
`
`to “make the patent system more efficient by the use of post-grant review
`
`proceedings.” See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`Case IPR2016-01357, Paper 19, at 16-17 (PTAB Sept. 6, 2017) (precedential).
`
`IPRs are not a tool to delay prosecution for infringement. Thus, institution is not
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`justified. NHK Spring, Paper 8, at 19-20; NetApp, Paper 8, at 12-13; see also
`
`12
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`

`

`Mylan Pharms., Inc. v. Bayer Intellectual Property GMBH, Case IPR2018-01143,
`
`Paper 13, at 12-14 (PTAB Dec. 3, 2018).
`
`Accordingly, the Board should deny to institute institution under § 314(a).
`
`V. THE ’096 PATENT
`A. Technical Background
`
`Dr. Vojcic provides a short explanation of the technical background of the
`
`’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).
`“Referring to FIG. 2, upper and lower frequency bands may serve as
`48.
`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
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`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
`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.
`The Challenged Claims
`B.
`
`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;
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`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:
`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.
`Claim 2
`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.
`Claim 3
`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.
`Claim 4
`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.
`Claim 6
`5.
`
`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.
`Claim 7
`6.
`
`7. The method of claim 1, wherein the second section carries mapping
`information for data in the second section.
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`7.
`
`Claim 8
`
`8. A method of construct