`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.,
`
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`
`Patent Owner.
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,416,862
`
`Case No. IPR2022-00048
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 1
`
`A.
`
`Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 1
`
`B.
`
`C.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................... 3
`
`D.
`
`Service Information ............................................................................... 4
`
`III.
`
`Payment of Fees Under 37 C.F.R. § 42.103 .................................................... 4
`
`IV. Requirements for IPR Under 37 C.F.R. § 42.104 ........................................... 4
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 4
`
`B.
`
`Challenge under 37 C.F.R. § 42.104(b) and Relief Requested ............. 4
`
`V.
`
`Summary of the ’862 Patent ............................................................................ 5
`
`A.
`
`Brief Description ................................................................................... 5
`
`B.
`
`C.
`
`Prosecution History ............................................................................... 7
`
`Critical Date .......................................................................................... 7
`
`D.
`
`POSITA Definition................................................................................ 8
`
`VI. Claim Construction Under 37 C.F.R. § 42.104(B)(3) ..................................... 8
`
`A.
`
`“a baseband processing module operable to…”.................................... 9
`
`B.
`
`“decompose the estimated transmitter beamforming unitary matrix
`(V) to produce the transmitter beamforming information” .................10
`
`VII. Ground 1: Claims 1-4, 7-12, 15-18 are Obvious in View of Li-748, Tong,
`and Mao ....................................................................................................................11
`
`A. Overview of Li-748 .............................................................................11
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`B.
`
`C.
`
`Overview of Tong ...............................................................................14
`
`Overview of Mao .................................................................................18
`
`D. Obviousness in view of Li-748, Tong, and Mao .................................19
`
`VIII. Ground 2: Claims 1-4, 7-12, 15-18 are Obvious over Tong and Mao ..........35
`
`IX. Ground 3: Claims 1, 3-4, 7-9, 11-12, 15-18 are Obvious Over Li-054 and
`Mao 44
`
`A. Overview of Li-054 .............................................................................44
`
`B.
`
`Obviousness in view of Li-054 and Mao ............................................47
`
`X. Ground 4: Claims 2, 10 are Obvious in view of Li-054, Mao, and Yang .....55
`
`A. Overview of Yang ...............................................................................55
`
`B.
`
`Obviousness in view of Li-054, Mao, and Yang ................................56
`
`XI. Ground 5: Claims 1, 3-4, 7-9, 11-12, 15-18 are Obvious in view of Poon and
`Mao 58
`
`A. Overview of Poon ................................................................................58
`
`B.
`
`Obviousness in view of Poon and Mao ...............................................59
`
`XII. The Board Should Consider the Petition on the Merits and Not Exercise its
`Discretion to Deny Institution ..................................................................................68
`
`A.
`
`B.
`
`C.
`
`The General Plastic Factors Weigh Against Exercising Discretion
`to Deny Institution ...............................................................................68
`
`The Fintiv Factors Weigh Against Exercising Discretion To Deny
`Institution .............................................................................................71
`
`The Becton, Dickinson Factors Weigh Against Exercising
`Discretion To Deny Institution ............................................................76
`
`XIII. Conclusion .....................................................................................................77
`
`
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`
`
`Exhibit
`
`EXHIBIT LIST
`
`
`Description
`
`1001 U.S. Pat. No. 8,416,862 to Aldana et al. (“the ’862 patent”)
`
`1002 Prosecution History of the ’862 patent (Serial No. 11/237,341)
`
`10031 Declaration of Jonathan Wells, Ph.D.
`
`1004 U.S. Pat. No. 7,236,748 to Li et al. (“Li-748”)
`
`1005 U.S. Pub. No. 2008/0108310 to Tong et al. (“Tong”)
`
`1006 U.S. Pat. No. 7,312,750 to Mao et al. (“Mao”)
`
`1007 U.S. Pub. No. 2006/0092054 to Li et al. (“Li-054”)
`
`1008
`
`Yang et al., Reducing the Computations of the Singular Value
`Decomposition Array Given by Brent and Luk, SIAM J. MATRIX
`ANAL. APPL., Vol. 12, No. 4, pp. 713-725, Oct. 1991 (“Yang”)
`
`1009 U.S. Pat. No. 7,710,925 to Poon (“Poon”)
`
`1010
`
`U.S. Provisional Application Serial No. 60/673,451 (“’451
`provisional”)
`
`1011
`
`U.S. Provisional Application Serial No. 60/698,686 (“’686
`provisional”)
`
`1012
`
`U.S. Provisional Application Serial No. 60/614,621 (“’621
`Provisional”)
`
`
`1 Exhibit 1003 contains a verbatim copy of the Declaration of Jonathan Wells
`
`submitted on behalf of Petitioner Apple Inc. in support of their Petition for Inter
`
`Partes Review of the 8,416,862 patent in IPR2021-01590 (the “Apple Petition”).
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`Patent 8,416,862
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`
`
`Exhibit
`
`Description
`
`1013
`
`U.S. Provisional Application Serial No. 60/619,461 (“’461
`Provisional”)
`
`1014 U.S. Patent Application Serial No. 11/168,793 (“’793 application”)
`
`1015
`
`Plaintiff Bell Northern Research, LLC’s Patent Rule 3-1 and 3-2
`Disclosure of Asserted Claims and Infringement Contentions Against
`the Huawei Defendants in Bell Northern Research, LLC, v. Huawei
`Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co., Ltd.,
`and Huawei Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`1016
`
`Defendants’ Invalidity Contentions in Bell Northern Research, LLC, v.
`Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co.,
`Ltd., and Huawei Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`1017
`
`1018
`
`1019
`
`1020
`
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei
`Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case No.
`3:18-cv-1784) (S.D.Cal.)
`
`Plaintiff’s Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei
`Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case No.
`3:18-cv-1784) (S.D.Cal.)
`
`Defendants’ Memorandum of Points and Authorities in Support of
`Their Joint Motion for Summary Judgment on Indefiniteness in Bell
`Northern Research, LLC, v. Huawei Device (Dongguan) Co., Ltd.,
`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc.
`(Case No. 3:18-cv-1784) (S.D.Cal.)
`
`Transcript of Claim Construction Hearing, Day Two, Volume Two,
`Pages 1-122 in Bell Northern Research, LLC, v. Huawei Technologies
`CO., LTD., Huawei Device (Hong Kong) CO., LTD., and Huawei
`Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`1021 Declaration of Jacob Munford
`
`
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`LISTING OF CHALLENGED CLAIMS
`
`Claim Limitation
`
`[1.P]
`
`[1.a]
`
`[1.b]
`
`[1.c]
`
`[1.d]
`
`[1.e]
`
`[2]
`
`A method for feeding back transmitter beamforming information from
`a receiving wireless communication device to a transmitting wireless
`communication device, the method comprising:
`
`the receiving wireless communication device receiving a preamble
`sequence from the transmitting wireless device;
`
`the receiving wireless device estimating a channel response based
`upon the preamble sequence;
`
`the receiving wireless device determining an estimated transmitter
`beamforming unitary matrix (V) based upon the channel response and a
`receiver beamforming unitary matrix (U);
`
`the receiving wireless device decomposing the estimated transmitter
`beamforming unitary matrix (V) to produce the transmitter
`beamforming information; and
`
`the receiving wireless device wirelessly sending the transmitter
`beamforming information to the transmitting wireless device.
`
`The method of claim 1 wherein the receiving wireless device
`determining an estimated transmitter beamforming unitary matrix (V)
`based upon the channel response and a receiver beamforming unitary
`matrix (U) comprises: the receiving wireless device producing the
`estimated transmitter beamforming unitary matrix (V) in Cartesian
`coordinates; and the receiving wireless device converting the
`estimated transmitter beamforming unitary matrix (V) to polar
`coordinates.
`
`[3]
`
`The method of claim 1 wherein the channel response (H), estimated
`transmitter beamforming unitary matrix (V), and the receiver
`beamforming unitary matrix (U) are related by the equation:
`H=UDV* where, D is a diagonal matrix.
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`Claim Limitation
`
`[4]
`
`[7]
`
`[8]
`
`The method of claim 3, wherein the receiving wireless device
`determining an estimated transmitter beamforming unitary matrix (V)
`based upon the channel response and a receiver beamforming unitary
`matrix (U) comprises performing a Singular Value Decomposition
`(SVD) operation.
`
`The method of claim 1, wherein: the transmitting wireless device
`transmits on N antennas; and the receiving wireless device receives
`on M antennas.
`
`The method of claim 1, wherein at least one of the transmitting
`wireless device and the receiving wireless device supports Multiple
`Input Multiple Output (MIMO) operations.
`
`[9.P]
`
`A wireless communication device, comprising:
`
`[9.a]
`
`a plurality of Radio Frequency (RF) components operable to receive
`an RF signal and to convert the RF signal to a baseband signal; and
`
`[9.b]
`
`a baseband processing module operable to:
`
`[9.c]
`
`receive a preamble sequence carried by the baseband signal;
`
`[9.d]
`
`estimate a channel response based upon the preamble sequence;
`
`[9.e]
`
`[9.f]
`
`[9.g]
`
`determine an estimated transmitter beamforming unitary
`matrix (V) based upon the channel response and a receiver
`beamforming unitary matrix (U);
`
`decompose the estimated transmitter beamforming unitary
`matrix (V) to produce the transmitter beamforming
`information; and
`
`form a baseband signal employed by the plurality of RF components
`to wirelessly send the transmitter beamforming information to the
`transmitting wireless device.
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`
`
`Claim Limitation
`
`[10]
`
`[11]
`
`[12]
`
`[15]
`
`[16]
`
`The wireless communication device of claim 9, wherein in determining
`an estimated transmitter beamforming unitary matrix (V) based upon
`the channel response and a receiver beamforming unitary matrix (U),
`the baseband processing module is operable to: produce the estimated
`transmitter beamforming unitary matrix (V) in Cartesian coordinates;
`and convert the estimated transmitter beamforming unitary matrix (V)
`to polar coordinates.
`
`The wireless communication device of claim 9, wherein the channel
`response (H), estimated transmitter beamforming unitary matrix (V),
`and the receiver beamforming unitary matrix (U) are related by the
`equation: H=UDV* where, D is a diagonal matrix.
`
`The wireless communication device of claim 9, wherein in
`determining the estimated transmitter beamforming unitary matrix
`(V) based upon the channel response and the receiver beamforming
`unitary matrix (U), the baseband processing module performs
`Singular Value Decomposition (SVD) operations.
`
`The wireless communication device of claim 10, wherein: the
`transmitting wireless device transmits on N antennas; and the wireless
`communication device includes M antennas.
`
`The wireless communication device of claim 10, wherein the wireless
`communication device supports Multiple Input Multiple Output
`(MIMO) operations.
`
`[17.P] A method for feeding back transmitter beamforming information
`from a receiving wireless communication device to a transmitting
`wireless communication device, the method comprising:
`
`[17.a]
`
`[17.b]
`
`the receiving wireless communication device receiving a preamble
`sequence from the transmitting wireless device;
`
`the receiving wireless device estimating a channel response based upon
`the preamble sequence;
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`
`
`
`
`Claim Limitation
`
`[17.c]
`
`the receiving wireless device decomposing the channel response based
`upon the channel response and a receiver beamforming unitary matrix
`
`(U) to produce an estimated transmitter beamforming unitary matrix
`(V);
`
`[17.d]
`
`the receiving wireless device decomposing the estimated transmitter
`beamforming unitary matrix (V) to produce the transmitter
`beamforming information; and
`
`[17.e]
`
`the receiving wireless device wirelessly sending the transmitter
`beamforming information to the transmitting wireless device.
`
`[18]
`
`The method of claim 17, wherein the receiving wireless device
`decomposing the channel response based upon the channel response
`and a receiver beamforming unitary matrix (U) to produce an estimated
`transmitter beamforming unitary matrix (V) includes performing a
`Singular Value Decomposition (SVD) operation.
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`
`I.
`
`INTRODUCTION
`
`OnePlus Technology (Shenzhen) Co., Ltd. (“OnePlus” or “Petitioner”)
`
`petitions for Inter Partes Review (“IPR”) of claims 1-4, 7-12, and 15-18
`
`(“Challenged Claims”) of U.S. Patent 8,416,862 (“the ’862 patent”). The ’862
`
`patent describes wirelessly “feeding back transmitter beamforming information”
`
`from a receiving device to a transmitting device. EX1001, Abstract. The claims
`
`recite conventional devices and methods at the time of the alleged priority date—
`
`certainly not an innovative achievement. Grounds 1-5 raise prior art combinations
`
`presented in IPR2020-00108 (’108 IPR) filed and instituted with a different
`
`Petitioner against only claims 9-12 but settled before reaching a final written
`
`decision. If these prior art combinations had been before the Office during
`
`examination, the ’862 patent never would have issued. Petitioner requests the
`
`Board institute IPR of the Challenged Claims.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`OnePlus Technology (Shenzhen) Co., Ltd. is the real party-in-interest. No
`
`other parties had access to or control over the present Petition, and no other parties
`
`funded the present Petition.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Bell Northern Research, LLC (“BNR”)—the alleged Patent Owner—filed a
`
`complaint on September 27, 2021 at the U.S. International Trade Commission (Inv.
`
`No. 337-3568) against OnePlus, Lenovo Group Ltd., Lenovo (United States), Inc.,
`
`Motorola Mobility LLC, TCL Electronics Holdings Limited, TCT Mobile (US)
`
`Inc., TTE Technology, Inc., BLU Products, Inc., BBK Electronics Corp., HMD
`
`Global Oy, HMD America, Inc., and Sonim Technologies, Inc., asserting 4 patents,
`
`including the ’862 patent. The investigation is currently pending the Commission’s
`
`decision on institution. BNR also filed a complaint on September 27, 2021 in the
`
`Northern District of Texas (3:21-cv-2293) against OnePlus asserting 11 patents,
`
`including the ’862 patent (“NDTX Case”).
`
`BNR also filed complaints in the Western District of Texas alleging
`
`infringement of the ’862 patent by other parties: Apple Inc. (6:21-cv-833); Lenovo
`
`Group Ltd. et al. (6-21-cv-00847); Dell Technologies Inc. et al. (6-21-cv-00909);
`
`CommScope Holding Company, Inc. et al. (6-21-cv-00941); and HP Inc. (6-21-cv-
`
`00939). OnePlus is not a real party-in-interest to any of these above-listed district
`
`court proceedings. Also, none of the parties in these district court proceedings is a
`
`real party-in-interest in the proceedings involving OnePlus or in privity with
`
`OnePlus.
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`The ’862 patent was also the subject of a number of civil actions in the U.S.
`
`District Court for the Southern District of California against other parties
`
`including: Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co.,
`
`Ltd., and Huawei Device USA, Inc. (3:18-cv-1784); Coolpad Technologies, Inc.
`
`and Yulong Computer Communications (3:18-cv-1783); Kyocera Corporation and
`
`Kyocera International Inc. (3:18-cv-1785); and ZTE Corporation, ZTE (USA) Inc.,
`
`and ZTE (TX) Inc. (3:18-cv-1786). These civil actions have settled. OnePlus was
`
`not a real party-in-interest to any of these above-listed district court proceedings.
`
`Also, none of the parties in these district court proceedings is a real party-in-
`
`interest in the proceedings involving OnePlus or in privity with OnePlus.
`
`Other petitioners have filed IPR proceedings challenging claims of the ’862
`
`patent including: Huawei Technologies Co., Ltd. (IPR2019-01439); ZTE
`
`Corporation et al. (IPR2019-01438); and Samsung Electronics Co., Ltd. (IPR2020-
`
`00611, IPR2020-00613). These IPR proceedings have been terminated. OnePlus
`
`was not a real party-in-interest to these above-listed IPR proceedings. Also, none
`
`of the parties in the earlier IPR proceedings is a real party-in-interest in this
`
`proceeding or in privity with OnePlus.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner provides the following designation of counsel.
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`
`
`Lead Counsel
`Charles M. McMahon, Reg. No. 44,926
`cmcmahon@mwe.com
`MCDERMOTT WILL & EMERY
`444 West Lake Street, Suite 4000
`Chicago, IL 60606
`T: 312-984-7641
`F: 312-984-7700
`
`
`D.
`
`Service Information
`
`Backup Counsel
`Thomas M. DaMario, Reg. No. 77,142
`tdamario@mwe.com
`MCDERMOTT WILL & EMERY
`444 West Lake Street, Suite 4000
`Chicago, IL 60606
`T: 312-984-7527
`F: 312-984-7700
`
`Please address all correspondence to the address above. Petitioner consents
`
`to electronic service by email at OnePlusService@mwe.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`Petitioner authorizes the Office to charge Deposit Account No. 50-0417 for
`
`the petition fee set in 37 C.F.R. §42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’862 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR.
`
`B. Challenge under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests IPR of claims 1-4, 7-12, and 15-18 of the ’862 patent on
`
`the grounds listed below. In support, this petition includes a declaration of
`
`Jonathan Wells, Ph.D. (EX1003).
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`
`
`Ground Claims
`
`Basis for Rejection
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1-4, 7-12, 15-
`
`§103 – Li-748 (EX1004) in view of Tong (EX1005)
`
`18
`
`and Mao (EX1006)
`
`1-4, 7-12, 15-
`
`§103 – Tong in view of Mao
`
`18
`
`1, 3-4, 7-9,
`
`§103 – Li-054 (EX1007) in view of Mao
`
`11-12, 15-18
`
`2, 10
`
`§103 – Li-054 in view of Mao and Yang (EX1008)
`
`1, 3-4, 7-9,
`
`§103 – Poon (EX1009) in view of Mao
`
`11-12, 15-18
`
`
`
`V.
`
`SUMMARY OF THE ’862 PATENT
`
`A. Brief Description
`
`The ’862 patent describes typical wireless transceivers were “coupled to the
`
`antenna” and included a low noise amplifier, and intermediate frequency, filtering,
`
`and data recovery stages. EX1001, 1:60-67; 2:1-10 (conventional conversion of
`
`“the amplified RF signal into baseband signals”). The ’862 patent acknowledges
`
`such transceivers traditionally incorporated beamforming, “a processing technique
`
`to create a focused antenna beam by shifting a signal in time or in phase to provide
`
`gain of the signal in a desired direction to attenuate the signal in other directions.”
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`Id., 2:66-3:4. The ’862 patent explains that “[i]n order for a transmitter to properly
`
`implement beamforming (i.e., determine the beamforming matrix [V]), it needs to
`
`know properties of the channel over which the wireless communication is
`
`conveyed,” so the “receiver must provide feedback information for the transmitter
`
`to determine the properties of the channel.” Id., 3:14-19; EX1003, ¶28. The
`
`receiver may send feedback to the transmitter by “determin[ing] a channel
`
`response (H)” and providing it “as the feedback information.” EX1001, 3:19-22;
`
`EX1003, ¶28. This methodology was known to result in feedback data packs that
`
`were “so large that, during the time it takes to send it to the transmitter, the
`
`response of the channel has changed.” EX1001, 3:22-25. To reduce feedback size,
`
`conventional receivers “decompose[d] the channel using singular value
`
`decomposition (“SVD”) and sen[t] information relating only to a calculated value
`
`of the transmitter’s beamforming matrix (V) as the feedback information.” Id.,
`
`3:26-30; EX1003, ¶28. To reduce feedback size, a conventional practice was for
`
`the receiver to calculate the matrix V based on H=UDV*,2 where H is the channel
`
`
`2 Each of the matrices H, U, D (also referred to as Σ), and V were referred to by
`
`various terminology in the art and the ’862 patent. While the colloquial terms for
`
`each of the matrices might have varied, a POSITA would have understood that
`
`
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`
`
`response matrix, D is a diagonal matrix, and U is a receiver unitary matrix, and
`
`only send information about matrix V. EX1003, 3:30-33; EX1003, ¶28.
`
`According to the ’862 patent, “[w]hile this approach reduces the size of the
`
`feedback information, its size is still an issue for a MIMO wireless
`
`communication.” Id., 3:33-35. The ’862 patent alleged “a need” existed “for
`
`reducing beamforming feedback information for wireless communications” (col.
`
`3:49-51), but this allegation ignored the state of the art at that time. EX1003, ¶28.
`
`B.
`
`Prosecution History
`
`The ’862 patent was filed with 20 claims, which were all rejected as obvious
`
`based on at least US 2002/0187753 (Kim) and US 2004/0042558 to (Hwang)
`
`EX1002, 176-219, 153-164. The original 20 were allowed and issued without
`
`amendment after the after the PTAB reversed these rejections on appeal. Id., 22-
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`46.
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`C. Critical Date
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`The evidence here demonstrates that the Challenged Claims require at least
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`one feature that was never contemplated in the earlier priority ’451 provisional
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`(filed April 21, 2005) or the ’793 application (filed June 28, 2005). EX1003, ¶¶48-
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`they each identified the same respective matrix in this common equation. EX1003,
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`¶¶53-56.
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`50. Specifically, the independent claims require “decompos[ing] the estimated
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`transmitter beamforming unitary matrix (V).” The ’451 provisional and the ’793
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`application are both silent with respect to decomposing matrix V. EX1003, ¶49;
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`see, generally EX1010, EX1014. To the extent any of the earlier applications
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`provide support for this element, only the later-filed ’686 provisional application
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`on July 13, 2005 would arguably provide a first disclosure of this claim
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`requirement. EX1003, ¶50; EX1011, 22:3-5.
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`Regardless, even if the claims of the ’862 patent were entitled to the ’451
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`provisional date of April 21, 2005, the prior art publications cited in this Petition
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`also predate April 21, 2005.
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`D.
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`POSITA Definition
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`For purposes of this IPR, Petitioner submits that a person of ordinary skill in
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`the art at the time of the alleged invention (a “POSITA”) would have had
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`Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer
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`Science, or a related field, and at least 2-4 years of experience in the field of
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`wireless communication, or a person with equivalent education, work, or
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`experience in this field. EX1003, ¶23.
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`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
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`All claim terms should be construed according to the Phillips standard.
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. § 42.100. BNR
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`and other parties submitted briefing on claim construction issues in another district
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`court litigation. EX1017, EX1018. A Markman hearing was held in that other
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`litigation on June 19-20, 2019.3 See EX1020. While as summarized below one
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`party to that litigation argued that two claim terms required construction, the Court
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`ultimately indicated that no such constructions for the ’862 patent claims were
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`required under the Phillips standard because the plain and ordinary meaning of the
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`claim language was recognizable without adoption of any formal construction.
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`EX1020, 104:23-107:3-9 and 111:4-114:22.
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`Here, the prior art grounds fall within the scope of the claims regardless of
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`whether a proposed formal construction is adopted.
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`A.
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`“a baseband processing module operable to…”
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`One of the parties to prior litigations argued that this term should be
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`interpreted under §112, ¶6, but the Court explained that, according to the Phillips
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`standard, it was not a means-plus-function element. EX1020, 107:10-109:25,
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`114:24-115:15, 116:11-17; EX1019, 17:13-23:15. Specifically, the Court agreed
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`with BNR that “a baseband processing module” was a known and recognizable
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`structure, so the term was not subject to §112, ¶6. EX1020, 111:4-114:22; 116:18-
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`118:5.
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`3 The Court has issued a claim construction order (EX1022)
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`If the Board were to decide this claim phrase is a means-plus-function
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`element, this Petition satisfies 37 CFR §42.104(b)(3) by identifying columns 7-8 as
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`the “specific portions of the specification that describe the structure”
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`corresponding to the recited baseband processing. EX1001, 7:56-59 (“baseband
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`processing module 100, in combination with operational instructions stored in
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`memory 65, executes digital receiver functions and digital transmitter functions”),
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`8:1-3. The evidence here confirms significant overlap between the preferred
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`embodiment of the ’862 patent and each of the Li-748, Tong, Li-054, and Poon
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`references. Infra, Sections VII-IX, XI. Regardless of whether this term is subject to
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`§112, ¶6, Grounds 1-5 set forth why this element was provided in the prior art
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`publications. See EX1020, 111:4-10 (BNR admitting this element “essentially was
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`well known in the art and its actual operation was well known”).
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`B.
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`“decompose the estimated transmitter beamforming unitary
`matrix (V) to produce the transmitter beamforming information”
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`One of the parties to the previous litigations argued that this term should be
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`construed as “factor the estimated transmitter beamforming unitary matrix (V) to
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`produce a reduced number of quantized coefficients” (EX1017, 26-30), and that
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`party cited to cols. 4:15-20, 9:59-62, 10:2-6, 10:38-60, 13:65-14:3, 14:31-37, and
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`14:63-15:8 and the Abstract of the ’862 patent to show why this construction was
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`consistent with the specification’s description of using a “Givens rotation” for the
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`decompose operation. See EX1017, 27:11-29:3. The Court ultimately indicated
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`that no construction was required because the plain and ordinary meaning was
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`recognizable without adoption of any formal construction. EX1020, 104:23-105:2,
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`106:20-25, 107:3-9 (“Assume the Court will not construe that claim any further,
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`that that language of ‘transmitter beamforming information’ is what it is and that a
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`person of skill in the art would understand that is the result of the decomposition of
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`the estimated transmitter beamforming matrix”).
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`To the extent that it is interpreted in this manner as indicated by the Court,
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`Petitioner notes that Grounds 1-5 fall within the scope of this “decompose”
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`operation. Alternatively, even if the Board disagreed with the other Court’s
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`determination (and applies the party’s construction set forth above), Petitioner
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`notes that the prior art in Grounds 1-2 fall within the scope of this “decompose”
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`operation because the prior art provides the same type of “Givens rotation”
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`mentioned in the ’862 patent. EX1001, 13:58-67 (“Givens Rotation”).
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`VII. GROUND 1: CLAIMS 1-4, 7-12, 15-18 ARE OBVIOUS IN VIEW OF
`LI-748, TONG, AND MAO
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`A. Overview of Li-748
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`Li-748 discloses a “closed loop MIMO system” that reduces feedback
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`bandwidth “by representing a beamforming matrix using orthogonal generator
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`matrices.” Id., Abstract. With reference to Figure 1 (below), Li-748 teaches
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`stations 102, 104, which are “part of a wireless local area network” and “include
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`multiple antennas.” Id., 1:50-52, 2:6.
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`Id. FIG. 1.
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`
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`Figure 4 (below) shows a system that “may be a station capable of
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`representing beamforming matrices.” Id., 9:36-40. The system 400 “sends and
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`receives signals using antennas 410, and the signals are processed by the various
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`elements shown in FIG. 4.” Id., 9:55-57. It includes a physical layer (430)
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`“coupled to antennas 410 to interact with a wireless network” and includes
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`“circuitry to support the transmission and reception of radio frequency (RF)
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`signals,” such as “an RF receiver to receive signals and perform ‘front end’
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`processing.” Id., 9:55-10:1. The system also includes a processor 460 that “reads
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`instructions and data from memory 470 and performs actions in response thereto.”
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`Id. 10:7-17.
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`Id. FIG. 4.
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`In “closed loop systems, communications bandwidth is utilized to transmit
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`current channel state information between stations, thereby reducing the necessary
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`decoding complexity.” Id., 2:44-47. “The current channel state information may
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`be represented by … unitary beamforming matrix V determined using a singular
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`value decomposition (SVD) algorithm.” Id., 2:52-54. The “receiver sends each
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`element of the unitary matrix V back to the transmitter.” Id., 2:57-59.
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`Li-748 discloses that a “transmit beamforming matrix may be found using
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`SVD,” using the equations H=UDV’ and x=Vd, “where d is the n-vector of code
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`bits for n data streams; x is the transmitted signal vector on the antennas; H is the
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`channel matrix; H’s singular value decomposition is H=UDV’; U and V are
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`unitary; D is a diagonal matrix[.]” Id., 3:19-32. Li-748 states that to “obtain V at
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`the transmitter, the transmitter may send training symbols to the receiver; the
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`receiver may evaluate H, compute the matrix V’; and the receiver may feedback
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`parameters representing V to the transmitter.” Id., 3:32-35.
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`Li-748 further teaches feedback bandwidth is reduced because “the
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`beamforming matrix V is represented by” fewer real numbers. Id., 2:63-67.
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`B. Overview of Tong
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`Tong claims priority to provisional applications that predate the provisional
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`applications of the ’862 patent. Id. Tong qualifies as prior art under §102(e) based
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`on its June 22, 2005 filing (before Critical Date July 13, 2005), and Tong
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`additionally qualifies as prior art under §102(e) based on its provisional priority
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`date of October 15, 2004. See Dynamic Drinkware, LLC, v. National Graphics,
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`Inc., 800 F.3d 1375 (Fed. Cir. 2015). Under Dynamic Drinkware, at least Tong’s
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`Provisional application No. 60/614,621 (“’621 Provisional”), filed September 30,
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`2004, provides clear and unambiguous support for claim 1 of Tong. EX1003, ¶206.
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`The following table identifies exemplary support in the ’621 Provisional for each
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`limitation of Tong’s claim 1; the testimony of Dr. Wells confirms this fact:
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`Tong (Claim 1)
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`Exemplary Support (’621 Prov.)
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`(EX1005)
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`(EX1012)
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`1. A MIMO system comprising:
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`4:2-5, FIGs. 1-2, 7, 8, 12, 16,